This is an appeal of the opponent against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.
In its statement of grounds of appeal, the opponent requested the Board to admit document A3, which the OD had refused to admit. About two months before the oral proceedings (OPs) before the Board, it also requested the admission of document D12.
The board decided not to admit these documents into the proceedings:
[2.1] In the decision under appeal the OD decided not to admit the document A3 into the procedure, this document having been filed by the […] opponent only in his letter of 10th March 2008 (in reply to the summons to OPs).
[2.1.1] The reason for this decision was that the document was not prima facie relevant, in particular because the element 11a as depicted in Fig. 1 of that document was part of the bus bar 11, so could not be considered to correspond to the conductive band of the claims of the patent in suit, and because this had the consequence that the region between that part of the bus bar and the coating layer 15 could not be considered to correspond to the data transmission window of the claims of the patent in suit.
[2.1.2] During the appeal procedure the [opponent] has merely repeated that in his opinion the element 11a of A3 could be considered as a conductive band within the meaning of the patent, and that the document should be admitted into the procedure because it is prima facie relevant, in particular because it was cited in the patent in suit.
[2.1.3] The board does not consider that the fact that a document is mentioned in the patent in suit means that it can automatically be considered to be prima facie relevant. Given that the remainder of the [opponent’s] comments in this context are only repetitions of his submissions before the OD, the board sees no reason to go against the decision of the division not to admit document A3 into the procedure. Therefore the objections of lack of novelty and lack of inventive step raised by the [opponent] on the basis of this document during the procedure before the OD and maintained in the appeal procedure are of no relevance for the present decision.
[2.2] With his letter of 14th September 2012 the [opponent] filed, in support of his objection under A 100(b), modelling results to which he gave the document number D12. The [patent proprietor] requested that this document not be admitted into the procedure.
[2.2.1] In his letter of 14th September 2012 the [opponent] stated that the results presented in this document had been produced on 18th January 2010, but that they had not been filed at that stage of the procedure because of concerns that they might provide technical information which would have been of use to competitors. In the meantime these concerns had become less significant, in which respect the [opponent] referred to the commercialisation by them of a product under the name “ClimaCoat” from December 2011.
[2.2.2] The board is of the opinion that a purely commercial consideration as indicated above cannot represent a valid reason for not complying with the requirement of Article 12(2) RPBA that the grounds of appeal should contain the [opponent’s] complete case. The board notes also that the filing of these modelling results only slightly more than two months before the OPs, and not (for instance) sooner after the start of commercialisation of the [opponent’s] product, gave the [patent proprietor] little time to carry out modelling in response to these submissions. The board also agrees with the [patent proprietor] that it should have been possible for the [opponent] to select parameters for the modelling which were unrelated to their product so as to avoid the competition issues. The board therefore considers it appropriate to make use of its discretion under Article 13(1) and (3) RPBA to not admit document D12 into the procedure.
The Board then dismissed the objection that the invention was insufficiently disclosed and went on to discuss compliance with A 100(c) and A 123(2):
[4.1] The [opponent] has objected that the figures of the patent as granted have no basis in the application as originally filed, and has also objected to the amendment to the scale of Fig. 1 which was carried out by the [patent proprietor] (proprietor) during the procedure before the OD (i.e. in the amended figure filed with the letter of 18th March 2008).
[4.2] The figures of the patent as granted were filed by the then applicant with letter of 14th January 2004, in response to an objection raised by the examiner relating to the quality of the figures then on file. In order to examine whether these figures meet the requirements of A 123(2), it is first necessary to establish which figures they should be compared with. In this context the board notes that in addition to the figures as granted, in which the different temperature ranges are indicated in black and white by different patterns of shading, hatching etc., a number of other versions of the figures are presently on file:
(a) the figures of the published international application WO 00/72635, which are also in black and white, but in which the temperatures ranges are indicated by different shades of grey;
(b) a set of colour figures which were filed with the proprietor’s response to the grounds of opposition (letter dated 31st March 2006); and
(c) a further set of colour figures filed with the [patent proprietor’s] letter of 18th March 2009.
