EP 3 476 654 B1 relates to a holding device for a motor vehicle, in particular a holding device for a camera for use on commercial vehicles, and a camera monitor system with such a holding device. The camera replaces the rearview mirror.
Brief outline of the case
The patent was maintained according a AR1.
In its decision the OD held that the MR lacked N, but that the claimed invention was sufficiently disclosed in both the MR and AR1.
The proprietor and both opponents appealed the decision.
The board held that the claimed invention in the MR was not sufficiently disclosed. The same objection applied to all AR on file, and the patent was revoked.
We will discuss the admissibility of the objection of lack of sufficiency raised by Opponent 2 when entering appeal.
Opponent 2’s point of view
The line of argument put forward in relation to specific features (M1.8.1 and 1.8.2) with regard to insufficient disclosure had already been presented in the proceedings before the OD.
Those had only been concretised and further developed in the statement of grounds of appeal and thus did not constitute a new argument.
The proprietor’s point of view
Opponent 2’s submissions on features 1.8.1 and 1.8.2 were late, as they had only been submitted with the statement of grounds of appeal and had not – as required – already been submitted in opposition.
Moreover, this new line of argument was not labelled as such. In this respect, this argument was also not admissible in the proceedings.
In its response to the appeal of opponent 2, the proprietor replied in substance to the objection of lack of sufficiency.
The proprietor requested the non-admissibility of the objection of lack of sufficiency after having received the board’s communication under Art 15(1) RPBA.
The board’s decision
Opponent 2’s objections relating to a further lack of disclosure in connection with features 1.8.1 and 1.8.2 are admitted into the proceedings under Art 12(4) RPBA.
In this respect, it can be left open whether the deficiency raised in opponent 2’s statement of grounds of appeal actually constitutes a concretisation of what was already submitted in the proceedings before the OD, as opponent 2 claims.
The board observed that, in its response to the appeal, the proprietor countered this objection in substance.
In its communication under Art 15(1) RPBA, the board took up the arguments of the parties and expressed a preliminary opinion.
In a reaction to this communication, the proprietor criticised the arguments of opponent 2 as having been submitted late and argued that they had only been submitted for the first time with the statement of grounds of appeal.
In this respect, the board firstly noted that the proprietor’s objection regarding the late submission was raised for the first time after the Board’s communication and is thus in principle not taken into account under Art 13(2) RPBA, since the proprietor has not put forward any valid grounds for the existence of exceptional circumstances.
On the other hand, the proprietor – before the board issued the decision – submitted its defence without raising any objection as to its lateness.
The board therefore had to assume that the discussion on this point was in the interest of all parties involved.
Therefore, the fact that opponent 2 did not characterise this argument as an amendment – as required by Art 12(4) RPBA in its statement of grounds of appeal, does not constitute a reason for not admitting this argument into the proceedings.
The board saw in Art 12(4) RPBA an organising function which is intended to facilitate the smooth processing of the respective appeal submissions. This has been done here anyway.
The board thus exercised its discretion granted in Art 12 (4) RPBA and admitted the objection of opponent 2 into the proceedings.
Since the board also considered this point to be highly relevant for the existence or non-existence of the European patent, this aspect was reflected in the preliminary opinion of the board in the communication under Art 15(1) RPBA.
Comments
The present decision shows that replying in substance to an allegedly late objection, renders the latter de facto admissible.
The present decision applied in appeal, but applies mutatis mutandis in opposition.
In T 68/02, Reasons 4.2, the board decided that a late filed document which has been discussed in writing before the OP before the OD cannot be deemed inadmissible at the opening of the latter.
In T 780/05, Reasons 3, the board decided that a late filed document which was discussed again in appeal and also commented upon by the proprietor was admissible. The proprietor had sufficient opportunity to deal with the disclosure of this document.
Whether boards will adopt this position of admitting a late filed submission, but discussed in substance, irrespective of the moment when the objection of late filing has been raised, remains to be seen, as the discretion of the boards in procedural matters is not applied consistently.
At least, a highly relevant submission should be admitted in appeal, as the boards should not, in spite of the RPBA, maintain patents which have no raison d’être.
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