Monday, 18 January 2010

T 1607/06 – Second Thoughts Not Welcome (Part II)

This decision is another illustration of the more and more severe handling of late amendments of requests by the Boards. Here we come pretty close to a sort of estoppel.

During the oral proceedings (OPs), the patentee filed an auxiliary request Claim 1 of which read:

Circuit for operating an electric motor (11), having an arrangement which provides a signal which is a measure of the speed of an electric motor (11), and having a monitoring arrangement (24) for determining a heightened state of charge of the electric motor, wherein the monitoring arrangement (24) compares a speed differential (ND) between a desired speed value (NSoll) provided by a setpoint device (12) and the actual speed determined from the signal for the actual speed value (NIst) with a prescribed limiting value, and emits an overload signal (25) in the case of overshooting of the limiting value, characterized in that the overload signal (25) is fed to a desired value reducer (13) which lowers the desired speed value (Nsoll) to a limited desired speed value (N’soll) and transmits it to a summing unit (14) for establishing the speed differential (ND) between the limited desired speed value (N’soll) and the actual speed value (NIst), wherein a first timer (26) is provided in the monitoring arrangement (24), which takes account of an acceleration process of the electric motor (11) after a change in the desired speed value (Nsoll) by suppressing the overload signal (25), and wherein a second timer (27) is provided, which emits the overload signal (25) for the time (Taus) prescribed by the second timer (27), and a third timer (28) is provided which prescribes a time (Tein) during which the overload signal (25) is suppressed. 

The features in yellow correspond to claim 1 as granted, the features in red to the additional features of dependent claim 3 as granted, the features in magenta to the additional features of dependent claim 5 as granted, and the features in blue to the additional features of dependent claim 6 as granted. The features in green colour are taken from the auxiliary request as filed before the OPs. This former auxiliary request corresponds to the sum of the features in yellow, red and green.

[…] According to Article 13(2) of the Rules of Proceedings of the Boards of Appeal, amendments of the requests made after the appointment (Anberaumung) of oral proceedings (OPs) shall not be admitted “if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs”. [3.1]

The auxiliary request of the [patent proprietor] was filed toward the end of the OPs (NB : held on October 27, 2009), after discussion of the main request and a short discussion of the auxiliary request then on file. Claim 1 of this new request comprises the features of independent claim 1 as granted together with the features of dependent claims 3, 5 and 6 and corresponds to a combination of the independent claim 1 with the dependent claims 3 and 4 of the former auxiliary request (filed together with the main request). As all the dependent claims that have been referred to only depended from claim 1, this combination of features has not been claimed before during the proceedings and, therefore, raises issues which neither the Board nor the [opponent] could reasonably be expected to deal with during the OPs. [3.2]

The Board points out that the [main and former auxiliary] requests were filed on October 6, 2009, as a reaction to the new prior art filed by the [opponent] on September 16, 2009, which could possibly justify the late filing. However, as the [patent proprietor] had already filed, on September 25, 2009, a request based on claims 1 and 5 as granted (Claim 1 of the then auxiliary request 2) but had withdrawn it on October 6, 2009, the [opponent] had reasons for assuming that there should be no more debate (dass nicht mehr … verhandelt werden sollte) on the features if claim 5 as granted. Having pondered all circumstances, the Board is of the opinion that the auxiliary request filed during the OPs is not to be admitted into the proceedings [3.3] 

The moral of the story: be extremely cautious when filing amended requests and do whatever you can not to exasperate the Board by shilly-shallying.

To read the whole decision (in German), click here.