EP 2 478 097 B1 relates to a stable liquid washing or cleaning agent containing a protease.
Brief outline of the procedure
The opponent filed an appeal after rejection of its opposition.
In T 0543/20, the patent was revoked.
The proprietor filed a petition for review.
The petition for review was successful as the procedure before the board will be reopened.
In the contested decision, the board ruled that the AR should not be admitted.
AR2-4 were not admitted under Art 12(4) RPBA.
AR5-7 were not admitted under Art 12(4+6) RPBA.
During OP, the proprietor raised an objection under R 106 on the non-admissibility of the AR.
The proprietor’s point of view
The proprietor raised three reasons in its petition for review
- Firstly, AR2-4 had been admissibly raised and maintained before the OD.
- Secondly, even if AR2-4 had not been admissibly raised and maintained before the OD, the reasons for the amendments had been set out in the reply to the statement of grounds of appeal. The amendments merely limited the claim to one of substance contained in claim 4 as granted. This should be sufficient to satisfy the requirements of Art 12(4) RPBA.
- Thirdly, even if the grounds set out earlier in the reply to the appeal were to be regarded as insufficient, the “further” submission contains a comprehensive explanation of the basis for the amendments.
The proprietor argued that the board failed to address this argument at all, which constitutes a serious procedural violation and disregards the right to be heard, cf. Art 113(1).
The opponent’s point of view
The opponent argued that
- whilst the board did not take the belated argumentation into account, it did so by applying directly and correctly Art 13(2) RPBA.
- even if the board had overlooked the relevant submission, this would indeed constitute a procedural error; however, such a hypothetical error would not have altered the outcome of the proceedings. This is because the submission would not have been admissible in any event. The proprietor had not put forward any valid grounds within the meaning of Art 13(2) RPBA.
The EBA’s decision
Non-admissibility of AR2-4
The TBA appears to have taken into account the information contained in the proprietor’s reply to the appeal but has not considered it sufficient to substantiate the basis for the amendments in AR2.
However, the proprietor supplemented this information in its “further” submission. The explanations contained therein regarding the basis for the amendments made in the AR may, however, again be regarded as having been submitted too late. The TBA should only have regarded AR2 as substantiated and filed from the date of the “further” submission and should not have admitted it under Art 13 RPBA.
The problem is that in the contested decision, the TBA did not address the relevant information in the “further” submission at all. In the decision, the TBA appears to have assumed that the basis for the amendments in the AR had not been further substantiated.
For the EBA, there is a difference between a situation in which a submission relevant to the decision was taken into account but rejected on the basis of incorrect or insufficient reasoning, and a situation in which a submission relevant to the decision was not taken into account at all.
In the former case, the decision is either factually incorrect or correct in its outcome but not sufficiently reasoned. In the latter case, however, there is a violation of the right to be heard.
The EBA did not follow the opponent’s argumentation
Firstly, The EBA could not find any indication in the contested decision to support the assumption that the board failed to cite or take into account the arguments on the basis of the application of Art 13(2) RPBA.
Secondly, where a particular conclusion is based on various grounds and a party to the proceedings has not been heard on one of those grounds, there is no relevant infringement of Art 113(1) if the same result is also based on other grounds and the party to the proceedings has been heard on those other grounds.
In the present case, the EBA could not infer from the decision that, had the arguments set out in the relevant written submission been taken into account, the outcome of the proceedings would have remained the same, because the TBA would not have admitted them as being late or, even if they had been taken into account, would have rejected them as unfounded. This may be possible or even probable.
However, that possibility or probability is not sufficient to rule out causality. That is only the case if, on the basis of the grounds of the contested decision itself, a different outcome is logically impossible. Such a situation does not exist in the present case.
The EBA could not clearly infer from the decision that the reasons for which the MR was deemed not allowable would, in the view of the competent TBA, also have applied to AR2. Nor can it be inferred from the decision that AR2, had it been substantiated, would likewise have been not allowable, even prima facie.
The conclusions drawn in respect of AR2 are applicable to AR3-4
Non-admissibility of AR5-7
The above assessment does not apply to AR5-7.
In the contested decision, the TBA took the proprietor’s argument into account.
Whether the TBA’s reasoning is factually correct is irrelevant to the review proceedings. Furthermore, no manifest error of discretion is apparent.
In exercising its discretion, the TBA examined, inter alia, whether these requests could have been filed during the opposition proceedings, cf. Art 12(6) RPBA. This point of view cannot, at the very least, be regarded as manifestly incorrect. Against this background, the not admissibility of AR5-7 does not constitute a breach of Art 113(1).
Conclusion
The reopening of the procedure concerns only AR2-4.
Comments
An argumentation in support of an AR can be considered not admissible when it is late filed, but a board cannot ignore said argumentation.
In other words, a board might well dismiss an argumentation for the wrong reasons, but it cannot ignore it.
If there are other reasons for not granting a given request, it does not matter whether a party has not been heard about some the argumentation about a further reason.
In stating that the board should only have regarded AR2 as substantiated and filed from the date of the “further” submission, the EBA actually confirmed T 1732/10, second half of the Catchword.
The EBA was careful not to enter in a discussion on the substance or the merits of the case.
It is interesting to note that the EBA never discussed whether AR2-4 have been admissibly raised. The answer is most probably that it was not the case, as the proprietor had to file a further submission.
The procedure might be reopened, but it is not sure that it will bring about a different outcome.
The appeal procedure before the EPO is a front-loaded procedure and with the valid RPBA, late filed submissions are rarely deemed admissible.
Comments
Leave a comment