EP 3 071 273 B1 relates to a device, method and system for logging smoking data (puff counter).
Brief outline of the case
The OD decided maintenance according to AR2.
The opponent appealed.
The board decided revocation of the patent as claim 1 as maintained lacked IS.
The case is interesting as AR were not admitted by the board under Art 13(2) RPBA.
The board has held that requests filed during the first-instance proceedings on which the department of first instance took no decision are not automatically part of the appeal proceedings.
The board’s decision
The board noted that in its response to the SGA of the opponent and in all following submissions, the proprietor provided counter-arguments to the opponent’s arguments, which all related to the patent as maintained by the OD.
The proprietor did not make any express request. In particular, it did not make an AR to maintain the patent on the basis of any of AR3-9 filed during the opposition proceedings.
The board has only an obligation to review the decision under appeal, cf. Art 12(2) RPBA. In the case at hand, the decision under review is the interlocutory decision of the opposition division to maintain the patent on the basis of AR2.
This obligation, however, does not extend to AR3-9, which are not amongst the requests on which the decision under appeal was based, as the OD took no decision on those requests.
That some of these requests might have been “admissibly raised” within the meaning of Art 12(4) RPBA is immaterial in this regard, unless they had also been expressly maintained on appeal.
In its summons to the OP, the board interpreted the proprietor as making the single request that the appeal be dismissed.
If the proprietor disagreed with the board’s finding that it had only one request, i.e. if it were of the opinion that the board should have stated that AR3-9 were also part of the appeal proceedings, it had every opportunity to make this known in a reply to the board’s summons sufficiently in advance of the OP.
The absence of such an objection before the OP before the board may be considered as a silent acknowledgment that, when filing its response to the appeal, the proprietor only requested maintenance of the patent on the basis of AR2.
AR3-9 were at the very least not expressly part of the reply to the SGA and therefore not amongst the requests defining the prorietor’s case according to Art 12(3) RPBA.
In spite of this, during the OP before the board, the proprietor submitted that, contrary to the understanding which the board had expressed in its summons, the proprietor considered that AR3-9 were part of the appeal proceedings, given that they were mentioned in the decision under appeal, cf. point 7 of the “Summary of Facts and Submissions”, and were also referred to by the opponent in one of his submissions.
The board, held that although the proprietor’s AR3-9 are mentioned under point 7 of the “Summary of Facts and Submissions” of the decision under appeal, they do not form part of the basis for that decision in the meaning of Article 12 RPBA.
It follows that AR3-9 were made for the first time in the OP before the board and constitute an amendment under Art 13(2) RPBA.
The board considered that the explanation given by the opponent that, up until the OP held before the board, it had believed that the requests were, automatically, necessarily or implicitly, part of the appeal proceedings, does not identify exceptional circumstances under Art 13(2) RPBA.
Further, the absence of reasons in favour of AR3-9 is consistent with the understanding that those requests were not specifically maintained, among other things, because Art 12(3) RPBA makes such reasons an obligatory part of the proprietor’s case.
The board considered that the re-introduction of said requests and any reasons relating to such requests at such a late stage of the appeal proceedings would contravene the principle of procedural economy, if only because their admittance would have required either a postponement of the oral proceedings or a remittal to the department of first instance.
As AR3-9 were not admitted in the appeal procedure there was no reason to remit the case to the OD once the board decided that the patent could not be maintained according to AR2.
Comments
The decision might look harsh for the proprietor, but hoping that the mere mention of AR3-9 in “Facts and Submissions” of the appealed decision, implied that were automatically part of the appeal procedure shows a deep misunderstanding of the valid RPBA in general, and of Art 12(2) RPBA in particular. The decision of the board is therefore fully justified.
AR3-9 are carry over requests, which might have been admissibly raised and maintained in opposition, but they cannot be held timely raised and maintained in appeal.
