CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 3277/19 – OP in person in spite of requests by both parties for OP by ViCo

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The patent relates to a heat pump laundry dryer including a heat pump system having an improved process air duct within the basement of the laundry dryer. It relates especially to the geometry of the process air duct.

Brief outline of the case

The opposition was rejected and the opponent appealed the decision.

The board held that claim 1 as granted lacked IS over CPA=E5=EP 2 570 546.

The valid AR were also not allowable for lack of IS with E5 as CPA.

The patent was thus revoked.

The decision is interesting as both parties, first the opponent and then the proprietor, having requested OP by ViCo, the board nevertheless maintained in-person OP.

The opponent’s position

The opponent stated in writing that in-person OP are “much more complicated, time-consuming and expensive” and “cause much more CO2 emissions than OP held by ViCo“.

The opponent also argued that that the COVID-19 pandemic “is not yet over” and that postponements may be avoided by holding OP by ViCo, and they did not outweigh the aspects due to which the board determined the format to be in-person. 

The opponent further argued that the ViCo format was suitable since “the appeal proceedings are based on documentary evidence only”.

The proprietor’s position

The proprietor argued that the “Oktoberfest” (and indeed any trade fairs or other large-scale events) may sometimes make travel and accommodation more complex and expensive.

The board’s position

The board found that the subject-matter of the proceedings involved complex explanations which made in-person proceedings the appropriate format to be used in the present case.

This was already explained in the board’s communication pursuant to Art 15(1) RPBA20 and the parties did not further comment on this at the OP. Notably, in the OP itself flip-chart drawings using various colours and simultaneous explanations while developing the drawings on several occasions were made by the opponent, which the board considered merely confirming why in-person OP was the appropriate format for these proceedings, despite both parties requesting OP by ViCo.

Whilst drawings or sketches supporting or helping to illustrate oral submissions could also be made at OP held by ViCo in a different way, e.g. by sharing the screen or by using the whiteboard, the board considered in-person OP the more appropriate and efficient format in the circumstances of the present case, not least since it expected lengthy discussions on issues for which such visual aids might be referred to often and extensively.

For the board, it is the combination of at least oral and written submissions comprising requests, allegations of fact, objections, arguments, and any documentary evidence which is taken into account in proceedings before the board, subject to any non-admittance issues, which was important. In as far as the opponent’s statement was to be understood so as to distinguish the current case from other cases in which evidence would have to be taken by inspection or by hearing witnesses, the board was nevertheless of the view after taking this argument into consideration that in-person OP remained the appropriate format for the considerations set out above.

As far as the Oktoberfest argument is concerned, the board noted that the proprietor did not bring this argument before the OP and it was raised at a moment that it came too late to have any effect on the board’s decision. Furthermore, the proprietor did not provide any evidence supporting his views.

The board accepted that last minute available flights or other transportation options and accommodation are often less numerous in situations like the Oktoberfest or big trade fairs. Whether such problems could anyway have been largely mitigated by the proprietor in the present case by early booking of e.g. travel arrangements, given the fact that the summons to in-person OP was issued more than a year before, could be left undecided.


This decision is interesting as it shows that OP by ViCo are not always appropriate. It also shows that OP by ViCo are not equivalent to in-person OP as claimed by certain boards, cf. T 758/20 or T 1158/20, both commented on this blog.

The board’s argument with respect to the use of flip-chart is a very pertinent one. When figures from the flip-chart are hung on the walls of the room in which the OP takes place, the deciding body has them under its eyes during deliberation. Sharing a screen or using the whiteboard function in OP by ViCo does not have the same impact. The drawings disappear after having been shown, whereas with a flip-chart they stay. Sometimes, it can make a big difference.

In the present case it is clear that in-person OP were the better option. The OP before the OD was held in person as it was before the pandemic.

I have experienced representatives being very keen to have OP or to visit the EPO with their clients during the Oktoberfest.

As the pandemic is now over, the following question thus arises: in how far mandatory OP by ViCo in first instance are more appropriate than in-person OP before the boards? After all, Art 116 and R 115 and 116 do not make any difference between OP before a department of first instance or before a BA.

On the procedure

The ESR only mentioned 2 documents in category A. The CPA E5 shares at least one IPC classification unit with the patent. The search was carried in D06F, but E5 not found. In view of the board’s decision, the patent should never have been granted in the form it was. The board set aside the OD’s decision to reject the opposition and ended up by revoking the patent. One more to the nearly 60% of decisions of an OD set aside in 2023.


Art 116

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6 replies on “T 3277/19 – OP in person in spite of requests by both parties for OP by ViCo”

Paolo Santonicolasays:

Dear Mr. Thomas,

I know really well such a BoA decision as I represented the Opponent throughout the whole appeal proceedings up to the hearing before the Board.

Really I believe that T 3277/19 should be considered a key decision of the BoA not just limited to the point of the format of the hearing (in person despite both Parties having requested videoconference), but, in my view, especially due to the point of the assessment of the inventive step of a broad claim (which caused the appealed OD decision to be completely overturned).

