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.
Comments
6 replies on “T 2610/22-Necessity of maintaining objections in opposition proceedings”
It is quite normal behaviour in oral proceedings to indicate to the Chair that on certain issues you have nothing further to add beyond what was in the written submissions. Will this now be interpreted by the Boards as a non-maintenance of the issue?
If an issue is argued in written proceedings but not explicitly argued in the oral hearing, in my view it is only ‘not maintained’ if an explicit statement is made to that effect.
@ Pete perfect,
The important passage in your comment is the following: “I have nothing further to add beyond what was in the written submissions”.
It might be your view that “it is only ‘not maintained’ if an explicit statement is made to that effect”. The present board has a different view.
Without expressis reference to the written submissions, it can well be considered by a board that you have not maintained your previous submissions. Whether this is correct or fair is highly debatable. In my opinion, it is neither correct nor fair.
We should also not forget that in matters of procedural case law, boards are far of being on the same line. Some boards are rather strict and some are more lenient, cf. the deletion of claims or grouping of claims in appeal.
The situation is also comparable to what happens sometimes when one party introduces a late submission which is admitted by the OD. Without a request for postponement to verify the submission, for some boards, the right to be heard of the party has not been violated, cf. T 1605/16 or T 951/19.
In T 518/17, the board held that parties in opposition have to be treated equally. I prefer this position to that in T 1605/16 or T 951/19.
When I am training people for OP, I always insist that parties should refer to their written submissions, even if the bulk of the discussion was different. This avoids what happened in the present case.
What an interesting issue: how much proof does a Board need, to substantiate its assertion that Opponent “abandoned” a particular line of attack. Here, the evidence relied upon is that the Chair of the OD, in OP’s, asked “have you anything to add” and the Opponent failed to reiterate the D1 attack.
But Oppt was not “adding” the D1 attack. It had been part of the case since the outset. Is it any wonder, then, that Oppt thought it was not something to “add” to the case, to the written proceedings?
Does the OD not read the written proceedings? Is not an Oppn at the EPO primarily a written proceedings. Can it really be so, that an OD decision is not based on the written proceedings?
Dear Max Drei,
I fully understand your point of view, but it is all a question of interpretation.
The OD, or I hope it, always reads or should read the full written proceedings. After G 1/24 it also means the description. .
If the OD does not discuss an attack in its decision, one can conclude that the attack was not pursued. The question is then how was this abandonment expressed. It all depends on what is in the minutes. If the minutes are silent and if during OP another objection has been discussed at length, then it can be assumed that the objection which was mentioned in the minutes and in the decision was the objection left. The objection raised in writing can then be deemed abandonned, as the board decided in the present case.
If a party wants its written statements still to be considered, I would advise to say the following: “I have nothing to add to what has been discussed during the OP, but for the surplus, I refer to my written statements, which I fully maintain”. By doing this, the situation is clarified and nothing has been abandoned.
Remember the classic question of a first instance division after AR3 has been found allowable: “is this your only request?” or if the applicant/proprietor says “this is my only/last request”. If the applicant/proprietor says so, it has dropped all previous requests.
If the attack was not abandoned, but it is not discussed in the decision, then, the OD commits a SPV.
For a start, a correction of the minutes has to be requested upon receipt of them, otherwise experience shows, that there is barely a chance to get a decision on the SPV by a board.
The problem is compounded by the fact that OP before ODs (and EDs) are held by ViCo. When you look at all recent SPVs the pattern is very clear: the first member writes a decision, the second member writes minutes, but minutes and decision are rarely cross-checked. On top of this the chair signs both without batting an eyelid.
It is thus very easy for a board to say afterwards you have dropped this attack or this request.
I would add that if a party is not clear about the procedural situation, it can always ask to clarify it. See T 76/01, Reasons 5.3. For the “sole request, see T 1063/02, Reasons 3.2. I would thus conclude that there is a duty of diligence for a party. I would also invite you to look at T 55/15, Reasons 1.3-1.5 as well as Reasons 1.7.
In view of the considerations above, I can only repeat my advice. For a proprietor make clear what your requests are and for an opponent what your objections are. Simply saying I have nothing to add, is not enough and can be considered as abandonment or requests or objections.
Mr Thomas, I agree with everything you say. Your analysis of the situation is spot-on. However, I feel that it is lamentable that anybody might need to say “I have nothing to add to what has been discussed during the OP, but for the surplus, I refer to my written statements, which I fully maintain”. This statement should be redundant. Let us not forget that opposition divisions often guide the way the discussion proceeds by providing indications of which arguments they are willing to entertain. A representative needs to read the room at all times and will inevitably focus on the issues that feel most promising at the time. This is never reflected accurately in the minutes and representatives should not be punished for attempting to focus on the issues which appear most promising. I accept that it is where we are, but it seems to be a sorry state of affairs. A state of affairs where the organs of the EPO regularly demonstrate that they will do whatever they can to dispose of a case with minimal effort. If an objection was timely filed in the written procedure, it is part of the case, and that should be the end of the matter. Requiring a generic reference to written arguments to avoid abandoning them is absurd. Where is this stated in the EPC?
