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Eventually, the patent was revoked for lack of sufficiency.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.
Comments
9 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/
@ Anon,
See my reply to Roka Ur.
When the new RPBA were discussed at the end of 2018, one of the immediate comment was that the new RPBA would imply filing many more AR in first instance.
It is clear that by filing more AR in first instance, the overall workload of DG1 would increase.
The representatives of the BA simply answered that DG1 had been consulted and was thus aware of this problem. DG1 never said anything against it.
@ Roka Ur,
Thanks for your comment. I do however beg to disagree with your point of view.
I would like to observe that claim 4 as granted had been objected to by the opponent for lack of sufficiency right from the beginning of the opposition.
The OD decided that the objection was at most an objection of lack of clarity which does not have to be considered in opposition.
The opponent maintained its objection when filing its appeal.
When the proprietor filed its own appeal, it maintained in all AR a claim corresponding to claim 4 as granted.
In the present case, the proprietor never attempted to argue against the opponents objection of lack of sufficiency. In its SGA, Point 27, the proprietor merely stated that “For the avoidance of doubt, we agree with the decision at section II-3 in that the patent as granted meets the requirements of Art 83 EPC”.
In its communication pursuant to Art 15(1) RPBA, the board agreed provisionally with the opponent that claim 4/1 was insufficiently disclosed.
In its reply to the board’s communication, see Point 4, the proprietor merely alleged that it did not agree with the board’s conclusion, and filed, “in the interest of procedural expediency” the same series of AR but with claim 4 as granted, so as to focus discussion at the OP on the substantive issues relating to the independent claims”.
In point 10 of the reply to the board’s communication, the proprietor argued in favour of the admissibility of AR in which a dependent claim was deleted and cited corresponding case law.
It remains that the proprietor never said anything substantial in reply to the objection of lack of sufficiency from the opponent or even from the board. It simply agreed with the OD, which is manifestly not enough.
In view of the absence of any substantial argumentation, and of Art 13(2) RPBA, it does not come as a surprise that those “new” AR were not admitted in the procedure. It is only when the proprietor realised that, after the board’s communication, that the subject matter of granted claim 4 represent a threat to the patent.
Already under the previous RPBA, waiting for the opinion of the board to file requests was considered too late. It might be hard for the proprietor that the mere deletion of a dependent claim did not render the corresponding AR admissible.
Other boards might have been more lenient, and admitted AR in which an objectionable dependent claim has been deleted.
I have often been critical with boards in procedural matters, but in the present case, the board acted in the limits of the discretion given to it under Art 13(2) RPBA. There is nothing to say against this.
It has been stated in many decisions that a board is not obliged to follow the reasoning of the first instance. It is thus perfectly correct when the board says that, according to Art 12(6) RPBA, AR in which the subject-matter of claim 4 as granted was deleted should have filed in first instance. This would not have presented any difficulty for the proprietor, and by doing so, it might indeed have saved its patent.
In view
You say that the proprietor “the proprietor never attempted to argue against the opponents objection of lack of sufficiency”, but this is manifestly incorrect. The sufficiency attack in the notice of opposition was not substantiated, and the proprietor correctly argued in section 7.2 of its letter of 16 December 2020 that the opponent’s attack was merely a clarity attack. The opponent presented no verifiable facts and the attack was merely a lack of antecedence and a general assertion that the patent did not explain how to achieve the claimed transmission rate. The proprietor correctly won on this point.
In its ground of appeal, the proprietor agreed with the reasoning in the decision. Why should it have done any more at this stage, when it had won on this point and was not appealing this point?
In its grounds of appeal, the opponent reiterated its argument from first instance. It did not explain in any way why the decision under appeal was incorrect. It should have done more to explain its attack. The board should not have admitted any development in the opponent’s case beyond the lack of antecedence and the general statement that the patent did not explain how to achieve the transmission rate.
The opponent’s sufficiency attack developed during the appeal proceedings. The reasons the board presented for finding claim 4 insufficient bear no resemblance to the arguments that the opponent set out in its notice of opposition or in its grounds of appeal. With respect to claim 4, geometry and reflections were never mentioned in the notice of opposition or the opponent’s grounds of appeal, yet these were the decisive factors in the board’s decision to find claim 4 insufficient.