[4.3] The [opponent] has disputed that the figures were originally filed in colour. In this context the board notes that the letter from the EPO formalities officer which accompanied the [patent proprietor’s] submission of 18th March 2009 indicates that the colour figures annexed to that letter were as originally filed, that the board’s own internal enquiries have confirmed that this was the case, and that the description of the application relating to Fig. 1 states that it is in colour (see page 2, lines 11 and 12). The board therefore sees no reason to doubt the [patent proprietor’s] statements that the figures were originally filed in colour, in particular the statement in section I.2 of the proprietor’s letter of 31st March 2006 confirming that the colour drawings filed with that letter were a copy of the drawings as filed. As noted by the [patent proprietor], this letter was signed by Guy Farmer, one of the European Patent Attorneys who also signed the cover letter of the original international application […].
[4.3.1] The [opponent’s] argument that the word “colour” in the application could refer to shades of grey in a black and white figure is not found convincing, because in the view of the board that does not represent the normal meaning of this word. Concerning the apparent discrepancy between the date on the figures filed with the [patent proprietor’s] letter of 18th March 2009 and the filing date of the application, see paragraph [4.5.1(ii)] below.
[4.3.2] The [opponent] has also argued that since the objection to the quality of the drawings in section VII. 2 of the International Preliminary Examination Report (IPER) stated that they were “too dark”, this had to be understood as meaning that they were in black and white, not in colour. The board understands however that this reflects the internal practice of the EPO to provide the examiner not with the original documents of the application, but instead with a black and white copy. Thus, the expression “too dark” used by the examiner could be understood as meaning that the black and white copy of the figures in his file was of such limited contrast that the different areas in those figures could not be distinguished from one another.
[4.3.3] Hence, taking into account the evidence on file as indicated in paragraph 4.3 above, the board concludes that the use of the expression “too dark” in the IPER is not evidence that the originally filed figures were in black and white.
[4.4] The [opponent] has moreover argued that even if the figures were originally filed by the then applicant in colour, these cannot form the basis for the comparison required under A 123(2) for two reasons.
[4.4.1] The [opponent] has firstly argued that the colour figures could not be considered as being the originally filed figures of the application because the filing of colour figures is not allowed under either the PCT or the EPC. In this respect he has referred to an excerpt from the PCT Newsletter of March 2011 […] and to the Guidelines for Examination in the EPO, sections A-X, 1.2 and 7.1 (this numbering reflecting the version of the Guidelines which was in force at the time of filing the application, not the current version, in which these provisions appear essentially unchanged in chapter A-IX).
[4.4.2] The board does not find this argumentation convincing, because according to both the PCT and the EPC the filing of colour figures in the original application is merely a formal deficiency which can be remedied on invitation. Specifically, under the PCT this is a formal deficiency under Article 14(1)(a)(v) in combination with Rule 11.13(a), which can be remedied upon invitation under Article 14(1)(b). Similarly under EPC 1973 (as in force at the time of filing of the original application and of the replacement figures) this was a formal deficiency under R 32(2)(a) in combination with R 40, which could be remedied upon invitation under R 41.
[4.4.3] The second reason given by the [opponent] as to why the colour figures should not form the basis of the comparison required under A 123(2) is based on the argument that no information concerning colour figures is available to the public. Specifically the [opponent] has noted that the European Patent Register and the electronic file to which it is linked contain only black and white figures, and contain no indication that the figures were originally filed in colour, let alone information as to what the content of those figures was. On this basis the [opponent] argued that the rights of third parties can only be satisfied if it is assumed that the originally filed figures are those available to the public, i.e. the black and white figures of the published application.
[4.4.4] However, the board cannot agree with this conclusion, because A 123(2) refers explicitly to “the content of the application as filed”, an expression which leaves no room for interpretation. Thus, if the figures of the originally filed application were in colour, it is these figures which must be used as the basis for determining whether subsequently filed figures contain added subject-matter within the meaning of that Article.
[4.5] The board thus concludes that in order to assess whether the redrawn figures as in the [patent proprietor’s] main request contain added subject-matter within the meaning of A 123(2) it is necessary to compare their content with that of the (colour) figures as originally filed. However, owing to the exceptional circumstances of the present case, no original copy of those figures is available to the board. It is therefore necessary to establish what evidence concerning their content is available.
