EP 3 085 344 B1 relates to a wound pad and a self-adhesive member comprising a wound pad.
Brief outline of the case
The patent was maintained according AR4.
Both proprietor and opponent appealed this decision.
Eventually, the patent was revoked.
The topic of this blog the non-admissibility of AR 5 to 11 in appeal.
The proprietor’s point of view
The conclusion of the OD that the subject-matter of claim 1 of the MR lacked novelty over D1 has taken the proprietor by surprise.
This change of opinion rendered AR 2 and 5-11 ineffective against that conclusion. The reordering/renumbering of the AR was not an arbitrary procedural manoeuvre, but a response to the new circumstances that emerged during the OP, and the re-ordering was an attempt to maintain procedural efficiency.
The reordering of those requests again on appeal should therefore be allowed.
The opponent’s point of view
The proprietor’s action prevented the OD from reaching a decision on AR 5 to 11, which the proprietor now wished to have examined before the request upheld by the OD.
Amongst other things, this was not procedurally efficient and these requests should not be admitted.
The board’s decision
AR 5 to 11 as submitted with the grounds of appeal were submitted during opposition, before the time limit set under R 116.
However, at that time they were AR 6 to 12, and were thus ranked above AR 13, which was the request later found allowable by the OD, albeit re-ranked and numbered as AR 4 by the proprietor.
These requests were reordered during the OP before the OD as AR 7 to 13, and thus to a rank lower than the AR 4 found allowable by the OD, just to be reordered again to AR 5 to 11 with the filing of the proprietor’s grounds of appeal to a rank higher than the request found allowable by the OD.
With its reordering of requests made during the OP before the OD, the proprietor of its own volition elected to have AR 4, now AR 12 decided upon before further requests.
The proprietor’s action thus prevented the OD from reaching a decision on current 5 to 11, which the proprietor now wishes to have examined before the request upheld by the OD.
The board could not see any reason for the reordering of the requests with the proprietor’s grounds of appeal which would justify the board considering the requests in a new order.
The proprietor has also given no reason why it has amended its case on appeal compared to the case it made before the OD in this regard.
Without a reason justifying such an amendment in the appeal case, i.e. the reordering of the requests, the board did not admit AR 5 to 11 into the proceedings, having regard to Art 12(4) RPBA.
Even though the OD changed its mind on novelty in respect of a certain document, this should not have come as a surprise to the proprietor, since the annex to the summons issued by the OD is only a preliminary opinion.
In addition, whilst it is true that reordering the requests may often reduce the duration of OP before the OD, the proprietor should bear in mind that the order of requests is determined by the proprietor itself and should reflect the order of preference in which requests are to be considered and the text in which the proprietor wishes a patent to be maintained.
The reordering of the requests, even if it does not change the subject-matter of the underlying claims, is not merely a formalistic amendment of the proprietor’s case without procedural consequence, since it signals how the proprietor has chosen, specifically, to proceed with its case and thus on which requests, and in which order, the OD must reach its decision.
The proprietor’s actions prevented the OD from reaching a decision on current AR 5 to 11 such that there is no decision of the OD which the board can review.
As a consequence, these requests became “procedurally inactive” in the same way as if the proprietor had withdrawn these requests. Such withdrawal would have led to non-admittance under Art 12(6) RPBA. The board referred to T 1404/20, Reasons 1.4; T 1853/22, Reasons 3.2; T 1809/22, Reasons 4.3.
There is no reason to treat requests which are not formally withdrawn but downgraded such the OD is prevented from taking a decision differently because the purpose to ensure the primary object of appeal proceedings to review decisions of the first instance according to Art 12(2) RPBA is impaired in the same manner.
The board could not see any reason for the reordering of the requests with the proprietor’s grounds of appeal which would justify the board considering the requests in a new order and thus for the first time in appeal.
Comments
The present decision, as well as T 1404/20, T 1853/22, and T 1809/22, commented in the present blog, make it abundantly clear that, while the proprietor is free to reorder his requests before the OD, this may have the consequence that those requests might not be admitted in appeal.
In T 1436/19, commented in this blog, the proprietor reordered the requests submitted during appeal. The board observed, that allowing the proposed reordering would force the board to firstly decide on a fully new MR, i.e. AR 4 submitted with the statement of grounds of appeal, not underlying the decision under appeal. This would be contrary to the provisions of Art 12(2) RPBA. In this case the proprietor also spoke about procedural efficiency.
T 1436/19 is thus of the same vein as the present decision and T 1404/20, T 1853/22, T 1809/22.
AR 5-11 having been submitted during opposition, before the time limit set under R 116, they were most probably admissibly filed and certainly maintained. They are therefore so-called carry-over requests. Art 12(4) RPBA is silent about the order of the requests. They merely have to be admissibly raised and maintained.
If the reordering is such, that the OD will decide on a higher ranking request, then the reordered requests will not have been dealt with by the OD and the proprietor will not be allowed to revert to the order of the requests in opposition when he enters appeal.
A way out of this situation
It is thus better for the proprietor to stick to the order of the requests as filed before the OD. Then the board cannot refuse admission of those requests under the pretext that the OD has not decided upon them, although they were admissibly raised and maintained.
No coherence of the boards in procedural matters
The reasoning of the board can be followed, but it shows once more that, if a board finds a way to squeeze out carry-over requests, it will do so. Squeezing out carry-over requests is proceduraly very efficient.
As the OD changed its opinion with respect to the annex of the summons, the proprietor was in principle allowed to file a new request overcoming the change of opinion of the OD. That he then chose an AR, albeit of a lower rank, should not have been taken against the proprietor.
The present decision is in contrast with T 2166/22, commented on this blog, according to which changing the order of carry-over requests at the beginning of the OP before the board was admissible under Art 13(2) RPBA.
The decisions quoted in the comments, show once more, that in procedural matters, there is a great bandwidth among the boards.
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