Friday, 15 January 2010

T 1335/08 – Second Thoughts Not Welcome

In this case the Opposition Division (OD) maintained the patent in amended form. Only the opponent filed an appeal. In its preliminary opinion, the Board expressed the opinion that the claim as maintained by the OD contravened A 123(2). On October 21, 2009, he patentee then filed several amended sets of claims in replacement of the claims on file. On November 19, 2009,  two weeks before the oral proceedings (OPs) the patentee changed its mind and announced that the claims as maintained by the OD were to form auxiliary request I.

The present requests go back to the previous wording of claim 1 including the contested feature. Even if they were already filed firstly with the reply to the statement of grounds of appeal and then as auxiliary requests by telefax dated 19 November 2009, the present requests were filed in replacement of the requests filed with letter dated 21 October 2009 and thus represent a further amendment to the respondent’s case. As such, pursuant to Article 13(1) RPBA, the present requests may be admitted and considered at the Board’s discretion. [5]

Article 13(1) RPBA makes clear that in exercising that discretion, the Board must consider a range of factors including inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. [6]

The respondent submitted that the objection under A 123(2) related to a feature already present in claim 1 as granted and that, therefore, it was an objection under A 100(c). Since A 100(c) was not one of the grounds of opposition invoked by the opponent on filing its notice of opposition, and since it had not been properly discussed at the OPs before the OD, this objection had to be excluded from the appeal proceedings.

This is a fresh issue that was raised for the first time during the oral proceedings before the Board. It would need to be discussed if the respondent’s requests were admitted. The discussion of this issue would lengthen the proceedings, since the appellant could not be expected to be prepared for it. Moreover, this issue seems prima facie unfounded. In particular, in all requests claim 1 does not merely consist of a combination of granted claims but also includes features taken from the description. The contested feature is thus presented in a combination which is different from the combination in which it was presented in the claims as granted, and which is objectionable under A 123(2). Accordingly, the respondent’s issue being prima facie unfounded, admitting the requests into the proceedings would adversely affect procedural economy. [7]

As explained in the communication annexed to the summons to OPs, the contested feature, present in claim 1 of all requests, according to which the linkage system moves the gripping elements and the lock catch draws its actuating force from the drive for moving the doors, contains subject-matter extending beyond the content of the application as filed, contrary to the requirements of A 123(2).

The arguments submitted by the respondent during the OPs did not convince the Board of the contrary. The specific wording of the contested feature cannot be found in the description of the application as filed. More importantly, claim 1 includes the possibility, which is not disclosed in the application as filed, that the force for actuating the levers for releasing the lock catch is directly drawn from the drive moving the doors. In fact, this was not contested by the respondent. The respondent essentially submitted that claim 1 should not be read broadly such as to include this possibility. However, in the absence of clear limitations in the claim itself, the wording of the claim cannot be read as being limited by features which are only present in the embodiment disclosed in the description.

The respondent further submitted that the contested feature was not essential for the invention. Whether this feature is essential or not is however irrelevant for assessing whether, in the present case, it introduces subject-matter extending beyond the content of the application as filed. In fact, the contested feature undisputedly provides a technical information. This technical information, at least in the breadth in accordance with the wording of claim 1, cannot be found in the application as filed.

Therefore, the respondent’s requests not being clearly allowable, admitting them into the proceedings would seriously adversely affect procedural economy. [8]

Thus, having regard for the current state of the proceedings and for reasons of procedural economy, the Board exercised its discretion under Article 13(1) RPBA not to admit the respondent’s requests into the proceedings. [9]

In the absence of any admissible request submitted or agreed by the appellant, the patent has to be revoked. [10] 

To read the whole decision, click here.