EP 3 055 570 B1 relates to an electronic control device for a component in compressed air generation, compressed air processing, compressed air storage and/or compressed air distribution.
Brief outline of the case
The outline of the case is the same as that in the blog entry on G 1/24.
The case is interesting as the proprietor challenged the admissibility of the opposition.
The proprietor’s challenge to the admissibility
The proprietor argued that, because the word ‘DRAFT’ appeared on the first page of the notice of opposition, it could not be considered binding. Instead, it was a draft version, meaning that ‘no intention to make a declaration or commitment with regard to the content could be inferred’.
A statement of grounds of opposition (SGO) marked ‘DRAFT’ could not satisfy the requirements of R 76 that an opposition must be filed in writing and must contain grounds.
The opponent’s point of view in matters of admissibility
The opponent argued that the grounds for opposition were submitted in writing. Even the term ‘DRAFT’ itself was available in written form. R 76(1) did not require anything else.
Since this had already been obvious in opposition, the OD, which admitted the opposition, did not need to elaborate further on this point. Furthermore, the proprietor had also been able to comment on the substance of the grounds for opposition.
The board’s decision
The Board noted that the grounds for opposition were filed in writing together with Form 2300E. The arguments in the grounds for opposition refer to the documents listed in this form and to the grounds for opposition stated therein. In terms of content, the grounds for opposition therefore fulfil all the requirements of R 76.
Furthermore, there are only two possibilities with regard to the term ‘DRAFT’ preceding the grounds for opposition. Either it was mistakenly placed before the (actually intended) grounds for opposition, i.e. it was mistakenly not removed before the grounds for opposition were filed, or the actually intended to be the final version of the grounds for opposition was not filed.
Since the opponent did not attempt to subsequently file a version of the grounds for opposition other than the one preceded by the term ‘DRAFT’, the board assumed that the opponent either submitted the version of the SGO that was actually intended or, contrary to the term ‘DRAFT’, wishes to have the submitted version accepted as the version that was actually intended.
The fact that the SGO is, additionally, preceded by the term ‘DRAFT’ is therefore to be regarded as an obvious and minor error, as stated by the OD.
The board therefore agreed with the OD and the opponent that the grounds for opposition meet the requirements of R 76(2,c) and that the opposition was admissible.
Comments
One must be completely disingenuous to consider that an opposition is inadmissible just because the SGO is preceded by the term ‘draft’. Whilst the SGO was allegedly a “draft”, this did not hinder the proprietor to reply in substance to the grounds of opposition.
It is clear that an inadmissible opposition does not need to be discussed in substance, but in the present case the threat posed by D1 was clear.
On the procedure
D1 is classified in F04B 49/00.
The patent is classified, inter alia, in F04B 49/00, and the IS was carried out, inter alia in F04B.
It is thus surprising that D1 was not recovered during the IS done by the EPO.
The present case is exemplary for a lot of cases in which the original search did not reveal the really relevant documents. When a relevant document is classified in the same IPC class at the patent, it has to be expected that it is found during the search.
Comments
5 replies on “T 356/23-Statement of grounds of opposition declared as “draft””
Mr. Thomas, at this point, it feels like you could make a compilation of all the “interesting” arguments, that proprietors have tried to get the opposition declared inadmissible.
I say “tried” because the success rate of such arguments appears to be 0.00%.
Even worse, an “interesting” argument like this one can annoy the OD or the Board, which isn’t exactly in the proprietor’s best interest… I strongly doubt I would have tried such an argument myself.
@ Extraneous Attorney
I can only agree with you that, unless the opposition is badly prepared and very formal aspects play a role, I have rarely seen oppositions not admissible.
The kind of arguments like here are useless and insisting on pursuing them only annoys the deciding body.
When I teach about OP, my first message is: “As you want to obtain a positive decision for your client, try not to antagonise the deciding body”.
Any reasonable representative would not come up with such a far-fetched argument. He actually makes himself look ridiculous, and even more so when he insists.
I hope the representative did not charge their client for making this argument.
@ Anonymous,
The representative might have thought he was clever and he might have wanted to be paid for his cleverness.
Formal aspects can play a role in the admissibility of an opposition, but this argument is simply ridiculous and leads to nowhere.
It might well have been the client who came up with the idea.