When the case developed, the proprietor should have been given an opportunity to amend its case. This is simple justice. To expect the proprietor to delete every dependent claim when an opponent comments on it – no matter how weak the attack – is absurd. Combinatorics dictates that the number of requests will become unmanageable.
@ Anon, reply 2
I beg to disagree with you. The appeal procedure is not the continuation of the opposition procedure. What has been said in opposition needs at least to be repeated in appeal. A mere reference to statements in opposition is in general not enough. There is abundant case law on this.
I invite you to have a look to T 1225/21, Reasons 1.4, fourth paragraph. In said case claims infringing Art 123(2) were deleted and the corresponding requests admitted as the objection under Art 123(2) was not decided by the OD, but taken up by the board in its communication under Art 15(1) RPBA.
In the present case, the situation is totally different. In Reasons 9, the board noted that “The objection in question [lack of sufficiency] was always present, and the remedy of deleting claim 4 was always easy and foreseeable. The amendment should thus have been submitted during the opposition proceedings, and there are no circumstances justifying its submission only during appeal proceedings.
Contrary to what you might think, the sufficiency attack in the notice of opposition was substantiated. The opponent showed how claim 4 was amended during examination at the initiative of the then then applicant. What was then claimed in claim 4, later granted, is a result to be achieved: “the high speed data transmission rates are in excess of 10 Gbps”. In the description and the figures the data transmission envisaged was 1 or 7 Gbps, see Fig. 11A and 11B. We are thus far from the claimed 10 Gbps. There is nothing in the description allowing to go from 7 Gbps to 10 Gbps as data transmission rate.
In view of this discrepancy, the ED should have queried claim 4 for lack of sufficiency. The value 10 Gbps was thus arbitrarily chosen.
The present case is not that the proprietor had to delete every dependent claim when an opponent comments on it. It was only claim 4. In the present situation, the proprietor could have filed in first instance at least one request in which claim 4 as granted was deleted.
One might like it or not, but with the present RPBA, what is missed in first instance can rarely be obtained in appeal.
I agree with you that it is a quasi-insurmountable task for a proprietor to file requests attempting to overcome a multiplicity of objections against dependent claims. There are decisions admitting in such a circumstance requests filed when entering appeal, or replying to an appeal. But those requests have to be filed at the earliest opportunity and not after waiting for the opinion of the board.
In the present case, it is difficult to argue against the board, as he has been using the discretion given to it in Art 13(2) RPBA. What can however be queried is that the case law on deletion of claims is not coherent, But this is not a topic I wish to pursue here.
The appeal procedure is a front loaded procedure, and the longer a proprietor waits to file requests overcoming objections always present in the procedure, the less chance he has that those requests will not be admitted.
Hi Daniel
I follow your comments, but unless I’m mistaken the board here didn’t cite the lack of substantiation of A83 as a reason for not admitting the request under A13(2) RPBA.
So your comments relating to “the proprietor never attempted to argue against the opponents objection of lack of sufficiency” don’t seem to apply – this wasn’t the reason the Board did not admit the request.
As far as I can tell, the reasons included the number/complexity of the ARs (point 5 of the reasons) and that the amendment was “easy and foreseeable” (point 9), as well as of course the objection always being there (point 7). None of these reasons related to the lack of substantiation of the Proprietor when filing their grounds.
Thank you for your reply.
I still find this decision hard to reconcile with T1563/22 and T141/20.
Similarly to this case, objections had been raised at first instance in both T1563/22 and T141/20 – novelty and inventive step in the case of T1563/22 – added matter in T1563/22. However, in both cases the Boards expressly stated that the fact that an objection was raised at first instance was not sufficient to establish that a Proprietor should have filed an amended request earlier
With the Board in T1563/22 commenting (Reasons 6.2):
Da die Einspruchsabteilung in ihrem Ladungszusatz das Vorliegen von Neuheit und erfinderischer Tätigkeit festgestellt und dies in der Entscheidung auch bestätigt hat, hatte die Patentinhaberin im Einspruchsverfahren entgegen der Ansicht der Beschwerdeführerin keinen Anlass zur Einreichung von diesbezüglich eingeschränkten Hilfsanträgen. Daher kann dem Hilfsantrag 4 seine Zulassung nicht nach Artikel 12(6) VOBK verwehrt werden.
