Brief outline of the procedure
Both opponents appealed the OD’s decision to maintain the patent in amended form according to a MR filed during OP.
Independent claim 1 as maintained is the same as granted claim 1.
Contrary to the OD, the BA came to the conclusion that claim1 as granted infringes Art 123(2).
Both proprietors considered that an objection by Opponent 1 under Art 123(2) about an intermediate generalisation was only raised in appeal and was thus not admissible. It should have been raised in first instance.
Art 12(4) RPBA20 provides that:
Any part of a party’s appeal case which does not meet the requirements of Art 12(2) RPBA20 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal.
The board noted that the OD had not taken a decision, so that Art 12(2) RPBA20 did not apply directly.
Appellant1/opponent 1 was however able to show that this part of the line of attack in its statement of grounds of appeal had already been “admissibly raised” in the opposition proceedings, namely by Opponent 2 in its statement of opposition.
For the board this objection was thus validly raised during opposition and was part of the appeal proceedings and could not be considered as an amendment under Art 12(4) RPBA20.
The Board could not infer any restriction from Art 12(4) RPBA20 that each party may only refer in the appeal to those matters of the preliminary proceedings which it itself admissibly introduced there. Therefore, it appears legitimate to refer as appellant also to lines of attack which had been introduced into the opposition proceedings by other opponents.
Outcome of the procedure
Claim 1 of the MR=as granted was held to infringe Art 123(2).
AR1 filed during the OP was not admitted under Art 13(2) RPBA20.
AR 2-4 presented the same defect than the MR
The patent was thus revoked.
Comments
The common pot in case of a plurality of opponents
In case of a plurality of opponents, R 76(2,c) applies separately to each opposition.
Each opposition has to be considered on its own and the admissibility as a whole has to be decided for each opposition separately and the admissibility of each ground of opposition has to be decided for each opposition separately.
Each opposition and each ground deemed admissible is then part of the procedure and can be used by all opponents.
Grounds/facts/evidence of opponent 1 can be brought forward by opponent 2 and vice versa.
The legal and factual framework under R 76(2,c) of the plurality of oppositions is no more than the sum of the legal and factual framework of each of the oppositions.
There is thus a “common pot” containing two single pots in which the various opponents can draw at will.
If one opponent withdraws its opposition, provided the opposition was admissible, the facts/evidence/arguments grounds filed by said opponent will remain in the procedure and can be used by the other opponent,
However, any combination of documents found in the separate oppositions is late filed and has to undergo an admissibility examination. Such a combination of documents was not present in the sum of the legal and factual frameworks of both oppositions.
The “common pot” in appeal
The present decision makes clear that the “common pot” also applies in appeal, even if the OD has not decided on a given objection. Opponent 1 can bring an objection raised in opposition procedure in appeal provided it has not been abandoned by opponent 2 and vice-versa.
Lines of attack that were introduced into the opposition proceedings by one opponent can be used by another opponent. If this happens, there is no amendment of the submissions requiring admissibility in the meaning of Art 12(4) RPBA20.
This conclusion appears logical, but it is good to see it confirmed by a boards. .
https://www.epo.org/law-practice/case-law-appeals/recent/t200920du1.html
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