Key points
- The Board decides not to admit AR-3 in this opposition appeal.
- The proprietor filed these requests in their reply to the appeal of the opponent. The Board in machine translation notes that: "it did not explain which objections the respective changes address and why the changes are suitable for overcoming the objections raised against the main application. Without this information, the requirement of Article 12(3) RPBA that the response to the complaint must contain the respondent's complete complaint is not fulfilled, unless the changes are self-explanatory in this respect. However, this is not the case."
- The amendment is limiting the claimed detergent composition to a solid detergent composition.
- The Board: "solid dishwashing detergents are undisputedly part of the state of the art, so it is not self-explanatory why the inclusion of this feature eliminates the objection of lack of inventive step." (the higher ranking request was rejected as obvious over D12).
- The Board, however, also acknowledges that D12 is about liquid detergents, not about solid detergents. The Board does not explain why it is not self-evident that an amendment that changes the closest prior art is not a suitable amendment in reply to an inventive step attack.
- The Board notes that if these auxiliary requests are admitted, then D25 filed by the opponent also has to be admitted, and inventive step starting from D25 has to be discussed. This would run against procedural economy and would be a further reason for not admitting the auxiliary request under Article 12(4) RPBA.
- The Board does not indicate that the amended claim would be obvious starting from D12. In fact, the need to consider inventive step starting from D25 speaks against this, it seems to me.
- The Board does not indicate that the amended claims should have been submitted in the first instance proceedings under Art. 12(6).
- The Board does not (or at least not explicitly) acknowledge that Art. 12(4) fifth sentence, mandates the consideration of all three of the following factors: "The Board shall exercise its discretion in view of, inter
alia, (i) the
complexity of the amendment, (ii) the suitability of the amendment to address the
issues which led to the decision under appeal, (ii) and the need for
procedural economy." (emphasis and numerals added).
- The Board does not consider, or at least not explicitly, factor (ii), which is the only factor in the list that is by its nature in favour of admitting any amendment (i.e. a high score on factor (ii) is a reason for admitting the amendment, a high score of factors (i) and (iii) is a reason for not admitting the amendment).
- The analysis that the responsive filing of D25 by the opponent can be considered under the factor complexity (factor i) seems in line with Müller and Mulder's Proceedings before the European
Patent Office, 2nd ed., 2020, p.125.
- The OD found the set of claims inventive over D12. So, the OD would not have arrived at the amended set of claims even if AR-3 had been filed before the OD, and the Board would have no reasoning by the OD to review, it seems to me. The filing of AR-3 at the beginning of the appeal, in that sense, does not add procedural complexity, compared to the case where it would have been filed before the OD. Moreover, the OD would have no reason to consider inventive step over D25 for a request that it would not have arrived at had the request been pending in the first instance proceedings (at least the OD would not have to include any reasoning on that point in the decision because the OD considered a higher-ranking request to be allowable). So, introducing D25 in appeal does not seem to increase complexity.
- As I understand it, AR-3 was the highest-ranking request after the set of claims held allowable by the OD.
- The application was filed in 2005 as a PCT application and granted in 2018.
The link to the decision is provided after the jump, as well as (an extract of) the decision text.