EP 3 466 903 B9 relates to a batch for producing a refractory product, a method for the manufacture of a refractory product, a refractory product and the use of synthetic raw material.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted lacked IS.
AR0, filed after the communication pursuant to Art 15(1) was not admitted under Art 13(2) RPBA.
AR1-6, already filed in opposition, were not admitted under Art 12(3) and (5) RPBA.
We will look at AR1-6.
The opponent’s point of view on AR1-6
In the proceedings before the OD, the proprietor merely stated a basis for AR 1-6, but did not state which objections the amendments concerned and why they were overcome.
Although AR1-6 were submitted with the response to the appeal, it did not contain any comments on them. Only in a later letter was,for the first time, anything said about the AR. AR1-6 were therefore not admissible.
The proprietor’s point of view on AR1-6
The proprietor acknowledged that the substantiation of AR1-6 in the reply to the appeal was very brief.
Since the opposition was rejected, the OD had not commented on the AR. In view of the extremely extensive but unstructured grounds of appeal, AR 1-6 should nevertheless be admitted.
The board’s decision
AR1-6 were submitted with the response to the appeal. However, the proprietor has not explained the proposed amendments in any way.
The board noted that the requirement of substantiation under Art 12(3) RPBA also applies if the opposition was rejected in the first instance proceedings and the patent proprietor – as here – is only involved in the appeal proceedings as a respondent.
The fact that the requests have already been admissibly filed at first instance does not release a party from its obligation to substantiate the requests, cf. T 1128/21, Reasons 2.3.2.
In its response to the appeal, the proprietor did not specify which objections were to be overcome by the amendments, although the opponent in its appeal based its objections on the all the grounds for opposition under Art 100. The proprietor only responded to the a further reply of the opponent to the response to the appeal by a later letter.
Due to the insufficient substantiation in the response to the appeal, the admission of AR1-6 pursuant to Art 12(3) and (5) RPBA 2020 is at the discretion of the board.
In the absence of any substantiation, it has to be checked whether the amendments and the argumentation are self-explanatory.
In the present case, the amendments made by the proprietor are not self-explanatory. It is not readily apparent where the support for the amendments in the original application lies, nor which objections the amendments concern and why they were overcome.
This is also clear from the subsequently submitted explanations in the later letter.
Although it deals with the amendments over 5 pages, it still regularly fails to state the support of the amendment in the application as originally filed, as well as a reference to the exact objection to which the amendment relates and why the objection was overcome.
It is not for the board or the opponent to speculate on the intentions and support underlying the proprietor’s submissions or to search the first instance submissions for any additional explanations.
AR1-6 were thus not admitted in appeal.
Comments
I have often be rather critical with the way boards dealt with carry over requests, but in the present case, their non-admissibility is totally justified.
It is a euphemism when the proprietor says that the substantiation of AR1-6 in the reply to the appeal was very brief.
As board can take a different position than that of an OD, it is important for a proprietor to file AR before the OD. Filing AR and merely indicating the support in the original disclosure is not sufficient. To be admissible before the OD, the AR have, in principle, to be substantiated with respect of the objections raised by the opponent.
Contrary to what the board said, AR1-6, were thus not admissibly raised in opposition. To be admissibly raised they have to be filed within the period set according to R 116(1), but also properly substantiated. In the absence of any substantiation, AR1-6 would probably not have been admitted by the OD.
In the present case, AR1-6 can also be clearly considered as amendments in the meaning of Art 12(4) RPBA.
By the way, T 1128/21 has been commented in this blog.
On the procedure
Claim 1 as granted lacked IS over D5=WO 2007/096246 and D2=DE 32 08 956 C2.
As those documents were classified in the IPC class in which the European search was carried out, it is surprising that they were not found during said search. The ESR mentioned one X and three A documents, but manifestly not the most relevant.
In view of the outcome of the appeal, this patent should never have been granted.
Comments
Leave a comment