EP 3 512 713 B1 relates to a value document having a security marking and a method for identifying the security marking.
Brief outline of the case
The OD decided that claim 4 as granted was to be objected under Art 83. The same applied to AR1-3. AR1a was lacking N over D2=US 2014/0001351, the only X document cited in the ISR established by the EPO. The patent was maintained according to AR4.
The proprietor appealed the decision.
The board did not admit the MR filed in appeal under Art 12(6) RPBA.
AR1a-3a filed in appeal were not admitted under Art 13(2) RPBA.
AR 1-4 were not admitted in appeal under Art 12(4) RPBA.
As the proprietor was the only appellant, the board dismissed the appeal.
The non-admissibility of the MR in appeal
The proprietor’s point of view
The claims of the MR differed from the claims of the granted patent only in that they did not include granted claim 4. The deletion of claim 4 of the granted patent removed the only objection on which the contested decision regarding the patent in the granted version was based.
The deletion of dependent claim 4 of the granted patent within the scope of the present MR does not constitute a change in the factual and legal framework of the previous proceedings. This does not result in a change in the facts of the case or a reweighting of the subject matter of the proceedings.
The criteria set out in Art 12(4) RPBA argue in favour of allowing the MR in the appeal proceedings. According to the ‘CLBA, 10th edition, 2022 -V.A.4.2.2d, it is regularly permissible in the second and third levels of vonvergence to delete a dependent claim.
If, therefore, the deletion of a dependent claim is permissible under the stricter requirements applicable in the second and third levels of convergence approach, this must also apply to the first level ofconvergence.
The board’s decision
The board noted that the objection of lack of sufficiency against claim 4 of the granted patent, was already raised in point 3 of the notice of opposition. It was taken over by the OD in the annex to the summons before the OP before the OD, as well in the OD’s decision, which was complemented by dealing with the arguments presented by the proprietor.
The main reasons for the decision were therefore known to the parties at the latest with the annex to the summons. There were thus enough reasons to submit the present MR during the opposition proceedings.
This view is not contradicted by the proprietor’s reference to the CLBA V.A.4.2.2 d. Contrary to the proprietor’s assertion, it is not stated that it is regularly permissible in the second and third level of convergence to delete a dependent claim.
In the present case, the deletion of dependent claim 4 of the granted patent means that the question of the N and IS of the subject-matter of claim 1 of the granted patent would have to be decided for the first time.
The deletion led to a complete rebalancing of the subject matter of the proceedings, changed the factual and legal framework and necessitates a new discussion regarding N and IS. Art 12(4) RPBA alone opposes the admission of the MR. Art 12(6) RPBA is a further reason not to admit the MR.
The non-admissibility of AR1a-3a in appeal
The proprietor’s point of view
The AR 1a, 2a and 3a did not constitute an amendment to the appeal arguments, as they were identical to AR already submitted in the opposition proceedings.
The board’s decision
The board noted that the proprietor submitted a MR and four AR when entering appeal and based its appeal arguments on these requests. It did not pursue AR1a-3a with the grounds of appeal, so that these were not the subject of the appeal proceedings at that time.
The submission of AR 1a, 2a and 3a after the communication under Art 15(1) RPBA therefore constituted an amendment to the proprietor’s appeal arguments. This amendment was not taken into account under Art 13(2) RPBA.
The non-admissibility of AR1-4 in appeal
The proprietor’s point of view
AR1-4 do not constitute an amendment to its appeal case, as they respond to aspects of the grounds for the contested decision.
The proprietor argued that the reason for filing these AR when entering appeal is that, contrary to the preliminary opinion of the OD, D2 was classified as prejudicial to novelty in the contested decision. Before receiving the grounds for the decision, it was not clear how the presence of two luminescent substances in D2 would be justified.
The board’s decision
It is undisputed that AR1-4 4 were not the basis for the contested decision. The proprietor’s appeal therefore does not meet the requirements of Art 12(2) RPBA and thus constitutes an amendment under Art 12(4) RPBA. The question of whether these AR should be used to respond to the grounds for the contested decision is irrelevant.
The board noted that, with respect of D2, the OD adopted the opponent’s position and justified this in the decision.
Claim 1 of AR1-4 each contain feature F. which according to the proprietor is taken from the description in the originally filed version.
If AR1-4 were to be admitted, the question would arise for the first time as to whether feature F is disclosed in the application as originally filed.
The board observed that feature F is not contained in the granted claims or in the claims of the application as originally filed.
It is also undisputed that feature F is not contained in any of the sets of claims submitted in the opposition proceedings and that this feature was not taken into account in the contested decision. Nor is it disclosed verbatim in its present form in the description of the application as originally filed.
The question of whether feature F can establish an IS would arise for the first time if AR1-4 were admitted. This would require discussion of new prior art that was not available during the opposition proceedings and were not taken into account there.
Admission of AR1-4 would therefore entail considerable complexity and run counter to the requirement of procedural economy.
AR 1-4 were thus not admitted under Art 12(4) RPBA.
Comments
It is difficult for a proprietor to do worse when entering appeal. The proprietor was lucky that the opponent did not appeal. Otherwise the risk would have been great that the patent was revoked.
As far as deletion of claims, dependent or independent, in appeal is concerned, the case law on their admissibility is quite diverging, so that the proprietor’s argument was not really convincing. The problem of admissibility in appeal of requests in which claims have been deleted, dependent or independent, has been the topic of a number of entries in the present blog.
Even if AR1a-3a could be considered as carry over requests, they were not pursued when entering appeal, and hence not maintained. Re-introducing those requests after the communication under Art 15(1) RPBA was thus quite daring and not successful.
As far as AR1-4 filed when entering appeal are concerned, it was not even clear where feature F was to be found in the original specification.
For AR1-4 to be admissible in appeal, should feature F have been orginally disclosed, those AR should have been filed, at the latest during OP, since the OD had changed its opinion with respect of D2. Waiting until appeal to file those requests was not a recipe for success.
It seems that some proprietors have not yet realised that the RPBA are in force for quite a few years. For some proprietors, they rather seem flowing like water of a duck’s back.
The admissibility rules before national jurisdictions might be more lenient, but they are of no interest in procedures before the boards.
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