EP 3 021 545 B1 relates to a “Hearing instrument with an authentication protocol” more precisely to an encrypted wireless broadcast transmissions from an external audio source to a hearing aid.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted comprised added subject-matter.
The same applied to AR1, AR ii 1+2, AR iii, 1i + 2i.
The only remaining request was AR3. The case was remitted to the OD for further prosecution.
The case is interesting as the board makes an attempt to define what is a carry-over request (CoR).
The board’s decision
AR 3 constitutes a “carry-over request” since it was filed during the opposition proceedings, but the appealed decision is not based on this request within the meaning of Art 12(2) RPBA.
Such requests do not automatically form part of the appeal proceedings. The reason is that they are considered to be an “amendment“, unless the proprietor demonstrates on appeal that these requests were “admissibly filed and maintained” in the proceedings leading to the decision under appeal, cf. Art 12(4) RPBA, first sentence.
Only if the filing of AR 3 was an “amendment“, the board would have discretion to disregard it under Art 12(4) RPBA, second sentence.
In the present case, the proprietor stated in its written reply to the opponent’s statement of grounds of appeal that AR 3 was submitted on 1 March 2021, i.e. in response to the notice of opposition, cf. R 79(1).
The proprietor also indicated the purpose for this amendment within the meaning of T 246/22, Reasons 4.14. Those reasons are to be found as well in the proprietor’s written reply to the notice of opposition and in its written reply to the statement of grounds of appeal.
Moreover, there was no doubt that this claim request was maintained until the opposition division reached its final decision. Therefore, AR 3 was “admissibly filed and maintained” and it does not constitute an “amendment” within the meaning of Art 12(4) RPBA, first sentence. AR 3 consequently forms part of the appeal proceedings.
Comments
It is manifest that AR3 was timely filed and maintained in opposition. It was not discussed by the OD as the opposition was rejected. It is not the proprietor’s fault that AR3 was not discussed by the OD.
Considering therefore AR3 as an amendment of the proprietor’s case is one possible interpretation of Art 12(4) RPBA, but it is not the only correct one. As the request was filed and maintained by the proprietor, it could be admitted in the appeal procedure.
What is important is to decide whether the AR was “admissibly” filed.
It should only be considered admissibly filed if it has been properly substantiated, i.e. the OD could have immediately discussed it in OP without a substantion having to be filed during the OP.
In such a situation, a reference to the reply to the statement of grounds of opposition should be enough in order to admit a CoR.
Self-prophecy
When the present board quotes T 246/22, it is no more than a self-profecy, as only the legally qualified member differed in the latter case and in the present one. When a board cites one of its own decisions, it cannot be considered as developing a new line of case law. This would only be the case, if a decision from another board would be cited.
An “amendment” to the proprietor’s case would be if AR3 would have been entirely new.
Other case law on requests filed and maintained in opposition
In T 42/20, Reasons 4.2, the board held that, even though it does not belong to the requests on which the appealed decision is based, AR 2 had been filed in reply to the opposition, i.e. well before the final date set under R 116(1) by the OD, and maintained in a further submission. It is however to be noted that in reply to the oppositions, AR1-6 were filed, but only the support of the claims was substantiated. No reasons as to why AR1-6 would overcome the objections raised by the opponent was filed.
The board nevertheless considered that AR2 not to be seen as an “amendment” to the proprietor’s case, and admitted it in the appeal proceedings, pursuant to Art 12(4) RPBA.
In T 221/20, Reasons 2.4, the board considered that AR 1 and 2 were filed before the final date set by the OD in its summons…. the board was satisfied that AR 1 and 2 as …. were admissibly raised in the proceedings leading to the decision under appeal. Moreover, AR 1 and 2 ….. were maintained until the department of first instance took its decision. When replying to the summons, the proprietor duly substantiated AR1 and 2.
In T 1220/21, Reasons 4.1, the board considered that AR 2 and 3 were admissibly raised and maintained in the opposition proceedings and are thus not to be regarded as an “amendment” under Art 12(4) RPBA. AR2 and 3 were however not admitted in appeal under Art 12(3+5) RPBA as they were indeed not properly substantiated when filed in opposition, and also not when entering appeal.
Divergent procedural case law
The boards are not in agreement as how to deal with requests filed in opposition but not dealt with as the OD deemed a higher ranking request allowable.
For some, they do not represent an amendment under Art 12(4) RPBA. It is enough that they were filed and maintained, cf. T 42/20 or T 1220/21.
Some other require that they are filed and maintained, but also substantiated, at least when entering appeal, cf. T 1220/21.
Other boards, like the present one, consider that any request not dealt with in the impugned decision represents an amendment to the proprietor’s case under Art 12(4) RPBA.
In T 246/22, from the present board, AR 2 was not admitted as it had not been demonstrated that it was admissibly raised and maintained in opposition. AR2 was however fully substantiated, i.e. reasons were given as to why and how this AR could overcome the objections raised by the opponent.
In the present decision, T 2364/22, the board admitted AR3. The proprietor had justified in reply to the opposition, that the AR did not infringe Art 123(2), but the substantiation resumed itself to refer to reasons given for dependent claims of the main request (including section 7 above, especially section 7.3.6). The substantiation in appeal was in substance the same as when filed in reply to the opposition.
It can therefore be considered that the present board is not even coherent with its own decision. In one case, T 246/22, a timely filed and substantiated AR was not admitted, and in the other case, T 2364/22, it was merely timely filed and maintained, but barely substantiated to be admitted.
Although the present board did not endorse T 42/20 in T 246/22, cf. Reasons 4.15, it did more or less the same here.
Conclusion
The decisions mentioned above here show the bandwidth of procedural decisions with respect to requests which were not dealt with by the OD as it deemed allowable a higher ranking request.
All this different decisions would not be necessary if the boards would have a unified approach.
A carry-over request is a request timely filed, maintained in opposition, but also properly substantiated. Such a request should be admitted in appeal and the proprietor should be allowed to refer to any corresponding statement in opposition.
Arequest filed and mainatained, but not substantiated, should not be considered as a carry-over request.
The mere indication of the purpose in the absence of reasons as to how and why an AR overcomes the grounds of opposition does not appear sufficient.
T 2364/22
https://www.epo.org/en/boards-of-appeal/decisions/t222364eu1
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