In the present decision the Board faces a legal dilemma: is it possible to ignore the order of the requests filed by the patentee ? The question arose because the patentee had filed several requests and only the fourth auxiliary request consisted in maintaining the patent as granted.
[…] The Board is faced with the problem of deciding in which order the various requests should be addressed. 
The Board is aware of an ex parte appeal case (T 1058/04 [1.1]) in which the Board considered it appropriate to treat the [applicant’s] requests in their numerical order and refused a request to modify their order. [3.1]
According to the decision of the Enlarged Board G 9/91 , “The purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits”. The purpose of the appeal procedure is thus to give a decision upon the correctness of a decision of a department of first instance. Similar considerations as to the purpose of the appeal procedure are derivable from R 99(2) which specifies “In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based”. According to the principles governing the admissibility of appeals, there is no justification for examining first a main request containing new claims amended during the appeal procedure, before examining the correctness of the decision refusing the patent as granted when, as in the present case, the correctness of that decision is still contested in a lower-ranking auxiliary request. [3.2]
The Board is mindful of the fact that the appeal procedure is to be considered as a judicial procedure and that general principles of court procedure, such as the principle of party disposition (see G 8/91 [11.1]), apply to the appeals. This principle was also applied in the decision G 2/91 , which held that “Any party to first-instance proceedings who is adversely affected by a decision has the right to file an appeal with his own request and submissions and his own statement of grounds and thus to determine the further course of the proceedings”. In the present case, applying this principle to the order of the requests of the appellant proprietor might be inconsistent with the purpose of the appeal procedure inter partes as expressed in the decision G 9/91. Moreover, examining new requests in appeal, when the appellant proprietor also requests examination of the correctness of the first instance decision as a lower-ranking request, would effectively reduce the appeal procedure to a simple continuation of the first instance proceedings, although it is apparent from the general logic of the EPC, that the appeal proceedings are wholly separate and independent from the proceedings at first instance. [3.3]
In accordance with A 113(2), the EPO shall examine, and decide upon, the EP only in the text submitted to it, or agreed, by the proprietor of the patent. It has been established in Legal Advice N° 15/05 (rev.2) [1.4 and 2.3] as well as in several decisions of the Boards that in the case of main and auxiliary requests from the applicant or proprietor in first instance examination and opposition proceedings, the EPO is bound to the order of these requests (see e.g. T 488/94, T 169/96 and T 345/98). However, this principle does not necessarily apply to second instance proceedings before the Boards of Appeal. In view of the foregoing, the Board considers that it is in line with the purpose of the appeal to firstly examine whether the department of first instance correctly assessed the substance of the requests presented to it, and thereafter to examine any other requests filed by the proprietor during the appeal procedure. [3.4]
If the Board were to follow the generally established approach of merely considering the requests of the appellant proprietor in sequence, it is foreseeable that this could lead to a situation in which the Board, finding that a higher-ranking request (i.e. one of the main or first to third auxiliary requests) is not unallowable, would decide to grant or remit that higher-order request, without having considered the findings of the opposition division (OD) in respect of the patent as granted, i.e. without having considered the matter underlying the proprietor’s appeal. This does not appear to be consistent with the spirit of the appeal procedure under the EPC. Moreover, it could deprive the opponent and third parties of their right to have firstly a decision on the findings of the OD for reasons of legal security. [3.5]
The amendments made by the proprietor to his requests […] result inter alia in a new order of his requests which is neither consistent with the logic of the EPC, nor compatible with the purpose of the appeal procedure in the EPO. The proprietor did not attend the oral proceedings (OPs), and so could not be informed of the deficiencies in the presented order of his requests. Following Article 15(3) of the rules of procedure of the Boards of Appeal (RPBA), “The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the absence at the OPs of any party duly summoned who may then be treated as relying only on its written case.” However, Article 13(1) RPBA gives a Board some discretion when considering any amendment to a party’s case after the grounds of appeal or reply have been filed. The discretion shall be exercised in view of inter alia the current state of the proceedings and the need for procedural economy. In view of the foregoing, the Board has decided to consider the requests of the appellant proprietor in the order which is compatible with the general logic of the EPC and the purpose of the appeal procedure. [3.6]
When, as in the present case, it is clear from the statement of grounds of appeal that the appellant proprietor contests a decision that the patent cannot be maintained as granted, and when the appellant proprietor finally requests the maintenance of the patent as granted as an auxiliary request which is subordinate to a main or auxiliary request for maintenance of the patent in a new amended form that was filed during the appeal, the correctness of the decision refusing the maintenance of the patent as granted has to be examined first, before examining the new amended claims. [3.7]
In the decision G 2/91, the Enlarged Board further held that “A person who is entitled to appeal cannot be deprived of this right because someone else has already filed an appeal before him”. The course of the appeal proceedings should thus not deprive the appellant opponent of the right to have his own request and submissions treated in an equitable manner and to so determine the course of the proceedings. [3.8]
In the present case, however, merely following the order of the requests presented by the proprietor could deprive the opponent of the right to have his appeal examined before a possible remittal, because the subject of the opponent’s appeal, namely the amended form of the patent as maintained by the OD, is presented by the proprietor only as a second auxiliary request. This would not be equitable. [3.9]
Nevertheless, as long as it has not been decided whether the patent can be maintained as granted, the decision to grant a patent in the amended form appealed by the opponent depends on the outcome of the appeal against the decision to refuse the maintenance of the patent as granted. Moreover, the proprietor is the owner of a legal title that was contested by the opponent, in whose favour the OD decided. This decision was challenged by the proprietor, who can then expect to have his challenge considered with the highest priority. Accordingly, in accordance with the principle of economy of procedure, the Board decides to treat the requests of the appellant opponent, insofar as they concern the maintenance of the patent by the OD, after having decided whether the patent as granted could be maintained unamended. [3.10]
Since in the present case it is clear from the statement of grounds of appeal that the appellant opponent contests a decision maintaining the patent in a particular amended form, and since, in the appellant proprietor’s final requests, the maintenance of the patent in that particular amended form is the subject of an auxiliary request that is subordinate to one or more requests for maintenance of the patent in some other amended form, the Board decides, after examining the correctness of the decision refusing the maintenance of the patent as granted, to examine the correctness of the decision maintaining the patent in the particular amended form that was the subject of the appealed decision before examining, and deciding upon, the patent in any other amended form finally requested. [3.11]
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