EP 2 994 318 B1 relates to optical security motion and animation displays using nanostructure arrays, and methods for their manufacture and use.
Brief outline of the case
The patent was revoked and the proprietor appealed.
The board confirmed the revocation.
The case is interesting in that it deals with the admissibility of a request filed after receipt of the communication pursuant to Art 15(1) RPBA, when a transfer of property of the patent has occurred in the meantime, i.e. under the third level of convergence pursuant to Art 13(1) RPBA.
The proprietor’s point of view
According to the proprietor, the following aspects give rise to exceptional circumstances within the meaning of Art 13(2) RPBA that justify the admittance of AR 10 to 21 in the appeal proceedings.
1) The clarifying nature of the amendments, based on issues central to the decision of the OD, which could substantively resolve the issue of claim scope.
2) Unusual circumstances regarding the transfer of the patent from the previous patent proprietor to the new one. These circumstances did not enable the new patent proprietor to previously comment or submit AR.
3) The importance of such technology in protecting monetary supply that was so critical to economic stability.
The board’s decision
The aspects submitted by the proprietor are not considered to be exceptional circumstances within the meaning of Art 13(2) RPBA.
The proprietor’s view that the AR address issues central to the decision of the OD and could substantively resolve the issue of claim scope do not amount to exceptional circumstances.
The issues considered by the OD in the decision under appeal could and should have been addressed at an earlier stage.
Even assuming that the decision under appeal included new aspects, these aspects could and should have been addressed in the statement of grounds of appeal.
Nor has the proprietor convincingly demonstrated that the reply to the statement of grounds of appeal or the board’s communication under Art 15(1) RPBA contained any new aspects, let alone that AR 10 to 21 were a direct response to such new aspects.
In the statement of grounds of appeal, the previous proprietor addressed the issues raised in the decision under appeal and maintained the MR and AR 1 to 9 filed in the opposition proceedings.
While it was not the current proprietor that filed the statement of grounds of appeal, the transfer of the patent does not allow the new proprietor to restart the appeal proceedings from the beginning.
Instead, the new proprietor takes the place of the previous proprietor. The mere fact that a transfer of the patent took “some time” and that attorneys who had not previously been involved in the appeal case needed time to consider the case is nothing uncommon and seems to be a direct consequence of the previous proprietor’s and the current proprietor’s decision to transfer the patent.
The proprietor has not filed any evidence for the asserted bankruptcy of the previous proprietor’s parent company. Nor has it explained why this complicated the transfer of the patent from the previous to the current proprietor to such a degree that AR 10 to 21 could not have been filed earlier. Moreover, this does not overcome the issue that the aspects could and should have been addressed at an earlier stage of the appeal proceedings.
The fact that the proprietor considers the technical field of the patent to be important is not exceptional either. The proprietor has not convincingly demonstrated that the non-admittance of AR 10 to 21 would put the economic stability of any state or monetary system at risk. The question of whether the latter could be considered exceptional circumstances may therefore be left unanswered.
Exercising its discretion under Art 13(2) RPBA, the board therefore decided that AR 10 to 21 were not to be taken into account.
Comments
The present situation is similar to that occurring when a party changes representative during procedure, be it in first instance or in appeal.
A change of representative cannot be a reason for presenting late submissions. The new representative has to take the file over in the state he found it when it took over representation. If he is not happy with what his predecessor has done, he can refuse to take over representation.
When a proprietor takes over a patent, the same stance applies mutatis mutandis. As, in general, a new representative comes into play, case law relating to a change of representative applies as well. This is certainly the case here.
The representative might not have had any choice but to present the arguments 2) and 3) above, but it is was foreseeable and manifest that a board will not bat an eyelid at them.
Some decisions illustrating a change of representative and its consequences:
In T 301/08, Reasons 1, it was held that a change of representative, being a matter wholly within the purview of the appellant/proprietor, does not constitute an adequate reason for either issuing a further communication or for postponing OP.
In T 900/09, Reasons 14, it was heldthat a change of representative and the fact that it was difficult to find the new evidence via an Internet search could not relieve the opponent from its duty of submitting evidence known to himself as soon as possible. The opponent acted quite carelessly and had to bear the costs incurred by the proprietor for an appeal. Had the document been filed before the OD, an appeal would have been superfluous.
In T 222/08, Reasons 2.2, it was held that the only reason provided by the proprietor for the late filing of AR1 was the recent change in representative. However, this is not considered to be a valid ground for justify the late change to the proprietor’s case, since it must be assumed that all actions taken in the opposition proceedings and opposition appeal proceedings prior to the change in representative had been undertaken with agreement of the proprietor and reflected the way in which the appellant wished to conduct its case.
All those decisions have been taken under previous RPBA, but are certainly valid, if not more, under the present RPBA.
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