This topic has been subject to various publications on this blog, but this decision deserves a further publication as it shows a clear tendency of the boards to concentrate more on the form than on the substance.
EP 3 437 536 B1 relates to a cleaning robot and a method of controlling the same.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board confirmed the rejection of the opposition.
The case is interesting with respect of the admissibility of a late filed objection by the opponent.
The opponent’s point of view
During OP before the board, the opponent requested that an objection of lack of N over D1 be admitted into the proceedings.
The opponent’s present representative justified the late submission by arguing that he took over the case from a colleague, who had overlooked the N objection when he drafted the grounds of appeal.
The opponent also argued that it because this concerns a European patent it is of utmost importance that there be no doubts concerning validity.
The board’s decision
The new line of attack constitutes an amendment to the opponent’s under of Art 13(2) RPBA in conjunction with Art 12(4) RPBA.
None of the arguments of the opponent were convincing for the board.
The change of representative
As regards the meaning of the term “exceptional circumstances” in Art 13(2) RPBA, it is established jurisprudence of the boards that such circumstances concern new or unforeseen developments in the appeal proceedings, such as new objections raised by the board or another party, see CLBA, 10th edition 2022, V.A.4.5.4.a) ff.
In the present case, the opponent had already overlooked that objection when the notice of opposition was drafted.
The notice of opposition was signed by the opponent’s present representative. Thus, the fact that another representative of the opponent, the former representative who had signed the grounds of appeal, overlooked the N objection when drafting the grounds of appeal is not a development of the appeal proceedings, let alone a new or unforeseen one. The opponent alone must bear the responsibility for any such errors and mistakes.
The importance of the validity of a European patent
The opponent’s further argument puts emphasis on the patent being a European patent, implying, as the board understands it, that the legitimacy of the European patent system depends on the strength of validity of patents issued by it, and that therefore any concerns of validity must trump any other considerations, e.g. those of procedural economy and transparency or the nature of appeal proceedings as a judicial review. As is evident from Art 12(2) RPBA as adopted by Decision of the Administrative Council of 26.06.2019, the legislator saw this quite differently.
The appeal proceedings are considered primarily as a judicial review of a decision and a party should direct their appeal case at the requests, facts, objections, arguments and evidence on which the decision under appeal is based.
As a consequence the possibility of a party to change their case or add to it is very limited, increasingly so as the appeal procedure progresses.
In CA/3/19, points 47 and 48, the convergent approach underlying the provisions Articles 12 and 13 was explained as well as the explanatory remarks to these articles in the table from that document reproduced in OJ EPO 2020, Supplementary publication 2.
These articles lay out the criteria by which the boards shall exercise their discretion when considering amendments to a party’s appeal case, i.e. request, facts, objections, arguments and evidence that lie outside those on which the decision is based. Art12(4) and 13(1) RPBA do still include criteria that can be seen as reflecting on the merit or relevance of any such new material albeit subject to justifying reasons.
Indeed and following established case law, cf. G7/95, OJ EPO 1996, 626), it might still be possible to consider N at an early appeal stage, even if not raised before, vis-a-vis a closest prior art already cited against IS, but then only in the context of assessing IS.
However, such criteria are entirely absent from the wording Art 13(2) RPBA, which was purposely chosen to express the much more stringent criterion applicable at this the most latest stage of the appeal proceedings.
Thus, merit or relevance is not somehow subsumed in the sole criterion of “exceptional circumstances”, which as is clear from the examples, can only reflect on circumstances that arise from the way the proceedings have developed, i.e. the procedure itself and not its subject.
Therefore, the board saw no exceptional circumstances that justify the late filing of the N objection.
Comments
On the change of representative
A voluntary change of representative by a party has, besides justified exceptions, rarely resulted in the change of the date of an OP, be it in first instance or appeal.
A voluntary change of representative by a party does not necessarily imply the admissibility of a late filed new objection or of late filed requests in opposition. The new representative has to take over the file as it was left by its predecessor. It is left to the discretion of the OD to admit or not late submissions by a party. If the discretion has been correctly applied by the OD, the board will not overturn such a decision on admissibility.
