T 671/08 – Bits & Pieces

This decision, although not a major one, contains some nice bits and pieces.

Both parties appealed against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Admissibility of the appeal (A 108 and R 99).

[1.1] The appellant proprietor argued that the appeal by the appellant opponent was inadmissible, since the notice and the statement of grounds of appeal were filed on a letterhead of Saint-Gobain Recherche and merely indicated “par la présente nous formons un recours” (“hereby we file an appeal”) and “notre mémoire de recours” (“our statement of grounds of appeal”), respectively (emphasis added by the board). However, according to the first page of the notice of opposition, Saint-Gobain Recherche was not the opponent, but Saint-Gobain Glass France. Saint-Gobain Recherche was not and has never been a party to the proceedings and thus was not entitled to appeal (A 107 EPC 1973).

[1.2] The notice of opposition however clearly identifies Saint-Gobain Glass France as the opponent and Mr. J. as its professional representative having Saint-Gobain Recherche as professional address (parts III. and IV. of form 2300.1 received by the EPO on 11 July 2005).

[1.3] In the view of the board, the filing of the notice and statement of grounds of appeal on a letterhead porting his professional address does not shed doubts on whose name the appeal was filed, i.e. Saint-Gobain France Glass. This fact is not affected by the use of the unspecific identifications “nous” and “notre … recours”.

The Board decides for these reasons that the appeal of the appellant opponent is admissible.

Admissibility of the main request and

remittal to the department of first instance on that basis

[2.1] The appellant proprietor’s main request is to set aside the decision under appeal and to maintain the patent as granted.

[2.2] The appellant opponent requested that this request not be admitted, since the patent as granted had not been defended by the proprietor in the proceedings before the OD. The proprietor’s main request during the opposition proceedings was to maintain the patent in a more restricted version, namely the claims according to the 1^st auxiliary request in appeal. The board would thus decide on a request that had never been discussed before the OD. This was contrary to the principle that only what has been decided on first instance could be reviewed in appeal. In several decisions the boards of appeal had refused to admit requests having a scope wider than the requests discussed before the department of first instance.

[2.3] It is the discretionary power of the boards of appeal not to admit requests that could have been presented or were not admitted in the first instance proceedings (Article 12(4) RPBA). The boards when applying this discretionary power take into account all the relevant facts of the case. It contradicts the nature of a discretionary power that a given course of action be pre-established irrespective of the circumstances of the case. The board therefore considers that there is no absolute right of the patent proprietor to revert in appeal to the patent as granted nor that he is in principle hindered from doing so. There will be cases, as the present case shows, in which the admission of such a request poses no additional work and other cases in which such a request may even constitute an abuse of the proceedings. It follows thus that if such a request is submitted in appeal the board has to exercise its discretion under Article 12(4) RPBA and decide whether to admit or not such a request (see the discussion on this topic in T 28/10 [3.2-3], in which also the previous case law of the boards of appeal is discussed).

[2.4] The present main request differs from the proprietor’s main request at first instance (which is identical to the 1st auxiliary request on appeal) essentially by the absence of the sole characterizing feature. This feature however makes explicit what previously was implicit, namely that the purpose of a data transmission window is to allow the passage of electromagnetic waves (data) through that portion of glazing. The board thus considers this feature as being implicitly contained in the concept of a data transmission window.

[2.5] The board considers moreover that the appellant opponent cannot be unprepared to deal with the claims of the granted patent, since it was against these claims that he filed the opposition. Thus all the initial arguments, facts and evidence submitted with the grounds for opposition should speak against these claims. The appellant proprietor further filed his main request with the statement of grounds of appeal, i.e. at the earliest possible circumstance.

Thus under the present circumstances, the board considers that by admitting the main request the proceedings are not delayed nor the other party can be considered to be taken by surprise.

[2.6] The appellant opponent further argued that it was not clear what exactly the proprietor’s main request was, since the appellant proprietor had submitted amended description pages 1a and 2a which were marked “For all requests”, i.e. apparently also for the main request. This was however incompatible with the requested maintenance as granted.

