CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 709/22 – A different, but correct, way to admit and discuss “carry-over” requests

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Patent EP 3 027 900 B1 relates to temporary maintenance of wind turbine blades.

Brief outline of the case

The OD decided to maintain the patent according to AR5. The opponent appealed.

The board considered that claim1 as maintained lacked N and AR 6-7 were lacking IS.

The board decided maintenance according to AR8.

The position of the board about carry-over AR6-8 is interesting.

The board’s decision

Contrary to the OD the board considered that claim 1 of AR5 lacked N.  over D3= EP 2 957 538.

As the OD maintained the patent amended in accordance with the higher ranked AR5, the board noted that the OD did not consider AR6-8 in its decision.

Nor did the opponent comment on these requests in written proceedings.

In the light of this, the board found it appropriate to examine N/IS of these requests within the context of its finding that D3 takes away N of the higher ranking request and the factual and evidentiary framework set out in the opposition proceedings for their corresponding features.

The parties agreed with this approach. Opponent 2 formulated inventive step arguments for all the requests starting from D3 combined with D1.

The board considered AR6-7 lacking IS over D3+D1, but not AR8.

The patent was thus maintained according to AR8.


Admissibility and examination of carry-over requests

As the patent was maintained according to AR5, the OD did not examine and take a decision on AR6-8. AR 6-8 can thus be considered as “carry-over” requests.

The present board did not think twice and, in my opinion rightly, examined AR6-8 without making difficulties about their admissibility or their substantiation by the proprietor. It also considered the objections raised by the opponent against those AR.

Diverging case law

The boards have had very different approaches when it comes to carry-over requests.

In T 921/21, commented on this blog, the bord examined ex-officio all AR filed in opposition after it had decided that the MR was not allowable. This decision corresponds to the approach taken by the present board. -it does however represent an exception.

In T 246/22, commented on this blog, the board considered the carry-over requests as amendments pursuant to Art 12(4) RPBA and did not admit them under Art 12(6) RPBA.

In T 1128/21, commented on this blog, after rejection of the opposition, the board held that claim 1 as granted infringed Art 123(2). Carry-over requests AR1-3 were not admitted under Art 12(3 and 5) RPBA for lack of substantiation.

In T 664/20, commented on this blog, the OD maintained the patent according to AR2. AR3-15 were left and are thus carry-over requests. The board held that the opponent should have objected and filed the corresponding evidence anew for all the carry over requests, even if the opponent could not know which AR would be kept by the proprietor.

In T 2872/19, commented on this blog, taken under the RPBA07, after rejection of the opposition, the board decided that claim 1 as granted lacked IS, and did not admit carry-over AR for lack of substantiation.

In T 1731/19, commented on this blog, taken under the RPBA07, the opposition was rejected but the board decided that claim 1 as granted lacked N. Carry-over AR1-3 were not admitted for lack of substantiation.

The last two decisions, although taken under the RPBA07, would not lead to a different conclusion under Art 12(3+5) RPBA20.

Something has to change

When looking at these various decisions, which are not even coherent as some refer to Art 12(4+6) RPBA and other to Art 12(3+5) RPBA when dealing with carry over requests, one cannot refrain to think that some boards will take any pretext to squeeze out carry-over requests.

This is not fair for the parties and does not correspond to a correct administration of justice. The parties cannot be blamed in appeal if requests were not dealt with, for pertinent reasons, by an OD.

Carry-over requests, which have not been dealt with by an OD in view of a decision on higher ranking requests, should be admitted without ifs and buts in appeal proceedings.

On the procedure.

Claim 1 as granted infringed Art 123(2). The same applied to AR1-4. In view of this defect, the patent should not have been granted in the form it was.

The board held that claim 1 as maintained lacked N over D3=EP 2 957 538 which was not cited on the ISR established by the EPO. As AR5 was more limited than as granted, this is a second reason for not having granted the patent.

AR6-7 were lacking IS over D3+D1=DE 102010011365, which was the first document cited on the ISR (Classification X,A).

The patent is classified in F03D 13/00 and F03D 1/00, whereby the search was carried out F03D.

D3=EP 2 957 538 is classified inter alia in F01D 1/00 and the SESR extended to F03D.

It is thus difficult to explain why D3 was not found.

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