EP 2 951 029 B1 relates to to security devices, suitable for establishing the authenticity of objects of value, and their methods of manufacture.
Brief outline of the case
The opposition was rejected and Opponent 2 appealed.
In reply to the opposition, the proprietor filed a series of 6 AR which were properly substantiated. Before the OP and in reply to the annex to the summons, the proprietor filed and substantiated AR1a and AR4a.
In appeal, the proprietor submitted AR 6 to 11, the former AR 1, 1a, 2 to 4 and 4a. These AR can be considered as carry-over requests (CoR).
The board decided that claim 1 as granted lacked N over Cl1 as granted lack N over D1=US 2012/0156446, not mentioned in the ISR established by the EPO.
AR1 was admitted under Art 13(1) and (2) RPBA in view of new objections raised by the board on the basis of a series of Web sides extracts introduced by the board in its communication under Art 15(1) RPBA.
The board set aside the decision of the OD and remitted the case for further prosecution.
The board decided that it was not necessary to stay the proceedings in order to wait for G 1/24.
An objection under R 106 filed by the proprietor was dismissed by the board.
The case is interesting in that it deals with the admissibility of new AR filed in reply to the board’s objection and the way the board dealt with the CoR.
The opponent’s point of view
The opponent argued for and requested non-admittance of the new AR 1 to 5 and 12. These were late filed and neither exceptional circumstances nor new facts were apparent.
The proprietor’s point of view
The changes in the legal and factual framework, in particular new documents B1, B2 and B4 to B10, introduced by the board were on the file and as such remained for the other lines of attack also against the AR. The changes were unexpected. These circumstances were exceptional within the meaning of Art 13(2) RPBA.
The new AR 1 was based on granted dependent claim 2. Therefore, this request could not surprise the opponent and prima facie fulfilled the requirements of Art 123(2). Therefore the requirements of Art 13(1) and (2) RPBA were met.
The new AR were to be admitted and the case remitted to the OD, due to the introduction of the new facts and evidence.
The board’s decision
AR1 was admitted under Art 13(1) and (2) RPBA in view of new objections raised by the board.
Since AR1 was neither discussed before the opposition division nor in the statement setting out the grounds of appeal nor in the reply to this statement, the board considered that it is justified under the circumstances to remit the case to the OD for further prosecution according to Art 11 RPBA and Art 111(1).
The board did not decide on the admittance of AR 2 to 5 and 12 in order not to limit the freedom of the OD to conduct the proceedings.
AR 6 to 11, the then AR 1, 1a, 2 to 4 and 4a, were filed prior to the OP before the OD. Since the OD rejected the opposition, these requests and their admittance were not yet discussed.
The board saw no reason why these may not have been admissibly filed and therefore saw no reason for not admitting them into the proceedings under Art 12(2) and (4) RPBA. The board has held that the CoR were not to be considered as amendments under Art 12(4) RPBA. However, the board considered that it did not have to decide their admittance, either. Instead, this is also to be decided by the OD, should they be relevant.
Comments
The board has taken a position which deserves respect.
For a start it did not dismiss the new series of AR filed in reply to the communication other than the one it has admitted. The board leaves this to the discretion of the OD.
As far as the CoR are concerned, in its reply to the appeal, the proprietor recycled the arguments it had provided in opposition proceedings.
The board did not consider the CoR as representing an amendment to the proprietor’s case.
Re-serving the arguments brought forward in opposition is a good precaution, but why should the admissibility of CoR rest on a copy paste of arguments filed before the OD?
It should be sufficient for the proprietor to explain that the CoR were already filed and substantiated in opposition.
In any case, since the decision is set aside, the decision of the OD is only biding as far as claim 1 as granted is concerned and the admissibility of AR1. The rest is left to the appreciation of the OD with respect of admissibility and allowability requests, new or not when the procedure starts again before the OD.
T 738/20
https://www.epo.org/en/boards-of-appeal/decisions/t200738eu1
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