EP 3 020 746 B1 relates to a polyamide moulding material, a moulded article produced from the same and uses of the material.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted lack IS over D1 and D2.
AR1-11 were not admitted in the appeal procedure.
The patent was thus revoked.
The proprietor’s point of view
The proprietor requested that the case be referred back to the OD for a decision on AR1-11.
AR1-11 were filed during the opposition proceedings, approximately two months before the OP before the OD.
In its response to the appeal, the proprietor referred to these requests.
With regard to AR1-11, the proprietor argued that, as these had been filed in the first-instance proceedings, they were already part of the proceedings and thus also effectively part of the appeal proceedings.
Furthermore, the proprietor argued that it was not obliged to defend the patent speculatively in anticipation. In its view, the substantiation required by the boards would in principle include a statement on all requests.
In the specific case, however, this would have meant that the proprietor would have had to develop hypothetical arguments without a specific attack by the opponents. This would contradict the nature of the opposition proceedings, which are based on attack and response. An obligation to defend preventively against objections that had never been raised could therefore not be imposed on the proprietor.
Furthermore, there had been no reason at any time to defend the AR as a precautionary measure, since neither the opponent nor the OD had raised any substantial criticism of their legal validity.
Since the OD had already found the arguments on IS convincing with regard to the MR, this must apply all the more to the limited AR. From the point of view of procedural economy, such a premature defence argument was also not reasonable. Without knowledge of any attacks, it was a “futile exercise” to defend the entire substance of the AR speculatively.
In addition, the arguments regarding the patentability of the MR are fully applicable to the AR, meaning that separate arguments would be useless.
The board’s decision
First, the question arises as to whether, as claimed by the proprietor, AR1-11 were already part of the opposition proceedings.
In the contested decision, the OD took the view that the grounds for opposition put forward by the opponent did not preclude the patent from being maintained. Therefore, it was not necessary for the OD to deal with the AR in any way.
It follows that AR1-11 were not the basis of the contested decision and are therefore not automatically part of the appeal proceedings under Art 12(2) RPBA.
Even if AR1-11 were filed within the prescribed period under R 116(1), this does not mean that every amendment filed must be admitted. The OD must first determine whether the amendments could actually serve to overcome the objections and whether they did so in a manner appropriate and proportionate to the circumstances.
This means that the OD could, at its discretion, declare AR1-11 inadmissible. It is also noted that it was not argued in the appeal proceedings that the AR were admissibly submitted during the opposition proceedings, i.e., that the OD would have admitted these requests, taking all circumstances into account.
Under these circumstances, AR1-11 constitute an amendment under Art 12(4) RPBA, the admissibility of which is at the discretion of the Board.
Pursuant to Art 12(3) RPBA, the grounds of appeal and the response must contain the parties’ complete case for appeal. They must clearly and concisely state the reasons for requesting that the contested decision be set aside, amended, or upheld; they should explicitly list in detail all claims, facts, objections, arguments, and evidence asserted.
It follows that a proprietor who submits sets of claims in response to the appeal in order to offer fallback positions must also explicitly state the essential arguments in favour of these AR.
This requires information to justify which objections raised in the appeal against the MR are overcome by the amendments made in the AR and why the proprietor considers this to be the case.
The proprietor defended itself on the one hand with arguments in favour of the IS of the MR and on the other hand by merely referring to AR1-11 already filed in the first instance.
However, should the board decide that the MR lacks IS, there is no information as to what changes have been made in the AR, what reasoning underlies them, and to what extent they might be suitable for overcoming the objections raised. Without such an explanation, the board cannot assess whether the AR are prima facie relevant.
Contrary to the proprietor’s view, it is not the task of the board or the opponent to determine on their own initiative which elements of the AR could overcome the objections; rather, this responsibility lies with the proprietor.
A blanket statement that the AR are inventive for the same reasons as the MR is clearly not sufficient to demonstrate their allowability should the board considers the MR not to be allowable.
Comments
No substantiation of AR1-11 in first instance
There is nothing new under the sun. A mere reference in appeal to AR filed in opposition is not sufficient. At the latest when entering appeal, the proprietor should have substantiated any AR which had not been dealt with by first instance division, cf. Art 12(3) RPBA.
When the AR1-11 were filed in opposition, the proprietor merely indicated the amendments carried out, but never gave any reasons as to why the AR could overcome the objections of lack of IS raised by the opponent.
Should it have been necessary to discuss the AR in opposition, the substantiation, i.e. the reasons why they would overcome the objections would have been given during the OP, i.e. much too late.
The OD would have considered the substantiation late and therefore held AR1-11 not admissible.
The immediate conclusion is that the AR were maintained in appeal, but not admissibly raised in opposition, cf. Art 12(4) RPBA.
The proprietor was not proactive and this led to the non-admissibility of AR1-11 and the revocation. The proprietor when replying to the appeal, should be prepared that the board sets the OD’s decision aside.
On the procedure
D1=US 2010/0331461 and D2=US 2012/0157606 were both not mentioned in the ESR.
The patent, D1 and D2 bear an IPC class in common, C08L 77/06.
The patent and D2 bear an IPC class in common, C08K 7/14.
The search was carried out in C08G, CO08K, C08L.
The conclusions are manifest.
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