The patent relates to a multi-phase pre-portioned cleaning agent.
Brief outline of the procedure
In opposition, the proprietor requested maintenance in amended form on the basis of a new MR, which was found lacking N over D1=WO2006/086109, not mentioned in the ISR established by the EPO
Following the filing of AR1, the opponent filed a series of documents D5-D9 which were admitted in the procedure by the OD.
AR1 was found lacking IS over D9=US 8 283 300, also not mentioned in the ISR established by the EPO.
Other AR were also lacking IS over D9 or D9 + D5=WO 2009/112992, as well not mentioned in the ISR established by the EPO.
The patent was thus revoked, and the proprietor appealed.
As MR in appeal, the proprietor requested maintenance as granted. As this request was not subject to a decision of the OD, it was not admitted under Art 12(4+6) RPBA21.
AR1ap was admitted under Art 12(6) RPBA21 but lacked IS over D9=US 8 283 300.
AR2ap is based on AR 11op which had not been admitted in the procedure by the OD, and further restricts it.
The patent was maintained on the basis of AR2ap and the case remitted to the OD for adaptation of the description.
The case is interesting for the reasons having led to the admission of AR2ap.
By not admitting AR11op, the OD did not correctly exercise its discretion.
The reasons for admitting the late filed documents
The opponent filed D5-D9 on 23.12.2020, the last day of the period for filing new evidence under R 116(1).
Those documents were filed in reply of the filing of the proprietor of AR1.
The reasons for not admitting AR 5-12
The opponent’s corresponding submission was served on the patent proprietor on 19.01.2021, to which the proprietor responded by filing a brief on 26.02.2021 and submitting AR 5-12.
In the reasons for its discretionary decision, the OD stated that requests filed in response to facts submitted late are “in principle” to be admitted into the proceedings, but that this does not apply if the requests were filed “so” late, as in the present proceedings.
Thus, the late filing of the requests played a decisive role in the OD’s exercise of its discretion. Further, the OD stated in this context that there were reasons to believe that the patent proprietor had taken note of the opponent’s submission not only when it was transmitted by the Office on 20.01.2021, but already before Christmas.
In this context, the opponent has pointed out that the other criteria that the OD considered in its discretion were the correct ones, such as the lack of prima facie relevance, the lack of substantiation of the requests and their lack of convergence.
The board’s position
Rule 116(1), states that amended documents need not be taken into account after the date determined by the EPO, unless they are to be admitted because of a change in the facts underlying the proceedings.
The latter applies here, because the filing or later admission of documents D5-D9 constituted a change in the facts underlying the proceedings.
The board reviewed the case law and noted that there are different approaches to the assessment of requests, filed under R 116(1), fourth sentence and (2) in response to an amended submission.
According to one view, a new request prompted by new submissions is deemed to be in due time at least if it was filed at the earliest possible point in the proceedings, cf. CLBA, 10th edition, IV. C.4.3 as well as T 754/16, Reasons 1.3.1.
According to T 487/13, Reasons 6.2; and T 688/16, Reasons 2, the discretion was conditional on notification of the reasons preventing maintenance of the patent. According to this legal opinion, the OD would not have had the discretion not to admit the requests.
According to another view, it should always be possible not to admit new arguments if a time limit has not been observed, cf. Art 114(2). This should apply in particular to sets of claims filed after the time limit set in R 116(1).
In T 1776/18, Reasons 4.6, the assessment is not limited to examining whether the filing was made at the earliest possible time, but substantive evaluative criteria, such as prima facie allowability, may also be taken into account.
Even assuming the latter legal opinion, the OD had to base its discretion on the correct criteria. In the present case, however, an inadmissible criterion was at least taken into account. It is therefore irrelevant if other criteria were correctly applied.
The inadmissible criterion
For the OD there were reasons to believe that the proprietor had taken note of the opponent’s submission not only when it was transmitted by the Office on 20.01.2021, but already before Christmas.
For the board this constitutes an inadmissible discretionary criterion, because it is speculative and was disputed by the appellant. Rather, what is decisive is when the submission was served on the proprietor.
However, service was only effected four weeks after receipt of documents D5 to D9.
When it would have been possible to inspect them in the register is irrelevant and, moreover, not proven. Thus, the OD reached its conclusion on the basis of an inadmissible criterion.
A deviation from the normally applicable principle of admitting requests filed in response to facts filed late by the opposing party was not justified.
Thus, the OD’s exercise of discretion, inter alia, on the former AR 11, which is the basis for the present auxiliary request 2, was erroneous.
The MR of the proprietor in appeal
The MR of the proprietor in appeal to revert to the claims as granted was manifestly too late and could not be admitted under Art 12(4+6) RPBA 21. If claims as granted should be subject to appeal, the minimum is not to give those up before the OD.
Equality of treatment of the parties to opposition
Documents D5-D9 were late filed by the opponent as they were filed well after the expiry of the 9 months of the opposition period. They were nevertheless admissible a priori as they were filed in reply to the filing of AR1.
When the OD decided to admit the late filed documents, it should have admitted the AR5-12 filed in reply to the late filed documents.
Other OD were not as lucky as the present one. In T 316/11, the OD admitted new requests of the proprietor, comprising features from the description never claimed before. At the same time it did not admit documents filed in reply to those requests. The board held that the OD had committed a substantial procedural violation. A similar result is found in T 500/15, were a request from the proprietor was not admitted.
No need to consult the register
Speculating as to when the proprietor could gain knowledge of the late filed documents is going way too far and was rightly not accepted by the board.
It ought to be noted that in R 7/09, Reasons 5, the EBA held that, even if some documents were readily available to the public and, thus, also to the petitioner shortly after filing or dispatch, respectively, by way of electronic file inspection. “However, this opportunity has no bearing on the right of parties to proceedings before the EPO, including appeal proceedings, to be individually and specifically informed by the Office as prescribed in the EPC, e.g. by R 100(1) in conjunction with R 79(1).
The parties must be able to rely on the Office complying with the relevant provisions of the EPC and, at least for the purposes of Art 113(1), they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file.
Similar conclusions were reached in R 4/17.
In this respect, the “Notice from the EPO dated 28.08.2020 concerning the communication of observations of the parties to the other parties in opposition proceedings for information purposes”, OJ 2020, A 106, according to which not all documents, besides the notice of opposition and the reply thereto, appears to lack a legal basis.
The same applies to the “Notice of the President of the Boards of Appeal of 31.10.2020 on introducing a consolidated list of documents submitted by parties during inter partes appeal proceedings and on discontinuing the forwarding of cited documents to the other parties”, OJ 2020, A 131.
On the procedure
The international search report established by the EPO mentioned no less than 4 X documents, but none of those playing a role in opposition, where found during the initial search.
The OD did not only incorrectly applied its discretion when refusing to admit AR 2-15, but here again the decision of the OD was set aside by the board, and in spite of a revocation by the OD, the patent could be maintained in amended form.
It is understandable that, when faced with 12 requests, the time allowance foreseen for the OP could most probably not be held. Speculating on the fact that the proprietor had seen the documents before Christmas, was a possible way not to admit those.
I leave the readers to draw further conclusions from this mere statement of facts.