The present blog entry is rather long, but it was necessary to go into detail in view of the matter at stake.
EP 3 705 106 B1 relates to an insertable stimulation device.
Brief outline of the case
The patent was revoked for lack of N of some requests. Other requests, AR1 and AR2, in which device claims were transformed in use claims were not admitted in the procedure by the OD in view of potential problems under Art 53(c).
In appeal, AR1op and AR2op became respectively the MRap and AR1ap. The non-admissibility of AR1op and AR2op was confirmed under Art 12(6) RPBA. A further series of new requests has also not been admitted under Art 12(6) RPBA.
Eventually the board decided that AR3op=AR3ap was novel and remitted the case to the OD for further prosecution. Opponent’s objections under Art 84 and 83 against AR3 were not admitted in the procedure.
The case is interesting as it deals with the admissibility of AR in opposition.
The proprietor’s position on the admissibility of the MR and AR1 in appeal
AR 1 and 2 in opposition were not late filed because they were filed as a direct response to a change in the facts underlying the proceedings: it was only during the OP that the OD departed for the first time from its preliminary opinion, and found that claim 1 as granted was not novel in over D2 and D3.
This was to be regarded as a change in the facts underlying the proceedings. Therefore, in accordance with the Guidelines E-VI, 2.2.2, it was not within the discretion of the OD to disregard the amendments on the grounds of late filing and an alleged lack of prima facie patentability.
To support itspoint of view, the proprietor quoted T 688/16.In this decision it was held that when the OD had changed the view expressed in the annex of the summons, the OD had no discretion and had to admit new requests/arguments.
The proprietor also noted that there are conflicting decisions by the boards and referred to T 1776/18. In Catchword 2, the board held that the discretionary power of an OD to admit requests filed after the time limit set under R 79(1) does not depend on the contents of the OD’s communication under R 116(1).
According to T 1776/18, it is only if the OD expressly invites the proprietor to file an amended request to address a specific objection and the proprietor complies with this invitation by filing the required amendments by the date set under R 116(1), that the OD’s discretion not to admit that claim request may effectively be reduced to zero.
For the proprietor, T 1776/18 focuses exclusively on the time at which the submission was made, whereas T 688/16 also takes into account ‘subjective elements’, such as a change in the subject-matter of the proceedings or a change in the preliminary opinion of the OD. This could, at most, be the subject of a referral to the EBA.
According to T 1855/13, Reasons 1.8.2 to 1.8.4, the fact that a request was late filed does not automatically mean that it should not be admitted.
The opponent’s position on the admissibility of the MR and AR1 in appeal
If amendments were filed after the time limit set under R 79(1), their admission into the proceedings is at the discretion of the OD.
A change in the OD’s view during the OP with regard to its preliminary opinion cannot, in itself, lead to a situation where any requests submitted during the OP must be admitted without the Opposition Division exercising its discretion.
The board’s decision
A prerequisite for the exercise of discretion under Art 114(2) is that the submission in question is “late”. For the board, it depends solely on the point in time at which it was raised.
The board was of the opinion that the caselaw of the boards regarding the discretion on the part of the OD in admitting new submissions in opposition proceedings is either determined by fixed time limits, e.g. Art 99(1) and R 79(1) or, alternatively, taking into account relative or ”subjective” criteria.
Discretion linked to specific points in time
The board held that, in opposition proceedings, requests submitted by a proprietor after the expiry of the time limit pursuant to R 79(1), are generally to be regarded as being late within the meaning of Art 114(2).
The board referred to T 1324/23, Reasons 4.6.2, T 0823/23, Reasons 7.18, T 2662/22, Reasons 8.1, and T 2172/21, Reasons 2, as well as T 1639/23, Reasons 1.5.
In T 966/17, Reasons 2.2.1, and T 1529/20, Reasons 2.10.2, with reference to Art 123(1) or R 81(3), the expiry of the time limit under R 79(1) was also taken as the basis for deciding upon the admissibility of requests, which also appears to have been the case in T 1219/19, Reasons 39.
All these decisions have in common is that, when determining whether the OD has discretion, and this is the case irrespective of whether, Art 114(2) or Art 123(1) is cited in the respective decision as the primary legal basis for the possible non-admission of new requests.
