CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1690/22 – Admissibility of carry over requests - Objections under R 106

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Patent EP 3 293 124 B1 relates to a high power packaging method and device, in particular for small pieces like pralines.

Brief outline of the case

The opponent appealed the rejection of its opposition.

In its decision the board held that claims 1 (method) and 9 (device) as granted lacked IS over D3=DE 10 2008 019 605+D1=US 4 947 617.

AR 1-3 filed in first instance, were not admitted in the procedure under Art 12(3) and (5) RPBA.

The board dismissed two objections under R 106.

The patent was thus revoked.

The case is interesting in respect of the non-admission of AR1-3 and of the two  objections under R 106 dismissed by the board. The origin of the objections under R 106 is to be seen in the non-admissibility of carry over AR1-3.  

The proprietor’s point of view

The proprietor submitted that AR 1-3 were sufficiently substantiated under Art 12(3) RPBA by the argumentation on the MR in the statement of grounds of appeal,  supplemented by the submission on the AR in accordance with the reply to the appeal.

Since Art 12(3) RPBA requires the reply to the appeal to be clear and concise, it must be understood to mean that a reference to submissions in first instance is not only permitted, but rather required, so that it is permissible to make a reference to those submissions.

In view of the non-admission of AR1-3 the proprietor raised orally a first objection under R 106.

The board having requested the filing in writing of the objection under R106, the proprietor raised a second objection under R 106.

The proprietor argued that it did not need to submit its first objection under R 106 in writing and that the request by the board to submit a written objection therefore constituted a further substantial procedural violation

The board’s position on the admissibility of AR1-3

For the board, the proprietor’s understanding of Art 12 (3) RPBA lacks any basis.

It is not apparent why the requirement of clear and concise reasoning required reference to submissions made at a different stage of the proceedings, i.e. in a different context and before the contested decision, the review of which is the subject of the appeal proceedings, was adopted and reasoned, and before the opponent’s statement of grounds was submitted.

In its reply to the appeal, the proprietor should have put forward all arguments as required under Art 12(3) RPBA which, in the light of the opponent’s submissions, could have altered the contested decision (sic!) with regard to AR1-3.  

The board added that is was irrelevant that neither the contested decision nor the appellant’s statement of grounds of appeal dealt with AR1-3. A discussion of AR in appeal necessarily presupposes that AR have become the subject of the appeal proceedings in an admissible manner, which could not have been the case at the time the statement of grounds of appeal was filed.

Furthermore, it is not incumbent on the opponent filing the appeal to address the AR filed in opposition proceedings in its statement of grounds of appeal as a precautionary measure, without knowing whether they will be upheld in the appeal proceedings.

On the other hand, the proprietor opposing the appeal is expected to explain in the statement of grounds of appeal why the AR overcome the objections raised against the main request in the statement of grounds of appeal. The proprietor must also provide sufficiently substantiated evidence in its response to the appeal that the AR overcome the objections raised in the appeal, see T 1041/21, Reasons 5.1.4.

The dismissal of the objections under R 106

As far as the first objection under R 106 is concerned, the board held that the non-admission of auxiliary requests 1 to 3 does not in itself constitute a substantial procedural violation.

The mere fact that the proprietor takes a different, contrary view on the application of the Art 12(3), does not constitute a serious procedural mistake or a violation of the right to be heard.

As far as the second objection under R 106 is concerned, the board held that, filing a written objection under R 106 corresponds to a practice which makes it possible to clearly determine the scope of this objection.

Doing so in writing or only orally does not change the substance of the objection raised.

However, the written submission of the subject-matter of a complaint makes it possible to record in a comprehensible manner for the board and the parties what the board had to decide upon and to ensure that in a possible review procedure before the EBA there is no uncertainty about the wording of the objection.


The problem of carry over requests

AR1-3 are clearly carry over requests, which have been discussed in a recent blog of mine.

In view of my comments there, it is highly disputable whether carry over AR can merely be be dismissed under Art 12(3+5) or Art 12(4+6) RPBA. This is the position of certain boards, but not of all of them.

As the first instance has not taken any decision on carry over requests, they are formally not part of the decision to be reviewed in a judicial manner by a board under Art 12(2) RPBA when an appeal is filed.

It is certain that a board can always take a different position than a first instance division, but parties do not have a crystal ball. Requiring a party to take position on a hypothetical view of the board is not only unfair, but difficult to follow.

As the OD had rejected the opposition, no decision on AR1-3 was taken. Which arguments, but those already presented before the OD could have been presented by the proprietor? Contrary to what the boards alleges, there was no decision with regard to AR1-3.

If a board considers right to set aside the decision of the OD, any carry over AR not dealt with by the first instance should be taken for what they are, fall back positions.

When the board argues that, the appealing opponent does not have to address the AR filed in opposition without knowing whether they will be upheld in appeal, the present board blatantly ignores T 664/20, commented on this blog. In this decision,  the board exactly required this from the opponent.

A possible exception

The present case might however represent an exception as the method and device claims of AR1-3 were as general as the corresponding claims as granted.

It was the deliberate choice of the proprietor to claim in the AR1-3 a high-performance packaging device and method for packaging, “in particular” small-sized products, “preferably” confectionery, such as hard or soft caramels, chocolates or the like.

In the present situation at least a claim directed to the packaging of confectionery should have been filed by the proprietor.

Rather than discussing at length why the requests were not admitted under Art 12(3+5) RPBA, it would have been much more efficient for the board to dismiss AR1-3 for the same reasons as for the MR.

It is most probable that the attitude of the proprietor was a trifle too provocative towards the board.   

On the objections under R 106

I have rarely seen, if ever, a board admitting an objection under R106.

However, as in the present case, AR1-3 were as general as the MR, it is difficult to see what the proprietor could have added.

As far as the second objection under R 106 is concerned, it is certainly preferable to file such an objection in writing. This is not only for the benefit of the board, but also for the party raising the objection. It has then time to think about a precise formulation.

The non-admission of AR 1-3 had manifestly heated things up, but this is not a reason for not filing the objection in writing and raising a further objection under R 106. One should not forget that the board is having a much longer lever than the parties.


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