T 837/07 – One Last Chance?

The main request and the first and second auxiliary requests on file having been found to contravene A 123(3), A 84 and A 123(2), respectively, the Board has to deal with the request to adjourn the oral proceedings (OPs) in order to give the patent proprietor the possibility of drafting and submitting a further auxiliary request. In case you had doubts – this request is not successful:

[12] Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) requires the statement of grounds of appeal to contain a party’s complete case. Article 13 RPBA, which deals with the amendments to a party’s case, states in paragraph (1) that

“any amendment to a party’s case after it has filed its grounds of appeal ... may be admitted and considered at the Board’s discretion” and that this discretion “shall 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.”

[13] The objections of lack of clarity of the subject-matter of claim 1 of the first auxiliary request were already raised and discussed in detail at the OPs before the first instance […]. Although, in contrast to the board […], these objections were considered not to arise from the amendments made during the opposition proceedings and they were not decided upon by the opposition division (OD) […], they were nevertheless on file and part of the proceedings - as shown by their presence in [the opponent’s] statement of grounds of appeal, even though admittedly under other EPC articles […]. However, none of the claim requests filed by [the patent proprietor] - in its grounds of appeal or in its reply to those of [the opponent] - took into account these objections.

[14] It was only after the board’s communication issued under Article 15(1) RPBA in which the parties’ attention was drawn again to these objections […], that [the patent proprietor] filed - one month before the date scheduled for the oral appeal proceedings - a second auxiliary request specifically addressing them and maintaining a first auxiliary request that clearly did not address any of these objections […].

[15] It derives directly from the review nature and the judicial character of the appeal proceedings (cf. “Case Law”, supra, VII.E.1, page 821), that claim requests filed at the OPs in appeal before the board are to be considered in principle as late-filed requests and, as a result thereof, their admissibility into the appeal proceedings is to be fully justified before the board can examine them and decide thereupon. In the present case and in view of the facts mentioned […] above, the board considers that, at this stage of the proceedings and in the light of the amendments introduced into [the patent proprietor’s] second auxiliary request […], the introduction of a new auxiliary request into the appeal proceedings with the sole purpose to overcome the very same formal objections which allegedly were already addressed by that second auxiliary request, cannot be justified.

[16] According to [the patent proprietor], it is established case law of the Boards of Appeal that the patentee should always be given a “last chance” to save its patent […]. It has been thoroughly discussed and clearly established by the Boards of Appeal that there is no absolute right for a patentee to such a “last chance” request. On the contrary, the admissibility of a late filed request is always a matter of the board’s discretion. Moreover, as stated inter alia in decision T 446/00 [3.3], the concept of a “last chance” suggests one last chance at the end of the proceedings and not multiple “last chances” on numerous occasions during the course of the appeal.

In the present case, the possible admission into appeal proceedings of a new auxiliary request could hardly be seen as the patentee’s “last chance” since that new request would only be filed to overcome formal issues discussed at length and in detail during both opposition and appeal proceedings but it would still leave completely open to discussion substantive issues on novelty and inventive step raised during these proceedings […].

[17] Thus, the board comes to the conclusion that [the patent proprietor’s] request for an adjournment of the OPs in order to draft and submit a set of claims as a further auxiliary request is, at this stage of the proceedings and after consideration of all the above facts, not allowable and cannot be granted. […]

The patent is revoked.

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