CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 246/22 – Admissibility of “carry-over requests” in view of Art 12(4) RPBA

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The patent relates to an “Automated passenger conveying system manipulation via an automated remote activation and validation of controller software”.

Brief outline of the case

The patent was maintained according to AR1.

Both proprietor and opponent appealed.

The board confirmed that claim 1 as granted was lacking IS over E1=JP 2006-264877 (Not mentioned in the ESR). The board infirmed the decision of the OD in that it considered claim 1 of AR1 also lacking IS over E1. The same applied to AR 10. The MR, AR 1 and AR 10 consisted of a mere juxtaposition of obvious features.

AR 2 as well as AR3-8 and 9+11 were not admitted under Art 12(4) RPBA.

All those requests were filed when entering appeal.

The patent was thus revoked.

The case is interesting in that it deals with the application by the board of Art 12(4) RPBA. We will concentrate on AR 3-8.

The proprietor’s point of view

AR 3-8 were filed before the OD as AR2-7. The proprietor merely submitted that AR 3-8 corresponded to specific requests filed during the opposition proceedings, and referred to the comments made on those requests in the first-instance proceedings.

The proprietor argued that neither in Art 12(4) RPBA nor elsewhere in the RPBA was it laid down when it must be demonstrated that submissions not meeting the requirements of Art 12(2) RPBA were admissibly raised and maintained.

In its reply to the board’s communication under Art 15(1) RPBA, inter alia, it further argued that its “maintenance” of AR 3-8 was self-evident from the minutes of the OP before the OD.

The proprietor also argued, in its reply to the same communication that AR 3-8 were “admissibly raised” in the opposition proceedings, that the requests were “entirely validly filed” six weeks in advance of the final date for making submissions ahead of the oral proceedings under R 116.

In support of its view, the proprietor invoked two decisions of the boards of appeal. In the proprietor’s view, decisions T 42/20 (Reasons 4.2) and T 476/21 (Reasons 7.1 to 7.3) confirmed that AR which were “admissibly raised and maintained” in the first-instance proceedings but not considered in the first-instance decision were not “amendments”, with no discussion over how or when this was demonstrated as required by Art 12(4) RPBA.

The board’s decision

The OD did not decide upon them because a higher-ranking request had already been found allowable.

Therefore, they represent “carry-over requests“.

Since the decision under appeal was thus not based on those requests, they would, on the face of it, constitute “amendments” of the proprietor’s case within the meaning of Art 12(2) and (4) RPBA. However, pursuant to Art 12(4) RPBA, such qualification as “amendments” applies onlyunless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal”.

Despite some leniency in this respect in the early jurisprudence, cf. T 221/20, T 42/20 and T 476/21, the ordinary meaning of “demonstrates” must be that, as a general rule, the party making a submission that would, on the face of it, constitute an “amendmentbears the burden of showing that it was “admissibly raised and maintained” in the proceedings leading to the decision under appeal.

The board acknowledged that Art 12(4) RPBA itself does not provide a time by which it must be demonstrated that the respective submission was “admissibly raised and maintained”. However, AR 3 to 8 were submitted with a statement of grounds of appeal that lacked any indication that they were “admissibly raised and maintained” in the opposition proceedings.

Since the statement did not contain the proprietor’s complete appeal case within the meaning of Art 12(3) RPBA, the board has discretion not to admit such subsequent submissions, cf. Art 12(5) RPBA.

In the context of claim amendments, to establish what the actual requirements might be for a party’s demonstration that submissions were indeed “admissibly raised“, the board suggested different approaches.

In addition, there are increasingly demanding criteria for admitting new submissions made after the filing of the statement of grounds of appeal and the written reply, cf. Art 13(1) and (2) RPBA.

In this sense there are, at least in practice, temporal restraints on the “demonstration” required under Art 12(4), first sentence, RPBA.

According to point 17 of the minutes of the OP before the OD, in the time between the announcement of the conclusion that a higher-ranking claim request was found allowable and the announcement of the decision, the proprietor expressly maintained AR 3 to 8, i.e. those requests were manifestly maintained until the OD took its decision.

To determine what could mean “admissibly raised“, the board presented two different approaches.

First approach

One viable approach could be that a Board decides whether the OD should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required, see e.g. T 364/20, Reasons 7.

