EP 3 251 376 B1 relates to an active hearing protection device and method therefore.
Brief outline of the procedure
The patent was maintained according to AR2. The opponent appealed.
The OD did not admit the late-filed N objection against claim 1 of AR2 in view of D1=US 2014/0126734.
The bord reversed the non-admissibility of the N objection against claim 1 of AR2.
The board held that cl1 of AR2 lacked N over D1.
AR3 was not admitted in the procedure under Art 13(2) RPBA, as being late filed and introducing new issues under Art 123(2).
The patent was thus revoked
The proprietor’s point of view
During the OP before the board, the proprietor argued against admitting the opponent’s novelty objection, asserting that the appellant could not have been taken by surprise when AR2 was filed during the first-instance OP.
The proprietor emphasised that the features of the independent apparatus claim underlying AR2 had already been introduced in the preceding AR1, which was filed in response to the OD’s preliminary opinion.
Consequently, in the proprietor’s view, the opponent should have raised its novelty objection against the independent apparatus claim at that earlier stage, rather than restricting its attack on AR1 solely to a deficiency in the independent method claim.
The board’s decision
The board held that an opponent is not procedurally obliged to present every conceivable objection exhaustively against a pending claim request if a single objection is already sufficient to prejudice the maintenance of the patent on the basis of that request.
When a proprietor subsequently files a new claim request to remedy a deficiency, this normally creates a new factual and procedural situation. An opponent must then be given the opportunity to advance pertinent arguments against this newly filed claim request.
Furthermore, the board’s review of a discretionary decision is not limited to assessing whether a party was procedurally “surprised”. If a discretionary decision not to admit a submission is based on a flawed technical or factual assessment by the OD – such as the erroneous prima facie finding regarding the disclosure of D1 in the present case – the board may overturn that discretionary decision to assess the underlying merits of the submission de novo.
As a result, the board used its discretion to admit the objection as to lack of novelty over D1 against AR2=as maintained into the appeal proceedings, cf. Art 12(6) RPBA.
The board eventually concluded that claim 1 of AR2 lacked N over D1.
Comments
A pragmatic solution in the present case
Whilst it is always better for an opponent to raise any ground of opposition against a granted patent, the present decision is interesting in that it makes clear that, if the opponent finds a good reason to attack a single claim in the granted or amended patent, it is not necessary for it to attack all the claims or bring other objections against a given claim.
One not allowable claim in a given set of claims renders the whole set of claims not allowable.
In the present case, the board took a pragmatic view and admitted the N objection in appeal as the OD had prima facie manifestly misinterpreted the content of D1.
Even a board should not maintain a patent which has no raison d’être and not hide behind the RPBA for not fulfilling its duty vis-à-vis the silent stakeholder=the public. .
This way of dealing however bears the risk for the opponent that a board can have a different opinion and may request the opponent to object any claim beforehand and does not wait until a claim is deemed not allowable to object any other claim of the same set.
Diverging case law in procedural matters
Some examples in which boards had a pragmatic approach
In T 384/22, commented in the present blog, it was held that a document might not be novelty destroying but can be used as CPA.
In T 655/21, commented in the present blog, it was held that a board is not limited to the objections raised in the statement of grounds of appeal.
T 184/17, commented in the present blog, confirmed T 131/01. An objection of lack of IS is not a new ground of opposition if an objection of lack of N has been found allowable by an OD, when the board has come to a different assessment.
If a board is willing to close a case as soon as possible, then, any means to squeeze out the opponent is good enough.
Conversely, in T 1042/18, commented in the present blog, the board eventually considered that a late inventive step objection based on two documents used for a novelty objection did not represent a new ground of opposition but did not admit it under Art 13(2) RPBA as being late. The lack of N was decided during OP! In other words, in view of the valid RPBA, T 131/01 had become obsolete.
In T 0664/20, commented in the present blog, the board reminded that the statement of grounds of appeal of an appellant/opponent, must include all the grounds of appeal covering all the requests pending before the OD, including those not considered in the contested decision.
This position is really going way too far. Why should an appealing opponent guess which AR, not decided upon by an OD, will be maintained by the proprietor. This is the more so since some of those AR might not have been admissibly raised before the OD, cf. Art 12(6) RPBA.
A board can always remit if he does not want to deal with an objection. But this implies that the case will come back on the board’s desk.
It is not the first time that I have noticed the fact that procedural case law is not unified at the boards.
On the procedure
When looking at the board’s decision, the patent should never have been granted as D1=US 2014/0126734 was categorised as X in the SESR.
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