CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 2 974 212 B1 relates to filtering network data transfers.

Brief outline of the case

A notice of opposition was filed on 23.06.2021 by Cisco Systems, Inc.

A notice of intervention was filed on 22.12.2022 by Palo Alto Networks, Inc.

First OP were held on 07.07.2022. Neither the MR nor AR 1-5 were found to be allowable. Only AR6 filed during said OP was left to be discussed.

In its decision issued on 15.03.2024, following the second OP, the OD decided that the intervention was admissible but revoked the patent as none of the requests filed during the second OP, i.e. a new MR and a new AR1, were admitted in the procedure.  

The board confirmed the non-admissibility of these requests and the revocation.

The case is interesting as it relates to the applicability of the criteria of “late-filed” and “lack of convergence” to admittance decisions in opposition proceedings.

The proprietor’s point of view

The proprietor submitted that the requests at stake could not be considered “late-filed” because they were filed to account for an objection under Art 123(2) newly raised during the second OP by the OD after it departed from its preliminary opinion on this topic as regards “AR9a“, referring to the EPO Guidelines E-VI, 2.2.2 and to the Case Law of the Boards of Appeal, V-A, 4.3.6; in particular to T 683/19, T 3097/19, T 868/20 and T 847/20.

Further, it was the “late-filed” aspect which motivated the OD to consider – in addition – the “convergence” of the new MR. However, the same alleged lack of convergence of the MR with AR5-6 had been objected already against AR9-9a. Yet, the OD did not raise objections.

For the proprietor, the intervention filed by opponent 2 – introducing new objections and evidence – had reset the “convergence” requirement as if a new opposition had been filed.

Since the requests were thus not “late-filed”, there was no reason to assess the “convergence” aspect, referring to the Guidelines, H-III, 3.3.2.2 . As the OD had already come to a positive preliminary finding on compliance with Art 123(2) and 56 for “AR9a”, there were no negative implications as to the aspect of procedural economy in admitting “AR 9a1″=the new MR, or “AR9b”=new AR1, into the opposition proceedings.

Instead, the OD should have used the criterion of “prima facie allowability“. In summary, the OD used the wrong criterion at the wrong time.

The board’s decision

The board did not agree. For the board, there were essentially three questions to be answered:

• Were the respective claim requests “late-filed“, i.e. had the OD the discretion to disregard those requests at all?
• If yes, was the use of the criterion of “lack of convergence” as regards those requests the right or wrong criterion under the particular circumstances?
• If yes, did the OD correctly use the “lack of convergence criterion” in the present case?

Answer to question 1

The MRn and AR1 were not filed within the period set out in the OD’s invitation pursuant to R 79(1) sent after opponent 2’s notice of intervention. Consequently, the intervention alone cannot justify their admittance.

Rather, the OD had the discretion pursuant to Art 123(1) in conjunction with R 81(3), 79(1) and/or 116(2) not to admit them, cf. e.g. R 6/19, Reasons 6 and 7; T 256/19, Reasons 4.7.

This discretion exists independently of the provisions of R 116 and of whether the OD deviated from its provisional opinion as set out in the annex to the summons to the first-instance OP, cf. e.g. T 966/17, Catchword 2.

A positive preliminary opinion on AR9a – already admitted into the proceedings at the OD’s discretion – cannot guarantee per se the admittance of the further filing of requests.

Nor does such a positive opinion “reset” the application of the “convergence criterion” which the OD relied upon when taking its discretionary decision on admittance in the opposition proceedings.

Also the EPO Guidelines do not state that an OD’s deviation from its preliminary opinion necessarily constitutes a “change of the subject of the proceedings” within the meaning of R 116(1), cf. E-VI, 2.2.2.

Answer to question 2

The “convergence criterion” as regards requests is definitely a well-established criterion which can legitimately be used by a first-instance department when exercising its discretion as to admittance of late-filed requests, and this even before the expiry of the date set under R 116(1) EPC; see e.g. T 364/20, Reasons 7.2.10; and Guidelines E-VI, 2.2.3.

The board agreed with the OD and with the opponents that the present MR – in the lineage of AR9-9a – is not convergent with AR5-6 and that the OD had indeed the discretion to use this criterion to not admit “AR9a1″= the present MR, into the opposition proceedings.

Answer to question 3

It is true that the “convergence criterion” represents only an “indicator” that procedural economy may be affected and that whether this is actually the case depends on the circumstances of a particular case, which, therefore, must be considered and balanced, see T 3097/19, Reasons 4.2.

However, in the present case, the OD indicated precisely in view of which higher-ranking claim request the then “AR9a1” did not converge and why this request went in a different direction. Hence, the implication on procedural economy were therefore considered and balanced. As a consequence, the OD did not use the “convergence criterion” in an unreasonable or erroneous way when disregarding the present MR.

Comments

It is well established that the criterion of “lack of convergence” applies primarily to late-filed requests.

The present decision shows clearly that an intervention does not reset the “convergence” requirement as if a new opposition had been filed.

Be it for an opposition or a subsequent intervention, the proprietor is well inspired to use the possibility to file requests in reply to an opposition or intervention within the time limit under R 79(1). This is a point which comes up more and more in recent board’s decisions.

Depending on how the procedure progresses, the proprietor is not allowed to ignore the bulk of objections raised by the opponents and use a piecemeal approach, only reacting to each objection confirmed by the OD by re-shuffling and amending the requests.

It is manifest as the proprietor having raised an action for infringement, it was of utmost importance for it to have at least one of its requests admitted and found allowable.  Without a valid patent, there is no infringement.

That the OD changed its mind during OP justifies in general the filing of a further request, but the filing of this request is in any case late and it has to be checked whether it is convergent with previous requests.

In T 1617/08, Reasons 20, it was held that the purpose of OP is to give the parties an opportunity to argue their case but not to give a proprietor the opportunity to repeatedly modify its requests until an acceptable set of claims is found.

T 691/24