CASELAW-EPO - reviews of EPO Boards of Appeal decisions

The patent relates to an accumulation and transfer device as well as method.

A reference to T 2604/18 recently published, has been added in the present publication.

Brief outline of the case

The opponent appealed the decision to reject the opposition.

In its communication pursuant Art 15(1) RPBA20 the board informed the parties of its provisional opinion that the contested decision should be set aside and the patent revoked.

In reply the proprietor submitted new AR 1 to 7, replacing AR 1 to 6 filed with the response to the statement of grounds of appeal.

The board decided that for the MR, claim 1 as granted was lacking N over D3=WO 2007/115085, not mentioned in the ISR.

AR 1 and 5 were also held lacking N over D3.

AR 2, 4, 6 and 7 were not admitted pursuant Art 13(2) RPBA20

AR 3 was not admitted for lack of substantiation. Claim 1 of this request consisted of claims 1+7 as granted and corresponded to claim 1 of AR 3 submitted with the reply to the statement of grounds of appeal, whereby the method claims had been deleted.

The patent was thus revoked.

Admissibility of AR 2, 4, 6 and 7

The proprietor’s position

The proprietor justified the admissibility of these AR in that the opponent had not objected to the admissibility of the AR filed with the response to the appeal. The admissibility was put in doubt for the first time with the communication of the board issued under Art 15(1) RPBA20.

According to the proprietor, it was not materially possible for it to deal with the question of the admissibility of the AR before receiving the communication of the board.

It is for this reason that the new sets of claims were not late-filed, but at the first reasonable opportunity available, after receipt of an objection which was raised not by the opponent, but, surprisingly, by the bard.

This would justify the exceptional circumstances referred to in Art 13(2) RPBA20.

To deprive the proprietor of the possibility to file AR, and thus to defend its patent, in response to the objections raised for the first time in the communication of the board would amount to a violation of the right to be heard under Art 113.

The board’s position

The board noted that the proprietor deliberately decided to replace AR 2 to 6 first filed, after having defended their admissibility, by new requests, and to add a further AR, i.e. AR 7, thus modifying, after receiving the the summons to OP, the grounds of appeal presented at the beginning of the proceedings.

According to Art 13(2) RPBA20, such an amendment to the party’s case is only to be taken into account in case of exceptional circumstances, which have to be justified with cogent reasons.

The receipt of a negative provisional opinion on AR filed together with the response to the statement of grounds of appeal, in which reference is made to the possibility of deciding on the admissibility of such requests under Art 12(6) RPBA20, cannot be considered as an exceptional circumstance, justifying an amendment to the case put forward by the proprietor.

The application of the admissibility requirements of Art 12 RPBA20 does not depend on whether the opponent has raised a corresponding objection, cf. T 1426/17, Reasons 2.2.

If admissibility is only called into question in the board’s communication, this does not mean that the proprietor can file new requests to meet the objections raised if there is no reason why these requests could not and should not have been filed earlier.

In this context, the board noted that the proprietor’s right to be heard under Art 113(1) has been respected, as the proprietor has stated its position on the facts and reasoning relevant to this decision, and the board has taken them into account in considering their relevance to the decision.

Admissibility of AR 3

The proprietor submitted that this request should be taken into consideration, as it does not constitute an amendment of the party’s case within the meaning of Art 13(1) and Art 13(2) RPBA20, as it corresponds to a request filed together with the reply to the grounds of appeal of the opponent, from which the method claims have merely been deleted.

For the opponent, this request should not be admitted as the proprietor did not fully substantiate claim 1 of the original AR 3.

The board agreed with the opponent that the submissions in support of AR 3 together with the response to the statement of grounds of appeal are incomplete.

The board considered that, due to the lack of substantiation, the submissions in support of the “original” AR 3 are incompatible with the requirement of Article 12(3) RPBA20.

Referral to the EBA

Summary of the questions

The proprietor requested, by interlocutory decision, to refer some questions to the EBA. Those questions revolve around the admissibility of requests in which claims are deleted or alternatives within claims have been deleted.

1. The proprietor listed a series of decisions pro admission
2. Without considering the deletion as an amendment to a party’s case

T3020/19, T995/18, T 2638/16, T 884/18, T 914/18, T 1151/18 and T 1857/19.

• Considering the deletion as an amendment to a party’s case but exercising the discretion so as to admit new requests:

T1480/16, T 713/14, T 1224/15, T 2222/15, T 1597/16, T 1439/16, T 1569/17, T 853/17, T 306/18

1. The proprietor listed decisions considering the deletion as an amendment to a party’s case but exercising the discretion so as not to admit new requests:

T482/19 but only since non-amended (and non-deleted) claims were not discussed before and were narrower so that a “new discussion” would have arisen;

T 2222/15, similar reasons as in T482/19, namely filed only 1 week prior to oral hearing, no supporting reasons so no justification.