As it can be read at paragraphs 2.7 to 2.9 of the reasons for the decision, the Board held that, if no technical effect over the whole claimed range can be acknowledged, then the OTP can only be defined as how to provide an alternative to the technical solution disclosed in the CPA.

In such a situation (lack of technical effect), the distinguishing feature is subjected to be considered nothing more than a mere design choice lying within the normal practice of the person skilled in the art and attainable merely by applying routine design measures.

This decision is manifestly departing from an excessively scholastic application of the could-would approach which, in my view, would risk being too generous for the Patentee and even weakening the inventive step requirement.

Apart from my personal involvement in this appeal case, actually I’m convinced that, in case of ascertained lack of technical effect, inventiveness should not be acknowledged even in case of absence of specific hints in the prior art.

Many thanks for your kind attention.

Best Regards.

Paolo Santonicola

Avatar photoDaniel X. Thomassays:

Dear Mr Santonicola,

Thanks for your comment.

When, applying the problem-solution approach, in the absence of the effect stemming from the difference, then the objective technical problem is indeed to look for an alternative.

The OTP can end up as being an alternative, if no technical effect can be obtained or demonstrated, or if the effect is not present over the whole breadth of the claim.

Looking for an alternative does not necessarily mean that the subject-matter of the claim lacks the necessary IS in order to get a patent granted.
I would go as far as to say that different possibilities occur

– There is no suggestion in the available prior art to choose the alternative solution disclosed in the claim. Then IS cannot be denied. This for instance illustrated in T 1400/06.
– There is a plurality of possibilities to implement the alternative solution. As soon as there is a choice between two possible solutions, it is in general difficult to say that the chosen solution is obvious and that IS is lacking. This boils down to the famous could/would.
– There is only one possible way to come to the alternative. Then IS is indeed lacking.
– The last possibility is that by common general knowledge, the skilled person is induced to come to the claimed solution. This is the case in the present patent were IS was lacking.

In the two first cases, IS cannot be denied.
In the two last cases, IS is indeed lacking.

It is manifest that the broader a claim is, the more chances it has to lack IS. What has to be avoided is indeed a wrong application of the “could/would”.

My experience is that for an opponent, the skilled person is hyper intelligent and would manifestly come to the proposed solution. On the other hand, for the proprietor, the skilled person is thick as two planks and would never combine anything or use its common general knowledge. The truth is somewhere in between.

I have thus difficulties sharing your view that the present decision is manifestly departing from an excessively scholastic application of the “could-would” approach.

It is not a question of being too generous with the proprietor, it is simply to keep the balance between the parties. In case of ascertained lack of technical effect, inventiveness can however be acknowledged, even in case of absence of specific hints in the prior art.

In case of an alternative, T 1400/06 shows that IS can be recognised. T 141/06, shows the contrary. In T 1656/07, there were hints in the prior art which rendered the alternative obvious.#

In 278/14, the technical problem as formulated by the proprietor is not solved by claim 1 across its whole scope and needs to be reformulated in a less ambitious manner, i.e. the provision of an alternative process.

Paolo Santonicolasays:

Dear Mr. Thomas,

many thanks for your kind considerations and for having summarised in such a clear and exhaustive manner the relevant EPO Case Law.

I’m perfectly actually that, when no technical effect over the whole claimed range is acknowledged, the OTP may be formulated as how to provide an alternative to the technical solution disclosed by the CPA and I thoroughly agree that lack of technical effect per se is not tantamount to lack of inventive step.

I may actually understand that the wording “manifestly departing from an excessively scholastic application of the could-would approach” in my previous comment (which anyway only applies to the circumstance of lack of technical effect over the whole claimed range) could sound as somewhat exaggerated. Of course, I fully acknowledge that the “could-would” approach is a fundamental criterion in the assessment of inventive step, especially to prevent such an assessment from being biased by inadmissible hindsight.

However, in my personal view, incentives in the background art are more prone to be found when there is the perspective of attainable technical effects. Conversely, incentives in the background art might be less likely when the claimed invention is nothing else than a mere alternative to the CPA. In the latter specific circumstance, I believe that the “could-would” approach actually risks to be more favorable for the PP than for the Opponent.

In this context, authoritative decision T3277/19 represents in my opinion a key decision since it keeps the right balance between the Parties by taking also into account that (in case of a broad formulation of an independent claim encompassing embodiments completely different from each other and in particular completely different from the only embodiment disclosed in the specification), there might be anyway contingent/practical reasons that would have led the person skilled in the art to modify the CPA into one of the embodiments falling within the broad scope of the independent claim, also in absence of specific hints in the background art.

Thanks for this precious opportunity for better clarifying my point of view and thanks again for your kind attention.

Best Regards,

Paolo Santonicola

Avatar photoDaniel X. Thomassays:

Dear Mr Santonicola,

Thanks for your last comment on IS in case of the OTP being reduced to provide an alternative. It certainly clarified your position.

