The patent relates to a security element particularly for banknotes, security cards and the like, which has a high anti-counterfeiting capability.
Brief outline of the case
The OD rejected both oppositions.
Opponent 1 appealed this decision.
The board held that the subject-matter of claim 1 as granted did not comply with the requirements of Art 123(2), so that the ground for opposition under Art 100(c) EPC prejudices the maintenance of the patent as granted.
The same applied to AR 1-4.
AR 4A to 4C were not admitted in the procedure.
The patent was thus revoked.
Admissibility of AR 4A to 4C
The problematic feature
Feature (G) in claim 1 as granted implied both the horizontal and vertical separation of some magnetic areas (3, 4).
However, the vertical separation of the magnetic areas was not disclosed in the application as originally filed.
For the opponent, removing the feature of vertical separation would infringe the requirements of Art 123(3). Feature (G) thus represents an inescapable trap.
The proprietor considered that the argument that there was an “Art 123(2)/(3) trap” situation was new and had not been raised in any of the opponents’ submissions.
In particular, it was only argued that feature (G) could be interpreted as requiring a horizontal or a vertical separation, but that this could lead to a trap situation was not argued in any of the submissions.
The board agreed with the arguments of the opponent. The opponent’s argument did not constitute a new legal ground as it still concerns a violation of Art 123(2).
Only – through the discussions during the OP – the consequences of this infringement proved to be those of a trap situation
Filing of further requests
As the situation occurred during OP, the proprietor still had the theoretical possibility of reacting to this with new requests.
However, it seems – as is inherent in an “Art 123(2)/(3) trap” situation – that there is no way out of this predicament.
By filing AR 4A to 4C the proprietor attempted to overcome the “Art 123(2)/(3) trap” situation by better defining the horizontal separation of the magnetic areas and excluding vertical separation of the magnetic areas.
As usual with an “Art 123(2)/(3) trap”, the exclusion of vertical separation would lead to a violation of Art 123(3), as this would broaden the scope of protection granted. On the other hand, healing of the violation of Art 123(2) is impossible as the original application documents do not provide a sufficient basis for the presence of a vertical separation. The elimination of feature (G) as a whole would be all the more contrary to the requirements of Art 123(3).
Consequently, prima facie none of the auxiliary requests 4A to 4C can overcome the objections under Art 123(2) and (3), irrespective of the discussion whether there are exceptional circumstances that would justify the filing of new requests at this very last stage of the procedure.
The board concluded that an inescapable trap intrinsically precludes the admission of new requests under Art 13(1) and (2) RPBA21, as the requirements of Art 123(2) and (3) cannot both be satisfied.
Consequently, AR 4A to 4C were not admitted into the proceedings.
Comments
Raising during OP an objection of “inescapable trap” cannot be considered as raising a new ground of opposition as it is only the consequence of an earlier objection under Art 100(c) or Art 123(2).
In principle, a new objection raised during OP would allow the proprietor to file a new request under Art 13(2) RPBA21.
In T 1832/18, the board held that, in exercising its discretion under Art 13(2) RPBA21 i.e. at the third level of convergence, the board may also rely on criteria applicable at the second level of the convergent approach, i.e. those set out in Art 13(1) RPBA21.
This decision makes clear in case of an inescapable trap coming up in the course of OP, the proprietor also sits in an “Art 13(2)/(1) RPBA21 inescapable trap”.
https://www.epo.org/law-practice/case-law-appeals/recent/t192257eu1.html
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