CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 2 182 898 B1 relates to treatment devices, systems, and methods for removing heat from lipid-rich cells, such as subcutaneous lipid-rich cells.

Brief outline of the case

The patent was maintained according to AR8. The opponent appealed.

The board held that claim 1 as maintained infringed Art 123(2) and eventually the board revoked the patent.

The case is interesting in that it deals with a request from the proprietor not to admit a new line of attack of the opponent.

The proprietor’s point of view

Together with the grounds of appeal, the opponent raised a new objection of added matter.

The proprietor  requested that this “new line of attack” not be admitted into the proceedings, as it had been raised for the first time in the statement setting out the grounds of appeal and referred to Art 12(2), (4), (6) RPBA.

For the proprietor, the opponent had failed to identify the “new line of attack” as an amendment in its grounds of appeal and to give reasons why it had not been raised before the OD, contrary to what is required by Art 12(4) RPBA.

Therefore, it had been difficult to recognise that there had been such an amendment The lateness of the proprietor’s request should be weighed against the opponent’s failure to comply with the requirements of the RPBA.

During the OP before the board, the proprietor further argued that, even if its request for non-admittance were rejected by the board, the board was under an obligation, ex officio, to assess and decide on admittance of the “new line of attack”.

The board’s decision

Art 13(2) is not limited to amendments in substance

The proprietor’s request not to admit the “new line of attack” was not part of its initial appeal case, as this request was not filed with its reply to the grounds of appeal. The proprietor had replied in writing to this “new line of attack”.

The request for non-admittance was filed only later, in response to the board’s communication under Art 15(1) RPBA, i.e. after beginning of the third level of convergence, cf. Art 13(2) RPBA.

The board noted that in the context of the RPBA 2020 the term “requests” includes requests for non-admission of, for example, an objection, contrary to what is suggested in T 1006/21, Reasons 25 to 27, where “procedural requests” such as requests for non-admission would appear to be excluded from the scope of “amendments” within the meaning of Articles 12 and 13 RPBA. T 1006/21 was commented in this blog.

For the board, the term “requests” is not limited to texts of patent applications or patents. If this were the case, Art 12(2), (3) and (6) RPBA  would have specified this and would not have used the general term “requests”.

Indeed, when the RPBA 2020 seeks to specifically address the issue of amended texts of patent applications or patents, it expressly refers to “an amendment to a patent application or patent”, cf. Art 12(4), or Art 13(1), RPBA.

This understanding is also confirmed in the Explanatory remarks to Art 12(2) RPBA, which specifies: “The term ‘requests’ in this context is not limited to amended texts of patent applications or patents”.

Therefore, a request for non-admittance of an objection, as in the present case, constitutes an amendment to the party’s appeal case if the request was not filed in the initial stage of the appeal proceedings, or in a reply to an appeal, but only during the subsequent stage of the appeal proceedings, and its admittance is therefore governed in the present case by Art13(2) RPBA.

The present board considered itself to be in line with the approach taken by decisions T 0018/21 and T 0755/16, both of which applied Art 13(2) RPBA  to the circumstances of their cases.

Even assuming in the proprietor’s favour that the “new objection” was raised for the first time in the opponent’s grounds of appeal, the circumstances of the present case are not exceptional and cannot justify filing of the respondent’s request for non-admittance only after the board’s communication.

The mere fact that the opponent , allegedly, did not comply with the requirements of the RPBA is not a valid excuse for the proprietor to request non-admission of the objection only after the board’s communication.

It is for the party itself to assess whether there is – in its opinion – an amendment to the other party’s case and, if this is the case, how to respond to it, for example whether to file a request for non-admission or – as was done in the present case by the proprietor in its reply, to address the “new” objection on its merits.

Ex-officio assessment

A board of appeal may examine of its own motion under Art 114(1), and decide of its own motion, on the question of whether an objection was filed “late”.

Moreover, Art 114(2) gives the board the power to “disregard facts or evidence”  which are not submitted in due time. This means that a board is not obliged under this provision to examine ex officio a submission made “in due time”. Such an obligation may also not be inferred from the principle of ex officio examination laid down in Art 114(1).

In general, the principle of ex officio examination is to be applied in opposition appeal proceedings restrictively,  cf. G 9/91, Reasons 18. In addition, this principle does not go so far as to require a board to examine and to decide on the question of whether, an objection was late filed. Such an understanding of Art 114(1), cannot be reconciled with the power given under Arti 114(2) .

Also in this context, the board is aware of T 1006/21. The statement in Reasons 27 of this decision implies that the question of admittance must be taken up by a board ex officio. The present Board disagreed with such an approach.

Comments

Diverging case law

The present decision takes the opposite view toT 1006/21. We have thus two different ways to approach purely procedural requests: in T 1006/21 they are never late and in the present decision, T 1774/21, they can be late and do not have to be examined ex-officio.

It would be good if users of the system could have some predictability in procedural matters when they file or reply to an appeal. This has happened for deletion of claims, grouping of claims and recently with carry over requests. Now we have divergent views on purely procedural requests, admitting or not submissions.

De facto admissibility of a late filed document

It is to be noted that, according to T 68/02, Reasons 4.2, and T 780/05, Reasons 3, the board held that a late filed submission of one party, which has been discussed in writing by the other party, cannot be deemed inadmissible, while late filed, at the opening of the OP.

In T 0755/16, Reasons 3, it appears that the patent proprietor had first commented in substance on a document, A018, filed by the opponent when entering appeal. The proprietor only requested later that A018 not be admitted. The board decided that this request by the patent proprietor was an amendment to its appeal case and did not admit it into the proceedings. A018 and the proprietor’s reply were thus part of the appeal proceedings. A018 was even extensively discussed in the board’s decision.

In view of the last 3 decisions, it is possible to conclude that once a proprietor has replied in substance to a late flied submission of the opponent, this submission and the proprietor’s reply are de facto admitted in the procedure.

This conclusion is actually independent of whether the request not to admit the document is an amendment to the proprietor’s appeal case or not.

Divergence between T 1006/21 and T 1774/21 is actually irrelevant.

The difference of position in matters of procedural requests between T 1006/21 and T 1774/21 can actually be disregarded when a submission of the opponent, filed only when entering appeal, hence late, has been commented in substance in writing by the proprietor. Both the submission and the proprietor’s reply are then part of the appeal procedure.

The same position should be valid mutatis mutandis when an opponent takes position in writing on a late submission of the proprietor filed for the first time when entering appeal.

Before an OD, the sumission can be filed late, i.e. after the end of the opposition period, and even after the time limit set in R 116(1). It is de facto admitted in the opposition procedure, provided the proprietor takes position in substance and in writing.

Some inconsistency

What looks a bit odd is that, in the present case or in T 0755/16, the board never queried the late submission of the opponent. Other boards have queried ex-officio, especially under Art 12(4+6), a submission of the opponent filed the first time when entering appeal.

In the present case, it is thus possible to consider that the proprietor had a valid point when he claimed that the board should have queried ex-officio the late submission of the opponent.

It appears thus that, if it suits the board, a late submission of a party is not queried, although it is not in accordance with Art 12(4+6) RPBA. What is then queried is, like here, an amendment under Art 13(2) RPBA, which deserves lenghty considerations.

It is manifest that the valid RPBA have given the boards a large discretion within the three levels of convergence, but it looks like the boards are applying this discretion in a rather arbitrary manner. This is, alas, nothing new.

T 1774/21