EP 2 098 309 B1 relates to a method for performing temper rolling on a steel strip and a method for manufacturing a high tensile-strength cold rolled steel sheet.
Brief outline of the case
In a first decision, T 1950/16, the revocation was set aside and the case remitted to the OD on the basis of then AR1. The OD decided maintenance according to AR1.
Opponent 2 appealed.
The board held that claim 1 as maintained lacked N and eventually decided maintenance according to AR3.
The board held that the objection of lack of sufficiency against AR3 was not admissibly raised.
The discussion here is whether the objection of lack of sufficiency raised against AR3 was admissibly raised or not.
The opponent’s point of view
The invention as defined in claim 1 of AR 3 was insufficiently disclosed since the patent did not disclose how a steel sheet having the claimed strength could be manufactured and how the required annealing and quenching steps were to be performed.
This objection had been raised and maintained during the opposition proceedings and should be admitted in the appeal proceedings.
The proprietor’s point of view
The objection regarding sufficiency of disclosure should not be admitted since it was filed late in the opposition proceedings and therefore had not been admissibly raised. It had not been maintained in those proceedings either. The objection was also not prima facie relevant.
The board’s decision
After the case was remitted to the OD for further prosecution, the opponent raised an objection under Art 100(b)/83 against AR 3 and 4.
The OD stated that this fresh ground of opposition could have already been raised against the patent as granted with the notice of opposition.
In its preliminary opinion, the OD indicated its intention not to admit the ground into the opposition proceedings due to a lack of prima facie relevance, but the OD did not take a final decision on this issue.
Accordingly, the present situation differs from the situation where an OD did not admit a fresh ground of opposition, and where the decision not to admit would then be reviewed by the board as to an error in the exercise of discretion under Art 12(6) RPBA.
In other words, the objection under Art 100(b)/83 is a “carry-over objection”, i.e. an objection which was raised and maintained in the opposition proceedings but which was not decided upon in those proceedings, neither with regard to its admittance nor in substance, due to the allowability of a higher ranking request.
The RPBA do not define what is meant by a submission being admissibly raised in the proceedings leading to the decision under appeal. Having said this, the ordinary meaning of the term “admissibly” indicates a reference to admittance, and the reference to the “proceedings leading to the decision under appeal” makes it clear that the circumstances of the proceedings leading to the decision under appeal are decisive.
In the board’s view, a submission was “admissibly raised […] in the proceedings leading to the decision under appeal” if that submission would have been admitted into those proceedings had a decision on its admittance been taken by the department of first instance.
The case law of the boards on reviewing the exercise of discretion in examination proceedings and opposition proceedings can provide guidance for assessing how a department of first instance would have exercised its discretion.
A board may also take account of the Guidelines for Examination when assessing how a department of first instance would have exercised its discretion.
While the Guidelines are not binding on the boards, they are to be taken into account by the departments of first instance.
Against this background, a board’s consideration of the Guidelines when assessing whether a submission was admissibly raised within the meaning of Art 12(4) RPBA does not appear to cause any issues.
The assessment of “admissibly raised” according to the principles as set out above is conceptually similar to what was stated in T 364/20, Reasons 7, according to which a board has to decide whether the opposition division “should” have admitted the submission had a decision on its admittance been required.
In the case in hand, opponent 2 did not raise the objection under Art 100(b)/83 in the opposition proceedings until after the board had remitted the case to the OD, i.e. long after the end of the opposition period under Art 99(1) and therefore not in due time within the meaning of Art 114(2). Accordingly, the OD had discretion not to admit this objection.
When determining whether a submission was admissibly raised in the proceedings leading to the decision under appeal within the meaning of Art 12(4) RPBA, the board first assesses whether the department of first instance had discretion not to admit that submission.
If the department of first instance had discretion, the board then assesses, in a second step, how a department of first instance, assuming legally correct and reasonable conduct, would have exercised this discretion. This requires the board to take on the perspective of a department of first instance.
The Guidelines, March 2022 version, state that in deciding whether to admit grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for the belated submission are to be considered, with particular emphasis being placed on prima facie relevance, see E-VI, 2.
Taking these criteria into account, the board concluded that the objection under Art 100(b)/83 – and fresh ground of opposition – was not admissibly raised in the opposition proceedings.
Since the case had already been remitted to the OD once, the procedure was at a very advanced stage when the objection was raised for the first time. There was no good reason for the belated submission either. The subject-matter of claim 1 of AR 3 corresponds to the subject-matter of claim 5 as granted. Hence, any lack of sufficiency of disclosure would have also been present for the claims as granted and therefore could and should have already been addressed within the opposition period.
Comments
The reasons for not admitting the late filed objection under Art 83 can be fully understood, and are reasonable.
It remains that the reference to the Guidelines in the board’s argumentation is nevertheless puzzling, as the Guidelines are regularly amended. The present board did however not go as far as in T 1178/23, commented in the present blog.
In T 364/20, also commented in this blog, the board held that, even requests filed before the date set under R 116(1), might not be admitted as the proprietor should file all its requests within the time limit set under R 79(1). This is going a trifle too far.
In the present case, it could be said, in accordance with T 1659/22, also commented in this blog, that the opponent had no legitimate expectation that its late filed objection under Art 83 would have been admitted in the proceedings.
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