EP 3 405 366 B1 relates to a manufacturer’s emblem with back-lighting.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board found that the priority was not valid for claim 1 as granted, and hence the priority document E2=DE 20 2016 000 238 U1 was N destroying.
The board admitted AR1 filed in reply to the appeal. Deletion of a feature in claim 1 as granted restored the priority.
The board decided maintenance according to AR1.
the case is about the admissibility of AR1.
The opponent’s point of view
With reference to T 0217/23, Reasons 15+17, the opponent argued that AR1, submitted with the response to the appeal, should not be admitted to the proceedings, in accordance with and pursuant to Art 12(6) RPBA.
The objection answered in AR1 had already been raised at the outset of the opposition proceedings in the notice of opposition. Consequently, AR1 should also have been filed in first instance.
The proprietor deliberately did not file any alternative claims during the opposition proceedings, but confined itself to defending its case on the merits.
The opponent also raised objections as to the substance of AR1.
The proprietor’s point of view
According to the minutes of the OP before the board, the proprietor argued that it had already announced at the start of the OP before the OD that it intended to file ARs.
This was rejected by the chair of the OD at the time precisely because there was no need for them . This is because, even if the AR had been filed, they would not have been considered in the proceedings at first instance, as the OD upheld the patent in the form in which it had been granted.
The board’s decision
The board decided not follow T 0217/23, but rather T 0141/20, Reasons 5.4.1, cited therein, according to which the mere existence of a ground of opposition in the opposition proceedings is not in itself a sufficient ground for filing AR.
For the board, the decision on admissibility must take into account whether there was a need to file the request during the opposition proceedings. In the present case, no such need was apparent in the opposition proceedings, since the OD did not at any stage of the proceedings call into question the validity of the priority.
As the amendment in AR1 overcame the non-validity of the priority, the latter was admitted in the proceedings.
The opponent’s substantive objections were dismissed by the board.
Comments
The position of the OD’s chair is to be criticised
The position of the chair of the OD is rather odd to say the least. Stating at the beginning of the OP that there is no need to file any AR in view of the provisional opinion of the OD is daring, as it prejudices the outcome of the procedure and shows that the OD took party for the proprietor.
One can even go as far as to say that, at the beginning of the OP, the chair of the OD gave up the OD’s discretionary power as to the admissibility of AR to be filed.
As proprietor, I would not give any credit to such a statement of the chair of the OD. There is a fundamental difference in not filing AR and waiting the appeal to file AR. That the OD would not have had to decide on AR as the opposition was rejected, does not dispense the proprietor to be proactive in first instance and to file AR in first instance. The proprietor can never be sure whether the decision of the OD will be upheld in appeal.
Diverging case law of the boards in procedural matters
I am happy for the proprietor in the present case, but this decision shows once more that in procedural matters the case law of the board boils down to a lottery.
It has to be noted that the proprietor never mentioned in any of his statements T 1041/20. It is the board which brought this decision in the procedure on its volition. I do not think that the discretion given to the boards goes as far as blatantly advantaging the proprietor over the opponent.
T 0217/23 and T 0141/20 show the two extremes of the position of the boards with respect to late filed requests.
In T 0966/17, the board went as far as to say that only requests filed in reply to the opposition, i.e. under R 79(1), have to be admitted by the OD.
Since the opponent’s objection on the validity of the priority in the notice of opposition, the proprietor should not have waited the beginning of the OP before the OD to announce the possible filing of AR. The position of the chair of the OD is clearly not tenable.
The last moment AR should be filed and substantiated by the proprietor would have been before the date set under R 116(1). Any later filed AR is not automatically admissible, and cannot be said to have been admissibly raised and maintained in first instance under Art 12(6) RPBA.
The position of the present board renders Art 12(6) RPBA meaningless and deprives it of its raison d’être.
Carry over requests
As in the present case, there were no carry over requests in view of the OD’s position, those requests have been subject to varying decisions of the boards.
When one sees the numerous decisions on carry-over requests dealt with in the present blog, the position of the board is as well not tenable.
In T 1659/22, the board admitted carry over requests and noted in Reasons 2.2.1 that the case law in this matter was rather contradictory.
In T 0449/23, Reasons 3.3.7 and 3.3.10,the board did not admit carry over requests under Art 12(4) and 12(3) RPBA as the substantiation before the OD of those requests was not tantamount to their substantiation in appeal.
Deletion of claims
In T 1480/16, T 2243/18, T 1792/19, T 1151/18, T 1857/19 or T 2201/19, the respective boards considered that deleting claims in order to overcome some objections, was not to be considered as an amendment under Art 12(4) RPBA.
In T 1597/16, T 1439/16, T 1224/15, T 0908/18, T 0682/16, T 0168/16, T 1569/17, T 2091/18, the respective boards considered that deleting claims in order to overcome some objections, was to be considered as amendment under Art 12(4) RPBA.
In T 2225/19, T 1800/21, T 0685/21, T 1172/21, T 0424/21, T 0967/22 the respective boards considered that deleting claims in order to overcome some objections, was to be considered as amendment under Art 12(4) RPBA, but admitted such AR as such amendments were not prejudicial to the procedural economy.
In T 1259/17, T 0482/19 or T 0317/20, the respective boards did not admit such AR even if they were not prejudicial to the procedural economy.
What is valid for deletion of claims should be equally valid for deletion of features in a claim as in the present case.
Conclusion
It is high time for the boards as a whole to come to a coherent case law in procedural matters. Similar situations should get a similar treatment.
The fate of a patent or of an opposition cannot be left to the whim of a board.
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