The board’s position

The Board rejected the proprietor’s request for a referral.

The board held that in the present case the questions formulated by the proprietor were of purely theoretical importance for the present proceedings, since the board has reached a decision on all the AR without having to decide whether the deletion of claims from a request already in the appeal proceedings constitutes an amendment of the proprietor’s case and whether this deletion affects the application of Art 13(1) and 13(2) RPBA20.

Comments

Admissibility of AR 2, 4, 6 and 7

Before the RPBA as we know them were into force, the boards considered that a communication of the board should not be taken as invitation to file more submissions, especially more requests, e.g. T 1459/11 or T  475/14 for requests, T 226/02 for experimental data. Even summons from an OD do not necessarily justify the filing of new evidence, cf. T 1543/12.

It is to be noted that in T 450/02, the board admitted requests consisting of a combination of granted claims as the opponent did not contest their admissibility. But this was before the RPBA20.

It is to be noted that when a petition for review is filed and the board decided not to admit late-filed requests, the EBA will reject a petition for review as clearly not allowable if the party has been heard about the reasons of non-admissibility, cf. R 16/09, Reasons 2.2.8 to 2.2.13.

Admissibility of AR 3

In view of the lack of substantiation for claim 1 of AR 3 consisting of a combination of claims 1+7 as granted, the amendment was not merely consisting in the deletion of some claims.

The board could thus consider rightly that AR3 was not admissible.

In principle, a combination of granted claims is admissible if the Board of Appeal admits late filed evidence/documents/objections, cf. T 418/17 or T 1174/18.

In T 1453/16 T 3027/18 or T 1991/12 requests consisting of a combination of granted claims were not admitted as filed too late.

Provided that a combination of granted claims is not offending Art 123(2), a corresponding request is in principle admissible in before the OD. The opponent cannot be taken by surprise by such a combination of granted claims. This was even the case in appeal in T 576/07. Again here it was before the RPBA20.

Referral to the EBA

That boards are reluctant to refer questions to the EBA is nothing new.

The lists submitted by the proprietor can be completed

1. Claims sets in which the deletion of claims is not considered as an amendment to a party’s case

T 3020/19, T995/18, T 2638/16, T 884/18, T 914/18, T 1151/18 and T 1857/19.

To this list can be added

T 1480/16, T 2243/18, T 1792/19, T 1151/18, T 1857/19, T 2201/19

2. Claims sets in which the deletion of claims is considered as an amendment to a party’s case but were admitted

T1480/16, T 713/14, T 1224/15, T 2222/15, T 1597/16, T 1439/16, T 1569/17, T 853/17, T 2785/17, T 306/18, T 732/21, T 424/ 21,

To this list can be added

T 2080/18, T 2091/18, T 2604/18, T 2295/19, T 1597/16, T 1439/16, T 1224/15, T 908/18, T 682/16, T 168/16 or T 2261/15 (partly)

3. Claims sets in which the deletion of claims is considered or not as an amendment to a party’s case but were not admitted

T482/19, T 2222/15

To this list can be added

T 1533/15, T 1259/17, T 317/20 and T 2261/15 (partly)

In the present case it is possible to agree with the board that the board could reply without dealing with the deletion of claims, it remains that we are clearly in presence of distinct lines of case law.

1. Deleting claims is not an amendment of a party’s case
2. Deleting claims represents an amendment to a party’s case but the requests are admitted if they help procedural economy
3. Claims sets in which the deletion of claims is considered as an amendment to a party’s case but were not admitted

In T 2604/18, recently published, the board, although it eventually concluded that the deletion of claims is considered as an amendment to a party’s case under Art 13(2) RPBA20, introduced a further notion: the new MR, based on the mere deletion of claims 5 to 7 of former “AR I”, can thus be considered not to change the factual and legal framework of the proprietor’s appeal case.

For the opponent in T 2604/18, considerations of procedural economy or fairness, taken into account by the Boards in T 2080/18 or T 2295/19, could not justify exceptional circumstances, since such principles always applied.

A decision of the EBA in this matter would thus be welcomed.

As a general rule, if deletion of claims is improving procedural economy, corresponding requests should be admitted. It appears thus prima facie less relevant whether deletion of claims represents an amendment to a party’s case or not. Strictly speaking it represents an amendment to a party’s case. A combination of granted claims could indeed represent an amendment to a party’s case.

If a board does not admit requests with deleted claims, the board should thus justify why it exercised its discretion not to admit them, i.e. why those requests did not improve procedural economy.

In any case, there are enough possibilities not to admit late-filed requests, but those improving procedural economy should be saved as much as possible provided they do not give raise to further objections.

https://www.epo.org/law-practice/case-law-appeals/recent/t200640fu1.htm