EP 3 354 701 B1 relates to a method for preparing a cationic electrodeposition coating composition having excellent edge portion rust prevention property.
Brief outline of the case
The patent was maintained by the OD according to AR1.
AR1 differs from the granted patent in the deletion of claim 1.
Both proprietor and opponent appealed.
The board held that the patent as granted=MR, lacked IS over D5.
The board also held that AR1 lacked IS over D3.
AR2-8 were submitted by the proprietor one day in advance of OP before the board.
The amendments to AR2-8 compared to the MR therefore either involve:
– the deletion of one or more of granted claims 1 and 2, and/or
– in independent granted claim 3, a limitation to the ratio of the metal compound (C) to the organic acid (F), and to the types of organic acid used in the method to those of granted claims 6 and 7.
Eventually, the patent was revoked.
What is of interest in the present case is the admissibility of AR2-8 in which claims were deleted.
The proprietor’s point of view
The proprietor noted that the communication of the board pursuant to Art 15(1) RPBA had not mentioned AR2-8 filed before the OD. In the proprietor’s view, these requests were however to be considered as part of the appeal proceedings from the outset within the meaning of Art 12 RPBA.
In support of its position that AR2-8 were part of the appeal proceedings from the outset, the patent proprietor referred to section IV of its notice of appeal, according to which the patent is to be maintained on the basis of the MR or an AR filed in these proceedings, taking account of any other requests that may be submitted in these proceedings.
The proprietor also argued that AR2-8 were part of the appeal proceedings, since in the opponent’s grounds of appeal, said requests were addressed.
The proprietor further argued that having been filed during opposition proceedings, AR2-8 were “carry-over” requests. Therefore, to determine whether such requests represented an amendment to its appeal case in the sense of Art 13(2) RPBA, the criteria set out in Art 12(4) RPBA were to be applied.
For the proprietor, it needed to be determined whether AR2-8 were “admissibly raised and maintained in the proceedings leading to the decision under appeal”.
Since for the proprietor this requirement was met, AR2-8 did not represent amendments to the patent proprietor’s case, and there was no discretion not to admit them into the proceedings under Art 13(2) RPBA. The proprietor cited T 246/22 in support of the argument that the criteria under Art 12(4) RPBA would apply to the admittance of AR2-8.
The board’s decision
For the board, there was nothing in the proprietor’s original submissions in appeal indicating that as an alternative to its MR or AR1, it requested maintenance of the patent on the basis of AR2-8.
As stated by the opponent, its submissions related to AR2-8 were filed merely “as a precautionary measure“, i.e. in anticipation of the possibility that the proprietor might request maintenance on the basis of these requests.
However, the proprietor did not request maintenance of the patent on the basis of AR2-8, neither with its statement of grounds of appeal nor with its reply to the opponent’s appeal. Indeed, given the fact that AR2-8 were addressed in the opponent’s grounds of appeal, the lack of any reference to those requests in the proprietor’s reply to the opponent’s grounds of appeal served to confirm that auxiliary AR2-8 did not form part of its requests in appeal.
In summary, AR2-8 were not part of the appeal proceedings from the outset.
The admissibility of AR2-8 was thus to be examined under Art 13(2) RPBA.
The board made clear that the reference point for determining an “amendment” under Art 13(2) RPBA is not the same as under Art 12(4) RPBA. Art 12(4) RPBA defines an “amendment” by way of reference to Art 12(2) RPBA, as any matter departing from the framework of the decision under appeal, and the party’s complete appeal case as determined by Art 12(1-6) RPBA is the reference point in Art 13(1+2) RPBA.
For the board, the “admissibly raised” criterion of Art 12(4) RPBA is therefore not relevant to the question whether a claim request represents an amendment to a party’s appeal case under Art 13(2) RPBA.
The board acknowledged that discretion not to admit a request exists under Art 13(2) RPBA only if this request constitutes an amendment in the sense of Art 13(2) RPBA.
The board then went on the status of requests in which claims are deleted.