It reminds me of the situation with abandoned claims. In J 0015/88 it was stated that “The idea that there can be forced abandonment of subject-matter, in reliance on one Implementing Regulation (Rule 31(2) EPC) introduced in order to secure compliance with another (Rule 29(5) EPC, first sentence) appears to be rather in conflict with principles of higher law (cf. Article 164(2) EPC) which are to be deduced from Article 52 (1) EPC taken together with Article 123(2) EPC. An applicant normally has the right to derive subject-matter from any part of the description, claims or drawings as originally filed. It seems to the Legal Board of Appeal that any limitations of this right must be construed narrowly if they are to be regarded as legally valid. It follows that Rule 31(2) EPC must be applied carefully and within reasonable limits.” I would like to see the same level of common sense applied to arguments in opposition. I would proffer that (borrowing the boards’ wording) the idea that there can be forced abandonment of an attack mentioned in a notice of opposition, in reliance solely on the failure of the opponent to verbally refer to their written pleadings, appears to be rather in conflict with principles of higher law.
@ XMO,
I agree with you that the statement I propose should be redundant. It is first necessitated by the attitude of ODs which have a direct interest to deal with an opposition as quickly as possible. If they are not obliged to deal with “secondary requests”, it makes life easier for them.
In my opinion it is much more necessitated by the attitude of the boards which for some, do everything possible, by using what I call procedural tricks, to lower the backlog they have accumulated over the years. Procedural decisions before the boards have become a real lottery and this is not acceptable. Proceduraly similar cases are not dealt with similarly.
There are other cases in which the bord “squeezed out” a party for reasons which are not acceptable.
In principle, experimental data filed during OP before an OD should not be admitted as the other party would be taken by surprise.
See T 2051/09, T 1310/10, T 1223/10, T 1130/13.
In T 518/17, shortly before the date for the OP before the OD, the proprietor submitted experimental data. The OD allowed this data to be used in the opposition proceedings. Experimental data were filed during OP by the opponent, hence submitted in reply to the proprietor’s filing. These data were however not admitted by the OD. The board considered the opponent’s resubmission of the experimental data at the earliest stage of the appeal procedure, together with further supporting data, to be an appropriate and legitimate response to the developments in opposition proceedings. T 951/19 has a similar outcome.
Some boards have deviated from this line. See T 1605/16: according to the minutes of the OP before the OD, the proprietor filed experimental data which were admitted and discussed. As no request for a review of experimental data submitted by the proprietor during OP was filed by the opponent, so that the board could not find any violation of the right to be heard of the opponent.
In view of G 1/95 and T 131/01, it was admitted that when an OD acknowledged lack of N, but the board reversed this decision during OP, the board admitted an IS attack on the basis of the document used for N. This is quite reasonable, as a concomitant attack on N and IS on the basis of the same document is normally not possible. This position was confirmed in, inter alia, T 184/17.
In T 1042/18, the OD had decided on lack of N for a request. Once, during OP, after the board had decided that N was given, it held that an objection of lack of IS raised for the first time in OP before the board on the basis of a citation which was previously only the subject of an objection of N constitutes an amendment of the grounds of appeal under Art 13(2) RPBA.
The board eventually considered that a late IS objection based on two documents used for a N objection did not represent a new ground of opposition, but did not admit it under Art 13(2) RPBA21 as being late. I never thought that the RPBA would render decisions of the EBA obsolete.
This is for me a clear misuse of Art 13(2) RPBA. How could the opponent know in advance that the board would reverse the decision on N taken by the OD? It discovered it during the OP. Even if the board had hinted at it in its communication under Art 15(1) RPBA, it should not be forgotten that it merely represents a provisional opinion. Rather than checking the validity of the patent, the board abdicated his duty on procedural grounds and failed in his mission to only maintain valid patents.
The position taken in T 1042/18 (Board 3.2.02) has been taken over in the following decisions: T 1816/17 (Board 3.2.02), T 1776/18 (Board 3.3.09), T 2161/18 (Board 3.3.03), T 2866/18 (Board 3.2.03) and T 151/19 (Board 3.2.06). This new line of case seems to stem essentially from some mechanical and some chemical boards.
In an article published in Juve in May 2024, one can read the following:
“In future, BoA president Josefsson must ensure that the differences between the technical fields and boards do not diverge too far. It must not become a lottery for users where each board provides a different service and result. The boards should also avoid basing too many of their decisions on formalities instead of looking at the technology. For years, users have criticised this aspect in what is otherwise a positive overall impression of the BoA”.
I have nothing to add.