EP 2 072 587 B1 relates to coated pipes having improved mechanical properties at elevated temperatures and a method of production thereof.
Brief outline of the case
The OD decided maintenance according to AR3, and also admitted AR17 in the procedure.
Proprietor and opponent appealed.
In AR3 as maintained, the features introducing a lack of clarity in the other AR had been deleted.
The board confirmed the OD’s decision with respect to the patent as granted and AR1-2. The board held that AR3 was lacking IS. The same applied to AR4-16 and 18-21.
AR17 only contains process claims.
The board held that the OD had incorrectly exercised its discretion in admitting AR17. The board reversed the OD’s decision on admissibility and did not admit AR17 in the procedure.
The patent was thus revoked.
The proprietor’s point of view
On the issue of the admittance of AR17, the proprietor referred to the minutes of the OP before the OD and to the contested decision, and argued that the OD had admitted all of the AR, including AR17, into the opposition proceedings. AR17 had not been considered by the OD since the higher-ranking AR3 had been found allowable.
The proprietor further argued that AR17 had been maintained when filing the appeal. Hence, AR17 was not an amendment to the patent proprietor’s appeal case and AR 17 overcame the issues of the higher-ranking requests. All product claims were deleted.
The proprietor also noted that AR17 was directed to a process, i.e. a method, only. In its decision, the OD had not considered the allowability of any method claim.
The opponent’s point of view
The opponent argued that the OD had misunderstood its discretionary powers in thinking that it did not have any power not to admit AR17. The opponent pointed out that a new sentence had been introduced in Part E-VI. 2.2.2 of the Guidelines for Examination, in force from 1 March 2023: “Amendments submitted before the date set under R 116(1) cannot, as a rule, be considered as being late-filed“.
However, this did not mean that the OD had no discretion at all. The OD was therefore incorrect to state that it had no discretion to consider the admissibility of the AR. There was no basis in the EPC for this view; nor was it supported by the Guidelines. The OD did have discretion and, it should not have admitted AR17. The admittance of AR17 was hence based on a fundamental error. Moreover, AR17 was clearly not allowable and not suitable for addressing the deficiencies found by the board and therefore it should not be admitted into the appeal proceedings either.
The board’s decision
The board was aware of decisions holding that submissions admitted by the OD cannot be excluded from consideration on appeal, in particular if these submissions have been considered in substance in the decision, as there is no legal basis for such an exclusion,
In the present case, AR17 was admitted, but was not relevant to the OD’s final decision, and hence not considered in substance, because the higher-ranking AR 3 was considered allowable. However, the above decisions could nevertheless be seen to also extend to the present situation and to preclude a review of the opposition division’s decision to admit AR17.
A decision to admit submissions into the opposition proceedings is a discretionary procedural decision which forms part of the OD final decision on the merits of an opposition,
A decision to admit late-filed submissions adversely affects the party contesting their admittance. Therefore, a board has the power to review an OD’s procedural decision to take into consideration submissions filed late in opposition proceedings.
Otherwise, the parties’ right to a judicial review of an essential part of the opposition division’s decision would be denied. Moreover, on appeal, a board would be compelled to accept a legal and factual framework, even if it is based on an erroneous exercise of discretion.
The present board noted that, a board should only overrule the way in which a department of first instance has exercised its discretion if it concludes that it did so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and thus exceeded the proper limits of its discretion.
The exercise of this discretion has to take into account that each party has to be given equal opportunity to present their case and must be given a fair chance to respond to new matter raised by the other party or parties or by the OD.
Both the OD and the parties have to observe the principle of good faith. To expedite proceedings and implement the principle of fairness towards the other party or parties, each party must submit all facts, evidence, arguments and requests for amendments relevant to their case as early and completely as possible, and not in a piecemeal manner.
The case law was developed mainly in the context of Art 114(2), pertaining to facts and evidence. Nevertheless, the rationale of this case law also applies to a patent proprietor’s observations to an opposition, which should include not just all facts and evidence relied on to defend the patent but also requests for amendment of the patent that are considered necessary in order to address the main objections raised by the opponent, in case these are found to prejudice the maintenance of the patent
Observing the time limit under R 116 is not a sufficient reason for admitting facts, evidence or sets of amended claims submitted at this stage of the opposition proceedings.
Consequently, the OD erred in denying it had discretionary power to disregard AR 17. The OD might have been misled by the statement introduced in the Guidelines.
The OD’s decision to admit, inter alia, AR17 into the opposition proceedings thus suffered from an error in the exercise of its discretionary power.
Therefore, the board decided to overturn the OD’s decision to admit AR17 into the opposition proceedings. As a consequence, this procedural decision does not establish that AR17 was “admissibly raised” in opposition proceedings.
Comments
AR filed before the date set under R 116(1) cannot be considered late filed. This does however not mean that they are de facto admissible in opposition and later in appeal. One important condition for their admissibility is that they are properly substantiated. In this respect, the OD has indeed the discretion not to admit requests even if timely filed. See for instance T 1061/23.
No proper demonstration of the allowability of the method claims
When filing the requests two months before the OD, the proprietor indicated that “Since the New AR 16 and 17 correspond to the claims as granted, the arguments in favour of inventive step equally apply”. This not entirely correct as claim 1 of AR17 corresponds to claims 15+19 as granted.
From the submissions of the proprietor it does not appear that the allowability of claim 1 of AR17 has ever been convincingly demonstrated as it merely referred to the product claims. When discussing AR1 and 2, the proprietor merely stated that the subject matter of original claim 22 (granted claim 19 is equivalent) was introduced into claim 15 of New AR1.
The contribution of the OD to the situation
The problem also appears to stem from the OD’s decision. During the OP claim 1 as granted and of all AR, also of AR3, have been discussed at length, but neither from the decision nor from the minutes, it appears that the method claims have ever been discussed.
This is also clear in that the proprietor acknowledged that, in its decision, the OD had not considered the allowability of any method claim. The OD should have discussed the method claims.
The bord was thus entitled to consider that AR17 was not admissibly raised in opposition and that no substantiation was given when entering appeal, cf. Art 12(+5) RPBA.
Another possibility would have been to consider that, by not discussing the allowability of the method claims, the OD had committed a SPV. In this situation the case would have come back to the OD and the board. It was thus more efficient to consider AR17 not admissibly raised, which was indeed the case.
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