T 1898/07 – Things That Judges Won’t Do

I owe the knowledge of this decision to a kind colleague.

The decision deals with an appeal of the patent proprietor following the revocation of its patent by the Opposition Division (OD).

The first point of interest deals with the admissibility of auxiliary requests 13 and 14 which had been filed during the oral proceedings (OPs) before the Board. But the discussion is much more general and includes interesting statements on the role of the Boards in appeal proceedings.

[1] The [patent proprietor] was correct in its submission that it had throughout the appeal proceedings requested to file further requests consisting of “combinations” of actual requests […] and either requested, or claimed to “reserve the right”, to file additional or amended auxiliary requests […]. It is also clear from its submissions that the [patent proprietor] considered this approach was required for various reasons

• the large number of objections it had to deal with […];
• the absence in the Board’s communication of a provisional opinion on every one of those objections […]; and
• its expectation that at the OPs it would receive, rather than one final decision after all the parties had been heard, a number of decisions on individual issues and individual claims within requests followed by the opportunity to file new auxiliary requests, whether “combinations” or amendments of previous requests […].

However, the [patent proprietor’s] view of appeal procedure was unfortunately mistaken.

[2] The matter is governed by Articles 12 and 13 RPBA […]. In particular Article 12(2) RPBA requires that a party’s statement of grounds of appeal (or reply - the requirement applies equally to both sides of an inter partes case) contains its complete case; and Article 13(1) RPBA requires that any amendment to a party’s case after it has filed its grounds of appeal or reply - and a new set of claims is clearly such an amendment - is admissible, not as of right, but at the Board’s discretion.

[3] As the Board has recently observed (see T 316/08 [19]), the fact that Article 12(1)(c) RPBA provides that appeal proceedings shall be based on, in addition to the grounds of appeal and reply, any communication sent by the Board and any answer thereto, cannot mean that any new requests filed with such an answer are per se admissible since otherwise parties could withhold less preferred requests until after obtaining the Board’s provisional opinion on more preferred requests: a tactic which would largely negate the function and value of provisional opinions but on which the [patent proprietor] in this case relied heavily.

Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent it relates to the case under appeal and meets the requirements in Article 12 (2) RPBA, which includes the complete case requirement. Thus the Board is quite clearly not required to take into account-anything which does not satisfy that requirement, such as requests which could have been filed with the statement of grounds of appeal but were not.

[4] In the present case, it follows axiomatically from the [patent proprietor’s] own submissions on possible further auxiliary requests in the form of “combinations” or amendments of existing requests that it had foreseen other requests than those it actually filed. Accordingly, it is implicit in its own case that it could have filed such other requests (including auxiliary requests 13 and 14) either with its statement of grounds of appeal or, at the very latest, in response to the Board’s communication. Similarly, it is implicit that the statement of grounds of appeal did not contain the [patent proprietor’s] complete case.

[5] The [patent proprietor’s] arguments can be conveniently dealt with by reference to the recent jurisprudence of the Enlarged Board of Appeal (EBA) relating to procedural questions raised in petition proceedings under A 112a. The [patent proprietor] argues that it did not know the Board’s opinion on all the issues in the appeal, that it did not want to file a large number of requests, that it had constantly requested to file further requests or combinations of existing requests, and that these would depend on the decisions taken by the Board on each of these separate issues at the OPs. The [patent proprietor] clearly expected that the Board would announce a separate decision on each such issue and then allow the [patent proprietor] to tailor its requests to the new situation which might then arise.

However, as the EBA observed in R 12/09 [11]:

“It is for each party to make its own case and for a Board then to decide on the basis of the parties’ submissions. In doing so a Board should not in inter partes proceedings assist one of the parties by giving it a hint in advance, either during OPs (see R 11/08 [14]) or in a communication (R 3/09 [5.1]). A party which wants a decision in its favour must play a full part in proceedings and submit arguments in support of its case on its own initiative and at the appropriate time (see R 2/08 [8.5, 9.10]). It is part of the professional task of representatives to decide independently – that is, without assistance from the Board – how to pursue their cases (see T 506/91 [2.3] cited with approval in R 11/08 [10]).” (Translation by the Board from the German text of the decision.)

