EP 2 914 137 B1 relates to a a filter for a smoking article.
Brief outline of the case
The OD held the priority claim valid. The priority document is GB 201219540 and was published as PCT/GB2013/052813.
The patent was maintained according to AR3. The proprietor and both opponents appealed.
The board held the priority of claim 1 of AR3 as not being valid, Claim 1 as maintained then lacked IS over D30 and a document illustrating CGK.
AR4, in which a feature was deleted, was not admitted under Art 13(2) RPBA.
AR5-18 were not substantiated when entering appeal, so that Art 12(3) RPBA applied. The substantiation for AR5-18 was filed well after the reply to the opponent’s appeals. so. Moreover, the proprietor had not shown that AR5-18 could overcome the objections raised against AR3.
AR5-18 were not admitted under Art 13(1) RPBA.
The patent was thus revoked.
The opponents’ point of view on the validity of the priority
The opponents challenged the validity of the priority claim for the alternative “wherein the smoke modifying additive is disposed only in said axial region of the filter material of the first filter section” in the feature directed to the location of the smoke modifying article in claim 1 of AR3.
The board’s decision on the validity of the priority
Figures 1-5 of the priority document depict various types of additive located in the central region of a filter section. For example, in figures 1 and 4 (see above), a capsule is located in an axial region of a first filter section.
For the board, none of the passages in the description relating to the figures contain a statement to the effect that the depicted smoke modifying additive is the only additive in the filter.
In the board ‘s view, these drawings therefore can only serve as a basis for a positive feature directed to the presence of such additive in a central region of the filter. Such a positive feature does not rule out the presence of some further, non-depicted additive in another region of the filter.
In contrast to that, the board construed the feature “only in the axial region” as a negative feature which is directed to the absence of any smoke modifying additive from other regions of the filter, e.g. its peripheral region.
The board noted that the feature of the smoke modifying additive being only present in an axial region of the filter was disclosed in claim 1 of the application as filed, but not in the description of the grandparent application.
It followed that D30=WO 2013/000967, not mentioned on the ISR established by the EPO became prior art under Art 54(2), and claim 1 of AR3 was lacking IS.
The proprietor’s point of view on the admissibility of AR5-18
In preparation for the OP before the OD, the proprietor filed AR4-18. For all those AR, the proprietor gave the basis in the previous request resp. in the original disclosure and gave reasons for the amendments. He did however not give any reason as to why those amendments would overcome the objections raised by the opponents.
With the statement of grounds of appeal, the proprietor re-filed, inter alia, AR5-18. The statement of grounds of appeal contained a table with a summary of the AR and their relation with the requests as filed during opposition proceedings. No reasons as to why those amendments would overcome the objections raised by the opponents were given.
The board’s decision on the admissibility of AR5-18
The board held that AR5-18 were not substantiated in the statement of grounds of appeal. Instead, the substantiation was only filed later with a further letter of the proprietor.
No substantiation of AR5-18 was thus filed as required by Art 12(3) RPBA.
The board emphasized that with respect to the filing of a new set of claims, i.e. AR5-18 on which the OD did not decide in the impugned decision, it was necessary to explicitly state why the amendments in these requests overcome the objections which are raised by the opponents.
The board added that such lower-ranking requests will be necessary if the higher-ranking requests fail. Accordingly, when the claims deemed allowable by the OD are deemed not allowable by the board, it is for the proprietor to formally request that the impugned decision be set aside and the patent maintained in a version different from the one upheld.
In this case, it is primarily the proprietor who must provide arguments as to why the lower-ranking requests may still be patentable, in order to counter the opponents’ usual request for revocation as an automatic consequence of the upheld request lacking patentability.
As the lower-ranking requests have not been examined by the OD, there is no initial assumption that they are patentable.
The board added that the amendments in AR5-18 were not self-explanatory. The board could not understand without further investigation why these requests overcame the IS objection starting from D30.
Therefore, in line with established jurisprudence of the boards, AR5-18 became effective only at the date on which they were substantiated. These requests were thus amendments to the proprietor’s appeal case under Art 13(1) RPBA and not admitted in appeal.
Comments
Validity of the priority
The key message to take from the present decision is that, in the absence of a corresponding explanation in the description, drawings can only serve as a basis for a positive feature. This is pretty manifest, but it is good to get a reminder.
Admissibility of AR5-18
I have noticed in many cases I went through recently that, when filing AR in opposition, proprietors generally indicate the source of amendments but omit to give any reasons as to why the AR overcome the objections raised by opponents.
A first consequence is that those AR cannot be considered as having been admissibly raised in the meaning of Art 12(4) RPBA.
In the present case, the proprietor, by not filing as early as possible the substantiation for AR5-18, fell into the second level of convergence under Art 13(1) RPBA.
Not substantiating AR in opposition, has the direct consequence that, in general, they will not be admitted either under Art 12(4) or Art 13 RPBA.
The present decision confirms T 1732/10 which was cited in no less than 30 decisions of the boards.
This position was not shared in T 1128/21, commented in this blog which confirmed in T 1220/21, also commented in this blog.
In T 1128/21 the board held that T 1732/10 was not any longer applicable under the present RPBA. The present decision is a proof to the contrary. To make it clear, the boards should not find further reasons not to admit AR which have been been admissibly filed.
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