Decision of 29.06.2022 by an opposition division of the European patent office
Genip Oy represented the proprietor of European patent EP3438535 in opposition proceedings before the European patent office. The opponent had referred, among other documents, to a conference publication, on which on p. 81 some elements used in the boiler construction of a power plant while on p. 85-86 some other elements used in the boiler construction of a power plant were disclosed. The opposition division concluded that the conference publication does not contain a clear and unambiguous link between the different elements. The opposition was rejected. The decision is not yet final on 27.07.2022.
In our view, when preparing submissions for opposition, appeal or invalidation proceedings, it is good practice to study the chosen publications critically with regard to the aspect whether the features disclosed in different parts of the publication have actually been disclosed to be parts of the same embodiment.
Decision (T1454/17) of the technical appeal board of the European Patent Office 29.03.2022
Genip Oy represented the proprietor/respondent in the opposition appeal proceedings before a technical appeal board of the European patent office.
The appellant had filed a written submission as late as in October 2021. The submission contained objections that the appellant had not presented during the prior proceedings. The technical appeal board ruled that even though the objection relates to the documents already discussed in the proceedings to interpret the same features of patent claims, but in an alternative line of argumentation, the submitting of the objection equals to a new grounds of appeal. Because the appellant failed to present cogent grounds for presenting the reasons after filing the statement setting the grounds for appeal, the appeal board refused to admit the objection into the proceedings. The appeal board admitted another part of the submission, finding it as refinement of the line of argument presented in the statement setting the grounds of appeal.
In our view, especially with regard to important patents, it is worth preparing any filing documents for opposition proceedings and possible appeal with so much care that there will be no need to try to add further objections afterwards. Any potential need of presenting new objections should be analyzed carefully and it is also important to explain the reasons, why it was not possible to present the objection earlier.