T 1194/08 – Stick To What You Said

The patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposedpatent in amended form.

The parties were summoned to oral proceedings (OPs) on 22 June 2011. With its letter of 13 May 2011 the proprietor indicated that it would not be present.

Claim 1 of the main request (patent as granted) reads as follows:

Automatic rotating labelling machine (1) comprising a rotatable support (3) carrying means (5) for gripping bottles or containers (6) to be labelled, said support (3) being operatively associated to at least one labelling unit (8, 9) that applies labels (19) to said bottles or containers (6), said rotatable support (3) being arranged at an upper end of said machine (1), and said gripping means (5) gripping said bottles or containers (6) at an open or upper portion thereof, and holds them below said support (3), characterised in that it comprises an upper platform (20) supported by columns (21) carrying at least a motor (4) and said rotatable support (3).

The Board made an interesting statement on how the OD had dealt with a late filed document:

[2.1] E15 and E16 were late filed documents in the opposition proceedings. For the purpose of the present decision it is only necessary to consider the admittance of E15.

[2.2] E15 was filed by the opponent during the opposition proceedings with letter of 5 June 2007. The preceding communication of the OD dated 16 February 2007 had been favourable to the opponent. Nevertheless, the opponent considered that it wished to respond to one of the comments of the OD regarding a feature that the OD considered was not disclosed in the nearest prior art document. It responded by filing E15 […].

[2.3] With its letter also dated 5 June 2007 the proprietor filed three auxiliary requests. With its subsequent letter of 24 October 2007 the proprietor filed comments regarding E15 without objecting to its admittance into the proceedings.

[2.4] In its provisional opinion accompanying the summons to OPs dated 31 October 2007 the OD indicated that E15 was accepted as a belated submission. It further considered that the first auxiliary request was allowable taking into consideration E1 to E15.

[2.5] In its letter dated 28 March 2008, i.e. five days before the OPs, the proprietor objected for the first time to the admittance of E15 into the opposition proceedings. It repeated this objection at the start of the OPs before the OD.

[2.6] The OD decided to reject the document as having been late filed and because it considered that it was not more relevant than E1 or E4 […].

[2.7] The opponent objected in its appeal grounds to the non-admittance of the document into the proceedings. Moreover, it also referred to the document in its response dated 19 December 2008 to the appeal of the patent proprietor with respect to the fourth auxiliary request of the proprietor […].

[2.8] In the opinion of the Board the OD was not entitled during the OPs to reverse its admittance of the document. The opponent was entitled to rely on the earlier decision of the OD to admit the document into the proceedings. Also, the request of the proprietor shortly before the OPs, when beforehand it had dealt with the document, may itself be considered to have been made too late. This view of the Board was already set out in its provisional opinion accompanying the summons to OPs.

[2.9] The Board therefore considers that E15 is already in the proceedings so that there is no need to take a decision regarding its admittance into the appeal proceedings.

The Board then found the main request and the second auxiliary request to lack inventive step and the first auxiliary request to violate A 123(2). There is an interesting obiter dictum concerning the second auxiliary request:

[5.1] The Board notes that the opponent raised a number of points of a so-called formal nature relating to alleged inconsistencies of the description and the depending claims with claim 1 of this request. Had the Board found that the subject-matter of the claim was patentable then it would have been necessary to examine these points before a decision could have been taken to allow the request.

[5.2] In its communication accompanying the summons to OPs the Board had explicitly indicated that new requests should be accompanied by a correspondingly amended description and, if appropriate, amended claims […]. Despite this indication the proprietor has not made any such amendments. Had the Board found that the subject-matter of claim 1 of the request involved an inventive step then it would have had to consider whether the amended patent also met the other requirements of the Convention, cf. A 101(3)(a). A cursory assessment suggests that this is not the case, e.g. the embodiment of figure 9 is outside of the scope of the claims, so that even if the Board had found positively for the proprietor with respect to inventive step it would probably still have revoked the patent, cf. A 101(3)(b).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

A nice summary in French can be found on Laurent Teyssèdres’s blog.

In conclusion, Laurent offers good advice: 

“Be careful not to forget to file an appropriate description together with each request when you intend not to attend the OPs.”