The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. Instead of contesting the reasons for the decision given by the OD, the appellant only filed a new document (D5) and argued that the patent was not novel and inventive over D5.
Is this enough for the appeal to be admissible?
*** Translated from the German ***
Admissibility of the appeal
[1.1] The [patent proprietor] argued that the appeal was not admissible, mainly for two reasons:
(a) The statement of grounds of appeal did not state why the impugned decision was to be set aside. As only document D5 was discussed, which was mentioned in the appeal proceedings for the very first time, there was no discussion of the reasons for the decisions; therefore, the appeal only served to prolong the opposition proceedings.
(b) The appeal was inadmissible, be it only because the only document that was discussed as to its content was late filed and, therefore, not to be admitted; as a consequence, there was no statement of grounds of appeal.
[1.2] The appellant pointed out that D5 was filed together with the statement of grounds of appeal, and, therefore, in due time. It referred to the case law of the Boards of appeal of the EPO.
[1.3] The Board notes that the argument of the appellant that D5 was filed together with the statement of grounds of appeal, i.e. within the four-month time limit pursuant to A 108, third sentence, is correct.
Moreover, lack of novelty and lack of inventive step were given as grounds for opposition by the opponent in the opposition proceedings; this fact has not changed in the appeal proceedings. Therefore, there have not been any fresh grounds for opposition in the appeal proceedings.
The remaining question is whether the almost exclusive reference to D5 in the statement of grounds of appeal, without any in-depth discussion of the arguments provided by the OD in its decision, constitutes a statement within the meaning of A 108 and R 99(2).
[1.4] According to the established practice of the Boards of appeal an appeal is not inadmissible only because it is based on evidence that has been submitted in the statement of grounds of appeal for the first time (see T 389/95 and T 1029/05, both cited by the appellant, but also T 1063/98 [1.1-2]).
This also holds true when there is no discussion of the reasons for the decision at all, provided that the new facts (Tatbestand) deprive the decision of its legal basis (Case law of the Boards of appeal of the EPO, 6th edition, 2010, chapter VII E.7.6.1, fifth paragraph, and J [902/87] [first headnote ; 1.4] as well as T 147/95 [1.2]).
[1.5] In the present case a new document was cited in order to challenge novelty and inventive step of the impugned patent. If the assertions of the appellant are found to be correct, one has to assume that the decision is deprived of its legal basis.
[1.6] Moreover, it is true that the appellant has not addressed the arguments of the OD in detail and has instead discussed novelty and inventive step in respect of D5. However, the examination of admissibility pursuant to A 108 and R 99(2) does not depend on whether D5 is admitted into the proceedings (see above, [1.4]).
[1.7] In its statement of grounds of appeal, filed within four months after delivery of the decision of the OD, the appellant has given a detailed statement that the impugned patent had to be revoked for lack of novelty and lack of inventive step and that this should be done on the basis of evidence D5.
[1.8] Moreover, the appellant has mentioned in its statement that it also invoked documents D1 to D4 for objecting to the patentability of claims 2 to 6 and 8 to 19. Therefore, the Board is not of the opinion that no reasons for the appeal have been given. However, even in this case it remains to be examined whether the appeal was sufficiently and convincingly reasoned, which could lead to its dismissal but does not have any effect on its admissibility.
[1.9] Thus the Board considers that the requirements of A 108 and R 99(2) have been fulfilled; the appeal is admissible.
Introduction of document D5 into the appeal proceedings
[2.1] The [patent proprietor] requested not to admit D5 into the proceedings before the Board because this document was filed belatedly.
[2.2] The document was added to the statement of grounds of appeal and was filed in time with respect to A 108 and Article 12(1) RPBA.
[2.3] As the disclosure of D5, if [the assertions of the appellant are] correct, would also be potentially relevant for the claims of broader scope filed during the opposition proceedings, it has to be clarified why D5 was not already cited during the opposition proceedings and whether there might have been an abuse of proceedings.
[2.4] According to the appellant, D5 was not on hand during the opposition proceedings and was only discovered at a later time. The appellant further explained that D5 was introduced into the (appeal) proceedings, and therefore used to support the statement of grounds of appeal, only shortly after it had been found. The [patent proprietor] has not commented this assertion.
[2.5] The Board shares the opinion of the [patent proprietor] that D5 was only introduced into the proceedings at a relatively late stage. However, the present version of the set of claims before the OD was only drafted during the oral proceedings before the OD. This means that the statement of grounds of appeal was the first opportunity for the appellant to react to the present set of claims. Therefore, it is indeed plausible that a new search, carried out in response to the argumentation of the OD in its reasons for the decision, led to the discovery of D5.
[2.6] The [patent proprietor] has not provided any evidence that this presentation of facts is incorrect, that the appellant was in possession of D5 at an earlier stage [of the proceedings] or that the filing of D5 was abusive.
[2.7] Therefore, D5 is admitted into the proceedings.
Remittal to the first instance
[3.1] The [patent proprietor] requested a remittal of the proceedings to the first instance; the appellant agreed to this request.
[3.2] The Board exercises its discretion pursuant to A 111(1) in order not to deprive the parties of the opportunity of having two instances decide on the patentability of the invention and remits the case to the first instance for further prosecution.
To read the whole decision (in German), click here.
The file wrapper can be found here.
2 comments:
From the decision:
"Moreover, lack of novelty and lack of inventive step were given as grounds for opposition by the opponent in the opposition proceedings; this fact has not changed in the appeal proceedings. Therefore, there have not been any fresh grounds for opposition in the appeal proceedings."
Is this important? Since the patent was maintained in amended form, it seems to me that the amended claims could be attacked on novelty and inventive step? Art. 101(3) rather than Art. 101(2)? Do the restrictions on "fresh grounds for opposition" apply to the examination under Art. 101(3)?
Or does T 301/87 apply here? Should the examination under Art. 101(3) only check whether the amendments have themselves introduced contraventions of the EPC, so that as a rule amended claims complying with Art. 123(3) cannot be objected to for lack of novelty or inventive step under Art. 101(3)? (The exception being the case that priority falls in the presence of intermediate documents.)
In point 3.1 of T 452/97 an objection on novelty against amended claims was indeed not considered a "fresh ground for opposition", because amended claims are examined under Art. 102(3) (now Art. 101(3)).
However, I wouldn't be surprised if there are decisions that decide differently on this point. For example, T 1024/98, point 1.2(iii) considers that an objection under Art. 123(2) against amended claims relating to a feature already present in the granted claims is a fresh ground of opposition. Of course a novelty objection against amended claims is normally also a novelty objection against the granted claims.
So I'm even more confused now than I was here.
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