EP 3 468 222 B1 relates to a headphone. It aims at providing a headphone that does not completely shield the wearer off from the outside acoustic environment.
Brief outline of the case
For the OD, claim 1 as granted lacked N over D1. All AR on file were not allowable under Art 54, 56, 84 and 123(2). The proprietor appealed.
Contrary to the OD, the board found claim 1 novel, but lacking IS over D1. All the other AR, AR1, 2, 2A, 3 to 12 and 12A were not allowable under Art 56, 84 or 123(2). AR1mod to 7mod and 9mod to 12mod were not admitted under Art 13(2) RPBA.
For the board the difference with D1 lay in feature (d1): the high-frequency acoustic driver is carried by the support structure such that the high-frequency acoustic driver (122) is located closer to the user’s ear than the low-frequency acoustic driver (110).
The case is interesting in view of the change of objection from lack of N to lack of IS and the refusal .of the board to remit once it held N given, as well as the reasons for not admitting AR1mod to 7mod and 9mod to 12mod.
In the present blog we will discuss the non-remittal of the case.
The proprietor’s request for remittal
The proproprietor supported its request for remittal of the case to the OD for further prosecution by pointing out that the issue of IS was not addressed in the appealed decision regarding the MR. In its view, this issue was not part of the appeal proceedings. Furthermore, the proprietor alleged that it was not customary for a board – also in view of the purported practice of other boards – to extend the scope of judicial review as defined by Art 12(2) RPBA.
The board’s decision of non-remittal
The board recalled that Art 12(2) RPBA mainly concerns obligations on the parties and not the board, cf. T 862/16, Reasons 2.8 and 8, in particular Reasons 8.3.1.
In addition, Art 12(2) RPBA states that there is a “primary object of the appeal proceedings”, which is the review of the contested decision in a judicial manner.
For the board, where there is a primary object, there must also be a secondary object, and part of this secondary object is in fact the board’s ex-officio powers as enshrined in Art 114(1).
The board did not see any restriction of its power conferred by Art 114(1) to raise new objections of its own motion and referred to T 655/21, Reasons 1.7, in particular Reasons 1.7.1.
Moreover, as acknowledged by the proprietor, at least two written submissions addressed the issue of IS in the course of the overall proceedings, namely the notice of opposition and the statement of grounds of appeal.
The board considered that it was not necessary and appropriate to remit the case to the OD for further prosecution, cf.. Art 111(1), In particular, it saw no “special reasons” to do so, cf. Art 11 RPBA.
Comments
The proprietor is right when he states that, when an OD’s decision of lack of N is set aside by a board, it is not infrequent that the board remits for further prosecution in order to discuss IS. See for instance T 1770/22.
A similar situation occurs when the board sets aside a decision of the OD concluding to a lack of sufficiency, cf. T 1530/22, or added matter, cf. T 533/23.
The comment of the present bord that, if there is a primary object mentioned in Art 12(2) RPBA, there must also be a secondary object is quite relevant. The present board found this in its power conferred by Art 114(1) to raise new objections of its own motion, and not take a dogmatic position based on the RPBA.
As the aim is not to maintain patents which have no raison d’être, this is a laudable position and it insured legal certainty about the fate of the patent.
The present decision is in line with the spirit of T 131/01. In T 131/01, it was held that a change from an objection of lack of N to an objection of lack of IS was not introducing a new ground of opposition, should the board decide at the OP that, contrary to the OD, N is given.
This position is in manifest contrast with other boards who have decided to ignore G 1/95 and T 131/01.
I refer here for instance to T 1242/21, commented in this blog. In T 1242/21, the board even went so far as to assert that T 131/01 was an isolated decision, which is manifestly wrong.
In T 1042/18, also commented in this blog, the board held that going from an objection of lack of N to an objection of lack of IS, once the board had decided during OP that N was given, was an non-admissible amendment of the opponent’s appeal case and that Art 13(2) RPBA applied in this situation.
The present board was careful and avoided to answer the question of whether Opponent’s 2 arguments could be admitted under Art 13(2) RPBA and, if so, whether they should be admitted.
It remains, that boards should not maintain patents which have no raison d’être, and not take Art 13(2) RPBA as a pretext not to examine IS when it has decided that N was given.
The present decision is also in line with T 364/22, commented in this blog.
On the procedure
The patent is classified in H04R 1/10, H04R 1/26 and H04R 5/03, whereby the search was carried out in H04R.
D1=WO 96/28000, is classified in H04R3/12, H04R5/02, H04R5/033, H04R5/04. D1 was also published as EP0872155 and classified in H04R5/02.
It is thus surprising that this document has not been found during the original search, as EP0872155 had also been searched in H04R when establishing a SESR.
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