And in T141/20 (Reasons 5.4.1)
Das Vorhandensein des Einwands im Verfahren als solches reicht als Anlass nicht aus. Es kann der Patentinhaberin im Einspruchsverfahren nicht zugemutet werden, grundsätzlich jedem vorgebrachten Einwand, und jeder Permutation von vorgebrachten Einwänden, durch die Einreichung von Hilfsanträgen zu begegnen. Dies würde auch eine ungebührliche Belastung für die Einspruchsabteilung und die anderen Verfahrensbeteiligten darstellen. Es liegt in der Verantwortung der Patentinhaberin, Einwänden, die sie für unbegründet hält, lediglich argumentativ entgegenzutreten. Folgt die Einspruchsabteilung in ihrer Entscheidung diesem Vorbringen, so kann eine Nichtzulassung von am Beginn des Beschwerdeverfahrens eingereichten Hilfsanträgen, die diesen Einwänden Rechnung tragen, unter Artikel 12(6) VOBK 2020 nicht ausschließlich damit begründet werden, der Antrag hätte bereits im Einspruchsverfahren eingereicht werden können. In die Zulassungsentscheidung muss vielmehr einfließen, ob im Einspruchsverfahren eine Notwendigkeit bestand, den Antrag einzureichen.
@ Roka Ur,
I had now time to look at the two decisions you quoted.
In T 1563/22, the board did indeed admit that AR4 filed when entering appeal, as opposition was rejected. In such a situation a board can exercise its discretion and admit a late file request. One important aspect here is that the position of the OD was clear from the summons upwards and the proprietor did not have necessarily a reason to file AR4 in opposition.
However some other boards might think differently and consider that AR should, in any case, have been filed in opposition in order to overcome the objections raised by the opponent. The proprietor cannot know whether the OD will maintain the position it took in the annex to the summons, which is a provisionally one. It might change during OP. In such a situation, the proprietor should be allowed to file, during OP before the OD, at least a further AR, taking into account the change of position of the OD. Failure to do so, would be tantamount of a substantial procedural violation by the OD.
The situation in T 951/22 is fundamentally different as the proprietor waited until receipt of the communication under Art 15(1) RPBA to file AR1A, whereby the objection it was meant to answer was present from the outset of the opposition proceedings.
Filing a request after the communication under Art 15(1) RPBA occurs at the third level of convergence. New submissions filed at the third level of convergence are only admitted in exceptional circumstances justified by cogent reasons. The most frequent exceptional circumstance being a new objection raised by the board in said communication.
In T 951/22, AR1A should have been filed at the latest when entering appeal, i.e. at the first level of convergence. Even then, the board had the discretion not to admit such a request as it represents an amendment to the proprietor’s case under Art 12(4) RPBA.
This is exactly what happened in T 141/20. AR13 was admitted under Art 12(6) RPBA, when entering appeal, i.e. at the earliest moment possible, see Reasons 5.4.3. In T 141/20 the board exercised its discretion and admitted AR13. Another board might have not admitted AR13. See above.
In my opinion T 1563/22 and T 141/20 are very reasonable and should be applied more widely by other boards.
On the other hand filing a request after a communication under Art 15(1) RPBA is, in general, a no-go. In the present case, the proprietor had a chance to file AR1A at least when entering appeal, but it did not grab it.
There is nevertheless a problem when it comes to admissibility of requests, i.e. the great variation in the way the discretion is exercised by different boards. Similar situations are not dealt with in a similar way when it comes to admissibility of submissions.
In the end this is to the detriment of the credibility of the boards. Questions of admissibility should, in general, be dealt with more predictability. It depends too much on the board in which the appeal ends.