EP 2 923 528 B1 relates to a pane with an electric connection element and a connecting arm.
Brief outline of the case
The opposition was rejected and the opponent appealed.
In a communication under Art 15(1) RPBA the board provisionally informed the parties that the patent as granted lacked N over D2=CA 2 835 381, but that the board was not minded to remit the case to the OD.
During OP, the proprietor withdrew AR1-7 as well as its approval of the patent as granted. The patent was thus revoked.
The case is interesting as the opponent claimed that the OD had committed a SPV.
The opponent’s point of view
In reply to the summons to OP by the OD, the opponent filed documents D12, D13 and D15 to D19.
The OP argued that tat the OP before the OD it had not been given the opportunity to submit arguments on the lack of inventive step in respect of these documents.
The OD has given the opponent to understand that only one objection would be allowed under Art 56 EPC and that all further objections would require an appeal.
The opponent requested the board to clarify whether more than one document representing the CPA could generally be considered in OP.
The proprietor’s point of view
The proprietor submitted that documents D12, D13 and D15 had not been admitted by the OD as they were not considered prima facie relevant.
Document D17 had been admitted in the opposition proceedings and discussed with regard to novelty.
It was not necessary to decide on the possible prima facie relevance of D16, D18 and 19, as the opponent had not relied on them in the opposition proceedings.
The board’s decision
The board considered that it is for the opponent to raise a point that it considers relevant and to insist – if necessary with a formal request – that it be dealt with and referred to the Case Law of the Boards of Appeal, 10th edition, 2020, III.B.2.6, second paragraph.
According to the minutes of the OP and the decision, this was not the case with regard to the admission of documents D12, D13 and D15 to D19 and the discussion of objections based on them under Art 56.
In addition, according to the established case law of the boards, the parties and their representatives are expected to carefully check the completeness and correctness of the minutes of OP after receipt and, if necessary, to criticise them promptly, cf. see Case Law of the Boards of Appeal, 2022 edition, III.C.7.10.3: Correction of the minutes.
Since the opponent in the present case did not request any correction of the minutes, the board concludes that the accuracy of the minutes was not formally in doubt.
The opponent’s assertion that it wanted to submit further reasons and was denied this right cannot be substantiated on the basis of the facts available, i.e. the minutes of the OP and the decision of the OD.
The board was therefore of the opinion that the opponent was given sufficient opportunity at the OP to comment on the admission and content of documents D12, D13 and D15 to D19 and that the decision of the OD is therefore based only on grounds on which the opponent was able to comment.
With regard to the opponents’ request on the question whether several starting points for the discussion of inventive step are possible, the board noted that appeal proceedings are not an opportunity to request general statements on specific legal issues. However, general information on this issue can be found in the case law on inventive step. The board referred to the Case Law, Chapter I.D.3.4.2 The most promising springboard.
Comments
SPV and minutes
When alleging a SPV, the minutes of the OP before the OD (orED) play an important role.
As the board was not present at the OP before the OD, the board can only rely on the minutes. In any case, a board is not competent to decide on the content of the minutes, cf. T 1481/19.
Without any request for correction of the minutes, the board necessarily assumes that they reflect accurately what happened during the OP.
It is nothing new that parties and their representatives are expected to carefully examine the content of the minutes, in particular their completeness and correctness, immediately after receipt and, if necessary, to object to them promptly, cf. T 1679/17.
There exists as well a duty of diligence for a party during OP, cf. T 76/01, Reasons 5.3.
Further than the needed coherence between minutes and decisions, the boards of can decide on the basis of the minutes whether or not a first instance division has committed a substantial procedural violation, e.g. T 405/12 or T 136/16.
In order to claim that a SPV has occurred, it is, in most cases necessary, but not sufficient to request a correction of the minutes. The first instance division is empowered to reject the request for correction.
In T 978/00 it was held that the minutes are not part of the decision and, as such, are not directly open to appeal.
The rejection of a correction of the minutes can be appealed, but such an appeal does not bring much, as a board cannot compel a first instance division to correct the minutes.
General statements on specific legal issues
According to Art 12(2) RPBA, the primary object of the appeal is to review the appealed decision in a judicial manner. What matters are the facts of the case and nothing else.
It is the exclusive competence of the EBA to take a decision in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, cf. Art 112(1).
On the procedure
The present decision is one of the numerous decisions set aside by a board as it went from rejection of the opposition to revocation of the patent.
As D2 was a Canadian patent, it was a priori not possible for the ED to know of it. It belonged however to the same proprietor and claimed a EP priority which led to a series of European divisional applications and patents.
The rightfulness of the grant can thus be queried, especially as the ISR established by the EPO only mentions four A documents.
Title of the invention
The German title is “Scheibe”, the French title is “vitre”, but the English title speaks about a “disc”. Strange that neither the applicant/proprietor nor the ED/OD have spotted the incorrect English translation.
Now the patent is revoked, the title is moot, but it was worth noting that automatic translation can be at odds with reality.
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