Tuesday, 28 September 2010

T 299/08 – Bad Tactics

** Translation from the German **

[1] When issuing the summons for oral proceedings (OPs) on February 10, 2010, the Board has presented its provisional opinion in the present case and given a time limit of two months for filing statements. The [patent proprietor] has not taken advantage of this time limit although it had to be aware that the maintenance of its patent was in danger. It rather presented an auxiliary request for the first time during the OPs, without any plausible explanation for the belatedness.

The only argument of the [patent proprietor] was that the amendment was very simple and easily comprehensible, consisting in the mere introduction of features of a hitherto dependent claim into the main claim.

It is precisely because of the simplicity of the amendment that the [patent proprietor] could and should have filed the auxiliary request within the time limit set by the Board for responding to its notification of February 10, 2010. Therefore, the filing of the auxiliary request during the OPs is tantamount to tactical behaviour aiming at surprising the [opponent] with new facts and arguments.

The Board considers such a way of proceeding to be procedurally abusive (verfahrensmissbräuchlich). Therefore, the auxiliary request is not to be taken into account.

If you wish to download the whole decision (in German), please click here.


pat-agoni-a said...

At the oral proceedings before the board the proprietor submitted an auxiliary request combining claims 1 and 6 (defining thus the kind and proportion of fatty acids). This feature, however, had never been an issue previously, neither during the opposition proceedings nor in appeal. In particular, the proprietor had not reacted to the grounds of appeal of the opponent (which had lost in the previous proceedings). His first reaction came during the oral proceedings before the board.

Under these circumstances it seems appropriate not to admit the auxiliary request, since it raised issues which the board or the other party could not reasonably be expected to deal with without adjournement of the oral proceedings (A. 13(3) RPBA).

This, however, could have been said more explicitly in the decision ...

oliver said...

Thanks for shedding light on a decision that at first sight appears rather harsh.

pat-agoni-a said...

I agree that the most important part of a decision is not the outcome, but the reasoning, which in this case seems very thin :-))

Myshkin said...

I may very well be wrong, but I would be surprised if there does not exist a decision saying the exact opposite: that as a rule the opponent cannot be surprised by an amendment adding features from a dependent claim to an independent claim.

After all, if the opponent only attacked the independent claim on novelty and/or inventive step, he got exactly what he wanted: the independent claim is off the table. If his business is also hurt by the dependent claim, why did he not attack that claim as well?

On the other hand, the Board does have a point that there seems to be no legitimate reason for not having filed the request earlier.

oliver said...

One of the frustrating things that you encounter when studying case law is that in order to fully understand a decision, you have to have been there when it was taken. There are so many parameters which influence the outcome and which are not reflected in the reasons given that it is quite a surprise that studying case law is not a waste of time. Yet it is not. Somehow, in most cases, these hidden parameters cancel each other out to a great extent. This aspect of case law has always fascinated me.

pat-agoni-a said...

What happened in this case probably is related to the fact that the board gave its provisional view that claim 1 lacked inventiveness in the summons to OP and set a limit of two months to file observations. The proprietor should then have replied.

I think the board wanted to send a clear message that the parties are bound to actively participate in the proceedings. Not doing so is not an option and may be seen as an abuse.