CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1807/15 – Late filed prior art – Apportionment of costs – The follow up to G 1/21

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The present case led to decision G 1/21.

The patent relates generally to RF amplifiers, such as those used for wireless communications, and more specifically to RF amplifiers for handling significant peak-to-average ratio power applications and the efficient design thereof.

Brief outline of the case

The OD decided to maintain the patent according to a new MR filed in opposition.

The opponent appealed the decision of maintenance.

In the course of the appeal proceedings, two summons have been issued. The first summons is the one that eventually led to the referral. The second summons was issued when the procedure was continued after G 1/21 had been issued.

The board referred questions laws to the EBA under Art 112 about the conditions in which it is possible to hold OP by ViCo in form of a ViCo without the approval of a party.

Once the decision was G 1/21 was known, the appeal procedure continued.

The board did not admit new pieces of prior art under Art 13(2) RPBA20.

The board held that the MR infringed Art 123(2). Furthermore, all requests did have problems of added-matter.

The patent was thus revoked.

The case is interesting for two reasons

  • The non-admission of late filed of prior art.
  • A request for a different apportionment was filed by the proprietor against the. opponent.

The non-admissibility of E7 and E8

While the non-admittance of late filed documents is not part of the grounds leading to the revocation of the patent, the board considered aspects of the discussion relevant beyond the case at hand. The board considered it therefore convenient to include the relevant reasons for non-admittance in this decision.

The opponent’s position

For the opponent, Art 13(2) RPBA20 should be interpreted in the present case where two summons had been issued and two OP took place.

The motivation for the convergent approach in the RPBA20 was the procedural economy of the appeal proceedings. It was the purpose of the convergent approach that all parties had sufficient time to react to an amendment and to avoid any postponement necessary due to the introduction of complex new matter at a very late stage of the proceedings.

Consequently, the purpose of Art 13(2) RPBA20 was to ensure that the parties filed all facts, evidence, arguments and requests as early and as completely as possible, in particular in good time before oral proceedings.

In this light the term “a summons to OP” in Art 13(2) RPBA20 has to be interpreted – in the circumstances of the present proceedings – as relating to “the summons for OP” during which a substantive discussion of the grounds for appeal actually took place, and the parties had the possibility to present their case.

Due to the referral to the Enlarged Board of Appeal, no discussion as to the substance took place at the first OP. The opponent filed some documents as well as objections before the summons to the second OP. Art 13(2) RPBA20 was therefore not applicable in the present case.

The board’s position

Contrary to what the opponent argued, the reference to the late filed documents in the context of an objection of insufficiency of disclosure was only raised for the first time after the first summons is not purely an argument.

The main question to be answered in the present case is which of the two summons that were issued count as the summons to OP within the meaning of Art 13(2) RPBA20.

In the written proceedings document E8 was cited after the notification of the first summons in order to demonstrate that the characteristics of real world amplifiers did allegedly not allow the peaking amplifier to be turned on or off. As is clearly apparent, this objection concerns the admittance of new evidence as well as factual elements. The admittance of these documents and the corresponding objection is therefore at the discretion of the board.

Firstly the board noted that, the opponent’s stance is not reconcilable with the wording of the legal provision. The provisions of Art 13(2) RPBA20 take effect either after the expiry of a period specified in a communication under R 100(2) or “after notification of a summons to OP”.

There is nothing in the wording of the article to indicate any exceptions to this, or that the application of Art 13(2) RPBA20 is dependent on the subsequent procedural history of the case, see T 2279/16, reasons 7.2.

Moreover, the opponent’s stance is not reconcilable with the object and purpose of Art 13(2) RPBA20 in the context of the revised version of the Rules of Procedure. According to Art 12(3) RPBA20 the statement of grounds of appeal and the reply, respectively, must contain the parties’ complete appeal cases.

The notification of the summons then sets an objective and predictable trigger for the third level of the convergent approach. This is the point in the procedure when the board, in ordinary circumstances, can safely assume that all submissions of the parties are on file, so that the board can outline in the communication pursuant to Art 15(1) RPBA20, what the most important issues to be discussed will be without running the risk of missing any submissions. At this point normally, the framework of the discussion at the OP is defined, and further amendments to the appeal case are only taken into account in exceptional circumstances.

