EP 2 701 132 B1 relates to an alarm device having a local energy storage unit, and bus-based alarm system.
Brief outline of the procedure
The OD maintained the patent according to AR1.
The board decided that claim 1 as maintained infringed Art 123(2).
For the board, there was neither an explicit nor an implicit disclosure in the application as filed for the combination of claim 1 with the further claims 2 to 12 as maintained.
In AR1, the subject-matter of original claim 8, corresponding to granted claim 8, has been incorporated into claim 1.
Other AR suffered the same defect or were not admitted. The patent was thus revoked.
The present blog deals with the non-admissibility of ARap1-2 under Art 13(2) RPBA.
ARap1-2 were filed after the communication of the board under Art 15(1) RPBA.
The proprietor’s point of view
The proprietor argued that G 1/99 (Reformatio in peius) confers on the proprietor an entitlement to amend the claims whenever the board raises an objection for the first time in the communication under Art 15(1) RPBA, irrespective of whether the opponent had already relied on the same objection in the statement of grounds of appeal.
The board’s decision
Late filed AR
In the present case, the objection under Art 123(2) was not introduced unexpectedly at a late stage by the board. Instead, it had already been raised by the opponent/appellant in the statement of grounds of appeal and, moreover, it formed part of the contested decision.
The board’s communication under Art 15(1) RPBA therefore merely developed and assessed objections and arguments that the respondent had long been in a position to address. This significantly undermines any suggestion of “exceptional circumstances” within the meaning of Art 13(2) RPBA.
A respondent cannot legitimately postpone its reaction to known objections until the board’s preliminary opinion is available. Otherwise, the strict convergence regime of the RPBA would be deprived of its purpose.
There are thus no exceptional circumstances, justified with cogent reasons by the respondent, that persuade the board to exercise its discretion to take these requests into account.
On the application of G 1/99
Although G 1/99 continues to apply under the present RPBA, its ratio decidendi cannot be read as establishing an unconditional right to file claim amendments at any stage of the appeal proceedings.
The admissibility of amendments to a party’s appeal case after notification of a communication under Art 15(1) RPBA is governed exhaustively by Art 13(2) RPBA. That provision deliberately sets a high threshold: such amendments shall, as a rule, not be taken into account unless exceptional circumstances are demonstrated and supported by cogent reasons. G 1/99 neither contains nor implies any rule capable of displacing this procedural framework.
On the contrary, the headnote of G 1/99 expressly contemplates amendments aimed at overcoming an objection raised in the appeal proceedings in the context of avoiding an inequitable outcome for the patent proprietor in cases of reformatio in peius where the opponent is the sole appellant.
Furthermore, the decision identifies under which conditions an amendment may be allowable despite the patent proprietor’s procedural position, not when it must be admitted irrespective of the procedural rules of the boards.
It is thus true that G 1/99 may, in narrowly defined situations concerning the principle of prohibition of reformatio in peius, permit amendments which can place the opponent and sole appellant in a worse position than if they had not appealed.
However, even in those situations, the filing and consideration of such amendments remain subject to the normal procedural rules. Accordingly, reliance on G 1/99 cannot be used to circumvent the discretionary admittance provision under Art 13(2) RPBA, particularly where, as is the case here, the objection to be remedied was already on file before issuance of the board’s communication under Art 15(1) RPBA.
Comments
Already under the previous RPBA it was established case law, that a proprietor should not wait for filing AR to have received the board’s opinion on the case, cf. T 1732/10, Catchword.
The proprietor was right to refer to G 1/99, but it ignored the valid RPBA.
As far as the applicability of G 1/99 is concerned, the Headnote of the latter specifies that the objection of added matter may be put forward by the opponent/appellant or the board during the appeal proceedings.
As the objection had been raised by the opponent in its SGA, the proprietor should have reacted immediately and filed AR in reply to the opponent’s SGA.
Since the proprietor waited for the opinion of the board, AR1-2 were indeed late filed under Art 13(2) RPBA.
AR1-2 would not have been late filed if it was the board which had for the first time raised an objection of added matter against the claim as maintained.
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