EP 3 183 505 B1 relates to underlayments associated with radiant floor or wall heating systems, in clear supports and guides for floor heating pipes.
Brief outline of the case
The patent was revoked and the proprietor appealed.
The OD did not admit either the MR or AR 1 to 3, 5 to 11 or 13. AR 4 had been abandoned prior to the OP before the OD. AR 12 was considered not allowable for lack of novelty and AR 14 to 16 were held not allowable for lack of clarity.
The proprietor requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of a number of new or additional requests filed with the statement setting out the grounds of appeal.
The board set aside the decision and remitted the case to the OD for further prosecution.
Sequence of requests from the proprietor in opposition
The proprietor filed an amended MR, the MRrep and ARrep 1 to 4 with its reply to the four notices of opposition. These requests were filed in a timely manner.
In reply to the summons for OP, the proprietor filed AR 5 to 15 within the time limit set in accordance with R 116(1).
One day before the OP, the proprietor filed a new MR, the MRop and ARop 1 to 3, which were to replace the MRrep and ARrep 1 to 3. ARrep 4 was abandoned. The filing of MRop and ARop 1 to 3 was due to the fact that the proprietor found out a submission of O1 which had not been forwarded to it. In view of this late discovery of a new submission, the proprietor had filed 5 days before the OP a request for postponement of the OP, interalia in view of the length of the submission.
The only difference between the MRop and the MRrep was the deletion of dependent claim 15, allegedly comprising an unallowable intermediate generalisation. The same applied to ARop 1 to 3 with respect to ARrep 1 to 3.
The OD’s position
During the OP, the OD did not admit the MRop on the grounds of being late filed. The OD applied the “clear allowability” criterion and concluded that claim 1 was prima facie not novel and that the amendments in claim 4 were not occasioned by a ground for opposition, cf. R 80. Claim 4 was objected to under R 80 for the first time during the OP.
The proprietor reacted to this development by filing new AR 12 and 13, which were to replace the previously filed AR with the same numbering. ARop 1 to 3, AR 5 to 11 as filed earlier and the renumbered AR 14 to 16 corresponding to those filed as AR 12 to 14 which remained unchanged.
ARop 1 to 3 and 5 to 11 were not admitted by the OD for not complying with R 80. New AR 12 was admitted and treated in substance.
At the beginning of the OP, the OD refused postponement of the OP.
The OD argued that
- The proprietor could retrieve the submission of O1 from the online register
- Five days were enough for the proprietor to prepare himself
- The objections raised in the submission of O1 did not play a role in the final decision of the OD.
The board’s decision
Prima facie allowability
The OD applied the criterion of “prima facie allowability” when deciding about the admittance of the MRop.
This criterion is, in principle, correct when assessing the admittance of a late-filed amended request such as the MRop.
However, the OD applied this criterion by assessing the prima facie novelty of claim 1, which had not been amended compared with the MRrep, which had been filed in a timely manner.
For the board this was wrong.
In the present case, the deletion of dependent claim 15 clearly overcame any objection to this claim that had been under discussion, without resulting in any change in the subject of the proceedings in respect of any of the other claims.
The prima facie analysis of allowability which the OD was actually entitled to carry out in this context was that related to the deletion of dependent claim 15, which was the only amendment that had been made compared to the MRrep.
For the board, the OD did also not correctly apply the Guidelines valid at the time, namely those of March 2021, cf. H-II, 2.7.1.
The OD division was only entitled to use the “clear allowability” criterion for the amendments made in the MRop and their impact on the resulting focus of the proceedings.
The deletion of claim 15, which was the only amendment in the MRop compared with the MRrep, which had been filed in a timely manner, clearly overcame the objection raised against this claim and did not give rise to further objections.
Furthermore, the amendment had no impact on the obligation of the OD to discuss the novelty of claim 1 of the MRrep in substance. The patent proprietor had the procedural right to have the question of novelty of the subject-matter of claim 1 discussed in substance during the OP. The deletion of dependent claim 15 could not change this.
Therefore, the OD was not entitled to carry out just a prima facie assessment of the novelty objection against independent claim 1 when deciding about the admittance of the MRop.
The board further noted in this context, that the impugned decision does not even provide any reasons as to why claim 1 of the MRop was prima facie not novel over D1. A mere reference to the preliminary reasoning in the annex to the summons does not qualify as sufficient reasoning in the decision.
Allowability under R 80
The fact that claim 4/1, which was unamended compared with the MRrep, may not comply with R 80 could not be used as a criterion not to admit the MRop, ARop 1 to 3 or auxiliary requests 5 to 11, which had been filed within the period under R 116(1), for being prima-facie not allowable since this issue had been present in the requests that had been filed in a timely manner and had not been created by the amendments made.
On the other hand, due to the amendment of claim 4/1, the OD would have been entitled to raise an objection under R 80, but not for lack of prima facie allowability.
The objection under R 80 by the OD was thus the wrong one.
Effect on the wrong application of R 80
The decisive point when deciding about the admittance of the pending requests in appeal, is that the incorrect use of the “prima facie not novel” criterion in the context of claim 1 of the MRop deprived the proprietor of the opportunity to have the question of novelty discussed in substance, which had a negative effect on the options available to the proprietor when reacting to the R 80 objection that was raised for the first time during the OP.
Remittal
As the NMR was basically identical to the MRop, with the exception of claim 4, where the amendments considered not allowable under R 80 by the OD have been reverted to the text of granted claim 4, the NMR was admitted in the procedure and the file was eventually remitted for further prosecution.
Comments
From the whole way the file was dealt with by the OD, it is manifest that the latter wanted get rid of the case with the minimum effort. This backfired as the file was send back for further prosecution.
Duty to consult the register
This point was not part of the OD’s decision, but deserves commenting.
In a “Notice from the EPO dated 28.08.2020”, OJ 2020, A 106, the EPO announced indeed that, in application of R 79, the EPO will continue to communicate notices of opposition and observations to the other parties for information. However documents which can be inspected in the register will no longer be automatically forwarded to the parties.
It is doubtful that this notice is legally correct, as in R 7/09 and R 4/17, the EBA held that the parties do not have the duty to consult the register in order to see if new documents had been filed by the parties. Whilst this was directly applicable to appeal procedures, it should apply mutatis mutandis to opposition procedures.
The same applies to a “Notice of the President of the Boards of Appeal of 31.10.2020“, OJ 2020, A131 with a similar content.
Claiming that the proprietor had ample time to prepare himself to the OP in spite of the new submission is daring to say the least, especially since the OD claimed at the beginning of the OP that the objections raised in the submission of O1 did not play a role in its final decision.
Prima facie lack of allowability
The prima facie lack of allowability or novelty, might give the possibility to an OD not admit late filed requests, but only when applied correctly. By deleting dependent claim 15 in some requests, the proprietor did not amend claim 1 and the criterion of lack of prima facie allowability/novelty was not used correctly. It could only apply to the deletion of claim 15 and not to claim 1 as granted which had not been amended. Deleting dependent claim 15 was certainly helping procedural economy.
Application of R 80
The application of R 80 in view of the amendments to claim 4/1 would have been a possibility not to admit some requests, but this objection should not have been raised by the OD for the first time during the OP.
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