The manner in which Article 12(4) RPBA is applied by the Boards is a matter of concern for many patent attorneys. Here is another interesting case, where Board 3.5.03 had to deal with an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent.
In its response to the summons to attend oral proceedings (OPs), the patent proprietor filed amended main and auxiliary requests. Obviously, the question of admissibility arose.
Here is what the Board had to say on the admissibility of the main request.
[1] In accordance with Article 12(4) RPBA, the board has the discretion “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings”.
The [opponent] argued that the main request should not be admitted as it was not submitted during opposition proceedings, despite the fact that the patent proprietor had been asked by the chairman of the OD whether it wished to file “an auxiliary request” […]. The [opponent] also argued that appeal proceedings concerned a judicial procedure whose primary purpose was to determine the correctness of the decision taken by the OD. The [opponent] referred to decisions T 379/09, T 144/09 and T 240/04 to provide support for its view.
The board concurs with the [opponent] that the primary purpose of the appeal procedure is to check the correctness of the decision of the department of first instance. It is also established case law that the parties should not in general be able to change the factual and legal framework of the case during the appeal phase; however, this does not mean their procedural situation becomes frozen following the decision from the department of first instance. In accordance with Article 12(4) RPBA, amendments are possible, provided that these amendments are justified by the normal development of the proceedings. Amendments may for instance be justifiable having regard to the principle of procedural economy (which is not the main justification here, but at least there is no conflict since no delay to the proceedings has ensued), or, as is the case here, be a normal reaction of a party given the circumstances of the case.
In the cases cited by the [opponent] where the new requests were not admitted under Article 12(4) RPBA, the circumstances were different, namely:
• In T 379/09, the patent proprietor filed the new request aimed at overcoming an objection raised by the OD only one month before the OPs before the board of the appeal although the nature of the objection had been set out in the summons to OPs issued by the OD. Furthermore, admitting the request would have caused a considerable delay of the procedure.
• In T 144/09 [1.14], the proprietor had made a “considered and deliberate choice” not to file an amended request, despite being given the opportunity to do so after the objection had been explained.
• In T 240/04 [16], the new request introduced subject-matter which had not been considered by the first instance and, above all, diverged from what had been discussed before; instead of convergence there was a jump to another invention.
By contrast, in the present case the board considers the filing of the present main request to be a legitimate and normal reaction to the decision to revoke the patent, because the amendment concerns the addition of a feature of a dependent claim which further limits the subject-matter distinguishing the invention with respect to the disclosure of document D3. As the added feature was previously in a dependent claim, it can be assumed that the claimed subject-matter has been searched. Moreover, the request was filed at the earliest possible stage of the appeal proceedings, namely with the statement of grounds. The filing of this request therefore did not give rise to any procedural complications preventing a discussion of the request at the OPs. Even if, theoretically, the patent proprietor might have been able to file this request at the end of the OPs before the OD, the board sees a difference with the other cited cases above, in particular with T 144/09, since it does not appear that the patent proprietor made a “considered and deliberate choice” not to file the request. Rather, the reasons for the revocation of the patent were not so explicitly known as in case T 144/09 and plausibly the formulation of a suitable new request overcoming the objection was not immediately evident. In such circumstances it would be unreasonable to penalise the non-filing of an auxiliary request at the end of OPs by later invoking Article 12(4) RPBA in appeal proceedings.
The board therefore decided to exercise it discretion to admit the main request.
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