tag:blogger.com,1999:blog-5574479.post2654109435181145286..comments2024-03-29T12:23:31.959+00:00Comments on The IPKat: An inappropriate use of discretion leads to ping-pong (T0688/16)Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger2125tag:blogger.com,1999:blog-5574479.post-6737381131042300952019-09-16T07:36:25.249+01:002019-09-16T07:36:25.249+01:00Re. Opposition Boards - duly corrected!Re. Opposition Boards - duly corrected!Rose Hugheshttps://www.blogger.com/profile/04232611463781544102noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-84478075515482993002019-09-15T22:44:42.552+01:002019-09-15T22:44:42.552+01:00The present decision is correct and well understan...The present decision is correct and well understandable. Please allow a comment: at the EPO there are no Opposition Boards but Opposition Divisions. <br /><br />There is a long line of case law according to which requests filed by the proprietor within the time limit under R 116(1) cannot be considered as late filed as long as an explanation is provided as to the merits and/or purpose of these requests.<br /><br />Waiting Oral Proceedings to give explanations about such requests, even if they are submitted within the prescribed time limit, means that they are in principle not admissible. The opposing party should not be taken by surprise.<br /><br />If a late document is declared admissible at the beginning or during the oral proceedings, then the proprietor has the right to defend himself and file requests once the document is actually admitted into the procedure. <br /><br />The same applies if, due to the discussions during OP, the opposition division goes away from the provisional opinion given in the annex to the summons. Here again, the proprietor must be given a chance to defend himself. This rule was violated in this case. Hence the remittal after the BA had decided on novelty. <br /><br />It is always better to file auxiliary requests before an OD, as there is no guarantee that the OD's decision will be confirmed by the BA. In the case at stake the proprietor had however no reason to file auxiliary requests as the provisional opinion was favourable to him. <br /><br />As far as Art 11 NRPCR is concerned, it is clear that this rule has been forced upon the boards by the judicial members of the Board of Appeal Committee. <br /><br />Those having been at the conference on December 5th 2018, will certainly remember the reason given by the member of the German Federal Court (BGH) sitting on the BOAC – we do not have technical members, you have, and hence there is no reason for the BA to remit. Mr Birss nodded his approval. It is clear that the members of the BA, other than those sitting on the drafting committee, are not happy with this rule, and it will be interesting to see how it will be applied. <br /><br />Remitals cannot be limited to substantial procedural violations. There are other cases when a remittal is unavoidable. If a division of first instance considers that a claim offends Art 123(2), it is not possible to compare it with any prior art, as this claim has no right to exist. <br /><br />During the same conference voices have been heard claiming that a division should decide on all points, so that an appeal can be decided on all the possible points. If in case of added matter a division would decide, what would be the effective date of the claim? Should the division apply the case law of the BGH, and ignore the added features when deciding on novelty and inventive step? All solutions of this kind would simply negate the decisions of the EBA with respect to added matter. <br /><br />In case of lack of sufficiency of the disclosure the same reasoning applies mutatis mutandis. Here it would be welcome that the EBA decides that in the absence of a measurable parameter it is a question of clarity or a question of sufficiency. Depending which BA is in charge the proprietor and opponents are like in a lottery. That is not good. <br /><br />I cannot speak in the name of the BA, but I do not feel wrong when I say that the new Art 11 would not have changed the position of the BA. It should not be forgotten that the BA have to decide on decisions, not on obiter dicta or opinions brought in the decisions by divisions of first instance. <br /><br />That in UK such a pot-pourri of decisions/obiter dicta/opinions is acceptable, does not mean it should become the rule on the continent. This is the more so, since ED and OD are taking an administrative decision, which can be checked by a judicial authority, i.e. the BA. Attentive Observernoreply@blogger.com