[4.5.1] Before considering that evidence in detail, the board considers it to be useful to establish the relevant procedures on filing of a PCT application, since this is pertinent to the provenance of the different sets of figures listed as (a), (b) and (c) in paragraph 4.2 above (which designations will be used in the remainder of this discussion). The regulations covering the filing of a PCT application at the date of the filing required that three copies of the application documents be filed. That this was done in the present case is apparent from the copy of the covering letter dated 27th April 2000 filed by the [patent proprietor] […]. These three copies are then processed as follows:
(i) one is retained by the PCT Receiving Office, in this case the EPO. Enquiries carried out both by the [patent proprietor] and by the board with the relevant section of the EPO have established that this copy is no longer available.
(ii) the second copy of the application is forwarded to the International Search Authority (ISA), in this case also the EPO. The board is satisfied on the basis of its internal enquiries that the copy of the figures which was sent by the EPO formalities officer to the [patent proprietor] with letter dated 5th March 2009, a copy of which was then filed by the [patent proprietor] with his letter of 18th March 2009, is a copy of that set of figures. The board is also satisfied that the date stamped on those figures (29th May 2000) is the date on which they were received, as part of the “search copy” by the section of the EPO acting as ISA from the section of the EPO acting as Receiving Office, thus explaining the discrepancy between this date and the recorded filing date of the application (1st May 2000), and that both this date stamp and the file number on these figures were applied by the EPO.
(iii) the third copy is forwarded to the International Bureau (IB), and therefore it can be assumed that this copy formed the basis of international publication WO 00/72635.
[4.5.2] It is thus apparent that each of the three sets of figures identified in paragraph 4.2 above is a copy of figures related to the originally filed figures, the set (a) in the international publication being a black and white copy of the figures forwarded to the IB, the set (b) filed by the [patent proprietor] (proprietor) with his letter of 31st March 2006 being a copy derived from the figures used for the original filing, and the set (c) filed by the [opponent] with his letter of 18th March 2009 being a copy derived from the figures forwarded to the ISA. Given that any copying process can be assumed to result in a loss of information to a greater or lesser extent, the board considers it to be appropriate to compare these three sets of figures to discover whether it can be determined consistently that one of these sets contains the most information, and that the other two sets contain only information contained in that one set, on which basis it would then be logical to assume that the originally filed figures contained at least the information in that one set.
[4.5.3] Such a comparison was carried out in detail during the OPs before the board. The result of this comparison is that sets (a) and (c) contain different, and not completely overlapping amounts of information, but that all of the information in each of these two sets is present in set (b). For example, considering the areas with temperature between 10 and 20°C in the bottom corners of Fig. 1, these can be seen very clearly in set (b), reasonably clearly in set (a), and barely at all in set (c). On the other hand the area with temperature between 20 and 30°C at the top of the same figure, which can also be seen very clearly in set (b), can also be seen reasonably clearly in set (c) but is barely discernible in set (a). On this basis it could be concluded that set (b) contains the most information. A similar conclusion can be reached on the basis of the boundaries at 30°C and 40°C towards the top corners of Fig. 2, the former of which can be seen in set (a), the latter in set (c), and both in set (b). Consideration of the other figures did not lead to any information being identified which was present in either or both of sets (a) and (c) but which was not present in set (b). The board thus concludes that in order to assess whether the redrawn figures in the patent as maintained by the OD contain subject-matter extending beyond the content of the patent as filed, it would suffice if it could be determined that these figures contain no information extending beyond the content of the figures designated as set (b). The board also notes that this conclusion is not rendered invalid by the possibility that some teaching in that set of figures cannot be unambiguously derived from either set (a) or set (c), since it cannot be excluded that certain information has been lost during the copying process for both of these sets.
[4.5.4] No difference in teaching between the figures designated as set (b) and the figures of the patent as maintained by the OD (i.e. the patent according to the [patent proprietor’s] main request) has been identified. The only difference in appearance is in the scale of Fig. 1, which was amended during the procedure before the OD (amended figure filed with proprietor’s letter of 11th March 2008). From a comparison of the amended figure with the colour figure of set (b) it is clear that the only difference is the omission from the scale of those blocks corresponding to temperature ranges which do not appear in the depicted modelling results. This omission thus does not result in any change to the technical teaching of the figure. Therefore the board concludes that the figures of the patent according to the [patent proprietor’s] main request do not contravene A 123(2).
