EP 3 393 687 B1 relates to a method and device for recycling metal scraps.
Brief outline of the case
The OD decided that the patent as granted lacked N over D2=WO 97/05969.
AR 1 was held to infringe Art 123(2). The patent was maintained according to AR2.
AR 1, 5, 6, 3, 4 or 7 in appeal were submitted in opposition as AR I, IV, V, II, III and VI. The numbering of the AR was amended with respect of AR 1-26 filed within the period set in R 116(1).
Both the proprietor and the joint opponents appealed. During appeal, the joint opponents withdrew their appeal.
The board confirmed the OD’s decision with respect of the patent as granted and AR1.
The proprietor requested in appeal that AR 5, 6, 3, 4, 7 to be dealt with before AR2. The board decided not to take into account AR 5, 6, 3, 4, 7 under Art 12(4+6) RPBA.
In view of the prohibition of the reformatio in peius, the patent was maintained as decided by the OD.
The proprietor raised an objection under R 106 against the non-admissibility of AR 5, 6, 3, 4, 7. The objection was dismissed.
The proprietor’s point of view on the admissibility of AR 5, 6, 3, 4, 7
The decision of the proprietor to file the present AR 2 in opposition proceedings before AR 5, 6, 3, 4 and 7 was taken after a procedural instruction by the OD to reconsider the order of the AR.
The OD had pointed out that the admission of further AR was at its discretion and, in doing so, cited significant discretionary criteria for it.
The board’s decision on the admissibility of AR 5, 6, 3, 4, 7
The decision of the proprietor to file the present AR 2 in opposition with priority over AR 5, 6, 3, 4 and 7 was admittedly taken after a procedural instruction by the OD to reconsider the order of the AR.
For the board, the OD in no way influenced the proprietor as to which and in what order it should submit the numerous AR it had already submitted.
The decision on the order of the AR to be dealt with throughout the opposition proceedings was at all times a matter for the proprietor within the scope of the procedural disposition to which it was entitled.
Consequently, in accordance with its self-chosen submission, the present AR 2 was heard and decided on first in opposition, with priority over AR 5, 6, 3, 4 and 7.
In opposition, the question therefore did not arise as to whether AR 5, 6, 3, 4 and 7 should be made the subject of the decision. Rather, this did not become procedurally effective, as the then AR 2 was already successful.
Accordingly, AR 5, 6, 3, 4 and 7 do not form part of the contested decision. Their current submission is therefore an amendment within the meaning of Art 12(4) RPBA and the order of the requests now chosen could already have been made in opposition, Art 12(6), second sentence, RPBA.
It is therefore within the discretion of the board to admit this amendment into the appeal proceedings.
The fact asserted by the proprietor that the OD had pointed out that the admission of further AR was at its discretion may subjectively have been a dilemma for the proprietor in deciding on the exercise of the options available to it within the scope of its party disposition.
Objectively, however, such a statement by the OD is not capable of restricting the proprietor’s procedural disposition, since it could at most have been a procedural indication by the OD. As the proprietor confirmed, it was free to choose its requests at any time. In this respect, its right to be heard was not violated.
No procedural error on the part of the OD is apparent. The subordination of AR 5, 6, 3, 4 and 7 was a free decision of the proprietor which was not influenced from outside.
Therefore AR 5, 6, 3, 4 and 7 are not to be considered in the context of the proprietor’s appeal, cf. Art 12(4) and 12(6), second sentence, RPBA.
Comments
AR 5, 6, 3, 4 and 7 were all timely and admissibly filed in opposition as they were properly substantiated. They were thus proper carry over requests (CoR).
I still find it very peculiar that the proprietor is disadvantaged when CoR are considered as amendments under Art 12(4) RPBA. The proprietor cannot know in advance which AR will be deemed avllowable.
When an OD states that it has discretion in accepting AR, it can only be the case with AR filed after the period set in R 116(1) or not answering objections raised shortly before or during OP.
When the board bluntly claims that the OD in no way influenced the proprietor as to which and in what order it should submit the numerous AR it had already submitted, it can only earn a weary snigger.
It might be correct that the proprietor chose to have AR2 be dealt with first, but he could not know in advance that AR2 would be allowable.
The board, once more, took formal pretexts not to look at the substance as pointed in an article of JUVE already mentioned in this blog. The board could have remitted to the OD on the basis of the CoR.
A word of warning
An OD does not have any discretion in not admitting timely filed and substantiated AR. It only has a discretion in admitting or not late filed AR.
In order to avoid problems like the present proprietor faced in appeal, never change the order of your AR in opposition.
On the procedure
The patent should never have been granted in the form it was, as D2=WO 97/05969 was not mentioned on the ISR established by the EPO. D2 bears the classes B07C5/34 and B07C5/36, which is one of the classes figuring on the patent and the IS was allegedly carried out in class B 07/C.
T 2217/22
https://www.epo.org/de/boards-of-appeal/decisions/t222217du1
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