CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 924/22 – The saga of carry over requests continues

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EP 3 171 723 B1 relates to a protective garment provided with an inflatable protective device.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board decided that claims 1 and 13 as granted lacked N over D7=US 8,662,528 or over D2= US 2005/0067816.

The board admitted the carry over requests 1 to 7.

None of those AR were allowable, either for added matter or lack of IS.

The patent was thus revoked.

The decision is interesting as it relates to carry over requests (CoR).

The admission of AR 1 to 7 by the board

The requests were filed early on in the opposition proceedings, before the R 116(1) deadline in the summons to OP.

Even if they did not converge, that criterion applies only if requests are late filed, after the Rule 116(2) deadline, see Examination Guidelines 2024, H-III,

As they were further substantiated to the required level in opposition, they are seen to have been admissibly raised in opposition.

Though they were not examined there is no indication that these requests were not maintained.

Finally, though their substantiation in appeal is very succinct, the board considered it sufficient to allow all to understand the case the proprietor is making for them.

The board therefore decided to admit these requests into the appeal proceedings in the exercise of its discretion under Art 12(4) and 12(5) RPBA.


Divergence of requests

Although the board do normally not refer to the Guidelines, it is worth noting that the present board did so. The board confirmed that the criterion of divergence only applies to late filed requests.

Carry over requests

The present decision is one of the decisions which did not make a fuss about carry over requests (CoR).

The other decisions are T 1175/22, commented on this blog, and T 709/22, also commented on this blog.  

The same applies to T 42/20 and T 475/21.

Other decisions either consider CoR either as

  • an amendment pursuant to Art 12(4) RPBA and did not admit them for this reason. See T 1135/22, commented in this blog, although the proprietor had filed the requests within the time limit under R 116(1). Before the OD. The board made a rather formalistic distinction between substantiation and admissibility.
  • not properly substantiated pursuant to Art 12(3) RPBA and did not admit them for this reason. See T 1690/22, also commented in this blog-
  • one board did not admit CoR under both Art 12(3 and 12(4) RPBA. In its decision the board insisted on the application of Art 12(4) RPBA, but also brought in Art 12(3) RPBA, See T 246/22, also commented in this blog.   

In T 246/22, the board made clear that it did not endorse the conclusions drawn in T 42/20 and T 476/21.

Divergent case law in matters of carry over requests

The different decisions quoted here show once more that the boards have in procedural matters a diverging approach. This divergent approach is detrimental to the predictability of the boards and hence to their credibility.

That requests filed in opposition without proper substantiation or late filed, for instance after the time limit under R 116(1), or even during OP, should not be admitted in appeal is manifest and quite normal. If the OD would have had to decide upon those, their admissibility would first have been decided by the OD before any discussion on their substance. I would not call these AR CoR.

What is not normal, is that substantiated AR filed before an OD within the time limit under R 116(1) and re-submitted in appeal when the OD has not dealt with them as it has decided on a higher ranking request. As those requests have not been discussed in opposition, it is difficult for the proprietor, when entering appeal, to say much more than what he said in opposition. Those AR are clearly CoR.

It is clear that CoR could be considered as amendments, but this is very petty interpretation of Art 12(4) RPBA. In T 42/20 the board clearly held that CoR were not to be considered as amendments pursuant to Art 12(4) RPBA. Another interpretation of Art 12(4) RPBA is thus perfectly possible.  

After all, the proprietor should not be disadvantaged when properly filed and substantiated AR have not been dealt with by an OD, because a higher ranking request was considered allowable. That all or some of those AR are re-submitted in appeal should not come as a surprise. .

The valid RPBA have been adopted in order to reduce the backlog of the boards, but production/productivity should not be the only criterion for the boards. They should insure that justice is done, but this justice should be fair to all the parties.

On the procedure

Claims 1 and 13 as granted lacked of N over D7=US 8,662,528 or over D2=US 2005/0067816. Both those document were not mentioned on the ISER established by the EPO.  

As the ISR is not available in the register (only the IPER is)

  • the patent bears the IPC classification A41D1/00 and A41D13/018
  • D7 bears, inter alia, the IPC classification A41D13/015
  • D2 bears, inter alia, the IPC classification A41D13/00 and A41D13/018

It is thus somehow surprising that D7 and D2, which were N destroying were not found during the original search.


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