EP 3 083 467 B1 relates to a system and method for limiting over-voltage in power supply systems, particularly in elevators.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board confirmed the rejection of the opposition.
The case is interesting in that it makes a distinction between a fresh ground of opposition and the amendment to a party’s case.
The opponent’s point of view
In the SGA, the opponent argued that claim 1 of the granted patent lacked N over D1.
The opponent argued that, even if considered novel, claim 1 would still lack an IS over D1 combined with CGK.
The opponent submitted that according to established case law and, in particular, to decision T 131/01, an IS attack is admissible on appeal even if only a N objection was raised during opposition proceedings, because the IS objection is not considered a fresh ground for opposition.
The proprietor’s point of view
The proprietor argued that the IS attack based on D1 should not be admitted under Art 12(4) RPBA, as it had not been raised during the opposition proceedings and constituted an amendment to the case which had neither been expressly identified nor adequately justified in the SGA.
The board’s decision
The board observed that the case underlying decision T 131/01 differed from the present case at least in one respect. In particular, the arguments as to lack of IS filed with the SGAl had already been submitted by the opponent during the opposition proceedings, cf. T 131/01, Reasons 4.1.
In the present case, by contrast, lack of IS starting from D1 was raised for the first time on appeal. This amounts to an amendment to the party’s case within the meaning of Art 12(2) and (4) RPBA, provisions that were not yet in force at the time decision T 131/01 was issued. This constitutes a further difference between the present case and the circumstances underlying that decision.
The question of whether a fresh ground of opposition has been raised – and, therefore, of whether the agreement of the patentee is required on account of the opinion G 10/91 and decisions G 1/95 and G 7/95 of the EBA – has to be distinguished from the question of whether there has been an amendment to a party’s appeal case.
The admissibility of amendments represents a separate, independent issue and is subject to the discretion of the board under Art 114(2) EPC and Articles 12 and 13 RPBA. This approach is consistent with the established case law of the Boards of appeal, see for example T 1042/18, Reasons 4.5; T 1179/17, Reasons 4.6.2; T 1816/17, Reasons 12.
Under Art 12(6) RPBA, second sentence, the board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.
In the present case, the proprietor’s and the OD’s position that D1 did not anticipate claim 1 was known to the opponent before the OP. Hence, the board took the view that any IS attack based on D1 could and should have been filed at the latest during the OP before the OD. Moreover, the board cannot identify any circumstances which would justify the admission of such attack on appeal, nor did the appellant provide arguments in this respect.
Accordingly, the board decided not to admit the IS attack based on D1 into the appeal proceedings under Art 12(4) and 12(6) RPBA.
Comments
Late filed objections of lack of IS and/or N
T 131/01 has been confirmed for instance in T 437/17, T 353/06, T 1077/00, T 1105/00, T 952/99, T 597/07, T 710/15, T 1052/07, T 184/17, T 281/03, T 838/17, T 2430/09, T 2589/12, T 299/15, T 496/15, T 1501/19, T 2238/15, T 1553/07, T 1192/02, T 1225/08, T 1027/03, T 1579/05, T 710/15 and the latest in T 184/17.
In T 1461/22 , commented in the present blog, the board accepted a late file objection of lack of N, whereas a lack of IS was submitted from the outset. By reference to G 7/95, the board held that before deciding on IS, it has to be decided whether N was given. A similar reasoning was applied by the board in T 1186/20, also commented in the present blog.
In T 384/22, also commented in the present blog, the board decided that the N objection based on D3 was not valid, but then accepted to remit in order for the opponent and the proprietor to discuss an IS objection on the basis of D3 as CPA. In doing so, the board was up to its duties to ensure that possibly invalid patents are not maintained.
The actual difference between T 131/01 and the present case
In the present case, the opponent raised a N objection based on D1=US 6,446,760 in its notice of opposition which was dismissed by the OD.
In the case of T 131/01, the opponent raised a N objection based on D1=DE 20 21 382 in its notice of opposition. The OD dismissed the N objection in its decision.
In the same the opponent added the following: it is argued, as a precautionary measure, that D1 at least suggests the subject-matter of the claim to such an extent that the person skilled in the art would not have had to exert any inventive step within the meaning of Article 56 EPC in order to arrive at it, cf. end of page 4.
Contrary to what the board alleges, the present case only differs from that of T 131/01 in that, in the latter, the opponent might have filed an objection of lack of IS in its notice of opposition, but this objection was not really substantiated.
It was thus correct and legitimate for the board in T 131/01, to allow the objection of lack of IS in appeal. Claiming a lack of N and of IS on the basis of the same document appears lacking any logic. If a document destroys the N of a claim, it means that all claimed features are known from this document. If the same document is used as CPA for the same claim, it means that not all claimed features are known from the same document. The objection of lack of IS manifestly devaluates the lack of N and vice-versa.
G 10/91, G 1/95 and G 7/95 were respected by the board in T 131/01.
IS objection not admissible under Art 13(2) RPBA
In T 1042/18, commented in the present blog, the board held that the objection of lack of was not admissible under Art 13(2) RPBA. This was unfair to the opponent, as he only knew during the OP before the board that his N objection was not valid.
G 10/91, G 1/95 and G 7/95 were not respected by the board in T 1042/18 and in the present decision.
T 1042/18 has been applied in a series of decisions, other than those mentioned in the present decision.
In T 1242/21, also commented in the present blog, the board alleged that T 131/01 was an isolated decision, and the valid RPBA were not inforce, hence T 131/01 should not be followed. This is manifestly wrong.
IS objection not admissible under Art 12(4+6) RPBA
The present board has found another trick to squeeze out the opponent. As the objection of lack of IS was raised when entering appeal, the board came with Art 12(4+6) RPBA in order to consider the objection of lack of IS not admissible.
Conclusion
In T 1042/18 and in the present one, it was deeply unfair from the side of the boards to act as they did. The opponent does not have a crystal ball and does not know in advance what the board decision might be.
Rather than doing their job, certain boards take pretext of the RPBA to deny justice to the opponent and take the risk of maintaining an invalid patent for the sake of increasing their production/productivity.
If a board does not want to deal with a justified late objection, it has always the possibility to remit to the OD, albeit with the perspective of the case coming back on its desk. Dismissing the late objection allows to dispose of the case for good.
In view of the diverging decisions in this matter, it would be good if corresponding questions would be referred to the EBA.
In T 1042/18, the opponent requested the board to refer a corresponding question to the EBA. This request was dismissed.
If a board is not willing to refer a question to the EBA it can find lots of pretexts for refusing a referral.
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