EP 3 488 948 B1 relates to a method for analysing causes of errors in continuous casting.
Brief outline of the case
The board confirmed that claim 1 as granted lacked N over D7 not mentioned on the ESR.
The opponent filed a document D10= “Thermal mapping of a continuous casting plant for large round formats and verification of the model results”, Master’s thesis, 2012, as exemplifying CGK. The objections based on D10 were not taken into account under Art 13(2) RPBA.
Contrary to the OD, the board found that claim 1 of AR1 did not lack N over D6=B. Patrick et al: “Crack prevention in continuous casting”, 1998, representing CGK. Claim 1 of AR1 consisted of claim 1+5 as granted.
An objection of lack of IS based on D6 was not admitted for lack of substantiation.
The patent was eventually maintained according to AR1, with a description to be adapted.
The opponent’s point of view
Admissibility of D10
The reference to D10 served to substantiate and underpin CGK. With regard to the discussion of lack of N, the submission on D10 was also not to be regarded as complex.
Lack of N of claim 1 of AR1 over D6
The OD, like the opponent had submitted considered that claim 1 of AR1 lacked N over D6.
In its reply to the proprietor’s appeal, the opponent reiterated its objection of lack of N of claim 1 over D6.
The board’s decision
Non admissibility of D10
The board did not admit D10 under Art 13(2) as the opponent did not put forward any reason that there were exceptional circumstances, and in any event no valid reason under Art 13(2) RPBA justifying an amendment of the submissions at this late stage of the proceedings, i.e. after service of the notice under Art 15(1) RPBA.
Objection to lack of IS of claim 1 of AR1 over D6 not admitted
Contrary to the OD, and of the opponent, the board found that claim 1 of AR1 did not lack N over D6.
In its communication under Art 15(1) RPBA, the board noted that the opponent raised unspecific and generally formulated objections of lack of IS based on D6 or D7 in its response to the appeal.
The board added that, this submission of lack of IS of the opponent does not satisfy the requirement of sufficient substantiation, since it merely states why individual claim features in D6 and D7 are alleged to be disclosed.
Neither distinguishing features are identified nor is an objective technical problem formulated. There is also no statement as to why the solution according to the invention should be obvious.
On the basis of this submission, it is in no way apparent why the subject-matter of claim 1 of the MR and the AR should not be based on IS. Nor can the proprietor respond to the content of the submission, nor is the board in a position to assess it.
Hence, the board concluded that the patent could be maintained according to AR1.
Comments
Non admissibility of D10 and of the corresponding objections
In T 987/01, Reasons 5.2, and T 378/15, Reasons 1.2, it was held that common general knowledge is never late as it is inherent to the knowledge of the skilled person. In T 378/15 the documents were filed when entering appeal.
In T 759/08, Reasons 2.2, 2d §, it was held that CGK does not bring about a change in the legal and factual framework of the proceedings.
One can thus consider that the board did not exercise its discretion according to existing case law, in not admitting proof of CGK. What wouldhave been the situation, if D10 would have been filed in reply to the grounds of appeal?
There is however a much more valid reason for not admitting D10. CGK is in principle to be found in standard books, encyclopaedias and reference works. It has been held that a doctoral thesis is not representative of CGK, cf. T 1832/14, Reasons 1.4, penultimate §.
I would consider that this condition applies mutatis mutandis to a master’s thesis. Not admitting D10 for this reason would have been much more convincing.
Lack of substantiation of a lack of IS of claim 1 of AR1 over D6
When asserting that the objection of lack of IS was not sufficiently substantiated, the board manifestly overlooked the fact that the OD had concluded that the valid objection against claim 1 of AR1 was lack of N.
That the board could come to a different conclusion was not to be excluded. However, claiming on the basis of a given document that the same document would allow also allow an objection of lack of IS, would have seriously undermined the objection of lack of N raised on the basis of said document. If a document justifies a lack of N it cannot at the same time be considered as CPA.
This has been clearly explained in T 131/01, in which the board admitted an objection of lack of IS once it had decided that a lack of N was not sustainable.
T 131/01 has been criticised, cf. T 1242/21, commented in the present blog. In T 1042/18, also commented in this blog, T 131/01 was ignored in that objecting IS was not held as a new ground of opposition, but was not admitted as being too late under Art 13(2) RPBA. How can an opponent guess that the board could come to a different conclusion with respect to N without staying credible when it comes to a lack of IS?
It however to be noted that, in T 364/22, also commented in the present blog, it was held that a document might not be N destroying but can be used in an attack of lack of IS. In spite of not referring to T 131/01, T 364/22 applied its teaching and spirit.
