CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The patent relates to a box of cigarettes comprising a wrapper with a removable portion.

The part of the wrapper which can be seen when opening the box (24) bears a different sign (indicia) as the part which remain invisible before the wrapper is removed (26).

Brief outline of the case

The patent was revoked and the proprietor appealed.

The board confirmed the revocation.

The case is interesting in that the present board did not admit a second line of argumentation and considered that T 1914/12 was not applicable to the present case.

The proprietor’s point of view

The first line of argumentation was admitted and dealt with the board. It will only be briefly discussed here.

In a first line of argumentation, the proprietor argued that one technical effect associated with the distinguishing feature was the introduction of a time delay between revealing a first indicia and revealing a second indicia. The distinguishing feature enabled full control as to “what” was to be revealed and “how” it was to be revealed.

In the present case, the problem lies with the non-admission of a second line of argumentation by the board.    

In the second line of argumentation, the proprietor indicated that the provision of the second indicia in the manner defined in claim 1 may function as means for indicating a flaw in the manufacture of the container, and thus a means for indicating a quality problem.

The distinguishing feature performs thus a technical task to solve the objective technical problem of adapting a wrapper for a bundle of consumer goods to provide means for indicating that the quality of the consumer goods may have been compromised.

The proprietor argued that in any case, the introduction of the second technical effect in the statement setting out the grounds of appeal is a new argument and that the board does not have any discretionary power not to admit these new arguments, and referred to G 4/92 and T 1914/12.

The proprietor held that in any case, the second technical effect should not be considered as an amendment in the sense of Art 12(4) RPBA, but rather as a new argument based on facts that were already in the proceedings, and therefore to be seen as a mere development of the previous plea that the subject-matter of claim 1 was inventive. In particular, the problem of indicating a compromise in the quality of the product could be seen as a particular case of the more general problem of enhancing communication with the user.

The board’s decision

As far as the first line of argumentation is concerned, the board referred to T 0641/00 (COMVIK), and was of the view that the placement of two distinct indicia on different parts of the removable portion of the wrapper results in a mix of technical and non-technical features. IS cannot be acknowledged on the basis of features that do not contribute to the technical character of the invention.

The board noted that the second line of argumentation based on a different effect and problem to be solved by the distinguishing feature has been submitted by the proprietor for the first time with the statement setting out the grounds of appeal.

For the board, there is no question that new arguments can be put forward at any time in accordance with G 4/92, but the relevant question is whether new arguments can be considered by a board of appeal or not. The board was further “not convinced” that the findings of T 1914/12 can be applied to the present case, since the case at hand underlies the RPBA20 and not the RPBA07.

The new line of argumentation represented an amendment of the proprietors case under Art 12(4) RPBA, which may be admitted only at the discretion of the board.

The board was also convinced that, contrary to the argument of the proprietor, the technical problem of indicating a flaw in the production process that could compromise the quality of the product cannot be seen as a particular case of enhancement of communication with the user.

In particular the indicia allegedly solving this second technical problem could be meaningless to a final user. In this sense, the board finds that in the present case the choice of the new second technical problem cannot be regarded as a mere development of a previous argument, but rather shifts the case in a completely different direction, which could force an opponent to an additional search directed to that problem.

In light of the above, the board was of the view that the appellant not only could but most importantly should have formed its complete case already during opposition proceedings, at the latest during the discussion of inventive step at the OP before the OD.

The board, exercising its discretion under Art 12(4) RPBA, did not admit the new line of argument on IS based on a second technical problem.  

Comments

It is abundantly clear that the board was not willing to look at the proprietor’s second line of argumentation.

It might have been quicker to deal with the argument and dismiss, rather than giving long explanations as to why the new effect could not be admitted.  

When looking at G 2/21, Order II, the position of the board is difficult to follow. Order II of G 2/21 provides that an applicant or proprietor may rely upon a technical effect for IS if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.

In the present case, the facts are exactly the same, the cigarette box, the wrapper with two different indicia (and the same prior art). It can thus be concluded that the effect can be derived and is encompassed by the teaching embodied in the same originally disclosed invention.