[6] The present case bears a close resemblance to R 11/08 in which, in proceedings before a Board of Appeal, the petitioners (as the Patentees appealing against a revocation decision) had filed a main and fifteen auxiliary requests and further stated in their grounds of appeal that they were ready to file further auxiliary requests to solve potential problems by deleting claims from or combining claims of different auxiliary requests and, as a precautionary measure and to avoid numerous further auxiliary requests, they also requested that the patent be maintained based on at least one of the independent claims of any of the auxiliary requests. (This last request was referred to in the EBA’s decision as “the general request”.) The Board of Appeal had dismissed the general request (which it called a “pick and mix” approach) because it would have required the Board to assist the [patent proprietor]s by giving them a “pre-decision” before they finalised their requests (see T 221/06 [2.3-4]).

[7] The EBA dismissed the [patent proprietor’s] arguments (as petitioners) that their approach only called for deleting one or more claims and avoided filing many further requests by observing that such arguments in themselves showed that the requests in question were not immediately ascertainable (see Reasons, point [12]). To the argument that the [patent proprietor’s] approach was the only way to obtain the broadest possible protection in the face of numerous objections, the EBA observed the objections were to the claims the patentees themselves had put forward and there was no explanation why the conventional approach, of a sequence of specific requests in descending order of preference, had not been possible (see Reasons, point [13]). Further, the EBA held it was inherent in the petitioners’ further argument

• that many variants of their requests were needed because the Board had not supplied an opinion on various issues;
• that, if the Board had provided such views, it would thereby have assisted the petitioners to frame their requests.

The EBA concluded that the petitioners’ complaint was in effect that the Board in question was, quite properly, impartial (see Reasons, point [14]).

[8] The Board follows those views of the EBA in the present case in which the [patent proprietor’s] arguments are very substantially the same. The Board could not assist the [patent proprietor] to frame further requests by giving “predecisions” at various points during the OPs – indeed, despite its earlier hopes that the Board would take decisions on each of separate issues at the OPs, the [patent proprietor] conceded at the OPs that it was not entitled to any provisional opinion from the Board. To the extent such an opinion is given in a communication, it is intended to assist both or al1 parties and if, as in the present case, that communication records that the Board has not yet been convinced by an argument or has not yet formed an opinion on an issue, that can only mean what it says – that the Board is as yet undecided even on a provisional basis – and carries no implicit offer of a further opinion before the proceedings are concluded.

[9] The function of the Board is to hear the parties’ cases and only thereafter to decide. It is not, as the [patent proprietor] appeared to believe, to say which of two or more alternatives it prefers […] or to suggest deletions of claims from otherwise acceptable requests […] or to provide interim decisions so as to allow a patentee to combine requests […].

To the extent a Board provides any opinion before its final decision, it can quite clearly only be provisional and not binding, as indeed the law states (see Article 17(2) RPBA) . In the present case, this was also expressly stated in the Board’s communication […] which also drew the parties’ attention to the provisions of Articles 12 and 13 RPBA which include the complete case requirement and the provisions on amendment of a party’s case […].

The [patent proprietor] argued that, if it was not allowed to file auxiliary requests 13 and 14 which it produced at the OPs, it would be disadvantaged by being denied the right to be heard. The Board’s view is quite to the contrary namely that, if it had complied with the [patent proprietor’s] approach, it would have inevitably assisted the [patent proprietor] to the disadvantage of the respondents.

Accordingly, the [patent proprietor’s] request to introduce auxiliary requests 13 and 14 at the OPs was denied.

There is enough in this decision to make some more posts, as we will see.

If you wish to download the whole decision, you can do so here.