The patent relates to powdered nutritional formulations including a dryblended plant protein. At least a portion of the dryblended plant protein has been spray dried prior to being dryblended into the powdered nutritional formulation.
The decision is interesting in that the board has looked at case law and has interpreted the legal provisions relating to late-filed requests.
Brief outline of the file
The patent proprietor and opponents 1, 3, 4 and 5 appealed against the OD’s interlocutory decision.
The OD decided, among other things that claims 1 and 7 of AR 4 before it lacked novelty over D6.
AR 4A, which had been filed during the OP, was not admitted into the proceedings.
However, AR 4B, which had also been filed during the OP, was admitted and was found allowable. The patent was maintained on the basis of AR 4B.
The proprietor submitted that the OD erred in not admitting auxiliary request 4A. AR 4A was filed in direct reaction to a change in the subject-matter of the proceedings. It was not late-filed. The OD had no discretion not to admit it. Thus, AR 4A and AR 5, which is based on the former, had to be admitted.
The proprietor requested that the decision under appeal be set aside and that the patent be maintained on the basis of:
- the main request, filed with the statement setting out the grounds of appeal; or
- AR 1, 2, 3 or 4A, filed with the statement setting out the grounds of appeal; or
- AR 4B, filed during the oral proceedings before the Opposition Division on 22.03.2018; or
- AR 4C, filed with the reply to the opponents’ statements setting out the grounds of appeal; or
- AR 5, filed with the submission dated 06.06.2022.
Opponents 1, 3, 4 and 5 requested that the decision under appeal be set aside and that the patent be revoked.
Outcome of the case
The board held the subject-matter of claim 6 of the MR did not involve an inventive step. The same applied to AR 1, 2, 3, 4B and 4C.
The Board saw no reason to set aside the OD’s discretionary decision not to admit AR 4A.
AR 5 was based on AR 4A, with some claims having been deleted, but with the same wording of claim 1. In view of the fact that AR 4A was not admitted into the appeal proceedings, there is no reason to admit AR 5, which was filed even later.
The patent was thus revoked.
Article 114(2) EPC – legal basis for not admitting amended claim requests
The board noted that there is a long line of case law – T 171/03, T 811/08, T 1100/10, T 1933/12, T 2385/12, T 108/14, and T 44/17 – according to which claim requests may be disregarded under Art 114(2).
Are the patent and amended claims “facts” or not
The discussion turned around whether the patent and amended claim requests were facts or not. For instance this was the case T 1855/13 and T 604/01
In R 6/19, the EBA deduced that the first sentence of Art 123(1) provided a legal basis for the EPO’s discretion as to whether or not to admit claim requests. It left open whether or not Art 114(2) constituted such a legal basis as well.
In T 966/17 and T 256/19, the Board stated that discretion to disregard an amended version of a patent could only emanate from Art 123(1) in conjunction with R 79(1), 81(3) or 116(2).
Further views could be found in the case law, cf. Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.5.1.4 a), in which the only legal basis for not admitting amended claim requests, was R 116(2), e.g. T 688/16
The proprietor referred to T 754/16, in which the board was of the view that Art 114(2) did not provide a legal basis for not admitting amended claim requests. This was reasoned by reference to T 1914/12. In T 1914/12, it is stated that new sets of claims are not facts within the meaning of Art 114.
The board noted that all of these decisions are concerned with a very specific question, namely the question of whether Art 113(1) and G 4/92 prevent a board from deciding on the maintenance of a patent on the basis of AR made during OP in which the opponent was absent.
According to statements in T 912/91 and T 133/92, the submission of AR is as well not considered as a fact.
In T 235/08, which is the most recent decision cited in T 1914/12, it was accordingly held that G 4/92 did not prevent the admittance of amended claim requests filed at the oral proceedings “where the amendments made amount to clarifying restrictions made to avoid objections raised in the written proceedings and the amendments are of a nature that the absent opponents might have expected”. For the board, G 4/92 itself does not contain any statement as to the legal nature of claim requests in relation to Art 114(2).
For the purposes of Art 114(2), the present Board considered a patent claim to be a statement of technical facts in legal terms.
Moreover, even if one were of the opinion that a patent claim as such does not qualify as “facts or evidence” within the meaning of Art 114(2), an amended claim request must be substantiated in order to become effective and referred to T 1732/10, T 2288/12 and T 1784/14. Even claim requests addressing a clarity objection raised in line with G 3/14 usually involve references to factual elements in some form or other, for example on the meaning of a certain technical term in a particular technical field.
Most of the case law on the need to substantiate claim requests concerns claim amendments submitted in appeal proceedings, and in these cases reference is often made to Art 12(2) RPBA07, presently Art 12(3) RPBA20.
While this provision is not applicable in opposition proceedings, the principle that a party must contribute to the conduct of the proceedings by substantiating its own requests in a minimum way is not limited to appeal proceedings. This can in particular be deduced from Rule 76(2,c) according to which an opponent requesting the revocation of a patent must also provide substantiation for at least one ground of opposition.
