EP 3 066 715 B1 relates to improved rotary joints that enable high-speed wide-bandwidth electrical signal transmissions between two relatively-movable members without the use of sliding electrical contacts therebetween.
Brief outline of the case
As claim 1 as granted infringed Art 123(2), the patent was maintained according to AR 1A.
Proprietor and opponent appealed.
Eventually, the patent was revoked for lack of sufficiency.
The case is interesting in view of the carry over requests.
The opponent’s point of view
The opponent argued, in the written proceedings, that, inter alia, AR 2-29 should not be admitted under Art 12 RPBA, as there were too many AR (by then 35).
The board’s decision
The consideration of these requests is governed by Art 12(4) RPBA, first sentence. In its interpretation and application of this provision, the Board follows the approach proposed in the decision in T 246/22 (see Headnotes, Reasons 4.2 to 4.17).
AR 2-29 were among the initial and final requests made by the proprietor at the OP before the OD.
Since a higher-ranking request was found allowable, AR 2-29 were not addressed in the appealed decision. Therefore, they are “carry-over requests“, which are not part of the basis of the appealed decision within the meaning of Art 12(2) RPBA.
In the statement of grounds of appeal, the proprietor maintained the original arguments in favour of these requests by reference to a letter in which the proprietor detailed the purposes for which these requests were submitted.
Thus, the proprietor has demonstrated that these requests were admissibly raised and maintained in the opposition proceedings within the meaning of Art 12(4) RPBA, first sentence. They are, therefore, not to be regarded as amendments.
The board saw no provision under which they could be left unconsidered.
Comments
In view of the allowability of a higher ranking request, the reference to the substantiation of AR 2-29 filed in opposition within the time limit under R 116(1), but not discussed by the OD, was sufficient to consider that those AR were admissibly raised and maintained.
What has certainly helped is that the OD has acknowledged in its decision that those AR were timely filed and that it did not see any possibility to dismiss those requests. This can be interpreted as those AR having been admissibly raised.
This was because the opponent had challenged the admissibility of all AR as being too many.
If the opponent would not have challenged the admissibility of the AR, the OD would not have said a word.
In T 246/22, commented in this blog, the AR were not considered admissibly raised and maintained.
Boards are in general very critical when dealing with carry over requests, and they are more than often not admitted. Multiple examples have been published in this blog.
T 1659/22, commented in this blog, is a much better decision as it has clarified the issue of carry over requests and accepted a reference to the submission in opposition.
A suggestion for the EPO
Although there is no obligation for ODs to say anything about AR which it has not dealt with, it would nevertheless helpful to say whether the AR were timely filed and substantiated. Whether the substantiation was convincing or not should not play a role with respect to their admissibility.
However, sweeping statements, or a general reference to the reasoning valid for higher ranking requests, should render them not admissible for lack of substantiation.
Change of the ground for revocation
Claim 1 as granted could not be maintained as it infringed Art 123(2). The proprietor argued with the previously called essentiality test, but the OD found that the requirement of G 2/10 was not fulfilled.
The OD did further consider that the requirements of Art 83 were fulfilled.
In its statement of grounds of appeal, the opponent reiterated its ground of opposition under Art 100(b), especially with respect to claim 4 as granted, dependent on claim 1 as granted.
The board held that the description provides no detail as to the quantitative information which contributes to an effective transmission rate in excess of 10 Gbps (claim 4/1).
It is silent as to the concrete measures, in terms of geometry, that contribute to achieving the required level of reflection, and merely reiterates that the probe should increase the bandwidth and that the reflection should be proximate to the signal output (paragraph [0040]) to produce minimal temporal distortion.
For the board, it requires a clear teaching regarding the relationship between the required impedance changes (or geometry changes) and their effects on the frequencies of the transmitted signal, so that a sufficient amount of energy can be reflected.
Common knowledge in the field of probes was not sufficient to compensate for the missing information.
As all admissible requests on file where comprising a claim corresponding to claim 4/1 as granted, the patent was revoked.
A dependent claim can thus bring a patent to be revoked for lack of sufficiency.
All AR in which claim 4 as granted was deleted were deemed not admissible under Art 13(2) RPBA, as filed after the communication under Art 15(1) RPBA.
T 951/22
Comments
2 replies on “T 951/22 – Carry-over requests – A positive decision”
How the Board dealt with the carry-over requests in this case is indeed to be welcomed. However, the Board’s refusal to permit the Proprietor to delete dependent claim 4 from the carry-over requests raises other questions.
T951/22 does not mention any of the significant number of cases (e.g. T1224/15, T853/17, T306/18, T1224/15, T853/17, T884/18, T494/18, T2920/18, T2295/19, T424/21 etc.) which have held that even if deletion of a dependent claim constitutes an amendment and hence is only to be admitted into the proceedings at the discretion of the Board, deleting a claim which does not shift the focus of the appeal constitutes exceptional circumstance which justify a late amendment of a party’s case. Possibly, that line of argument was not brought to the Board’s attention.
The Board’s reference to Article 12(6) to justify their decision is worrying as it suggests that the Board considered that the Proprietor should have filed amended claims deleting claim 4 at first instance even though claim 4 was not considered to add matter by the Opposition Division. Had the Opposition Division found otherwise, a request to delete the claim would inevitably have been admissible despite it being late given that such an amendment would both overcome any added matter issue and not raise any new issues.
In this respect, the decision seems contrary to cases such as T1563/22 and T141/20 which support the view that when an Opposition Division does not give a Proprietor reason to suspect a particular attack on a patent might be upheld, amendments dealing with such issues may still be filed on appeal. In short, the amendment is not one which necessarily should have been filed at first instance.
In contrast, T951/22 appears to suggest that Proprietors are obliged to foreshadow that they might later want to delete dependent claims even if the Opposition Division does not consider that necessary.
This case is the inevitable conclusion of the strict admissibility criteria, the new RPBA were always going to have the effect of more requests in first instance proceedings, e.g. see: https://patentblog.kluweriplaw.com/2018/12/06/a-rough-deal-for-the-patentee-notes-from-the-user-consultation-conference-on-the-second-draft-rules-of-procedure-of-the-boards-of-appeal/