[4.5.5] The [opponent] has argued that the OD committed an error in deciding to allow the amendment to the scale of Fig. 1 as a correction under R 139. The board agrees that the OD should not have allowed this amendment under that rule, since the figures referred to in the decision to grant form an integral part of that decision. However, the board also considers that this erroneous choice of the legal basis has no substantive impact on the final decision taken by the OD because, as indicated above, the modification of the scale of the figure does not contravene A 123(2). Moreover, the board regards it as an amendment which is admissible in opposition proceedings pursuant to R 80.
The Board also found the remaining A 123(2) objections not to be persuasive and decided that the main request could be allowed. It then dealt with objections under R 106 filed by the opponent:
[10.1] During the course of the OPs of 16th November 2012 the [opponent] filed two objections under R 106 […].
[10.2] According to the [opponent’s] first objection under R 106 the board had committed a substantial procedural violation in “deciding” that the figures of the application as originally filed were those filed by the [patent proprietor] (then opponent) with the letter of 31st March 2006.
[10.2.1] As a preliminary point, the board emphasises that no “decision” as such was taken by the board concerning that specific question, contrary to the assumption obviously underlying the [opponent’s] objection. Rather, the board expressed its opinion without even having closed the debate on this issue.
[10.2.2] The board understands the objection in the sense that the essence of the [opponent’s] objection to the procedure lies in the assertion that the [opponent] was taken by surprise by the board’s “decision”. In this respect, the board considers it important to note that the question as to whether the figures of the application as originally filed were in colour or black and white had been discussed extensively in the parties’ written submissions during the appeal procedure, and that the board itself had pointed out in the communication accompanying the summons to OPs […] that clarification of this issue was necessary before a decision could be reached on the [opponent’s] objections under A 100(c). Thus, the fact that there was a need to reach a conclusion on this topic during the OPs must have been clear to the parties.
[10.2.3] When discussing this objection under R 106 during the OPs it became apparent to the board that a misunderstanding had arisen, in particular with respect to the fact that the opinion expressed by the board before the filing of the objection was not that these figures were those originally filed, but rather that these were considered as providing the most reliable evidence regarding the content of the originally filed figures. Therefore, in order to remedy this obvious misunderstanding, during the OPs the board further explained the previously expressed opinion, and in particular the general purpose of the assessment of the evidence on file. In view of these considerations, the board gave the parties a further opportunity to discuss the issue of what was the content of the originally filed drawings and to present their evaluation of the evidence on file. The subsequent discussion dealt in particular with the topics summarised in paragraphs [4.5.2-3] above. Following this discussion the board indicated that it considered that the procedural objections raised by the [opponent] in his first objection under R 106 had been overcome.
[10.3] According to the [opponent’s] second objection under R 106 the board had committed a substantial procedural violation in deciding on the issue of sufficiency of disclosure before deciding on the question as to which figures constituted those of the application as filed.
[10.3.1] The board decided to dismiss this objection, because the decision concerning sufficiency of disclosure within the meaning of A 100(b) concerned the patent, not the application, so that the only figures which were of relevance to that decision were those of the patent as granted and Fig. 1 as amended during the procedure before the OD. The question as to which figures were filed as part of the original application was relevant for the ground of opposition under A 100(c), but not for the question of sufficiency of disclosure of the patent, so that the fact that the decision on the latter question was reached only after that on the former cannot constitute a fundamental procedural defect within the meaning of A 112a.
[10.3.2] In addition, the board notes that it came to the conclusion that the figures of the [patent proprietor’s] main request do not contravene A 123(2) (see point [4.5.4] above), so that the question as to the order in which these two grounds were discussed could not in any case have had any impact on the issue of sufficiency of disclosure.
[10.3.3] The board notes also that at the beginning of the OPs of 16th November 2012 both parties had agreed to the suggestion of the board to discuss the issue of sufficiency of disclosure before the other substantive issues.
NB: The Board provided the following headnotes:
1. In some circumstances it can be appropriate to respond to an objection raised under R 106 during OPs before a board of appeal by (re-)opening the discussion of the issue in question (see point [10.2] of the reasons).
2. The wish to avoid giving commercially valuable information to competitors is not necessarily a valid reason for not complying with the requirement of Article 12(2) RPBA (see point [2.2] of the reasons).
3. If drawings are originally filed in colour at the date of filing of an application, then the technical content of these original colour drawings should be determined taking into account the available evidence when establishing the content of the application as filed for the purpose of examining compliance of amendments with A 123(2) (see points [4.4-5] of the reasons).
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