EP 3 111 380 B1 relates to processing signals in a quantum computing system.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The OD did not admit the ground of opposition of lack of N in the procedure.
The board held that the OD had not exercised its discretion correctly and admitted the objection of lack of N in the procedure.
The board decided that N was given, but claim 1 as granted lacked IS over D1 the only X document cited in the SESR.
The patent could be maintained according to AR1. The case was remitted to the OD to maintain the patent according to AR1, and a description to be adapted thereto.
The OD’s decision on the admissibility of the lack of N
The OD did not admit the ground of lack of N because it was late filed, i.e. after the opposition period, was not prima facie convincing, and its admittance would run counter to procedural economy.
The opponent’s point of view on the admissibility of the lack of N
The opponent argued that the OD had committed a procedural violation.
The OD had not, during the OP or in the decision, carried out any prima facie assessment of the N objection, in particular regarding whether feature 1.6 was disclosed in D1.
During the OP before the board, the opponent further argued that the OD did not even have any discretion not to discuss N. Which features were disclosed by D1 was anyway a necessary discussion under Art 56. The opponent made reference to G 7/95, as referred to by the board in its preliminary opinion.
The proprietor’s point of view on the admissibility of the lack of N
The proprietor argued that the OD had not committed a procedural violation. It had taken into account the opponent’s written submissions, as was visible from the minutes of the OP.
It had also clearly carried out a prima facie assessment: the OD saw no demultiplexer device in D1. There was no need to say more. The board should therefore not admit submissions related to this ground under Art 12(6) RPBA.
Further, such submissions are also not to be admitted under Art 12(4) RPBA in the interest of procedural economy. In inter partes proceedings as the present one, the board had only limited discretion to admit new submissions.
The board’s decision
Lack of N was indeed a “fresh”, i.e. late filed ground of opposition, so that the OD had discretion not to admit it. According to G 10/91, Reasons 16 and headnote 2, the OD should only consider “fresh grounds” which, prima facie, would seem to prejudice the maintenance of the European patent.
However, the OD did not provide reasons as to why the reading of D1 by the opponent was prima facie not convincing. Such reasons are required under R 111(2). They may be short but must show that the parties’ arguments have been considered. So the opponent was right that a procedural violation occurred.
Furthermore, the analysis of N is indeed a prerequisite for the analysis of IS. Even if N as a ground for opposition is not formally admitted, the patent may still be revoked for lack of IS if no difference to the prior art can be identified, see G 7/95, reasons 7 and 7.2. In the board’s view, this should have been factored in by the OD when exercising its discretion.
Therefore, the board considered that the OD erred in its use of discretion. It follows that Art 12(6) RPBA, does not preclude admittance of these submissions.
The board exercised its discretion under Art 12(4) RPBA to admit the opponent’s submissions regarding the question whether feature 1.6 is known from D1 as part of the opponent’s IS objection vis-à-vis D1 for two reasons:
– It is a fundamental necessity that, to establish IS, one must identify which features are new, and
– prima facie the opponent’s argument had merit: a demultiplexing function appears to be present in D1.
On the patentability
The board decided that claim 1 as granted was novel over D1, but lacked IS.
The board was of the opinion that the use of multiplexing and demultiplexing as claimed is obvious in D1 in order to implement the wired connection for read-out of the qubit states.
AR1 was admissibly raised and maintained, and allowed maintenance of the patent in amended form.
Comments
The present decision makes once more clear that when assessing IS it is necessary to determine what is known in the CPA. Without this analysis, any assessment of IS becomes pointless. Conversely, when N is given, it is legitimate to check whether IS is given when the document used to show lack of N becomes the CPA., see T 131/01.
In T 1042/18, commented in the present blog, the situation was slightly different, but the result was neither correct nor acceptable. In T 1042/18, board 3.2.02 considered during OP that N was given, but the change during OP from an objection of lack of N to an objection of lack of IS was not admissible under Art 13(2) RPBA as it represented an amendment of the opponent’s case. In T 1042/18, the board considered that G 7/95 was superseded by Art 13(2) RPBA. I maintain that this was a petty interpretation of Art 13(2) RPBA. The RPBA as ancillary rules, cannot stand over decisions of the EBA.
In the present case, the ground of lack of IS was present from the beginning, but the board nevertheless admitted the late filed objection of lack of N, then decided that N was given, but not IS. It’s attitude was completely different from that of the board in T 1042/18, and it did not refuse, for flimsy reasons, to do its job properly, and only maintained a patent in a form which was justified.
The reference in the present decision to G 7/95, that before deciding on IS, it has to be decided that N has to be checked is to be welcomed. This allowed, inter alia, to admit the late file objection of lack of N.
If no difference to the prior art can be identified, G 7/95, reasons 7 and 7.2., it can be considered that, although deciding “officially” that there was a lack of IS, the EBA came to the conclusion “officiously” that there was actually a lack of N. The refusal of board 3.2.02 to go from a lack of N to a lack of IS, and thereby going against T 131/01 without saying thi clearly is thus not acceptable.
The present decision is also laudable that it made clear that the AR1 was admissibly raised and maintained and that its admissibility was therefore not at stake.
It is manifest that the OD should have at least given reasons for not admitting the late filed objection of lack of N. Production pressure might be an explanation, but not an excuse.
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