The opposition to EP 2 632 399 was rejected by the OD.
In appeal the BA held that claim 1 as granted as well as AR 1, 3, 3a, 4, 5, 6 were lacking N over D19=US-B-6588428 (not in ISR) or D18=US-A-4143656 (not in ISR). The ISR contained only two A documents.
The proprietor informed the Board that it would not be attending OP shortly before the scheduled date. Nevertheless, since the respondent did not withdraw its request for oral proceedings, it could still have attended.
In the present case, AR 7 and 8 did not comprise an adapted description.
The Board’s position
Due to contradictions between the claims and the description, the BA held that the claims of AR 7 and 8 are not supported by the description as required by Art 84.
In point 12.3 of the reasons, the Board referred to the Headnote of T 986/00, published in the Official Journal 2003, page 554:
“According to Article 113(2) EPC, the European Patent Office shall consider and decide upon a European patent only in the text submitted to it, or agreed, by the proprietor of the patent. A proprietor who chooses not to be represented at oral proceedings should ensure that he has filed all amendments he wishes to be considered before the oral proceedings.”
Furthermore, according to established case law summarised in CLB V.A.4.5.3(a): “A patent proprietor who prior to oral proceedings files amended claims but no description adapted thereto, and who is not represented at the oral proceedings, cannot ‘rely on’ the proceedings being continued in writing or the case being remitted to the department of first instance for adaptation of the description (T 181/02, T 109/02, T 651/08, T 776/05, T 2294/08).
Hence, a proprietor should make sure, that all the required documents, including a description adapted to the claims, on the basis of which the maintenance of the patent could be ordered are on file, so that a decision can be taken by the board at the end of the oral proceedings if a given request is found allowable (T 986/00, OJ 2003, 554; T 181/02; T 109/02; T 776/05; T 651/08).”
The Board agreed with this statement.
In the case in hand, the independent claims of auxiliary requests 7 and 8 contained substantial amendments compared with the claims as granted. Additionally, the parties knew that at the oral proceedings of 9 May 2022 – which the respondent did not attend – only auxiliary requests 7 and 8 would be dealt with.
It can therefore be assumed that the respondent was aware of the fact that the description would have to be adapted to the amended claims if one of these requests were found to be allowable.
Since no adapted description was filed in support of the independent claims of AR 7 and 8 (Art 84), the patent could not be maintained on the basis of these requests.
A new objection of the opponent after the summons
The objection concerning the lack of an adapted description was raised for the first time at the oral proceedings by the opponent. The BA held that the objection represents an amendment to the opponent’s case under Art 13(2) RPBA20.
In this respect the Board noted that, according to established practice, if an auxiliary request turns out to be allowable during the oral proceedings before the BA, its description is normally amended during the oral proceedings before the Board or in separate proceedings once the case has been remitted to the department of first instance. Furthermore, when amended descriptions for auxiliary requests are filed in advance of oral proceedings, they are usually not discussed until the claims of a specific request are found to be allowable during the oral proceedings.
Thus, in this case, the opponent/appellant had no reason to comment on the description on file before the oral proceedings.
This applies even though the proprietor/respondent was not present at the oral proceedings before the Board.
The opponent did not know for sure that the maintenance of the patent would have to be decided on the basis of one of auxiliary requests 7 or 8 in conjunction with the description of the patent as granted until the very day of the oral proceedings when the respondent was not present. It was under these circumstances that the objection of lack of support in the description was raised.
The BA considered that an appellant cannot be expected to anticipate this course of proceedings and to react by raising objections in advance. Instead, this represents an exceptional circumstance as per Art 13(2) RPBA20 and thus allows for objections on that basis.
Therefore, the Board admitted the appellant’s objection under Art 84 into the proceedings.
Outcome of the proceedings
In the absence of the proprietor the patent was revoked for lack of an adapted description.
We have here a further decision insisting upon the necessity of adapting the description to the claims.
Without saying it, the present BA did not agree with T 19898/18 and T 1444/20.
It is interesting to note that the BA admitted the objection raised under Art 84 by the opponent during OP of the absence of support of the claims.
This decision confirms further decisions of the same kind.
In the absence of a complete set of documents, either
– the application is rejected T 484/12, T 893/01, T 109/02
– the patent is revoked T1024/18, T 725/00, T 986/00
However, there is a contrary decision in which the board remitted in spite of the absence of the applicant at the oral proceedings, see T 256/10.
Not turning up at OP always entails a risk and merely filing AR is not enough for the applicant/proprietor to save its application/patent.
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