The patent relates to a control system with a plurality of spatially distributed stations and a method for transmitting data in said control system.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted was lacking IS over one of the A documents in the ISR established by the EPO and a book representing common general knowledge. Proof of common general knowledge was not mentioned in the ISR.
The board considered that under Art 12(4) RPBA, AR1-12 represented amendments as they were not admissibly submitted and maintained in opposition proceedings.
Nevertheless, the board held AR6 admissible and, as it was potentially allowable, it admitted it. Eventually, the case was remitted to the OD for further prosecution.
The file is interesting as it deals with carry over requests.
The proprietor’s point of view
AR 1 to 12 had been filed in the opposition proceedings within the time limit under R 116(1).
The proprietor argued that these AR were automatically part of the appeal proceedings, since they had already “formed the basis” of the contested decision within the meaning of Art 12(2). This was also explicitly stated in the contested decision, as these AR was explicitly mentioned in the section “Facts and submissions” of the contested decision and had been discussed by the opponent.
Thus, these AR could not be considered as an “amendment” pursuant to Art 12(4) RPBA. For the proprietor, the board had no discretion to disregard them.
However, the proprietor itself conceded that AR 1 to 12 were not discussed in the proceedings to date.
The board’s decision
The mere mention of AR in the part “Facts and submissions” cannot be equated with the fact that the AR mentioned were actually “underlying” the contested decision pursuant to Article 12 (2) RPBA.
Otherwise, the passage in the first sentence of Art 12 (4) RPBA, according to which the party concerned has to show that the AR were admissibly submitted and maintained in the proceedings leading to the contested decision, would simply be irrelevant.
For the board, it corresponds both to the meaning and purpose of Art 12(2) RPBA and to the now well-established case law of the boards that requests for amendments only “underlie” the contested decision if the decision-making body has also dealt with and decided on these requests. The board referred to T 42/20, T 221/20, T 1800/20 and T 364 /20.
In T 42/20, Reasons 4.2 and T 221/20, Reasons 2.4, AR were filed within the time limit under R 116(1) admitted and maintained by the proprietor. No decision on those AR was taken as a higher ranking request was successful. Accordingly, those AR were not to be seen as an amendment to the proprietor’s case, and were considered in appeal under Art 12(4) RPBA.
In T 1800/20, Reasons 3.2, commented in this blog, and in T 364/20, Reasons 5.3, also commented in this blog, the situation was similar as in T 42/20, T 221/20, since no decision was taken as a higher ranking request was successful. However in those decisions, such AR were not automatically admitted in appeal proceedings. and in both cases, the AR were not admitted as they were not convergent with higher ranking requests. Consequently they were considered as an amendment under Art 12(4) RPBA.
Were AR 1-12 admissibly brought forward?
For the bord, if certain requests under Art 12 (2) RPBA are not “underlying” the decision, that is the OD has, for whatever reason not taken any decision about them, these requests are to be regarded as “amendments” under Art 12 (4) “unless the party concerned shows that this part was admissibly raised and maintained in the proceedings leading to the contested decision”.
In order to exercise its discretion when considering carry-over requests, the board has has to analyse two things.
Firstly, the board must examine whether the party has “shown” how and why the relevant requests were “admissibly submitted and maintained” in the proceedings at first instance.
If such a submission has been made, the board must then, as a second step, examine whether the submission in question is factually correct, i.e. whether the requests in question can actually be regarded as “admissibly submitted and maintained” according to the applicable criteria developed by case law.
As regards the first of the above-mentioned aspects, it is clear from the wording of Art 12(4) RPBA that the legislator did not intend to impose ex officio obligations on the boards to study the proceedings at first instance, to identify and trace requests back to their origin and to understand why they were filed, as this Board, for example, has stated in a different formation, cf. T 246/22, Reasons 4, also commented in this blog. Rather, it is up to the party concerned to demonstrate that these requests were “admissibly submitted”. The provision does not expressly stipulate that this statement must be made in the statement of grounds or response to the appeal.
In its response to the appeal, the patent proprietor only stated the respective basis for the amendments made. It merely mentioned cursorily that the added features were not disclosed in the prior art E1 to E3 or E6 or that their application in an Interbus system was even technically impossible for system-related reasons.
These statements are only relevant to the question of whether the present auxiliary requests were substantiated in the appeal proceedings, but not to the question of whether they were admissibly submitted in the first instance. However, in view of Art 12 (3) RPBA, such a statement must already be made in the statement of grounds or response to the appeal.
The proprietor was also unable to state precisely at the OP before the board for what purpose the amendments underlying these AR had been made. The fact that the AR were filed before the date specified in R 116(1) is also not decisive. According to the case law of the boards of Appeal, such requests could also be regarded as “late”, see e.g. T 364/20, Reasons 7.2.3. AR 1 to 12 were thus actually not “admissibly submitted” in the opposition proceedings.
The board nevertheless held AR6 admissible and, as it was potentially allowable it admitted it. Eventually, the case was remitted to the OD for further prosecution.
Comments
Carry-over requests
The problem of “carry over” requests is a recurrent problem and has been commented a few times in the present blog, see above.
The present decision considered that AR not dealt with in the first instance decision, for whatever reason, are considered as amendments in the meaning of Art 12(4) RPBA.
On the contrary, if requests were filed within the time limit under R 116(1), some boards did not consider those requests as amendments under Art 12(4) RPBA.
Those diverging decisions show, once more, that in procedural matters there is no convergent case law.
One lesson to be drawn is that the mere mention of AR in the part “Facts and submissions” of the OD’s decision, cannot be equated with the fact that the AR mentioned were actually “underlying” the contested decision under Article 12 (2) RPBA. The proprietor needs to show that those AR were admissibly submitted and maintained in the proceedings.
In the present case, the mistake of the proprietor was not indicate in its submission the purpose of the timely filed AR and why they could overcome objections raised by the opponent against the claims as granted.
It is further to be noted that in the present case, the board set aside the decision of the OD and remitted on the basis of AR6. As the decision has been set aside, it cannot be expected that the proprietor will be limited to the examination of AR6. The proprietor might as well file again all former AR 1-12. Will the board, in case of a new appeal, consider that any request other than AR6 was late filed? The whole discussion whether AR 1-12 were admissibly submitted and maintained in the proceedings appears thus rather academic.
Diverging requests
Normally, when faced with an opposition, the proprietor should be given the possibility of filing a series of AR, even if those are divergent. Only late filed AR, i.e. not properly substantiated and/or filed after the time limit under R 116(1), should not be admitted by an OD. For late filed requests divergence can play a role in the non-admission even in first instance.
When first filed in appeal, divergent AR are not admitted. See e.g. T 2096/09, Reasons 5; T 1919/12, Reasons 2; T 2472/18, Reasons 2. In T 364/20, the board did not admit any AR as all were diverging.
In T 1903/13, Catchword, it was held that under the RPBA07 that it is within the board’s discretion, not to admit auxiliary requests which define subject-matter “diverging” from subject-matter of higher ranking requests, including those requests which, in essence, were filed during first-instance proceedings and re-filed with the proprietor’s reply, but were not examined by the first-instance department.
When requests were not dealt with by an OD and they were admissibly filed and proproerly substantiated, the boards should not merely not admit them, but remit forfurther prosecution, whether those requests are divergent or not.
https://www.epo.org/de/boards-of-appeal/decisions/t221135du1
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