EP 3 393 441 B1 relates to a dyeing composition for keratin fibres comprising a direct dye of triarylmethane structure and a silicone.
Brief outline of the case
The OD decided that claim 1 as granted lacked N and maintained the patent according to AR1.
The OD did not admit objections of lack of IS against claim 1 of AR1.
Both opponent and proprietor appealed. Later the proprietor withdrew its appeal.
It was undisputed that the IS objections starting from D2 and D4 had been raised for the first time at the OP in opposition.
The OD considered these objections belated and prima facie not relevant. For these reasons, the OD did not admit them into the proceedings.
The board held that the OD exercised its discretion in an inappropriate manner.
The board decided that claim 1 as maintained lacked IS, but maintained the patent according to AR2, and remitted for the adaptation of the description.
The proprietor’s point of view
The opponent saw the objections of lack of IS as new facts, as neither D2 nor D4 had been cited against claim 12 as granted, which had the same subject-matter as claim 1 as maintained.
The opponent’s point of view
The OD lacked discretion to disregard the IS objections starting from D2 and D4. The OS’s decision in this respect should thus be reversed.
The board’s decision
It was undisputed that the OD’s discretion to disregard facts or evidence not submitted in due time is enshrined in Art 114(2). Art 114(2) is silent on arguments.
The parties were divided as to whether the objections starting from D2 and D4 were new facts, which the OD could have the discretion to disregard them, or new arguments, meaning that the OD lacked the discretion and had to admit them.
For the board, the essential technical content of D2 and D4 had been discussed in the context of the N of the claimed composition both in the notice of opposition and in the OD’s annex to the summons to OP.
Thus, the disclosure of D2 and D4 did not constitute a new fact. This means that the IS objections in view of D2 or D4 are arguments which are based on facts, evidence and grounds constituting the legal and factual framework of the opposition, which the OD lacked the discretion to disregard.
The IS objection in view of D2 and D4 were thus admitted into the proceedings.
The objection led to the non-allowability of AR1-
Comments
The present decision is in line with T 131/01 and G 7/95 and in clear contradiction with T 1042/18, commented in the present blog as well as T 1242/21, also commented in the present blog.
In T 131/01, the board held that the ground of lack of N has been substantiated pursuant to Rule 55(c), now R 76(2), a specific substantiation of the ground of lack of IS is neither necessary – given that N is a prerequisite for determining whether an invention involves an IS and such prerequisite is allegedly not satisfied – nor generally possible without contradicting the reasoning presented in support of lack of N.
T 184/17, was one of the numerous decisions confirming T 131/01, before the entry into force of the present RPBA.
In T 1042/18, decided under the present RPBA, the board held that a change from a N to an IS objection, was not a new ground of opposition, but was not admissible under Art 13(2) RPBA.
In T 1242/21, the board claimed against all odds that T 131/01 was an isolated decision which should not to be followed.
The present decision is also in line more recent decisions like T 2010/22, commented in the present blog, allowing the change from an objection of lack of N to a lack of IS in appeal.
In T 364/22, also commented in this blog, it was held that a document might not be N destroying but can be used as CPA.
In T 1461/22, also commented in the present blog, the relationship between lack of N and lack of IS was clarified.
Conclusion in appeal
It is therefore possible to consider that T 1042/18 and T 1242/21, are isolated decisions as being in clear contradiction with all decisions allowing, even in appeal a change from an objection of lack of N into an objection of lack of IS.
After all, an opponent cannot know in advance whether the board will confirm a lack of N decided by the OD. If the board concludes that the subject-matter of the claim is novel, the situation has changed and the opponent should be allowed to raise an objection of lack of IS with this document as CPA, in spite of Art 13(2) RPBA.
The change in the nature of the objection is possible under the double proviso that a properly substantiated objection of lack of N was filed and maintained in opposition and that a properly substantiated objection of lack of IS was as well filed and maintained in opposition.
Conclusion in opposition
Faced with a similar situation, an OD has to exercise its discretion so that a change of objection is admissible. The double proviso also applies in opposition.
Overall, it might mean more work for an OD, but this aspect is irrelevant.
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