The patent relates to an “Oven cabinet”.
Brief outline of the case
The OD revoked the patent and the proprietor appealed the decision.
The board confirmed that claim 1 as granted was adding matter as “comprising” was broader than “receiving”.
The board admitted AR1, set aside the OD’s decision, and remitted the case for further prosecution on the basis of AR1.
The case is interesting in view of the board’s decision to admit AR1.
Acceptance of AR1
The opponent’s point of view
AR 1 was filed late in appeal proceedings and should have been filed during opposition proceedings.
AR 1 was not prima facie allowable since claim 1 still contained an amended feature, which had been found non-allowable. Furthermore, the amendments to claim 1 did not comply with the requirements of R 80, and the subject-matter of claim 1 lacked N and IS.
The proprietor’s point of view
AR 1 was an appropriate response of the proprietor to the reasoning in the contested decision and the arguments reiterated by the opponent in its reply to appeal.
Claim 1 of AR 1 recited the claim language of claim 1 as filed and therefore brought the wording in line with the requirements of Art 123(2).
The board’s decision
Since AR 1 was not filed with the statement setting out the grounds of appeal, it constitutes an amendment to the case under Art 13(1) RPBA. Its admittance was thus at the board’s discretion.
The amendment to the case can be considered an appropriate reaction of the proprietor to the reasoning in the contested decision and the arguments reiterated by the respondent in its reply to appeal since it prima facie overcomes the objections under Art 123(2) and (3).
Although AR 1 was not filed together with the grounds of appeal but only in reaction to the reply to the appeal by the opponent, it was nevertheless filed at a very early stage of the appeal proceedings. This allowed the opponent to react and the board to consider the arguments of both sides on the proposed amendment when dealing with the case in preparation for its communication under Art 15 RPBA.
For the board, it is not excluded that a patent proprietor can amend its patent in appeal proceedings to overcome the grounds leading to the revocation of the patent.
In the current case, the proprietor did react to the objections raised during opposition proceedings by filing amended sets of claims in which the objected feature had been replaced.
These bona fide attempts to overcome the objections under Art 100(c) were, however, not successful since the opposition division concluded that these AR did not meet the requirements of Art 123(3).
Hence, the proprietor found itself in a so-called inescapable trap, cf. see G1/93, OJ 1994, 541, Reasons 13.
Usually it is not self-evident how to overcome an objection under Art 123(2) in such a scenario.
Therefore, the filing of a further request to overcome the objection under Art 123(2) could be considered an appropriate reaction of the proprietor to the course of opposition proceedings.
The further grounds for opposition pursuant to Art 100(a) and (b) were not discussed conclusively in the opposition proceedings. Hence, the board saw no reason why the proprietor should be limited to file AR which on a prima facie basis overcome all outstanding objections raised during opposition proceedings. The purpose of the appeal proceedings is instead to focus on the grounds discussed in the appealed decision. This condition is clearly met by AR 1.
Claim 1 of AR 1 is based on the wording of claim 1 of the application as filed.
Although the terms “comprising” and “receiving” in the context of claim 1 have different meanings, no added matter can be identified in comparison to the application when both terms are simultaneously present according to specific features of claim 1 of AR 1.
Compared to claim 1 as granted, the scope of protection has been limited due to the addition of a specific feature since the added feature implies that the bottom panel is shaped in a specific manner for receiving the electronic component.
The case was thus remitted to the OD for further prosecution.
It can be agreed with the board that the purpose of appeal proceedings is to focus on the grounds discussed in the appealed decision.
Lots of boards do however consider that a request like the present AR1 should have been filed before the OD and the proprietor should not have waited to appeal in order to file a further request attempting to overcome objections raised in opposition. After all, there was no decision of the OD on the present AR 1. The filing of a request only when entering appeal is without any doubt contrary to Art 12(2 to 4) RPBA.
Compared to other boards, waiting to enter the second level of convergence in order to file an AR overcoming objections which were present all along the procedure has rarely led to such AR to be admitted. This is the more so, since no new objections have been raised in appeal by the opponent.
In T 2239/18, the board held that, contrary to the provisions of Art 13(1) RPBA, the proprietor gave no reason for submitting AR 4 to 6 only at this stage of the appeal proceedings.
In the present case, the proprietor did not give any reason but to claim that AR1 overcame the objection of added matter.
Some boards held that, due to the mere fact that requests in which claims had been deleted were considered as an amendment to the proprietor‘s case under Art 13(1) RPBA. Such requests were not admitted even if they could be considered as not detrimental to procedural economy. See for instance T 1259/17, T 482/19 or T 317/20.
In the present case, the proprietor can consider itself quite lucky. I do not remember when a board has accepted at such a late stage to help out a proprietor from an inescapable trap it had put himself in.
The present decision shows that, if they want, boards can be quite lenient and accept, even at a late stage, an AR which could, without any doubt, hence should have been filed much earlier. I am in favour of such decisions on admissibility. Revoking a patent for very formalistic reasons should rather be the exception and not a quasi-rule.
Nevertheless, the present decision shows once more that the boards do not act in a similar way in similar circumstances. In any case, such a procedural lottery should not occur at the boards of appeal of the EPO.
It is very important to note that the present decision was taken pursuant to Art 13(1) RPBA. It is most probable that, if the proprietor had waited to be summoned to OP, Art 13(2) RPBA would have applied and AR1 would most probably not have been admitted in the procedure.
The game played by the proprietor was extremely risky and should rather be avoided. Any AR should be filed timely before the OD. This is the only guarantee that the AR will be part of the appeal procedure. Any request filed after the decision of the OD risks not being admitted in appeal. A small chance exist if the request is filed when entering appeal.