It is understandable that a board does not want to deal with a new objection raised during OP, but in thhe present situation, the board should have remitted to the OD for further prosecution.
In lots of cases when the board find that an objection decided by an OD is not correct, especially when it comes to lack of sufficiency, added matter or lack of N, the board remits for further prosecution. Why did this not happened here?
By deciding to maintain the patent according to AR1, the board made sure that the file would not land back on its desk.
By, on the one hand deciding not to admit D10 for the wrong reason, and by, on the other hand not remitting to the OD for a proper discussion on lack of IS, once the board had decided that the lack of N was not given, the present decision can indeed be considered as problematic.
Comments
6 replies on “T 1966/22 – A problematic decision”
Everything looks like a nail when you have the Art. 13(2) RPBA hammer?
A nice way to summarise the situation!
It is abundantly clear that the discretion given to the boards by the RPBA is exercised in way which is not very coherent. Similar situations are not dealt with in a similar way.
What about the legitimate expectation of parties to receive the same treatment in similar situation?
If, for whatever reasons, a board is minded not to deal with a case, it has a large spectrum of means to do so. Art 12(3 to 6) and 13 are first means of choice.
I would like to refer to the following publication in JUVE, and especially to the last two paragraphs:
https://www.juve-patent.com/legal-commentary/figures-show-boards-of-appeal-productive-but-its-only-half-the-story/
The appeal procedure is by no way a continuation of the first instance procedure, but the academic formalism put to light by some boards is quite astonishing.
Well, see also today’s T1249/22, point 14.3:
“The deciding body will judge whether the cited evidence establishes that the teaching in question was common general knowledge by applying the principle of free evaluation of evidence on a case-by-case basis, as is generally the case for evaluation of evidence in proceedings before the EPO (see G 2/21, reasons 27 et seq.). This means that while it may be relevant whether the cited evidence is a “book” or a “textbook”, this fact cannot be on its own decisive, as there cannot be firm rules according which certain type of evidence are, or are not, convincing (G 2/21, reasons 34).
Not everything that is written in a book or even a textbook was necessarily common general knowledge at the time of its publication. It is true that information often appears in a textbook because it was common general knowledge when the book was drafted. However, this does not mean that any information contained in a textbook must have been common general knowledge before the textbook was written, nor even that it must have become common general knowledge with the publication of the textbook. For instance, a textbook may comprise a section in which the author presents a particular software that has been developed in their research group. The details of this software disclosed in the book will not necessarily have been “common general knowledge” beforehand nor will they become common general knowledge merely due to the publication of the textbook.
On the other hand, a statement in the background section of a scientific paper explaining that something was a common measure to achieve a particular effect may, depending on circumstances, be considered to establish that this measure was common general knowledge, even though the cited evidence is not a textbook. This may also be case if that same measure is used for the same purpose in several papers by different authors.”
Dear Tom,
Thanks for your further comments and drawing my attention to today’s decision T 1249/22.
I cannot but agree that not every book is representing common general knowledge.
I would not consider that D5 considered by the ED as representing CGK, as actually representing CGK. The board noted that the “book” is a collection of different papers or chapters. Each of the “chapters” represent a separate piece of prior art, as they appear to be self-contained papers which do not build on each other, unlike chapters of a textbook.
For me, D5 belongs to the category “specialized journals”, cf. T 1997/11 or “scientific papers”, cf. T 1651/13, which both do not represent CGK.
The reference to the free evaluation of evidence according to G 2/21 is certainly correct, but merely realising that D5 is a collection of separate “papers” is sufficient to dismiss it as representing CGK.
If the highest imperative for the EPO Boards is to drive down pendency then, as Tom wryly observes, the Art 13(2) hammer provides them with an all-purpose and infinitely adaptable tool to meet that objective.
I just hope that the Boards keep in mind what the Rules of Civil Procedure in the English courts dub the “over-riding objective” (or was the noun “imperative”, I forget) namely to do justice between the opposed parties. And then there is the public interest to consider, that bad patents should be speedily revoked and the good ones equally speedily upheld.
It is in the public interest to do justice expeditiously, but not so speedily that the quality of the “justice” delivered goes to the dogs
Dear Max Drei,
I cannot but agree with your line of thoughts.
The purpose of the EPO is not to churn out as many patents as possible so that annual fees fall in the wallet of the contracting states and of the EPO. They should be valid and not fail as after the slightest attack.
The purpose of the boards is not to churn out decisions as quickly as possible, to reduce their backlog, but to give a fair service to the parties. By revoking patents for flimsy reasons, patenting is not encouraged. By maintaining patents which have no reason d’être, society at large is not helped. Those legitimate aim and expectations of the users of the patent system should not be sacrificed on the altar of procedural rules.