EP 3 039 186 B1 relates to “Efficiently producible cigarette for self-extinguishing cigarettes.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board decided that the deletion of a not-optional feature in claim 1 as granted infringed Art 123(2).
The board decided maintenance according to the claims set of AR1 and remitted, inter alia, to adapt the description. AR1 overcame the objection under Art 123(2).
The case in interesting in that AR1 was a request not dealt with in opposition as the DO rejected the opposition.
The board’s decision on the admissibility of AR1
AR 1 was already filed in first instance within the time limit for filing new documents under R 116. Since the opposition was rejected, no decision was taken on AR1 in first instance.
Since the subject matter of the appeal is only the contested decision, requests filed in first instance on which no decision has been taken are not automatically part of the appeal proceedings and there is no reason for the appellant/opponent to deal with such requests in the statement of grounds of appeal, even if it has not yet taken a position on them in first instance.
If, in appeal proceedings, the proprietor resubmits requests already filed in first instance, but not decided, i.e. carry-over requests, with the statement of grounds of appeal, they are not to be regarded as amendments under Art 12(4) RPBA, if they were “admissibly raised and maintained” at first instance. If this is not the case, they are amendments, the admission of which is at the discretion of the board.
The present board found the criterion “admissibly raised” as being unclear and not clarified by either the English or the French versions of the text of the EPC.
The fact that the OD has only limited discretionary power in admitting requests, which can only be reviewed by a board, makes it seem as if the board has to assess something ex ante under Art 12(4) RPBA which it can only review ex post with regard to the correct exercise of its discretion.
For the board, “admissibly raised”’ would have to be interpreted as “could have been admitted by the OD”.
Whether something has been “admissibly raised” can only be established if the OD has taken a decision on it, which is not the case here.
It is not surprising that case law has interpreted the above criterion in different ways,
- either as “before the time limit referred to in R 116(1)”, cf. T 42/20 Reasons 4.2;
- T 221/20, Reasons 2.4 and T 738/20, Reasons 5.6, as “in accordance with the Guidelines in force at the time of the opposition decision”, cf. T 364/20, headnote; T 446/22, Reasons 3.4, 3.7; T 731/22, Reasons 2.2; T 924/22, Reasons 4,
- or independently of the Guidelines, T 246/22, Reasons 4.14 and
- T 506/23, Reasons 8.3: it was sufficient if the requests could have been admitted; T 1135/22, Reasons 5.3: burden of proof on the patent proprietor.
The above criteria are helpful indications for the question, which the board considered to be decisive, as to whether the proprietor, or another party to the proceedings, could reasonably have assumed that its requests would be admitted when filing those during opposition proceedings.
After all, a party cannot foresee whether requests or other documents will actually be relevant to the decision. However, a party can do everything in its power to harbour the well-founded and justified expectation that a request or document will be admitted if this would be relevant to the decision.
The board therefore interpreted the term “admissibly raised” in the sense of “submitted in the reasonable expectation that it will be admitted” and understood the provision as an expression of the principle of legitimate expectations applicable to all proceedings before the EPO, cf. G 5/88, Reasons 3.2-3.4.
In the present case, the proprietor filed and substantiated its AR during opposition proceedings within the time limit laid down in R 116(1).
The proprietor therefore had a legitimate expectation that these AR would be admitted to the proceedings if necessary. The board saw no indications that the OD would have exercised its discretion in any other way, e.g. by failing to state reasons, cf. T 246/22, headnote, by an excessive number or by divergent requests, on the latter, see T 1800/20, headnote, at least with regard to AR1 1.
In the view of the board, AR1 was therefore “admissibly raised” in first instance.
The board added, that AR1 was filed again, together with others, in the reply to the statement of grounds of appeal. In its statement of grounds, the patent proprietor made a general reference to its submissions at first instance.