The lines of case-law which are based either on Art 114(2) or Art 123(1) which both refer to R 79(1) in relation to late submissions by the proprietor, do represent, in the board’s view, a majority opinion in the recent case-law of the boards. In T 1731/23, Reasons 12, reference is made neither to Art 114(2) nor to Art 123(1), but exclusively to R 79(1), and this is referred to as “established case law”.
Discretion linked to so-called “relative criteria”
If the exercise of discretion in granting leave to file new requests is made dependent not on fixed points in time but on relative criteria, this runs counter to the rule of law’s requirement of predictability and legal certainty. The board referred again here to T 1776/18, Reasons 4.6.7 and Reasons 4.6.2 of the grounds: “moving target”.
It does not appear reasonable to expect either the parties to the opposition proceedings or the OD to base the question of whether, when admitting new submissions, a binding decision must be taken or whether there is a margin of discretion, on specific, constantly changing individual circumstances which are ultimately only determined retrospectively by a board of appeal for the respective individual case when reviewing a decision on admissibility that has already been taken.
Rather, it should be clear directly from the applicable legal provisions themselves whether a binding decision must be taken or whether there is a margin of discretion. This is the case where, in determining whether a submission within the meaning of Art 114(2) is late in opposition proceedings, reference is made exclusively to the time limits specified in Art 99(1) and R 79(1).
In appeal proceedings, too, relative considerations are not decisive for the question of whether a submission is late and whether there is a margin of discretion, but merely for the question of how that discretion should be exercised in the individual case, cf. T 1776/18, Reasons 4.6.3.
Similarly, a change in the OD’s view during the OP with regard to its provisional opinion communicated in the annex to the summons, cannot on its own, lead to the OD being permitted to allow any requests during the OP without any discretion on the part of the OD. This would, however, be a consequence of the view held by the proprietor, see T 1776/18, Reasons 4.7.7.
The board noted that in R 6/19,Reasons 9, the existence of the OD’s discretion is not based on the expiry of the time limit under R 79 (1), but on the fact that the applicant’s right under Art 123(1) to amend the application once does not apply to the proprietor in opposition proceedings, which is why the OD has discretion in opposition proceedings not to allow sets of claims filed, apparently from the outset.
In summary, the board concluded that, in the overwhelming majority of recent case-law of the boards of appeal, a change in the OD’s provisional opinion is not, in itself, regarded as a ground on the basis of which the OD should not be accorded discretion when admitting newly filed sets of claims.
No referral to the EBA
In this set of circumstances, which is relevant to the case in question, the caselaw of the boards therefore appears to be developing in a consistent manner, so that no question of fundamental legal importance arises.
The board therefore considered that, at the time, it was not necessary to refer this question ex officio to the EBA pursuant to Art 112(1)(a).
Comments
The present AR1+2 were manifestly not admissible
That the transformation of device claims into use claims could bring about potential problems under Art 53(c) and can therefore be detrimental to procedural economy is manifest. The OD and the board were thus right not to admit AR1+2.
Discretion of an OD to admit new requests
According to T 32/10, Reasons 2, documents, mentioned in the notice of opposition without indicating their relevance, are not admissibly filed. Bringing reasons about their relevanceduring OP boils down to late filed arguments which are also not admissible.
As proprietor and opponent have to be treated alike, merely filing requests within the time limit under R 79(1) without indicating in how they overcome the grounds of opposition renders those requests not admissible either.
Thus even requests filed within the time limit under R 79(1) might not be admissible. Deciding whether a request filed within the time limit under R 79(1) is in accordance with R 80 is not a question of admissibility but of substance. If the request is not admissible for lack of substantiation, abiding by the requirements of R 80 is then irrelevant.
That any request filed after the lapse of the time limit under R 79(1) but before the date set under R 116(1) is only admitted at the discretion of the OD is not at stake, see below.
This applies even more for requests filed after the date set under R 116(1).
This does however not mean that requests filed after the time limit under R 79(1) cannot be admitted merely because they are allegedly late-filed.
If the OD changes its opinion with respect to its provisional opinion, the OD might have the discretion not to admit the request, but it has at least to accept the filing of such a request. Otherwise it commits a SPV. If does not admit the request, the corresponding decision have to give the reasons for the non-admittance. In the contrary the division also commits a SPV.
