Tuesday, 19 January 2010

T 341/07 – In Appeals, Play It Again Sam

The present decision shows that an opponent cannot be sure to be allowed to rely on a ground for opposition that he has not raised again in due time in the appeal proceedings.

In the case underlying the present decision, the patent was opposed on the grounds of lack of novelty (with respect to document E3) and inventive step (with respect to documents E1 and E5). The patent was finally revoked on the grounds of lack of novelty (the main request and the first auxiliary request being anticipated by late introduced document E8) and inadmissible extension (second auxiliary request).

During the oral proceedings (OPs) before the Board, the opponent admitted that claim 1 of the main request was novel over E8 but argued that the claim lacked novelty over E3.

The Board does not admit this objection based on document E3, for the following reasons. [2.2]

During the written appeal proceedings, none of the opponents has expressed an opinion on the substance (fond), neither in a response to the grounds of appeal, nor as a reaction to the communication by the Board accompanying the summons to OPs, wherein it had indicated that the subject-matter of Claim 1 appeared to be novel over E8 and that the other documents cited did not appear to be relevant with respect to novelty. In this communication, the Board had fixed a date – one month before the date of the OPs – until which the parties could file observations in response to the communication. [2.2.1]

The Board considers that this objection corresponds to an amendment to the party’s case within the meaning of article 13(1) RPBA. The admission and consideration of such an amendment are at the Board’s discretion, in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy.

The grounds of appeal have been transmitted to the opponents with a communication dated April 23, 2007. The communication of the preliminary opinion of the Board has been notified to the parties on July 3, 2009, wherein the time limit for filing observations was fixed to August 16, 2009, i.e. one month before the OPs.

The Board concludes that the opponent has had enough time to introduce the grounds in response to the grounds of appeal. The refusal of an extension of the time limit is not equivalent to a prohibition of filing such observations. The opponent should have filed them at the latest in reaction to the preliminary opinion of the Board, before the time limit indicated therein, as the last amendments [of the claims] do not change the situation with respect to novelty. [2.2.2]

As the Board had indicated, in the communication dated July 3, 2009, that it had the intention to reach a verdict on the case, including the question of inventive step, and had prepared itself to do so on the basis of the impugned decision, the grounds of appeal, its preliminary opinion and the observations of the appellant, the objection of lack of novelty based on E3, which has been raised only during the OPs, arises without justification at an excessively late stage of the proceedings, which comes close to an abuse of proceedings.

Therefore, the requirements for admissibility of this amendment of the case are not fulfilled. [2.2.3]

The opponent has argued that the objection had already been raised by itself and the other opponent with each of the oppositions and as such was part of the appeal proceedings.

The Board observes that this is not the case because the appeal proceedings are distinct proceedings. Apart from the impugned decision, they are based, according to Article 12(1) RPBA, on the notice of appeal and statement of grounds of appeal, any written reply of the respondents to be filed within a time limit fixed b the Board, any communication sent by the Board and any answer thereto filed pursuant to directions of the Board. For the present case the requirements of Article 12(2) RPBA also apply, i.e. the respondent’s reply shall set out clearly and concisely the reasons why it is requested that the decision under appeal be upheld, and should specify expressly and precisely all the facts, arguments and evidence relied on.

As during the written proceedings the respondents have not filed any substantive reply, neither to the grounds of appeal, nor to the communication of the Board, these requirements are not met. [2.2.4]

The opponent has also argued that the Board, by applying the RPBA so restrictively, deprived it of the last possibility to uphold the revocation of the patent.

The Board observes that it was the choice of the opponent not to express a written opinion on the grounds of appeal or to file a timely response to the preliminary opinion of the Board. Therefore it has to accept the consequences. These consequences could be economic for the opponent, but this is not the case for the Board and/or the appellant. [2.2.5]

Finally the opponent has pointed out that its objection only became possible due to its understanding of the amendment of claim 1 of the main request when preparing the OPs. As this amendment had been notified by the EPO on August 19, 2009, the time limit indicated by the Board could not be observed and the only way to object to it was during the OPs.

The Board cannot accept this justification. On the one hand, if said amendment of the main request had changed the teaching of the patent, as pointed out by the opponent, the claim would not satisfy the requirements of A 123(3) and there would not be any need for discussing its novelty.

On the other hand, as the amendment does not violate A 123(2)(3) […] it is clear that the respondent should have filed the objection of lack of novelty with respect to E3 already in its reply to the grounds of appeal, or at the latest in a timely reaction to the preliminary opinion of the Board. [2.2.6]

In view of Articles 12(1), 12(2) and 13(1) RPBA the Board exercises its power of discretion and decides not to take into account the late filed objection. Document E3 is not admitted into the appeal proceedings. 

To read the whole decision (in French), click here.