The patent relates to a method of printing ink and in particular to a method of printing UV-curable ink.
Brief outline of the case
Contrary to the OD, the board considered that the new MR filed during opposition was not unduly extended.
It has further decided that the MR was patentable over all documents cited by the opponent.
The proprietor requested that the case be remitted to the opposition division for adaptation of the description. The opponent was against remittal.
The board decided remittal to the OD in order to adapt the description.
The board’s reasoning
The board held that Art 11 RPBA20 only applies to cases that are remitted “for further prosecution“.
The board added that Art 11 RPBA20 does not apply to cases that are remitted with an order by the board to grant a patent or to maintain a patent in amended form, be it with or without adaptation of the description. The board referred to document CA/3/19, section VI, explanatory remarks on Art 11 RPBA20, second paragraph; as well as Supplementary publication 1, OJ EPO 2022, Annex 2, explanatory remarks on Art 11 RPBA20.
Based on established case law, the board held that, in order to meet the requirement of Art 84 that the claims be supported by the description, any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised and referred specially to T 977/94, point 6 of the Reasons, and T 1808/06, point 2 of the Reasons.
The opponent argued that the examination of whether the description and/or drawings of the patent are consistent with the current amended claims of the main request, i.e. whether the requirement of Art 84 is met, is not straightforward in the case at hand, even considering the amendments made on description pages 3, 5 and 6.
The board considered that the adaptation of the description to the amended claims must be done carefully to avoid inconsistencies between the claims and the description and/or drawings which might render the claims unclear or unsupported. At the same time, care must be taken not to make more amendments to the description than necessary. Amendments to the granted patent directly affect the version in which the patent is to be maintained as amended, and therefore concern – as a rule – the core issue of the opposition or opposition appeal proceedings.
It follows that the adaptation of the description and/or drawings of the patent in suit requires due care and may require a considerable amount of time for evaluating and arguing by the opponent and the opponent and the EPO. The opponent must be given sufficient time to formulate any objections and the proprietor must have sufficient opportunity to respond to such objections.
The board considered it appropriate to remit the case to the department of first instance only for adaptation of the description in accordance with Art 111(1), second sentence.
The board explained in a detailed manner why it considered necessary to remit to the OD in order to adapt the description.
The board acknowledged that remittal in order to adapt the description does not correspond to the explanatory notes on Art 11 RPBA20 in which the following is stated that
In particular, Art 11 RPBA20 does not apply to cases that are remitted with an order by the Board to grant a patent or to maintain a patent in amended form, with or without the description to be adapted. In principle it only applies in case of “further prosecution”.
T 977/94 is interesting. In T 977/94 the board considered that although Art 111(1) permits remittal to the first instance department in order to adapt the description, for reasons of procedural economy it is advisable to avoid as far as possible referring the case back to the first instance to adapt the description to the amended claims.
The board added that indeed, the Board of Appeal which has found the invention defined in the claims to be patentable is a priori in a better position than the OD to check the adaptation of the description in order to set out the same invention.
T 977/94 is in line with the explanatory notes on Art 11 RPBA20, although it goes back to December 1997, i.e. 25 years ago!
The notion of procedural economy has evolved with time as the RPBA20 tell us.
Reduction of the backlog of the BA was a prime aim of the RPBA20 although it was never said directly and unambiguously.