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T 2352/19 – What are exceptional circumstances under Art 13(2) RPBA20/21

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The patent is directed to bicycles and, more particularly, to an apparatus for adjusting a position of a bicycle control device, in fact a bicycle derailleur that moves to a plurality of operating positions

Brief outline of the case

Claim 1 as granted was lacking N over O2=EP 1 426 284, prior art under Art 54(3) not mentioned in the ESR. The ESR mentioned one D,A document as well as 5 A documents.

The DO decided that AR1 was infringing Art 123(2), AR2 lacked N over O2.

The opponent appealed the decision to maintain the patent in amended form according to AR4.

In a communication under Art 15(1) RPBA20, the board found that claim 1 as maintained and of AR1 was as well lacking N over O2.

In reply, the proprietor filed AR 1 and 2, which replaced previous AR 1.

The new AR2 was not admitted under Art 13(2) RPBA20. 

The patent was thus revoked

The case is interesting in that it attempts to define what can be understood as an “exceptional circumstance” in the meaning of Art 13(2) RPBA20/21.

The proprietor’s point of view

For the opponent, there were no exceptional circumstances justifying the filing of AR 2 after the board’s summons to OP.

On the contrary, for the proprietor, the board’s preliminary opinion contained a new interpretation of the feature “operating member” that led to a new objection regarding lack of N, by considering that levers 43 and 44 in O2 corresponded to the operating member as defined in claim 1 of the MR which was surprising for the proprietor.

AR 2 was an attempt to overcome the N objection, was filed at the earliest possible time and should therefore be taken into account even if the new aspect was not used for the board’s final conclusion on the N objection in the light of O2.               

The board’s point of view

Raising an objection for the first time in a communication of the Board may result in acknowledging exceptional circumstances, see e.g. OJ EPO 2021, Supplementary publication 1, “Table setting out the amendments to the RPBA and the explanatory remarks”, page 226; Case Law of the Boards of Appeal, 10th edition, V.A.4.5.5.a)).

The board held that the mere fact that the board raised a new aspect in the preliminary opinion is not sufficient by itself to acknowledge exceptional circumstances and to admit a new request into the appeal proceedings, if this aspect is ultimately not relevant for the Board’s final conclusion.

The board stated in item 1.1 of its preliminary opinion merely that it might require discussion whether the two levers mentioned in O2, i.e. levers 43 and 44, already corresponded to an operating member as defined in claim 1 and that it did not seem to be excluded from the wording of claim 1 that they did.

It was correct that this specific feature’s interpretation had not been discussed before. However, the board’s communication continued in item 1.2 of its preliminary opinion where the board also considered the opponent’s objection made in its statement setting out the grounds of appeal, i.e. that the alternative embodiment with a “swing lever” also appeared to disclose feature 8, such that all the features of claim 1 appeared to be disclosed in O2.

Indeed, the board’s final conclusion in the OP as regards the objection of N in the light of O2 was solely based on the opponent’s objection and feature comparison which had already been assessed in the impugned decision and which was part of the appellant’s appeal case from the beginning of the appeal proceedings.

The board simply confirmed its preliminary opinion that the “alternative” embodiment with a “swing lever” disclosed feature 8 of claim 1 and thereby agreed with the opponent’s corresponding objection.

Thus, the other aspect of a possible interpretation of the two levers in O2 corresponding to an operating member of claim 1 as presented by the board in item 1.1 of its preliminary opinion, never became decisive for the board’s final conclusion and decision.

As no causality existed between a newly raised aspect and the final conclusion of the board, the newly raised aspect does not qualify as an exceptional circumstance according to Art 13(2) RPBA20/21 that could justify taking a new request into account.


Exceptional circumstance

The key message from the present decision if the following: if a statement of a board in a communication under Art 15(1) RPBA20/21, is not further pursued during the OP, the corresponding statement does not qualify as an exceptional circumstance according to Art 13(2) RPBA20/21 that could justify taking a new request into account.

It is only if a new objection raised for the first time in a communication under Art 15(1) RPBA20/21, which is pursued during OP, that a new AR might be filed.

On the procedure

The patent EP1582453 is classified in B62J99/00; B62M25/04; B62M25/08; B62M9/04; B62M9/122; B62M9/132

The prior art under Art 54(3) is classified in B62M1/36; B62M25/08; B62M9/122; B62M9/123; B62M9/132.

As the search has been carried out in B62M, and in view of the numerous overlaps in classification (see the italics), it is somehow surprising that the ESR did not mention the prior art under Art 54(3).

The patent was maintained by the OD, but revoked by the board. It is thus one more of the 50+% of decisions of an OD set aside by a board.

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