The patent relates to a “Seal for doors, windows or the like with a seal strip that can be lowered”.
Brief outline of the case
The patent was revoked and the proprietor appealed.
The OD decided that claim 1 as granted lacked N over A2=DE 298 20 770 U1, not mentioned in the ESR.
The board set aside the decision of the ED as it considered that none of the prior art cited by the opponent was N destroying for the subject-matter of claim 1 as granted.
The case was remitted to the OD for further prosecution as IS had not yet been discussed.
The case is interesting in that the proprietor considered that the OD had committed a SPV and that its legitimate expectations were not respected.
The proprietor’s point of view
Violation of the right to be heard
The proprietor objected that the OD had decided directly after the statement of grounds of opposition and the reply of the opponent, and this without holding OP.
The proprietor’s core argument was that the OD had stated for the first time in its decision “that and why it was not necessary to use the description to interpret claim 1“. This had not been argued by the opponent. The proprietor had therefore no opportunity to comment on this.
In the opponent’s notice of opposition, it was argued for the interpretation of the claim that the claim was broad. Based on the wording of the claim, the opponent explained the meaning and scope of the respective features in its opinion “without additions or interpretations by the description“.
In its reply to the opposition, the proprietor argued that the description and the drawings should be used to interpret the claim in order to determine the subject-matter of the claim in order to assess novelty.
Violation of the principle of legitimate expectations
The proprietor claimed that the OD violated the principle of legitimate expectations because it did not issue a communication containing a preliminary opinion before the decision was taken in the written procedure. The proprietor could have trusted that the OD would issue a communication before an unfavourable decision was taken.
The board’s point of view
Violation of the right to be heard
The board noted that in its decision, the OD followed the opponent in stating that “there is no reason to interpret claim 1, which is too broad, more narrowly with the aid of the description”. This interpretation of the claim in the opponent’s favour led to the decision that the subject-matter of the claim was not novel over A2.
The Board could not recognise that the OD based its decision on grounds on which the proprietor had no opportunity to comment. The OD followed the arguments put forward by the opponent for interpretation. The patent proprietor was able to comment on them. Whether the view taken by the OD and the opponent was correct has no bearing on the right to be heard.
Violation of the principle of legitimate expectations
According to Art 101(1), second sentence, the OD shall invite the parties to file observations on its communications or on the written observations of other parties as often as necessary.
It follows that this provision does not in principle require that the reasons against maintenance of the patent be communicated in all cases, but only in those cases where this is “necessary“. Such a “requirement” can only arise with regard to further clarification of the facts or on the basis of the provision of Art 113(1). The OD must therefore only invite comments and issue a communication if it considers this to be necessary, for example in order to take up new factual or legal grounds which have not yet been submitted or to clarify existing ambiguities.
It is therefore not necessary for OD to always give the proprietor a further opportunity, going beyond R 79(1), to amend the description, claims and drawings if necessary. The EPC does not provide for this.
Since the OD based its decision on the objections already raised in the notice of opposition, it was not necessary to issue a communication.
Moreover, the proprietor invokes the fact that the Guidelines E.II.1.1.iii) provide in principle for the issue of a communication, in particular if “under certain circumstances a patent could be maintained in an amended, restricted version”
For the board, the cited section of the Guidelines cannot be understood to mean that an OD must always send a communication if a patent could be maintained in an amended, restricted version.
Comments
Subject to Art 113(1), an OD may decide the case at any time after filing of the statement of grounds of opposition and after receiving the reply of the proprietor. The OD will normally wait for 4 months before taking the decision in writing, if this is possible.
In its statement of grounds of opposition, the opponent requested as AR to hold OP should the OD not revoke the patent.
In its reply to the statement of grounds of opposition, the proprietor never requested OP in case the opposition would not be rejected.
If an OD can take over the position of one of the parties to the opposition which had only requested that OP in case of a negative decision, the OD is perfectly entitled to decide directly without an intermediate communication.
A similar situation is provided in Art 12(8) RPBA21. The board can as well decide directly.
As in opposition, the OD has a duty of neutrality, it is not its role to suggest to the proprietor amendments which would allow maintenance in amended form. References to the opposition procedure should best be deleted in the Guidelines E-II, 1.1 iii).
That an ED can make suggestions to the applicant is not at stake here, although there again, it is not its job to decide for the applicant in which form he should file its requests.
The proprietor can feel himself lucky in that the board set aside the decision of the OD. Otherwise the patent would had been lost for good.
Interpretation of the claim with or without the description
The whole discussion here was whether the description should be relied upon when deciding on the interpretation of a claim, in other words whether Art 69 should always be applied or only in exceptional cases.
The opponent answered negatively, which corresponds to one line of case law.
The proprietor answered positively, which corresponds to a second line of case law.
A corresponding referral to the EBA would be welcome, and probably more useful than a referral limited to the adaptation of the description.
https://www.epo.org/de/boards-of-appeal/decisions/t192382du1
Comments
Leave a comment