CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1574/21 – Request for a declaratory judgment on SPV not admitted

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The application relates to a method and systems for localizing an oral cleaning device within a user’s mouth, i.e. localizing a toothbrush in a user’s mouth.

Brief outline of the case

The present application is a divisional application from EP 16784579/3 244 827.

The ED had decided, inter alia, that:

(1) the claimed subject-matter of the MR as well as of AR1 and 2 fell within the exceptions to patentability under Art 53(c).

(2) the subject-matter of AR 3-9 extended beyond the content of the parent application as originally filed pursuant to Art 76(1).

The application was thus refused and the applicant appealed.

The board held that the subject-matter of the MR, AR1-4 and 8-9 extended beyond content of the earlier application.

AR 2A and AR5-7 lacked clarity.  

AR 2B, 2C and 2D were filed after the summons and therefore not taken into account.

The application was thus refused for good.

The search report

Following an invitation pursuant to R62a(1) and 63(1), the search report was replaced by a declaration according to which a search was not possible as the method claims related to a non-patentable method under Art 53(c).

The SD referred to T 290/86 (Blendax). In this decision, it was held that removing plaque has not only a cosmetic aspect, but also a therapeutic one. As it was not possible to distinguish between the two, the method was not patentable as a whole.

The proprietor’s point of view

The proprietor referring, inter alia, to the Guidelines as well as to G 1/04 and G 1/07, argued that the ED had a fundamentally flawed understanding of the EPC and the case law.   

The proprietor submitted that its method related to the location of a device in the mouth of a user, but did not imply any brushing of the teeth. The method at stake related merely to the processing of data, and was thus not falling under the prohibition of Art 53(c).

The applicant considered that the ED committed a SPV by violating the fundamental principle of equality of arms. Whilst on the one hand, for certain aspects it dismissed G 1/07 and some T decisions, on the other hand, used the same case law to build its own argumentation.

In spite of the alleged SPV, the applicant did not request the reimbursement of the appeal fee and the remittal for further prosecution.

The board’s decision with respect to the alleged SPV

For the board, the applicant requested a declaratory judgment stating that a SPV occurred during the proceedings before the ED.

The request was only aimed at establishing that the ED had committed a SPV.

No procedural consequence, such as the reimbursement of the appeal fee or remittal of the case to the ED, was derived from this. Thus, the requested finding has no bearing on the course or outcome of the appeal proceedings.

Therefore, the applicant had no interest in legal protection for the requested finding.

For this reason, the request was not admitted.


On the alleged SPV

The notion of equality of arms can lead to a SPV, but only in specific situations which are procedurally relevant.

If for instance, an ED introduces in the procedure new prior art and does not admit requests attempting to overcome objections based to this new prior art, then it commits a SPV.

The same applies if an OD admits in the procedure a late filed submission of one of the parties, but does not admit a submission of the other party in reply to the late submission.

In the present case, the situation is different. The ED might have committed an error in its interpretation of case law or of the substance of the claims, but this is not a procedural violation and even less a substantial one.

It can certainly not be said that the present decision of the ED suffered from a lack of reasoning. The contrary seems true. Simply the applicant did not agree with the reasoning provided as the ED had used case law with a different view to that of the applicant. However, lack of reasoning amounts to a SPV, cf. T 27/20 or T 66/20.

If every time a party does not agree with a division of first instance, the latter was meant to commit a SPV, every appeal would be successful not on the substance, but for procedural reasons.

There is a long line of case law according to which an error in substance or of judgement is not a procedural error. See for instance T 196/21, T 929/18 or T 2381/19.

A decision might be incorrect and set aside by a board, but if the procedure which led to the decision was correct, there is no SPV, cf. T 920/18.  

On the objection under Art 53(c) raised in the decision of the ED

In view of the requests on file and the objections raised by the board, the latter did not have to decide whether the method claimed was not patentable under Art 53(c).

When the applicant claims that the method of detecting the movement of a tooth brush in the mouth of a user, is not a method for brushing teeth, reasonable doubts are permitted. This is especially the case when the method allows to determine which of the user’s teeth were included in the displacement of the tooth brush.

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