EP 3 258 325 B1 relates to a timepiece shaft.
Brief outline of the procedure
The OD decided maintenance according to AR5 and the opponent appealed.
The board revoked the patent.
Claim 1 as maintained lacked IS over D3=EP 2 142 965 and D7=GB 2 416 408. Both documents are not mentioned in the ESR.
The board dealt with all the AR on file, although the opponent had not taken position on those AR.
The proprietor’s point of view
The proprietor argued that the opponent has not sufficiently substantiated its objections to the dependent claims in the notice of opposition.
For the proprietor the opponent had not put forward any arguments challenging the dependent claims of the amended patent. Only claim 1 was challenged in the SGA.
Consequently, the proprietor considered that the challenge to the amended patent in its entirety is not sufficiently substantiated.
The dependent claims were not challenged and do not fall within the legal scope of the appeal proceedings. As a further point, the dependent claims of the patent, having been amended, no longer correspond to the claims of the granted patent and were ultimately not even challenged as they stood during the opposition proceedings.
The opponent also failed, in the appeal proceedings, to present any argument against the AR filed by the proprietor, which are for the most part based on the combination of dependent claims.
According to T 664/20, the statement setting out the grounds of appeal by an appellant must include all the grounds covering all the claims pending before the OD, including those which were not the subject of the contested decision.
The proprietor requested that the legal scope of the appeal proceedings be limited to claim 1 of the amended patent.
Consequently, AR 5, 13 and 15 would fall outside the legal scope of the appeal proceedings and should therefore be accepted without examination in the present appeal proceedings. For the proprietor, the situation would ultimately be similar to that in decision T 0031/08.
The board’s decision
The board is empowered to examine the AR
The board noted that the proprietor has not specified the legal basis for its argument that the board lacks the power to rule on the AR. Nor is the board aware of any such legal basis.
On the contrary, Art 111(1) explicitly provides that the board has all the powers of the OD. The board referred to T 1370/15, Reasons 5.1, and T 0862/16, point 8.3.2 of the grounds. The fact that it also has the power to remit the case to the OD does not alter this.
The requirements of Art 101(3) cannot be replaced by a mere reference to the absence of objections on the part of the opponent against the amended version in question.
The proprietor’s argument that the board should order the patent to be maintained on the basis of a AR simply because the opponent has not put forward any arguments is rejected. If that were the case, it would indeed oblige the board to remit the case to the OD.
It seems beyond dispute that the boards regularly rule on AR that have not been decided by the OD. If this were not the case, and if the boards were required to remit the case for any unresolved issue, this would in theory open up the possibility of a virtually unlimited number of remittals to the ODs. This would be a manifestly absurd outcome, even setting aside the provisions of Art 11 RPBA.
The opponent’s conduct is, to an extent, irrelevant
The board did not see how the opponent’s conduct in the proceedings could deprive it of its inherent power to examine all the documents submitted by the parties, provided that they remain within the scope of the appeal.
In the present case, the opponent has sought the revocation of the patent in its entirety. AR submitted in response to an appeal fall within the scope of the appeal, cf. Art 12(1)(c) RPBA.
The opponent’s conduct in the proceedings cannot compel the board to remit the case unconditionally to the OD as. the decision to remit lies entirely within the discretion of the board.
It should be noted that a hypothetical mandatory remittal, which the opponent could impose in the proceedings simply by refraining from commenting on the AR, could, in a given case, be clearly contrary to the interests of the patent proprietor.
The board agreed with the proprietor that a timely response from the opponent would have been desirable and was, in fact, possible.
Although it would have been preferable for the opponent to have filed a reply to the response to the statement of grounds of appeal, as required by decision T 2843/19, Reasons 3.3. The failure to file such a reply does not mean that the board loses the power to examine the AR.
Further decision of the board
The board further held that it may examine AR on the basis of the facts before it as set out in the file or on the basis of its own general knowledge. The bord referred to T 1370/15, Reasons 5.3 ff.
Comments
A patent without raison d’être should not be maintained
The present decision is to be welcomed as it shows that, when a board is determined not keep alive a patent which should be revoked, it may decide through and does not have to remit when AR have not been dealt with in first instance, or worse maintains a patent which might not be valid.
The present decision makes also clear that a patent cannot be maintained based on AR without examination of the latter.
A word of warning
Another board could have come to a different conclusion.
The present decision should not be taken as an invitation to an opponent to dispense itself to react on AR filed by the proprietor in reply to an appeal.
In any case it appears advisable for an opponent to take position on the AR at the latest when they are introduced in appeal, either when the proprietor appeals, or if they are filed after the SGA of the opponent. Before this moment, the opponent cannot be aware of the AR the proprietor intends to file.
It should thus not be required from an opponent to take position on AR not dealt with by the OD when a higher ranking request is deemed allowable.
Diverging procedural case law
The present decision does however illustrate once more that the case law of the boards on procedural matters is not coherent.
In the wake of the entry in force of the new RPBA, lots of boards took every pretext for swiftly bringing the appeal procedure to and end and concentrated more on formal aspects rather than on the substance.
The new RPBA were a good opportunity for some boards to throw overboard T 1914/12. In this decision, it was held that the boards have no discretion as to the admissibility of late submissions based on facts that are already part of the proceedings.
T 2843/19 was detrimental to the opponent and T 918/22, commented in the present blog was detrimental to the proprietor.
For the same token, T 131/01and similar decisions,. were thrown overboard.
In T 1042/18, commented in the present blog, the board took pretext of Art 13(2) RPBA to refuse the change from a N objection to an IS objection, when the board had only decided during the OP that N was given.
In such a situation and when no AR have been dealt with in first instance, a board should at least remit to the OD and not leave a patent as presumed valid, just for the sake of getting rid of a file.
In T 384/22, also commented in the present blog, the board remitted to the OD when it considered that D3 was not N destroying but represented a good starting point for assessing IS.
Own general knowledge of the board
T 1370/15 is part of a series of decisions of the same kind, cf. T 1090/12, and T 2526/19.
In all those three decisions, the respective boards felt empowered to introduce ex officio CGK without evidence of such knowledge. The CGK prejudiced maintenance of the patent or the grant of patent, as the respective bords claimed to be knowledgeable in the respective technical field from the experience of its members working on cases in this field.
I dare think what a board would tell a first instance division, or any party to the procedure, if it would introduce CGK without even the beginning of the proof of it. How, then, can a board claim such a privileged status and possibility?
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