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Admissibility of Opposition and Procedural Considerations

T 0623/18 - DISTRIBUTED TO BOARD CHAIRMEN

· IntellectualProperty,PatentLaw,EPO,PatentOpposition,EPCProcedures

Introduction

The Technical Board of Appeal 3.5.06 of the European Patent Office (EPO) issued its decision in case T 0623/18, involving European patent No. 2790101. The decision primarily revolved around the admissibility of the opposition filed by Siemens AG against ABB Schweiz AG's patent concerning a system and method for automated virtual commissioning of an industrial automation system. This decision offers significant insights into the procedural aspects of patent oppositions under the European Patent Convention (EPC).

Summary of the Invention

The patent in question, EP 2790101, relates to a system and method designed for the automated virtual commissioning of an industrial automation system. This invention aims to simulate the operation of an industrial automation system before its physical implementation, enabling early detection and resolution of issues that could arise during actual commissioning. The system leverages a combination of virtual models and real-time data to facilitate a smoother transition from the virtual environment to the physical implementation.

Summary of the Decision

Arguments by the Opponent (Siemens AG)

Siemens AG filed an opposition against the patent, citing lack of novelty (Article 54 EPC) and inventive step (Article 56 EPC), as well as insufficient disclosure (Article 100(b) EPC). They argued that the combination of prior art documents D6A, D6B, D6C, and D7 disclosed all features of the claimed invention, thus rendering it non-novel. Additionally, Siemens contended that the patent's description was insufficient for a skilled person to carry out the invention, particularly concerning the "remote data processing server" mentioned in claim 1.

Arguments by the Patentee (ABB Schweiz AG)

ABB Schweiz AG responded by challenging the admissibility of the opposition, arguing that Siemens AG had failed to substantiate their grounds of opposition adequately. Specifically, they contended that the opponent's arguments were either unclear or based on issues of clarity, which are not valid grounds for opposition under the EPC.

Decision of the Board of Appeal

The Board of Appeal found the opposition admissible, contrary to the opposition division's earlier decision, which had rejected it as inadmissible. The Board noted that the notice of opposition filed by Siemens AG fulfilled the formal requirements set out in Rule 76(2)(c) EPC, despite some deficiencies in argumentation. The Board emphasized that substantive issues, such as the relevance of the opponent's arguments, should be addressed during the examination of the opposition rather than at the stage of determining admissibility.

The Board decided to remit the case to the opposition division for further prosecution, thus allowing the examination of the substantive merits of the opposition.

Lessons Learned

Admissibility vs. Substantive Examination:

This decision underscores the importance of distinguishing between the admissibility of an opposition and its substantive examination. Even if the opponent's arguments may seem insufficiently detailed, this alone does not necessarily render the opposition inadmissible.

  1. Properly Framing Opposition Grounds: Opponents must ensure that their grounds of opposition are clearly and adequately substantiated, as this forms the basis for further examination. However, opponents should also be aware that deficiencies in argumentation may not always lead to inadmissibility if the overall notice of opposition meets the EPC's formal requirements.
  2. Role of the Board of Appeal: The Board of Appeal plays a critical role in reviewing decisions of the opposition division, particularly in cases where procedural errors may have occurred. This decision demonstrates the Board's willingness to correct such errors by remitting cases for further prosecution.

 

Contact

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Legal Disclaimer

The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.