CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 2 421 777 B1 relates to a zoned accumulation conveyor

Brief outline of the case

In a first decision T 423/18, the case was remitted to further prosecution after revocation by the OD.

After remittal to the OD, the proprietor submitted a new MR and AR1-15, whereby AR8 corresponded to AR2 decided upon during the first appeal proceedings.

In a second decision, the OD decided maintenance according to AR8.

In its decision, the OD did not admit the MR and AR1-7.

Both proprietor and opponent appealed.

The board held that the OD had correctly exercised its discretion in not admitting the MR and AR 1-7 and confirmed maintenance according to AR8.

Eventually the proprietor was sole appellant in appeal.

The proprietor’s point of view

The proprietor argued that the decision to not admit the MR and AR1-7 after remittal suffered from an error in the use of the discretion applied by the OD and disputed that those requests  could be considered late-filed.

These requests were submitted after the case had been remitted to the opposition division for further prosecution and before the OD summoned for OP after remittal, therefore before the final date set under R 116(1).

The proprietor underlined that the order of T 423/18 did not specify on which request the case should be further prosecuted, so that the remittal was not bound to a particular request or claim.

Therefore any amendments in the set of claims, such as the addition of claims, were not to be excluded, and reference was made to  T 1630/08, Reasons 2.1 to 2.3.

In the case at hand, the ratio decidendi of the first appeal proceedings’ decision could not be contravened, since the subject-matter of the requests filed at the outset of the second opposition proceedings was different from the subject-matter of the requests decided upon in the first appeal proceedings.

The proprietor argued that Art 123(1) in combination with R 116 amounted in the present case to an explicit invitation and a right to file additional requests that should be admitted. The proprietor further indicated that AR1 of the present appeal proceedings corresponded to AR4 of the first appeal proceedings, so that this request had been filed even earlier. As a result, this set of claims had to be seen as admissibly raised and maintained.  

With regard to T 364/20, the proprietor pointed out that in point 7.2.2 the competent board found that requests “submitted before the date set under R 116(1) cannot, as a rule, be considered as being late-filed“. In addition, the proprietor indicated that in point 7.2.14 of said decision, the board considered the requests filed during that time period “to be a reasonable redefinition of the fallback positions of the proprietor to defend its patent against a possible change of mind of the OP at the OP”.

The board’s decision

In the present case, the MR and AR1-7 were indeed filed before the date set under R 116(1) by the OD after remittal.

However, these requests were filed after the expiry of the time limit set under R 79(1) and after the expiry of the date set under R 116(1) in the first opposition proceedings before remittal.

The fact that the MR and AR1-7 in the present appeal proceedings might comprise independent claims that had already been previously filed does not detract from the fact that these requests had not themselves been filed earlier.

Although AR1 corresponds to AR4 of the first appeal proceedings, this request was filed for the first time with the statement setting out the grounds of appeal of the first appeal proceedings, and thus also after the time limits set under R 79(1) and R 116(1) in the first opposition proceedings.

Moreover, the re-ordering of this request only at the stage of the second opposition proceedings also constitutes an amendment, which prevented the board in the first appeal proceedings from deciding on it. In this respect, as far as AR1 is concerned, the conditions to be considered in the present second appeal proceedings are those of Art 12(6) RPBA, not those of Art 12(2) and (4) RPBA.

As a consequence, the proprietor’s argument that AR1 had been admissibly raised and maintained is to be taken into account only in view of whether the use of the discretionary decision of the OD to not admit the MR and AR1-7 after remittal suffered from an error.

The board noted that, if all new submissions received within the time limit according to R 116 were automatically to be considered timely filed, the time limit set according to R 79(1) would be rendered meaningless.

Therefore, when determining whether amended requests, such as the MR and AR1-7, submitted before the set date under R 116, were filed in due time, it has to be taken into account whether these requests were submitted in direct and timely response to a change in the subject of the proceedings, see T 364/20, Reasons 7.2.4 and 7.2.6.

The board considers it necessary to emphasise that, although in T 364/20 the requests were ultimately admitted, the competent board nonetheless held that those requests were considered to have been filed late during the opposition proceedings.

Accordingly, while requests filed in due time may not be disregarded by the deciding bodies of the EPO, the mere fact that the requests were admitted does not, in itself, establish that they were filed in due time. Rather, their admission reflects the exercise of discretion of the deciding body to admit them notwithstanding their late filing.

The board concluded that in the present case the MR and AR1-7 are to be considered as not being filed in due time in opposition proceedings, and that the OD had discretion to disregard them.

Comments

T 364/20 was commented in the present blog.

It can be agreed with the present board that any requests timely filed by the proprietor, i.e. within the time limit under R 79(1) or before the date set under R 116(1), are not necessarily admissible.

Such requests ought to be in conformity with R 80 and have to be properly substantiated. Only if those conditions are fulfilled such requests are admissibly raised.

I would claim that in a normal opposition case, without any change of the legal and factual framework of the opposition, the time limit for filing grounds of opposition is always the 9 months under Art 99. The time limit for filing requests in opposition is the date set under R 116.

If a solid N or lack of IS objection is validly raised by the opponent, the proprietor has to file a request during opposition to overcome the objection, otherwise it might be too late in appeal. The proprietor can also not be certain that the board will endorse the OD’s decision.

But that this request ought to be necessarily filed within the time limit under R 79(1) is going too far, especially in case of a plurality of opponents.  

It is often wiser to wait for the opinion of the OD and to adjust the requests in function of the OD’s opinion.

By insisting that requests have necessarily to be filed within the time limit under R 79(1), the present board confuses opposition and appeal proceedings. In view of the valid RPBA, appeal proceedings are front-loaded, but this is not the case of opposition proceedings.

The present case is however a warning that remittal is not giving “carte blanche” to file new requests at will after said remittal. In this respect the present is similar to T 1238/22, commented in the present blog.

T 781/24