EP 3 133 650 B1 relates to a four junction solar cell for space applications.
Brief outline of the case
The new MR filed after opposition was considered lacking IS over a document not mentioned in the ESR.
The OD decided maintenance according to AR1. The opponent appealed.
The appeal was dismissed.
The case is interesting in that it deals with maintaining objections raised in opposition.
The opponent’s point of view
The objections of lack of IS with D1 (X in the ESR) as starting point and with D17 as starting point in combination with document D1 should be admitted into the proceedings, since D1 was part of the proceedings from the very beginning of the opposition proceedings.
The opponent argued that this line of argument was brought forward again during appeal due to the fact that the board indicated in the communication under Art 15(1) RPBA a different interpretation of the term “approximately“.
The opponent further argued that one reason for not pursuing this line of argument in the OP before the OD was the uncomfortable format of the OP in opposition, namely a ViCo, which rendered the interaction with the OD cumbersome.
In the opponent’s view, further objections are sometimes overseen in a ViCo, as it was the case here.
The board’s decision
Objection not maintained
During the OP before the OD, no objection of lack of IS from D1 was argued by the opponent. Not discussing this line of argument during the OP before the OD, although it was previously discussed in writing is considered as an abandonment of this line of argument.
Hence, the opponent did not maintain this objection during the OP before the OD, by at least referring to the written proceedings with D1 as starting point for the IS attack.
Format of OP before the OD
Firstly, whether a ViCo is comparable or not with in-person OP might be disputable, but this format certainly does not hinder a party to present all attacks it wishes to be considered by the OD or the board. There is no convincing reason linked to the format of the OP which could have hindered the opponent to present all attacks of IS it considered convincing.
Secondly, the opponent alone must decide which attacks it considers promising or whether and when it will drop an objection it has raised previously in the proceedings. The abandonment of the objection of lack of IS with D1 as starting point during the OP before the OD and its reintroduction in the appeal proceedings cannot be justified by a slightly different interpretation of the term “approximately” by the board in it’s communication under Art 15(1) RPBA, point 8.2.3, compared to the OD’s view.
The decision on which line of argument might be successful and should therefore be presented lies exclusively within the opponent’s control and should not be influenced by the different viewpoints of the various panels (ED, OD and board).
Comments
Objection not maintained
The key message which can be derived from the present decision is, for an opponent, that at least during OP before an OD to refer to your written statements, even if you have a better line of attack. Then this objection cannot be held to have abandoned.
Format of OP
With due respect to the board, OP by ViCo have no legal basis in the EPC and its Implementing Regulations. OP by ViCo, are the result of a decision of the president of the EPO under Art 10(2,a) for first instance divisions, and under Art 15a(1) RPBA before the boards. Limiting G 1/21 to OP before the boards is neither abiding to the letter nor to the spirit of the EPC when looking at Art 31 VCLT.
Neither Art 116 nor R 115+116 make a difference between OP before first instance divisions and boards of appeal.
This is however nothing new under the sun.
In a blog entry to come, we will deal with T 1095/23 on this topic.
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