The patent EP 3 219 375 B1 relates to vacuum cleaner filter bags made from waste products from the textile industry.
Brief outline of the case
The OD decided maintenance according to AR7.
Both proprietor and opponent appealed.
The board confirmed the OD’s decision that the MR=as granted and AR1-6 lacked N over D11=EP 0 960 645, as well as the maintenance according to AR7.
Objections under Art 123(2) and Art 84 against AR7 were not admitted in the appeal proceedings.
Both appeals were thus dismissed.
The board’s decision
According to the minutes, the opponent had expressly stated during OP before the OD that it had, against AR7, no objections under Art 123(2), Art 84 and Art 54, and no further objections under Art 83, see point II.47 of the contested decision and the second paragraph on page 4 of the minutes.
According to the opponent, this merely meant that it had no further objections in this respect, but that the objections to the higher-ranking sets of claims were to be upheld and applied still to AR7..
For the board, these statements in the minutes are unambiguous. The opponent had also not requested any correction in this respect.
It is therefore not justifiable why the opponent raises such objections for the first time in the appeal proceedings.
The fact that the opponent raised such objections to higher-ranking requests in the first instance and did not drop them is also not sufficient.
Therefore, these objections were not taken into account under Art 12(6) RPBA.
Comments
When during the discussion on AR7 the opponent declares that he has no objections under Art 123(2), 83, 84 and 54, the opponent cannot claim later that he maintained the objections against higher ranking requests and that those also applied against AR7.
In cases in which a request of a party is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation, see T 832/10. However, according to T 52/15, if a procedural act performed by a party is clear and there are no reasons to suggest that its intentions were not correctly understood, e.g. on account of subsequent actions and/or statements, that party has to bear the consequences of that procedural act. T 52/15 was about maintenance or not of requests but is applicable mutatis mutandis to maintenance of objections.
If it is not clear for a party what the procedure is or how it will continue, it is up to said party to ask for clarification of the matter, especially if no unclarity is apparent either to the other party or to the EPO, see T 71/06.
On the procedure
D11 was cited in the ESR and classified in category A. Something must have gone wrong during examination as this patent should never have been granted in the form it was.
https://www.epo.org/de/boards-of-appeal/decisions/t220261du1
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