The patent relates to acoustic elements formed of air laid mineral fibres and their production.
Brief outline of the case
The opponent appealed the rejection of the opposition by the OD.
In appeal, the opponent requested that the decision of the OD be set aside and the patent be revoked.
In appeal the proprietor requested as MR that the appeal be dismissed and the patent be maintained as granted or, as an alternative, that the patent be maintained as amended on the basis of AR 14, filed with the reply to the statement of grounds of appeal. The other AR are not relevant for the present decision.
The board considered claim 1 as granted as lacking N over a PPU by the opponent.
The board decided maintenance of the patent according to AR 14.
The interesting part of this decision is the discussion relating to the admittance of late-filed objections against AR 14.
The opponent’s position
The reply to the statement setting out the grounds of appeal had been filed around three years before the entry into force of the RPBA20. Art 13(3) RPBA07 was in force at that time and did not oblige the opponent/appellant to react promptly to the filing of the AR; in any case, the same N objections as for the MR applied.
As there were no time constraints in the RPBA07 similar to those established by current Art 13(2) RPBA20, this had to be considered an exceptional circumstance which justified admitting the objections raised during the OP.
For the opponent, claim amendments have always to be examined for compliance with at least Art 123(2), even by the Board itself of its own motion.
The opponent considered that claim 11 as originally filed was not an adequate support for amended claim 1 which has thus been extended beyond the disclosure of the application as originally filed.
The proprietor’s position
The proprietor argued that the opponent did not raise any objection against the AR filed in 2017 until the day of the OP. The appellant should have challenged them beforehand, at some point during the last five years.
In addition to being late-filed, the proprietor was of the opinion that the objection based on Art 123(2) EPC was irrelevant.
The board’s position
Late-filed objections by the opponent
As the summons to OP was not notified before 01.01.2020, Art 25(3) RPBA20 is not applicable. Thus, Art 13(2) RPBA20 is applicable to any amendment to a party’s appeal case made after the summons to oral proceedings, irrespective of the filing date of the appeal at issue.
For the board, it was not until the OP before the Board that the opponent for the first time raised two objections against claim 1 of AR 14, based on Art 54 and 123(2), respectively.
These objections constitute an amendment to the appellant’s appeal case made after notification of the summons to oral proceedings; it is therefore subject to Art 13(2) RPBA20.
When applying Art 13(2) RPBA20, a board may also rely on the criteria referred to in Art 13(1) RPBA20, see T 2117/18, Reasons 2.2.20; see also the explanatory remarks in document CA/3/19, page 43.
The criteria referred to in Art 13(1) RPBA20 include the suitability of the amendment to resolve the issues raised. In the case in hand, this translates into whether the newly raised objections against AR 14, namely under Articles 54 and 123(2) EPC, will prima facie be successful.
The Board noted that it does not need to assess the prima facie relevance of an objection in order to conclude that there are no exceptional circumstances under Art 13(2) RPBA20 justifying its admittance into the appeal proceedings. Whether it is appropriate to conduct this kind of prima facie assessment depends on the specific circumstances of the case.
Obiter dictum in G 10/91 and late filed objections
Although the opponent did not refer to the EBA’s opinion in G 10/91, the Board considered it expedient to address it in this context.
In G 10/91, Reasons 19, the EBA stated that “amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings […] are to be fully examined as to their compatibility with the requirements of the EPC, e.g. with regard to the provisions of Art 123(2) and (3)“.
For the board, this statement does not mean that the board is obliged to admit the opponent’s late-filed objections under Art 13(2) RPBA20 and consider them fully.
The board considered that the EBA’s statement in G 10/91, Reasons 19, does not concern the questions of law referred to it. This statement is therefore not part of the ratio decidendi, i.e. the reasoning for the order given there, but an obiter dictum. As such, it is an observation made in passing and cannot be expected to have undergone the same level of analysis and scrutiny as statements made in the context of the ratio decidendi.
