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T 1671/18 – Deletion of alternatives (?) – New objections based on a document already admitted in the procedure

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Brief outline of the procedure

The OD decided to reject the opposition.

In its preliminary opinion, the Board expressed the view that the subject-matter of claim 1 of the MR and AR I appeared to lack novelty.

In its decision, the board held that claim 1 as granted lacked N over A1=EP 2 142 232, published as WO 2008/127991, prior art under Art 54(3) which was no found during examination. The same applied to AR I.

Admissibility of AR1a

According to the board when comparing claim 1 of AR I, claim 1 of AR Ia had been amended by deleting alternatives. There are some doubts about the correctness of this view. See below.

Whereas claim 1 of AR I read “at least one of pumping power and pumping frequency” was to be controlled and adapted, in claim 1 of AR Ia read “is pumping power and pumping frequency, i.e. both pumping power and pumping frequency were to be simultaneously controlled and adapted.

The board held that the deletion of alternatives from claim 1 of auxiliary request I resulted in a change of the claim scope requiring different technical considerations and is therefore an amendment of the proprietor’s case.

For the board, a similar conclusion was reached in case T 2091/18 on the deletion of independent claims (points 3 to 5 of the Reasons).

The proprietor did not put forward any exceptional circumstances justifying this amendment. The Board’s preliminary opinion could not amount to such exceptional circumstances even when it differs from the impugned decision as the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner, cf. Article 12(2) RPBA20. It is inherent in such a review that the Board may deviate from the conclusions reached in the impugned decision.

For these reasons, AR Ia was not admitted into the appeal proceedings in accordance with Art 13(2) RPBA20.

Admissibility of new objections based on A 14

The board held that, the admittance of A14 in the first-instance proceedings does not mean that objections based on this document can be raised any time on appeal.

On the contrary, under Art 12(3) RPBA20, the appellant’s statement of grounds of appeal should have contained the appellant’s complete appeal case. It should have set out clearly and concisely the reasons why it was requested that the decision under appeal be reversed.

Submitting new objections on the basis of A14, in the absence of any such objections in the statement of grounds, amounts to an amendment of the appellant’s appeal case, which has to be considered in light of the provisions of Art 13(2) RPBA20.

For the board, the objections based on A14 cannot be considered clarifications of previous arguments as the statement of grounds contained no arguments on the basis of A14.

The receipt of the Board’s preliminary opinion cannot be considered an exceptional circumstance justifying an amendment of the opponent’s appeal case after notification of the summons to oral proceedings.

The fact that AR II was filed by the proprietor only on appeal does not amount to such an exceptional circumstance either since the opponent could have reacted to this request and made use of its right to be heard well before the notification of the summons, which took place almost three years after the filing of this request.

In the absence of any exceptional circumstances for the filing of the objections on A14 after notification of the summons to oral proceedings, these objections were not admitted into the appeal proceedings in accordance with Art 13(2) RPBA20.

Outcome of the procedure

The patent was maintained on the basis of AR II.

Comments on the admissibility of AR Ia

In its decision not to admit AR Ia, the board referred to the reasons, points 3 to 5 of T 2091/18.

In T 2091/18, the BA decided to admit the request under Art 13(2) RPBA in which independent claims were deleted, in spite of the deletion being considered as an amendment of the party’s case under Art 13(1).

It is thus difficult to see why T 2091/18 was quoted in support of the position of the board as in said decision the amendment was admitted. The important § in the reasons is the conclusion reached in § 5 and not merely that in § 3 and § 4.

However in the present case, the amendment was more than deleting alternatives, it was actually defining a new configuration.

In AR I, one of pumping power and pumping frequency, i.e. either pumping power or pumping frequency was to be considered, whereas in AR Ia both power and pumping frequency were to be simultaneously considered. The move was obvious: restoring N over prior art under Art 54(3).

Deleting an alternative would have been deleting either pumping power or pumping frequency.  

By simultaneously using both pumping power and pumping frequency to be controlled and adapted, a new situation was indeed created.

It is therefore understandable that the board was confronted with a new situation and that it did not want to admit at a late stage such a new claim which indeed represented a manifest change in the proprietor’s submissions.  

It remains that properly deleting true alternatives should nevertheless be admitted as it difficult to say that such a deletion does not improve process economy. This a point of view I defended in previous publications on the present blog.

Comments on the admissibility of new objections based on A 14

Could the objections based on A14 have been considered clarifications of previous arguments, then T 1914/12 should have been applied. This was manifestly not the case here.

In opposition such a new submission by the opponent can always be brought forward but it would be late and submitted to an admissibility check by the OD. The OD has a certain discretion in this matter and provided the discretion was applied correctly and according the right rules, a board would not set aside the OD’s decision.

In appeal the situation is easier for the boards as they can dismiss such new submissions merely because they are late.

The non-admission of both the submissions of the opponent and oof the proprietor reminds of an often used consideration under the RPBA07: issuance of a communication or of summons by a board is not an invitation to the parties the file new submissions.

https://www.epo.org/law-practice/case-law-appeals/recent/t181671eu1.html

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