EP 3 007 881 B1 relates to an additive manufacturing apparatus and method.
Brief outline of the case
The OD decided maintenance according to AR1, in which granted claim 15 was deleted. Said claim was lacking N. The opponent appealed.
The board decided that claims 1 and 13 as granted were lacking IS.
AR1 was not admitted under Art 12(4) RPBA. AR2-3 were not admitted under Art 12(6) RPBA.
AR 4 was deemed admissibly raised and maintained and the board decided remittal for further prosecution.
The case is interesting in view of the reasons for which AR 4 was deemed admissibly raised and maintained.
The opponent’s point of view
The case should not be remitted to the department of first instance. Instead, a final decision should be issued. A remittal would significantly prolong the proceedings and, hence, the legal uncertainty on the validity of the opposed patent to the detriment of the appellant.
AR 4 included two new independent apparatus claims 3 and 10. Further, granted independent method claim 13 had been replaced by an amended independent method claim 11 which comprised four different alternatives linked by the expression “and/or” and, hence, had to be considered to be corresponding to four independent method claims.
The proprietor’s point of view
The case should be remitted to the OD for further prosecution. The lower-order AR were not considered by the OD. They were fundamentally different in nature to the claims on which the patent was maintained by the OD and thus the issues, even for N and IS, were different. The proprietor would be disadvantaged if it were not heard on these issues at two levels of jurisdiction.
The claims of AR 4 corresponded to those of AR1 submitted in response to the summons to OP issued by the OD. These had been filed within the deadline set under R 116 and, thus, were not late-filed. AR1 was later renumbered AR2, but not dealt with by the OD as it decided maintenance according to AR1.
In accordance with the Guidelines in the version of March 2023, E-VI, 2.2.2, amendments submitted before the date set under R 116(1) could not, as a rule, be considered to be late filed. Therefore, the claims of AR 4 were admissibly raised and maintained during the opposition proceedings and should be deemed part of the appeal proceedings.
The board should not take the place of the department of first instance. In the claims of AR 4, the distinguishing features were fundamentally different compared to the claims of the proprietor’s MR. In addition, there had been no opportunity so far to identify the closest prior art, to define the objective technical problem and to discuss the obviousness of the claimed subject-matter. These were special reasons that warranted a remittal.
The board’s decision on the admissibility of AR 4
The board accepted the information about AR4 given by the proprietor.
For the assessment of “admissibly raised“, the decisive question is whether the first-instance department would have admitted the request had a discretionary decision on admittance been required.
The explicit use of the past tense, “was admissibly raised”, and the reference to the proceedings leading to the decision under appeal imply that the perspective of the first-instance department is addressed in the conditional clause in Art 12(4) RPBA. In other words, it needs to be determined how the first-instance department – in the current case, the OD – would have proceeded in reliance on the provisions and practice that applied at the time.
Setting minimum requirements post factum in appeal for determining whether a request was admissibly raised before the OD, is tantamount to applying different admittance criteria for AR filed at the same time and under the same circumstances in first-instance proceedings.
Arguably, such an approach would compromise legal certainty. Moreover, replacing the first-instance perspective with what essentially is an exercise of discretion on the part of the board would render the discretionary decision of Art 12(4) RPBA redundant.
To assess whether the first-instance department would have admitted a request, it must be established whether it had discretion not to admit the request and, if so, which practice applied at the time when the decision on admittance would have been taken.
As a general rule, parties may expect first-instance departments of the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended.
This means that the Guidelines need to be considered in the version valid at the relevant time. A similar approach is taken when, upon reviewing first-instance discretionary decisions in appeal, the board has to ascertain whether a first-instance department exercised its discretion in accordance with the right principles
The board found itself aware of the considerable amendments to the Guidelines over the years, which, in turn, may impact how the “admissibly raised” condition is to be assessed in individual cases.
However, amendments to the Guidelines often reflect developments in the case law of the boards. They cannot constitute an impediment for the board in considering the Guidelines when determining how the opposition division would have proceeded at the relevant time.
The relevant section E-VI, 2.2.2 of the March 2023 version of the Guidelines includes the provision that “amendments submitted before the date set under R 116(1) cannot, as a rule, be considered as being late-filed“.
In view thereof, the board was satisfied that the proprietor demonstrated that current AR 4 was admissibly raised in the proceedings leading to the decision under appeal. From the minutes of the OP before the OD, it appears that AR4 was also maintained.
Comments
The present decision is somehow astonishing as, in numerous decisions, boards have made repeatedly clear, that they are not bound by the Guidelines, but only by the EPC. Contrary to this general position, the present board find itself as being bound by the Guidelines.
Which other parts of the Guidelines could be binding for the boards. The “three-point test”? 😉
The present board seems to have forgotten one important aspect. It is not enough to file requests before the date set under R 116(1) and to maintain them, at least implicitly, at the end of the opposition procedure.
It needs a bit more for those requests to be admissibly filed.
For requests filed before the date set under R 116(1), it is important to always insure and show that, in opposition, such requests
- do not infringe R 80
- are clear, taking into account G 3/14
- do not comprise added subject-matter
- do not extent the protection conferred as granted
- are patentable, and especially are novel and inventive over the prior art validly filed by the opponent, without merely referring globally to the reasons why the main request is allowable
In other words, it is extremely important to deliver with their filing a proper substantiation!
Only if those conditions are fulfilled, can AR be deemed admissibly raised and maintained. If the substantiation of such AR is only filed in reply to an appeal, then the AR cannot be deemed admissibly raised and will not be admitted by a board.
A much more elegant way of dealing with carry over requests
As far as carry over requests are concerned, T 1659/22, commented in this blog, shows that it is not necessary to refer to the Gudelines in order to decide whether carry over requests were admissibly raised and maintained.
In T 1659/22, the board interpreted the term “admissibly raised” in the sense of “submitted in the reasonable expectation that it will be admitted” and understood the provision as an expression of the principle of legitimate expectations applicable to all proceedings before the EPO, cf. G 5/88, Reasons 3.2-3.4.
As the proprietor filed and substantiated its AR during opposition proceedings before the date set under R 116(1), the proprietor had a legitimate expectation that these AR would be admitted to the proceedings if necessary.
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