CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1731/19 – A mere reference to statements made in opposition proceedings is not enough in appeal

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The patent relates to a “Turbine airfoil apparatus and corresponding manufacturing method”.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board decided that claim 1 as granted lacked N over D1=US 2011/0223004, not mentioned on the ISR established by the EPO.

AR 1-3 were not admitted in the procedure for lack of substantiation.

Claim 1 of AR 4 was not allowable as it infringed Art 123(2).

The patent was thus revoked.

The case is interesting in view of the way the board dealt with the admission and the ranking of the requests.

Non admissibility of AR 1-3

AR 1 to 3 are identical to AR 1 to 3 submitted during the opposition procedure. The board noted that, when re-submitting these requests with its reply to the statement of grounds of appeal, the proprietor omitted any comment in respect to the question of why the amendments to the independent claims of the respective AR might overcome the outstanding objections and therefore might justify amending the impugned decision.

The proprietor’s argument that such justification was provided already before the OD and therefore not required to be repeated when filing its reply to the appeal grounds fails already in view of the very wording of Art 12(2) RPBA07, referred to in Art 12(4) RPBA07, stating that the reply should specify expressly inter alia all the facts and arguments relied on.

Moreover, in its statement of grounds of appeal the opponent had raised specific objections under Art 84 and 123(2) against the amendments of the claims in AR 1 to 3, to which the proprietor gave no consideration at all in its reply.

The board rejected the proprietor’s view that the Rules of Procedure of the Boards of Appeal would provide only guiding principles for the conduct of an efficient procedure and should not be applied too strictly to the detriment of the proprietor, in particular in cases, such as the present, where AR were already submitted in the opposition proceedings but were not considered because the opposition against the patent was rejected.

The board further held that, in the same way as the appellant-opponent has to raise and substantiate all objections it intends to pursue in the appeal proceedings in the statement of grounds of appeal, irrespective of the fact that they had already been raised in the opposition proceedings, the respondent-proprietor is required to present all facts and arguments in its reply to support and substantiate its requests for maintenance of the patent, be it as granted or in amended form according to the auxiliary requests submitted with the reply.

Request for remittal

At the OP, the proprietor requested that the request for remittal be dealt with before a decision was taken on the issue of admittance of the AR.

As justification for this prioritisation of the request for remittal, the proprietor submitted that in the event of a remittal to the opposition division, the requests that had been filed in the opposition proceedings, thus also including AR 1 to 3, could then be further pursued since they were part of the opposition proceedings.

For the board, prioritising the request for remittal would have the effect of circumventing the substantiation requirements of Art 12(2) RPBA07, as this provision does not apply in opposition proceedings. The proprietor’s request for prioritisation of the request for remittal therefore comprises implicitly the request not to apply the substantiation requirements of Art 12(2) RPBA 2007. It is evident that such a request, which is against the applicable law, cannot be followed.

A case can only be remitted if it is clear on what basis the opposition division should further proceed. In the present case, the board decided on the proprietor’s main request and did not admit auxiliary requests 1 to 3 into the proceedings. The board also dealt itself with AR 4. Thus, there are no requests left on the basis of which the OD could proceed. The request for remittal was therefore rejected.


Admissibility and ranking of the requests

The present decision not to admit AR 1-3 was taken under the RPBA07.

The RPBA21 would not lead to a different result when looking at Art 12(3) RPBA21.

It is difficult to understand why some applicants/proprietors lose their application/patents by not abiding to the rules of the game=the RPBA.

The RPBA, and certainly the RPBA20/21 are not just merely guiding principles for the conduct of an efficient procedure.

It is nothing new under the sun that a mere reference to submissions in opposition when entering appeal is not successful. This is the more so, when the opponent/appellant has raised objections in its statement of grounds of appeal.

In principle a board is bound by the order of the requests. It has also been decided that changing the order of the requests amount to an amendment of the case.

That furthermore, the boards do not like to be tricked out should also not come as a surprise. Putting the request for remittal first in the hope it would be granted was doomed to fail.

On the procedure

The patent should never have been granted in the form it was. The ISR established by the EPO only mentioned 3 documents of category A. The document allowing to deny IS to claim 1 as granted was not found on the ISR, although the patent and D1 relate to the same topic and are to be found in corresponding classification units in which the search was carried out.

As the rejection of the opposition was set aside by the board and the patent we revoked, the present decision of the OD belongs to the 50%+ of decisions set aside in 2023.

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