Wednesday, 2 March 2011

T 1705/07 – Face Your Failure

The present decision deals with an appeal against the revocation of the opposed patent by the Opposition Division (OD). The patent as granted contained claims directed to processes for hydrogenating a benzenepolycarboxylic acid, claims directed to the use if cyclohexanedicarboxylic esters and various product claims, and so did the requests before the OD and the main request and auxiliary requests 1 to 5 before the Board. Auxiliary requests 6 and 7 before the Board only contained product and use claims.

The Board comes to the conclusion that the main request as well as auxiliary requests 1 to 5 lack inventive step. It then deals with the admissibility of auxiliary requests 6 and 7.

[8.1] In the auxiliary requests 6 and 7, which were filed in the appeal proceedings for the first time, all process claims, on which the impugned decision was based, were deleted. Those two requests only have claims belonging to another claim category. On the one hand, there are product claims, directed to specific chemical compounds, to mixes and plastic compositions containing them, as well as use claims, and on the other hand, there are product claims that are exclusively directed to mixes and plastic compounds, as well as use claims.

[8.2] [One of the opponents] criticized that the auxiliary requests 6 and 7, which are exclusively directed to product and use claims, should have had filed before the first instance already. As the appeal proceedings are intended to review (überprüfen) the first instance decision, which had decided on the process claims only, and as those auxiliary requests had not been submitted to the first instance, this amounted to an abuse of proceedings by the patent proprietor. Therefore, auxiliary requests 6 and 7 were not to be admitted pursuant to Article 12(4) RPBA.

[8.3] Therefore, it is to be decided of whether those requests are to be admitted into the appeal proceedings.

[8.4] As far as inter partes proceedings, which are foreseen by the EPC, are concerned, the Enlarged Board (EBA) has developed the principle that these proceedings above all serve the right of the losing party and the other parties to the proceedings to have the first instance reviewed in judicial (gerichtsförmig) proceedings. EBA decisions G 9/91, G 8/91, G 7/91 and G 1/99 have underlined that inter partes appeal proceedings are to be considered as judicial proceedings proper to an administrative court.

In particular, G 9/91 has stated that the main purpose of inter partes appeal proceedings is to give the losing party the possibility of challenging the decision by which it is adversely affected and to obtain a judicial decision on the correctness of the first instance decision. Thus the factual and legal framework of opposition proceedings, as defined in G 9/91 [6], determines, as a rule, the subsequent appeal proceedings.

It directly follows that in second instance proceedings the parties can modify the matter of dispute (Streitstoff) only to a limited extent. This principle has its equivalent in the actual version of the RPBA, Article 12(4) of which explicitly confers the Boards the power to hold inadmissible requests which could have been presented by the patent proprietor in the first instance proceedings. Therefore, the Board has the discretion, taking into account all the relevant circumstances of the particular case, to admit modifications of the submissions (Vorbringen) of a party or not to consider submissions of a party if there were reasons to make them during the first instance (T 240/04 [16.1-2], and T 339/06 [6.3]).

[8.5] In the present case, the [patent proprietor] filed requests which did not contain the process claims, on which the impugned decision was based, but which only contained claims of different categories (i.e. product and use claims […]) for the first time during the appeal proceedings. It is true that these claims were comprised in the patent under consideration as independent claims and had also been attacked in the opposition proceedings, but they had never been the sole object of a request.

[8.5.1] It can be seen from the minutes of the oral proceedings (OPs) […] before the OD that the OD has accepted three additional auxiliary requests on behalf of the patent proprietor after having told the parties the subject-matter of the process claims 1 of the requests that were the main request and auxiliary requests 1 and 2 at that time did not involve any inventive step […]. Therefore, the [patent proprietor] objectively had an opportunity to file additional (auxiliary) requests before the first instance and has in fact taken this opportunity. According to the principle of party disposition (Verfügungsgrundsatz), the party filing a request is sole responsible for the kind and subject-matter of (auxiliary) requests and it alone has the right to determine their contents. Accordingly, the [patent proprietor] has legitimately decided in the opposition proceedings to maintain the process claims in the three auxiliary requests filed at that time. Once the OD had stated that none of the requests on file could be granted because the process claims were not patentable, the product and use claims comprised in all requests had not to be decided upon any more. Therefore, the OD has properly decided on the process claims alone.

[8.5.2] Auxiliary requests 6 and 7 filed during the appeal proceedings, however, do not concern process claims, which were the only object of the impugned decision, any more, but they concern a fundamentally different subject-matter, i.e. product and use claims only. Therefore, their admission would result in the appeal proceedings having a fundamentally different matter of dispute, both from the factual and legal point of view, so that, as a rule, it would lead to a remittal to the first instance. This would extend the duration of the proceedings and both the parties and the public would be denied legal certainty concerning the validity of the patent, which is not compatible with the principle of procedural economy.

[8.6] The [patent proprietor] submitted that it was surprised by the final decision of the OD, so that it was not possible any more to file further requests at that stage of the proceedings.

