CABINET CHAILLOT

T0130/19

Exceptional circumstances, Article 13(2) RPBA , sufficiency of disclosure

The appeal by the patent proprietor lies from the decision of the opposition division according to which European patent No. 2 726 561 was revoked.
Claims 1 of the main request reads as follows:
"1. A cured paint coat comprising a polysiloxane-based binder matrix and one or more biocides, said binder matrix having included as a part thereof hydrophilic oligomer/polymer moieties, wherein the weight ratio between the hydrophilic oligomer/polymer moieties and the one or more biocides is in the range 1:0.02 to 1:20, and wherein more than 50 % by weight of the binder matrix is represented by polysiloxane parts."
The appellant filed a notice of appeal within the two-month time limit prescribed in Article 108 EPC. However, due to the erroneous indication "not specified" in the "Method of payment" box on Form 1038E, the debit order for the payment of the appeal fee was not carried out before expiry of that time limit.
The appellant requested a correction under Rule 139, first sentence, EPC of Form 1038E.
The requested correction fulfills the conditions set out in decision G 1/12. A correction under Rule 139 EPC in a similar factual situation concerning an appeal in an ex parte case was allowed. The Board fails to discern why the reasoning regarding the applicability of Rule 139 EPC in an ex parte case should not apply for an appeal in an inter partes case. The deciding board did not say that they would have decided otherwise if it were an inter partes case. It can be also referred to decision T 3098/19 in which a correction of the amount of appeal fee pursuant to Rule 139 EPC was authorized in an inter partes case in application of decision G 1/12.
In the present case, the indication "011 Appeal fee for an appeal filed by an entity other than those referred to in Rule 6(4) and (5) EPC" in original Form 1038E shows that the intention of the patent proprietor was to pay the appeal fee at the same time as filing the notice of appeal. The request for correction was filed on the day that the appellant was informed by a telephone call from the registrar that the payment method had not been specified, i.e. without delay.
The Board concludes therefore that the request for correction of Form 1038E is to be allowed and that the appeal is therefore deemed to have been timely filed.
The admittance of D26 submitted by the appellant after issuance of the summons to oral proceedings is to be decided on the basis of Article 13(2) RPBA 2020 according to which any amendment to a party's case after notification of a summons to oral proceedings shall in principle not be taken into account unless there are exceptional circumstances.
The fact that this document, which was known to the respondent, only became publicly available after all submissions by the appellant before the summons had already been filed, together with the fact that its teaching puts the respondent's submissions in perspective justifies in the Board's opinion the submission of D26 at a later stage of the proceedings and fulfils in particular the requirements of Article 13(1) RPBA 2020. The Board, therefore, identifies the presence of exceptional circumstances, and decided to admit D26 into the appeal proceedings.
According to the established jurisprudence of the Boards of Appeal of the EPO a European patent complies with the requirements of sufficiency of disclosure if a skilled person, on the basis of the information provided in the patent specification and, if necessary, using common general knowledge, is able to carry out the invention as claimed in its whole extent without undue burden.
This means in the present case that the skilled person should be able to prepare a cured paint coat as defined in claim 1 which comprises (i) a polysiloxane-based binder matrix including as a part thereof hydrophilic oligomer/polymer moieties and (ii) one or more biocides.
Apart from the question of achieving a weight ratio between the hydrophilic oligomer/polymer moieties incorporated in the polysiloxane-based binder matrix and the one or more biocides which is in the range 1:0.02 to 1:20, it is undisputed that the composition as defined in claim 1 is sufficiently disclosed to be carried out by a skilled person.
The skilled person could determine the amount of hydrophilic oligomer/polymer moieties (PEG) covalently incorporated in the polysiloxane-based binder matrix.
Under these circumstances, the Board concludes that the subject-matter of claim 1 and of claims 9 and 14 have not been shown to lack sufficiency of disclosure.
The case is remitted to the department of first instance for further prosecution.

 

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