CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 2 895 924 B1 relates to process control systems, and, more particularly, to methods and apparatus to implement flexible bioreactor control systems.

Brief outline of the case

The OD considered that claim 6 as granted lacked IS. The OD maintained the patent according to AR H1.

Claim 6 of AR H1 was based on claim 6 as granted. The OD considered that claim 6 of ARH1, and especially the part stemming from claim 6 as granted was not infringing Art 123(2).

Both proprietor and opponent appealed the decision.

In appeal the MRap consisted of AR H1=as maintained.

The board held that claim 6 of the MR infringed Art 123(2). The board considered that the part of claim 6 of AR H1 corresponding to claim 6 as granted infringed Art 123(2).

A number of requests were filed during opposition and in reply to the opponent’s appeal, but were not admitted. The patent was thus revoked.

We will deal here only with the carry-over requests.

Carry-over requests AR1-9

Those requests were not examined as the OD maintained the patent on the basis of AR H1. AR1-9 are thus carry-over requests.

The board referred globally to the first sentence of Art 12(4) RPBA and to T 246/22.  The board did not prima facie allege that those requests were amendments under Art 12(4) RPBA, but checked whether those requests were “admissibly raised and maintained“, as specified in Art 12(4) RPBA after the introduction of the term “amendment”.

The board held that AR2 was not “admissibly raised and maintained” as it was filed after the time limit under R 116(1) set by the OD. It was thus well an “amendment” of the proprietor’s appeal case and not admitted by the board.

From the minutes of the OP before the OD, there was no doubt that AR 1 and 3 to 9 were “maintained“.  For the board, the proprietor has however not demonstrated that AR 1 and 3 to 9 were “admissibly raised“.

Furthermore, the board held that AR 1 and 3 to 9 represent an unjustified development of claims. In particular, they were all filed for the sole purpose of addressing the opponent’s IS attack.

However, in each of these requests, the proprietor picked up a distinct feature either from the description or from the dependent claims, and added it to the respective independent claims, instead of increasingly limiting the subject-matter, from one request to the next, in one and the same direction.

 For the board, these AR thus represent an unjustified divergent development of the subject-matter for which protection is sought, as opposed to a divergent development that might be justified by the necessity to address different attacks, as advocated in T 246/22, Reasons 4.16.

Because of the omitted demonstration and the unjustified divergence, AR 1 and 3 to 9 are also not exempted, but indeed constitute “amendments” of the proprietor’s case. Thus, the admittance into the appeal proceedings are at the board’s discretion under Art 12(4).

The board added that, in view of the fact that the amendments to AR 1 to 9 were only made to address the opponent’s IS attack by adding further features to the respective claims of the main request, these amendments were not suitable to address the added-matter objection to the MR and referred to Art 12(4) RPBA, 5th sentence.

Comments

Carry-over requests have always been subject to a critical considerations by some boards like the present one.

When dealing with the carry over requests, the board referred to T 246/22. The present decision was taken by board 3.5.03, whereby the chair and the legal member were the same.

It seems easy for a board on the one hand to claim that it is not bound by its own decisions, but on the other hand bring back an older decision which it considers useful for its way of handling the case. One template can used for ever. This is a kind of self-fulfilling prophethy.

As boards have largely divergent positions on “amendments”, this reinforces the lottery effect for parties in appeal, but does not reinforce the .credibility of the boards.

AR2

The valid AR2 was a replacement for AR2 filed in reply to the notice of opposition. As said AR 2 was filed outside the time under R 116(1) set by the OD. it is therefore manifest that it can be considered as not validly filed in the meaning of Art 12(4) RPBA and its non-admissibility is not to be queried.

AR 1 and 3 to 9

The situation is different for AR 1 and 3 to 9. Faced with a series of different IS attacks from the opponent, and not knowing what the position of the OD is, it is quite normal that a proprietor replies to an opposition by filing AR which might not be convergent. How else could he possibly defend his patent?

The board seems to add a further condition to AR filed before an OD, i.e. that they should all be convergent already in reply to the opposition.

That not convergent requests filed for the first time when entering appeal might not be admitted is not to be queried and perfectly acceptable, cf. T 1677/19, Reasons 3.1.3, or T 1185/17, Reasons 3.3.

T 1677/19 simply confirms older case law that requests filed for the first time in appeal should be convergent, e.g. T 221/06, “Pick and mix”. Late filed requests in opposition should as well be convergent, but not the requests filed when replying to the opposition.

Imposing, actually for the convenience of a board, convergent requests when replying to an opposition is not acceptable and the present board can be strongly criticised for this position. This behaviour also contradicts legitimate expectations of the parties, see below.

Divergent case law

The present decision is in flagrant contradiction with T 924/22, commented in this blog. In T 924/22, the carry-over requests were not converging. The board held that, even if they did not converge, that criterion applies only if requests are late filed, after the Rule 116(2) deadline, see Examination Guidelines 2024, H-III, 3.3.2.2.

As they were further substantiated to the required level in opposition, they are seen to have been admissibly raised in opposition. The board did thus admit and dealt with them.

In T 42/20, Reasons 4.2, the board clearly held that carry-over requests were not to be considered as amendments pursuant to Art 12(4) RPBA.

Legitimate expectations of the parties

If the board ends up being faced with carry-over requests, whether convergent or not, it should either admit them, see T 924/22, or remit the case to the OD for further prosecution. This is the only fair way to allow the proprietor to correctly defend its patent.

The boards might not be bound by the Guidelines, but when acting according the Guidelines, parties have legitimate expectations that the EPO as a whole, i.e. also the boards, take into account those legitimate expectations. This is the case for non-converging carry-over requests.

That the board might not wish to deal with carry-over requests, whether convergent or not, is understandable, but then it should remit and not find legal niceties to squeeze them out, moreover in contradiction to existing case law.  

After all, the proprietor should not be disadvantaged when properly filed and substantiated AR have not been dealt with by an OD, because a higher ranking request was considered allowable. That all or some of those AR are re-submitted in appeal should not come as a surprise.

Final comment

It remains that the present board could have easily remitted on the basis of AR 1 and 3 to 9, if had shown the will to be fair to the proprietor and in view of T 924/22.  

The valid RPBA have been adopted in order to reduce the backlog of the boards, but production/productivity should not be the only criterion for the boards. They should insure that justice is done, but this justice should be fair to all the parties.

By remitting, the board can however be expect to be faced again with the case, so it is very convenient for it, to squash the whole case by finding a pretext for not admitting carry-over requests.

The present board is accustomed to this way of doing. This is certainly a bonus for the board’s production, but not for the fairness towards the parties. .

Applicants and proprietors are warned that board 3.5.03, contrary to other boards, will do anything to dismiss carry-over requests.

T 1749/22