1. The appeal is admissible.

2. As communicated in advance to the board (see point IX above), respondent 2, who did not submit any comments or observations with regard to the substantive issues, did not attend the oral proceedings before the board, to which it had been duly summoned. The board decided to continue the proceedings pursuant to Rule 115(2) EPC and Article 15(3) RPBA.

The argument of respondent 1 that these declarations might have been considered much earlier and could therefore have been filed at a much earlier state is not convincing. The title page of both documents makes reference to such data as the patent, application and appeal number. It identifies the patentee and the opponents and, in this context, also mentions third party observations. In the board's opinion this reference is not an indication that the present declarations were a late reaction to these third party observations, which for some unknown reasons were not filed before.

3.2 Hence, the board decided to admit documents (36) and (37) into the proceedings.

3.3 Document (38) was filed about one month before the oral proceedings took place. None of the respondents raised an objection to its introduction into the proceedings. Nor did the board see any reason to reject this document. Consequently, document (38) was admitted into the proceedings.

4.1 Documents (9) and (10), in particular document (9), on which the appellant relied as evidence that the presently claimed compound dasatinib showed protein tyrosine kinase (PTK) inhibitory activity and was therefore suitable in the treatment of disorders associated therewith, particularly cancer, were filed more than three years after the filing date of the patent in suit (document (9) in December 2004 (on the Internet in July 2004); document (10) in November 2003). In the decision under appeal, the opposition division decided not to take these documents into account on the grounds that the alleged activity had not been made plausible at the effective date of the patent in suit and that the post-published documents were the first disclosure going beyond speculation. This decision was challenged by the appellant, who continued to rely on these documents as confirmation for a plausible disclosure of dasatinib as PTK inhibitor.

4.2 It is established jurisprudence of the boards of appeal that the assessment of inventive step is to be made at the effective date of the patent on the basis of the information in the patent together with the common general knowledge then available to the skilled person. Post-published evidence in support that the claimed subject-matter solves the technical problem the patent in suit purports to solve may be taken into consideration, if it is already plausible from the disclosure of the patent that the problem is indeed solved (see Case Law of the Boards of Appeal, 8th edition, I.D.4.6; T 1329/04, point 12 of the Reasons; T 1043/10, point 12 or the Reasons).

4.3 The application is directed to an extremely broadly defined group of compounds of the following generic formula I:

FORMULA/TABLE/GRAPHIC

Q is an aryl ring or a 5- or 6-membered heteroaryl ring (see page 3, lines 5 to 14); the variables are defined on page 3, line 10 to page 8, line 7. Furthermore, a subgroup is defined having the following general formula II:

FORMULA/TABLE/GRAPHIC

were A is carbon or nitrogen, B is nitrogen, oxygen and sulfur, X is oxygen and sulfur and the other variables are defined as for formula I (see page 8, lines 8 to 18).

Preferred compounds of formula I are defined on page 13, line 16 to page 14, line 2, where Q is thiazole, Z is a single bond and R2 and R4 are hydrogen. Taking into account, the more preferred definitions of the variables R1, X1, X2, R3 and R5, the information on pages 13 and 14 translates into the following formula

FORMULA/TABLE/GRAPHIC

4.4 On page 39, line 10 to page 43, line 25, the application describes a number of PTKs, which are potential targets of the claimed compounds, and the diseases or disorders associated therewith. Particular types of kinases, which are listed in this context are the non-receptor kinases Lck, Fyn, Lyn, Src, Yes, Hck, Fgr and Blk, which belong to the Src-family (page 39, lines 10 to 15) or the receptor kinases HER1 and HER2, which belong to the epidermal growth family (see page 42, line 30 to page 43, line 3 and page 1, lines 20 to 21). Other types of receptor and non-receptor tyrosine kinase families are mentioned on page 1, lines 18 to 24. As is apparent from pages 39 to 43, inhibition of specific protein tyrosine kinases are associated with specific disorders, for example Lck inhibitors are of value in the treatment of T-cell mediated diseases, such as arthritis, multiple sclerosis, lupus, transplant rejection delayed-type of hypersensitivity, certain types of cancer, etc; Hck and Fgr are important in the Fc gamma receptor response and are considered valuable in the treatment of inflammatory bowel disease or autoimmune glomerulonephritis; Lyn and Src are important in the Fc epsilon response and are of value in the treatment of asthma or allergic disorders; HER1 and HER2 can be used in the treatment of proliferative treatments, such as psoriasis and certain types of cancer.

Even if the board were to accept the assertion on page 50 of the application as filed as an indication that some tests had been carried out, no information is provided as to which of the structurally rather different compounds had been tested and in which assay, in particular whether any of the tests included dasatinib. In this context, the board would like to emphasise that it does not accept the appellant's contention that the passage on page 50 is to be read in the sense that all compounds of the examples had been tested. As pointed out by the respondents, such a reading also appears to be in conflict with the appellant's post-published evidence according to which certain compounds of the examples were inactive at a specific concentration. In this context, the board notes that in document (38), Mr Barrish, one of the inventors, refers to a review of the results of the assays performed before the patent was filed, which showed that these specific compounds were tested and found active in "one or more PTK assays" (see points 20 and 21). Irrespective of fact that document (38) can not be relied on for the purpose of what has been made plausible by the application (see point 4.7 below), no evidence was provided in support of this assertion. Nor are any results concerning the performance of dasatinib provided in document (38).

4.6 In support of its position that the claimed effect had been made plausible for the skilled reader, the appellant relied on the declarations of Professor Alessi and Professor Parang (documents (36) and (37)).

4.6.5 In summary, neither Professor Alessi's nor Professor Parang's declaration can support the appellant's view that the alleged activity had been made plausible for dasatinib at the time of filing.

4.7 Document (38), on which the appellant also relied, is not relevant in answering the question whether the application made it plausible for the skilled person that dasatinib showed PTK inhibitory activity, since it refers to knowledge which was not available to the skilled person at the filing date. Furthermore, although this document refers to results, which had been obtained before the filing date of the patent in suit, none of these results were included in this document or were ever provided in the proceedings before the EPO, in particular not for dasatinib.

Furthermore, contrary to the appellant's assertion, the post-published document (9) - the only document which refers to dasatinib - does not merely confirm the technical effect, but rather discloses a specific PTK profile, which identifies dasatinib as an inhibitor with potent anti-tumour activity (see table 2 on page 6660). No such disclosure is present in the application as filed.

4.10 With regard to the appellant's argument that the burden of proof was on the respondents to show that the application did not solve the technical problem it purports to solve, the board notes the following:

In the present case, no decision is required as to whether there exists, as argued by the appellant, a presumption that a granted patent solves the technical problem it purports to solve. The respondents (opponents), starting from the disclosure in the application as filed, have provided technically sound and persuasive arguments as to why the alleged effect had not been made plausible, which raises doubts as to whether the technical problem had been solved at the filing date, in particular by dasatinib. Thus, even if the burden was on the opponents to raise substantiated doubts, they discharged of it. It then rests on the appellant who continues to rely on the alleged effect to counter-argue and to rebut these doubts.

4.11 In support of its case, the appellant also made extensive reference to the Case Law of the Boards of Appeal. In particular, it relied to a number of decisions in which the boards have taken post-published evidence into account, for example T 428/12, 1677/11, T 715/03 (erroneously referred to as T 517/03), T 1642/07 or T 210/11.

4.12 In the board's judgement these decisions cannot support the appellant's case.

(...)

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for referral to the Enlarged Board of Appeal is rejected.

In the decision several aspects of the problem-solution approach are re-discussed. The Board is also not keen on hearing witnesses. 

Summary of Facts and Submissions

I. Appellants 01, 02 and 03 (respectively opponents 01, 02 and 03) lodged an appeal against the decision rejecting their oppositions against European patent 1 646 477.

II. The Opposition Division held that none of the grounds of opposition raised and substantiated under Article 100(a) EPC (lack of novelty, lack of inventive step, and under Article 100(b) EPC (lack of sufficient disclosure) held against the patent. It considered that the wording of the claims , as corrected by the Examining Division under Rules 139 and 140 EPC, was the valid version of the claims.

III. The present decision is based on the following documents mentioned, among others, during the opposition proceedings: [...]

IV. The statements setting out the grounds of appeal and the replies thereto of the respondents contain a large number of requests.

In the annex to the summons for oral proceedings the Board presented its preliminary opinion on these requests of the parties, stating inter alia that:

There was a deficiency in the first instance proceedings because of the correction requested by the respondents with letter of 15 November 2010, which had been incorrectly allowed by the Examining Division under Rule 139 EPC. The main issue in this correction was the addition of "or less" after "0,25 microns" in claim 1. In fact there was no decision of the Examining Division, since it had been taken by only one member of that division. In view of this evidence (which was sent to the parties) and the particular circumstances, however, the Board could deal with this issue itself without remittal to the Opposition Division, nor need the appeal fee be reimbursed.

The main request, as well as the auxiliary requests and the fall-back request of 18 May 2012 could not be allowed, because their respective claims 1 contravened the requirements of Article 123(2) and (3) EPC and Rule 139 EPC as they extended to input stage planetary gearboxes having teeth that had been superfinished to a final surface roughness (Ra) of 0,25 microns or less.

The request to maintain the patent as granted could also not be allowed, due to the subject-matter of its claim 1 lacking novelty over D4 and inventive step over the combination of the teachings of documents D1 and D2.

As the preliminary position of the Board on priority of claim 1 corresponded to the position taken by the Opposition Division, remittal of the case, as requested by the respondents, was also not envisaged.

