The patent results from a divisional application of EP1717431 / EP 2 560 730.
The patent relates to implantable medical devices like ear implants, and specifically, to magnetic elements in such devices that allow for magnetic resonance imaging.
Brief outline of the case
The OD decided maintenance according a new MR filed in opposition.
The opponent appealed this decision.
OP before the BA were scheduled on 28.09.22 with summons issued on 13.04.22. .
During OP the proprietor withdrew all previous requests and requested maintenance in amended form according AR 3 filed on 03.08.22. AR3 was thus filed after issuance of the summons.
The opponent requested that AR 3 is not admitted in the proceedings and that the patent be revoked.
The board decided that AR3 was admissible and maintained the patent on the basis of AR 3.
The admissibility of AR 3
Art 13(1) and (2) RPBA20
As AR 3 was filed after the summons to OP, its admissibility is subject to the provisions of Art 13(2) RPBA20.
Art 13(2) RPBA20 requires, for admission, that exceptional circumstances be present and that these be justified by cogent reasons by the party concerned.
The opponent argued that the AR 3 should not be admitted into the appeal proceedings because no exceptional circumstances prompted such a late amendment to the proprietor’s case and because the requirement of prima facie allowability was not met.
The Board noted that the wording of Art 13(2) RPBA20 does not require that the amendment be triggered by exceptional circumstances, but rather that the circumstances themselves, maybe as a result of the submission, be considered exceptional. The board referred to T 2920/18, Reasons 3.13, and T 2295/19, Reasons 3.4.12.
As correctly argued by the proprietor by reference to T172/17, Reasons 5.4 and T1535/17 Reasons 1.6, the explanatory remarks on Art 13(2) RPBA20 presented in document CA 3/19 (EPO OJ Suppl. 1/2020) state that, when exercising its discretion under Article 13(2) RPBA, the board may also rely on criteria set out on Art 13(1) RPBA20, which itself refers to Art 12(4) to (6) RPBA20.
In the present case, the Board noted that the amendments introduced with AR 3 were straightforward and prima facie overcome all of the opponent’s objections that the board endorsed in its preliminary opinion, as well as a few other on which the board expressed some doubts or which the board did not even endorse.
In fact, the amendments introduce several of the limitations that were argued by the opponent to be missing in the context the objections under Article 100(b) EPC. The limitations to the shape of the implantable magnet additionally overcome the objections under Art 100(c), as well as some of those under Art 100 (a).
The board further noted that the limitations to the shape of the implantable magnet were among those defined in claim 3 of the granted patent, against which objections under Art 100(a) were raised already in the notice of opposition. Those objections were also elaborated upon during these appeal proceedings, after the reply to the statement of grounds of appeal, and considered by the board in its preliminary opinion, even if seen as non-persuasive.
Hence, consideration of this request is neither detrimental to procedural economy, nor does it place an undue additional burden on either the opponent or the board.
All these aspects having been considered, the circumstances are regarded as exceptional and as weighing in favour of the admission of AR 3 under Art 13(2) RPBA20.
The opponent also argued that the arbitrary deletion of the dependent claims was evidently not reactive to a ground of opposition and that this would contravene the requirements of R 80.
However, as noted by the proprietor, the deletion of the dependent claims can be seen as preventing new objections under Art 123(2) from being raised. The amendments are therefore occasioned by a ground of opposition. Whether or not the opponent raised the ground themselves is irrelevant, as established in the jurisprudence. R 80 is, hence, complied with.
Purpose of the RPBA20
At last, the board notes that the purpose of the rules of procedure before the boards is not, in itself, the refusal to consider late requests, but rather the defence of the parties’ rights to a fair hearing within a reasonable time, and that, in the present case, consideration of this particular request does not impair these basic rights of either party. The board mentioned T 339/19, Reasons 1.3.4 and 1.5; T 2920/18 Reasons 3.14; T 2295/19, Reasons 3.4.13.
Art 13 RPBA20
In this decision, the board confirms the line of case law according to which Art 13(2) and 13(1) can be used together although they belong to two distinct levels of convergence.
The board made clear that Art 13(2) RPBA20 does not require that the amendment be triggered by exceptional circumstances, but rather that the circumstances themselves are to be considered exceptional and justified by cogent reasons.
In T 824/18 (examination) or T 1786/16 (opposition) it was held that, even if a request might be admissible under Art 13(2) RPBA20, it might be deemed not admissible under Art 13(1) RPBA if it does not overcome the objections previously raised or gives raise to further objections.
In other words, the possibility to see a request admitted under Art 13(2) RPBA20 is a kind of one shot opportunity. If all objections are overcome and the request does not give raise to further objections, cf. Art 13(1) RPBA20, then an application can be saved or the patent maintained in amended form. In the contrary, further requests will most probably not be admitted. The gun cannot be reloaded.
It is also manifest that the handling of the requests showed a profound knowledge of the file and its history. Staying with just one late-filed request can be risky as there is no guarantee that this sole late-filed request will be admitted and save the application or the patent.
Purpose of the RPBA20
It is to be welcomed that the board made clear that the purpose of the RPBA is not, in itself, the refusal to consider late requests, but rather the defence of the parties’ rights to a fair hearing within a reasonable time without impairing the basic rights of either party.
This is comforting in the light of some very formal decisions in which it appears that the board wanted manifestly to get rid of the file as quickly as possible.
As there no instance verifying whether the boards have correctly exercised their large discretion under the RPBA20, the boards can more or less do what they want and easily achieve their production targets, by simply not admitting requests.
A petition for review is of little or no help as in such a case the EBA, acting under Art 112a, simply checks whether the party has been heard on the admissibility of the request. If this is the case, the EBA will not go any further and the petition will be deemed clearly not allowable, should it at all have been considered not clearly inadmissible.
It is manifest that adding dependent claims does not change the subject-matter of the independent claim so that the dependent claims are not filed in reply to a ground of opposition. Hence they are not admissible under R 80.
If claims are deleted in reply to objections submitted by the opponent and/or by the board, they are filed in reply to a ground of opposition. Otherwise, they are likewise not filed in reply to a ground of opposition and hence not admissible under R 80.
It is interesting to note that the board did not start discussing whether the deletion of claims represented an amendment or not. It decided in a very pragmatic way that objections were overcome. This was enough for the new set of claims to be admitted and allow maintenance in amended form.
2 replies on “T 732/21 – On the correct application of Art 13(2) RPBA20 and of R 80”
Dear Mr. Thomas, you write that ” If claims are deleted in reply to objections submitted by the opponent and/or by the board, they are filed in reply to a ground of opposition. ” . However, as the Boad notes: ” Whether or not the opponent raised the ground themselves is irrelevant, as established in the jurisprudence. Rule 80 EPC is, hence, complied with.”
I fully agree with you. I should have been more precise as R80 allows amendments if they are in reply to grounds of opposition, even if those were not raised by the opponent or the board.
I have never come accros amendments which were not provoked by a ground of opposition which was not raised, either by the opponent or by a board.
If you know of such a decision, or a file in which this happened, I would be happy if you could mention it in a reply.