CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1909/22 – What cannot be considered as a carry-over requests (CoR)

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EP 3 270 716 B1 relates to a process for preparing a meat-analogue food product.

Brief outline of the case
The oppositions were rejected and both opponents appealed.

The bord held that claim 1 as granted was lacking IS over D2=WO 2012/158023, the first X document in the ISR established by the EPO (also cited in the application as filed).

AR 1-2 were not admitted under Art 13(2) RPBA in the absence of exceptional circumstances.

AR 3-9 were not admitted under Art 12(3+5) RPBA for lack of substantiation when entering appeal.
AR 3-9 were filed in opposition in reply to the statement of grounds of opposition, but where not discussed as the OD rejected the opposition.

The proprietor’s point of view on the admissibility of AR 3-9

In appeal, the proprietor argued against objections of the opponent about claim 1 as granted, and for the surplus referred to its reply to the grounds of opposition.

In reply to the opposition, the proprietor filed a series of AR in which it merely gave the source of the various amendments of all the AR, i.e. that they were not infringing Art 123(2), and that they were also not infringing Art 123(3).

The proprietor never gave any reasons why the AR would overcome the objections of lack of N and IS raised by the opponents, should the patent as granted not be maintained.


The board’s decision on the admissibility of AR 3-9
With respect to AR 3 to 9, the proprietor, in its reply to the grounds of appeal, only made general references to the first-instance proceedings, cf. “considering also the auxiliary request (sic) filed during the opposition procedure”, without giving any explanations or arguments.

A mere reference to the first-instance proceedings is not sufficient as a proper substantiation of the requests.

The board added that, in this context, it is of no relevance that the OD did not have to decide on these AR and that they were not discussed during the OP before the OD.

Comments
It has to be agreed with the board that, in the present case, the mere reference to the reply to the opposition could not be considered as a proper substantiation of those AR.

In the present case, the proprietor never explained how and why the AR filed in reply to the opposition those AR could overcome objections of substance raised by the opponent, should the patent not been maintained as granted.

In principle, requests filed within the time limit under R 116(1), are timely filed and their admissibility is not at stake, provided that they are duly substantiated. See for instance T 1842/18, T 44/18, T 2446/17.

According to T 1732/10, T 122/13 or T 1426/17, the effective date on which requests are actually filed, is not the date on which they were received at the EPO, but the date on which the relevant substantiation has been submitted.

In the present case, should the patent not have been maintained as granted, the AR filed in reply to the opposition would have had to be considered as late filed. They were not substantiated besides the source of amendments. The proper substantiation would only have been delivered during the OP, hence those AR would have been late filed and their admissibility would have had to be decided prior any argumentation of their substance.

In the present case, the AR filed in opposition by the proprietor cannot be considered as CoR due to the lack of substantiation.

Admissibility of CoR in appeal

AR timely filed, properly substantiated and maintained in opposition, i.e. carry-over requests (CoR), should be admitted in appeal, whether the proprietor appeals himself or only replies to the opponent’s appeal. A reference to the precise substantiation of CoR in opposition should be enough for them to abide by Art 12(3) RPBA. There should not be any need to require from the proprietor to copy-paste its argumentation in opposition.

In general, CoR should also be admitted under Art 12(4) RPBA, as the proprietor cannot be held liable to the fact that those CoR were not discussed in opposition. CoR were, without any doubt, admissibly raised and maintained in the proceedings leading to the decision under appeal. They can thus not represent an amendment to the proprietor’s case in the meaning of Art 12(4) RPBA.

Duties of the opponent in the presence of CoR

It follows that the opponent, be it appellant or repondent, will have to substantiate its objections against the CoR, as soon as they are filed by the proprietor. The opponent should be aware of the substantiation of the CoR. The time of substantiation for the opponent will however vary depending on the position of the proprietor in appeal.

If the proprietor is respondent, then the CoR will only be filed in reply to the opponent’s appeal. If the proprietor is appellant, the CoR will be on file as soon as the proprietor is entering appeal.

In any case, the opponent should not wait after the filing of the CoR to argue against them, and certainly not until the board has taken position. Art 12(3) RPBA makes it very clear that objections against CoR should be filed as soon as possible. Any delay in submitting the argumentation will end up in the second, cf. Art 13(1) RPBA, or even third level of convergence, cf. Art 13(2) RPBA.

T 1909/22

https://www.epo.org/en/boards-of-appeal/decisions/t221909eu1


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