CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 437/20 – Diverging case law on carry over requests (CoR) – Another decision of non-admissibility

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EP 2 921 914 B1 relates to a light diffraction layer laminated sheet and a method for producing a card.

Brief outline of the procedure
The OD rejected the opposition and the opponent appealed.
The board considered that claim 1 as granted and of AR9 infringed Art 123(2), as the subject-matter represented an intermediate generalisation.
AR 3 and 8, were not admitted by the board under Art 12(3) and (5) RPBA. AR 3, 8, 11 and12 were not admitted under Art 13(2) and(1) RPBA. The patent was revoked.
AR 3 and 8 can be considered as carry-over requests (CoR) as they were not discussed in the OD’s decision, as the latter rejected the opposition.

The proprietor’s point of view

AR 3 and 8 were to be admitted into the proceedings because neither the opponent’s statement setting out the grounds of appeal nor the decision dealt with these requests. Therefore it could not be expected that the proprietor substantiated these requests; not admitting such requests might represent a substantial procedural violation.

AR 11 and 12 were a response to the board’s preliminary opinion and there had been sufficient time, 6 months to study them; the requests contained those layers which the opponent argued were missing and therefore removed all added subject-matter objections; the exceptional circumstance was the lack of objections against these requests.

The board’s decision

Where the opponent appeals against the maintenance of the patent in unamended form and AR filed before the opposition division are not discussed in the impugned decision, such AR need to be substantiated when re-submitted in appeal, even in the absence of previous arguments against such requests in the file.

In their reply to the statement setting out the grounds of appeal the proprietor merely referred to its earlier AR and neither explained how they differed from the MR, nor their basis in the application as filed, not even by reference to any earlier submission. In particular, there are no arguments whatsoever why these requests would overcome the objections against the main request as brought forward in the appeal, should this latter not be found allowable.
Should the MR fall, the proprietor must normally request that the decision be set aside and argue why the patent should be maintained in an amended form, i.e. why the decision under appeal should be amended within the meaning of Art 12(3) RPBA.

The board was aware that AR 3 and 8 were not treated in the decision under appeal, and does not question that these requests would have been found admissible by the opposition division. As such these requests are not amendments within the meaning of Art 12(4) RPBA.

Given that there are no tangible arguments in the impugned decision why these requests should or should not be held allowable, the board cannot proceed in the usual manner to review the decision under appeal. On the other hand, the board also cannot allow these requests without examining them on their merits. Under these circumstances it is first and foremost the duty of the proprietor to give reasons how the AR would overcome the objections against the MR.

Comments
The present decision is once more about CoR. The case law on the admissibility of CoR is, to say the least, divergent.

Definition of a CoR
Any AR positively filed within the time limit under R 116(1) and properly substantiated upon filing is to be considered as a CoR. Without proper substantiation, although positively filed within the time limit under R 116(1), cannot be considered as CoR.

Any request filed after the time under R 116(1) answering an objection raised by the OD or the opponent in reply to the summons and properly substantiated upon filing should also be considered as CoR. Without proper substantiation such AR, although positively filed in reply to objections of the opponent or the OD, cannot be considered, as CoR.

If a new objection is raised during OP, a request filed in reply and attempting to overcome this new objection could also be considered as a half CoR. This is the case if the OD finds a previously filed request not allowable. Any request filed in reply to a new objection raised during OP should be considered as admissibly filed and maintained, even if eventually a higher ranking request is deemed allowable. That some explanation might be needed when entering appeal appears reasonable.
To sum it up, not any AR filed in opposition can thus be considered as a CoR.

CoR are not amendments in the meaning of Art 12(4) RPBA
Some boards do not consider CoR as an amendment of the proprietor’s case under Art 12(4) RPBA and do admit them. In general they are satisfied that CoR were admissibly filed and maintained before the OD. E.g. T 738/20, commented on this blog.

A first way not to admit CoR
Some boards consider CoR as an amendment of the proprietor’s case under Art 12(4) RPBA and do not admit them, unless the proprietor demonstrates that these AR were admissibly filed and maintained in the proceedings leading to the decision under appeal. They therefore plainly ignore that they were actually admissibly filed and maintained before the OD, if the proprietor does not put their nose on it. E.g. T 1135/22, commented in this blog..
Boards choosing this way not to admit the request often add Art 12(6) RPBA in their decision of non-admission.

A second way not to admit CoR
Some boards, like the present one, do not admit CoR if they were not properly substantiated in the meaning of Art 12(3) RPBA when entering appeal, and hence could not be admitted under Art 12(5) RPBA. In the present case, the board even agreed that the CoR were admissibly filed and maintained in opposition. The present board did also not consider the CoR as amendments under Art 12(4) RPBA.
In such a situation, it defies reason, if such CoR are not admitted in appeal, because the argumentation brought forward in opposition was not repeated in appeal. .
The boards do as well ignore that CoR were actually admissibly filed and maintained before the OD, if the proprietor does not put their nose on it. They want some argumentation, but there is no argumentation to be given for CoR other than what was said in opposition when they were filed. E.g. T 1184/22, also commented in this blog.