[2.7] The board is not persuaded that the appellant proprietor’s main request was not clear at any moment. The request to maintain the patent as granted means to maintain it with the granted description, claims and drawings. The remark “for all requests” found on description pages 1a and 2a submitted with the statement of grounds of appeal seems to contradict this request. However, this contradiction is lifted by reading carefully the proprietor’s statement of grounds of appeal, since for all auxiliary requests the pages forming the description are individually identified, but not so for the main request. This clearly implies that the main request is based on the patent documents as granted with no amended description pages, i.e. what one would expect from a request to maintain the patent as granted. The board has thus no doubts on which patent documents the appellant proprietor requested maintenance of the patent for each one of the main or 1st to 4th auxiliary requests.

[2.8] The appellant opponent further requested that the case be remitted to the OD in order not to loose (sic) two instances in case that the board admitted the main request into the proceedings.

[2.9] Remission to the department of first instance is explicitly foreseen in Article 11 RPBA only if fundamental deficiencies are apparent in the first instance proceedings unless special reasons prevent from doing so. Thus even in case of a fundamental deficiency the discretion of the board is still required, with the emphasis being made however that remittal is the normal course of action in such a situation. This implies that in cases in which no fundamental deficiency is apparent, as in the present case, remittal of the case to the department of first instance is a discretionary issue which lies within the sole competence of the board.

[2.10] The OD found the main request not allowable, since the windscreen of claims 1 and 2 lacked novelty over A1. It is thus unlikely that the OD would have a different view on a claim having allegedly a larger scope, since the removal of the characterizing feature merely renders implicit what has been previously made explicit. Remitting the case to the OD would thus result in a foreseeable outcome, namely that the present main request be found not allowable for exactly the same reason as before, i.e. lack of novelty over A1. The remittal would thus serve no other purpose than wasting time and resources.

[2.11] The board for these reasons decides to admit the main request into the proceedings and not to allow the appellant opponent’s request to remit the case to the department of first instance on the basis of the main request.

The Board then discussed sufficiency of disclosure and found the invention to be sufficiently disclosed.

The main request and first auxiliary request were found to lack novelty.

The subject-matter of the second auxiliary request was found to be novel, but the Board was not able to take a final decision on inventive step:

[6.4.1] The OD based its assessment of inventive step when discussing the proprietor’s 3rd auxiliary request on a prior art that it identified as A0, which was acknowledged but not identified in the opposed patent in paragraph [0013]. It considered this prior art to be closer to the invention as document A1 and started from A0 as the closest prior art. The OD came to the conclusion that the invention claimed in the proprietor’s 3rd auxiliary request, which corresponds to the appellant proprietor’s 2^nd auxiliary request in appeal, involved an inventive step even when starting from A0 (decision under appeal, reasons E4).

[6.4.2] It is however the established case law of the boards of appeal that it is not allowable to base the assessment of substantive patentability (novelty and inventive step) upon subject-matter not identified as forming part of the state of the art within the meaning of A 54(2) EPC 1973 (cf. Case Law, 6^th ed., 2010, I.C.1.4).

[6.4.3] The appellant proprietor contested at the oral proceedings (OPs) before the board that the unidentified prior art mentioned in the opposed patent at paragraph [0013] was state of the art under A 54(2) EPC 1973.

The board is therefore impeded from considering this unidentified prior art for the assessment of inventive step.

[6.4.4] On the other hand, the board shares the view of the OD that document A1 does not represent a realistic starting point for assessing inventive step. The skilled person would not start from a document disclosing the properties of slot antennas when confronted with the problem of how to transmit data through a heatable windscreen. Document A1 is an accidental disclosure that may be considered when assessing novelty, but not as starting point when assessing inventive step.

[6.4.5] The appellant opponent requested that documents A2 to A12 and D13 be admitted into the proceedings. The appellant proprietor requested not to admit these documents as they were belated.

