EP 3 076 815 B1 relates to an aerosol-generating device with low resistance air flow path.
Brief outline of the procedure
The opposition was rejected and an appeal was filed.
The board considered that claim 1 as granted lacked IS.
The patent was maintained according to AR1.
The reasons for admitting AR1 are interesting.
The proprietor’s point of view on the admissibility of AR1
In its reply to the opposition, the proprietor filed AR1-4 and merely indicated the source of amendments for those AR, and argued why each dependent claim was allowable with respect of the prior art submitted by the opponent.
The proprietor requested that the appeal be dismissed or, in the alternative, that the patent be maintained on the basis of AR1-4 filed during opposition proceedings and refiled with his reply to the appeal.
A proper argumentation of the AR was only submitted in reply to the opponent’s appeal.
The board’s decision on the admissibility of AR1-4
In its communication according to Art 15(1) RPBA, the board gave the following preliminary opinion on the admission of the AR filed by the proprietor with their reply to the appeal.
“AR 1 – 4 have already been submitted during opposition proceedings and substantiated in the reply to the appeal. Since the OD held in their annex to the summons that the patent as granted complied with the provisions with the EPC and refrained therefore from commenting on the AR, there was no need for the proprietor to substantiate the AR earlier.
The Board intends to admit the substantiated AR as a timely and commensurate reaction to the appeal, Article 12(2), (4) RPBA.”
Since the opponent did not comment on this preliminary opinion in writing and referred during OP only to their written submissions, the board admitted AR 1 after a “further review”.
Comments
Firstly, the board leaves open what was the subject of the “further review”. The minutes do also not help in clarifying this issue.
Secondly, the board’s comment that the opponent did not comment on the admissibility of the AR is a clear invitation to do so.
If the admissibility is contested, the board cannot satisfy itself of the admissibility of AR, according to a “further review“, whatever that “further review” may entail.
Divergence in procedural case law
When looking how other boards deal with requests not dealt with by the OD, i.e. carry-over requests, which are simply refiled when entering appeal, the present board has been very generous with the proprietor.
The proprietor did not even bother to explain why it considered the AR “admissibly raised and maintained” according to Art 12(4) RPBA.
The present board did not even bother to explain why it considered the AR “admissibly raised and maintained” according to Art 12(4) RPBA. The day judges ignore, for whatever reason, the legal texts there are meant to apply, arbitrariness enters the courtroom.
Other proprietors would have been glad to hear that there was no need for them to substantiate cary-over AR earlier than after the appeal of the opponent, when those had not been dealt with by the OD, as the latter found in the annex to the summons that the patent could be maintained as granted.
The present decision illustrates once again, that procedural matters at the boards are dealt with like in a lottery. Numerous decisions commented in the present blog deal with this issue.
There might have been good reasons to maintain the patent according to AR1, the end does not justify the means (la fin ne justifie pas les moyens).
On the procedure
Claim 1 as granted lacked IS over D1=WO 2103/098405, classified X,A in the ISR established by the EPO + D6=US 6 443 161, not mentioned in the ISR established by the EPO. According to the board’s decision, the patent should never have been granted in the form it was.
Comments
2 replies on “T 23333/22 – Is the notion of “admissibly raised and maintained” in Art 12(4) RPBA obsolete?”
Well, the Board has the discretion to admit an auxiliary request, even if it is a case amendment under Art. 12(4). If they admit in the exercise of discretion, there is no need to examine whether the “unless clause” applies. That is just judicial efficiency. Similar cases are just assuming a feature as a distinguishing feature when the claim is held obvious.
I think the trick is that Art. 12(6) second sentence can be seen as a high hurdle (especially for the appellant) and Art. 12(4) a low hurdle. In that way, if the OD rejects the opposition, the respondent can make its case with reasonable limits in their reply to the appeal. If the Board agrees with the opponent/appellant on the claims as granted not being allowable (i.e., based on essentially the same arguments as were presented to the OD in view of Art. 12(6), second sentence), the Board can remit for the examination of the auxiliary requests as soon as the amendments in the auxiliary request raise significant new issues (new relative to the matters considered in the decision of the OD). The appellant/opponent is not worse off by the remittal compared to the OD’s decision to reject the opposition.
Interestingly enough, the Presidiums original proposal for the RPBA2020 did not include the “unless clause” in Art. 12(4), as far as I know.
Dear Peter,
I have no doubts that a board can admit a request under Art 12(4) RPBA in general if it thinks that it is appropriate. In view of a change of position of the OD during OP, a new AR has been accepted by some boards. Other are stricter.
In the present case, this is not what I queried. What I queried is the fact that the request admitted was a so called carry-over request and in this respect, the attitude of the board is again quite different from that of other boards. This is the lottery effect, I mentioned. Just query “carry over requests” in the search button and you will see the great variability in approach of the boards.
When looking at the case law in matters of Art 12(4) and/or Art 12(6), there I again, there is a great variability or lottery effect.
On the other hand, the valid RPBA have not changed much with respect to AR which should and could have been filed in first instance, e.g. applying Art 12(6). What was missed in first instance cannot be compensated in appeal. If a N objection is raised and the applicant/proprietor does not file at least a request attempting to restore N over overcome an Art 123(2) objection, he has no chance to do so in appeal.
To me the hurdle is not higher under Art 12(6) than under Art 12(4) RPBA.
Some boards have also considered that by not requesting postponement of OP in case of new submissions admitted during OP before the OD, the proprietor or the opponent could not file new submissions in appeal. See T 2036/22 or T 951/19, It might be efficient, but whether this attitude is correct is a different matter.