Tuesday, March 10, 2020 T 3247/19 - How special does it need to be under RPBA2020?

In the present case, the appellant requested that the appealed decision be set aside and that the case be remitted to the examining division. However, with the RPBA revision, the rules for remittal changed. Art. 11 RPBA2007  provided "A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise". Art. 11 RPBA2020 however provides "The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons." OJ Suppl 2, 2 "Table setting out the amendments to the RPBA and the explanatory remarks" explained that "The aim of the new provision is to reduce the likelihood of a "ping-pong" effect between the Boards and the departments of first instance, and a consequent undue prolongation of the entire proceedings before the EPO. When exercising its discretion under Article 111 EPC, the Board should take account of this aim." and "Whether "special reasons" present themselves is to be decided on a case-by-case basis. If all issues can be decided without an undue burden, a Board should normally not remit the case. According to the second sentence of proposed new Article 11, where a Board ascertains that a fundamental deficiency is apparent in the proceedings at first instance, it will normally remit the case." The new version of Art. 11 applies to any appeal pending on, or filed after, the date of the entry into force (Art. 25(1) RPBA2020); however, not all decisions issued since 1/1/2020 expand on whether there are any specials reasons for remitting, and why (not).  The current deicison does.

Wednesday, July 10, 2019 Revised Rules of Procedure of the Boards of Appeal in force from 1 January 2020

On 4 July 2019, a communication was posted  the Board of Appeal website indicating that the revised Rules of Procedure were approved by the Administrative Council and will come into force on 1 January 2020. 

Tuesday, March 19, 2019 T 47/18 - Admission of new objections which were not raised in the statement of grounds of appeal

The current Rules of Procedure of the Boards of Appeal, and in particular Art. 12 and 13 thereof, have been applied more and more strictly over the last few years. We cited some of those decisions every once in a while, and this is another of those decisions. With the new Rules of Procedure, expected to enter into force early 2020 (see here; and for the user consultation documents here and here), it will get even more strict. In the opposition case below, the opponent's statement of grounds of appeal contained neither an objection of lack of clarity of the (amended) claims under Art. 84 EPC nor an objection under Article 123(2) EPC. Rather, it contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections.  According to the established case law of the boards of appeal, new objections which were not raised in the statement of grounds of appeal, respectively in the reply to the grounds of appeal, are considered an amendment to a party's case.  Admission of such objections is at the discretion of the board pursuant to Article 13(1) and/or 13(3) RPBA. The Board discussed in detail why, in this case, the objections were not admitted into the proceedings. Together with the current state of the proceedings and the need for procedural economy, an important factor was that the appellant could have raised the objections in question at several instances in the first instance proceedings before the opposition division.

Tuesday, February 12, 2019 T 0592/15 - No postponement of decision

In this examination appeal case, the application as filed comprised three independent method claims (claims 19, 39 and 40). However, after an objection under Rule 43(2) EPC in the European search opinion, all claim sets submitted by the applicant during the examination phase, as well as those filed with the grounds of appeal, contained only one independent method claim.

A month prior to the oral proceedings, the applicant filed a main request and two auxiliary requests, all containing three independent method claims. Four days before the oral proceedings, the applicant informed the Board that he would no attend the oral proceedings. He further advised that "it is intended to file a divisional application based upon the present application and it is requested that the present application be maintained pending until the divisional application has been filed".

The Board found the filing of more than one independent method claim at this stage of the proceedings to be prima facie objectionable under Rule 43(2) EPC. Accordingly, the appellant's main, first and second auxiliary claim requests were not admitted into the proceedings.

As there was no admissible claim request of the appellant, the appeal was to be dismissed. The Board found that the request of the applicant to postpone the taking of this actual decision at least until a divisional application had been filed would require the Board to investigate whether the appellant has eventually indeed filed a divisional application and, as the case may be, to even postpone the oral proceedings. Moreover, the Board found that the appellant would gain complete control over the duration of the present appeal proceedings including the possibility of having them pending ad infinitum if no divisional application was filed at all.

