The patent relates to a communication system for providing data communication to a vehicle, for example a train.
Brief outline of the case
The opposition was rejected and the opponent appealed.
Contrary to the OD, the board found claim 1 as granted as lacking N over D5=US 2011/0296006.
AR1-7 filed when entering appeal were not admitted under Art 12(4) RPBA.
The patent was thus revoked
The case is interesting in that the AR filed when entering appeal were not admitted.
The proprietor’s point of view
The proprietor explained that there was no need to file any AR during the opposition proceedings because the OD rejected the opposition. D5 was not considered N destroying for claim 1 as granted.
AR 1 to 7 were submitted in order to respond to the opponent’s argument that D5 anticipated feature (g).
The opponent’s point of view
The opponent drew the attention to page 13 of the appealed decision dealing with feature (g). This point was refuted in the statement of grounds of appeal.
The opponent raised an objection as to insufficiency of disclosure under Art100(b) in combination with Art 83 against claims 1 of AR 1-7 as a number of expressions used in those AR like “intercept”, “masquerade” and “terminates”, have no well recognised meaning in the field.
The board’s decision
For the board, the appealed decision was not “based on” AR 1 to 7 within the meaning of Art 12(1)(a) RPBA.
The board held that in such a case, the proprietor has to demonstrate that these requests were admissibly filed and maintained in the proceedings before the opposition division and referred to Art 12(4) RPBA.
If this is done, the AR form part of the appeal proceedings. In the case in hand, the proprietor has not made submissions to that effect.
Therefore, the AR on file are to be regarded as an “amendment” within the meaning of Art 12(4) RPBA, and may be admitted only at the discretion of the board
The board, however, considered that a party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings.
Indeed, each party should take into account that either the OD or the board may depart from the preliminary view expressed by the OD and adopt an opposing view. The proprietor should prepare the relevant “fallback positions” for that eventuality.
There is however no right to present on appeal “fallback positions” that could have been presented already in the first-instance proceedings. Anything else would be contrary to the primary purpose of the appeal proceedings as laid down in Article 12(2) RPBA, i.e. the judicial review of the decision under appeal.
The amendments underlying claim 1 of AR 1 to 7 would further necessitate an n interpretation of several new expressions for the first time, like “intercept”, “masquerade” and “terminates”, have no well recognised meaning in the field.
The board therefore considered that admitting AR 1 to 7 into the proceedings would be detrimental to procedural economy.
Admissibility of AR in appeal
In matter of admissibility of submissions, the situation at the boards is slowly but surely getting from bad to worse.
On the one hand, some boards require from an opponent to comment on all AR filed in opposition, but not dealt with in opposition, while other say that the opponent does not know whether there will be an appeal and which AR will be kept.
Here we have a board which says that the proprietor should have filed AR in opposition, even if the opposition is rejected. The proprietor did not even know whether there would be an appeal!
As the OD would not have dealt with those AR, as it rejected the opposition, the content of those requests would actually have been irrelevant. They could have contained expressions like “intercept”, “masquerade” and “terminates”, which apparently have no well recognised meaning in the field.
But they would have been in the procedure in spite of all possible defects and Art 12(4) RPBA would have been respected.
The present attitude of the board is going to a level of formalism which is barely acceptable. It is clear that the board was not minded to look at the AR, and would not look at the AR, but then, it should have remitted the case for further prosecution.
That a board can take a different position than that of an OD is not at stake. As the board has decided that N was not given, it could and should have remitted the case for further prosecution. Why is it necessary to submit requests when the decision of the OD is such that no AR were needed?
If the decision of the OD is positive for the proprietor, it will difficult for it to substantiate AR with respect to the decision of the OD when entering appeal.
However, according to the present board, AR should have been be filed! If they are maintained, but not substantiated, what would be difficult, the board could dismiss them as not being substantiated. It is difficult to top the formalism of the present board.
It has also to be noted that in its annex to the summons the OD found at least one difference with D5, which was different from that of the board.
In the present case, the proprietor had no reason to file any AR in reply to the provisional opinion of the OD. Should the OD have changed its opinion during the OP, the proprietor would have been allowed to file at least one AR. As the decision of the OD was positive, the proprietor could only file AR when entering appeal.
Once the decision has been set aside, there is no obligation to keep the requests filed during opposition, so AR can be formulated anew. So why the big discussion about admissibility?
The attitude of the board can be qualified as excessively formalistic in its interpretation od Art 12(4) RPBA and bearing no relationship with real life.
Obligation to file AR in opposition
The only lesson to be drawn is for a proprietor is to always to file AR.
If they are not needed in opposition, they are present, and whether they are fall-back positions or not is irrelevant.
In such a situation the board will not take a final decision, as it will certainly not want to look at the AR, but will be obliged to remit once it has set aside the OD’s decision.
One could easily come to the conclusion, that in the present case, the board did not want to see the case back at all and hence fell into a formalism which is difficult to top.
On the procedure
The European Search Report only mentioned 4 documents qualified as background art (A).
D5 is classified in one the classes the search was carried on, H04L.
It is thus surprising that a N destroying document was not found. With the proper queries a N destroying document should be found without much difficulties.
According to the board’s decision D5 is US 2022/0296006. It actually is US 2011/0296006.
A look in the OD’s decision allows easily to find the correct number.
Formalism for formalism, the board can be measured by the same yardstick.