EP 3 312 339 B1 relates to gypsum boards suitable for wet or humid areas.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted lacked IS. AR 1+2 were not admitted under Art 13(2) RPBA. AR3-5 were lacking IS for the same reasons as the patent as granted.
The patent was thus revoked.
The case is interesting as it deals with inevitable repetition of arguments in appeal.
The proprietor’s point of view
The proprietor argued that opponent’s appeal failed to meet the requirements of Art 12(3) RPBA, and requested that its objections and arguments which merely reiterated those raised at first instance, rather than directly addressing the reasoning of the decision under appeal, be disregarded.
The board’s decision
The board was not persuaded that any of the opponent’s arguments or objections should be disregarded solely on the grounds that they were allegedly repeated from the first-instance proceedings.
While an appeal may be inadmissible if it relies exclusively on the same case presented at first instance, this does not preclude a party from referring to arguments previously made.
On the contrary, some degree of repetition is often inevitable, as the purpose of the appeal is typically to put forward, and possibly further develop the original arguments in order to challenge the contested decision.
Accordingly, reiterating arguments from the first-instance proceedings is not only permissible, but often necessary to present a complete case pursuant to Art 12(3) RPBA.
The board therefore concluded that the arguments and objections presented by the opponent in the statement of grounds of appeal met the requirements of Art 12(3) RPBA and were not disregarded.
Comments
The decision is to be welcomed as it can even be considered as introducing a kind of “carry-over objections” when an opposition is rejected.
When an opposition is rejected, it is often difficult to come up with a new argumentation.
A completely new line of argumentation would most probably not be admitted under Art 12(4+6) RPBA.
There is thus not much wriggle room for the opponent when its opposition has been rejected.
The situation is different if the OD has maintained the patent in amended form. For the amended and maintained claims, it is manifest that the objections raised in first firt instance might not simply be recycled.
However, as long as the line of argumentation further develops the original arguments in order to challenge the contested decision, it should be admitted, cf. T 1914/12.
T 1914/12 has been confirmed in a number of other decisions: T 47/18, T 1381/15, T 315/15, T 133/19, T 1359/14, T 369/12, T 1875/15, T 691/16, T 128/15 and T 325/16.
Without quoting T 1914/12, the same conclusion was reached in T 1303/22, also commented in this blog, or in T 1544/22, as well commented in the present blog.
Divergent case law
In T 0919/22, commented in the present blog, the board went as far as to claim that it was “not convinced” that the findings of T 1914/12 could be applied, since the case at hand underlies the present RPBA and not the RPBA07.
The argument of the board in T 0919/22, that T 1914/12, taken under the RPBA07 was not applicable under the present RPBA is not convincing. The two first levels of convergence of the present RPBA find a direct correspondence in the RPBA07. Only the third level of convergence was added by the present RPBA.
On the procedure
The ESR only mentioned documents of category A. Besides a mere formal communication relating mainly to the adaptation of the description and the deletion of “incorporations by reference”, the patent was granted almost immediately.
Claim 1 as granted lacked IS over D17=WO 2010/026065 + CGK. D17 was not mentioned in the ESR. However, D17 also related to gypsum boards and methods of making gypsum boards.
The document brought forward by the opponent was thus not dug into a claasification foreign to the subject-matter of the patent.
Comments
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