If the proprietor wishes that AR filed in opposition to be considered in appeal, he should not wait until the OP before the board to mention them. He should make this clear when replying to the SGA. Any delay can be detrimental to the admissibility of the AR. Furthermore, not reacting to the annex to the summons was a serious mistake on the part of the representative. What might be possible before some national jurisdictions might not be possible before the TBAs.
On the procedure
The board held that claim 1 lacked IS over D2=US 2012/048266, document of category A in the ISR established by the USPTO and D4=US 2004/031497, document X in the SESR. Why did the OD not come to this conclusion?
Comments
7 replies on “T 1296/23-Timely filing in appeal of requests not dealt with by the OD”
Can it not be argued that the proprietor had a legitimate expectation that, in case he lost the appeal in relation to AR2, there would be an AUTOMATIC remittal to the OD for handling of AR3-9?
After all, once the decision of the OD on AR2 was overturned, the previous proceedings (opposition) should be resumed where they were stopped.
He is, in effect, punished by the positive decision of the OD on AR2, because now he’s lost his chance of defending AR3-9.
The decision is not only harsh on the proprietor, but in my view fundamentally unfair. He has lost his fallback positions AR3-9 because the BoA overturned the decision on AR2. He has lost more than was at stake in the appeal.
[Of course it would have been better if he had asked to maintain AR3-9, but why should he? Only the decision of the OD on AR2 is subject of the review by the BoA]
@ BJ,
I can understand your position, but with the valid RPBA, the proprietor played with fire.
One thing is clear from procedural case law: requests not decided upon by an OD (or an ED) are not part of the decision to be judicially reviewed under Art 12(2) RPBA and thus represent an amendment under Art 12(4) RPBA. Those requests are so called “carry over requests”.
In my opinion, there no legitimate expectation that the case would be remitted to the OD should the board decide that the claim deemed allowable by the OD is found not allowable by the board. According to Art 111(1), the board is not obliged to remit. He can decide through as the board may exercise any power within the competence of the OD.
There is a first supplementary reason for this: carry over requests are only admissible in appeal if they have been admissibly raised and maintained in first instance, cf. Art 12(6) RPBA. This means that the AR must have submitted in due time before the OD, i.e. before the date set under R 116(1), and maintained before the OD.
There is a second supplementary reason for this: under the valid RPBA, the appeal procedure is front loaded. This means that in reply to the opponent’s appeal, any request admissibly raised and maintained in first instance, has to be filed when replying to the opponent’s SGA if those requests ought to be considered, cf. Art 12(3) RPBA. Indeed, it would have been better if the proprietor had asked to maintain AR3-9. You have now the reason for this. The proprietor punished himself by not timely filing AR3-9.
In some national procedures, it might be possible to come to a hearing with new requests or documents. This is not possible at the EPO in view of the RPBA.
The proprietor only defended the patent as maintained and it is only after having received the board’s communication under Art 15(1) RPBA that the proprietor realised that its patent risked revocation. The reaction of the board at the OP can thus not be considered unfair.
Already under the RPBA 07, the boards made clear that a party should not wait to receive the opinion of the board to react. This has been enshrined in Art 13(2) RPBA.
In the present case, the representative might have warned the proprietor of the risks taken by only defending AR2, but the representative has to act according to the wishes of his client. If the representative did not warn the client, I would be inclined to say that he has engaged its liability.
I will not disguise that sometimes procedural decisions of the bords are boiling down to a lottery, when similar cases are not procedurally decided in a similar way. In the present situation, it is not the case.
In view of the valid RPBA, the decision not to admit AR3-9 is justified. I hope I could convince you.
You wrote ‘In my opinion, there no legitimate expectation that the case would be remitted to the OD should the board decide that the claim deemed allowable by the OD is found not allowable by the board. According to Art 111(1), the board is not obliged to remit. He can decide through as the board may exercise any power within the competence of the OD. ‘
That is, perhaps, where the crux of the matter lies: the board may indeed exercise any power within the competence of the OD, but is it within the competence of the OD to refuse AR2 AND then ignore AR3-9 that were properly submitted? I guess the answer is ‘no’. So then the answer must be ‘no’ for the board as well.