Therefore, only relying on fixed points in time in order to decide on the admissibility of requests is not reasonable and has to be objected to.
Only relying on fixed points in time = a change of paradigm
In its decision, the board embarked on a long and tedious discussion on the admissibility of AR in opposition.
The aim of the discussion is manifestly to curtail the possibility for the proprietor to file AR once the time limit set in the communication under R 79(1) has lapsed.
In the present case, it was the same LQM as in T 1776/18, T 1324/23, T 0823/23, T 2172/21, as well as in T 1639/23. It is thus too easy for the board to claim that a restrictive line of caselaw has developed in recent years is “established case law”. .
What is required in T 1776/18 and alike decisions boils down to apply by analogy in first instance Art 13(2) RPBA.
It is also the same LQM which is behind T 1042/18, which denied the opponent to continue with an attack on IS when during OP, the board considers during OP that novelty is given, and hence T 131/01 was not any longer applicable.
The apparent aim of this LQM, and of his colleagues going along the same line, is manifestly to see the RPBA being applied by analogy before ODs.
By interpreting procedural rules very restrictively also in first instance, this LQM wants manifestly limit the possibilities of parties to file amendments already in first instance, so that the boards have even less work when it comes to appeal. Art 12(6) RPBA is a perfect tool to squeeze out requests.
Consequences of requiring the proprietor to file his AR within the time limit under R 79(1)
Requiring that all requests have to be filed by the proprietor before the end of the time limit under R 79(1), boils thus down to a change of paradigm. It was accepted up to now that requests filed by the proprietor before the date set under R 116(1) were not considered prima facie late filed.
That they were not automatically admitted in the procedure was however a matter of fact, but the end of the time limit under R 79(1) was not regarded as a deadline for the submission of new requests which could then be dismissed simply as being too late.
In view of the strict application of the RPBA, a proprietor has to be pro-active in first instance. The direct consequence is that the proprietor is obliged to file AR in first instance. The number of AR filed in opposition has constantly risen in recent times. If the opinion defended by the present board effectively becomes “established caselaw”, there will be even more AR filed within the time limit under R 79(1).
Considering that the proprietor has to file all possible AR within the time limit under R 79(1) curtails severely the possibility for the proprietor to defend his patent. Depending on the objections raised by the opponent, he might even be obliged to file divergent requests.
Should all those requests have to be filed within the time limit under R 79(1) in order to avoid the risk of any further AR not being admitted for merely being too late, it will even more increase the workload of ODs. In case of multiple opponents, with different grounds of opposition, the situation is even worse for the proprietor. The valid RPBA are a very efficient tool for the boards to reduce their workload, but this has been acquired at the expense of the workload of DG1.
That a proprietor awaits the annex to the summons for OP before the OD is thus quite normal, as often the opponents come up with grounds of opposition without any substance. It is actually when the proprietor sees the provisional opinion of the OD that he can seriously envisage how to defend his patent.
The interpretation of R 81(3) given in T 966/17, T 1529/20 and T 1219/19, is also subject to caution. R 81(3) expressly provides that the proprietor should, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings. Concluding that the proprietor only has one chance to amend his patent within the time limit under R 79(1), is thus not correct.
R 81(3) refers to “any communication under Art 101(1)”. This means that the proprietor should at least be given one opportunity to react on the position expressed by the OD. The OD’s position can only be known by the proprietor once it has been communicated to him.
Claiming in the same breath that the proprietor can only react if the proprietor is invited to amend is a very academic point of view far from any reality. In opposition the OD has to be neutral and should not invite the proprietor to amend. The OD can only set out reasons which impair maintenance of the patent. Any conclusion is in the hands of the proprietor.
The annex to the summons issued by an OD can be considered the same way as the opinion attached to the search report. The applicant is obliged to take position. The same should apply to a proprietor. I thus disagree with R 6/19, and the conclusion reached in the latter is also, to say the least, hasty. If a proprietor does not react to the annex to the summons, he can later only blame himself.
When the OD changes its opinion during OP, the proprietor has to be allowed to file further requests. That they are not automatically admitted in the procedure is not at stake. However they cannot be dismissed merely for being too late, i.e. filed after the time limit under R 79(1).
