EP 3 711 729 B1 relates to absorbent hygiene products.
Brief outline of the case
Claim 1 as granted lacked N over a Public Prior Use.
The patent was maintained according to AR1.
The proprietor and both opponents appealed.
The board held that claim 1 as granted infringed Art 123(2).
AR5 was a request filed the first time in appeal. The same applies to AR6-26 which represent combinations of claims as granted. AR1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A comprised a further limitation.
In its communication under Art 15(1) RPBA, the board noted that for each of the requests ranked below AR2, besides the basis of claim 1 of all requests, only a very cursory indication is given how the amendment “further delimits” the respective claim over the “the alleged prior use and cited art”, without specifically giving any detail with respect to a particular document. The board further noted that there was no IS justification at all for all those requests.
During the OP, the proprietor filed a new AR1 which was not admitted under Art 13(2) RPBA.
Original AR 1 to 26, 1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A were not admitted under Art 13(1) RPBA for lack of convergence.
The patent was thus revoked.
The board’s decision
At OP before the board, an AR, i.e. AR1ap was filed which should be dealt with before all AR previously on file. Consequently, all the AR previously on file assumed a new ranking.
At OP the board’s preliminary view was given that AR 1 to 26, 1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A were not convergent with the higher ranking AR1ap filed at OP before the Board.
For the board the re-ranking of these requests was an amendment to the proprietor’s appeal case which was, in the present case, contrary to procedural economy and would not be admitted. To this preliminary opinion the proprietor explicitly refrained from providing any counter-arguments.
Such a re-ranking was then indeed held to be an amendment to the proprietor’s appeal case and its admittance was at the board’s discretion, taking into account procedural economy.
AR1ap filed at OP before the board included features taken from claims 8 and 12 as filed. The features of at least claim 12 as filed were, however, present in none of the lower ranking AR 1 to 26, 1A, 6A, 7A, 8A, 9A, 16A, 17A, 18A, 19A, 23A, 24A and 26A such that each of these lack convergence with AR1ap filed at OP.
A lack of convergence of requests falling under Art 13(1) RPBA is usually seen to be contrary to procedural economy, not least since the opposing party and the board would need to consider claims directed to subject-matter broader than that previously decided upon.
Comments
The proprietor should never have filed a new AR1ap during OP. Unless there is a change in the legal and factual framework of the appeal procedure, like new objections raised by the board in a communication under Art 15(1) RPBA or during the OP, such late filed requests have barely a chance of being admitted under Art 12(3) RPBA.
Although taken in examination, non-convergent late requests need not be admitted in the procedure, see T 2096/09, Reasons 5. This stance applies mutatis mutandis in opposition and certainly in appeal with the valid RPBA.
In T 3097/19, in appeal after refusal, the board held in Catchword 2 that “Non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned why non-convergent requests affect procedural economy in view of the particular circumstances of the case. As the ED had not explained why the requests were not convergent, the ED committed a SPV.
In T 1847/22, commented in the present blog, it was held that reordering requests before the OD might render them not admissible in appeal. 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.
A key message which can be taken for the present case and the decisions quoted above here is that reordering requests, be it in examination or in opposition, and certainly in appeal, has to be well thought through, so that procedural economy is not jeopardised and a first instance decision was taken on the reordered requests.
Lack of substantiation
Furthermore, in the present case, besides AR1 (as maintained), none of the AR had been properly substantiated. They could thus as well not have been admitted und Art 12(3+5) RPBA.
A mere table showing the way various requests were composed so that they do not infringe Art 123(2) is not sufficient to overcome the objections raised by the opponent or the OD.
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