The patent relates to an electric toothbrush.
Brief outline of the procedure
The patent was maintained according to an AR filed late during during the OP before the OD.
The proprietor and the opponent appealed this decision.
Late filed objections under Art 84 were admitted under Art 12(6) RPBA20.
At the end of the OP before the board, the proprietor withdrew his appeal.
He could thus primarily only defend the patent as maintained.
The board held that the independent claim as maintained lacked clarity and could not allow maintenance of the patent in amended form.
As this also applied to the AR in appeal, the patent was revoked.
The lack of clarity relates to feature 1.13b which defines the ratio of two distances, the latter being smaller than the former by at least a factor of 10.
The case is interesting in view of the admission of objections of lack of clarity only filed when entering appeal.
The opponent’s position
The clarity objection was directed against feature 1.13b which had been included in the claim from the description for the first time on the afternoon of the OP before the OD. This circumstance justified admitting the objection raised for the first time in the statement of grounds of appeal.
The proprietor’s position
For the proprietor, feature 1.13b was clear
The clarity objection against feature 1.13b raised for the first time in the statement of grounds of appeal was not to be admitted to the proceedings pursuant to Art 12(4) and (6) RPBA20.
The proprietor argued that the objection of lack of clarity could and should have already been submitted in the opposition proceedings. The AR 1a, 1b and 2a filed during the OP before the OD already contained feature 1.13b.
The opponent had therefore already had the opportunity to raise the objection during the opposition proceedings. According to the minutes of the OP, point 6.4) it had even conceded that AR 2a met the requirements of Art 84.
Note this was not the last AR!
The board’s position
During the OP before the OD, the proprietor did not defend any of the AR filed in the written procedure. After the MR had been dropped due to an inadmissible intermediate generalisation – as already outlined in the OD’s preliminary opinion – the proprietor filed new AR.
AR 1a, 1b and 2a as well as the last AR (19:41) were only filed in the afternoon of the OP before the OD and each comprised features taken from the description. The opponent had about half an hour each to deal with AR 1a, 1b and 2a.
The board is of the opinion that it might have been possible to identify a lack of clarity in this time frame.
However, in view of the tight time frame, this could not be required of the opponent, Since the amendments were taken from the description and were still admitted into the proceedings at a very late stage in the opposition proceedings, it is in accordance with the requirement of fairness to still admit new objections to the amended claims if these objections are raised at the first opportunity in the appeal proceedings.
This applies all the more since in the present case the objection of lack of clarity of feature 1.13b, raised for the first time with the statement of grounds of appeal, is highly relevant.
The board therefore exercised its discretion under Art 12(6) RPBA20 to admit this objection into the proceedings.
For the board, the ratio indicated in feature 1.13b cannot be unambiguously determined with the aid of the patent in suit. It can therefore also not be clearly determined whether an existing electric toothbrush falls within the scope of the claim or not.
The patent could thus not be maintained as amended. As the same applied to the AR on file, the patent was thus revoked.
Requests filed during OP are not requests filed within the time limit under R 116(1). They are thus not automatically admissible.
The is a long line of case law according to which requests filed during OP, in which claims have been limited by taking elements from the description or the drawings are requests in which the essence of the invention is shifted, are not admissible
See for example T 1048/99, T 120/03, T 358/06, T 1763/07, T 2128/10, T 1659/14 or T 2370/16.
If features taken from the description are filed within the time limit under R 116, corresponding independent claims are in principle admissible, provided they are properly substantiated, e.g. T 926/17.
In the present case, all the AR, comprising features from the description, were filed once the proprietor had realised that, as foreseen in the annex to the summons, the MR was not allowable.
At least one of those later filed AR could have been filed by the proprietor after receipt of the summons to OP before the OD. It was thus quite generous from the OD to admit a plurality of AR comprising features from the description.
Pushing the opponent to decide upon the requests in such a short time was bordering on a procedural violation. Normally in view of new submissions an OD has the duty to inquire about the time needed by the other party to analyse this submission. When reopening the OP, the OD has then the duty to enquire the other party had enough time to analyse the latest submission. If it is not possible for the other party to analyse a late filed submission during the OP, it might even be necessary to postpone the OP. All tose actions should be taken up in the minutes.
It was clear that in view of the time spent on the file the OD wanted to get read of the file and hence did not really give much time to the opponent to react.
The board found differently and rightly so.
On the procedure
The patent which is a divisional of EP 07725049/2 066 260 should not have been granted in the form it was as the independent claim as granted was not supported by the parent application and the divisional.
The present decision of the OD is one more of those set aside by a board. More than 50% of decisions taken by ODs have been set aside since the beginning of 2023.