CASELAW - reviews of EPO Boards of Appeal decisions

T 1332/19 – On the importance of R 76(2,c) for the admissibility of the opposition – No global reference to or admission of what happened in examination

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Brief outline of the case

The ESR mentioned inter alia E1=Nexans: “Nexans holt Gigabit-Ethernet an den Arbeitsplatz”, 10. March 2008, XP002595111 | and E5=DAFÜR Gesellschaft für IT Systemtechnik: “ISABEL 1000TP – Einbau Switch für Kabelkanal oder Unterflur”, 6. Mai 2008, XP002595110 as highly relevant.

The OD revoked the patent. For the OD the opposition was admissible and claim 1 as granted (MR) lacked N. The same applied to AR6 lacked N over the same piece of prior art. AR 1-5, 7 and 8 were not admitted.

In the communication annexed to the summons, the board agreed that claim 1 as granted was lacking N and AR 1-8 did not allow maintenance in amended form.

After OP the board decided that the opposition was not admissible.

The reasons for the OD to consider the opposition admissible

In the contested decision, the OD was of the opinion that the “overall or global treatment of the preamble of claim” could be accepted, since “the relevant documents had already been discussed in detail during the substantive examination proceedings”. Therefore, the opposition was admissible.

The proprietors’ argumentation

The proprietors argued that the grounds of opposition did not explain how the cited documents disclosed the features of the preamble of claim 1 and hence the opposition was not admissible. It also referred to T 222/85.

The proprietors considered that, in contrast, document E1 would indeed have required a detailed discussion already on the part of the opponent in the grounds of opposition, as well as an interpretation of the features of the claim wording to be given. E1 disclosed various unrelated embodiments which made it difficult to understand which one was considered as CPA.

The proprietors further argued that E1 would not have prevented grant as it was only the CPA. Therefore, the opponent should have explained in more detail why a different result had to be reached in the opposition proceedings.

The opponent’s point of view

In particular, document E1 (as document D2) had already been “largely discussed with the ED” and had also served as the basis for the two-part form of claim 1. In the course of this, the proprietors had admitted that the preamble of claim 1 was known from document E1. Since the grounds of opposition were based on this concurrent finding of the ED and the proprietor, they fulfilled the criteria set out in the case law.

The opponent emphasised that, according to decisions T 222/85 and T 2/89, the statement of grounds for opposition should enable the patent proprietor and the OD to understand the objections raised without undue effort. According to decisions T 199/92 and T 934/99, a certain degree of interpretation was reasonable. According to decisions T 204/91 and T 1069/96, the statement of reasons did not have to present the case “in its entirety”, the objection only had to be clearly recognisable.

The board’s position in respect of the lack of N

The board noted that “During the examination procedure of the opposed patent, the proprietors recognized in their letter dated July 8, 2013 that all the features of the preamble of claim 1 are known from E1.

Indeed, it is clear that E1 discloses an elongate cable duct with a connection module (switch) installed therein, having transfer interfaces for connecting clients to a local network as well as data inputs and outputs (see especially pages 1-7 of E1).”

In the same letter the then applicants said: “The preamble of new claim 1 […] can be considered as known from document D2.”

From the decisions quoted by the parties, the board summarised the established requirements for an admissible opposition as follows:

  • The grounds for the objections to the patent must be objectively comprehensible without the need for own investigations. They must enable the patent proprietor to respond to them with arguments and amendments to the claims.
  • Thus, an opposition can only be considered admissible if both criteria for at least one ground for opposition are met.

Following the proprietors’ arguments, the board noted that in the statement of grounds for opposition, the opponent merely referred to the proprietors’ (then applicants’) letter of 8 July 2013. However, this letter does not contain more than the statement that the features of the generic term are known from document E1 (referred to as D2 in the examination proceedings).

However, it is not clear from the cited submission how the claim features were assigned to the disclosures of this document at the time. Due to the overall reference to document E1, it cannot be objectively determined to which of the various embodiments the statement of grounds of opposition refers. It is therefore not possible to determine whether document E1 also discloses the claim features in the claimed combination, i.e. whether the objection of lack of novelty is justified.

In this context, the board referred to the table in paragraph 16.1 of the contested decision, in which quite different passages of document E1 are cited with regard to the characteristics of the preamble (F1 to F7).

On the other hand, the Board was not convinced by the opponent’s arguments. Document E1 (at the time document D2) was not really discussed during the examination procedure. Rather, the substantive examination was based on another document (D1, now E5). Document E1 was merely mentioned. In particular, there is no analysis of the characteristics of this document in the ED’s decisions.

For the board, the two-part wording of claim 1 under R 43(1) merely reflects the view of the proprietors (then applicants) at the time of drafting. In particular, the two-part claim form is not an irrevocable admission that the features of the preamble are known from a particular cited prior art. Therefore, the argument in this respect is also not convincing.

Consequently, the board concluded that the opposition ground of lack of novelty is insufficiently substantiated.

The board’s position in respect of the lack of IS

Also with regard to document E5, which was the CPA on which the objection under Art 56 was based, it was pointed out in the grounds of opposition that it had been recognised in the examination proceedings that all the features of the preamble of claim 1 were known from document E5. Accordingly, the objection of insufficient substantiation raised by the proprietors also related to the objection based on document E5.

In the contested decision and in the grounds of appeal, the objection based on document E5 was not mentioned. In its response (page 2, middle), the opponent mentioned document E5, but only made an overall reference to the opposition statement and to the examination procedure.

The ground of lack of IS was therefore as well not properly substantiated.

General conclusion of the board

For the board, Art 12(3) RPBA20 obliges the respondent/opponent to explain why it considers that the appeal is not well-founded and, in particular, why the contested decision should be upheld despite the arguments of the appellants.

The overall references made cannot provide a basis for the board to invalidate the appellants’ position so that the opposition is inadmissible under Rule 76(1) and (2,c).

As neither the lack of N nor the lack of IS were properly substantiated the opposition was not admissible and the revocation set aside.

Comments

The decision is interesting as it reminds us that the opposition procedure is not the continuation of the examination procedure.

Every objection in opposition has to be formulated such that the proprietor and the OD can draw conclusions without further investigations.

Global references to previous objections and findings in examination do not fulfil these requirements. 

There is also a line of case law making clear that reference during appeal to submissions appeal to submissions made in opposition are not considered as proper substantiation of the appeal.

Here it was the references to the examination procedure by the opponent, accepted by the OD, which were insufficient in view of their global character.

It is understandable that the OD was happy to take over the position of the opponent. By doing so it saved itself a lot of work. But the opposition was therefore not admissible.

It is however difficult to follow the board when it considers that the two-part claim form is not an irrevocable admission that the features of the preamble are known from a particular cited prior art. Why are the US applicants so much against claims in two-part form? In the US those claims are known as “Jepson claims”.

It can be agreed that the scope of protection of the claim is based on all the features of the claim, also in the US, but if the two-part form is not correct then it should not be used. This entails however a better definition of what is known from the CPA.

Such a definition would be more detailed and could be copied and pasted in the grounds of opposition. This is only possible if the ED has insisted upon a proper indication of what is known in the CPA. Compare Guidelines F-IV, 2.2 and 2.3.2.

According to the present decision a global reference to the preamble of a claim is not sufficient in opposition if the admission of the CPA is based on the preamble of a claim.

It has to be shown precisely where in the CPA features quoted in the preamble are to be found in the latter. 

https://www.epo.org/law-practice/case-law-appeals/recent/t181332du1.html

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