Some boards refuse to take into account a mere reference to submissions in opposition, which is as such not questionable. However in the presence of CoR, what elese can the proprietor say other than what he said in oppoition.

Problems
It is difficult to agree with the boards when it comes to dealing with CoR.

CoR should not be considered as amendments under Art 12(4) RPBA

It cannot be held against the proprietor if CoR have not be dealt with by the OD. The OD has no reason to deal with such AR when a higher ranking request is deemed allowable.
Considering CoR as an amendment is therefore difficult to understand for this reason alone, and represents a very pedantic way of dealing with CoR. A request not dealt with by the first instance is, by reasonable interpretation, not as such an amendment as it does not correspond to a totally new request filed after entering appeal. Only AR newly filed when entering appeal should be considered as amendments to the proprietor cases. The same goes for arguments, which have not been filed in first instance, i.e.. the AR lacked substantiation. By definition such requests do not qualify as CoR.

Tangible arguments in favour of the admissibility of CoR in appeal

Firstly, any CoR, which by definition, has been positively filed within the time limit under R 116(1) and properly substantiated upon filing should be admitted in appeal. Without proper substantiation AR filed in opposition do not qualify as CoR.

Secondly, any request filed after the time under R 116(1) answering an objection raised by the OD or the opponent in reply to the summons and properly substantiated upon filing should also be considered as CoR and admitted in appeal.


If a new objection is raised during OP, any request filed in reply and attempting to overcome this new objection should be considered as admissibly filed and maintained, and should be admitted in appeal. This should be automatically the case if the OD finds a previously filed request not allowable. If the case is remitted, a justification appears superfluous.

Repeating arguments when entering appeal appears superfluous

In the present case, the AR filed within the time limit under R 116 were properly substantiated. The present board has even considered that the CoR 3 and 8 would have been found admissible by the OD.
What else could the proprietor have done when entering appeal as there was no decision of the OD on those requests:
1) referring to its submissions in opposition or
2) making a copy paste of its argumentation on the AR in opposition.

If the proprietor refers to the submission in opposition, boards are prompt to dismiss such a reference as not taking into account the impugned decision. In the absence of any decision on those requests, this argument is not acceptable.
Requiring a copy paste of the arguments filed in opposition is ridiculous and pedantically formalistic.
That it is not the function of the board to deal with requests which have not been subject of a decision of the OD is not at stake. That the board also cannot allow these requests without examining them on their merits is as well not a stake. That the board do not want to examine those request is also not at stake.

What the boards could, and should do, when they find a higher ranking request not allowable, is to simply remit CoR to the OD for further prosecution. Without remittal of CoR, a board is depriving the proprietor from a real possibility to save its patent. This should be avoided.
Other case law on CoR
In T 224/22, commented on this blog, the OD decided maintenance according to AR 1. Hence all the remaining requests were not subject to a decision of the OD. They were admissibly raised and maintained in opposition and were thus CoR.
The board did admit them as it considered those request=CoR, as having been correctly filed and admitted by the OD.
The board even specified that the boards do not have the power to disregard on appeal submissions correctly admitted by an OD in exercise of its discretion. The board referred to Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.4.4.

T 224/22 is in accordance with T 446/22 , commented in this blog, T 924/22, commented on this blog, T 1175/22, also commented on this blog, and T 709/22, as well commented on this blog. The same applies to T 42/20 (Reasons 4.2)and T 476/21 (Reasons 7.1 to 7.3).

In T 921/21, commented on this blog, the bord examined ex-officio all AR filed in opposition after it had decided that the MR was not allowable.
CoR and opponents

Last but not least, it is necessary to mention T 664/20, also commented in this blog, in which the board did not admit objections against CoR from the opponent, as they were too late. For the board, the opponent should have raised objections against all CoR, even without knowing which CoR would be filed by the proprietor in appeal. Difficult to top as formalism.
CoR do thus not only pose problems to proprietors, but also to opponents.

Conclusion
The approach of some boards, using either Art 12(3) or Art 12(4) RPBA, for not admitting CoR should be given up. The conditions for admitting CoR should not be overly pedantic and formalistic. It is not asking too much to the boards not to make a fuss about true CoR.
A board is not required to go through the CoR and examine them for the first time in appeal. A board can simply remit the case to the OD.

But then it risks to see the case back on its desk. This is manifestly not helping the production/productivity of the boards, but gives a fair chance to the proprietor to defend its patent. This should matter.

In the present case, the board willingly deprived the proprietor of an oppoetunity to defend its patent by not remitting to the OD.

What has been said here applies mutatis mutandis to carry over objections (CoO), i.e. objections validly raised and maintained in opposition against requests not examined by the OD when it held a higher ranking request allowable.

T 437/20
https://www.epo.org/en/boards-of-appeal/decisions/t200437eu1

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