However, it has to be noted that it can be seen from the minutes of the OPs before the OD that the patent proprietor objectively still had the opportunity of filing further requests, and has taken this opportunity […]. Therefore, auxiliary requests 6 and 7, which contained only product and use claims, could and would have had to be filed already during the opposition proceedings. Moreover, it was clear from the notice of opposition from the further correspondence during the opposition proceedings and from the annexes to the summons to OPs that the discussion during the OPs before the OD would at first be limited to the process claim 1. Therefore, the patent proprietor must have been aware, before the OPs, that the whole patent would be revoked if the subject-matter of process claim 1 as granted, according to the main request at that time, or as amended, according to auxiliary requests 1 and 2 at that time, was found not to be patentable with respect to the prior art. The fact that during the OPs before the OD further requests maintaining the process claims were filed […] makes clear that the [patent proprietor] deliberately stuck to the protection conferred by the process claim 1 and was not interested in filing an auxiliary request comprising only the independent product and use claims. As a consequence, the [patent proprietor] thereby deliberately took an action that was decisive for the proceedings (verfahrensleitend) and which determined the orientation further proceedings. The patent proprietor was sole responsible for this action. Therefore, it could not be surprised by the decision of the OD which was to be expected as a consequence of this behaviour.

[8.7] The [patent proprietor] submitted that it was only equitable if it made use of its right to defend all granted claims. It had to be allowed to maintain only the product and use claims of auxiliary requests 6 and 7 and to have them discussed and decided upon, which had not been done so far.

However, it has to be noted that the product and use claims had not been discussed and decided upon only because the [patent proprietor] had failed to file corresponding requests directed only to this subject-matter during the opposition proceedings. If they were discussed and decided upon during the appeal proceedings, the [patent proprietor] would have the opportunity to make good for the failure, for which it was responsible, to its sole advantage. According to the legal principle “nemo auditor propriam turpitudinem allegans”, however, a party may not take advantage of its own failure, as this would not be equitable with respect to the other parties.

[8.8] The [patent proprietor] also submitted that it had the right to two instances in view of the examination of auxiliary requests 6 and 7, which had not been carried out so far, i.e. that the requests 6 and 7 should be remitted to the OD for examination.

However, it has to be stated that before it can be decided whether two instances are to be granted, i.e. whether the auxiliary requests 6 and 7 are to be remitted to the OD, those requests would have to be admitted into the proceedings by the Board. Therefore, this questions is to be decided only after the prerequisite, i.e. the admission of the auxiliary requests 6 and 7, is fulfilled, which is not the case here (see below).

[8.9] At the end of the proceedings before the Board the [patent proprietor] withdrew the objection that non-admission of auxiliary requests 6 and 7 would be tantamount to a violation of the right to be heard, which objection it had raised during the OPs before the Board. Therefore, it is not necessary to decide on this objection which is not maintained. As a matter of fact, this objection would not be successful (durchgreifen) because it is the Board alone that has to decide on the admission of auxiliary requests 6 and 7 and because the [patent proprietor] had been offered the right to be heard on this decision, and had made use of it.

[9] For the above reasons, the Board makes use of its dutiful discretion and decides not to admit auxiliary requests 6 and 7 pursuant to Article 12(4) RPBA.

I find this approach very severe, but that is the direction where the Boards appear to be heading.

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Anonymous said...

Now that was quite the title for an entry ... as the EQE is in progress.

Part D was a bit unusual this year with an appeal, and part B yesterday had a bit of Art 84 and Art 123 objections in te Communicaitons which is not that common in EQE but quite common in real life. And today is the ritual Paper C arm destruction write-a-thon.

Captcha is "blises", there is no "bliss".

pat-agoni-a said...

The boards of appeal and the office in general are facing a growing number of pending cases and at the same time are being criticized for a too long duration of the proceedings. It seems therefore reasonable to ask the parties to present all their claim requests as well as the evidence challenging them as soon as possible.

Thus new claim requests and late filed evidence will be disregarded more often than before. The parties should be prepared so that they are not taken by surprise at such a late stage of the proceedings.

Anonymous said...

pat-agoni-a- Requests 6 and 7 were filed with the Grounds of Appeal so they weren't late filed during the Appeal process.

A similar decision was reached in T 361/08 (see paragraph 13), where Requests were refused because they could have been, but weren't, filed during first instance proceedings.

pat-agoni-a said...

The issue of late submissions is a subtle one. The question is whether there are submitted in response to something new (arguments, facts or evidence). If this is not the case, procedural economy makes it harder for them to be accepted.

Although I have not looked into the case nor read the decision, it seems that nothing new caused the filing of claim requests containing only product or use claims and that nothing prevented the proprietor to file such claims during the opposition proceedings (I assume that the representative was aware that a claim request fails as a whole, since he limited the claims in requests 6 and 7).

As said before, procedural economy is becoming more and more an issue and parties should be aware of that.

In particular, the Rules of procedure explicitly foresee that not everything filed with the grounds of appeal is automatically admitted (I don´t have them at hand, but if you like I can point that out more precisely).