In appeal, justifying the late filing of an objection by a change of representative, is more or less doomed to fail. It is the worst argument that can be brought forward.
When on top, the new representative had originally drafted the statement of grounds of opposition, and had forgotten to file the late objection, the board can easily detect this. File history does not play a role in proceedings before the EPO when it comes to the substance. When it comes to formal aspects, the present decision shows that it can nevertheless play a role.
“Exceptional circumstances” under Art 13(2) RPBA
The present board can be followed when it reminds that “exceptional circumstances” can only reflect on circumstances that arise from the way the proceedings have developed, i.e. the procedure itself and not its subject.
“Exceptional circumstances” are present for instance when If the board raises a new objection in a communication under Art 15(1) RPBA.
Another possible occurrence of “exceptional circumstances”, is when during OP it appears that maintenance cannot be decided as the discussions has revealed an objection which was not raised before by the board or a party.
I would go one step further, and also consider “exceptional circumstances” when the board reverses during OP the finding of lack of N over a specific document.
In this case we are in presence of “exceptional circumstances” as the board has taken a decision setting aside the lack of N decided by the OD.
In such a situation, the possibility should be given to the opponent to develop an objection of lack of IS based on this document as CPA. This might imply a remittal, but this is to be accepted.
When a board decides that N and sufficiency are given or that there is no added matter, the board normally remits for the other grounds of opposition should be examined.
Change of N objection to an IS objection – T 131/01 and decisions alike
In general, the change from a N objection to an objection of lack of IS based on the same document used against N as CPA has been allowed in T 131/01 and in a variety of other decisions, e.g. T 635/06 or T 184/17. This should still be possible as the aim of the opposition procedure is not to maintain invalid patents.
The situation is different if the opponent uses for a N objection, any other document than the previously cited CPA, cf. G 7/95. This can be clearly be considered as new ground of opposition under G 10/91, and incidentally as an amendment of the appeal case subject to the convergence rules of Art 12 and 13 RPBA. .
It is manifest that T 131/01, T 635/06 and T 184/17 are not to the liking of newer legal members of the boards. They go as far as to admit that the ground of lack of IS cannot be considered as a new ground of opposition under G 10/91 and G 7/95, but that it is too late, especially under Art 13(2), and hence will not be taken into account. See for instance T 1042/18, commented in the present blog.
In such a situation, it has to be agreed with the present opponent that the boards leave doubts concerning the validity of the patent. By acting in such a manner, the boards are not up to their duty of not maintaining invalid patents.
I would further argue that the RPBA are secondary legislation which should not be interpreted in a way that renders decisions of the EBA obsolete or meaningless.
As far as production is concerned, it is certainly advantageous not to deal with such objections, but production/productivity should not be the only guiding principle of the boards.
What can be done?
In order to take the wind out of the sails of boards playing the procedure against the substance, the solution is always to start by attacking N and to take the same document as the CPA for an IS attack, even though this was considered to be manifestly contradictory in T 131/01.
It means also more work for the ODs, but this the only way to cope with such an attitude of the boards. Then they will not have any more excuses. At a pinch, a corresponding IS objection could be raised when entering appeal, but for some board, even this might be too late.
It is clear that the RPBA20 have brought more work towards the first instance, and it is not sure that the overall efficiency of the EPO is thereby increased.
With the UPC sitting in the neck of the boards, this might be to the detriment of the EPO as a whole, in spite of any possible acceleration programs.
Criticism of the boards
In a recent publication of JUVE, the boards have been criticised for their constant quest for productivity. Whilst I do not share the comments relating to the substance, I have great sympathy with JUVE’s criticism when it comes to procedural aspects.
I quote: “The boards should also avoid basing too many of their decisions on formalities instead of looking at the technology. For years, users have criticised this aspect in what is otherwise a positive overall impression of the BoA.”
https://www.epo.org/en/boards-of-appeal/decisions/t222482eu1
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