EP 3 379 118 B1 relates to a check valve stopping any reflow.
Brief outline of the case
The patent was revoked for lack of IS over a PPU=D22 from the opponent as CPA.
The board confirmed the revocation, but on the basis of the same first CPU, but a different second document.
The case is interesting in that the proprietor denied in appeal that the D22 was prior art.
The proprietor’s point of view
The proprietor argued that it could not be proven beyond doubt when the contents of D22 had been made available to the public and itwas thus not prior art.
Contrary to Point 5.3 of the minutes of the OP before the OD it had not been acknowledged that D22 was prior art.
The proprietor took the view that the “final argument of the opponent’s representative” referred to in Point 5.3 of the minutes relates to the fact that the sale of the check valve was irrelevant.
The complete withdrawal of the arguments put forward in the written proceedings against D22 had not been announced at any point
This was confirmed by the wording “that, in the opinion of the OD, D22 is prior art …”. Since no agreement between the parties on this point was mentioned, there was no need to request a correction of the minutes.
An alleged acknowledgement without justification in the decision, must be reviewed in appeal.
The opponent’s point of view
The objection that D22 was not prior art was not upheld by the proprietor before the OD. Instead, the proprietor expressly acknowledged D22 as prior art during the OP. Reference was made to Point 2.4.1 of the decision and Points 5.2 and 5.3 of the minutes. Furthermore, the proprietor did not request a correction of the minutes after receiving them.
Denying in appeal that D22 was prior art represents an amendment of the proprietor’s case and should not be admitted.
The board’s decision
From Point 2.4.1. of the decision, the board concluded that during OP, the proprietor acknowledged D22 as prior art.
For the board, Point 5.3 of the minutes refers to the preceding Point 5.2 of the minutes, which in turn refers to the preliminary opinion of the OD in the annex to the summons. In the latter the OD took the view that the manufacture and subsequent sale of an EDRV check valve according to E2, was not sufficiently substantiated, but that the publication of D22 was, so that this constituted prior art within the meaning of Art 54(2). This argument was summarised in the second sentence of paragraph 5.2 of the minutes,
For the board, the representative of the proprietor expressly agreed with this argument in accordance with Point 5.3 of the minutes, which is to be understood as meaning that the representative of the proprietor acknowledged that D22 belonged to the prior art. The OD also correctly understood this in accordance with Point 2.4.1 of the reasons for the decision.
The board noted that, no correction of the minutes was requested, as acknowledged by the proprietor.
The fact that the chair of the OD stated in Point 5.3 of the minutes that, “in the opinion of the OD”, D22 belonged to the state of the art, cannot lead to a different conclusion. This is because this is a typical formulation which, unlike in a decision, allows an OD to change its position on a matter in the further course of the proceedings.
The proprietor concluded from the fact that the OD did not provide any further reasoning that this “decision must be reviewed in the context of the appeal.”
However, this was not a decision, but merely the reproduction of a statement made by the proprietor, which the latter now disputes. Unlike a decision, such a reproduction does not include any assessment by the OD.
For the board, the disputed inclusion of D22 in the prior art concerns a factual assertion that was no longer upheld in the proceedings before the OD.
Consequently, the corresponding argument in the grounds of appeal must be regarded as an amendment to a party’s submission, the admissibility of which is at the discretion of the board, cf. Art 12(4) RPCR.
The proprietor did not explain in the grounds of appeal why the inclusion of D22 in the prior art should be discussed again in appeal. Nor did it assert any circumstances of the appeal case that would justify its admission.
The Board therefore decided that contesting the inclusion of D22 to the state of the art constituted a change in the proprietor’s submission that was not admissible under Art 12(6) RPCR.
D22 therefore belongs, as found by the OD, to the prior art pursuant to Art 54(2).
Comments
The present decision reminds us that it is important to listen carefully to what is said during OP.
If the OD expresses an opinion, this opinion can change until the final decision is announced.
If the OD announces a decision on a given topic, the OD cannot change this decision. Changing a decision, be it on a specific aspect or final, amounts the OD committing a SPV.
If the OD had announced the decision that D22 is part of the prior art, then it could not change this later. The fact that D22 was part of the prior art became irrevocable with the OD’s final decision.
If a party disagrees with the content of the minutes or has a different interpretation of some facts as mentioned in the minutes, it has to file a request for amendment of the minutes upon receipt.
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