Key points
- I'm not sure what to think of this decision.
- The OD revoked the patent, for insufficient disclosure (Art. 83) of one feature.
- " Oral proceedings before the board were held on 17 December 2024. The final requests of the parties were: - The proprietor (appellant) requested that the patent be maintained on the basis of one of eighteen claim requests: main request (labelled as "auxiliary request 5"), auxiliary request 1 (labelled as "amended auxiliary request 5"), auxiliary requests 11, 23, 29, 34, 40, 45, 51, 56, 62, 67, 73, 78, 84, 89, 95 and 96. The decision under appeal is based on all those claim requests except for auxiliary request 1, which was filed during the oral proceedings before the board."
- Claim 1 as granted specifies two alternatives for one feature 1-E.l This feature is unrelated to the feature causing the Art. 83 issues before the OD. The Board finds one of the two alternatives to lack basis in the application as filed. In AR-1, filed during the oral proceedings, that alternative is deleted.
- The preliminary opinion of the Board was that there was no Art. 83 issue, i.e. that all claim requests complied with Art. 83.
- "the board does not dispute the fact that the deletion of the phrase "or other printed indicia" in claim 1 of the main request amounts to the removal of an alternative from this claim which prima facie overcomes the added-matter objection discussed with the board for the first time during the oral proceedings before it. However, this fact alone likewise does not amount to "exceptional circumstances" which necessarily justify admitting the claim request into the appeal proceedings. Instead, the whole situation of the appeal must be taken into account."
- The proprietor: "The added-matter objection to feature 1-E had not been discussed in the board's preliminary opinion. The board might have noted there (see point 7.2 of the board's communication under Article 15(1) RPBA) that further objections in relation to added subject-matter had been raised during the opposition proceedings. However, since the opposition division had not decided on any of these issues, the board's initial intention had been to remit the case on the basis of the claims of e.g. one of auxiliary requests 5, 11, 23 and 29 without conducting any further examination "
- The Board: "In any case, a patent proprietor should prepare the relevant "fallback positions" for that eventuality as early as possible, in line with the general obligation that its complete appeal case is provided as early as possible (see Article 12(3), first sentence, RPBA; see also e.g. T 614/21, Reasons 3.2). This is particularly true in the present case, as the opponents had raised the relevant objection at an early stage of the appeal proceedings, which the proprietor then attempted to overcome only at the latest possible stage, i.e. during the oral proceedings before the board. Moreover, it cannot be the purpose of a hearing held in appeal proceedings to allow an applicant or proprietor, after having discussed, in writing or orally, multiple (higher-ranking) claim requests, to present yet another amended set of claims in a trial-and-error fashion for finally defining its actual "invention" (see e.g. T 1924/20, Reasons 5.1; T 3258/19, Reasons 1.1.4(b))."
- "If the board were to admit the new claim request, it could settle the appeal immediately by remitting the case to the opposition division for further examination of novelty and inventive step - as initially intended - or it could continue with the examination of those issues in appeal, most likely in writing then due to the parties' need to present or amend their respective cases before the board. Both options would however be contrary to overall procedural economy."
- I'm not entirely sure what the Board here means with 'procedural economy' because it did not intend to consider novelty and inventive step at any rate, i.e. also if the Board would have agreed with the proprietor that the feature had basis in the application as filed.
- "The proprietor could have filed this claim request already during the opposition proceedings, as it constitutes undeniably the safest defence against any possible objection to the presence of "indicia" in the former claims. A remittal would therefore give the proprietor a second opportunity to argue its case before the opposition division, including the possibility of filing even more claim requests if necessary."
- The request is not admitted. The patent is revoked.
- EPO
The link to the decision can be found after the jump.