The arguments of the appellants supporting their objections concerning lack of sufficient disclosure were considered not convincing.

V. With letter of 23 September 2016 the respondents maintained their main request of maintenance of the patent in the form upheld by the Opposition Division, or as granted. They replaced all the previously submitted auxiliary requests with 6 new auxiliary requests for claim 1, 3 new auxiliary requests for claim 6 and 5 new auxiliary requests for claim 9, together with an amended fall-back request. They objected to the Board showing with non-public evidence the non-existence of the correction decision by the Examining Division. It was requested to hear the remaining members of the latter and the chair of the Opposition Division. In this respect the respondents submitted two questions of law and requested that if neither the case was remitted to the Opposition Division, nor the requested corrections were allowed, they be referred to the Enlarged Board of Appeal.

The following document, related to inventive step over the combination of the teachings of documents D1 and D2, was also submitted:

R15: Saint Gobain v Fusion Provida Ltd, Case No: A3/2004/2441.

VI. Oral proceedings before the Board were held on 26 October 2016. Although having been duly summoned, appellant 02 did not attend, as announced with letter of 5 October 2016. According to Rule 115(2) EPC and Article 15(3) RPBA, proceedings were continued without that party.

At the start of and during oral proceedings the respondents requested, as a main request, that the patent be maintained as granted according to the "Druckexemplar", and filed a first auxiliary request for maintenance as corrected. In view of the main request, the issue of the correction decision of the Examining Division was deferred. In regard of the outcome of the discussion on the main request (no inventive step over D1 and D2) the first auxiliary request was withdrawn and replaced by a (new) first auxiliary request. The respondents also requested that Mr. Summers be heard by the Board.

For the further course of the oral proceedings, in particular the parties' initial requests and the issues discussed with the parties, reference is made to the minutes.

VII. At the end of the oral proceedings the parties' final requests were established to be as follows:

Appellants 01 and 03 (appellant 02 in his written submissions) requested that the decision under appeal be set aside and that the patent be revoked.

The respondents requested that the case be remitted to the Opposition Division for prosecution in the event that documents A8 to A10 were admitted into the proceedings, that the appeals be dismissed, i.e. that the patent be maintained as granted on the basis of the "Druckexemplar" or, in the alternative, that the patent be maintained in amended form on the basis of the set of claims filed during the oral proceedings as (new) first auxiliary request with the claims thereof to be renumbered.

All other initial requests were not maintained by the parties.

The present decision was announced at the end of oral proceedings.

VIII. The text of independent claim 1 of the main request, corresponding to the patent as granted according to the Druckexemplar, is as follows:

"An input stage planetary gearbox for a large wind turbine generator comprising a hollow wheel gear, two or more planet gears, and a sun gear, wherein one or more of the hollow wheel gear, two or more planet gears, and sun gear comprise a plurality of teeth that have been superfinished to a final surface roughness of 0,25 microns."

The text of independent claim 9 of the main request is as follows:

"A method for reducing lubricant debris in an input stage planetary gearbox for a large wind turbine generator, wherein the planetary gearbox comprises a hollow wheel gear, two or more planet gears, and a sun gear, the method comprising superfinishing the teeth of one or more of the hollow wheel gear, two or more planet gears, and sun gear to a surface roughness of 0,25 mym or less before operating the planetary gearbox."

The text of independent claim 1 of the (new) first auxiliary request is as follows (amendments over claim 1 of the main request are, respectively, in bold or struck out, emphasis added by the Board):

"An input stage planetary gearbox for a large wind turbine generator comprising a hollow wheel gear, two or more planet gears, and a sun gear[deleted: , wherein one or more of the hollow wheel gear , two or more planet gears, and sun gear], wherein all of the teeth of all of the gears [deleted: comprise a plurality of teeth that] have been superfinished to a final surface roughness (Ra) of 0,25 microns"

The text of independent claim 9 of the (new) first auxiliary request is as follows (amendments over claim 9 of the main request are, respectively, in bold or struck out, emphasis added by the Board):

"A method for reducing or eliminating damage to the bearings of [deleted: lubricant debris in] an input stage planetary gearbox for a large wind turbine generator, by reducing lubricant debris generated from the gear teeth, wherein the planetary gearbox comprises a hollow wheel gear, two or more planet gears, and a sun gear, the method comprising superfinishing the teeth of one or more of the hollow wheel gear, two or more planet gears, and sun gear to a surface roughness of (Ra) 0,25 [deleted: mym] microns or less before operating the planetary gearbox."

IX. The appellants argued, insofar as relevant to the present decision, substantially as follows.

The Opposition Division wrongly delegated to the Examining Division its responsibility to decide on the correction requested by the respondents under Rule 139 EPC. The Examining Division was not competent to deal with this request because examination proceedings were not pending. It also wrongly applied the requirements of Rule 139 EPC.

The decision under appeal is insufficiently reasoned on the issues of sufficiency of disclosure, priority, novelty and inventive step. The decision also does not contain any discussion on the expert statements submitted in relation to the knowledge of a person skilled in the art, said aspect having been extensively discussed during the oral proceedings before the Opposition Division.

As acknowledged in the decision under appeal, D1 discloses a gearbox from which the subject-matter of claim 1 of the main request only differs in the claimed value of surface roughness of the teeth of the gears.

This gearbox is a suitable starting point to discuss inventive step, especially because D1 contains a statement according to which smooth gear surfaces improve the micro-pitting resistance and therefore also the gearbox performance.

This effect is also mentioned in the description of the patent in suit.

The problem to be solved can be formulated as how to avoid micro-pitting in large gears used in input stage planetary gearboxes for large wind turbine generators.

Based on this problem the relevant person skilled in the art can only be identified as a gear design specialist, and not necessarily a wind turbine generator designer.

D2 teaches that smoothing the surface of the teeth of gears to a surface quality of 0,127 to 0,254 microns ([10], [22], "5 to 10 micro-inch") overcomes the problem of micro-pitting.

The decision under appeal was based on the wrong assumption that the person skilled in the art, starting from D1, would disregard this teaching as it is not specifically related to the field of large input stage planetary gearboxes for large wind turbine generators.

The knowledge of the skilled person in this technical field should, however, be properly appreciated on the basis of documents A8-A10, which should be admitted.

The circumstances alleged in R12, to show that at the time the invention was made nobody considered that such large gears could indeed be superfinished, are not described in detail. Therefore the reasons leading to the refusal by Sparleck GmbH to smooth the surfaces of large gears are only partially known.

As a consequence, this declaration cannot prove that the skilled person would generally refrain from superfinishing large gears used in slow speed planetary gear boxes.

A8 explicitly mentions wind turbine generators, and shows (figure 4 at page 4) that superfinishing of large gears was possible (and advantageous) before the priority date of the patent in suit.

The respondents cannot be surprised by the contents of A8, because the author of A8 is also the inventor of the patent in suit.

A8 is prima facie relevant and proves that the skilled person had the necessary knowledge to superfinish large gears, as taught by D2.

Documents A9 and A10 are also prima facie relevant because they show that according to a well known design procedure (FVA 54) for preventing micro-pitting, the parameter Ra is to be kept at 0,25 microns or less.

A8, A9 and A10 have been submitted with the statement setting out the grounds of appeal to confirm the information that would have been provided by the experts during the opposition proceedings, had they been allowed to speak. Therefore they show that the Opposition Division based its decision on an incorrect assessment of the knowledge of a skilled person.

These documents should therefore be admitted into the appeal proceedings.

R6 to R9, submitted by the respondents as a reaction to A8-A10, are not prima facie relevant and should not be admitted. At the oral proceedings, that request for not admitting documents was specifically directed to R7-R9.

The request to hear Mr. Summers on what was actually the situation in A8 should not be allowed, as it is very late filed and causes a delay of the proceedings, since its preparation for it would only be possible with an adjournment of the oral proceedings.

The subject-matter of claims 1 and 9 of the (new) first auxiliary request clearly does not involve inventive step over the combination of the teachings of documents D1 and D2. This request should therefore not be admitted into the proceedings as it not clearly allowable.

The ratio decidendi of G 2/88 (OJ EPO 1990, 93) is not directly applicable to claim 9 of this first auxiliary request, as G 2/88 relates to a change into a second (non-medical) use claim of a substance, and claim 9 rather relates to a process for producing an improved gearbox characterised by superfinishing the teeth of the gears wherein the purpose of carrying out said process steps is indicated in the claim.

X. The respondents argued, insofar as relevant to the present decision, substantially as follows:

The minutes of the oral proceedings before the Opposition Division show that appellant 01 contested extensively the right of the Examining Division to decide upon the request of correction, and Dr. Krull, the expert brought by appellant 03, was allowed to speak. The right to be heard was therefore not denied.

The decision under appeal is sufficiently reasoned on the mentioned issues, as it enabled the appellants to follow all their lines of argument, and argue before the Board that some of them were based on misjudgements of the Opposition Division.

The request for correction under Rule 139 EPC has been correctly dealt with and allowed by the Examining Division following T 226/02, because at that time neither the Opposition Division nor the Examining Division were bound by G 1/10 (OJ EPO 2013, 194).

A8, A9 and A10 have been filed late without any explanation for their delay, and the criteria for admission are not satisfied, as they are not prima facie relevant.

A8 neither refers to gearboxes for wind power generators, nor to gearboxes for low speed applications, such as in an input stage planetary gearbox.