Consequently, the Board refused the appellant's request to postpone the taking of the decision on the allowability of the appeal and decided to dismiss the appeal.

At the "User consultation conference Rules of Procedure of the Boards of Appeal" in Munich on 5 December 2018, users of the system the opportunity to hear presentations by members of the Boards of Appeal on the revised draft, followed by panel discussions by members of the Boards of Appeal Committee, the Boards of Appeal and representatives of user associations.
A first public draft of the RPBA was subject to an online user consultation procedure in early 2018. In light of the responses received, the second version was drafted, including newly introduced provisions on case management. This revised draft of the Rules of Procedure of the Boards of Appeal (RPBA) was agreed upon by Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal, and formed the basis for the conference.
The revised draft shows major changes to case management issues as well as to Article 12 "Basis of appeal proceedings" and Article 13 "Amendment to a party's appeal case" of the RPBA, which may change the rules of the game (jn appeal and in first instance as well!) as of 2020.

Today, 14 December 2018, a report on the user consultation conference was posted on the website of the Boards of Appeal. The report can be found here and is shown in full below.

Friday, October 12, 2018 T 1280/14 - No switching between lines of defense

Can the Board exercise its discretion under Art. 13 RPBA not to admit auxiliary requests in the proceedings even if these have already been filed in direct response to the Opponent/Appellant's grounds of appeal and correspond to those submitted during first instance proceedings?

In the present case, the Opposition Division had rejected the opposition against the patent. In the ensuing appeal, the Opponent-Appellant already requested in his grounds that none of the (39) auxiliary requests filed during opposition proceedings be admitted, as these were "excessive, filed in unspecified order, and/or late filed".

In his response to the grounds, the Proprietor-Respondent filed 15 auxiliary requests based on a selection from the requests filed during opposition proceedings. The Proprietor stated that these auxiliary requests were properly numbered, therefore having a clearly specified order. From the arguments in support of the requests it could be deduced that these requests were classifiable as forming six diverging lines of defense, auxiliary requests 1, 2 and 4 thereof forming the first line of defense.

In the summons for oral proceedings, the Board pointed out (referring to T 1903/13) that the Proprietor should be prepared to comment on how the other diverging lines of defense would represent the alleged invention. The Proprietor did not provide any further comments.

Accordingly, the Opponent/Appellant and the Board had to assume prior to the oral proceedings that the Respondent intended, after the main request, to first prepare the patent in suit in accordance with the first line of defense, with auxiliary requests 1, 2 and 4 to defend. However, it was not until the oral hearing (in which the Main Request had fallen as lacking novelty over prior art document D9 filed with the Opponent-Appellant's grounds) that the Proprietor made it clear that he now intended to only pursue his third and sixth lines of defense - corresponding to auxiliary requests 8 and 15, respectively, and renumbered as auxiliary requests 1 and 2.

This unannounced change of strategy did not fare well with the Board, who found that both the Opponent and Board had unnecessarily prepared for auxiliary requests which turned out not to be relevant in the further proceedings; thus, the Respondent had not complied with the procedural economics offered. According to the Board, contrary to the Respondent's submission, his actions did not constitute a mere renumbering of the requests, since new auxiliary requests 1 and 2 (formerly auxiliary requests 8 and 15) corresponded to lines of defense diverging from the former auxiliary requests 1, 2 and 4. Thus, what was now claimed as an invention had fundamentally shifted. Hereby, the multiplicity of interlocked features rendered the changes in subject-matter of the auxiliary requests very complex.

As a result, remaining auxiliary requests 1 and 2 were not admitted in the proceedings and the patent was revoked.

Thursday, September 20, 2018 T 1914/12 - Does the Board have discretion as to the admissibility of late arguments based on facts already in the proceedings?

