EP 3 050 986 B1 relates to a high speed tool steel to be used for a tool, such as a die or a punch, as well as a method for producing the same.
Brief outline of the case
The opponent appealed the OD’s decision to reject the opposition.
The board held that claim 1 as granted lacked IS over D7=EP 1 469 094 +D8=EP 0 452 526 or D9/D9t=JP 2004-169177.
The board decided not to remit.
The same objection applied to AR1.
No substantiation was provided under Art 12(3) RPBA for AR 2, 2.1, 3 and 3.1.
The later substantiation was not taken into account under Art 13(2) RPBA.
The patent was thus revoked.
The proprietor’s point of view
All the claim requests meet the requirements of the EPC.
The case should be remitted to the department of first instance if the AR were to be discussed.
If the patent cannot be maintained as granted, the patent is to be maintained on the basis of AR 1, 2, 2.1, 3 and 3.1 (re-)submitted with the reply to the appeal, or of AR 4 submitted after the summons.
The board’s decision on AR 2 2.1, 3 and 3.1
According to the opponent, the newly added features in claim 1 of these requests were either known from D7 or obvious, and could not confer IS.
In their reply, the proprietor has not responded to these objections and has thus failed to explain why the amendments in these AR overcome the IS objections.
These aspects are not self-explanatory either.
Thus these requests were not initially substantiated, contrary to the requirements of Art12(3) RPBA.
Responding to the board’s communication under Art 15(1) RPBA, the proprietor submitted some reasoning as to why the AR overcame the objections on file, but did not indicate any exceptional circumstances why it did so only at that stage, while confirming that the board’s communication contained no new elements.
Such a late substantiation is contrary to the provisions of Article 13 RPBA 2020.
The board referred to T 1913/19, Reasons 10 to 16, cited in T 1006/21, commented in this blag, as well as to T 1919/17, Reasons 25, and therefore cannot be admitted under Art 13(2) RPBA.
Comments
As the opposition was rejected, the AR were, for a part of them, carry over requests.
Contrary to some boards, the present board did not consider the CoR as an amendment of the proprietor’s case under Art 12(4) RPBA.,.
As there was no substantiation under Art 12(3) RPBA of AR 2, 2.1, 3 and 3.1 in reply to the opponent’s appeal, it was indeed too late for the proprietor to present some substantiation during OP.
In view of Art 13(2) RPBA the proprietor could have expected that this late substantiation would not be taken into account.
On the procedure
D7=EP 1 469 094 was of category X in the SESR.
D8=EP 0 452 526 and D9/D9t=JP 2004-169177 were mentioned neither in the ISR established by the JPO nor in the SESR.
It appears that the patent should never have been granted in the first place.
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