Figure 4 of A8 relates to a superfinishing experiment on large gears which did not produce satisfying results, and does not therefore represent an enabling disclosure which could be relied upon by the skilled person, who is a specialist in the field of large wind turbine generators.

Mr. Summers should be heard by the Board to allow the respondents to confirm that.

R7 to R9 have been submitted as a reply to the issues raised by A8-A10, and in particular to show why they are not relevant, and should be therefore introduced into the proceedings and discussed, if A8-A10 are admitted into appeal proceedings.

D1 discloses a gearbox from which the subject-matter of claim 1 of the main request only differs in the claimed value of surface roughness of the gear teeth.

However, D1 being only a recommendation from AGMA and not a standard, would not be considered by the skilled person as a reliable starting point to discuss inventive step.

The effect of the only distinguishing feature is that the presence in the lubricant of debris coming from the teeth is reduced. This prolongs the life of the bearings, which are lubricated by the same lubricant as the gears in the planetary gearbox.

Based on this effect, the problem to be solved should be formulated as how to improve the service life of the bearings in the known planetary gearbox.

This is because, as R6 clearly shows, at the effective date of the patent in suit the skilled person was very concerned with the failure of bearings, as these components were particularly problematic, and did not consider failure of the gears and the gearbox because of micro-pitting on the gear tooth surfaces as an equivalently problematic issue.

Based on this problem the person skilled in the art cannot be the generic gear designer, as argued by the appellants, but can only be a specialist in the field of large wind turbine generators.

D2 would not be taken into consideration by that skilled person as it relates to gears of any type, even of plastic material, does not mention micro-pitting, and mentions an improved fatigue life of only 100 hours after polishing.

Gears to be used in the technical field of the patent in suit operate with high loads at very low speed, and are therefore not to be compared with gears designed for being used in other technical fields.

A teaching coming from a document which is not directly related to this technical field would not be considered as reliable enough to depart from accepted practice with a reasonable expectation of success.

The approach used by the appellants in the discussion on inventive step is over-simplified, as it does not take account of the principle of expectation of success, as outlined in R15.

It is known (lubricant retention or oil-pocket theory) that excessively smooth surfaces do not retain lubricant. This is because the customary surface roughness values used in this technical field were significantly higher than those which are now claimed.

R12 (declaration of Mr Bruins) shows that before the priority date of the patent in suit not even a specialized company like Sparleck GmbH was able to surface finish the surface of big gear components (above 100 kg) simply because the manufacture of machines suitable for surface finishing of these gears was not possible.

The (new) first auxiliary request should be admitted into the appeal proceedings because its claims are clearly allowable. Clear allowability of claim 9 is, in particular, evident in the light of the ratio decidendi of G 2/88 (supra).

Reasons for the Decision

1. Allegations of procedural violation - insufficient reasoning of the appealed decision

1.1 The appellants argue that the impugned decision is not sufficiently reasoned on the issues of sufficiency of disclosure, priority, novelty and inventive step.

1.2 The Board disagrees and notes that the decision contains under point 1.1 general reasoning on sufficiency of disclosure, related to what the skilled person would make of the wording of the claim and how the objections of the appellants should in fact be seen.

The Board establishes that the reasoning on "reach through" claims is insufficient as it amounts to "we do not agree that these are reach through claims". However, since the minutes do not refer to this argument of appellant 1, it cannot be established whether this argument was presented extensively or only as an allegation at the oral proceedings. In the latter case the simple answer mentioned above is regarded as sufficient.

Concerning the alleged lack of substantiation in the reasoning on priority, novelty and inventive step, the Board establishes that the decision under appeal contains (see points 13 and 14) reasoning on these issues, and notes that the appellants were able to criticize it in detail, and therefore were able to deal with it.

1.3 The appellants also consider the decision as being deficient because it does not contain any discussion on the expert statements submitted by the appellants and related to the knowledge of a person skilled in the art, said aspect having been extensively discussed during the oral proceedings.

1.4 The Board is not in a position to assess whether a procedural violation occurred in this respect, because it is not clearly apparent from the minutes to which extent these issues have actually been discussed.

1.5 Be that as it may, the Board considers that even if one of these procedural violations occurred, no purpose would be served by remitting the case to the Opposition Division, which would at most issue another, maybe better reasoned, decision but to the same effect.

This consideration, combined with the fact that the appellants were able to deal, in their respective statements setting out the grounds of appeal, with the impugned decision in detail constitutes, in the Board's view a special reason for not remitting the case, as allowed under Article 11 RPBA.

The Board therefore decides not to remit the case.

2. Allegation of procedural violation by the Opposition Division in respect of the competence of the Examining Division to decide on the correction of the patent under Rule 139 EPC

Since this question has become moot by the requests having been amended at the oral proceedings, there is no necessity to deal with this issue here. It will be shortly discussed under point 3.

3. Main request (reference to the "Druckexemplar")

3.1 The respondents formulate their main request in that the patent be maintained as granted i.e. in the form according to the "Druckexemplar".

3.2 The appellants note that this does not correspond to the version of the claims with which the patent was maintained when the oppositions were rejected, because that was the version incorrectly accepted by the Examining Division. Based on that they argue that the main request of the respondents amounts to a request to set aside the decision under appeal, which they cannot request as non-appellants.

3.3 The Board disagrees, because it is the order of the impugned decision, which is that the oppositions are rejected, which determines the actual version of the patent that results from the decision. In the present case that is the version as granted, which is indeed the subject-matter of the present main request ("Druckexemplar", see also point 3.5 below).

3.4 This is also not affected by the "Rule 139 EPC correction decision" dated 23 May 2012 which introduced the "or less" into claim 1. This decision was taken by only one member of the Examining Division, as could be established from EPO form 2051 which the Board could retrieve from the non-public part of the file. The parties were provided with a copy of that form.

Such a decision would be, in the opinion of the Board, non-existent. The result would be that the valid version of the patent is the version as granted, as was notified by the Board to the parties with its communication annexed to the summons to oral proceedings.

Since the main request, by its content, made a decision of the Board on this point unnecessary, there was also no need to refer questions related thereto to the Enlarged Board of Appeal.

3.5 There has been another decision dated "22.[deleted: 10]8.2011", also retrievable from the same EPO Form 2051, but this time having been signed by all the three members of the Examining Division, with which they saw the need for correcting printing errors that occurred when the "Druckexemplar" was prepared for printing the granted patent, via Rule 140 EPC, i.e. a correction of their decision to grant.

That was entirely unnecessary because the "Druckexemplar" is in any case the valid version of the granted patent since it is the version communicated to the applicants with the notification pursuant to Rule 71(3) EPC, to which agreement had been given (see also T 995/95, Facts and Submission, point VII; T 1635/10, Reasons, point 1.2; T 809/10, Facts and Submissions, point IX), and to which the decision to grant referred (Article 97(1) and Rule 71a(1) EPC).
Be that as it may, this decision does not affect the wording of the present main request, which is exactly the version of the "Druckexemplar". In any case, the appellants had no objections to this decision of the Examining Division.

3.6 In the issue of the corrections carried out, via the use of EPO Form 2051, on the European Patent after grant, the Board whishes to note that it is rather disturbing that such decisions, more in particular the details of the persons that took them, are not at all retrievable by the public via file inspection. They are not excluded from file inspection pursuant to Article 128(4) EPC and Rule 144(d) EPC, see the Decision of the President of the EPO of 12 July 2007 (OJ EPO 2007, Special Edition, Nr. 3, J.3).

3.7 The main request that the patent be maintained in the form as granted ("Druckexemplar") cannot therefore be considered as a request to set aside the decision under appeal, but is a request to dismiss the appeals.

3.8 For the sake of clarity the Board notes that the text of claim 1 according to the "Druckexemplar" does not contain the modifications requested with the second request for correction, pursuant to Rule 139 EPC ("or less").
4. Admissibility of the documents submitted during the appeal proceedings

4.1 A8-A10

The respondents request that A8-A10 not be admitted as being not prima facie relevant and late filed. The respondents also request, in the case that a positive decision on their admissibility is taken, to remit the case to the Opposition Division to deal with this fresh evidence.

The Board notes that the above question of admissibility raised by the respondents can only be discussed in the light of Article 12(4) RPBA as these documents have not been submitted during the opposition proceedings, but were filed by appellant 03 with its statement setting out the grounds of appeal.

The Board notes that Article 12(4) RPBA mentions "evidence which could have been presented in the first instance proceedings". To the benefit of the party concerned the Board interprets this to mean "should have been presented" (see also T 1689/12, Reasons, point 1.2, T 419/12, Reasons, point 2.1.2).

The question therefore arises whether appellant 03, in the course of opposition proceedings, should have realised that further material needed to be filed.

This is, for the following reasons and as argued by the appellants, not the case.

The appellants argued in the opposition proceedings that there was no prejudice against superfinishing of large gears, more in particular of gearboxes in wind turbine generators, at the priority date of the patent in suit.

Appellant 03 based this on documents A1 to A7 submitted before the Opposition Division, and offered an expert to testify on their content. Appellant 01 used documents D1 and D2 and argued that the skilled person would apply the general teaching of D2 to the gears of input gearboxes in large wind turbine generators.

In its communication annexed to the summons to oral proceedings the Opposition Division rejected documents A1-A7 as not belonging to the prior art and expressed a positive opinion on inventive step over the combination of the teachings of documents D1 and D2. More in particular, the Opposition Division wrote that the skilled person would not do so.

To this appellant 01 replied that it would bring an expert to oral proceedings to support its arguments (appellant 03 had already offered an expert).

At the oral proceedings, these experts (Mr. Krull and Mr. O'Hara) were present.

