The patent relates to an adhesive composition based on ethylene copolymers, useful for extrusion coating and extrusion lamination on a variety of supports.
Brief outline of the procedure
In a first decision, T 1143/17, after revocation due to infringement of Art 123(2), the corresponding decision of the OD was set aside and the file remitted to the OD for further prosecution.
Following remittal, the patent was maintained according AR2 filed during the OP before the OD.
Both proprietor and opponent appealed.
Example 3 of D6=GB-A-991 568 was N destroying for claim 1 of the MR and AR 1 and 2. The same applied to claim 1 of AR 4 and 5.
Claim 1 of AR3 and AR6 was infringing Art 123(3).
AR 3A was lacking IS over D1=WO-A-91/02760.
Eventually, the patent was maintained according to AR 6 A, and the file remitted to the OD, inter alia for adaptation of the description.
The case is interesting in that it deals with some conditions under which a late filed piece of prior art is to be admitted in appeal.
D24=Igor N. Leclere et al., “Keys to good Adhesion in Coextrusion Coating: Interactions between Tie Resin Nature and Pre-treatments”, Polymers, Laminations, & Coatings Conference, 1997, pages 203 à 209, figures 1 à 3, was filed after the filing of the grounds of appeal by the opponent.
According to the opponent, D 24 was found during an additional search made necessary by the filing in the appeal proceedings of AR 3, 6 to 8, 10 and 13 to 15 which included amendments based on the description in order to remedy objections to N in the light of the documents cited up to that point. D24 was similar to the documents already cited in the proceedings and confirmed the lack of N of the claimed subject matter.
This new document clearly disclosed that the adhesive compositions which were the subject of the contested patent could be used in an extrusion-coating process and was therefore clearly destructive of N for the main and AR 1 to 3, 9 and 10.
The first opportunity to file documents resulting from an additional search was therefore during the appeal proceedings.
As the proprietor had already amended his sets of claims on numerous occasions, including during a first appeal, it was not foreseeable that he would re-file AR 3 to 15 during the appeal proceedings and therefore initiate an additional search before filing these requests.
Non-admissibility of a late filed piece of prior art -The board’s decision
Under Article 12(3) RPBA, the statement of grounds of appeal must contain all the arguments put forward by an appellant (opponent) in appeal.
Any amendment filed after the filing of an appeal and the rply to it is only admitted at the discretion of the board, cf. Art 13(1) RPBA.
AR 3 to 15 had already been filed with the OD.
The opponent should therefore have expected that the proprietor of the patent would re-file AR 3 to 15 in the appeal proceedings.
Consequently, the opponent should have addressed these requests in its statement of grounds of appeal and provided D24 at the latest at that stage.
Consequently, the Board did not admit D24 into the appeal proceedings, cf. Art 13(1) and 12(3) RPBA.
The board reminded that the statement of grounds of appeal of an appellant, here the opponent, must include all the grounds of appeal covering all the requests pending before the OD, including those not considered in the contested decision.
Otherwise, the opponent runs the risk that evidence filed after the statement of grounds of appeal and relating to AR pending before the OD and filed in response to the statement of grounds of appeal by the proprietor of the patent will be excluded from the proceedings.
That parties have to be pro-active in first instance is an established fact under the valid RPBA.
The patent was maintained according AR2 . There was no reason for the OD to take a decision on AR3-15. Requesting that an opponent files, when entering appeal, all objections and the corresponding evidence and argumentation for requests which are not part of the decision of the OD simply goes too far.
When entering appeal, the proprietor had only filed the MR and AR 1 and 2 valid before the OD. The proprietor only filed AR 3-15 when he realised that the opponent had also appealed.
The opponent cannot guess when he files an appeal, at the same time than the proprietor files an appeal, which requests will be pursued by the proprietor.
If AR3-15 would have been discussed before the OD, then the opponent would have been allowed to file D24 as some of those contained features from the description.
Boards might be cleverer afterwards, when both appeals are on the table, but it cannot be expected from an opponent to have a crystal ball.
In view of both the appeals, the decision to be reviewed under Art 12(2) RPBA was that relating to the MR, AR 1 and AR2 and not AR 3-15. Claiming that the opponent should have dealt with AR 3-15 is not reasonable.
If Art 13(1) RPBA was applicable to the opponent, it was equally applicable to the proprietor. By behaving as it did, the board grossly advantaged the proprietor.
The present decision could induce proprietors to only file when entering appeal some of the requests filed before the OD and wait until the opponent has appealed to file the rest of the AR filed before the OD.
It is not sure that this corresponds to the letter or to the spirit of the RPBA.