A decision in French, but well worth reading (and well-readable, too). It concerns the question whether the Boards of Appeal, based on Articles 12(2) and 13(1) of the Rules of Procedure of the Boards of Appeal (RPBA), have the discretion not to admit arguments submitted late in the proceedings - when the facts (in this case, a prior art document) underlying these arguments have been filed in time. It particularly deals with the legal meaning of the terms "facts" and "arguments", and how "facts, evidence or requests" (Art. 12(4) RPBA) and "amendments (to a party's case)" (Art. 13 RPBA) relate to Art. 114(2) EPC, stipulating that the European Patent Office may disregard "facts or evidence" (but not arguments?) not filed in time.

The present appeal lies from the decision of the Opposition Division to revoke European Patent EP1968779 on the grounds of lack of novelty and inventive step in view of, among others, prior art document D51. Briefly, the patent is concerned with a method for bonding a strip of a flexible sheet to a rigid support involving a step of pressing and heating a polymerizable adhesive applied between the support and the strip.

In its grounds of appeal, the proprietor provided several arguments as to why the subject matter of claim 1 distinguishes itself from the disclosure of D51. In a subsequent written submission - filed after transfer of the patent from the original proprietor to the original opponent - the new proprietor argued that, in addition to the distinguishing features discussed previously, D51 differs from claim 1 by disclosing a thermoplastic rather than a polymerizable adhesive (the latter point having merely been noted in the grounds, but not elaborated on).

In its preliminary opinion preceding Oral Proceedings, the Board expressed its intention not to accept the late argument that the nature of the adhesive used was an additional distinguishing feature.

During Oral Proceedings, the proprietor submitted that the assessment of a late argument must be applied according to a more flexible test than facts, evidence or requests, according to the RPBA interpreted in the light of its travaux préparatoires, in which the explicit inclusion of the term "arguments" had been debated. The proprietor further held that the belated argument is a pure argument concerning the underlying technical reality, namely the nature of the adhesive used. In this case, it is not the facts of the case that have changed, but the position of the parties on the interpretation of a document. In regard of Art. 114 EPC, the expression "in due time" must be interpreted in respect of the right of the parties to a fair trial and the duty of the Board to judge whether a fact corresponds to the technical reality.

In its reasons, the Board concluded that indeed a "fact" can be understood as a factual (or allegedly such) element or a circumstance on which a party bases its claims, whereas an "argument" would mean a proposition that a party bases on one or more facts and that supports the plea ["moyen" in the decision] which the party debates.

The Board further noted that in the "Proposal to amend the Rules of Procedure of the Boards of Appeal (RPBA)" of 2002, leading to the current version of the RPBA, "arguments" had initially been included in the definition of "amendments to a party's case". According to the Board, the deletion of the words "arguments" from the final (current) version seems to express the intention of the Praesidium, after consultation with the Patent Law Committee, to exclude arguments from the discretionary power conferred to the Boards of Appeal.

The Board cited T 1794/12 of 16 January 2018, which relied on point 3.1 of the article by B. Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office" ( OJ EPO, Special Edition 2/2007, page 30):

For one thing, submissions can only be rejected on the grounds of being late if the decision-making body would not have been required to examine them and take them into consideration of its own motion. It is incumbent on every decision-maker and thus also on the boards of appeal to weigh up all the relevant legal and technical arguments in making their decision. Such arguments must therefore, at least when they involve the facts of the case and not new grounds for opposition, be taken into account at all stages of the proceedings, including the appeal stage, and cannot be rejected on the grounds of being late.

