The patent relates to improvements insecurity substrates for security documents.
Brief outline of the case
The OD decided that claim 1 as granted was lacking N over D1=WO2004/056582 not mentioned in the ISR established by the EPO.
The patent was maintained according to AR6.
Both the opponent and the proprietor appealed the OD’s decision.
The board confirmed that claim 1 as granted lacked N over D6.
The board considered that claim 1 of AR4 in appeal, corresponding to claim 1 as maintained by the OD, was lacking N over D6=US 5984191, as well not mentioned in the ISR established by the EPO.
Eventually the patent was revoked.
AR “not taken into account”
AR 1 and 2 were not admitted under Art 13(2) RPBA20/21. In its decision the board held that AR1 and 2 were “not taken into account”.
AR 3 was also “not taken into account”. The board held that there was an amendment of the proprietor’s appeal case and referred to Art 13(1) RPBA20/21.
The amendment in AR5 was considered not suitable for addressing the issue of N in view of D6 and could not change the outcome. In that sense, the amended request failed to “relate to the case under appeal”. AR 5 was as well “not taken into account”.
AR 6-10 were considered not pending by the board.
The case is interesting in view of the reasons for which AR 5 was not “taken into account”.
The board’s position
AR 5 was filed, for the first time, in 2019, within the time period foreseen under Art 12(1) RPBA07 for the proprietor’s reply to the opponent’s statement of grounds of appeal as AR 7.
The catchword in decision T 620/19
The board found it necessary to specify the following in the catchword.
A characteristic employed in the prior art concerned was introduced to the claims as a limitation. This amendment was not suitable for addressing the fundamental N issue in the case. In that sense, the amended claim set (auxiliary request 5) did “not relate to the case under appeal” and was “not taken into account” under Article 12(4) RPBA07.
Not taking into account under RPBA07 or 20/21
The procedural reasons brought forward by the board for “not taking into account” AR5 are somehow surprising.
As AR5 was filed in reply to the opponent’s statement of grounds of appeal, there is prima facie no procedural reason why it should not have been admitted.
The RPBA07 as well as the RPBA20/21 do not provide that requests are “not taken into account”. They are either admitted or not.
Strictly speaking, the wording “not taken into account” can be found in Art 13(2) RPBA20/21. This is due to the special situation that, at the third level of convergence, any submission by a party, is in principle filed, but not considered. In application of the exceptions provided for in Art 13(2) RPBA20/21, the boards eventually decide to admit or not a request or a piece of prior art. At the first or second level of convergence, requests or documents relating to prior art are admitted or not. There is no question of “not taking into account” requests. They are like at the third level of convergence admitted or not.
The present board can thus be considered having created a new set of rules according to which a request will not be discussed by a board. It is doubtful that the board is empowered to do so. Actually the board’s position boils down to introduce a condition similar to Art 13(1) RPBA20/21 in the RPBA07.
To my knowledge, it is the first time that a board introduces such a rule in the RPBA07 by which it is allowed “not to take into account” requests if it considers that the requests “do not relate to the case under appeal”.
Under the RPBA07, amendments to a party’s case are only defined in Art 13 RPBA07. There is no link to Art 12(4) RPBA07.
As AR5 was filed in reply to the appeal of the opponent it is difficult to see in how far it does not relate to the appeal procedure
Proper reason why AR5 could not be successful
As acknowledged by the board, a characteristic employed in the prior art concerned was introduced to the claims as a limitation.
There is a series of decisions according to which what is disclosed in connection with background art is not part of the invention. It infringes Art 123(2) when added to the claim. It can neither support N nor IS.
AR 5 could thus have been easily dismissed for substantive reasons and not for the rather flimsy procedural reasons defined by the board.
On the procedure
It is to be noted that the ISR established by the EPO mentioned 4 X documents, but none of the documents which led to the revocation of the patent.
The patent EP 2 545 489 bears the IPC classification symbols G06K 1/12, G06K 19/06 (2006.01), G06K 19/08, all from 2006.01. The CPC classification symbols are B42D25/29, G06K1/125, G06K19/06187.
D1=WO2004/056582 bears the IPC symbols B42D15/00, G07D7/12, (IPC1-7): B42D15/00 and the CPC symbols B42D2033/06, B42D25/29, B42D25/382.
D6=US5984191 bears the IPC symbols G06K19/06, G06K19/12, (IPC1-7): G06K19/06 and the CPC symbols G06K19/06187, G06K19/06196, G06K19/12.
The fact that 4X documents were found during the search, most probably led the search examiner to bring the search to an end.
As the patent was maintained in amended form by the OD, but the patent was eventually revoked by the board, the OD’s decision belongs to the 50+% of published decisions of the boards of 2023 in which the OD’s decision was set aside.