UK: Report Of Recent EPO Decisions – September 2008

Novelty (Article 54 EPC)

T 0716/06: Turbine pump with a stator stage integrated with a spacer ring / Varian S.p.A.

TBA Decision of 17 June 2008

Chairman: M. Ceyte

Members: C. Scheibling and T. Bokor

This was the appeal of the Opposition Division's rejection of an opposition which included allegations of lack of novelty over an alleged prior use. Notably, as well as documentary evidence of the alleged use, the opponent had offered witness testimony in support.

Having already indicated to the parties that it was likely to remit the case back to the Opposition Division in these circumstances (with both parties then withdrawing requests for oral proceedings in the appeal), the TBA went on to do exactly that. The Opposition Division had concluded that the alleged prior use was not sufficiently substantiated in relation to what had been made available to the public, and, whilst the TBA confirmed there is normally no need for the EPO to hear a witness on an alleged prior use, the circumstances of this case required otherwise.

As, based on the documents, the Opposition Division had considered that the claimed prior use was not established, the witness whose evidence had been offered in relation to this issue should have been heard. Ignoring the opponent's request in this regard had infringed the opponent's rights under Article 113(1) EPC 1973 and constituted a substantial procedural violation which justified remittal of the case. As there were no special reasons militating against this course of action, the case was remitted and the opponent's appeal fee reimbursed.

EPO Procedure

T 0580/06: Automobile Antenna Device / Hirschmann Electronics GmbH & Co. KG

TBA Decision of 1 July 2008

Chairman: B. Schachenmann

Members: G. Assi and P. Fontenay

This was an appeal by the patentee against a decision of the Opposition Division to revoke its patent relating to vehicle antennas. The most interesting aspects of the decision were the procedural issues.

The patentee filed the appeal on 13 April 2006 with a debit order for payment of the appeal fee from his account at the EPO. However, payment was not made on the due date because there were insufficient funds in the account. The EPO informed the patentee of the lack of funds on 24 April 2006 and required payment of the administrative fee resulting from the payment failure by 24 May 2006. The communication was sent by fax and the fax machine used stated that the transmission had been "OK" on the fax report.

The patentee settled the outstanding appeal fee on 20 April 2006 but did not pay the administrative fee, and, as a consequence, the EPO treated the appeal as not having been submitted and notified the patentee that it had lost its right to appeal.

Based on Rule 69 (2) EPC 1973, the patentee then appealed the decision to the TBA seeking either confirmation that it had paid the appeal fee in due time or, in the alternative, restitutio in integrum. He alleged that he had not received the fax dated 24 April and had noticed the lack of funds himself by that time.

The TBA confirmed that, pursuant to Rule 82 EPC 1973, the EPO bears the burden of proof when it comes to service of documents on the parties to proceedings. However, it was the TBA's view that the "OK" comment on the fax report did prove receipt of the document by the recipient. The recipient could always rebut such evidence of receipt by submitting the received data records from his fax machine as evidence that no such document had been received, but the patentee had not provided any such evidence in this case.

Nevertheless, the TBA was of the opinion that the patentee's non-payment of the fee had been unintentional. The patentee had shown that he had exercised the necessary care in monitoring all of the relevant deadlines. Since Article 122 EPC 1973 establishes as a general principle that a single failure to monitor deadlines within an otherwise well-functioning system should not lead to loss of rights, and as notifications from the EPO are rarely sent via fax (registered mail usually being used), the TBA restored the patentee's rights.

T 1515/07: Method and computer system for providing a cost estimate for sizing a computer system / SAP A.G.

TBA Decision of 3 July 2008

Chairman: S. Steinbrener

Members: S. Wibergh and P. Schmitz

This was the appeal of the Examination Division's refusal of an application relating to a computer implemented method of providing cost estimates for computing equipment. Although the refusal was on the basis of lack of inventive step, the Examination Division had refused the applicant's request that an additional search be conducted because in its view a decision could be reached without a search and it was in the public interest that the matter be decided as expeditiously as possible.

Citing T 1242/04 and T 690/06, the applicant alleged that this constituted a substantial procedural violation – an additional search was necessary because the Examination Division had acknowledged that the claimed features did not form part of the state of the art and the applicant had not indicated that they were known. Confirming that the relevant EPO decisions on the point were the two decisions cited, the TBA quoted, with approval, passages suggesting an additional search was not required when the differentiating features were notoriously well-known, such as features relating to a conventional computing system in the field of computer-implemented inventions. However, since the Examination Division had not found the features of the case to be so well known, and the TBA did not consider them to be so, it held that a search should have been carried out under Rule 63 EPC. Discretion to obviate from this was limited to circumstances where the relevant features were notorious or acknowledged by the applicant. A substantial procedural violation has been committed, and the appeal was allowed with remittal back to the Examination Division for further prosecution.