The minutes do not show that they were allowed to speak. According to appellant 03 his expert (Mr. Krull) was cut short in his submission by the chair of the Opposition Division, who stated that A1 would in any case not be considered prior art. The latter was confirmed by the minutes.

Since the Opposition Division, only at the oral proceedings, did not accept the means of evidence submitted by appellants 01 and 03, the submission of A8-A10 with the statement setting out the grounds of appeal of appellant 03 is regarded by the Board as an acceptable attempt to further support with written evidence the existing line of arguments on the general knowledge of the skilled person and what he would consider as acceptable further teachings.

The Board therefore decides to admit A8-A10 into the appeal proceedings.

The Board also notes that the respondents cannot be surprised by the contents of A8, because the author of A8 is also the inventor of the patent in suit.

A9 and A10 are also not surprising in their respective content, as they relate to a well known gear design procedure.

4.2 R7-R9

The Board also decides to admit these documents, because they have been submitted by the respondents for the case that A8-A10 are admitted by the Board, in application of Article 13(2) RPBA.

The Board notes that the question, raised by the appellants, whether these documents are or are not prima facie relevant does not play a role in this respect.

5. Remittal of the case to the Opposition Division for further prosecution on the basis of documents A8-A10 and R7-R9

The respondents request that the case be remitted to the Opposition Division for further prosecution, as A8-A10 and R7-R9 were not the subject of the appealed decision.

The Board notes that none of A8-A10 has been directly referred to by the appellants in their objections as to patentability of the subject-matter of the claims of the main request and of the first auxiliary request.

The appellants only introduced A8-A10 to support an existing line of argument, namely that the skilled person would not consider that superfinishing of large gears was technically impossible at the priority date of the patent in suit.

As a consequence, the admission of A8-A10 does not raise issues substantially different from those on which the contested decision was based.

The Board also notes that the respondents only introduced R7-R9 to show that a wind turbine specialist aiming at improving the device disclosed in document D1 would not have taken the teaching of document D2 into consideration.

As this is the argument on which point 14.2 of the decision under appeal is in any case based, also the admission of R7-R9 does not raise a different issue either.

As a consequence, the relevant request to remit the case to the Opposition Division for further prosecution is not allowed.

6. Hearing of Mr. Summers

6.1 The respondents alleged, during the oral proceedings held before the Board, that the experiment to which figure 4 of A8 refers did not result in a positive outcome. They argued that the information contained in this document does not represent an enabling disclosure which could be relied upon by a specialist in the field of large wind turbine generators.

The respondents therefore requested that the author of A8, Mr. Summers, be heard to confirm these allegations.

6.2 The Board does not consider it necessary for the present decision to hear Mr. Summers.

This is because it is not at all apparent to a skilled reader that the content of A8 is either not correct or not complete. This document does not contain anything on the basis of which a skilled reader would, at the priority date of the patent in suit, have inferred that the superfinishing experiment on large gears shown in figure 4 at page 4 was not successful.

That this was allegedly the case came up only during the oral proceedings before the Board, and was therefore not public before the priority date of the patent in suit.

According to the established jurisprudence of the Boards of Appeal (see Case Law of the Boards of Appeal, 8th edition 2016, I.D.4.6) the assessment of inventive step is to be made at the effective date of the patent on the basis of the information in the patent together with the common general knowledge available to the skilled person at that date.

A testimony by Mr. Summers could therefore at most disclose something which is post-published.

7. Claim 1 of the main request - Inventive step

7.1 Content of the disclosure of D1

D1 discloses an input stage planetary gearbox (see page 21, point A.5.4, "Gear arrangements", where planetary gear arrangements are disclosed in the fourth and fifth paragraph) for a large wind turbine generator (up to 750 kW, see page 1, point 1, last line) comprising a hollow wheel gear, two or more planet gears, and a sun gear (as it is normally the case with epicyclic gear arrangements), wherein one or more of the hollow wheel gear, two or more planet gears, and sun gear comprise a plurality of teeth that have been finished to a smooth final surface roughness (in fact all teeth, see page 9, point 4.4.5.4).

7.2 D1 as a starting point to discuss inventive step

The Board concurs with the appellants that the wind turbine planetary gearbox disclosed in D1 is a suitable starting point for discussing inventive step, as it discloses most of the features of claim 1 of the main request and is used in an input stage.

The respondents argue that D1, being only a recommendation from AGMA, and not a standard, would not be considered by the skilled person as a reliable starting point.

The Board disagrees: any document that is state of the art under Article 54(2) EPC may be taken into consideration for that purpose, as long as it is a feasible starting point (see e.g. T 21/08, Reasons, point 1.2).
A document which is confidential, or so speculative or obviously defective as to be readily recognised as such by those skilled in the art when trying to reproduce its disclosure cannot be taken as such an appropriate starting point.

The respondents did not, however, provide any reason (and none is apparent to the Board) on the basis of which a skilled person would immediately consider D1 as speculative, unreliable or even confidential, just because its title recites "Recommended Practices for Design and Specification of Gearboxes for Wind Turbine Generator Systems".

7.3 Difference

As agreed by all parties, D1 only fails to disclose one feature of the subject-matter of claim 1, namely that one or more of the gears comprises a plurality of teeth that have been superfinished to a final surface roughness of 0,25 microns.

7.4 Effect - Problem

7.4.1 According to the patent in suit this level of smoothness is sufficient to prevent micro-pitting of the gear surfaces (see paragraph [21]).

Based on this effect, the appellants formulate the problem to be solved as how to improve the functioning, reduce noise and increase the service life of the gears in the known planetary gearbox (see again paragraph [21], top of column 6 and at the end).

7.4.2 The respondents argue that inventive step should only be discussed on the basis of another, different effect mentioned at paragraph [24] of the patent in suit, namely that the presence in the lubricant of debris coming from the teeth surfaces is reduced.

Based on this effect, the problem to be solved should be formulated as how to improve the service life of the bearings in the known planetary gearbox (see again paragraph [24]).

This is because, as clearly acknowledged in the description of the patent in suit (see paragraph [19], lines 42-44, and paragraph [24]) at the effective date of the patent in suit the skilled person was more concerned with the failure of bearings, as these components were considered to be particularly problematic, and would not consider failure of the gears because of micro-pitting on their surfaces to be an issue to deal with.

This is further confirmed by document R6. This document shows that before the priority date of the patent in suit gearboxes were considered to fail mainly because of their bearings (see starting from the first page (53), left column, last line, and right column).

In a technical field in which wind turbine gearboxes were subjected to chronic failure (first page, left column, line 3 of R6) because of their bearings the skilled person would not be really interested in improving the functioning, reduce noise and increase the service life of the gears.

7.4.3 The Board does not concur with the respondents: the reduction of debris coming from the teeth in the lubricant is not the only effect on the basis of which inventive step of claim 1 of the main request may be discussed. Such discussion can take place on the basis of any effect of the established distinguishing features, provided that such an effect is directly derivable from the patent in suit for a skilled person (see Case Law of the Boards of Appeal, supra, I.D.4.4.1).

As the effect of preventing micro-pitting of the gear surfaces is explicitly mentioned in paragraph [21] of the patent in suit, together with the issues of damage of the gear surfaces, vibration and noise, the problems of improving the functioning, reducing the noise and increasing the service life of the gears in the known planetary gearboxes immediately follow. The Board considers that the above approach in the problem formulation is in line with the problem-solution approach, as defined in the jurisprudence of the boards of appeal (see Case Law of the Boards of Appeal, supra, I.D.4.4.1 and I.D.4.4.2).

7.5 Person skilled in the art

The respondents argue that the person skilled in the art should be a designer of components of large wind turbine generators, including gearboxes therefor, and not a specialist in gear design, because the former field is the technical field of the patent in suit.

According to the Case Law of the Boards of Appeal (supra, I.D.8.1.1), the starting point for defining the appropriate skilled person (or group of skilled persons) is not only the technical field of the patent in suit, but also the problem to be solved on the basis of what the prior art (D1 in the present case) already discloses.

The Board therefore agrees with the appellants' position that the person skilled in the art is to be considered as a person with knowledge in the general field of gears and gearboxes, and not only in the narrow field of gearboxes for large wind power generators.

In any case, the Board is convinced that a skilled person as defined by the respondents, once confronted with the problem as defined in point 7.4.3, will refer to the specialist in the field of gear design, because the service life of gears depends heavily on the gear design (see Case Law of the Boards of Appeal, supra, I.D.8.1.2: "Competent skilled person - group of people as skilled person").

7.6 D2 - consideration by the skilled person

7.6.1 The respondents note that according to R6 (see the fourth page, second half of the left column: "Simply Huge") gears to be used in the technical field of the patent in suit operate with high loads at very low speed and cannot be compared with gears designed for use in other technical fields.

D2 covers gears of any type, even of plastic material. It does not mention micro-pitting and mentions an improved fatigue life of only 100 hours after polishing.

They therefore conclude that a skilled person would not take a teaching coming from D2 into consideration.

7.6.2 The Board disagrees.

D2 is a document relating to transmission gears, and deals with the issue of improving their wear resistance (see paragraph [1]).

This document teaches that gears having a final surface roughness of 0,25 microns (within 0,127 and 0,254 microns, or 5 to 10 micro-inches, see paragraph [10]) have improved service life, because the maximum contact stress, as well as the subsurface shear stress are reduced as the result of improved lubrication conditions (see paragraph [11]).

