The patent relates to communication systems, in particular, the control of communication sessions in an IP multimedia subsystem, and more specifically it relates to a method for handling service failures.
Brief outline of the case
The OD decided maintenance in amended form according to AR2 filed during the OP.
The opponent appealed the decision and subsequently withdrew the opposition.
The proprietor appealed against the maintenance according to AR2op.
The board decided that claim 15 as granted was lacking N over D13=US 2002/0067704, not mentioned in the ISR established by the EPO. AR1 suffered the same defect.
A new AR2=AR2ap was filed in appeal but was not admitted under Art 12(4 and 6) RPBA20/21. AR 3-5 were not allowable.
In view of the prohibition of the reformatio in peius, the board confirmed the maintenance of the patent as decided by the OD=AR2op.
The case is interesting with regard to the reasons for which AR2ap was not admitted.
Admissibility of the new AR2 in appeal
The proprietor’s position
AR 2ap should be admitted into the proceedings because it was an appropriate reaction to the developments in the first-instance hearing and the surprising change of the OD’s opinion compared to the preliminary opinion.
During that hearing, the proprietor was confronted with the changed opinion of the OD that claim 15 and claim 18 had to be regarded differently from claim 1.
The time to analyse this new and unanticipated development in detail during the hearing itself and to prepare AR 2ap was insufficient. Hence, AR 2app was to be admitted into the proceedings to ensure the proprietor’s right to be heard.
Moreover, such practice would be in line with the principles set out in the German decision X ZR 41/14 of 21 June 2016, Fahrzeugscheibe II, of the Federal Court of Justice.
The catchword to this decision says the following:
The alternative defence of the patent in suit with amended claims may be considered relevant if the German Federal Patent Court only informed the defendant at the OP that it does not adhere to an assessment expressed in the notice under Sec. 83 (1) Patent Act which was favourable to the to the defendant in the notice under Sect. 83 (1) Patent Act
In other words the change of opinion of the preceding deciding body should allow the late admittance of a request taking into account the change of opinion of the latter.
The board’s position
The present request was submitted only with the appellant’s statement setting out the grounds of appeal.
Firstly, the notice of opposition already contained a N objection against the subject-matter of claim 15 as granted in view of D13.
Secondly, after the “surprising change of the opinion of the opposition division” with respect to claim 15 during the OP, the proprietor did have the opportunity to file two additional AR. Furthermore, the minutes do not record any objection with respect to the time allotted to the proprietor for the preparation of these requests.
Finally, references to national decisions on procedural matters are relevant only if the proprietor has argued that there is a gap in the procedural framework of the EPC and that the decision is evidence of the existence of a general principle of procedural law recognised in the Contracting States which could be applied to fill that gap, cf. Art 125. No argument in that regard was advanced by the proprietor. There was therefore no need for the board to examine in detail the reference to German case law made at the hearing.
It follows that the present AR 2ap should indeed have been submitted already in the opposition proceedings, cf. Art 12(6), second sentence, RPBA20/21, either in response to the notice of opposition or during the OP before the opposition division at the latest.
Should, during the OP, the OD revises the provisional opinion expressed in the annex to the summons, it has to allow the filing of at least one further request attempting to overcome the new objections raised by the OD. In the present case, the proprietor was allowed to file two AR, named AR1A and AR1B which later were renamed AR 1 and 2 in the final decision. The patent was maintained on the basis of AR 2.
If a corresponding objection was already raised in the statement of grounds of opposition, the proprietor cannot claim to have been surprised, if the OD takes over during the OP the point of view of the opponent.
This is a normal development which can always happen during OP. Otherwise OP would be useless.
Preparing further AR during an OP is always rather tricky, and the proprietor was given little time to think about further requests. It would have been better for the proprietor to have requested more time. In appeal this was detrimental to the filing of a new request.
Furthermore, the present decision shows once more that referring to national procedural decisions does not bring anything. The boards have their RPBA and there is no need to refer to Art 125.
The minutes of the OP are quite revealing
What is noticeable is that the OP were only interrupted for 10’ in order for the proprietor to prepare AR 1 and 2. This seems a rather short time, even taking into account the fact that the objection was originally raised, but the OD had changed its opinion. The board has correctly noted that the proprietor did not request more time to prepare further requests. What is also noticeable that the OD did not interrupt the OP in order for the OD and the opponent to gain knowledge of the new requests. The opponent was immediately asked to discuss the requests. This is not really respecting the right to be heard from the opponent.
The opponent was granted 3’ between 17.12 and 17.15 in order to consider the next steps in the procedure once the OD had decided that claims 4 and 14 of AR1B=AR2 to be inventive over a set of prior art. The opponent was further given 3’ to allow him to check the adapted description.
When looking at the minutes of the OP, it is apparent that the OD kept a fast pace. Deliberation time was between 3’ and 20’ at most, in general 10’. None of the parties have complained, but rushing through an OP is not what an OD should have for aim in spite of the increasing production pressure sitting on ODs. . .
On the procedure
In spite of 4 X in the ISR, D13, the document destroying N of claim 15 as granted was not found, although it was in the classification units which have been searched.