EP 3 589 420 B1 relates to a system and method for performing predictive maintenance on a paint finishing system.
Brief outline of the case
The patent was maintained according AR17, itself derived from AR14.
AR 17 was filed during the OP before the OD as a modified version of the then AR 14.
Both opponents appealed, but their appeals were dismissed.
The opponents’ point of view
Both opponents requested during the OP before the OD that AR17 not be admitted as it was late-filed and not prima facie allowable. The OD however decided to admit AR17 as it was an attempt to overcome an objection under Art 84 raised during the OP against claim 9 of AR 14.
Opponent 1 argued that AR 14, on which AR 17 was based, was only filed in a complete manner one day after the expiry of the time limit set under R 116(2), after the OD allegedly held a phone conversation with the proprietor pointing out the lack of labelling of the amended descriptions according to the previously filed AR.
This phone call with the proprietor constituted an abuse of proceedings from the proprietor as well as a violation of the duty of neutrality of the OD.
Opponent 2 further argued that this phone call was not needed, since the OD had already indicated in its preliminary opinion the necessity of providing an adapted description in conformity with the amended set of claims.
The board’s decision
The board did not agree with Opponent 1 that the filing of an amended description in accordance with an amended set of claims is needed at the time of filing the set of claims.
It is rather common practice, if not specifically ordered otherwise, that a proprietor or applicant postpones the submission of an adapted description until one of its requests is found admissible and allowable by the competent administrative department or by the board.
Only when an allowable set of claims is available, is the adaptation of the description and its examination on the requirements of the EPC carried out with all parties involved in a subsequent final stage.
Although this final step is far from being a formal matter and may give rise to various objections, it is always conditional upon the existence of an allowable set of claims.
The OD’s invitation to file amended description pages made with the preliminary opinion was not seen by the board as an order to do so in the written procedure, but rather an indication for the proprietor that in the case of its absence during the OP before the OD, the lack of an adapted description could result in the revocation of the patent, possibly for lack of compliance with Art 84.
This applies even in the present case where the OD stated that “adapted descriptions for all of the MR and the AR need to be submitted before the time limit set out in the invitation for OP” in view of the above mentioned common practice and the corresponding expectations of the parties involved.
In this light, the board did not consider that the alleged phone call of the OD with the proprietor constituted an abuse of proceedings from the proprietor or a substantial breach of the OD’s neutrality obligation.
It further noted that, although not appearing from the file, that the phone call related to formal issues with respect to the adapted description, which are dealt with by formality officers, not by the OD.
Therefore, in the present case, the set of claims according to AR 14 was correctly considered as being filed in due time and therefore correctly admitted, discussed and decided upon during opposition proceedings.
Independently of the circumstances of the admittance of AR 14 which resulted in AR 17 being admitted by the OD, the board was of the view that it has no discretion to not admit the maintained version of the patent in suit into the appeal proceedings.
Comments
When an objection is raised for the first time during OP, the proprietor must have the possibility to file at least one request attempting to overcome this objection. Even Art 13(2) RPBA allows such a filing. If the OD had not admitted AR17, it would have committed a SPV.
Normal practice
The board is right when it considers that it is normal practice to only file an adapted description once the first instance deciding body as decided upon an allowable set of claims.
If an applicant/proprietor submits new claims and does not appear or fails to connect, he should not only file new sets of claims, but also submit a description adapted to the respective sets of claims in the absence of a complete set of documents, either
- the application is rejected, cf. T 893/01, T 109/02
- the patent is revoked , cf. T 725/00, T 986/00, T1024/18
This is also common practice. I have done this myself during OP in the absence of the proprietor.
Recent case law
In T 2818/19, Reasons 7, Opponent 2 requested that the amended description not be admitted into the proceedings since it was late filed and formed an amendment of the appeal case under Art 13(2) RPBA.
The board held that amendments to the description cannot be regarded as an amendment to the proprietor’s appeal case under Art 13(2) RPBA. They merely introduce the invention as claimed into the description of the patent. In this respect the amendments do not introduce any matter that would change the interpretation of the features of the claims to be taken into consideration under Art 69.
In T 673/22, Reasons 6.3.1 and 6.3.2, the board did not follow decisions T 1989/18 and T 1444/20 (no adaptation of the description necessary) for the reasons given in decision T 1024/18, Reasons 3. The board remitted to the OD for the adaptation of the description. This decision stands for many more of the same kind. In my experience it happens that OP are held before the OD, just for discussing the adaptation of the description.
In T 1997/22, Reasons 2, the board held that, since the description corresponding to the MR was not adapted, the latter was not allowable under Art 84. With an adapted description, the AR was considered allowable under Art 84, and the patent could be maintained.
Although the matter of the adaptation of the description is presently subject to the referral G 1/25, it is to be hoped that the EBA will endorse the long lasting practice discussed above. With G 1/24 as it stands, it might even become a necessity.
Telephone call with the proprietor
In the present case, the board was right to dismiss the objections of the opponents relating to the telephone contact with the proprietor. Some doubts do however remain, as there are no minutes of the telephone conversation on file.
I have experienced one party making a song and dance about the formalities officer having contacted the opposite party, without instruction from the OD, for the later to file a translation of a document in an non-official language of the EPO. Minutes of the phone conversation were on file.
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