The board noted the existence of two lines of case law, one according to which a deletion of (an alternative in) an independent claim is always an amendment in the sense of Art 13(2) RPBA and one according to which the deletion of (an alternative in) an independent claim represents an amendment in the sense of Art 13(2) RPBA only if this deletion alters the factual and legal framework of the proceedings.
The board did not agree with the latter approach for the reasons set out in T 2091/18, Reasons 4, agreeing with the conclusions set out in T 1569/17, Reasons, 4.3.1. In summary, Art 12(3) RPBA provides that the statement of grounds of appeal and the reply must contain the complete appeal submissions of a party. According to Art 12(2) RPBA, the grounds of appeal or reply must be directed inter alia to the requests on which the contested decision is based. As the Legal Board of Appeal explained in J 14/19, Reasons, point 1.4 and 1.5, it follows by implication that submissions by the parties that are not directed to the requests contained in the statement of grounds of appeal or reply have the effect of amending the appeal submission.
Hence, any new and amended request is to be considered as an amendment to the party’s appeal case.
In the view of the board, the filing of a new request always has a substantive purpose related to the potential outcome of the proprietor’s appeal case, since otherwise there would be no need for the proprietor to file it and request its admittance into the proceedings.
Irrespective of which of the two lines of case law is considered, the result is the same, namely that a request in which an (alternative in an) independent claim has been deleted represents an amendment in the sense of Art 13(2) RPBA.
The board was further of the opinion that there were no exceptional circumstances justifying the admittance of AR2-8 into the proceedings.
The board therefore decided not to admit AR2-8 into the proceedings pursuant to Art13(2) RPBA.
Comments
The proprietor manifestly forgot to mention AR2-8 in its reply to the opponent’s appeal, i.e. to make clear that AR2-8 were maintained in appeal and were carry-over requests and that the provision of Art 12(4) RPBA applied.
AR2-8 were indeed carry over requests, since AR1-8 were filed in reply to the opposition and were duly substantiated. They can thus be considered admissibly raised, which is exemplified by the fact that the admissibility of AR1 was never a topic before the OD. AR2-8 were alas not maintained.
The board is however right when it considers that in the present situation Art 13(2) RPBA applies.
As Art 13(2) was applicable, since AR2-8 were manifestly late filed, there was no reason to deal with the topic of deletion of claims. They could have been considered not admissible simple due to their late filing.
Contrary to what is said in the present decision, there exists more than two lines of case law when claims are deleted in AR.
A first line of case law considers that the deletion of method claims, product claims, dependent claims or alternatives in a request is not to be regarded as an “amendment to the party’s appeal case”, if the deletion does not change the legal and factual framework of the appeal. See T 1480/16, T 2243/18, T 1792/19, T 1151/18, T 1857/19, T 2201/19.
A second line of case law considers that the deletion of such claims or alternatives have indeed to be regarded as an “amendment to the party’s appeal case“, see T 1597/16, T 1439/16, T 1224/15, T 908/18, T 682/16, T 168/16, and T 1569/17 or T 2091/18, both mentioned in the present decision.
A third line of case law started with T 2295/19. In which the board was of the opinion that although deleting claims represents an amendment of a party’s case, but nevertheless accepted that such an amendment is not prejudicial to the process economy. In T 2225/19, the Board took the bother to go through a lot of case law on this topic and even consulted the „travaux preparatoires” to Art 114(2). This decision was followed e.g. in T 1800/21, T 685/21, T 1172/21, T 424/21 or T 967/22.
In a fourth line of case law, boards held that due to the mere fact that such requests were considered as an amendment to a party‘s case they were not admitted even if they could be considered as not detrimental to procedural economy. See T 1259/17, T 482/19 or T 317/20.
Those four different lines of case law dealing with requests in which claims are deleted, show that as far as procedural matters are concerned, the boards are far from having convergent views. It is still a lottery for parties in appeal.
The most reasonable line of case law appear to be the third one.
It is interesting to note that the LM in the present case, is the same as in T 56/21.
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