EP 2 598 450 B1 relates to a compacted body, in particular a briquette, suitable for use as a mineral charge in the production of man-made vitreous fibres (MMVF).
Brief outline of the case
The OD decided maintenance according to AR 1. Proprietor and O II appealed.
Within the time limit under R 116(1), the proprietor filed 44 AR.
The board decided that claim 1 as granted, as maintained or according to AR1a and 1b lacked IS over D1+D2.
As objections against AR2 were filed after the summons, they were not taken into account.
The patent was maintained according to AR2.
Admissibility of the AR filed before the OD
Both opponents requested the OD not to admit the 44 AR.
The board held that the OD exercised its discretion in a reasonable way and based on the right criteria.
The OD considered that the AR were a serious attempt to address objections raised by the opponents. They also considered the time of filing appropriate in view of their negative opinion. These criteria are appropriate criteria to rely on when deciding on the admission of late requests.
According to established case law, the boards do not have the power to disregard on appeal submissions correctly admitted by the OD in exercise of its discretion. The board referred to Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.4.4.
Therefore, all the AR were part of the appeal proceedings.
Non-admissibility of the objections raised against AR2
O II only raised objections under Art 56 and Art 123(2) after notification of a summons to OP and after a communication containing the board’s preliminary opinion.
The opponent failed to present cogent reasons for their late submission. Moreover, there were no exceptional circumstances as there were no new or unforeseeable developments in the appeal proceedings.
The proprietor resubmitted all the AR with its statement of grounds of appeal and again with its reply to the opponent’s appeal.
In its reply to the proprietor’s appeal, O II did not comment on AR 2, nor did it respond to the proprietor’s reply to its appeal, in which AR 2 was again filed.
If O II wished to challenge AR 2, it should have done so in its reply to the proprietor’s statement of grounds of appeal or at the latest in a submission prior to the issue of the board’s preliminary opinion.
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Admissibility of carry over requests
As the OD decided maintenance according to AR 1, all the remaining requests were not subject to a decision of the OD.
All requests beside the MR and AR1 were thus actually carry over requests.
The board did admit them as having been correctly filed and admitted by the OD.
The present board specified that the boards do not have the power to disregard on appeal submissions correctly admitted by an OD in exercise of its discretion. This should be sufficient to stop the diverging decisions in matters of carry over requests.
The present decision is thus in accordance with T 446/22 , commented in this blog, T 924/22, commented on this blog, T 1175/22, also commented on this blog, and T 709/22, as well commented on this blog. The same applies to T 42/20 (Reasons 4.2)and T 476/21 (Reasons 7.1 to 7.3).
In T 921/21, commented on this blog, the bord examined ex-officio all AR filed in opposition after it had decided that the MR was not allowable.
We have thus here a further decision which disagrees with T 1135/22, commented in this blog, T 1690/22, also commented in this blog and T 246/22, as well commented in this blog,
In T 1128/21, commented on this blog, after rejection of the opposition, the board held that claim 1 as granted infringed Art 123(2). Carry-over requests AR1-3 were not admitted under Art 12(3 and 5) RPBA for lack of substantiation.
Provided carry over requests were filed and substantiated in time before the OD, they should be admitted in appeal.
The non-admissibility of the objections against AR2
In T 664/20, commented on this blog, the OD had maintained the patent according to AR2. AR3-15 were left and were thus carry-over requests. The board held that the opponent should have objected and filed the corresponding evidence anew for all the carry over requests, even if the opponent could not know which AR would be kept by the proprietor.
The situation is different here, as after the proprietor’s appeal, the opponent knew which AR were maintained by the proprietor.
It remains still requiring a lot for an opponent to object against the remaining 40+ carry over requests. This is the more so since a late filed experimental report of the opponent was admitted in the procedure by the board, as it could not have been filed in advance of the OP before the OD.
The problem for the opponent was that the late filed experimental report was applicable to AR1, but not AR2.
It would have been preferable for legal security, if the board had checked prima facie, whether the objections against AR2 were convincing or not. The board preferred to rely on formalities.
In view of the large number of AR filed in opposition, the opponent could also have requested adjournment of the OP, once it was clear that the AR were admitted by the OD.
For the board, by deciding maintenance according to AR2, the file disappeared from its tablets and would not come back.
On the procedure
D1 and D2 have led to the lack of IS of claim 1 as maintained. They were also showing a lack of IS of claim 1 as granted, and of AR 1a and 1b.
D1 and D2, were the two first documents of category Y cited in the ISR established by the OD.
It is therefore possible to conclude that the patent should not have been granted in the form it was.
As the board concluded to a lack of IS of claim 1 as granted, it did not sustain the ground of opposition under Art 100(b) adopted by the OD.
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