EP 2 611 767 B1 relates to the “Elimination of Organohalo and Oxirane Species in Carboxylic Acid Ester Streams”.
Brief outline of the case
Following four oppositions, the patent was revoked and the board confirmed the revocation.
At the beginning of the OP, the proprietor withdrew its approval of the patent as granted. Some claims as granted were infringing Art 123(2).
The proprietor filed 109 AR when entering appeal, whereby only 3 were discussed before the OD.
As those 3 AR infringed Art 123(3), they did not allow maintenance in amended form.
The other 106 AR were not admitted in the procedure.
Admissibility of the appeal – Opponent’s II point of view
Opponent II argued that since the proprietor relied on a fresh interpretation of the claimed subject-matter which had not been brought forward before the OD, all requests in appeal concerned, in substance, fresh subject-matter, and they should thus not be admitted into the proceedings.
Lacking any admissible request, the appeal was inadmissible.
Admissibility of the AR – The proprietor’s point of view
The proprietor argued at the OP that the AR were easily understandable, most amendments arose from combinations of the claims as granted and that those features coming from the description only served to further focus on the core of the invention. The requests filed for the first time in appeal should thus be admitted into the proceedings.
The proprietor further argued at the OP before the board that it was caught by surprise by the OD’s decision as its preliminary opinion had been positive.
The board’s decision
Admissibility of the appeal
For the board, the admissibility of an appeal does not depend on whether the board admits the proprietor’s requests into the proceedings, the proprietor’s case is ultimately convincing or whether an allegedly fresh interpretation of the claimed subject-matter is admitted under Art 12(4) RPBA.
Even if both the requests and the interpretation were held to be inadmissible, the appeal would not automatically be inadmissible. Be that as it may, some of the appellant’s AR were admissible.
Admissibility of the AR
The board did not agree with the opponents’ argument that the sheer number of fresh requests rendered all the proprietor’s requests or those not filed before the OD inadmissible. A large number of requests is not a sufficient reason to deny admission into the proceedings.
For the board, it is incumbent on the proprietor to guide the board and the opponents through its requests, all the more if the number of requests is large.
This includes identifying in every detail the amendments made, explaining the link between the amendments and the outstanding objections against the patent, and providing reasons for filing some of its requests only in appeal, cf. Art 12(4) RPBA.
The board showed that, for instance, features b) and c) in claim 5 of AR 1A in appeal were not in any of the requests dealt with by the OD and are thus not addressed in the impugned decision. Although these items were in claim 13 of the patent as granted, the appellant did not defend it in this form.
The statement of grounds of appeal only indicates that claim 1 of AR 1A is the same as claim 1 of AR 1C in opposition, but does not mention other changes, such as those in claim 5, the implications of the differences on the outstanding issues or why the request was submitted in this form only in appeal.
The reasoning for AR 1A applies equally to all fresh requests in appeal.
The proprietor has not provided a comprehensive and complete summary of the amendments made, has not explained the relevance of all the amendments for the outstanding issues and has not provided reasons why the amendments could not have been carried out earlier.
The board also reminded that an OD may change its view at OP and accept another party’s arguments. This is, in fact, the whole purpose of OP. Such an outcome cannot thus be surprising and justifying the filing of new AR in appeal.
Thus all the AR which had not been pending before the OD were thus not admitted into the proceedings.
Comments
The board reminded the parties that admissibility of an appeal and admissibility of requests filed in appeal are two distinct matters. They should not be confused.
It is not so frequent that an appeal is not deemed admissible as not complying with R 99(2), but requests for which no decision was taken by the OD are in general not admissible in appeal. Properly filed and maintained “carry over requests” should however be admitted.
Admissibility of an appeal
According to R 99(2), the statement of grounds of appeal has to indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.
It is thus necessary that it indicates the legal or factual reasons, on which the case for setting aside the decision is based in a manner sufficiently clear and concise to enable the board and the respondent to understand immediately why the decision was alleged to be incorrect. On top of it comes Art 12(3+5) RPBA insisting on the completeness of the appellant’s case when filing an appeal.
For instance, a passing reference to the facts and evidence put forward in opposition proceedings is not enough, cf. T 2125/21, Reasons 1.
It is rather uncommon that representatives of the opponent overlook this distinction.
Admissibility of requests
The situation different for the requests. An appeal might be admissible, but not the requests filed in appeal. Requests not filed or not maintained in first instance are considered to represent an amendment of the proprietor’s case and might not be admitted under Art 12(4+6) RPBA. The exeption are carry over requests.
Filing a large number of requests in appeal
It is rather uncommon that repreentatives of a proprietor files a large number of new requests when entering appeal. Requests comprising features from the description should at the latest be filed before the OD by the time limit under R116(1).
Although a large number of requests is not a sufficient reason to deny their admission into the proceedings, filing 106 new AR when entering appeal is quite daring. In view of the valid RPBA, such a move was doomed to fail.
It also appears that the proprietor was allowed to file two AR during OP before the OD. The first was not allowable under Art 83, and the second could not overcome the reasons raised up to then in the procedure and was not admitted.
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