The skilled person, being a gear specialist, and in the light of the objective problem as defined above, has therefore good reason to consider D2 and apply its teaching to the apparatus of D1, especially because he can be expected to take account of solutions to this problem proposed in the same or neighbouring technical fields.

Contrary to what is argued by the respondents, the teaching on surface smoothness is presented in D2 as universally valid (see page 5, line 10: "any metal gear"). There may indeed be an example related to gears having a fatigue life (up to 100 hours, see page 3 lines 50-51), but, as argued by the appellants, the "fatigue life" of a gear, which is expressed in hours under testing conditions, is something quite different in the eyes of a skilled person from the actual "service life" of the apparatus comprising such a gear.

7.6.3 As a consequence of the above, the Board concurs with the appellants that D2 would be taken into consideration by the person skilled in the art.

7.7 D1+D2 - combination of teachings

7.7.1 The respondents argue that the teaching of D2 cannot be applied to superfinishing the surfaces of the teeth of very large gears, like those described in D1.

This is because according to the declaration of Mr. Bruins (R12), before the priority date of the patent in suit not even a specialized company like Sparleck GmbH was able to superfinish the surfaces of large gear components (above 100 kg) simply because the manufacture of machines suitable for these gears was not possible.

7.7.2 The Board disagrees. In the first place because such a declaration is just what it is: it expresses the opinion of one company, not necessarily of the entire group of specialists in the field. Secondly, as argued by the appellants, the reasons leading to this opinion would be, even if all the circumstances alleged by the respondents in relation to R12 would be confirmed, only partially known. It cannot for example be excluded that also commercial reasons played an important role.

This declaration cannot therefore prove that the skilled person would always refrain from superfinishing large gears used in low speed planetary gear boxes, especially because he would, in such a situation, have referred to another specialist, namely an expert in the design of machines suitable for surface finishing of big components (see the Case Law of the Boards of Appeal, supra, I.D.8.1.2: "Competent skilled person - group of people as skilled person").

7.7.3 In addition to that, A8 clearly shows (see figure 4 at page 4) that superfinishing of very large gears (up to 1,2 meter diameter, see page 4, left column, point 1) was presented as possible before the priority date of the patent in suit. This already contradicts the declaration R12.

As already discussed above under point 6, the content of A8 belongs to the state of the art, whereas the information that the disclosure of this document is at least partially not enabling does not.

As a consequence, the skilled person would have seen no particular reason not to consider D2. In view of A8 he would not see any difficulty in applying the teaching of D2 to the gearbox disclosed in D1.

7.7.4 The respondents also argue (by referring to R15) that a skilled person dealing with the design of large wind turbine generators, which are costly devices to be installed in rough conditions with difficult access and with an intended design life of 20 years would not depart from accepted practice unless there was an expectation of success based on a reliable teaching. To be reliable such a teaching should be clearly related to the technical field of the patent in suit.

One particular reason for his caution is the so-called lubricant retention or oil-pocket theory: oil retention was considered exceptionally problematic for low speed gear stages such as those presently under discussion.

Starting from D1 the skilled person would therefore not apply the teaching of D2, or of any other document disclosing superfinishing outside of the technical field of the patent in suit, because the roughness values which were customary in gearboxes for wind turbine generators were significantly higher than those disclosed in D2 and now claimed in claim 1 of the main request.

7.7.5 The Board disagrees.

The question whether a skilled person would consider the teaching of documents which are not strictly related to the specific field of the patent as a priori unreliable, and whether and to what extent neighbouring areas beyond the specific field of the patent in suit might be taken into consideration when assessing inventive step is addressed in detail in the Case Law of the Boards of Appeal (supra, I.D.8.2). Reference is frequently made to T 176/84 (OJ EPO 1986, 50) and T 195/84 (OJ EPO 1986, 121).

Accordingly, when examining inventive step, a skilled person would, as well as considering the state of the art in the specific technical field of the patent in suit, look for suggestions in neighbouring fields or a broader general technical field if the same or similar problems arise, and if he could be expected to be aware of such fields.

This is because solutions of general technical problems in non-specific (general) fields have to be viewed as forming part of the general technical knowledge which a priori is to be attributed to those skilled persons versed in any specific technical field.

This situation clearly applies to the present case for the combination of the teachings of D1, which is in the same technical field of the patent in suit, with those of D2, which, as discussed above, relates to the broader field of gear design.

The Board also notes that the skilled person would also consider that the teaching of D2 could be used with a reasonable expectation of success on the basis of the oil pocket retention theory, as it is not in contrast therewith. Indeed, paragraph [12] of this document warns the skilled person that excessively smooth surfaces (less than 3 microinches, corresponding to less than 0,08 microns, which is a value well below the claimed 0,25 microns) would be disadvantageous as they would result in reduced oil retention for lubrication.

In view of the above, the particular circumstances of the present case make that the present decision does not need to go into the ratio decidendi of national decision R15.

7.7.6 As a consequence of the above, the Board concurs with the appellants that the skilled person is in a position to apply the teachings of D2 to the input planetary gearbox of D1.

7.8 D1+D2 - result of the combination of teachings

The Board concurs with the appellants that the combination of the teachings of D1 and D2 renders the subject-matter of claim 1 of the main request obvious.

This is because a skilled person would indeed take a cautious approach. As the respondents argue, because the surface roughness values normally chosen for these gears are above 0,25 microns, he would follow the warning given at paragraph [12] of D2 and limit at first the superfinishing to the upper value (10 microinches) of the range mentioned in this document, which is 0,25 microns.

D2 discloses a system of two gear elements (gear and pinion, see claim 1), in which all gear surfaces of both are superfinished (see claims 5 and 6).

By following this additional teaching of D2 the skilled person would inevitably arrive at the subject-matter of claim 1 of the main request.

8. Independent claim 9 of the main request

D1 discloses a method for reducing lubricant debris (by improving micro-pitting resistance, see page 9, point 4.4.5.4; see also page 54, table G-7, showing the presence of laminar wear debris particles coming from the gears in the lubricant) in an input stage planetary gearbox (see page 21, point A.5.4, "Gear arrangements" where planetary gear arrangements are disclosed in the fourth and fifth paragraphs) for a large wind turbine generator (up to 750 kW, see page 1, point 1, last line), wherein the planetary gearbox comprises a hollow wheel gear, two or more planet gears, and a sun gear (as it is always the case with planetary gearboxes), the method comprising smoothing the teeth of one or more of the hollow wheel gear, two or more of the planet gears and a sun gear to a low surface roughness before operating the gearbox (see page 9, point 4.4.5.4).

D1 only fails to disclose one feature of the subject-matter of claim 9, namely that the method comprises superfinishing (smoothing) the teeth of one or more of the hollow wheel gear, two or more of the planet gears and a sun gear to a surface roughness of 0,25 mym ("microns") or less.

This difference substantially corresponds (mutatis mutandis) to the difference already established and discussed in relation to claim 1.

Based on this difference, the appellants formulated an inventive step attack based on the combination of the teachings of D1 and D2 by adapting the arguments already submitted in relation to claim 1, to the discussion of the method claim.

Also the arguments provided by the respondents in support of inventive step for the subject-matter of this claim substantially correspond to those which have already been discussed above in relation to claim 1.

As a consequence, the Board concludes that also the subject-matter of claim 9 of the main request lacks an inventive step, for the same reasons as discussed above in relation to claim 1 of the main request.

9. Admissibility of the (new) first auxiliary request

9.1 The appellants contest the admissibility of the (new) first auxiliary request filed as late as the oral proceedings with the argument that the subject-matter of independent claims 1 and 9 (to be renumbered as 2) is not clearly allowable as the amendments made do not overcome the inventive step objections already discussed in relation to claims 1 and 9 of the main request.

9.2 The respondents argue that claim 1 and 9 of the (new) first auxiliary request are clearly allowable, and that this is particularly evident for claim 9 in the light of the ratio decidendi of G 2/88 (supra).

9.3 The Board disagrees.

The request is made up of a claim 1 which the Board can recognise as having been in an earlier auxiliary request (with "or less"), and, more importantly, a claim 9 which was only filed with letter of 23 September 2016. The admissibility of the request can therefore clearly be dealt with under Article 13(1) RPBA.

In accordance with the jurisprudence (see Case Law of the Boards of Appeal, supra, IV.E.4.4.1 a)) one criterion for regarding late-filed auxiliary requests as inadmissible under Article 13(1) RPBA is that they are directed to subject-matter which prima facie is not allowable.

This may either mean that such subject-matter does not give rise to new objections or that it does not overcome an outstanding objection.

9.3.1 Claim 9 is not clearly allowable.

The respondents note that claim 9 of the (new) first auxiliary request has been reformulated as a method for reducing or eliminating damage to the bearings of an input stage planetary gearbox for a large wind turbine generator by reducing lubricant debris generated from the gear teeth.

Such a claim clearly overcomes the inventive step objections discussed above. This is because, based on G 2/88 (supra), it should be regarded as a use claim (use of a gearbox), whereby such a use achieves a beneficial effect which was not known before (eliminating damage to the bearings), and therefore as including this technical effect as a functional technical feature.

Clear allowability is given because of this "eliminating damage to the bearings".

9.3.2 The Board disagrees.

G 2/88 (supra) deals with the novelty of second non-medical use in a claim amended from a "compound X" to a "use of compound X for a particular purpose", or similar wording, where the only novel feature was the purpose of that use.

G 2/88 (supra) does not appear to the Board to be applicable in the present case, even if one would not see it as an amendment to the earlier existing method claim 9, but as an amendment to product claim 1.