When looking for instance at T 1989/19, commented in this blog, the originally disclosed effect was stability during manufacture of a medicament. In appeal, the proprietor came with a totally different effect, i.e. storage stability. The board, basing its argumentation on Order II of G 2/21 considered that this new effect could be derived and was encompassed in the original teaching relating to stability. The board even considered that storage stability could justify IS. It is rather trivial to consider that a medicament needs to be stable during storage.

The mere fact that in the patentof T 1989/19, the buzzword stability was in the original disclosure, cannot be determining in the admission of the late filed argument on IS. In the present patent the two indicia were also present.

In view of the above, it is thus difficult to follow the board when it considered that T 1914/12 was not applicable in the present instance. Actually, T 1914/12 expresses in different terms what is covered by Order II of G 2/21.

The argument of the present board that T 1914/12, taken under the RPBA07 was not applicable under the RPBA20 fails to convince. The two first levels of convergence of the RPBA20 find a direct correspondence in the RPBA07. Only the third level of convergence was added by the RPBA20.

The main difference is that in T 1914/12 the board decided that there was no discretion for a board in admitting late arguments based on the same facts.

The logical conclusion from this difference in treatment is that the board actually wanted to get red of T 1914/12 and the corresponding absence of discretion by the boards. The proprietor’s misfortune was to invoke T 1914/12. On the other hand, when the board send out its communication under Art 15(1) RPBA, G 2/21 had been issued for 6 months. It can thus be said that the present board has ignored G 2/21, which is contrary to the provisions of Art 20/21 RPBA.     

It is interesting to note that T 1914/12 has been confirmed in a number of other decisions: T 482/18, T 47/18, T 1381/15, T 315/15, T 133/19, T 1359/14, T 369/12, T 1875/15, T 691/16, T 128/15 and T 325/16. T 482/18 was decided under the RPBA20!

The present decision shows once more, that in procedural matters, each board acts on its own.

This should however not happen as similar situations should be decided in a similar way.

Addendum to the comment

One could think that the EBA did not realise at the time it drafted Point II of the Order in G 2/21, that it was actually weakening Art 12(4) and 13(1) RPBA. If an effect, not disclosed in the original application can nevertheless be taken into account for assessing IS, it indeed represents an amendment of the proprietor’s case under Art 12(4) resp. 13(1) RPBA, but such an amendment can actually be admitted.

T 1914/12 says nothing different and is thus still applicable! The only difference is that it negates any discretion of a board. This is certainly not to the liking of the boards.

T 1989/19 is a direct illustration of an amendment of the proprietor’s case which, in spite of being such an amendment, was admitted in the procedure.

Hierarchy of norms

The present decision, like many other of the boards raises a problem of hierarchy of norms. Can the RPBA have more weight than the EPC itself? I would say no!

When in Art 12(2 and 3) RPBA and hence Art 12(4) and 13(1) RPBA, the notion of arguments has been introduced, this can be considered as a clear contradiction with the EPC as Art 114(2) does not mention arguments, only facts and evidence.

The EPC cannot be amended by secondary legislation, and the RPBA clearly represents secondary legislation. The only mechanism for amending the EPC is a Diplomatic Conference under Art 172. Any amendment to the Implementing Regulations by the Administrative Council is limited under Art 164(2). This limitation applies mutatis mutandis to any decision of the AC relating to procedures before the EPO, and hence also to the RPBA.

Already J 14/19 tried to make a difference between legal arguments and submissions mixing legal and factual arguments. It is acceptable that a party cannot resort to other parts of a document that that it has already used in first instance, as this represents new facts based on new evidence. This part of J 14/19 is thus plainly corret. That arguments based on the same facts and evidence should however also be admissible is a direct and logical conclusion. G 2/21 does not say anything else. An effect not orginally disclosed which however can be derived and was encompassed in the original teaching of the invention is admissible in the procedure.

This statement allows the interpretation that there cannot be a limit to arguments based on the same facts and evidence, as stated in T 1914/12. G 2/21 even goes one step further and accepts post-published, i.e. new evidence.

https://www.epo.org/en/boards-of-appeal/decisions/t220919eu1