Updates on EPC, PCT, EPO case law and the e-EQE

The patent was maintained by the OD on the basis of a request filed during OP. Both proprietor and opponent appealed the decision.

It was in dispute whether an objection of lack of IS about claim 8 of the MR in view of NPL5 and E14 was admissible or not.

The opponent considered it was admissible,

The opposition to EP 2 632 399 was rejected by the OD.

In appeal the BA held that claim 1 as granted as well as AR  1, 3, 3a, 4, 5, 6 were lacking N over D19=US-B-6588428 (not in ISR) or D18=US-A-4143656 (not in ISR). The ISR contained only two A documents.

The proprietor informed the Board that it would not be attending OP shortly before the scheduled date.

Brief outline of the procedure

The proprietor and opponent 1 appealed the decision of the OD to maintain the patent in amended form according to AR2.

Eventually the patent could be maintained in amended form according to AR6 and the case was remitted for adaptation of the description.

The OP

The OP took place on 30.06.2022.

I would like to amend my original statements on both cases as a former lawyer colleague of mine, who I have in high esteem, drew my attention to the following:

As far as the circumstances underlying each case, there seems to be no contradiction between the 2 decisions at stake, at least as far as the ADA and their interpretation are concerned.

In T 71/21 (28.4.2022) the board decided that the opposition fee could not be paid by automatic debit of an account and that form 1038 could not be corrected under R 139.

See my comment:

T 71/21 – Payment of the appeal fee by automatic debit procedure not open to the opponent –