This would in turn mean that a Board – at least in part – should slip into the shoes of the OD. It would then have to infer, from the board’s perspective, how the OD should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA,  see T 364/20, Reasons 7.2.10, last sentence.

One of the possible consequences of that approach could arguably be that the boards would have to closely monitor the currently applicable Guidelines to derive guidance as to how the respective OD should have exercised discretion generally conferred by Art 123(1) in conjunction with R 81(3) in inter partes procedures. In this respect, the board quoted R 6/19, Reasons 6 and 7.

For the boards, its decision would depending on the amendments made to the Guidelines over the years. This approach failed to convince the present board since the Guidelines are not binding on the boards and since the RPBA are approved and adopted specifically to govern the proceedings before the boards.

Second approach

The present board proposed another approach, namely that of defining minimum requirements for the demonstration of “admissibly raised” which could be more conducive to legal certainty and fairness in that regard, especially in opposition appeal proceedings.

The board considered that claim requests which were already filed during the opposition proceedings and which did not belong to the basis of the decision under appeal in the above-mentioned sense, i.e. “carry-over requests”, may indeed be regarded as “admissibly raised” under the minimum requirements that the party shows:

  • that they were filed in due time, typically before expiry of the time limit set by the opposition division under R 116(1) and (2), and
  • that it was made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the OD they try to overcome and how this is actually achieved.

Consequently, the board did not endorse the conclusions drawn in decisions T 42/20 and T 476/21, cited by the proprietor, where merely the timing aspect was considered by the competent boards.

The board did also not subscribe to the test, with elaborate criteria, proposed by the competent board in case T 1800/20.


Handling of procedural matters by the boards

The present decision shows once more that the boards do what pleases them in procedural matters. This goes against the legal certainty which should be a main  issue for the boards.

The attitude of the boards in procedural matters has become a real lottery.  

That the boards are not bound the Guidelines is an established fact, no need to dwell on it.  

The proposed approach can be criticised

If AR are filed within the time limit under R 116, they need to be substantiated and show how those AR answer objections raised by the opponent. Otherwise, they are not even admissible by the OD and then, their admissibility before a board does not have to be discussed.

There is thus no need to slip in the OD’s shoes. Whether the arguments are persuasive is a different matter, but they are at least admissible. At least for the allowable AR, the corresponding arguments were persuasive.

Furthermore, boards can be brought to examine whether the discretion exercised by an OD has been correctly applied or not. When exercising its discretion, the OD will certainly take into account the Guidelines. The correponding argument of the preent board, not wanting to slip on the OD’s shoes, is thus not convincing to say the least.

In T 1776/18, commented in this blog, the board referred to R 6/19, inter alia to show that there were different legal sources to assess the discretion to be exercised in order to admit requests, and those were not limited to Art 123(1) and R 81(3), as apparently asserted by the present board.

In T 1776/18, commented in this blog, the board referred to R 6/19, inter alia to show that there were different legal sources to assess the admissibility of requests, and those were not limited to Art 123(1) and R 81(3), as asserted by the present board.

Although taken under the RPBA07, it can be concluded from T 1109/18, also commented on this blog, that a “carry-over request” cannot be considered as having been abandoned by the proprietor, even if  it was not immediately filed in reply to the grounds of appeal of the opponent.

“Carry-over requests”, are filed before the OD’s decision, and will manifestly not take into account the latter’s decision.

This has been the pretext of some boards not to admit arguments against or in favour of those requests. Cf. T 664/20, commented in this blog, in which a board required from an opponent to discuss all “carry-over requests”, even not knowing which ones would be submitted in appeal.   

Art 12(3) and Art 13(5) RPBA are in any case requiring that “carry-over requests” have to be substantiated when entering appeal, cf. T 1220/21, commented in this blog. In T 1220/21, the resubmission in appeal of “carry-over requests” was not considered as an amendment under Art 12(4) RPBA, but their lack of substantiation in appeal led to their non-admissibility.  

By not following T 42/20 and T 476/21, the present board simply wanted to put further barriers on the admissibility of “carry-over requests”. It simply did not accept the leniency put forward by certain boards under Art 12(4) RPBA.

To sum it up, in my opinion and that of other boards, “carry-over requests” should not be considered as being an amendment pursuant to Art 12(4) RPBA. Furthermore, the proprietor has no direct or indirect possibility to act on these requests, but to re-file them in appeal, when they are not dealt with in the OD’s decision.

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