EP 2 395 902 B1 relates to a direct drive endoscopy system.
Brief outline of the case
The OD held that claim 1 as granted was lacking N over E3=WO 2007/002545.
The OP decided maintenance according to AR3.
Both proprietor and opponent appealed.
The board held that claim 1 as granted lacked N over E3.
The same applied to AR1-3.
The patent was maintained according to AR4.
In this publication, the topic will relate to the admissibility of AR maintained in opposition=carry-over requests.
Admissibility of AR4 – The proprietor’s point of view
AR 4 was identical to AR5 filed in opposition. This request had been admissibly raised and maintained throughout the opposition proceedings.
This request therefore formed part of the appeal proceedings and the board had no power to disregard it.
Admissibility of AR4 – The opponent’s point of view
AR4 was not dealt with in the decision under appeal and had not been explicitly admitted by the OD. The proprietor had not actively and expressly confirmed at the end of the OP before the OD that it maintained this request.
In these circumstances, in accordance with T 1135/22 and T 246/22, AR 4 was not part of the appeal proceedings and should not be admitted by the board.
Admissibility of AR4 – The board’s decision
Since it decided to maintain the contested patent as amended on the basis of a higher-ranking request, it was not necessary for the OD to deal with AR 5, and the decision under appeal is not based on it. This request is therefore a so-called “carry-over request”.
As discussed in T 1135/22, Reasons 4, such a request is not automatically part of the appeal proceedings. Rather, it must be assessed whether this request was, within the meaning of Art 12(4) RPBA, admissibly raised and maintained in the proceedings leading to the decision under appeal.
The opponent did not dispute that AR 5 was admissibly raised. The board had no doubt that it was. The only point of contention was whether it was effectively maintained.
In T 246/22, the deciding board based its conclusion as to the maintenance in the opposition proceedings of the requests in question on the fact that, according to the minutes of the OP before the OD, the proprietor had expressly maintained those requests at the end of the OP, namely “in the time between the announcement of the conclusion that a higher-ranking claim request was found allowable and the announcement of the decision”.
The deciding board thus concluded that those requests had been “manifestly maintained until the opposition division took its decision”.
In the present case, there was no such express declaration by the proprietor at the final stage of the opposition proceedings that AR5 was maintained. The minutes of the OP before the OP show that the proprietor confirmed the maintenance of AR5 at the beginning of the OP.
The present board considered that, in the absence of any subsequent active withdrawal of this request, as is clear from the minutes, the request was maintained throughout the OP up until the OD took its decision.
This conclusion follows from what is already apparent from the minutes, which form part of the basis of the appeal proceedings under Art 12(1,a) RPBA, and is also in line with the conclusion of the deciding board in T 246/22.
This conclusion is not inconsistent with T 1135/22 either. In that case, the AR in question were considered not to meet the “admissibly raised” criterion, as opposed to the “maintained” criterion, which is the issue to be assessed in the present case.
The Board therefore concluded that AR 4 was admissibly raised and maintained in the opposition proceedings, and that the board had no power to disregard it in the appeal proceedings under Art 12(4) RPBA.
Comments
Decisions over carry-over requests have been subject to various comments in the present blog.
The procedural case law about carry-over requests is however not coherent.
The present decision is one more of them, and refers to T 246/22, commented in this blog and T 1135/22 also commented in this blog.
At least the present decision represents an improvement as the board considered that if the proprietor maintains his AR at the beginning of the OP before the OD, and no declaration to the contrary is to be found in the minutes of the OP before the OD, then the AR can be considered maintained in the meaning of Art 12(4) RPBA.
To be “admissibly raised”, the AR must have been timely filed in opposition and substantiated. It is thus not enough to have filed and maintained them during the OP before the OD.
AR timely filed in opposition, but without substantiation, cannot be considered as having been “admissibly raised”. In such a situation, when the substantiation is delivered during OP, AR are actually late filed.
Key message to proprietors
In order to be safe and to insure admissibility of carry over requests in appeal, the proprietor should
- timely file and substantiate AR in opposition and
- positively declare at the end of the OP before the OD that all AR are maintained
- although it should not be necessary, it is also better to copy-paste in appeal the substantiation of the AR filed in opposition.
Then, a board can neither invoke Art 12(4) RPBA nor Art 12(3+5) RPBA for not admitting carry-over requests in appeal.
It does not change the fact, that some boards consider carry-over requests as not representing an amendment in the meaning of Art 12(4).
Provided the AR were timely filed and substantiated, this is the most pragmatic approach for boards. Why can this way of handling carry-over requests not be adopted by all the boards?
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