EP 3 533 670 B1 results from a divisional application of EP 3 137 345. EP 3 533 670 B1 relates to multi-strip beams and related apparatus and methods for forming automotive bumper reinforcement beams from multiple strips.
Brief outline of the case
The patent was maintained according to AR1d_2.
Both proprietor and opponent appealed.
The board confirmed the maintenance as amended.
The case is interesting s it also deals with requests in which claims have been deleted, i.e. AR III and IV.
The proprietor’s request to refer two questions to the EBA, should AR III and IV not be admitted into the appeal proceedings, was rejected by the board.
The proprietor’s point of view
The proprietor acknowledged that AR III and IV were new in appeal but was of the opinion that, because the amendments only concerned the deletion of claims in the set of claims of AR 1c underlying the impugned decision, and the deletion was not to be considered as an amendment in the sense of Art 12(4) RBPA.
According to T 0981/17, such a deletion was not an amendment within the meaning of Art 12(4) RBPA.
Even if such a deletion of an independent claim was seen as an amendment within the meaning of Art 12(4) RBPA, T 1800/21 concluded with regard to the more restrictive Art 13(2) RPBA, that the mere deletion of one of the independent claims even overcame the hurdle of exceptional circumstances. AR III and IV should thus be admitted and were not subject to the board’s discretion under the less restrictive Art 12(4) RPBA.
The opponent’s point of view
AR III and IV were not to be admitted. These requests should have been presented in the first instance proceedings.
AR III and IV were allegedly based on AR 1c underlying the impugned decision. The amendments made to the set of claims of AR 1c were undoubtedly amendments within the meaning of Art 12(4) RPBA as the subject-matter of claim 1 AR III was never discussed before the OD and not subject of the impugned decision. The same applied to claim 1 of AR IV which was identical to claim 1 of AR III.
The proprietor had sufficient opportunities for filing new requests before the OD. There was no reason why AR III and IV were not already filed during opposition proceedings.
The request for a referral was filed at a very late stage during OP before the board and should not be admitted.
Furthermore, the proposed questions for the referral were not decisive for the present case.
The board’s decision
The amendments made in these requests are amendments within the meaning of Art 12(4) RPBA. The admittance of these AR was thus subject to the discretion of the board.
In view of the numerous opportunities for filing AR available to the patent proprietor in the first instance proceedings and in view of the preliminary conclusion of the OD during OP, AR III and IV should have been submitted in first instance proceedings.
In the present case, the proprietor submitted AR 1c, underlying the impugned decision, including two independent claims in the same category relating to two alternatives. This implies that the proprietor considered both alternatives to be patentable at that time.
It cannot be denied that, if one of the alternatives were not patentable, then AR 1c would fall irrespective of the patentability of the other alternative. This is what happened in the opposition proceedings as the alternative of claim 1 was held to lack IS.
In opposition proceedings, the proprietor did not submit a request directed only to the other alternative of claim 1, which would have required a decision of the OD specifically for that alternative.
Accordingly, with AR III and IV, the board and the other party to the proceedings were presented with a new situation which might have been dealt with, but did not have to, and in fact was not dealt with, in opposition proceedings. It is thus, from an objective point of view, a new situation in appeal.
Even if – as argued by the proprietor, claim 1 of AR III and IV as such was submitted during first instance proceedings and the features of granted claim 5 were discussed before the OD with regard to auxiliary request 1d underlying the impugned decision AR III and IV still constitute an amendment within the meaning of Art 12(4) RBPA.
The reason is that the features of granted claim 5 were only discussed in the more limited context of claim 1 of AR 1d wherein the features of granted claim 5 are combined with those of granted claim 6.
Claim 1 of AR III and IV, however, presents the features of claim 5 in a broader context, i.e. without the additional features of claim 6 as granted. This might have e.g. an impact on the discussion of inventive step in view of the document that can be considered as CPA.
Thus, the mere fact that the features of granted claim 5 were discussed before the OD, does not necessarily result in the same discussion for AR III in appeal as for AR1d in opposition. In other words, claim 1 of new AR III and IV introduces new aspects on which the assessment and the reasoning in the appealed decision were not focused.
In T 0981/17 and T 1800/21,contrary to the present case, the OD also decided on the independent claim of the category that was maintained in appeal. These decisions do thus not apply to the present case.
Comments
The present decision is different from T 449/23 also discussed in the present blog.
It also relates to deletion of claims, but in a different context.
It refers to a more classical situation in which one claim in a set of claims is not patentable, and the proprietor does not file before the OD an AR attempting to overcome the objection raised found convincing by the OD.
In the present case, the OD considered that one of the two alternatives claimed was lacking IS. It is thus normal to consider AR III and IV late filed and representing an amendment under Art 12(4) RPBA.
Comments
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