The reason is that claim 9 is not directed towards the use of the input stage planetary gearbox, but to its production steps. It is a production method. For this reason it is not a prima facie allowable amendment of product claim 1.

9.3.3 Seeing claim 9 for what it is, namely an amendment to method claim 9, the inventive step arguments in point 8 above continue to apply. If the method steps are not inventive, the (realisation of) the inherent effects of executing that obvious method cannot make the subject-matter of claim 9 inventive.

9.3.4 Claim 1 of the (new) first auxiliary request has been amended to further specify that all of the teeth of all of the gears (instead of a plurality of teeth of one or more of the gears) have been superfinished to 0,25 microns.

As discussed above in relation to claim 1 of the main request, the skilled person starting from D1 would apply the teaching of D2 to reduce micro-pitting. This teaching relates to two interacting gear elements and consists in smoothing the gear surfaces of both those elements (see claim 6).

The respondents did not provide any reason why a skilled person would not superfinish all the surfaces of all the teeth of all of the gears of D1 in order to minimize micro-pitting in the gearbox. Such a reason is also not apparent to the Board.

As a consequence, the Board does not see how the amendments to claim 1 of the (new) first auxiliary request may be considered as leading to subject-matter which is now clearly allowable for inventive step.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

(...)

3. Admission of submissions

3.1 Letter dated 13 April 2017

Article 12(2) RPBA provides that the statement of grounds of appeal and the reply must contain a party's complete case. Under Article 13(1) RPBA any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. A non-exhaustive list of criteria to be included in the board's exercise of discretion is given in Article 13(1) RPBA.

The appellant argued that, because respondent 2 had not made a case under Article 12 RPBA, respondent 2's letter dated 13 April 2017 had to be disregarded.

In view of the above considerations, the board does not agree with the approach suggested by the appellant that respondent 2's letter dated 13 April 2017 was to be excluded for the sole reason that no submissions under Article 12(1)(b) RPBA had been filed.

As can be seen from the minutes of the oral proceedings before the board, respondent 2's submissions dealing with sufficiency of disclosure were the only submissions on which the board had to take a decision as to their admission into the proceedings.

In addition to the fact that this line was presented at a very late stage of the appeal proceedings, the board considers the examination of sufficiency of disclosure in relation to a parameter to be a complex matter which can give rise to further issues. It involves the analysis of the parameter as such and its measurement, the evaluation of the knowledge of the skilled person with regard to the specific polymer under consideration and possibly also the assessment of whether Article 83 EPC or Article 84 EPC is to be applied. In these circumstances, the board considers that the aspect of whether or not the line of argument is of prima facie relevance, an aspect which may also be taken into account in the context of Article 13(1) EPC, is outweighed by the aspects of complexity and the procedural stage at which the argument had been brought forward.

(...)

1. Admissibility of the appeal and of the documents D9 and D10

1.1 The patentee argued that the appeal was inadmissible for the reason that the opponent's grounds of appeal were exclusively based on the newly cited documents D9 and D10, documents which should not be admitted into the proceedings because they were late-filed and not prima facie relevant for the subject-matter of claim 1 as maintained according to the interlocutory decision of the opposition division.

The patentee explained that it would have been easy for the opponent to find D9 and D10 in public databases, in particular for the reason that D9, D10 and the present patent had at least one of the IPC classes G01N1/36 or G01N1/28 in common. The mere fact that D9 and D10 were not written in an official EPO language was not a sufficient reason for allowing the opponent to introduce these documents into the proceedings after the nine-month period defined in Article 99(1) EPC. The opponent was supposed to have searched during the nine-month period all existing databases, including those of Japanese utility models, either itself or by mandating a Japanese search company. Furthermore, none of the documents D9 and D10 was novelty destroying or rendered obvious the subject-matter of claim 1. The patentee concluded that D9 and D10 were late-filed, technically not relevant and, therefore, should not be admitted into the proceedings.

In response to a question from the board during oral proceedings, the patentee stated that the filing of D9 and D10 with the statement of grounds of appeal amounted to an abuse of procedure in the sense that these documents were late-filed and that no other objections than those based on D9 and D10 were raised by the appellant in its statement of grounds of appeal against the patent as maintained by the opposition division.

1.2 The opponent was of the view that its appeal fulfilled all the legal admissibility requirements foreseen by the EPC.

It further insisted that documents D9 and D10 were not withheld deliberately by the opponent but that they were retrieved by pure coincidence after the decision of the opposition division with the help of a Japanese client of the opponent, the client having given a hint of the existence of Japanese patent documents disclosing the same invention as the present patent. It was not realistic that the opponent was supposed to search all possible databases in all possible languages. The EPO had also not retrieved these patent documents. Finally, since D9 and D10 were highly relevant for the patentability issue of the claimed subject-matter, they had to be admitted.

1.3 The board notes that the sole reason provided by the patentee for rejecting the appeal as being inadmissible was based on the fact that the opponent's statement of grounds of appeal had exclusively been based on newly cited documents D9 and D10 which should not be admitted into the proceedings.

Following the established case law of the boards of appeal, the board considers that late-filed documents, as long as there is no abuse of procedure by the opponent, may be admitted into the proceedings if they are prima facie sufficiently relevant for questioning the maintenance of the patent (see e.g. decisions T 1019/92, point 2.2 of the reasons; T 671/03, point 2.2 of the reasons; T 1029/05, point 2 of the reasons).

1.3.1 Abuse of procedure

1.3.2 Relevance of D9 and D10

Since the sole reason substantiating the patentee's request to hold the appeal to be inadmissible is not found convincing by the board, and since the board sees no other reason for holding the appeal inadmissible, the appeal is admissible.

2. Main request

2.1 Admissibility

2.1.1 The opponent stated that receiving from the patentee a letter of approximately 90 pages, including a new main request and new first and second auxiliary requests, just a few days before the oral proceedings represented an unfair behaviour of the patentee and justified a restrictive handling of the RPBA when deciding the admissibility of the claim requests. Moreover, the amended feature of claim 1 "... to melt the excess embedding medium ..." introduced a new problem since it contained added subject-matter. Therefore, the main request should not be admitted into the proceedings.

(...)

3. Admissibility of the first auxiliary request

But even if the embedding medium had a melting point below 60°C, the board considers it obvious for the skilled person to increase the temperature of the grooved plate above 60°C in order to solve the problem of rendering the removal of the excess embedding medium formed on the exterior walls of the cassette more efficient. It appears obvious, indeed, that the higher the temperature of the grooved plate, the more efficiently and the faster the excess embedding medium is melted away from the exterior walls of the cassette.

3.2 The patentee argued that the new feature was already implicitly present in the feature of claim 1 of the main request "... temperature sufficient to melt the excess embedding medium". The patentee further noted that the present oral proceedings were the last chance to obtain a patent for its invention. Moreover, the new feature was already present in claim 2 of the main request filed with the patentee's reply to the grounds of appeal. Concerning inventive step, the patentee argued along the lines of its argumentation for the main request.

3.3 Since the subject-matter of claim 1 is late-filed and prima facie not inventive over D9, the board, in view of the current state of the proceedings and the need for procedural economy, exercises its discretion pursuant to Article 13(1) and (3) RPBA not to admit the first auxiliary request into the proceedings.

4. Admissibility of the second auxiliary request

(...)

5. Apportionment of costs

5.1 The patentee requested for the first time with letter of 21 June 2017 the full refund of its costs in accordance with Article 16(1) and (2) RPBA, submitting that the late introduction of documents D9 and D10 only in the appeal proceedings constituted an abuse of procedure. The patentee reiterated its request during the oral proceedings without providing additional arguments.

5.2 Under Article 16(1) RPBA, it is at the discretion of the board to order, after request of a party, an apportionment of costs according to Article 16(2) RPBA and different from the principle that each party shall bear the costs it has incurred (see Article 104(1) EPC for the costs of opposition proceedings). Article 16, paragraph (1)(a) to (e), RPBA lists typical circumstances in which a divergent apportionment of costs is to be taken into account.

5.4 As a result, the board, by exercising its discretion and after having carefully considered the relevant circumstances of the case, for the above-mentioned reasons does not see any persuasive grounds which would justify a departure from the normal rule that each party bears its own costs, and accordingly refuses the request of the patentee for an apportionment of costs.

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

3. The request for apportionment of costs is refused.

In the decision T 488/16, recently discussed in this blog, it became again clear that the EPO is strict in allowing post-published evidence to prove inventive step. The core decision where this follows from is this decision, T 1329/04. 

The cathwords of this decision: The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.

Thus, post-published evidence of a technical effect/advantage is allowed as long as there was enough information in the application as filed to make this 'new' information already plausible. 

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division dated 5 August 2004 refusing the European patent application No. 94 907 259.9 published under the international application No. WO 94/15966 with the title "Growth Differentiation Factor-9" claiming priority from US 08/003303 of 12 January 1993. The decision was based on the main request and auxiliary requests 1 to 3 then on file.
Claim 1 of the main request read as follows:

"1. A polynucleotide encoding a polypeptide having GDF-9 activity selected from the group consisting of:

(a) a polynucleotide having the nucleic acid sequence of SEQ ID NO:3;

(b) a polynucleotide encoding a polypeptide having the amino acid sequence of SEQ ID NO:4;

(c) a polynucleotide which is an RNA sequence corresponding to the polynucleotide of (a) or (b);

(d) a polynucleotide encoding a fragment of the polypeptide encoded by any one of (a) to (c); and

(e) a polynucleotide which hybridises under stringent conditions with the polynucleotide of any one of (a) to (d)."

