EP 2 052 447 B1 relates to a subsea switchgear apparatus.
Brief outline of the case
The patent was maintained in amended form and the opponent appealed.
The board held that the OD committed a SPV, set aside the decision, and remitted the case for further prosecution.
The SPV
The board considered that a SPV occurred as the decision did not address an objection which, at least potentially, could have changed the decision.
In the notice of opposition, the opponent raised an objection that the subject-matter of dependent claim 2 as granted, which is identical to claim 1 of the sole request in opposition and appeal, did not involve an IS in view of E8+E6.
The decision under appeal did not contain any reasoning and conclusion concerning this objection, be it explicit or implicit. Therefore the decision does not meet the requirements of R 111(2).
The board was aware that the OD informed the parties in the annex to the summons to OP of their preliminary opinion according to which the subject-matter of claim 1 of the sole request appeared to involve an IS in view of E8+E6. However, the final decision did not address all those objections.
The board could not discern any declaration or action by the opponent that could be taken to be an explicit or implicit abandonment of the objection of lack of IS over E8*E6.
In the board’s view, neither the minutes nor the decision under appeal contain any explicit declaration by the opponent to this effect. They also do not reflect any implicit abandonment.
Objections based on E1+E10 as well as E3+E10 were discussed during the OP..
For the board, the opponent merely followed, during the OP, the chairman’s conduct of the OP but did not implicitly abandon any or all further objections besides those discussed. The OD accepted only a discussion of inventive step starting from documents E1 or E3 as starting point.
Due to this fact, the opponent could not assume that the OD had implicitly dealt with the further objection based on E8+E6, by only accepting a single piece of prior art or only exclusively accepting E1 or E3 as the starting point for the assessment of IS.
Although the opponent declared at the end that he had “no further objections to raise“, the board noted that objections presented in writing do not need to be repeated at the OP in order for the deciding body to have an obligation to taken them into account in the final decision. The board referred to R 5/19, Reasons 3.6.
Therefore, the OD could not legitimately assume that the objection in question was abandoned. Rather in case of doubt it would have been incumbent on them to clarify the procedural situation.
Comments
In opposition no binding effect of the statement “no further objections to raise”
The decision is interesting in that it makes clear, that by declaring, at the end of the OP before an OD, the opponent had “no further objections to raise“, the opponent does not abandon any objection filed at the outset of the opposition procedure. The opponent is not obliged to ensure that the content of the grounds of opposition were discussed at the OP.
Duty of clarification of the OD
It would have been the duty of the OD to clarify the procedural situation before closing the OP. That the objection based on E8+E6 was commented in the annex to the summons can certainly not be considered as a decision on this objection.
In order to avoid any misunderstanding, the OD should always clarify the status of all previously filed requests before closing the OP, provided it was clear that some were abandoned and there are no reasons to suggest that a party’s intentions were not correctly understood, e.g. on account of subsequent actions and/or statements, see T 52/15.
In appeal binding effect of the statement “no further objections to raise”
In R 5/15, the EBA made a distinction between
- The consequences of the acknowledgement “no further objections to raise”. At the latest, when asked by the Chairman at the end of the OP for further requests or comments pursuant to R 106, the opponent’s representative should have complained, that document E13 had not yet been discussed in the proceedings and that the board had therefore prematurely communicated a result concerning the existence of inventive step. The absence of an objection under R106, then led to the corresponding ground of the petitioner not to be admissible.
- The consequence of the absence of taking into account some reasons raised by the opponent in its grounds of appeal. The failure to take into account the arguments in the grounds of appeal, led to a SPV by the board for which an objection under R 106 was not possible, as the non-consideration could only be ascertained from the decision.
On the one hand, the opponent is not obliged to ensure that the content of the grounds of appeal are discussed at the OP, when it can be assumed, that they would be discussed in the written reasons for the decision.
On the other hand, in appeal there is an obligation to raise an objection under R 106 before delivering the statement that there is “no further objection to raise” and the subsequent closure of the debate. If a party is of the opinion that a topic is still to be discussed in appeal, said party has to make this clear during the OP before declaring there is “no further objection to raise”.
General conclusion
Before a deciding body of the EPO, an opponent should only declare that it has “no further objection to raise”, after having clarified that no written objection has been abandoned and should be decided before the closure of the OP/debate, be it in first instance respectively in appeal. In appeal, the declaration “no further objection to raise” has direct consequences.
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