Note that according to A111(1) the board has ONLY two options: excercise power within the competence of the OD or remit. No other options exist. It can’t be the first option, because the power to do what the BoA did was not available to the OD, so there is only one option remaining: remit.
Look at RPBA 12.(1a) and 12(2). There was never a decision on AR3-9, so it is fundamentally impossible that such a decision was the subject of the appeal.
@ BJ,
Regarding your last point, “Of course it would have been better if [the patent proprietor] had asked to maintain AR3-9, but why should he?”, besides the RPBA as Mr. Thomas explained, I can think of at least another reason: per Article 113(2) EPC, the EPO (including the BA) can decide upon the European patent only in the text submitted to it by the patent proprietor.
If somehow the patent proprietor’s intention had been to no longer pursue AR3-9 on appeal, then the BA would have violated Article 113(2) EPC by maintaining the patent based one of of these AR, which would no longer be a text submitted by the patent proprietor.
At any rate, it is up to the patent proprietor to formulate its requests clearly. I read the CLBA (11th edition, July 2025), III.B.3.2 and III.I.3.1, as confirming this.
(Typo: “based one of of these AR” should read “based on one of these AR”.)
@Extraneous Attorney, while this outcome was foreseeable, I would like to play devil’s advocate:
– The proprietor *did* submit those auxiliary requests and they never explicitly withdrew them. Is deemed withdrawal of requests within the spirit of Article 113(2)?
Turning to the RPBA:
– “the reply shall contain a party’s complete appeal case” – the proprietor disputed everything the opponent-appellant stated and requested dismissal of the appeal in its entirety. Why would this imply anything other than maintenance of the previous requests?
– “they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld” – the proprietor explained why the decision should have been upheld. There was no decision on the lower ranking requests – there was nothing to reverse, amend or uphold, so why should those requests be commented upon.
– “and should specify expressly all the requests, facts, objections, arguments and evidence relied on” – what does “should” mean? Why does it not say “shall” like the previous requirement? Did the legislator intend something different? In the absence of an explicit withdrawal of a request, why does failure to do something they “should” have done lead to the default position being to assume the proprietor has explicit withdrawn requests which they actively filed and on which no decision was ever taken and which are not the subject of the appeal?
@ Anon,
The point raised by yourself and Extraneous attorney puts the finger on more general problem with the RPBA. It is the problem of hierarchy of norms.
The RPBA is neither part of the EPC nor of its Implementing Regulations. It is no more than an ancillary regulation to the Implementing Rules of the EPC.
According to R 12a-d, the whole structure of the BA has been changed in 2016 in order to “increase the perception of independence of the boards”.
According to R12c, the RPBA are decided by the “Boards of Appeal Committee”, and not any longer by the boards themselves.
Art 164(2) says the following: “In case of conflict between the provisions of this Convention and those of the Implementing Regulations, the provisions of this Convention shall prevail”.
One could therefore consider that the RPBA should not contradict the EPC itself, and certainly not the notion of party disposition under Art 113(2).
On the other hand, a very legalistic view could be to say that by not filing AR3-9 in reply to the opponent’s SGA, the proprietor did not submit a text he agreed with.
We should not forget that R 12a-d and the RPBA are the result of a policy decision of the upper management of the EPO at the time. The upper management was dissatisfied with the way the boards handled the situation of the board member Mr C.
Challenging the RPBA is actually opening a can of worms. After all, the introduction of R 12a-c did not improve the independence of the boards. The whole system of the BA should be amended so that they would gain a real independence as it was proposed by the EPO in 2004-2005.
However, it would need a new Diplomatic Conference, which is actually wishful thinking, alone due to the fact that Art 4a EPC 2000 is a dead borne ruling.