EP 2 715 892 B1 relates to a gas insulated switchgear having a fluorine compound.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted as well as claim 1 of AR2-9 were insufficiently disclosed. AR2 was lacking IS over a document quoted in the ISR established by the EPO and AR 10-12 were not taken into account under Art 13(2) RPBA. The patent was thus revoked.
A request for the reimbursement of the appeal fee by the opponent was rejected.
In this post we will concentrate on the non-admissibility of AR 10-12.
The proprietor’s point of view on the admissibility of AR 10-12
The proprietor pointed out that it had already announced in its reply to the statement of grounds for appeal that it reserved the right to file further AR consisting of combinations of AR already filed.
AR 10-12 represented such combinations. These combinations represented juxtaposed responses to juxtaposed objections.
They did not, therefore, introduce new subjects into the debate. They were therefore requests that created neither new submissions nor new arguments. In addition, the proprietor argued, by analogy with decision T 141/20, that it could not be expected to respond to the large number of objections by filing as many corresponding AR as this would be detrimental to the economy of the procedure.
The opponent’s point of view on the admissibility of AR 10-12
The opponent referred to T 3027/18, according to which the mere announcement of the filing of new requests cannot be considered as a request to be examined by a board, especially if it is still unclear which requests are intended to be combined.
The opponent also referred to T 312/19. In the Reasons 3.4, the board held that the new AR represents an amendment in the proprietor’s appeal case since the request was never part of the appeal proceedings until the OP. It might well be that the issues to be discussed would remain the same as for claim 1 of AR 6 and claim 6 as granted; however, AR 6bis combines two independent claims of two different requests and thus constitutes a new contingency position of the proprietor.
The board’s decision on the admissibility of AR 10-12
The fact that AR 10-12 are combinations of AR filed with the reply to the appeal, and that they contain, according to the proprietor, only juxtaposed replies to juxtaposed objections, does not mean that they do not constitute an amendment to a party’s appeal case within the meaning of Art 13(2) RPBA.
The term “amendment” in Article 13 RPBA is not limited in such a way as to exclude “juxtaposed combination” of requests.
Furthermore, AR 10 to 12 have obviously not been filed in accordance with Art 12(3), RPBA, as they have not been expressly set out.
By analogy with the considerations in Reasons 3.4 of T 312/19, the proprietor’s conduct amounts to presenting to the board a number of independent claims, awaiting the board’s opinion, and then formulating a request including the combination of all those elements which, in the board’s opinion, are necessary to overcome the objections discussed up to this point in the proceedings.
This might be more efficient than presenting the set of requests the proprietor wishes to pursue at the start of the appeal proceedings, but, in the board’s view, it is contrary to the principle of due process, at least in inter partes proceedings.
The position defended by the proprietor would mean that the proprietor would repeatedly have the opportunity to file additional “juxtaposed combination” requests in the course of the appeal proceedings.
However, this would be detrimental to the economy of the procedure, would run counter to the objective of Art12(3) RPBA and would run counter to the principle of fairness to the opponent.
The board also had doubts about the proprietor’s view that the combination of AR filed under Art 12(3) RPBA would not generally give rise to objections going beyond the combination of objections directed against the individual requests. For example, the fact that two characteristics are initially disclosed does not imply that their combination is also disclosed.
It follows that if such “juxtaposed combination” requests did not constitute amendments within the meaning of Article 13 RPBA, an opponent would either be obliged to raise objections against an object that had not yet been filed, or would have to be given repeated opportunities during the appeal proceedings to file additional observations on late-filed “juxtaposed combination” requests.
The former seems quite simply impossible, and the latter is highly prejudicial to the economy of the procedure and constitutes a violation of Art 12(3) RPBA.
The board held that T 141/20 relates to the requirements of Art 12(6) RPBA, and not, as in the present case, to those of Art 13(2) RPBA, which are quite different.
Even if it is conceded for the sake of argument that the proprietor would not have been obliged to file AR 10-12 before the first instance, the argument fails to demonstrate why the proprietor would not have been obliged to file AR 10-12 no later than with the reply to the statement of grounds of appeal, in accordance with Art 12(3) RPBA. For this reason alone, the board does not need to take a position on whether a proprietor can be expected to file all the requests he wishes to pursue in opposition proceedings.
The board concluded that there were no exceptional circumstances within the meaning of Art 13(2) RPBA, which would have led it to take into account the AR 10-12.
Comments
Should a proprietor wish to file further requests, he should do so at the latest when entering appeal and not wait the OP. Even then, such further requests might not be admitted under Art 12(4) RPBA. That a substantiation of such requests is needed pursuant to Art 12(3) RPBA goes without saying.
“Reserving the right to file further AR” is not binding for a deciding body of the EPO, be it a division of first instance or a board of appeal. A deciding body can only consider requests which have been positively filed before it.
In T 3027/18, the proprietor’s had merely announced further requests in its reply to the opponent’s appeal, but did not file any and waited the OP to file them. A further request combining, not requests but granted independent claims, was not taken into account under Art 13(2) RPBA.
In T 1105/14, the proprietor’s wished to “be allowed to file” further requests prior to the final request before the OD. This could not be equated with the filing of an explicit request and the OD did not commit any procedural violation by not inviting the proprietor to file further AR.
According to T 5/08, there is no absolute right for a proprietor to have a last chance to save its patent.
In T 1617/08, the applicant requested that it be allowed to file further requests “should it be needed“. In T 1617/08, it was held that the purpose of OP in appeal is to give the parties an opportunity to argue their case, but not to give proprietor the opportunity to repeatedly modify its requests until an acceptable set of claims is found.
This decision does thus not come as a surprise, especially not under the valid RPBA. The considerations exemplified in the present case were already valid in the past.
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