Any other approach is very pedantic to say the least, and far from any reality.
Saving work for the boards
It is manifest, the least requests admitted in first instance, it ends up with less work for the boards as they can bluntly apply Art 12(4+6) RPBA.
In view of the present decision, ODs are actually invited not admit any requests filed after the time limit under R 79(1) as being too late. This is also contrary to the Guidelines as shown by the proprietor. The Guidelines are not binding for the boards, but they insure a certain level of legitimate expectations which cannot be ignored by the boards.
That patents without any raison d’être have to be revoked is not at stake. What is at stake is the possibility for the proprietor to correctly defend his patent. Patents can be revoked for not respecting time limits and set dates, but those time limits should not become a trap for the proprietor in opposition.
The importance of the date set under R 116(1)
In principle, requests filed before the date set under R 116(1) should be considered timely filed and their admissibility should not be at stake provided that they are duly substantiated.
Substantiated means that those requests
- are compliant with R 80
- are clear, Art 84, taking into account G 3/14
- do not comprise added subject-matter, Art 123(2)
- do not extent the protection conferred as granted, Art 123(3)
- are patentable, and especially are novel and inventive over the prior art validly filed by the opponent.
See for instance T 0926/17, Reasons 3.
Requests filed after the date set under R 116(1) are late filed and further to the conditions exposed above here
- it must be convincingly shown why they could not have been submitted earlier
- do not comprise features from the description or the drawings
- are converging with the previously filed requests, see T 3097/19, Catchword 2
- have to overcome the objections raised up to then in the procedure
For instance, when the OD admits late filed pieces of prior art, or changes its opinion during OP, it should give the opportunity for a proprietor to file new requests. Whether those are allowable is a different matter, but they cannot be held merely late filed and dismissed for this reason alone.
Therefore, considering that any request filed by a proprietor after expiry of the time limit under R 79(1) is late and should not be admitted for this reason alone is going way too far.
Necessity of a referral to the EBA
Such a far reaching decision should actually not be left to the whim of some LQM but decided by the EBA. The present board’s decision is a collegial decision, but the LQM played the most important role in the present decision.
There is also ample case law showing that the ideas defended by this LQM are not shared by other boards. See for instance T 364/22, T 1088/23, T 1461/22, T 2010/22, T 655/21 and T 1186/20.
Citing one’s own decisions as exemplifying a new line of caselaw, and even more considering it “established caselaw” is way too easy and actually dishonest.
I cannot refrain thinking that the present LQM is behaving like the LQM in T 56/21. In this decision, the board first envisaged a referral, and gave, in Reasons 101 ff, lengthy explanations as to why a referral to the EBA was not necessary. We are now awaiting the decision G 1/25, as the question raised then was actually an important and far reaching one….
A referral to the EBA to decide whether a proprietor has to file all his requests within the time limit under R 79(1), thereby allowing not to admit all later requests for merely being late filed appears therefore necessary.
The boards should consider the substance and not hide behind formal aspects
In a famous article published on JUVE in May 2024, the author found that the “boards should also avoid basing too many of their decisions on formalities instead of looking at the technology”. In other words, the boards were invited to concentrate on the substance rather than on formal aspects.
Seeing how procedural caselaw of the boards has become a lottery, one can only subscribe to this statement. See also my recent entry on T 0892/24.
ADENDUM
In T 861/24, AR4-6 were not admitted under Art 12(6) RPBA
In Reasons 3.1.3 one reads:
“Rule 116 EPC is not a legal bar to the submission of new requests, in particular if they are filed in reaction to a change in the subject of the proceedings, such as a new objection. Therefore, the proprietor could and should have submitted their requests in reaction to the new inventive-step objection as early as possible, but definitively at the latest at the oral proceedings, after the opposition division had stated that alternative a) of auxiliary requests 1 to 3 did not involve an inventive step.”
I leave the readers to decide whether this stance is in accordance with the fact that, according the present decision, it is “established caselaw” that any requests filed after the time limit under R 79(1) are late filed and hence, should not be admitted as R 79(1) is a fixed time limit.
T 861/24 shows best that relative criteria have also to be taken into account.
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