EP 2 723 625 B1 relates to a sensor system in a steering wheel of a vehicle.
Brief outline of the case
The subject-matter of claim 1 as granted was not sufficiently disclosed, and the patent was maintained in amended form.
The proprietor appealed the decision.
The board held that claim 1 as granted lacked N over A1=DE 203 09 877 U1, which was included in the ISR established by the Korean PO, nor in the SESR.
Contrary to the findings of the OD, the subject-matter of claim 1 of AR1 was novel and inventive.
Eventually the patent was maintained according to AR1.
The case is interesting as the case is dealing with the adaptation of the description.
The opponent’s late filed objection on to the adaptation of the description was not admitted under Art 13(2) RPBA.
The board refused to stay the proceedings in view of the pending referral G 1/25 as requested by the opponent, and dismissed an objection under R 106 about this refusal.
The opponent’s point of view on the adaptation of the description
Following the board’s indication that it was minded to maintain the patent on the basis of AR1, the opponent pointed out that the description required substantial adaptation.
In this respect, the opponent argued that claim 1 of AR1 was limited to impedance sensors, whereas the description still contained numerous references to the use of other sensor types, for example capacitive sensors, thereby giving rise to major inconsistencies between the claims and the description.
As regards the counter-argument of the proprietor that AR1 also comprised several system claims reciting sensors other than impedance sensors, the opponent argued that a claim directed to a system comprised both apparatus and method aspects, whereby the alleged inconsistency remained.
The opponent submitted that, until the OP, it had not been clear whether the patent could be maintained and, if so, on the basis of which request. The postponement of the discussion on the adaptation of the description until the OP was thus justified.
The opponent further argued that the pending referral G 1/25 gave rise to legal uncertainty regarding the requirements for adapting the description and thus also justified raising the objection only at that stage of the OP before the board.
In view of the alleged complexity of the amendments required, the opponent requested that the appeal proceedings be stayed pending the outcome of referral G 1/25, which was expected to provide guidance on whether, and to what extent, the description must be adapted to the claims.
The proprietor’s point of view on the adaptation of the description
The proprietor disagreed that the amended description submitted with their statement of grounds of appeal was inconsistent with the claims of the AR1. AR1 contained several independent claims directed to different aspects of the invention, including system claims not limited to the use of impedance sensors.
This justified a broader description. The proprietor further submitted that the objections concerning the alleged lack of conformity of the description were late filed, since an amended description adapted to the claims of AR1 had already been filed together with their statement of grounds of appeal and no objections thereto had been raised so far. The proprietor requested that the objections against the description not be admitted into the appeal proceedings.
The board’s decision
The board observed that the objections raised by the opponent against the description equally apply to the description of the patent in the version maintained by the OD.
This was acknowledged by the opponent at the OP. Indeed claim 1 of the request allowed by the OD refers to the impedance of first, second and third sensors, but the description has not been amended such as to be restricted to impedance sensors.
Accordingly, the opponent could and should have raised these objections at an earlier stage of the proceedings. Moreover, an amended description adapted to the claims of AR1 had already been filed with the statement of grounds of appeal.
Under these circumstances, the opponent’s objections regarding the adaptation of the description submitted at a final stage of the oral proceedings constitute an amendment of their case within the meaning of Art 13(2) RPBA and its admittance was thus subject to the board’s discretion.
The pending referral G 1/25 could not be seen as an exceptional circumstance within the meaning of Art 13(2) RPBA. The outcome of the pending referral G 1/25 has in fact no bearing on the factual circumstances underlying the objections. It may affect the legal framework governing the adaptation of the description, but it does not alter the facts on which the alleged inconsistencies between the claims and the description are based, thereby preventing the opponent to raise these objections at an early stage of the proceedings.
For these reasons, the board did not admit the opponent’s objections concerning the adaptation of the description under Art 13(2) RPBA.
As these objections are thus not part of these appeal proceedings, there is no reason to stay the appeal proceedings in view of pending case G 1/25.
The case was remitted to the OD with the order to maintain the patent in amended form with the claims 1 to 17 according to AR1, description and figures filed with the statement of grounds of appeal.
Comments
In T 1043/24, commented in the present blog, the parties did not require a stay in view of referral G 1/25, but the board held that staying the procedure in view of a pending referral to the EBA is a discretionary decision of the board. Only the referring bord should stay the procedure should it come across a similar case as that of the referral.
The board added that, whether the opponent had no objection to the adapted description appeared as well irrelevant. The maintained patent is not just there for the opponent’s sake, but for all third parties.
in T 2178/17, Reasons 6.3.3, the filing of the amended description does not generally constitute an amendment to the patent proprietor’s appeal case under Art 12(4) or 13(2) RPBA.
In T 2818/19, Reasons 7, it was also held that Art 13(2) RPBA does not apply to the amended description filed during OP.
If filing an adapted description during OP is not objectionable under Art 13(2) RPBA, it means conversely that filing an objection relating to the adaptation of the description should as well not be objected under Art 13(2) RPBA. The opponent does not have a crystal ball allowing it to foresee which AR will eventually be deemed allowable.
By ignoring the above decisions, the board showed clearly that it was not willing to enter a discussion on the adaptation of the description and wanted to dispose of the case as quickly as possible.
Referral G 1/25 was indeed not a reason to stay the procedure. However, adaptation of the description was apparently necessary. In this respect, the present board’s decision is highly open to criticism. Coming from board 3.2.01, the decision is not surprising at all.
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