It follows that also in view of the object and purpose of Art 13(2) RPBA20, the subsequent procedural development is entirely immaterial for the function of the summons as objective and predictable start point for the third level of convergence.

The board added that the opponent also errs in that procedural economy was the sole rationale behind the convergent approach. Another is the implementation of the appeal proceedings as a judicial review of the decision under appeal, see Art 12(2) RPBA20.

This principle limits the possibility to leave the legal and factual framework of the first instance proceedings at any point in the appeal procedure. However, the later an amendment of the appeal case is presented, the higher the likelihood that the case would need to be remitted. This is another reason for the introduction of the third level of convergence, at which amendments are in principle not taken into account unless special circumstances exist.

The board thus exercised its discretion pursuant to Art 13(2) RPBA20 so as not to admit the late filed documents.

The request for reimbursement

The proprietor’s position

The opponent had caused postponement of the first OP by requesting referral of a question concerning the legality of OP by ViCo to the EBA. The opponent had not informed the proprietor of their intention to make this request in advance. This caused the proprietor’s representatives unnecessary preparatory work for a discussion of the substance of the case for the first OP.

The late filing of an entirely new appeal case containing new objections and evidence also caused the proprietor’s representative unnecessary work.

The board’s position

The referral

For the board, it is a party’s right to request a referral, and exercising this right is not a reason for a different apportionment of costs. The exercise of this right should in particular not be limited by the threat of apportionment of costs.

The postponement of OP due to a request for a referral of a question of law to the EBA which was not announced in advance by the party making the request normally does not justify apportionment of costs.

Since there is no guarantee that such a request will be successful, all parties will normally have to prepare for a discussion of the substance of the case irrespective of whether the request is announced in advance or not, see reasons 8.

The late submissions

While the board tends to share with the proprietor the strong impression that the appellant merely attempted to file a brand new appeal case in the guise of a reaction to the board’s preliminary opinion, it is nevertheless to be determined whether such late filing incurred costs that would not have been incurred if the appellant had filed the new submissions with their statement of grounds of appeal.

Preparation for discussions of admission and also for a discussion as to the substance in the case that late submission are taken into account is part of the normal preparatory work of each party.

It is not apparent to the board, and it has not been substantiated by the proprietor, that higher costs have been incurred by the timing of the submissions in question after the first summons, compared to the hypothetical situation that the appellant had filed them with the statement of grounds of appeal. Whether submissions are ultimately relevant for the decision normally does not play a role in deciding whether they justify a different apportionment of costs, unless maybe they are so irrelevant that they can be considered an abuse of the procedure. Again it is not apparent to the board, and has not been argued by the proprietor, that this is the case here.


Application of Art 13(2) RPBA20

That two successive OP will be held before a BA will remain a rare occurrence. The aim of an OP before a BA is to bring the case to a close at the end of the OP, cf. Art 15(6) RPBA20.

The present decision makes clear that in case of a second OP in the same case, it is the summons to the first OP before a BA which will trigger the application of Art 13(2) RPBA.

If in opposition, there is, for whatever reason, a second OP, all submissions of the opponent will be late even if they are filed within the time limit under R 116(1) of either OP, unless the legal and factual situation has changed.

The same applies to requests of the proprietor filed after the time limit under R 116(1) for either OP, unless the legal and factual situation has changed.

The decision of the BA with respect of the late filing of submissions by the opponent is thus without any surprise.

Apportionment of costs

The pending referral

In general, the use of a procedural right does not in principle constitute an abuse of procedure, cf. T 2177/12. Even missing out the time limit for filing the statement of grounds of appeal, does not warrant a different apportionment, cf. T 608/19.

A request for a referral represents as well the use of a procedural right, so that a different apportionment of coats was not warranted in the present situation.  

The present situation is similar to that occurring when an opposition procedure has to be stayed in view of a pending referral before the EBA, cf. T 992/16.

The late submissions

Late filed submissions do not automatically end up with a different apportionment of costs, cf. T 1596/14.

The criterion used by the board, according to which no higher costs have been incurred by the timing of the submissions in question after the first summons, compared to the hypothetical situation that the appellant had filed them with the statement of grounds of appeal is a new and interesting point of view.

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