Tuesday, 24 August 2010

T 1548/08 – Ex Machina Claim Of No Avail

This decision deals with an appeal following the revocation of the opposed patent by the Opposition Division (OD). During the appeal proceedings, the patent proprietor filed a certain number of auxiliary requests, some of which (auxiliary requests 4, 5 and 8 to 11) were filed one month before the oral proceedings (OPs) and others (auxiliary requests 12 and 13) were filed during the OPs. Obviously, the admissibility of these late filed requests is an issue before the Board.

The patent proprietor pointed out that auxiliary requests 12 and 13 both included the feature of dependent claim 4, which was not explicitly opposed and thus not a subject of the decision of the OD. In view of G 9/91, the decision of the OD was therefore to be considered null and void since the patent could not be revoked without dealing with dependent claim 4. Accordingly, these requests did not amend the appellant’s case and should not come as a surprise to the respondent.

The Board does not agree:

[2] According to Article 12(4) RPBA, the Board can hold inadmissible requests that could have been presented in the first instance proceedings. Pursuant to Article 13(1) RPBA the admissibility of amendments to a party’s case after it has filed its grounds of appeal is subject to the discretion of the Board. The discretion is to be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. Furthermore, according to Article 13(3) RPBA, amendments submitted after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs.

The Board cannot see any justification for the late filing of auxiliary requests 4, 5 and 8 to 13. The explanation that these requests were filed in reaction to the Board’s communication is not acceptable in the present case since the objections of extended subject-matter and lack of novelty mentioned in this communication correspond to the respective objections already raised in the first instance proceedings which led to the revocation of the patent. Consequently, all these requests could have been filed in the first instance proceedings or with the grounds of appeal. Accordingly, they are inadmissible under Article 12(4) RPBA.

Furthermore, the features introduced into claim 1 of auxiliary requests 8 to 11 (specifying the geometrical shape of the apertures) were never claimed before. They are taken from the drawings and relate to unsearched subject-matter. Moreover, these requests gave rise to further objections by the respondent under A 84 and A 56. This would justify an adjournment of the OPs and possibly even require a remittal to the first instance. Accordingly, their admission would be contrary to the principle of procedural economy. These requests are therefore not admitted under Article 13(1) and (3) RPBA.

With respect to the late filing of auxiliary requests 12 and 13, the appellant’s arguments are not convincing.

A dependent claim is for logical reasons a subject of the decision of the OD to revoke the patent, even if it has not been explicitly mentioned in the decision or in the notice of opposition, because a dependent claim cannot be maintained if the impugned independent claim from which it depends is not allowable. In the present case, no request was submitted during the opposition proceedings which included an independent claim comprising the features of dependent claim 4. Therefore, the subject-matter of dependent claim 4 was a subject of the decision of the OD, which was entitled to revoke the patent in its entirety even if this dependent claim was not explicitly impugned or examined.

Auxiliary requests 12 and 13 are therefore amendments to the appellant’s case, and their admissibility is also subject to the discretion of the Board under Article 13(1) RPBA. They could have been filed earlier, either during the first instance proceedings or in the appeal proceedings. The appellant has not given any justification for the late filing of these requests during the OPs in appeal. They are not admissible for the reasons already given above.

Accordingly, late-filed auxiliary requests 4, 5, and 8 to 13 are not admitted into the present appeal proceedings under A 114(2) in conjunction with Articles 12(4), 13(1) and (3) RPBA.

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