EP 3 441 375 B1 relates to laminated glass used as head-up display.
Brief outline of the case
The OD held that claim 1 as granted lacked N over D6=WO 2017/176452 or D7=US 2010/0314900. The same applied to AR1-4. Cl1 of AR5 lack N over D6. The OD decided maintenance according to AR6.
Proprietor and opponent appealed.
The board confirmed the lack of N of claim1 over D6.
The board issued a communication pursuant to Art 15(1) RPBA, in which it expressed the preliminary opinion that AR11 appeared to be allowable. The lower-ranking requests were not dealt with at that stage.
The proprietor reordered his requests during the OP, but this change was not admitted under Art 13(2) RPBA. An objection under R 106 from the proprietor was dismissed.
The patent was thus revoked.
During the OP, following the discussion of AR11, which was found allowable, and of the MR, which was found not allowable, the proprietor changed the order of the requests and asked that the requests ranking lower than AR11, in particular AR 14-16 and 19-21, be discussed. Ultimately, only these AR were maintained besides the MR.
In this blog entry we will deal with the non-admissibility of the AR
The proprietor’s point of view
Reordering the requests was acceptable. In particular, AR14 had already been submitted before the OD; it had to be considered by the board. Furthermore, the board also had to deal with the other requests submitted by the proprietor. Therefore, AR14 to 16 and 19 to 21 had to be dealt with in substance.
Refusing to admit the reordered requests does not only represent a procedural violation, but also a violation of the property rights of the proprietor constitutionally protected under the laws of all member states of the EPO. In the present case, the proprietor should have the opportunity to properly defend his property right, namely EP 3 441 375 B1 in amended form, i.e. also based on corresponding use-claims at least according to AR14-16+19.
The proprietor justified the reordering of the requests by claiming that it was free to choose the order of the requests, which had been filed on time.
The board’s decision
The board referred to CLBA, 11th edition, 2025, V.A.4.2.3(i), V.A.4.5.4(q); T 1436/19, Reasons 1; T 2564/22, Reasons 2.1; T 622/23, Reasons 3.3).
Under Art 13(2) RPBA, any such amendment to a party’s appeal case after the notification of a communication under Art 15(1) RPBA will not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons.
In a case like the present one where the AR are not convergent, promoting a lower-ranking request is not merely a formal matter but shifts the subject of the proceedings.
The AR in question, containing use claims, had always been ranked lower by the proprietor, at both the first and the second instance, meaning that they were only intended to be considered if higher-ranking AR, i.e. those containing product claims, were not found allowable.
This condition did not materialise as a higher-ranking AR were found allowable (what was then AR6 by the OD, and AR11 in the board’s preliminary opinion. As a consequence, there was no need or scope to deal with the lower-ranking AR containing use claims during the opposition and appeal proceedings, notably not in the board’s communication.
The patent proprietor did not provide any reasons why it did not file the requests relating to use claims as higher-ranking AR before the OD so that the OD could have ruled on them.
In doing so, the proprietor, by contrast with its previous approach in the proceedings, effectively intended to remove the inherent condition underpinning the lower-ranking requests, namely that they should be considered only if no higher-ranking request was allowable.
Considering those AR in substance now would mean the board having to deal, for the first time, with matters not dealt with either by the OD or in its own preliminary opinion. It would, in particular, require discussions which did not take place in the opposition proceedings and are thus not reflected in the impugned decision, with such discussions having to take place either before the board or before the OD by way of a remittal of the case.
This immediate procedural consequence is confirmed not least by the proprietor itself with his request for the case to be remitted to the OD, which the proprietor made alongside the reordering of the requests in the event that such reordering be permissible.
Art 12(6) RPBA, expresses and codifies the principle that each party should submit all facts, evidence, arguments and requests that appear relevant as early as possible so as to ensure fair, speedy and efficient proceedings.
In particular, a party to the appeal proceedings is not at liberty to bring about the shifting of their case to the appeal proceedings as they please, and so compel the board either to give a first ruling on the critical issues or to remit the case to the OD.
In effect, it would enable a kind of “forum shopping” which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be unacceptable for procedural economy.
The proprietor’s conduct also runs counter to the parties’ procedural obligation to conduct appeal proceedings diligently and expeditiously, which ensures fairness to the other parties, and to bring the proceedings to an end within a reasonable time.
This obligation also includes the duty to determine the order of AR clearly and consistently, in general by means of a convergent step-by-step introduction of ever more restricted features, as a prerequisite for those requests being dealt with in a procedurally efficient and fair way.
Effectively withholding requests from being dealt with at an earlier stage of the proceedings and “reserving” them for a later stage of the appeal proceedings runs counter not only to these principles but also to the primary object of the appeal proceedings to review the decision under appeal, cf. Article 12(2) RPBA, and, ultimately, to the very object and purpose of the communication pursuant to Art 15(1) RPBA
Comments
The proprietor must have had reasons not be satisfied with AR11, but reordering of requests during OP before a board and inserting lower ranking requests in front of an allowable request was opening the door to a catastrophe.
When on top those requests are not even convergent, there was no hope that a board could accept such a reordering.
I have rarely seen such a telling off of a representative. The exasperation of the board is clearly perceptible. What might be possible in some national proceedings might not be acceptable at the EPO.
I have been confronted with the same type of rant, ignoring, during OP in opposition, the property rights of the proprietor. The AR were not admitted in spite of hand waving and big sighs.
I give little chance to a petition for review. This is the more so since discretionary decisions of boards are not open to petitions for review, cf. R 6/20, commented in the present blog.
T 1436/19 was commented in the present blog.
T 622/23 was also commented in the present blog.
T 691/24, commented in the present blog deals with the notion of convergence of AR in opposition.
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