EP 2 757 423 B1 relates to a metal pivot pin for a timepiece movement including at least one pivot hardened to a predetermined depth by carbon or nitrogen atoms in interstitial diffused sites.
Brief outline of the case
The patent was revoked, mainly because of a lack of sufficiency of the patent as granted as well as a majority of AR.
The board found that lack of sufficiency as granted was not given, but claim 1 as granted lacked N over D2/D2t=JP2003-214526.
In view of the remaining AR, the board therefore remitted for further prosecution. The OD should also decide whether or not, non-anonymous, third parties observations submitted during appeal should be admitted in the procedure.
The decision is interesting as far as the board had to decide whether the objection of admissibility of the appeal, filed by the opponent after the board’s communication under Art 15(1) RPBA was admissible or not. The board decided that it was not admissible under Art 13(2) RPBA.
The opponent’s point of view
For the opponent, the appeal was inadmissible as insufficiently reasoned. According to the opponent, the admissibility of an appeal must be examined at each stage of the appeal procedure.
The board’s decision on admissibility
The board was aware of the existence of case law which considers that the question of the admissibility of an opposition or appeal can and must be raised ex officio at all stages of the proceedings, even during the oral proceedings in an appeal, cf. CLBA, 10th edition, July 2022, V.A.2.7.
The board referred to a series of older decisions according to which a board does not have the discretion not to take into consideration a late objection to admissibility, even if it was raised by a party for the first time during the OP before a BA.
The present board considered that it has discretion not to take into account the objection to admissibility raised by the opponent.
An objection to the admissibility of an appeal or opposition raised by a party constitutes a submission within the meaning of Art 114(1).
The question of whether the notice of appeal complies with the requirements of R 99(2) may include facts as well as arguments, for example whether or not it contains grounds on which the contested decision should be annulled.
The present board was of the opinion that a BA may rule on the question of the admissibility of the appeal or the opposition at any stage of the proceedings without a request, i.e. ex officio.
However, for the board, it does not follow that facts raised late by a party on the question of admissibility must always be taken into consideration by a board. This does also not follow from the wording and purpose of the RPBA.
The wording of Art 12 and 13 RPBA does not limit the discretion of a BA so as to exclude the question of the admissibility of an appeal or opposition.
The present board did not share the view expressed in Reasons 25 and 26 of T 1006/21 that the provisions of Art 12 and 13 RPBA limit only amendments to the facts and merits of an appeal, but that procedural requests do not constitute amendments within the meaning of those provisions.
The present board shared the contrary view expressed in Reasons 1.3.2 of T 1774/21, according to which the wording of the RPBA was deliberately chosen to distinguish between general “requests” and “amendments to a patent application or patent” This view is also supported by the table setting out the amendments to the RPBA with explanatory remarks, cf. Supplementary Publication 2, OJ EPO 2020, 17, according to which the term “requests” is not limited to amended texts of patent applications or patents.
It follows that the fundamental importance of the question of admissibility per se cannot lead to the conclusion that a board is obliged to take into account an objection by a party to the admissibility of an appeal or opposition at any stage of the proceedings.
The board did not see why the fact that admissibility is a precondition for an examination on the merits should lead to the conclusion that this condition can always be called into question by a party, particularly after the examination on the merits has begun.
This is all the more true given that, as a general rule, all the facts, documents and evidence required for the assessment are already available at the start of the appeal proceedings. This, combined with the importance of the question of admissibility, suggests that in particular objections to admissibility can and should generally be raised at the beginning of the proceedings, as is also advocated by Art12(3) RPBA.
In order to avoid any misunderstanding, the board wished to make it clear that it does not consider that it has any discretionary power to determine whether an objection or appeal is admissible.
However, it does not see, either in the wording of the provisions of the EPC, or in the RPBA, or indeed in any other consideration, why a party to the proceedings should be able to challenge at any time a decision which the board is required to take ex officio.
It is possible for a board to take into consideration objections to admissibility submitted late by a party, if there are circumstances justifying such consideration.
The opponent’s objection to the admissibility of the appeal was not taken into account under Art 13(2) RPBA, as there are no exceptional circumstances justifying the admission of this objection about a decision which a board is required to take ex officio.
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Ex officio decision on the admissibility of the appeal?
In its reply to the appeal, the opponent queried the admissibility of documents quoted by the proprietor in its statement of grounds of appeal.
In the board’s communication under Art 15(1), there is no indication that the appeal was admissible or not. Only the admissibility of the proprietor’s late filed documents and the merits of the case have been discussed. It appears thus doubtful that the board had actually taken an ex officio decision about the admissibility of the appeal. The decision of the admissibility of the appeal has been taken after the board dissmissed the late objection of the opponent.
If an OD decides in substance on an opposition, it must decide first on the admissibility of the latter.
If a board considers an appeal admissible, it should at least take a decision to this effect, and not after the opponent has queried the admissibility of the appeal. The admissibility of the appeal should have been provisionally indicated in a communication of the board.
T 1006/21 and decisions against it
T 1006/21, commented in the present blog must have displeased many boards, including the present one.
The present board agreed with T 1774/21, also commented in this blog.
T 1320/22, as well commented in this blog, dealt with the objection about the admissibility of AR 1, raised for the first time during the OP before the board. It was also not admitted under Art 13(2).
In T 1320/22, the board did not only not admit the late objection about the admissibility of AR1, but did not admit any objection to the substance of AR1 which had only been filed when entering appeal, whereby the proprietor had never substantiated AR1.
Clarification needed
Irrespective of the board, whether admissibility of submissions are of procedural or substantial nature, the present decision illustrates once more the very different ways boards act on procedural matters.
It is high time that the boards come to an agreement on procedural matters. Some predictability is the minimum which can be required from the boards.
If there are good reasons to do so, it is therefore advisable for opponents to query the admissibility of the appeal (and/or of the opposition) with its first submission in appeal, be it as appellant or as respondent.
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