Teleological interpretation of Art 114(2)
A teleological interpretation of Art 114(2) supports the understanding that substantiated claim amendments are facts within the meaning of this provision. The purpose of Art 114(2) is to provide the deciding body with an effective means to prevent parties from unnecessarily protracting the proceedings. This serves the principle of procedural economy. Amended claim requests which a proprietor does not submit in due time can unnecessarily protract the proceedings. Hence, the purpose underlying Art 114(2) is only served if the deciding body has discretion not to admit late-filed claim requests.
Systematic interpretation of Art 114(2)
A systematic interpretation does not lead to any other result.
According to the second sub clause of Art 114(1) on ex officio examination, the EPO is not restricted to the “facts, evidence and arguments provided by the parties and the relief sought”.
Art 114(2) on late-filed submission refers, on the other hand, only to “facts or evidence”. The omission of the term “arguments” in Art 114(2) has been invoked in favour of the view that late-filed arguments may not be equated with facts and may therefore not be disregarded under this provision. The board referred here to T 1914/12, and J 14/19 commented in this blog.
This reasoning, however, cannot be applied in analogy to claim requests in view of the omission of the term “relief sought” (“Anträge” and “demandes”, respectively, in the German and French versions) in Art 114(2), as this term cannot be understood as encompassing claim requests. In particular, Art 114(1) provides that the EPO is in its examination not restricted to the “relief sought”.
The requirement for a submission to not have been “submitted in due time” as a precondition for the exercise of discretion by the EPO only exists under Art 114(2), and not under Art 123(1).
The present Board agreed with the case law according to which Art 114(2) constitutes a legal basis for not admitting claim request.
Art 114(2) and R 116(1) – the concept of “not submitted in due time”
The question of whether the deciding body has discretion not to admit a certain submission under Art 114(2) must be distinguished from the question of how that discretion should be exercised.
When answering the question of whether the deciding body has discretion not to admit a certain submission, one can either rely on fixed criteria, such as a certain point in time in the proceedings after which submissions are considered late, or, alternatively, on relative criteria, such as whether the submission was made according to the principle of procedural economy or in direct response to a new submission by another party. Relative criteria are necessarily a moving target.
For appeal proceedings, the RPBA20 implement Art 114(2) in a manner which in principle is binding and rely on fixed criteria in order to determine whether a Board has discretion not to admit a certain submission. Under Art 12(2) and (4) RPBA20, a submission constitutes an amendment, the admittance of which is subject to a Board’s discretion if it is not directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.
As a result, any submission which has not been made during the first-instance proceedings is in the appeal proceedings considered not to have been submitted in due time within the meaning of Art 114(2). Accordingly, in appeal proceedings the fixed point in time after which a certain submission is late-filed is the end of the first-instance proceedings.
Considerations such as whether a party could not have adequately reacted to a request or document filed at a late stage of the first-instance proceedings do not determine whether a submission is late-filed, but are instead relevant to the question of how a board should exercise its discretion, in other words belong to relative criteria.
For opposition proceedings, there are also fixed points in time which allow the deciding body to determine whether a submission was filed in due time within the meaning of Art 114(2).
For the opponent it is in principle the end of the opposition period under Art 99(1).
For the proprietor, a corresponding point in time would be the end of the period under R 79(1) and the time limit set under R 116(1).
The admittance of party submissions made after these points in time would generally be subject to the OD’s discretion under Art 114(2).
This, however, does not mean that such submissions should in principle not be admitted. In those situations relative criteria apply.
For the board, an approach relying on relative criteria tied to individual procedural circumstances has, in the board’s view, the grave disadvantage that the OD’s discretionary power is then not clearly and predictably delimited by the law itself. Accordingly, an approach relying on fixed points in time is also preferable when considering Art 114(2) as providing the legal basis for disregarding claim requests.
Under R 116(1), fourth sentence, facts and evidence filed after the final date referred to in R 116(1) “need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.” Firstly, the phrase “facts and evidence” in R 116(1) must be understood, as in Art 114(2) expresses the exercise of discretionary power, and the phrase “on the grounds” indicates a criterion for exercising this discretionary power.
R 116(1), fourth sentence, confirms that a change in the subject of the proceedings must be taken into account by the OD in the course of exercising its discretion. It is therefore not compatible with R 116(1) to make the existence of the OD’s discretion under this provision subject to the condition that there was no change in the subject of the proceedings, as the approach relying on relative criteria does.
As to the exercise of its discretion, the OD must bear in mind that in opposition proceedings more weight must be given to examination ex officio under Art 114(1) than in appeal proceedings.
Art 114(2) and R 116(2) – notification of the grounds prejudicing the grant or maintenance of the patent
R 116(2) does not limit the OD’s discretionary power under Art 114(2) and R 116(1).
As a rule, this discretionary power does not depend on the contents of the OD’s communication under R 116(1). However, if the OD invites the proprietor to file an amended claim request to address a specific objection and the proprietor complies with this invitation by filing the required amendments by the date set under R 116(1), the OD’s discretion not to admit that claim request may effectively be reduced to zero.