As regards previous Board decisions, the present Board is not persuaded by the reasoning behind T 1069/08 and T 1621/09 - followed by many Boards - which rely exclusively on the application of Article 13(1) RPBA from the formulation of Article 12(2) RPBA to recognize the discretion of Boards in (not) admitting late submissions. According to this Board, the interpretation of those decisions ignores the fact that Article 114(2) EPC does not justify such discretion, as previous case law has repeatedly stated. According to the Board, the EPC, and in particular its Article 114 - at least in its English version - raises a difference in the treatment of facts and arguments. In particular, Article 114(2) EPC provides for a discretionary power with regard to the facts invoked belatedly, and not for late arguments based on facts already in the proceedings. Even when drafting the RPBA, the legislator seems to have intended to maintain this distinction, as is apparent from the preparatory work on Article 13 RPBA. According to this board, the RPBA, also in view of Art. 23 thereof, although it can specify and interpret the provisions of the EPC, it cannot confer on the Boards of appeal powers which the EPC does not give them.

Thus, departing from T 1621/09, the Board found that the Boards of Appeal do not have a discretion as to the (non)admissibility of late arguments based on facts already in the proceedings.

Consequently, the proprietor's assertion concerning the nature of the adhesive used, first presented in its letter of 15 October 2015, constitutes a new argument in support of the plea which it defends, namely: that the subject matter of claim 1 is novel compared to document D51. Taking into account of this argument necessarily leads to the consideration of the applicant's argumentation concerning the inventive step of the subject-matter of claim 1. The Board comes to the conclusion that it has no discretion as to the (non)admission of these arguments. It follows that the additional difference must be taken into consideration.

With this new distinctive feature, a new line of argument has been submitted for consideration of inventive step. In view of the fact that this distinctive new characteristic may have an influence on the choice of the closest prior art, a referral of the case in the first instance is considered justified by the Board.

Wednesday, March 07, 2018 T 0611/15 - No pain, no gain

In this opposition appeal, the Proprietor appealed the decision of the Opposition Division to maintain the patent in amended form. The joint opponents also appealed this decision, but did not attend oral proceedings. Also party to the appeal proceedings were two assumed infringers, in the capacity of interveners.

The Proprietor requested that the patent be maintained as granted (main request), auxiliarily that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the first auxiliary request filed in during first instance proceedings, or on the basis of the request found allowable by the Opposition Division (second auxiliary request). The Proprietor further requested that the patent be maintained on the basis of the claims of one of the third to fifth auxiliary requests filed during the oral proceedings.

However, during the oral proceedings the Interveners submitted that it is evident from the contested decision and the minutes of the oral proceedings before the Opposition Division that the Proprietor had withdrawn the main request and first auxiliary request, maintaining the second auxiliary request as the sole request. As the contested decision was favourable in respect of this sole request, the Proprietor was not adversely affected by the decision and consequently the Proprietor's appeal is to be rejected as inadmissible, Article 107 EPC and Rule 101(1) EPC. Furthermore, as the Proprietor's appeal is not admissible, the main and first auxiliary requests submitted in the appeal proceedings are not admissible in view of the principle of reformatio in peius. 

The Interveners further argued that in each of the third to fifth auxiliary requests the respective claim 1 prima facie gave rise to new clarity objections under Article 84 EPC which neither they nor the Board could reasonably be expected to deal with without adjournment of the oral proceedings.

The Board essentially went along with the Interveners' submissions. As a result, during the oral proceedings the proprietor was merely able to defend his second auxiliary request - i.e., the request found allowable by the Opposition Division.

Tuesday, January 30, 2018 T 2101/14 – Not admissible if not promptly substantiated

The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.

Friday, August 14, 2015 T 217/10 Unsubstantiated auxiliary requests

The Board refuses to examine auxiliary requests I-V. The Board extensively discusses the Rules of procedure of the Boards of appeal and the interpretation thereof. Although the auxiliary requests were filed in time, they were not substantiated such that the Board could not see how prima facie these requests could overcome the objections against the main request. If auxiliary requests are submitted, it usually requires a justification to what extent the objections against the main request are overcome. If the auxiliary requests are not substantiated at filing but at a very late stage, a justification for the late submission is required.