The main request was found to contravene the requirements of Articles 56, 57, 83 and 84 EPC.

The examining division took document (3) as closest prior art and defined the problem to be solved as being the provision of a putative further member of the TGF-ß super family of protein and/or nucleic acid encoding sequences. The examining division held, in particular, that the mouse GDF-9 cDNA (SEQ ID NO: 3) as well as the protein sequence (SEQ ID NO: 4) did not involve an inventive step because the cloning of a sequence of a putative new member of a gene family based on conserved sequence motifs would be achieved as a matter of routine and also, because the minimal characterisation given, i.e. the tissue specificity of GDF-9 expression was not sufficient to elucidate its physiological function or putative involvement in pathologies or to provide any surprising effect in view of the prior art. The many speculations about the function of GDF-9 which had been made on the basis of tissue distribution were found to be obvious. Finally, the examining division, in this context, refused to take into account the teachings of post-published documents showing that GDF- 9 was a growth differentiation factor because the application per se did not provide any evidence in this respect. The same objections were considered to apply to auxiliary requests 1 to 3 which were found to contravene the requirements of Articles 56, 57, 84 EPC.
II. Following the filing of the appeal, the examining division did not rectify its decision and remitted the case to the board of appeal (Article 109 EPC). Pursuant to Article 11(1)of the Rules of Procedure of the Boards of Appeal, the board sent a communication indicating its preliminary, non-binding opinion.

III. In reply thereto, the appellant filed on 26 May 2005 a further submission together with a new main request and two new auxiliary requests to replace the corresponding previous requests on file. The main request was then withdrawn during oral proceedings before the board which took place on 28 June 2005. The first and second auxiliary request filed on 26 May 2005 were then taken as main and auxiliary requests, respectively. Claim 1 of the new main request read as follows:

"1. A polynucleotide encoding a polypeptide [-] selected from the group consisting of:

(a) a polynucleotide having the nucleic acid sequence of SEQ ID NO:3;

(b) a polynucleotide encoding a polypeptide having the amino acid sequence of SEQ ID NO:4;

(c) a polynucleotide which is an RNA sequence corresponding to the polynucleotide of (a) or (b);

(d) a polynucleotide encoding a fragment of the polypeptide encoded by any one of (a) to (c), which fragment causes growth and differentiation of oocytes; and

(e) a polynucleotide which hybridises under stringent conditions with the polynucleotide of any one of (a) to (d) and encodes a polypeptide which causes growth and differentiation of oocytes." (the differences with claim 1 refused by the examining division are shown in bold).

Claims 2 to 5 related to further features of the polynucleotide of claim 1. Claims 6 to 8, 9 to 11 were respectively directed to a vector/host cells including/transformed by, the polynucleotide of earlier claims. Claims 12 and 13, 14 to 16 respectively related to the polypeptide encoded by the polynucleotide of any one of claims 1 to 5 and to antibodies specific to that polypeptide.

Claim 1 of the auxiliary request corresponded to claim 1 (a) to (c) of the main request.

IV. The documents mentioned in the present decision are the following:

(1): McPherron, A.C. and Se-Jin Lee, J. Biol.Chem., Vol. 268, No. 5, pages 3444 to 3449, February 1993;

(2): Se-Jin Lee, Proc.Natl.Acad.Sci.USA, Vol. 88, pages 4250 to 4254, May 1991;

(3): Se-Jin Lee, Mol.Endocrinol., Vol. 4, No. 7, pages 1034 to 1040, 1990;

(4): Jinwen Dong et al., Nature, Vol. 383, pages 531 to 536, 10 October 1996;

Exh.E: Hayashi, M. et al., Endocrinology, Vol. 140, No. 3, pages 1236 to 1244, 1999.

V. The appellant's submissions in writing and during oral proceedings regarding inventive step may be summarized as follows:

Document (3) was the closest prior art. It disclosed the identification of a novel member (GDF-1) of the transforming growth factor-Beta family (TGF-Beta). The GDF-1 cDNA was isolated by screening a cDNA library constructed from mouse embryos with oligonucleotides selected on the basis of the amino acid sequences of conserved regions amongst members of the superfamily. The GDF-1 polypeptide was shown to have all of the structural characteristics of members of the family and, thus, was acknowledged as belonging to it.

The problem to be solved could be defined as providing a new growth differentiation factor of the TGF-Beta family.

The solution provided was the polynucleotide SEQ ID NO:3 encoding the polypeptide SEQ ID NO: 4 (GDF-9; claim 1).

Although being slightly different from the cloning method disclosed in document (3), the method used to isolate GDF-9 cDNA needed not be taken into account when assessing inventive step. Inventive step was to be acknowledged on the basis of the unexpected structural properties of GDF-9. Its sequence was only very weakly conserved (no more than 34% homology with known members of the TGF-Beta family) and, furthermore, it contained only six cysteine residues instead of the seven cysteine residues which were a key characterising feature shared by all members of the family. A further distinguishing property was that GDF-9 expression was restricted to ovarian tissue whereas GDF-1 expression had been shown to occur not only in brain but also in ovary and adrenal gland (document (2), passage bridging pages 4250 and 4251).

The present case was, in fact, analogous to that dealt with in decision T 182/03 of 23 June 2004 where inventive step was acknowledged to a nucleic acid encoding human cAMP-specific phosphodiesterase (PDEIVB) of SEQ ID NO: 2, on the basis of the unique structural features of the enzyme and of its restricted pattern of expression. The then competent board had accepted post- published evidence that a drug had been developed on the basis of the enzyme's structural properties as supportive of inventive step.

In the present case, the appellant had also filed numerous post-published documents as further evidence of the role of GDF-9 as a growth differentiation factor. Admittedly, this evidence served to support the description in the application as filed of presumed functions of GDF-9, rather than to support any kind of technical evidence that GDF-9 would be capable of performing any one of these. Yet, predictions should be permitted because of the "first to file" approach of the European patent system which forced the applicant to cover all subject-matter connected to the invention. Furthermore, in accordance with the case law (T 939/92 OJ EPO 1996, 309, point 2.6.2 of the decision), reasonable predictions of relations between chemical structure and biological activity could be taken into account while assessing inventive step. Thus, the combination of the predictions regarding the functions of GDF-9 - as the post-published documents corroborated - with the disclosure of the structural properties specific to GDF-9 was sufficient evidence for a surprising effect to be acknowledged, which warranted recognition of inventive step.

VI. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the first or second auxiliary requests, to be taken as main and auxiliary requests, filed on 26 May 2005.

Reasons for the Decision

Main and auxiliary requests

Article 56 EPC; inventive step of the subject-matter of claim 1(a), i.e. a polynucleotide having the nucleic acid sequence of SEQ ID NO:3 and claim 1(b), i.e. a polynucleotide encoding a polypeptide having the amino acid sequence of SEQ ID NO:4.

1. The closest prior art is document (3), a study in the field of cell differentiation. In its introductory part, it provides a list of polypeptide factors which play critical roles in regulating differentiation processes during embryogenesis. These factors are regrouped in a superfamily, the TGF-Beta superfamily, on the basis of their functional and structural relationships to the transforming growth factor-Beta which itself has influence on a wide variety of differentiation processes such as adipogenesis, myogenesis etc.. The structural features common to the family members are discussed on page 1035, right-hand column, last paragraph to page 1037, left-hand column, first paragraph. They reside in the C-terminal domain which starts with a cluster of basic residues. Seven cysteine residues are conserved with their characteristic invariant spacing (16/16 members of the family; Fig.3A). Furthermore, there exists amino acid sequence homology between the TGF-Beta family members in the regions starting with the first conserved cysteine residue and extending to the C-terminal end (Fig. 3B).

2. The aim of the work described in document (3) is to isolate a further member of the TGF-Beta family. A cDNA library is constructed and screened with oligonucleotides selected on the basis of the amino acid sequences of conserved regions amongst known members of the family. A positive recombinant clone is obtained which carries a cDNA encoding a 357 amino acids long protein designated GDF-1. A comparison (cf. page 1035, right-hand column) of the GDF-1 122 amino acids long C-terminal domain with that of known members of the TGF-Beta family shows the presence of the cluster of basic residues at the beginning of the domain, of the seven cysteine residues with their characteristic spacing as well as of many of the other highly conserved amino acids. In addition, GDF-1 is 52% homologous to a previously identified member of the family: Vg-1 (page 1037, left-hand column). On page 1038 (right-hand column), it is mentioned that: "An elucidation of the specific role(s) played by GDF-1 during embryogenesis and/or adult animals awaits characterization of the temporal and spatial patterns of GDF-1 mRNA expression and the functional activities of GDF-1 protein both in vitro and in vivo." Yet, it is concluded on the basis of the structural analysis that "the predicted sequence of GDF-1 clearly identifies it as a new member of this superfamily." (cf. page 1038, left-hand column).

3. It follows from the overall information given in document (3) that, while the TGF-Beta superfamily was initially identified by comparing the sequences of factors having a common role (their involvement in differentiation), once an unambiguous consensus sequence had been defined, the skilled person was prepared to accept that a polypeptide belonged to the TGF-Beta family if it exhibited this consensus sequence, even in the absence of any evidence as to its role.

4. Starting from document (3), the problem to be solved can be defined as isolating a further member of the TGF-Beta superfamily.

5. The solution provided is the polynucleotide of SEQ ID NO:3 encoding the polypeptide of SEQ ID NO:4, denoted GDF-9 (claim 1(a) and (b)).

