CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 446/22 – Carry over requests filed within the time limit under R 116(1) in opposition -  Effect of the cancellation of OP on the time limit under R 116(1)           

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EP 3 072 668 B1 relates to a method and device for connecting profile sections

Brief outline of the case

The patent as granted could not be maintained for lack of N over D1=WO 2013/132406, not mentioned in the ISR established by the EPO.

The oppo decided maintenance according to AR1. The opponent appealed.

The board held that claim 1 of AR1 infringed Art 123(2).

AR3.1 and 3.2 filed in appeal were carry over requests and admitted in the procedure.

The board held that claim 1 of AR 3.1 infringed Art 123(2), but maintained the patent according to AR3.2.

The opponent’s point of view on the admissibility of the CoR

AR 3.1 and 3.2 had been filed at first instance only after the date set in the summons under R 116. Even if the date for the first oral proceedings had been cancelled, the time limit set in the summons to those proceedings should have remained in force.

The proprietor had waited more than a year after filing the opposition to file these AR, although it had clearly had the opportunity to file them already with the opposition response or at least before the date under R 116(1) EPC.

AR 3.1 and 3.2 were therefore filed at a late stage of the proceedings and must clearly be admissible as such in order to allow their examination in substance.

In addition, the new AR introduced features from the description into claims 1 and 13, so that the subject-matter of the opposition had changed. AR 3.1 and 3.2 had been objected to by the opponent at the time, but they had not been discussed or admitted by the OD and were therefore not the subject of the contested decision.

Therefore, they should not be admitted into the appeal proceedings. Furthermore, the proprietor had not explained how AR 3.1 and 3.2 could overcome the objections raised. The proprietor’s behaviour constituted an abuse of procedure.

The proprietor’s point of view on the admissibility of the CoR

AR 3.1 and 3 had already been filed in opposition in preparation for the OP. After the first summons to OP had been cancelled due to the COVID-19 pandemic, the OD had set a new date under R 116(1) in its second summons. AR 3.1 and 3 had been filed before the expiry of this second time limit and were therefore admissible.

The board’s decision on the admissibility of the CoR

AR 3.1 and 3.2 filed with the response to the appeal correspond to AR 3.1 and 3.2 submitted by letter dated 01.09.2021, on which the OD had not decided because it considered the higher-ranking AR 1 to be allowable.

These requests therefore do not form part of the proprietor’s appeal submissions, which do form the basis of the contested decision and therefore do not fulfil the requirements of Art 12(2) RPBA.

The board examined whether AR 3.1 and 3.2 were admissibly submitted and maintained in the first instance proceedings before the OD. According to Part E-VI, 2.2.b) of the version of the Guidelines in force at the time of the OP of 11.11.2021, amended requests filed in response to the OD’s preliminary view in the annex to the summons that the patent is likely to be revoked are normally admissible, provided that this is done before the date determined under R 116(1).

For the board AR 3.1 and 3.2 were filed within the time limit set by the OD in the summons to the OP on 11.11.2011. For the board it was irrelevant that the OD had previously summoned to OP. as those summons were cancelled.

As a result of the cancellation, the date under R116(1) determined with the summons to the cancelled OP became legally ineffective. See also T 1706/19, Reasons 1.3.

The opponent’s argument that AR 3.1 and 3.2 were only filed after the date fixed in the earlier summons under R 116(1) is therefore not convincing. Nor can the opponent’s argument that the date under R 116(1) determined by the earlier summons should have been maintained despite the cancellation of the summons be accepted for the same reasons.

In this situation, the board concluded that the OD, applying the Guidelines in force at the time, would probably have admitted AR 3.1 and 3.2 submitted in due time into the opposition proceedings if it had considered the higher-ranking AR 1 and 2 to be not allowable.

AR 3.1 and 3.2 were therefore admissibly submitted in the opposition proceedings. Moreover, these AR were not withdrawn at the end of OP, but were maintained until the contested decision of the OD.

Consequently, the AR submitted with the response to the appeal do not constitute an amendment within the meaning of Art12(4) RPBA. They are therefore part of the appeal proceedings.

For this reason alone, no abuse of procedure can be recognised in the proprietor’s approach of resubmitting these auxiliary requests with the response to the appeal.


Effect of cancellation of OP on the time limit under R116(1)

When an OP is cancelled, the time limit under R 116(1) set in the original summons becomes null and void, irrespective of whether this deadline was used to file submissions or not.

Carry over requests

CoR have been subject to various decisions commented on this blog.

The present decision is one of the decisions which did not make a fuss about CoR.

The other decisions are 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).

Other decisions either consider CoR either as

  • an amendment pursuant to Art 12(4) RPBA and did not admit them for this reason. See T 1135/22, commented in this blog, although the proprietor had filed the requests within the time limit under R 116(1) set by the OD. The board made a rather formalistic distinction between substantiation and admissibility.
  • not properly substantiated pursuant to Art 12(3) RPBA and did not admit them for this reason. See T 1690/22, also commented in this blog.
  • one board did not admit CoR under both Art 12(3 and 12(4) RPBA. In its decision the board insisted on the application of Art 12(4) RPBA, but also brought in Art 12(3) RPBA, See T 246/22, also commented in this blog.   

In T 246/22, Reasons 4.15, the board made clear that it did not endorse the conclusions drawn in T 42/20 and T 476/21.

Divergent case law in matters of carry over requests

The different decisions quoted here show once more that the boards have in procedural matters a diverging approach. This divergent approach is detrimental to the predictability of the boards and hence to their credibility.

That requests filed in opposition without proper substantiation or late filed, for instance after the time limit under R 116(1), or even during OP, should not be admitted in appeal is manifest and quite normal. If the OD would have had to decide upon those, their admissibility would first have been decided by the OD before any discussion on their substance. I would not call these AR CoR.

What is not normal, is that substantiated AR filed before an OD within the time limit under R 116(1) and re-submitted in appeal, when the OD has not dealt with them as it has decided on a higher ranking request have to undergo an admissibility examination. As those requests have not been discussed in opposition, it is difficult for the proprietor, when entering appeal, to say much more than what he said in opposition. Those AR are clearly CoR.

It can be argued that since CoR have not been decided upon by an OD and can therefore be considered as amendments under Art 12(4) RPBA, but this is very small minded interpretation of Art 12(4) RPBA, bar from any reality and excessively formalistic.

In T 42/20, and in the present decision, the board clearly held that CoR were not to be considered as amendments pursuant to Art 12(4) RPBA, although they do not fulfil the requirements of Art 12(2) RPBA. This is a different, but much more reasonable, interpretation of Art 12(4) RPBA. This interpretation should be adopted for true CoR..  

After all, the proprietor should not be disadvantaged when properly filed and substantiated AR have not been dealt with by an OD, because a higher ranking request was considered allowable. That all or some of those AR are re-submitted in appeal should not come as a surprise.

T 446/22

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