The patent relates to an aqueous cleansing composition for human hair.
Brief outline of the case
The patent was revoked by the OD for lack of IS of claim 1 of a new MR filed in opposition, whereby the CPA=D4=EP453238 was an X document cited in the ISR established by the EPO. The second document, D1=US5683972 was not found in the ISR.
The proprietor appealed.
The board confirmed the lack of IS of the MR on the basis of the same CPA and a document illustrating common general knowledge, D10=Novel Surfactants, edited by K. Holmberg (Institute for Surface Chemistry, Stockholm), 1999, which was also not found in the ISR.
AR 1 was lacking IS for the same reasons and AR 2 was not admitted in the procedure under Art 12(4) and 12(6) RPBA20.
The revocation of the patent was thus confirmed.
The case is interesting in view of some procedural aspects.
The admission of late filed experimental data
The proprietor’s position
Comparative tests (D13) were filed on the very last day set in the summons to the OP pursuant to R116. During the OP, the OD decided to admit the experimental data (D13) in the procedure and not to grant a request for postponement of the OP.
The proprietor considered that it was not possible for it to respond to D13.
The board’s position
D13 is cited in the decision of the OD in the context of the assessment of inventive step and the opponent has relied on D13 in the reply to the appeal. Accordingly, D13 forms part of the appeal proceedings under Art 12(2) RPBA20 and the Board has no discretion under Art 12(4) RPBA20 to exclude it from the proceedings.
Furthermore, the Board’s discretion not to admit evidence which should have been presented or was not admitted in the opposition proceedings under Art 12(6) RPBA20 does also not apply to this document.
The board noted, without any further justification for it, that there was no deficiency in the exercise of the discretion of the OD as it was based on the assessment of prima facie relevance.
Non-admission of AR2 in appeal
The proprietor’s position
AR 2 was filed by the proprietor with the statement of grounds of appeal. Claim 1 results from the incorporation of claim 3 as granted into claim 1 as granted so that the sorbitan surfactant is now limited to “sorbitan sesquicaprylate”.
According to the proprietor, this request was filed in the appeal proceedings because the OD changed its mind with regard to inventive step during the OP as compared to its preliminary opinion.
The OD’s change of mind surprised the proprietor. According to the proprietor, this request does not change the scope of the discussion and does not represent a surprise to any party to the proceedings because it is limited by a feature of the granted claims.
The board’s position
AR 2 represents an amendment to the appellant’s case within the meaning of Art 12(4) RPBA20. Any such amendment may be admitted only at the discretion of the Board, which must exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy (Art 12(4) RPBA20).
The list of sorbitan surfactants of claim 1 as granted has been limited to sorbitan sesquicaprilate, and the weight ratios of amino acid surfactant to sorbitan surfactant disclosed in granted claim 1 for the whole list of sorbitan surfactants now relate to sorbitan sesquicaprilate only.
This amendment raises concerns about the allowability of AR 2 under Art 123(3) and thus requires a debate on this issue.
At the same time, it is questionable whether the amendment made to claim 1 of AR 2 has an effect on the assessment of inventive step
AR2 was filed to overcome inventive-step objections that were present since the beginning of the opposition proceedings. Therefore, it should have been filed in the opposition proceedings (Art 12(6) RPBA20).
With its letter of 14.05.2020, the proprietor filed comparative experiments D11 and requested the possibility to file further AR during the OP before the OD. The AR would be directed to the preferred embodiments that the patent underlines with one or more of the dependent claims. Said preferred embodiments in the patent are precisely compositions comprising sorbitan sesquicaprylate, which was the subject-matter of dependent claim 3 as granted, and which was present in all examples of the patent and in the comparative experiments D11. Thus, the proprietor had the opportunity to file AR 2 together with the experiments D11, or, at the latest, during the OP before the OD.
The change of the opinion of the opposition division regarding inventive step during OP cannot as such constitute a reason to file a new request only in the appeal proceedings, since such a change belongs to the normal course of the proceedings.
Hence, none of the criteria of admissibility, i.e. the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy, speak in favour of admitting auxiliary request 2.
Admission of late filed experimental data
The decision of the OD and of the board are somehow surprising and clash with existing case law.
In order to respect the right to be heard, experimental data should always be submitted in such a way that the other party has sufficient time to check the data and review the data and, if necessary, make counter-experiments. This applies to experimental data submitted by both the opponent and the proprietor.
It follows that experimental data filed even within the time limit under R 116(1) before an OD should as a rule, not be admitted to the proceedings, unless the OP is postponed, e.g. T 1310/10.
In T 2415/09, the opponent filed new experimental data six weeks before OP. As the proprietor did not have time to present counter tests, the board held that the OD committed a substantial procedural violation, especially since the patent was revoked on the basis of said experimental data. That a postponement of the OP had not been requested by the proprietor was irrelevant as he had requested that the experimental data was not admitted in the procedure due to late filing.
