EP 2 736 576 B1 relates to a needle tip protector assembly for safety IV catheter assembly.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The appeal was dismissed mainly for lack of substantiation.
An objection under R 106 by the opponent was as well dismissed.
The important discussion here is about re-submission in appeal of first-instance submissions and their admissibility
The opponent’s point of view on the admissibility of its grounds of appeal
All of the objections raised in the statement of grounds of appeal should be admitted into the appeal proceedings. These objections were raised and maintained in the opposition proceedings.
It had been necessary to re-submit the first-instance submissions in order to maintain them in appeal.
At the time of submitting the grounds of appeal, it was not possible to determine which points were particularly relevant to the appeal proceedings.
Moreover, under Art 12(4) RPBA, only submissions made for the first time in the appeal proceedings represent an amendment which could be admitted only at the discretion of the board.
The grounds of appeal explicitly distinguish between new submissions, which dealt in particular with the reasoning in the decision under appeal, and the repetition of submissions made in the first-instance proceedings, which had not been duly considered by the OD.
By substantiating each of the grounds of opposition that prevented the maintenance of the patent as granted, the statement of grounds of appeal provided reasons why the patent was to be revoked and consequently why the decision was to be set aside.
It was only because of the conciseness required by Art 12(3) RPBA that the grounds of appeal omitted a sentence indicating that the corresponding assessment in the decision under appeal was incorrect.
The submissions in the statement of grounds of appeal were complete, and included an interpretation of the features of claim 1 as required by Art 69 as well as objections according to this claim interpretation.
It was not comprehensible why a review of the decision under appeal by the board should represent an undue burden. If, however, such a review were to be considered an undue burden, then this was caused by the insufficient reasoning in the decision under appeal, as the OD did not interpret the features of the claim before examining the grounds for opposition, contrary to the requirements of Art 69.
The proprietor’s point of view on the admissibility of its grounds of appeal
None of the objections raised in the statement of grounds of appeal should be admitted into the appeal proceedings because they did not comply with Art 12(3) RPBA.
The decision under appeal included detailed reasoning.
The opponent had merely repeated its first-instance submissions by copying them verbatim into its statement of grounds of appeal.
If the opponent was of the opinion that there were flaws in the decision under appeal, this should have been pointed out in its statement of grounds of appeal, and yet the statement of grounds of appeal did not discuss any flaws in the decision under appeal.
The only part that did refer to the decision under appeal, on pages 21 and 22, did not include a detailed discussion of the alleged deficiencies, and referred to only one aspect which, according to the OD, had not been decisive for the outcome.
The boards decision
The statement setting out the grounds of appeal consists of sections I to VIII. Except for section I (Requests), section VIII (Summary) and the passage from the last paragraph of page 20 to the end of page 22, the grounds of appeal are limited to a – mostly verbatim – repetition of written submissions made in the first-instance proceedings.
In particular, section III of the grounds of appeal, which deals with claim interpretation, is identical to section III of the notice of opposition. With the exception of the passage on pages 20 to 22 referred to above, sections V to VII of the grounds of appeal, which contain all the objections, are also limited to repetitions of written submissions made in the first-instance proceedings.
Hence, with the exception of the passage on pages 20 to 22, the objections raised in the statement of grounds of appeal had already been presented, in the very same manner, in the first-instance proceedings, i.e. before the decision under appeal had been issued.
The passage on pages 20 to 22 provides arguments in relation to a specific objection and explicitly addressed the reasoning set out in the corresponding section of the OD’s decision. This passage is however not relevant for any of the other objections raised in the statement of grounds of appeal.
Whether or not the requirements of Art 12(3) RPBA are met depends on the specific circumstances of each case.
In the case of an appeal of an opponent against a decision of the OD in which an objection was found unconvincing, a mere repetition of the first-instance submissions is normally not sufficient.
Rather, an opponent must normally provide arguments why the opposition division’s reasoning in the decision under appeal is allegedly incorrect, see T 557/21, Reasons 6.2.3. Arguments which have already been put forward in the opposition proceedings may be included, but must usually be set out in the context of the decision under appeal, see T 2117/18, Reasons 2.2.11.
Contrary to what was indicated by the opponent, the board’s power not to admit a submission under Art 12(5) RPBA does not depend on whether that submission qualifies as an “amendment“.
Accordingly, the fact that a claim request or objection is not an amendment under Art 12(4) RPBA does not exempt or reduce a party’s duty to substantiate it.
When exercising the discretion conferred to the board under Art 12(5) RPBA with regard to the substantiation requirement under Art 12(3) RPBA, the extent of substantiation, respectively the lack thereof, is assessed.
This involves assessing the extent to which the appellant’s case for setting aside the decision can be understood, see T 321/21, Reasons 6.6, taking into account the reasoning in the impugned decision.
Comments
The present decision is in absolute contrast with that of T 1958/22, commented recently in the present blog. In T 1958/22, the board was not persuaded that any of the opponent’s arguments or objections should be disregarded solely on the grounds that they were allegedly repeated from the first-instance proceedings. This is however what the present board did.
The proprietor’s excuse relating of the conciseness requirement in Art 12(3) RPBA, was rather week, and did most probably not help its position. The same is valid for the reference on Art 12(4) RPBA, but it must be admitted that the opponent has a point. When the opposition has been rejected, where is there any wriggle-room to present new arguments, as those would clearly be dismissed under said Art 12(4) RPBA.
The reference to Art 69 for the interpretation of the claim by the opponent, was most probably due to decisions along this line by the same chairman and the same legal member. See below. It did not help, but it is not possible to find any reference to Art 69 in the decision under appeal. Anyway, G 1/24 should clarify the situation.
The present decision does however not come as a surprise. It has been taken by Board 3.2.02 with the same chairman and legal member than in case T 1042/18. T 1042/18 threw overboard a long line of case allowing a change from lack of N to lack of IS for the sake of an overly strict, and actually artificial, application of the RPBA. T 1042/18 has also been commented in the present blog. Some boards followed it, some did not.
The same board, with the same chairman and the same legal member has issued T 450/20, commented in the present blog, following T 1473/19, also commented in the present blog. In those two decisions, the board, contrary to the established line of case law, considered that Art 69(1) ought to be applied when deciding upon Art 123(2). One wonders about the influence of the legal member in the present board.
The present decision shows once more that in procedural matters, and to a certain extent in substantive matters, the lottery is still going on at the boards. This is not in the interest of the boards. I refer here to an article published in JUVE in May 2024, which said
“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”.
There is nothing much to add.
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