In the board’s view, this is also not objectionable. Since the opponent did not deal with the AR in its statement of grounds of appeal, there was no reason for the patent proprietor to make a new submission.
It is also not necessary to repeat by copying the reasoning submitted in the opposition proceedings, which remained unchallenged, in the appeal proceedings. This kind of painstaking work does not advance the finding of law, cf. T 108/20, Reasons 4.2.2.
The board therefore came to the conclusion that the request was admissibly raised and maintained and thus did not constitute an amendment within the meaning of Art 12(4) RPBA.
The opponent still argued that the request should not be admitted due to a lack of convergence, but this argument would at most be relevant for the lower-ranking AR, but not for AR1.
Comments
The present decision deserves praise. It is to be hoped that it wll be followed by other boards.
It is a decision in which the board made the effort to look at what happened in firt instance and did not decide on purely formal grounds.
The added value of this decision is to be seen in the fact that the present board brought forward the notion of legitimate expectation of the proprietor when it timely filed and substantiated its AR in opposition.
The present decision is in clear contrast with T 664/20, commented on this blog, in which the board held that the opponent should have objected and filed the corresponding evidence anew for all the carry-over requests, even if the opponent could not know which AR would be kept by the proprietor.
In T 224/22, commented in this blog, the board had already decided that boards do not have the power to disregard in appeal submissions correctly admitted by an OD in exercise of its discretion. In T 224/22, objections of the opponent were not admittd as not filed at the earliest opportunity, i.e. at the moment the opponent knew which AR were maintained by the proprietor.
The present board also made clear that a mere copy-paste of the substantiation of the AR timely filed in opposition does not advance the finding of law.
Carry-over requests have been subject to a series of publications on the present blog. Just enter “carry-over requests” and the list will be quite long.
Other decisions in which no fuss was made about carry-over requests are T 924/22, commented on this blog, T 1175/22, also commented on this blog, and T 709/22, as well commented on this blog. The same applies to T 42/20 (Reasons 4.2)and T 476/21 (Reasons 7.1 to 7.3).
Among decisions which made a fuss about carry-over requests, it is possible to quote T 1135/22, commented in this blog, T 1690/22, also commented in this blog and T 246/22, as well commented in this blog,
In T 1128/21, commented on this blog, after rejection of the opposition, the board held that claim 1 as granted infringed Art 123(2). Carry-over requests AR1-3 were not admitted under Art 12(3 and 5) RPBA for lack of substantiation.
If requests are timely filed in opposition, but without substantition, those requests should not be considered as carry-over requests.
Convergent/divergent requests
In the presence of numerous and various attacks by the opponent, the proprietor should be free to file divergent requests in order to reply to the various attacks.
In T 1261/11, Reasons 1.2, the board held that, according to the established case law of the Boards of Appeal, the convergence criterion applies almost exclusively when assessing the admissibility of late-filed applications under Art 13(1) RPBA07.
In T 649/14, Reasons 8.4, the board held that the fact that AR 8 may have been convergent with other requests on file at the time of filing, is not relevant. Convergency of the requests is not bound to the date of filing of a request.
Although those two decisions were taken under the RPBA07, T 1261/11 should be the decision to follow and not T 649/14.
If carry-over requests are divergent, but have been “admissibly raised and maintained“, i.e. within the time limit under R 116(1), the board should simply remit the case to the OD for further prosecution.
By doing so, the board would abide by Art 12(2) RPBA, but give the proprietor the possibility to defend its patent as he could have done in first instance, should the divergent requests would have been examined. At the same time, the legitimate expectations brought forward by the present board, would have been taken care of.
Carry-over objections
The present decision and the notion of legitimate expectations applies mutatis mutandis to evidence and objections timely raised and substantiated by the opponent, i.e. at least within the 9 months time limit to file an opposition.
Should some objections not have been dealt with by the OD as others were considered more relevant, their admission should be dealt the same way as that of carry-over requests.
Comments
Leave a comment