In a more recent decision, T 1605/16, the proprietor filed experimental data during the OP. This data were used by the OD in its decision. The opponent considered that its right to be heard had not been respected. The board considered that since the opponent had not requested the possibility to review of experimental data submitted by the proprietor during OP, the board could not find any violation of the right to be heard.
The board added that, since the data were the subject of the OD’s decision, they are part of the appeal proceedings and cannot be ignored.
When taking into account T 2415/09 and T 1605/16, the comment of the board in the present case, that there was no deficiency in the exercise of the discretion of the OD as it was based on the assessment of prima facie relevance cannot be followed.
If the experimental data was prima facie relevant, the proprietor should have had the chance at least to verify the experimental data submitted by the opponent, as on top of it, it requested the postponement of the OP, which was refused by the OD.
In another decision, T 518/17, the proprietor/appellant submitted experimental data shortly before the date for the OP in opposition proceedings. The OD allowed this data to be used in the opposition proceedings.
In T 518/17, experimental data were filed during OP by the opponent/respondent and hence were submitted in reply to the proprietor’s filing, were however not admitted into the opposition proceedings.
The Board considered the opponent’s resubmission of the experimental data at the earliest stage of the appeal procedure, together with further supporting data, to be an appropriate and legitimate response to the developments in opposition proceedings
In view of this decision, the proprietor could have filed experimental data when entering appeal. With the mind-set of the present board, it is doubtful that they would have been admitted.
Admitted late filed submission by the OD – Effect in appeal
It can be agreed with the board that once a late filed submission has been admitted in the procedure by an OD, and this submission was taken into account in the decision of the OD, it is part of the appeal procedure This was also the case in T 104/17 or T 487/16.
In can also be agreed with the board that the filing of AR 2 represented an amendment with respect to the situation before the OD. Whether the actual situation warranted such a harsh decision of non-admissibility is not immediately apparent when one looks at the procedure as a whole.
Non-admission of AR2 in appeal
The proprietor’s behaviour
The position adopted by the board, reminds that it is of utmost importance for the proprietor to be pro-active before the OD.
Merely requesting the possibility to file further AR during the OP before the OD is not binding for the OD, even if those AR consist of a combination of granted claims relating to preferred embodiments.
According to T 1267/14, a combination of granted claims was deemed admissible and the discretion of the OD was correctly exercised.
The board’s reasoning
When on the other hand, the board claims that IS objections were present since the beginning of the opposition proceedings, it plainly overlooks the fact that in the statement of grounds of opposition, the objection of lack of IS was only directed towards claim 1 as granted.
No objections of lack of IS against any of the dependent claims is to be found in the statement of grounds of opposition. An objection of lack of IS against claim 1 as granted was raised on the basis of D4 alone or a combination of D4 and D 10. Other objections of lack of IS were based on D3 alone or a combination of D5 and D6.
After the OD had indicated that, in its opinion, the patent could be maintained on the basis of the new MR, the opponent never discussed the dependent claims of the MR or of AR1. For the opponent, claim 1 of AR 1 was infringing Art 123(3). Even in its last submission before the OP, the opponent never discussed the dependent claims
The proprietor should certainly have been more pro-active before the OD, but it can be concluded from the file that both the OD and the BA wanted to get read of the case as swiftly as possible.
D13 was filed in support of objections of lack of IS on the basis of D1 which was ever only used for N objections in the statement of grounds of appeal, but later used for an objection of lack of IS.
In view of the statement of grounds of opposition, it can hardly be concluded that the objection of lack of IS based on D1 and D13 were part of the legal and factual framework of the opposition under R 76(2, c). the same applies to the absence of any objection against dependent claims as granted.
In view of the existing case law, the OD clearly committed a SPV by admitting a D13 and not postponing the OP. By admitting D13 and not postponing the OP, the file could be however be decided directly during the OP. This might have been efficient, but to the detriment of the right to be heard of the proprietor.
If the board had concluded to a SPV, the decision would have been set aside and the file remitted to the OD for further prosecution. The board could most probably reckon that the file would end up again before it. From a productivity/production point of view, it was thus more efficient to stop the procedure by confirmation of the revocation.
Even if one can consider that AR2 was late filed, the fact that the dependent claims had never been discussed by the opponent right from the beginning of the opposition procedure, could and should have been taken into account and the proprietor be given a chance to combine granted claims.
The present decision confirms also that procedurally it has become a lottery for the parties as procedural aspects are decided quite differently from board to board. Whilst D4 was mentioned in the ISR (as D2), the other documents allowing to decide on IS were not mentioned in the ISR.
Even if the board confirmed the revocation, the reasons for the lack of IS of the board (D4+D10) are different from those of the OD (D4+D1). The present decision belongs thus to the 50+% of cases in which the decision of the OD has not been confirmed by the board.