The present patent results from a divisional application of EP06726789/EP 1 877 486.
The patent relates to acrylic blends of low molecular weight acrylic polymers with high molecular weight acrylic polymers.
Brief outline of the case
The patent was maintained according to a new MR filed during OP before the OD.
The opponent appealed the decision of maintenance.
For the board, claim 3 as maintained, relating to the use of acrylic blends, lacked N under G 2/88 over D3a=AU which was the English version of D3=WO 00/78863.
Claim 3 of AR1-2 had the same defect.
An amended AR3 was admitted under Art 13(2) RPBA.
The objections of lack of IS raised by the opponent after the communication under Art 15(1) RPBA were not admitted under Art 13(2) RPBA.
Eventually, the board maintained the patent on the basis of AR3 filed during OP before the board. The case was thus remitted to the OD, also for adapting the description to the new claims.
The case is interesting as it concerns
- the way to apply Art 13(2) RPBA and
- whether the deletion of claims represents an amendment to the proprietor’s case.
The board’s decision with respect to AR3
AR 3 was filed after notification of the summons to OP. Therefore, without prejudice to the parties’ arguments, its admittance is governed by Art 13(2) RPBA.
The board concurred with the approach taken in several decisions on Art 13(2) RPBA
According to T 247/20, point 1.3 of the Reasons; T 2988/18, point 1.2 of the Reasons; T 2920/18, point 3.4 of the Reasons the examination under Art 13(2) RPBA is carried out in two steps.
The first step is to decide whether the new submission is an amendment to a party’s case. If that question is answered in the negative, then a board has no discretion not to take the submission into account.
If, in a second step the board then considers that the new submission is indeed an amendment to the party’s case, then the board needs to decide whether there are exceptional circumstances, justified by cogent reasons, in order to admit the new submission in the procedure.
Two step application of Art 13(2) RPBA in the present case
First step
AR 3 differs from the MR only in that claims 3 and 4 have been deleted, i.e. it comprises only subject-matter which was also part of the MR.
In the present case, it was not argued by any of the parties that AR 3 did not constitute an amendment to the proprietor’s case. In that regard, the board endorsed the line of case law set out e.g. in decisions T 713/14, Reasons, points 4.2 and 4.3; T 494/18, Reasons, point 1.4; T 2091/18, Reasons, points 4.1 and 4.2; T 2920/18, Reasons, point 3.6 or T 2295/19, Reasons, point 3.4, which likewise concerned deletions of claims or of alternative embodiments within claims and regarded them as amendments. In T 2295/19, the board took the bother to go through a lot of case law on this topic and even consulted the „travaux preparatoires” to Art 114(2).
Second step
In the second step, it remains to be assessed if there are exceptional circumstances, supported by cogent reasons, which justify the admittance of AR 3 into the appeal proceedings.
In that regard, it was undisputed that the successful objection of lack of N against claim 3 was present from the outset of the appeal proceedings.
The same is valid for the objection of lack of N that was pursued by the opponent in the statement of grounds of appeal against claim 4 of the MR, which was also considered to lack N over D3a in the board’s preliminary opinion, although no decision on that claim was eventually needed in view of the negative decision on N reached for claim 3 of the MR. Therefore, the board agreed with the opponent that the filing of a set of claims according to AR 3, i.e. corresponding to the one of the MR in which claims 3 and 4 were deleted, would already have been possible and reasonable with the rejoinder to the statement of grounds of appeal.
However, in similar cases, some boards have acknowledged exceptional circumstances when the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA 2020, nor to the legitimate interests of a party to the proceedings.
This specific procedural situation was considered an “exceptional circumstance” within the meaning of Article 13(2) RPBA, see e.g. T 1598/18, Reasons: point 25.1; T 1294/16, Reasons: points 18.3 and 19; T 339/19, Reasons: point 1.5; T 2920/18, Reasons: points 3.13 to 3.15; T 2295/19, Reasons: points 3.4.12 to 3.4.14; T 499/20, Reasons: point 7.3.3. The present board agreed with this approach and finds it applicable to the present case.
