EP 2 033 285 B1 relates to a spark plug with a fine wire ground electrode.
Brief outline of the procedure
The patent was maintained according to AR1.
Both proprietor and opponent appealed.
In a communication under Art 15(1) RPBA, the board gave, for multiple reasons, a provisionally negative opinion on all request on file.
New requests were filed in reply to this communication. None of those requests were admitted in the appeal procedure under Art 13(2) RPBA.
The patent was thus revoked.
The proprietor’s point of view
The new requests are to be admitted into the proceedings under Art13(2) RPBA, because a completely new and surprising interpretation by the board was given in its communication under Art 15(1) RPBA with respect to document E5. This represents exceptional circumstances.
The opponent’s point of view
The new requests are not to be admitted into the proceedings under Art 13(2) RPBA, because the passages of the communication under Art 15(1) RPBA referred to by the proprietor only repeat arguments provided by the opponent earlier in the proceedings. Therefore, these arguments could and should not surprise the patent proprietor.
The board’s decision
In its communication under Art 15(1) RPBA the board referred exclusively to arguments provided previously by the opponent in the first instance proceedings and in the appeal proceedings.
Therefore, these arguments could and should not surprise the proprietor. The proprietor could not indicate which features have been reinterpreted in document E5 or why it considers that surprising new interpretations have been put forward by the board.
Consequently, the board could not find any exceptional circumstances, which have been justified with cogent reasons by proprietor, which would justify an admission of the new MR and new AR1-4 into the proceedings.
Consequently, none of the newly filed requests were admitted into the proceedings under Art 13(2) RPBA.
Comments
It is rather surprising that after 5 years of existence of the valid RPBA, a representative files completely new requests in reply to a board communication under Art 15(1) RPBA.
On the other hand, it might well be possible that the representative had no choice and had to follow the client’s instructions under the heading: we got a patent in our home country, so we want one in Europe.
It might be possible to do so in certain national proceedings, but the RPBA are loud and clear. At the third level of convergence, new requests are in principle only admitted when the board raises in its communication under Art 15(1) RPBA objections never raised before.
Even if new requests are admitted under Art 13(2) RPBA, the conditions set out in the second level of convergence, cf. Art 13(1) RPBA, apply. A late filed request could well be admitted under Art 13(2) RPBA but not under Art 13(1) RPBA.
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