EP 3 472 513 B1 relates to a bottom-supported boiler.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held claim 1 as granted lacking IS over D1 + D9, D1+ D12 or D1+D14. None of those documents were mentioned in the ISR established by the EPO.
In the absence of arguments of the parties about the AR, the board decided remittal to the OD for further prosecution.
The board’s decision
AR 1-6 were filed by the proprietor with the reply to the opponent’s statement setting out the grounds of appeal.
In its reply, the proprietor pointed out the alleged basis for the amended features and a brief justification for the amendments in AR 1.
The opponent did not make any submissions in writing in reply to the filing of the AR before issuance of the preliminary opinion of the board.
The board noted in its communication under Art 15(1) RPBA that no arguments had been put forward with respect to the allowability of AR1-6 other than the proprietor’s explanations as to the origin of the amendments, and drew the parties’ attention to the fact that in such a situation remittal of the case to the OD might be required.
The proprietor filed a letter in reply to this communication in which – in connection with the AR – it repeated verbatim the same arguments which had already been put forward in the reply to the appeal.
The opponent did not make any submission in writing in reply to the board communication or to the latest submissions by the respondent.
During the OP before the board, the opponent requested for the first time that AR1-6 should not be admitted according to Art 12(3), (4) and (5) RPBA and identified three reasons for this.
The opponent acknowledged that these submissions were an amendment of its appeal case within the meaning of Art 13(2) RPBA and justified them on the ground of late assignment of the case to the authorised representative participating in the OP. The opponent also pointed out that it had several substantive objections to the AR but also acknowledged that they had not been brought forward in writing.
The board considered that the case should be remitted to the OD in view of the situation created by the behaviour of both parties.
Firstly, the proprietor submitted AR1-6 accompanied by rather limited arguments, and merely repeated these same submissions in its reply to the bord’s communication..
Secondly, the opponent never responded in writing to the filing of the AR, neither as to their allowability nor as to their admissibility. The opponent did not even respond to the board’s communication in which it pointed out the lack of arguments from either party in relation to the AR.
This means that almost any argument or fact put forward by the parties during the OP in relation to the admissibility or allowability AR1-6 – either in their favour or against them – would have been an amendment to the appeal case which the board would have to consider under Art 13(2) RPBA.
This situation, in which there was an almost complete lack of written arguments from both parties, does not allow for proper handling of the case.
It would oblige the board to take a decision on the AR, as to their admittance and/or their allowability, during the OP on the basis of an ad hoc examination of new facts and arguments.
All of these new submissions would constitute an amendment of each party’s appeal case under Art 13(2) RPBA, the admittance of which would need to be discussed as well.
The board also specifically addressed the issue of remittal in the light of the opponent’s arguments relating to admittance, brought forward during the OP.
The board considered that, in order to be able to exercise its discretion under Art 12(4) or (5) RPBA, it would in the present case necessarily be faced with new facts and arguments submitted at the latest possible moment in the proceedings.
Such new submissions would have to address the fact that these AR constitute “carry-over requests” which had been filed in due time before the OD, namely on the final date fixed by the opposition division pursuant to R 116(1).
They would also have to address the question of whether they constitute an “amendment” within the meaning of Art 12(4) RPBA, and thus whether the admittance of this amendment is at all within the board’s discretion under Art 12(4) RPBA.
As to admittance under Art 12(5) RPBA, the new submissions would have to address the requirements of Art 12(3) RPBA. In the event that these requirements were indeed not met, the new submissions would have further to address whether the board might exercise its discretion by nevertheless admitting the auxiliary requests because, for example, they were “carry-over requests” and/or considered self-explanatory.
All these new submissions, for or against, admittance of the AR would constitute an amendment to the parties’ appeal case, the admittance of which would have to be considered by the board under Art 13(2) RPBA.
The board could not see any valid justification for the parties’ submissions on admittance being made only at the OP. In particular, the fact that the opponent’s representative was entrusted with the case only late in the course of the proceedings does not constitute a valid justification for submissions made only at oral proceedings.
The board thus considered that “special reasons” within the meaning of Article 11 RPBA, and is exercising its discretion under Art 111(1) to the effect that it is remitting the case to the OD.
Comments
The present situation is rather unusual as remittal is decided for lack of arguments of the parties for the AR, after the board has found that the patent could not be maintained as granted for lack of IS in view of three successful attacks.
AR1-6 were filed by the proprietor in preparation of the OP before the OD.
Before the OD, only the source of amendment was indicated, but no substantiation was given. Not more was done in order to support the AR in appeal. Although maintained in appeal, AR1-6 can thus not be considered as having been admissibly raised. Carry-over AR can only be considered admissibly raised when they have been properly substantiated before the OD.
Other boards would simply have considered the AR1-6 not admissible for lack of substantiation under Art 12(3+5) and would have revoked the patent.
As the opponent did not know which AR would be pursued by the proprietor, he could not take position before the reply to its appeal, but would have had difficulties in arguing against AR1-6 in absence of arguments on their allowability from the proprietor as he did not have any idea which objections raised in opposition were to be overcome by AR1-6.
When one sees how other board do not admit requests comprising deleted claims, the proprietor can feel himself happy that the case was remitted to the OD.
A change of representative, cf. the opponent, is as such not a reason for belated submissions.
Once again procedural decisions of the boards on admissibility of requests and submissions are hap hazard.
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