EP 3 056 545 B1 relates to a transparent plastic substrate, a plastic lens, and a transparent plastic member, and particularly relates to a transparent plastic substrate and a plastic lens that have a high cut rate of blue light.
Brief outline of the case
The opposition was rejected and the opponent appealed.
During the opposition procedure, the proprietor first filed AR1-23 and then AR 24-35.
As the opposition was rejected, the OD did not decide upon any of the AR.
The board revoked the patent as
- some of the request were lacking IS over D3/D3t=JP 2001 164110 A. This document was neither mentioned in the ISR set out by the JPTO nor in the SESR.
- some requests were not admitted for lack of substantiation under Art 12(3+5) RPBA
The case is interesting in view of the grounds raised by the board for the non-admissibility of some of the requests.
The opponent’s point of view
With a letter filed before and at the OP before the board the opponent requested that AR 24-35 and 24A-35A be not admitted into the proceedings due to a lack of substantiation, as required by Art 12(3) RPBA.
The proprietor’s point of view
The proprietor argued that the opponent did not present any arguments in the SGA regarding the AR. Therefore, the proprietor was not required to provide substantiated counterarguments. The proprietor also argued that, due to the large number of objections, it was not necessary to respond to each one.
The board’s decision
The board noted that, in the present case, it must be kept in mind that the opposition was rejected, i.e. the patent was maintained in its original form and the decision did not address the AR filed during the opposition proceedings.
Therefore, in such a situation an appellant-opponent only needs to explain in the SGA why the OD’s decision should be overturned but there is no requirement to address AR filed by the patent proprietor during the opposition proceedings.
This is especially true because it is unclear at this stage which requests the patent proprietor might pursue in the appeal proceedings. Accordingly, Art 12(3) RPBA provides, inter alia, that the SGA and the reply “shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended, or upheld.”
Regarding the proprietor’s argument that it was not obliged to address all objections in a substantiated manner due to the large number of objections, the board noted that in the statement of grounds, objections regarding both N and IS were raised against claim 1 as granted, based on D3.
In this context, and given that the proprietor made reference to it during the OP before the board, it must be taken into account that AR24 was filed in response to the OD’s preparatory communication in order to address the preliminary opinion of lack of N in relation to D3.
Since the proprietor had filed AR 24 to address the OD’s preliminary view that the subject matter of claim 1 lacked N relative to D3, it was reasonable to expect a substantiated explanation of how this request could address the opponent’s objection of lack of IS based on D3. This was however not the case.
The proprietor did not submit any further arguments as regards the admittance of AR 25-35. In the rejoinder the proprietor addressed AR 24-35 and N over D1-D3, but this was done superficially in view of the amendments made in claims 1 of these requests.
There is however nowhere in the rejoinder a reasoning as to how the amendments made in claim 1 of AR 24-35 address the arguments of lack of IS over D3 laid out by the opponent in its SGA.
In view of this the requirement under Art 12(3) RPBA that the rejoinder shall contain the proprietor’s complete appeal case is not met. This is all the more relevant to the present case as the proprietor declared at the OP before the board that it had a different line of defence specific to the amendments made in AR 24-35 that had never been laid out throughout the written phase of the appeal proceedings.
In the absence of any substantiation as to why AR 24-35 would justify the presence of an IS over D3 as the CPA, the board decided not to admit these requests into the proceedings pursuant to Art 12(3+5) RPBA.
AR 24A-35A correspond to AR 24-35 in which a specific wording about the episulfide was changed. These requests were only addressed in the rejoinder in a cursory manner.
The question of IS over D3 as CPA is therefore not addressed in any more details than for the corresponding AR 24-35. The same conclusion on admittance reached for AR 24-35 therefore applies to AR 24A-35A, which were thus not admitted into the proceedings.
Comments
The decision is highly commendable in that it makes clear that when an opposition has been rejected, the opponent has primarily to argue why the OD’s decision on the patent as granted has to be set aside. As the opponent does not know which AR will be kept by the proprietor, the opponent cannot, when entering appeal, be requested to take position on all AR filed by the proprietor during opposition.
In T 0664/20, Catchword 1, commented in the present blog, the board held that the SGA submitted by an appellant-opponent must set out all arguments covering all requests pending before the OD, including those that were not considered in the contested decision. The board added that, failure to do so exposes the opponent to the risk that arguments submitted subsequent to the statement of grounds—and directed at AR pending before the OD and filed by the proprietor in response to the statement of grounds—may be disregarded from the proceedings.
T 0664/20 is highly open to criticism as not all AR pending before the OD and not dealt with by the latter are in principle admissible before a board. According to Art 12(4) RPBA only AR admissibly raised and maintained before the OD can, in principle, be considered by a board.
That a board can set aside the positive decision for the proprietor, to either reject the opposition, or to maintain the patent according to a higher ranking AR. That the requests have to be substantiated when maintained in appeal, goes without saying. When they are not properly substantiated, like in the present case, they will not be admitted in appeal under Art 12(3+5).
It was therefore quite daring when the proprietor merely alleged that, since the opponent had not taken position on the AR, it could dispense itself to say anything about the AR.
It was even more daring to then to declare during the OP, that the proprietor had even a different argumentation, without saying anything about it. This argumentation could have been dismissed at once under Art 13(2) RPBA when brought forward during the OP.
However, the present decision shows, once more, that in procedural matters, the case law of the boards is not unified.
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