6. Whether or not the problem as defined in point 4 above has been plausibly solved, i.e. whether or not it is plausible that the molecule as defined in point 5 above constitutes a further member of the TGF-Beta superfamily needs to be investigated.

7. In the application as filed (pages 10 and 11), GDF-9 is described as a 441 amino acids long protein having a C- terminal domain preceded by a putative tetrabasic proteolytic processing site. Yet, it does not exhibit the most striking structural feature which serves to establish whether or not a polypeptide belongs to the TGF-Beta family: namely the presence of the seven cysteine residues with their characteristic spacing; in fact, only six cysteine residues are present (cf. page 11, lines 3 to 9). The common general knowledge regarding cysteine residues is that because of their ability to form S-S bridges, they play a fundamental role in the tertiary structure of proteins, which tertiary structure is to a very large extent responsible for functional activity. Accordingly, any change in the TGF-Beta characterising pattern of seven cysteine residues and their invariant spacing would be expected to have significant repercussions on the function of any TGF-Beta family member. In the same manner, a molecule which does not exhibit the "seven cysteine residues pattern" cannot clearly and unambiguously be considered a member of the TGF-Beta family, unless further evidence is available to that effect.

8. Furthermore, as already mentioned above, members of the TGF-Beta superfamily share sequence homology. In the part of the application as filed describing the prior art related to the invention (page 2), it is disclosed that subgroups in the family had been defined according to the percentage of homology between members, the members of a given subgroup being from 70% to 90% homologous. Here, GDF-9 is very far from fulfilling this criteria as its sequence is stated to be significantly divergent from those of other family members (cf. page 28), the maximal percentage of homology which was observed being 34% with the bone morphogenetic protein, BMP-4. This implies that GDF-9 cannot be attributed to any subgroup and, thus, must at best be considered as the first member of a yet unidentified subgroup. This finding and that in point 7 lead to the conclusion that, contrary to GDF-1 in document (3), GDF-9 cannot be clearly and unambiguously identified as a member of the TGF-Beta superfamily by only using a "structural approach".

9. Of course, the situation could most probably be looked at differently if it had been demonstrated in the application as filed that GDF-9 played a role similar to that of the transforming factor-Beta (as was the case for all of the factors which initially served to define the superfamily). Yet, there is no evidence at all in this respect. In fact, the application only discloses that expression of GDF-9 is localised in ovarian tissues, which per se is useful but insufficient information in relation to any function the molecule might have.

10. As already pointed out above (cf. point 8), in the application (page 28), it is admitted that "..., the sequence of GDF-9 is significantly diverged from those of other family members". Yet, functions of members of the TGF-Beta superfamily previously isolated from ovarian follicular fluid (inhibins) or shown to inhibit ovarian cancer (MIS) are recited, and tentatively and presumptively attributed to GDF-9. Further putative roles are also suggested for GDF-9 which cover some of the effects observed with TGF-Beta (paragraphs bridging pages 8 and 9). At oral proceedings, it was argued that speculations of this kind should be permitted because of the "first to file approach" of the European patent system which forced the applicant to cover any and all subject-matter connected with its invention. The board is unable to endorse this reasoning. On the contrary, in a first-to-file system the (earlier) filing date of the application, not the date at which the invention was made determines to whom of several persons having made an invention independently of each other, the right to a European patent belongs (cf. Article 60(2) EPC). Hence, it is particularly important in such a system that the application allows to conclude that the invention had been made, i.e. that a problem had indeed been solved, not merely put forward at the filing date of the application. Therefore, the issue here is rather how much weight can be given to speculations in the application in the framework of assessing inventive step, which assessment requires that facts be established before starting the relevant reasoning. In the board's judgment, enumerating any and all putative functions of a given compound is not the same as providing technical evidence as regard a specific one.

11. Accordingly, as a significant structural feature fails to be identical in TGF-9 and the members of the TGF- Beta superfamily, and no functional characterisation of TGF-9 is forthcoming in the application, it is concluded that the application does not sufficiently identify this factor as a member of this family i.e. that there is not enough evidence in the application to make at least plausible that a solution was found to the problem which was purportedly solved.
12. The appellant filed post-published evidence (e.g. document (4) and Exhibit E) establishing that GDF-9 was indeed a growth differentiation factor. This cannot be regarded as supportive of an evidence which would have been given in the application as filed since there was not any. The said post-published documents are indeed the first disclosures going beyond speculation. For this reason, the post-published evidence may not be considered at all. Indeed, to do otherwise would imply that the recognition of a claimed subject-matter as a solution to a particular problem could vary as time went by. Here, for example, had the issue been examined before the publication date of the earliest relevant post-published document, GDF-9 would not have been seen as a plausible solution to the problem of finding a new member of the TGF-Beta superfamily and inventive step would have had to be denied whereas, when examined thereafter, GDF-9 would have to be acknowledged as one such member. This approach would be in contradiction with the principle that inventive step, as all other criteria for patentability, must be ascertained as from the effective date of the patent. The definition of an invention as being a contribution to the art, i.e. as solving a technical problem and not merely putting forward one, requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve. Therefore, even if supplementary post-published evidence may in the proper circumstances also be taken into consideration, it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve.

13. The appellant cited two decisions in support of its case. In T 182/03 (supra), inventive step was acknowledged to human cAMP-phosphodiesterase on the basis of its unexpected properties, it being structurally divergent from other phosphodiesterases and its expression being restricted to specific tissues. In this earlier case, however, the question of whether or not the enzyme was a solution to the problem to be solved - which has to be positively answered before any other criteria are taken into consideration - did not arise. Thus, the rationale underlying said decision has no bearing on the present case.

14. Decision T 939/92 (supra) was cited insofar as it held that it was possible to take into account predictions of relations between chemical structure and biological activity when assessing inventive step. That is indeed what is stated in point 2.6.2 of the decision, the sentence however continues to "... but ... there is a limit beyond which no such prediction can be validly made." In the board's judgment, the present case goes beyond the acceptable limit in the sense of that decision because the chemical structure of GDF-9 is not that for which the predicted biological function would be expected (see points 7 and 8, supra).

15. For the above reasons, the main request is refused for lack of inventive step of the subject-matter of claim 1 (a) and (b). As the same subject-matter is found in claim 1 of the auxiliary request, the said request is also refused for the same reasons.

ORDER

For these reasons it is decided that:

The appeal is dismissed.

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Auxiliary request 3

Article 123(3) EPC

The feature "wherein each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17 of complements thereof"

25. Amended claim 1 of auxiliary request 3 defines the first and second primers by the feature that "each of said first and second primer hybridizes with said sequence of SEQ ID NO: 17", and further requires that they "specifically generate an amplicon if such MRSA strain is present in said sample" (cf. point XII supra). Thus, even though the first primer is not explicitly required to hybridize with the SCCmec element right extremity of the MREJ type xi of sequence of SEQ ID NO: 17, a detection of the MRSA strain in the sample implicitly requires that at least one of the primers, if not both of them, must necessarily hybridize with sequences located within the polymorphic right extremity of the SCCmec because it is this specific polymorphic sequence which characterizes the MREJ type xi MRSA strain and allows its detection (cf. paragraphs [0007], [0012] and [0034], and claim 1 of the patent application).

27. Thus, the appellant's request to maintain the patent on the basis of claims 1 and 2 according to auxiliary request 3 fails.

(...)

(...)

Hence, the request for re-establishment of rights is admissible.

3. The appellant has, however, not shown that all due care required by the circumstances was taken to comply with the time limit for filing the appeal fee (Article 122(1) EPC).

3.1 In the case at hand, the appellant submits that the failure to comply with the missed time limit resulted from the decision to send the notice of appeal before payment of the appeal fee and the erroneous simultaneous removal of the time limit from the docketing system by an assistant, which went unnoticed by the representative.

3.3 The party requesting re-establishment of rights bears the burden of making the case and proving that the requirements are met (CLBA supra, III.E.5.2., last paragraph). Thus, in the present case the appellant bears the burden of proof to show the existence of a normally satisfactory monitoring system.

3.5 In the present case, the monitoring system was overridden before the error occurred (see 3.5.1) and the way information was exchanged between the patent department and the accounts department (see 3.5.2) made the system error-prone to begin with.

3.5.4 Therefore, the case at hand cannot be compared with the case underlying decision T 1355/09 where an order in writing to pay the appeal fee was not carried out. In that case it was the task of the accounting department of the Appellant's parent company to effect all payments ordered by the Appellant, a small patent exploitation agency that employed only four persons. The Board found that the Appellant had no influence over the further execution of its orders, which were sent by internal post to the relevant department of its parent company and had been reliably carried out over the last years. The Board found that the risk of errors in this context was relatively low and came to the conclusion that no additional control mechanism had to be in place as had been found previously in decision T 836/09 regarding the checking of outgoing mail.

In the case at hand, on the contrary, it was the task of the patent department, i.e. the representative and his assistant, to effect the payment. Thus, the patent department had not yet done everything within its competence to file the appeal in time. Taking into account the difficulties of getting prompt information regarding the sufficiency of funds in the account (cf. sections 3.5.2. and 3.5.3 above), one can also not describe the procedure for paying fees as being low risk. Thus, the reasoning in decision T 1355/09 (reasons 1.4 - 1.7) does not apply here.

3.8 To conclude, the omission in paying the appeal fee and the deletion from the docketing system of the time limit for paying such a fee was due to an apparently unsatisfactory monitoring system and lack of due care from the representative.

3.9 For these reasons, the request for re-establishment of rights is to be refused.

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