The proprietor referred in this regard to decision T 754/16, in which it is stated that “requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent”. In T 754/16 this was not considered to have been the case because the Opposition Division had changed its previously positive written preliminary opinion on certain claim requests during the OP.
In T 754/16, the board was of the view that amended claim requests which were filed during the OP in response to such a change of the OD’s opinion were not late-filed as a matter of principle. Accordingly, the board in T 754/16 opined that the OD, which had considered the amended claim requests to not be prima facie allowable under Articles 56, 84 and 123(2), did not have any discretion whatsoever not to admit these requests.
The present board did not share the views expressed in T 754/16.
The board further noted that if, as opined in Reasons 1.3.2 of T 754/16, an OD had no discretion not to admit an amended claim request whenever it had not notified the patent proprietor “of the grounds prejudicing the maintenance of the patent”, this would mean that any such claim request – regardless of its contents and regardless of when it was made – would automatically be admitted into the opposition proceedings.
A certain development in the opposition proceedings does not justify the submission of any kind of claim request – possibly including claim requests which are not even related to the specific procedural development in question – at any point in time. Such a result must be avoided, which speaks additionally against this approach.
R 116(2) concerns a very specific situation, as is made clear in the first sentence of the provision, namely a situation where the OD decides to notify the patent proprietor of grounds prejudicing the maintenance of the patent.
R 116(2) expresses nothing other than that the OD should only invite the patent proprietor to present amended claim requests if it has notified it of grounds of opposition which may, in its view, prejudice the patent’s maintenance. In other situations, no such invitation should be made.
The primary purpose of inviting the proprietor to file amended claim requests under R 116(2) is to expedite the opposition proceedings, and to prevent the proprietor from filing such requests after the date specified in R 116(1).
Amended claim requests which are submitted in reply to an invitation of the OD under R 116(2) are subject to the OD’s discretion under Rule 116(1).
The “travaux préparatoires” on R 116, according to which amended claim requests are to be understood as facts, also confirm that R 116(2) is not to be understood as an indication that claim requests would not fall under R 116(1).
R 116(2) does not limit the OD’s discretionary power under Art 114(2) and R 116(1). In particular, the existence of this discretionary power does not depend on the contents of the OD’s communication under R 116(1).
R 116(2) cannot be considered to be a self-standing legal basis for an OD’s discretion not to admit claim requests, which would also be at odds with the need to root the OD’s power of discretion in an article of the EPC instead of only in an implementing rule.
Application to the present case
If the discretion of the OD has been exercised according to the right principles, in a reasonable way and without exceeding the proper limits of discretion, cf. J 14/19, a board will not revise the discretion exercised by the OD.
The amendment in claim 1 of AR 4A contained a feature taken from the description. The board held that, in this situation, the OD had correctly exercised its discretion. Furthermore, AR 4A gave rise to a number of new issues and surprised the opponents.
In admitting AR 4B, the OD reasoned its decision by explaining that the request was “done in response to the novelty objections based on D6 and that its claims 1 and 2, already present in Auxiliary Request 4 (as claims 5 and 6), and did not create unexpected issues”.
From the present decision it can be concluded that amended claims are to be considered as facts and their admission can be considered under fixed and relative criteria of admissibility.
While it is possible to follow the board when it prefers to use fixed criteria, it remains that relative criteria cannot be ignored and the discretion should be exercised according to the right principles, in a reasonable way and without exceeding the proper limits of discretion.
Although the time limit set in R 79(1) can be considered as a fixed criteria, should the proprietor not reply within the time limit set in R 79(1), it should be allowed to do this later, provided this is done at the latest within the time limit under R 116(1). In view of the hierarchy of norms, the possibility of filing an amendment to the patent under Art 123(1) offered to the proprietor cannot be negated under R 79(1).
When the filing occurs after the time limit under R 116(1), relative discretion criteria cannot be ignored. It means that in principle, especially under R 116(2), late-filed requests should be admitted if they are filed in reply to a communication of the OD. In this situation it can however happen that amendments are not admitted as not helping procedural economy, for instance in the case of incorporation of features of the description into the claims or not properly substantiated requests. In the contrary they should be admitted. The position adopted by the present board against T 754/16 appears unnecessarily severe.
When late-filed evidence is admitted in the procedure, the proprietor should be put in a position to defend its patent. If to this effect the proprietor incorporates features from the description into the claims, neither R 116(1) nor R 116(2) should be a bar to their admissibility as the origin of the amendment lies in the admission of late filed-evidence. It could well lead to adjournment of the OP, but the costs for the further OP should be apportioned to the opponent as it provoked the situation due to its late-filing of evidence.
Unless there are good reasons not to admit a late-filed request, or in general a late-filed submission, e.g. prior art, OD should, within reasons, be less strict as any submission not admitted in first instance will most probably not be admitted in appeal.
In examination, not replying in due time to a communication of the ED has the consequence that the “application is deemed withdrawn”. There is no similar notion of the “patent being deemed revoked”. The opposition procedure always ends with a decision, cf. Art 101.
I was rather long, but the present decision warranted it as it looked at many aspects relating to late filings. https://www.epo.org/law-practice/case-law-appeals/recent/t181776eu1.html