The obiter dictum in G 10/91, Reasons 19, can thus not be construed as an obligation for the boards to fully examine any claim amendments made in the appeal proceedings in the same way an ED or OD would.
The board added that this would be at odds with Art 114(2) and the settled case law under which appeal proceedings were never intended to be the mere continuation of first-instance proceedings.
Furthermore, the EBA’s statement must be interpreted in the context of the current legal framework, which has changed significantly since that statement was made.
In particular, the RPBA in force at the time decision G 10/91 (31 March 1993) was taken did not contain any provisions on late-filed submissions. Provisions in this regard were only introduced with the Rules of Procedure 2003 (OJ EPO 2003, 61) and are now part of the RPBA20.
Taking into account Art 114(2) and the RPBA20, the board was of the view that the EBA’s obiter dictum in G 10/91, Reasons 19, is in any event fully respected when the prima facie relevance of an objection is considered in the context of assessing whether there are exceptional circumstances justifying its admittance pursuant to Art 13(2) RPBA20.
The board thus considered it appropriate in the case in hand to also assess the prima facie relevance of the appellant’s objection under Art 123(2).
The board concluded that neither of the two objections against AR14, and especially that under Art 123(2), were prima facie persuasive. No exceptional circumstances could be ascertained and the board decided not to admit these objections into the appeal proceedings under Art 13(2) RPBA20.
Objections against AR filed in reply to a statement of grounds of appeal
It is pretty manifest that any objections against AR filed in reply to a statement of grounds of opposition should be filed as early as possible that is in reply to the filing of those AR. Waiting to take position is never advisable. This was already necessary under the RPBA07, cf. Art 13(3) RPBA07, it is even more necessary under the RPBA20 which comprise a lot of measures against late submissions.
Obiter dictum in a decision of the EBA
Whether an obiter dictum in a decision of the EBA cannot be expected to have undergone the same level of analysis and scrutiny as statements made in the context of the ratio decidendi may be left as it is.
The EBA is most probably aware that any statement in its reasoning will be carefully scrutinised. Doubts about the above statement of the board are thus permitted!
Late-filed objections prima facie relevant when AR are filed in due time
In the present case the late-filed objections against AR 14, especially those under Art 123(2), were not found prima facie relevant.
A contrario, it can thus be considered, that when late-filed objections are prima facie relevant, they can be filed and must be admitted after the communication of the board annexed to the summons.
Under Art 13(2) RPBA20 such late-filed objections are regularly admitted. They can be raised by the opponent or by the board during the OP or in advance of the OP.
The proprietor can subsequently file at least a further request in an attempt to overcome those objections. The conditions set out in Art 13(1) RPBA then also apply to such a late-filed request from the proprietor.
In spite of all due consideration of Art 114(2) and the RPBA20, the EPO should not maintain patents which have no reason d’être if they are not patentable for a manifest lack of patentability, especially manifest lack of N and IS, or manifest infringement of Art 123(2).
The question of the hierarchy of norms nevertheless remains. It has been discussed in this blog. In said blog it was suggested to apply Art 13(2) RPBA20 with caution.
It is in any case difficult to understand that mere rules of procedure can render moot decisions of the EBA on substantive matters as well as some obiter dicta in those decisions.
Special situation of fresh grounds of opposition
G 10/91 has decided that fresh grounds for opposition may be considered in appeal proceedings only with the approval of the prprietor.
If grounds of opposition are manifestly relevant but only raised in appeal, the proprietor can refuse their admission. The new grounds of opposition are simply late-filed.
In such a situation enforceability of the patent may be put in doubt. However, the chance that a national jurisdiction has a different opinion is not to be dismissed, especially when it comes to added matter. This explains the attitude of most of the proprietors. They cannot be blamed, but it remains sometimes a dangerous game.
It would probably be better to have those late-filed grounds discussed and dismissed rather than leaving doubts about the patentability. If those grounds are not prima facie relevant, they can easily be dismissed.
It could well be that in the future G 10/91 could, albeit in the framework of a further referral, be amended on this point.