[6.4.6] The OD decided not to admit documents A2, A3, A5 and A7, since they were belated and prima facie not more relevant than document A1 (reasons, A2). The board sees no reasons to depart from this assessment and the appellant opponent did not argue that the OD exerted their discretionary powers in the wrong way. Documents A4 and A6 were never relied upon neither in the opposition nor in the opposition appeal proceedings.

Documents A8 to A12 were submitted with the statement of grounds of appeal and were thus never considered by the OD. Documents A9, A10 and A11 appear prima facie to correspond at least in part to the prior art mentioned in paragraphs [0012] and [0013] of the opposed patent and would appear thus to represent a realistic starting point for the assessment of inventive step.

The board finds documents A8 and A12 to be less relevant than documents A9 to A11 and thus does not admit documents A8 and A12. As decided under point [4.1.6] of this decision, the board does not admit document D13 as well.

[6.4.7] The board decides for these reasons to admit documents A9, A10 and A11 into the proceedings and to remit the case to the department of first instance for prosecution on the basis of the appellant proprietor’s 2^nd auxiliary request (A 111(2) EPC 1973).

For the sake of completeness, the board wants to emphasize that the other findings in this decision, i.e. the issues of sufficiency of disclosure, added subject-matter, clarity and novelty, are part of the ratio decidendi of this decision and binding on the OD (A 111(2) EPC 1973). These issues have been finally decided by the board and cannot be raised again or contested by the parties.

Apportionment of costs

[7.1] With letter dated 29 December 2011 the appellant opponent raised a new objection under A 100(b) EPC 1973 arguing essentially that even nowadays it was not possible to manufacture an electric conductive coating being sufficiently transparent for a windscreen and having an electric resistance low enough to allow sufficient heating of the windscreen.

[7.2] The objection under A 100(b) EPC 1973 raised in the opposition proceedings was directed at the method of claim 9 of controlling heat dissipation in a windscreen with a transmission window, since the presence of a transmission window disturbed the current flow […]. The objections under A 100(b) EPC 1973 raised in the statement of grounds of appeal relied on the position of the transmission window […] and on the method of controlling heat dissipation in a windscreen with a transmission window […].

[7.3] At first OPs held on 11 January 2012 the appellant proprietor stated that it had been impossible to prepare a proper reply to this new objection under A 100(b) EPC 1973 due to the new year’s festivities. He thus requested adjournment of the OPs and repartition of costs.

[7.4] The board considers the appellant opponent’s objection to be a fundamental one that could not be ignored. This objection of insufficient disclosure is however different from the previously raised objections in the opposition proceedings and in the appellant opponent’s statement of grounds of appeal. It is directed to the impossibility of making an automotive windscreen glazing panel having an electrically heatable solar control coating layer independently from the presence or absence of a transmission window.

[7.5] The fundamental nature of the new objection would hence render any discussions on novelty and inventive step meaningless, had it been left unresolved. This case is thus an exception to the principles set out in Article 13(3) RPBA where amendments to a party’s case should not be admitted into the proceedings when their admission would lead to an adjournment of the OPs. Article 23 RPBA specifies namely that the Rules of Procedure shall be binding on the Boards of Appeal, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention. Not admitting this objection would have gone against the principle of examination of its own motion enshrined in A 114(1) EPC 1973, since A 114(2) EPC 1973, which limits this principle and gives the EPO the discretion to disregard late filed facts or evidence, does not apply to late filed arguments. The appellant opponent’s objection under A 100(b) EPC 1973 is a late filed argument that, in the board’s view, cannot be disregarded without going against the spirit and purpose of the EPC.

[7.6] It was the late filing of this objection that made it impossible for it to be discussed at the first OPs without violating the appellant proprietor’s right to be heard (A 113(1) EPC 1973). It was thus the behaviour of the appellant opponent that made the adjournment of the OPs before the board necessary. The board considers it thus equitable that the appellant opponent bears all the costs incurred by the appellant proprietor in relation to the OPs of 11 January 2012, as requested by the appellant proprietor (A 104(1), Article 16(1)(a) and (2) RPBA).

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