I would consider T 3277/19 as exemplary for one important aspect: The claim at stake might look long, intricate and complicated. However, the board has shown clearly that this does not hinder to deny IS to such a claim, when one looks at the core of the invention. It took a careful and lengthy analysis, but it could be shown that IS was indeed lacking.

That E5 was not found during the original search is surprising, as it not only shares at least one IPC classification unit with the patent, but the inventors of E5 were two of the inventors named in the patent. However, to be fair, E5 was not filed during the opposition period. It was late filed but admitted by the OD. That the board had a different view than that of the OD with respect to E5 is always possible as the board still have more time to look at a case than an OD.

Incentives in the background art might be less likely when the claimed invention is nothing else than a mere alternative to the CPA, but it does hinder that an alternative can be nevertheless be inventive, even in the absence of hints. With hints in the prior art, the demonstration of lack of IS might simply be easier.

Paolo Santonicolasays:

Dear Mr. Thomas,

coming back to the point of the op by ViCo, I observe that T 3277/19 is linked to e.g. T1158/20 for the exercise of the discretionary power to hold the op in a format other than the one requested by the Parties. However, taking the peculiarities of the two cases into consideration, such a discretionary power was exercised in completely opposite directions.

In view of such a divergent application of the BoA discretionary power (and above all in view of existing asimmetry you mentioned between the formats of 1st instance op and of 2nd instance op), do you believe that some news regarding to the point of the op by ViCo are to be expected in the next months?

Best Regards,

Paolo Santonicola

Avatar photoDaniel X. Thomassays:

Dear Mr Santonicola,

Thanks for your comment on general procedural issues at the boards and on OP by ViCo.

I have, at multiple opportunities, drawn the attention to the very diverging case law in procedural matters before the EPO. This is not good for the acceptance of the boards as it presently literally boils down to a lottery when going to appeal.

When it comes to deletion of claims or combination of claims as granted, we also have large divergences.

That the procedural rules have been tightened in order to accelerate the appeal procedure is also one of the aims of the RPBA 20/21. The problem is that with the RPBA20/21 the boards have been given a large discretion, but there is no way or means to help the boards on how to exercise this discretion.

One could get the impression that the strictness of a board in procedural matters depends somehow on the achievement of the target given to the board. This target is to be seen in the list of cases to be dealt with in a calendar year. It would be interesting to see if there is such a correlation.

As far as OP by ViCo are concerned, G 1/21 has clarified the situation. Besides in case of emergency impairing the parties to appear before the boards, the gold standard in matters of OP is in-person OP. This standard should apply not only at the boards, but also in first instance.

T 1158/20 is a decision which simply goes too far, as the board has not hesitated to declare that G 1/21 had become obsolete, without sending a new referral to the EBA as required by Art 21 RPBA. The convenience of a board should not be a determining factor when it comes to decide the form in which OP by ViCo will be held.

If both parties agree to OP by ViCo and the case is appropriate, an exception to this rule is envisageable. There are also decisions refusing a mixed-mode OP.

As far as OP by ViCo for the first instance are concerned, it has been a policy decision of the upper management of the EPO to only allow the OP by ViCo, with very few exceptions. This position is most probably to be seen linked with another policy decision of the upper management of the EPO.

With the program “Bringing teams together” (sic), one is allowed to consider that examiners are actually dissuaded to work on the premises of the EPO. If an examiner wants to come to the office, he has apparently to file a request for an office. A permanent office is not any longer guaranteed to an examiner. Some exceptions are certainly possible.

As far as OP by ViCo in first instance are considered, I do not expect a change of policy in the next few years.

What is bothering is that OP by ViCo do not have a legal basis in the EPC or in its Implementing Regulations. The representatives of the president of the OP during the OP on G 1/21, did not get tired to repeat that the EPC and its Implementing Regulations can be amended by secondary legislation. I still have to disagree as the EPC can only be amended by a Diplomatic Conference, cf. Art 172, and the Administrative Council can only amend the Implementing Regulations if the amendment is not contrary to the EPC, cf. Art 164(2).

I fail to see in these two legal rules the possibility to amend the EPC and its Implementing Regulations by secondary legislation. That the exceptional situation created by the pandemic required quick action in order to avoid backlogs in first and second instance is not at stake. But there was no hindrance to correspondingly amend the EPC and its Implementing Regulations in a legally adequate matter.

It should not be forgotten that when OP by ViCo were introduced at the EPO, it was only possible to hold OP by ViCo in examination and the applicant had to give up its right to an OP in person. Those restrictions have been swept away.

That the EPO should adapt its procedures to advances in technology is not at stake. As the builders of the EPC could not conceived the appearance of the Internet, they could not conceive either the appearance of ViCo terminology. That the EPO should provide the possibility of OP by ViCo is not at stake. What is not acceptable, is that with the EPC as it stands, there is no choice of the form of OP in first instance.

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