By deleting any other pending AR apart from AR3, whereby the latter only contained claims that were present in the MR allowed by the OD, the board was satisfied that the convergent approach laid down in the RPBA 2020 and the need for procedural economy are respected.
In addition, by maintaining only claims that were until then not attacked by the opponent in appeal proceedings, AR3 is not detrimental to the legitimate interests of the opponent at that point of the proceedings, since no objections had been maintained/raised against these claims. In particular, the admittance of AR 3 would neither alter the factual or legal framework of the proceedings, nor compromise the procedural rights of the opponent.
It was also taken into account that the opponent’s objections regarding an alleged lack of N over D6 that were raised against claim 4 of the MR or claim 4 of the then pending AR 2 filed with the rejoinder to the statement of grounds of appeal were no longer relevant. Under these circumstances, the board was satisfied that admitting AR 3 into the proceedings supports procedural economy.
The Board made thus use of its discretion pursuant to Article 13(2) RPBA by admitting AR 3 into the proceedings.
Comments
Two steps for the application of Art 13(2) RPBA
It seems acquired that Art 13(2) RPBA ought to be applied in two steps.
The first step is to decide whether the new submission is an amendment to a party’s case. If there is an amendment to a party’s case, in the second step, the board checks whether exceptional circumstances which have to be justified with cogent reasons allow the admission of a late flied request once a board has issued a communication.
Deletion of claims – divergent case law
There is divergent case law as to the fact that deletion of claims represent an amendment to the proprietor’s case.
No amendment of a paty’s case
Some boards considered that deletion of claims do not represent an amendment to the proprietor’s case. See T 1480/16, Reasons 2.3; T 2243/18, Reasons 2; T 1792/19, Reasons 2; T 1151/18, Reasons 2.1; T 1857/19, reasons 1.1 and T 2201/19, Reasons 5. In T 2201/19, the board acknowledged that it was deviating from T 2091/18.
Amendment to a party’s case
Some other boards held that in spite of considering such requests as an amendment to the proprietor‘s case they were admitted as they were not detrimental to procedural economy. See T 2091/18, Reasons 3 and 4 ; T 1597/16, Reasons 4; T 1439/16, T 1224/15, Reasons 5; T 908/18, Reasons 1.2; T 682/16, Reasons 7or T 168/16, Reasons 2.1.
Further boards even held that due to the mere fact that such requests were considered as an amendment to the proprietor‘s case ,they were not admitted even if they could be considered as not detrimental to procedural economy. See T 2261/15, Reasons 2.1; T 1259/17, Reasons 2.3; T 482/19, Reasons 5, or T 317/20, Reasons 28 ff.
It would be good if the boards could agree one for all, whether deletion of claims represent or not an amendment of the proprietor’s case and under which conditions they can be admitted in the procedure.
Deletion of claims is certainly improving procedural economy, provided that the claims left after deletion can immediately be considered allowable and alter the factual or legal framework of the proceedings, nor compromise the procedural rights of the opponent. A long discussion whether there are exceptional circumstances supported by cogent reasons appears rather superfluous in such circumstances.
If requests with deleted claims improve procedural efficiency, they should be admitted even filed after a communication of the board under Art 15(1) RPBA.
Anything else would boil down to an unnecessarily restrictive application of Art 13 RPBA.
On the procedure
D3/D3a which led to the maintenance in amended form according to AR3 in opposition, were not mentioned in the European Search Report.
The OD maintained a patent in an amended form, whereby claim 3 was lacking N under G 2/88.
https://www.epo.org/en/boards-of-appeal/decisions/t210602eu1
Addendum
T 22/21 confirms the application of Art 13(2) in two steps.
In T 22/21, the board concurred with the approach taken in several decisions and quoted the following decisions: T 247/20, Reasons, 1.3; T 2988/18, Reasons, 1.2 and T 2920/18, Reasons 3.4, according to which the examination under Art 13(2) RPBA20 is carried out in two steps.
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