The patent relates to a system for making beverages, in particular based on capsules containing a powdered food substance like coffee.
Brief outline of the case
The OD found that claim 1 as granted was lacking N over A6=WO 2007/137974 (Not in the ISR/EPO).
AR1 was also lacking N over A6.
AR2 was lacking N over two pieces of prior art under Art 54(3), A1=WO2012/042487 and A13=WO2012/118367 (also not in the ISR/EPO or in the file).
The patent was thus revoked by the OD and the proprietor appealed.
The board confirmed the lack of N of claim 1 as granted.
The board did not admit any of the AR filed by the proprietor in appeal and the revocation was confirmed.
Non-admissibility of the AR
71 AR filed when entering appeal
The proprietor submitted no less than 71 AR for the first time in the appeal proceedings. By the way, this is not the record of numbers of AR!
The proprietor’s 71 AR were not spelled out or attached as annexes.
Instead, the proprietor provided instructions on how to combine one of multiple options for the first independent claim, one of multiple options for the second independent claim and one of multiple options for the dependent claims in order to arrive at a specific set of claims for each AR.
Accordingly, the board and the other parties would have to actively determine the content of any given AR themselves. This not only requires a considerable amount of time, but there is also the risk that in doing so the board or one of the parties makes a mistake. Hence, this way of presenting AR does not comply with a party’s obligation to set out its requests in a clear manner.
Secondly, the proprietor did not explain why these AR might be suitable to overcome the objections raised and merely contented that no discussion of novelty and inventive step of the AR is considered necessary when entering appeal.
The board held that such a way of dealing was not in line with the appellant’s obligation to present its complete case in the statement of grounds of appeal and to set out clearly and concisely the reasons why the impugned decision should be amended. For want of any such justification, the AR have not been substantiated.
It is thus without surprise that in the board’s communication pursuant to Art 15(1) RPBA20, the board gave reasons why the 71 AR filed with the grounds of appeal could not be admitted into the proceedings
11 AR filed two days before the OP
Two days before the OP the 71 AR filed when entering appeal were replaced by 11 AR.
In the proprietor’s view, the 11 AR filed two days before the OP should be admitted since they merely limited the total of 71 AR filed with the grounds of appeal and no new AR had been filed.
The board noted that in addition to the number of AR being limited, their order was as well amended
On top of this, as for the 71 earlier requests, no substantiation was filed in order to support their allowability as it was not self-explanatory why the amendments made in AR 1 to 11 might be suitable to overcome the existing objections.
Those requests were thus not admitted under Art 13(2) RPBA20.
In its defence, the proprietor further alleged that, in view of the OD’s previous written preliminary opinion, it had been surprised at the OP before the OD that the division had considered the subject-matter of claim 1 not novel over A6.
This reason could not induce the board in admitting any of the AR.
Comments
Search and examination
The classification units for the application patent are A23F 5/36, A47J 31/36 and B65D 85/804.
It is regrettable that the novelty destroying document A6=WO 2007/137974 classified in B65D85/804 was not found during the original search.
The same applies to the prior art under Art 54(3):
- A1=WO2012/042487 classified in A47J31/06; A47J31/36 and B65D85/804
- A13=WO2012/118367 classified in B65D53/02 and B65D85/804
During examination the ED added two pieces of prior art under Art 54(3), i.e. D7=EP2489609 and D8=WO2013/132435. The applicant argued that those documents were not novelty destroying and claim 1 as filed was not amended. D7 and D8 were even mentioned in the description of the granted patent.
Something went manifestly wrong during search and examination, but it can happen as in any other real life situation when humans are involved directly. The pressure on production/productivity increased after 2012.
Change of position of the OD with respect of the provisional position expressed in the annex to the summons
A communication annexed to summons to OP has a provisional character and the OD is not bound by it. It may change its opinion during the course of the OP in view of the arguments exchanged, e.g. T 443/18.
Should the OD not give the reasons for its change of mind, then it commits a substantial procedural violation, e.g. T 558/16.
If the opposition division changes its mind, it should at least allow the filing of one further request,
Departure during OP from the opinion expressed in the annex to the summons cannot alone lead to the admission of any requests during oral proceedings. The OD has, even in this circumstance, the discretion to admit such requests or not, e.g. T 966/17.
Requests filed when entering appeal are however not late if the proprietor could not react during OP before the OD to the change of opinion expressed in the annex to the summons, see T 1778/17 or T 2504/16.
In the present case, the OD acted correctly when it changed its view on N. It allowed the proprietor to file two AR during the OP. They could however not allow maintenance in amended form.
“Requests” filed in appeal
Things went manifestly wrong on the proprietor’s side when entering appeal.
A proper set of AR with all of them properly set out was never filed, cf. T 2571/12.
At the same time all the AR should be filed with a proper substantiation, cf. T 2446/17.
It remains that claiming that reducing the number of AR two days before the OP should render the reduced number of AR admissible for this reason alone cannot be successful, be it on the RPBA20 or any of the previous RPBA.
Claiming that no justification on N or IS for the requests filed in appeal is a quite daring attitude and the board was not willing to play such a game.
General conclusion
We are in presence of patent revoked roughly 10 years after filing.
All the efforts put in the application and the patent were to no avail as the opponent brought forward the correct prior art and the proprietor did not abide by the RPBA, be it of 2007 or 2020.
If something goes wrong, it is not surprising that everything goes wrong.
https://www.epo.org/law-practice/case-law-appeals/recent/t190830eu1.html
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