EP 2 182 898 B1 relates to treatment devices, systems, and methods for removing heat from lipid-rich cells, such as subcutaneous lipid-rich cells.
Brief outline of the case
The patent was maintained according to AR8. The opponent appealed.
The board held that claim 1 as maintained infringed Art 123(2) and eventually the board revoked the patent.
The case is interesting in that it deals with a request from the proprietor not to admit a new line of attack of the opponent, to which it had replied in substance. .
The proprietor’s point of view
Together with the grounds of appeal, the opponent raised a new objection of added matter
The proprietor requested that this “new line of attack” not be admitted into the proceedings, as it had been raised for the first time in the statement setting out the grounds of appeal and referred to Art 12(2), (4), (6) RPBA.
For the proprietor, the opponent had failed to identify the “new line of attack” as an amendment in its grounds of appeal and to give reasons why it had not been raised before the OD, contrary to what is required by Art 12(4) RPBA.
Therefore, it had been difficult to recognise that there had been such an amendment The lateness of the proprietor’s request should be weighed against the opponent’s failure to comply with the requirements of the RPBA.
During the OP before the board, the proprietor argued that, even if its request for non-admittance were rejected by the board, the board was under an obligation, ex officio, to assess and decide on admittance of the “new line of attack”.
The board’s decision
Art 13(2) is not limited to amendments in substance
The proprietor’s request not to admit the “new line of attack” was not part of its initial appeal case, as this request was not filed with its reply to the grounds of appeal. The proprietor had however replied to this “new line of attack”.
The request for non-admittance was filed only later, in response to the board’s communication under Art 15(1) RPBA, i.e. after beginning of the third level of convergence, cf. Art 13(2) RPBA.
The board noted that in the context of the RPBA 2020 the term “requests” includes requests for non-admission of, for example, an objection, contrary to what is suggested in T 1006/21, Reasons 25 to 27, where “procedural requests” such as requests for non-admission would appear to be excluded from the scope of “amendments” within the meaning of Articles 12 and 13 RPBA. T 1006/21 was commented in this blog.
For the board, the term “requests” is not limited to texts of patent applications or patents. If this were the case, Art 12(2), (3) and (6) RPBA would have specified this and would not have used the general term “requests”.
Indeed, when the RPBA 2020 seeks to specifically address the issue of amended texts of patent applications or patents, it expressly refers to “an amendment to a patent application or patent”, cf. Art 12(4), or Art 13(1), RPBA.
This understanding is also confirmed in the Explanatory remarks to Art 12(2) RPBA, which specifies: “The term ‘requests’ in this context is not limited to amended texts of patent applications or patents”.
Therefore, a request for non-admittance of an objection, as in the present case, constitutes an amendment to the party’s appeal case if the request was not filed in the initial stage of the appeal proceedings, or in a reply to an appeal, but only during the subsequent stage of the appeal proceedings, and its admittance is therefore governed in the present case by Art13(2) RPBA.
The present board considered itself to be in line with the approach taken by decisions T 0018/21 and T 0755/16, both of which applied Art 13(2) RPBA to the circumstances of their cases.
Even assuming in the proprietor’s favour that the “new objection” was raised for the first time in the opponent’s grounds of appeal, the circumstances of the present case are not exceptional and cannot justify filing of the respondent’s request for non-admittance only after the board’s communication.
The mere fact that the opponent , allegedly, did not comply with the requirements of the RPBA is not a valid excuse for the proprietor to request non-admission of the objection only after the board’s communication.
It is for the party itself to assess whether there is – in its opinion – an amendment to the other party’s case and, if this is the case, how to respond to it, for example whether to file a request for non-admission or – as was done in the present case by the opponent in its reply, to address the “new” objection on its merits.
Ex-officio assessment
After having analysed the various part of Art 114 allowing it, on the one hand, to decide ex-officio, cf. Art 114(1), or, on the other hand, to disregards late filed submissions, cf. Art 114(2), the board concluded it was not obliged under this provision ex officio to examine whether a submission was made “in due time”.
The board added that, in general, the principle of ex officio examination is to be applied in opposition appeal proceedings in a more restrictive manner, cf. G 9/91, Reasons 18.
Also in this context, the Board was aware of T 1006/21. The statement in Reasons 27 of this decision implies that the question of admittance must be taken up by a board ex officio. For the reasons given above, the board disagreed with such an approach.
Comments
The present decision takes the opposite view of T 1006/21, and shows once more that in procedural matters the boards vary in their interpretation of procedural rules. Predictability in procedural matters is not something the boards seem to take care of.
De facto admissibility of a late filed submission
In T 780/05, Reasons 3, the proprietor had commented in writing in appeal, a late filed document of the opponent, which had not been admitted by the OD. The board considered the document highly relevant and admitted it in spite of the proprietor’s refusal. As the proprietor had commented the document in writing, its right to be heard had been respected.
A similar situation occurred in T 68/02, Reasons4.2. A document was late filed, but discussed in writing by the OD and the proprietor before the OP. The board criticised the OD for deciding its non-admission at the beginning of the OP. It also held that the document was part of the appeal procedure.
T 780/05 and T 68/02 were not taken under the presently valid RPBA. It remains that the evidence and argumentation were on file from both sides and the board decided in both cases that the document was de facto admissible and had a direct influence on the outcome of the procedure.
In such a situation it could be expected that for legal certainty a bord exercises its discretion and decides on the argumentation of both parties.
This was done in the present case, but the whole discussion on the applicability of Art 13(2) RPBA on the subsequent requests of the proprietor looks rather academic.
However, it is to be noted that the late submission of a new line of attack of the opponent was not queried by the board. When the board claims that it is not obliged to query ex officio a new line of attack, it distinguishes itself from plenty of other boards and not too credible.
In any case, a document discussed in writing before the OP in opposition is de facto admissible. Conversely, a late filed request discussed in writing before the OD is as well de facto admissible.
This should apply mutatis mutandis in appeal in the framework of the discretion given to the boards.
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