T 1260/08 – Prima Facie Is Enough

Each of the two opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

On October 17, 2011, the Board summoned the parties to oral proceedings (OPS) to be held on December 20, 2011.

In a letter dated November 18, 2011, opponent 2 raised new grounds of revocation against the patent as maintained by the OD.

The Board would not admit those grounds into the proceedings, for the following reasons:

*** Translation of the French original ***

[2] In its letter of November 18, 2011, opponent 2 argues that the subject-matter of claim 1 as maintained extends beyond the content of the application as filed, and thereby violates A 100(c) EPC 1973. Even if the objection refers to the amendment of claim 1 carried out in the course of the opposition phase, which means that the case law of the Boards of appeal does not prohibit that such an objection be taken into account (see e.g. T 227/88 [3]; T 922/94 [2.2]), the Board nevertheless considers that this objection could most certainly have been filed at an earlier stage of the proceedings. As a matter of fact, as emphasized by the [patent proprietor], not only had this aspect not been mentioned during the opposition phase, but it had not even been raised by [opponent 2] in its statement of grounds of appeal.

Article 12(2) RPBA, however, stipulates that

“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. …”

Therefore, the Board, exercising the discretionary power conferred to it pursuant to article 13 RPBA, and taking into account the fact that the admission of the new ground raised by [opponent 2] would run contrary to the principle of procedural economy to which this article refers, concludes that this ground is inadmissible.

It is true, indeed, as pointed out by [opponent 2] in the course of the OPs, that the Board has the duty to examine of its own motion whether the amendments of a patent in the course of opposition or opposition appeal proceedings comply with the requirements of the EPC. In the course of inter partes proceedings, however, this duty, which is a consequence of A 114(1), is limited to a prima facie examination of the amended documents, i.e. a sort of pre-examination that will lead to a genuine (véritable) examination of the amendments only if the [pre-examination] suggests that these amendments are indeed such that they create a presumption of non-conformity with the requirements defined by the EPC (see T 263/05 [7.15]).

In the present case, the additional feature concerning the bending of the first branch, which has been introduced by the [patent proprietor] during the opposition proceedings, exactly corresponds to a passage found in column 4, lines 52 to 57 of the application as published. The question of whether it is indeed possible to “detach” this effect of the structural feature of fitting (encastrement) of the free end 46 of the first branch 40 – which are indeed associated in the cited passage – belongs to a more substantive examination which clearly exceeds the limits of the prima facie examination that is required under the present circumstances. As a matter of fact, the question raised requires [the Board] to determine to which extent the skilled person would indeed have considered that the proposed geometry was the only one that could be envisaged or whether, to the contrary, he would have understood without further ado that a great number of alternatives were equally suitable.

Finally, the conclusion according to which the introduced feature indeed satisfies, at first sight, the requirements of the EPC, and in particular those of A 123(2), is supported by the fact that neither the OD nor the [opponents] had considered the proposed wording to be problematic when it was introduced. In this respect, the statement of [opponent 2] according to which it had only realized at a very late stage of the appeal proceedings that there was problem related to a possible generalisation of the subject-matter of the application, confirms the non-immediate nature of the objection raised.

The Board concludes that the late filed ground is inadmissible.

The Board finally dismissed the appeals.

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

The file wrapper can be found here.

T 1488/08 – Salami Cut-Off

The opponents filed an appeal against the decision of the Opposition Division (OD) to reject the opposition.

In their written statement setting out the grounds of appeal, the opponents only invoked lack of inventive step under A 100(a). The grounds of lack of novelty and of added subject-matter, which were not substantiated in the statement setting out the grounds of appeal (filed on October 6, 2008), were invoked for the first time with letter of 11 August 2009.

The Board did not admit these grounds:

[2.1] Article 12(2) RPBA stipulates that

“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on”.

This provision provides a cut-off point after which any further submission is ipso facto late and subjected to the discretionary power of the Board. The intended overall effect of this Article is to require the parties to present a complete case at the outset of the proceedings in order to provide the Board with an appeal file containing comprehensive submissions from each party and to prevent procedural tactical abuses.

In the particular circumstance of the present case, the statement of grounds of appeal, after a short introductory paragraph generally referring to earlier submissions made in the first-instance proceedings, contained under the main heading III “Stellungnahme zu der Entscheidung bezüglich der Einspruchsabteilung” only a substantiation in support of lack of inventive step. Specific objections under the grounds of added subject-matter and lack of novelty were not raised.

It is only with the letter dated 11 August 2009 after the reply of the [patent proprietor] that the [opponents], referring to the introductory paragraph of the grounds of appeal, invoked the grounds of extension of subject-matter and lack of novelty.

It is established case law that a statement of grounds which merely generally refers to previous first-instance submissions cannot replace an explicit account of the legal and factual reasons. On the sole basis of the statement of grounds of appeal, the Board had no reason to examine the grounds of inadmissible extension of subject-matter and lack of novelty without making investigations of its own.

The new objections are therefore late-filed and their admissibility is a matter of discretion by the Board pursuant to Article 13(1) RPBA.

[2.2] Article 13(1) RPBA states that

“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised 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”.

In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case. The objection of added subject-matter addressed in the letter dated 11 August 2009 was concerned with the feature of claim 1 “when the seat back is moved to the reclined position, a top edge of the seat back is caused to be moved in a rearward direction” […]. The submission of the [opponents] in this respect focussed on the OD’s assertion in the decision under appeal , according to which the application as originally filed discloses that “the backseat [i.e. seat back] describes the trajectory of an arch”. However, claim 1 is not concerned with the trajectory of the seat back and therefore the [opponents’] objection appears to be misconceived.

This also applies to the further objection under A 100(c) EPC 1973 raised with the letter dated 11 August 2009, which objection was not raised during opposition proceedings, contesting the change of the claimed subject-matter from “a privacy and support apparatus” to “an airplane”. Indeed an airplane is undoubtedly disclosed in the application as filed. As regards the objection of lack of novelty over D2, it was based on an interpretation of claim 1 justified by the alleged added subject-matter (i.e. due to the added subject-matter, claim 1 would cover objects which were not disclosed in the application as filed, and such objects were known from D2). The objection of added subject-matter being unfounded, on a prima facie basis, the same applies to the objection of lack of novelty.

The Board therefore exercised its discretion not to admit the late filed grounds of added subject-matter and lack of novelty for reasons of procedural economy.

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

The file wrapper can be found here.