Thursday, 12 May 2011

T 105/09 – Useful Reminders

The present decision deals with an appeal against the revocation of the opposed patent by the Opposition Division (OD).

The decision is not surprising at all but it contains a very clear and pedagogical exposition on admissibility of requests in appeals against decisions of the OD and the appropriateness of remittals to the OD.

Admissibility of the first auxiliary request

[1.1] Claim 1 of the first auxiliary request is identical with claim 1 of the patent as granted besides some minor punctuation amendments. Said request was filed in the appeal proceedings together with the grounds of appeal. The filing of said request can be seen as the [patent proprietor’s] reaction to the OD’s decision revoking its patent.

[1.2] In numerous decisions, stemming from decision T 123/85, the Boards of Appeal have permitted an appellant/patent proprietor, whose patent has been revoked, to seek maintenance of the patent as granted even though its main request before the OD had only been the maintenance of the patent in more limited form. There is nothing in principle to prevent a patent proprietor from later seeking to amend its request so as to request for the patent to be maintained in the form as granted (or in other, less limited terms), either in the course of proceedings before the OD or on appeal. In this respect the Board concurs with decision T 755/00 [5-9]. The exception to this principle is where it would amount to an abuse of procedure to allow the patent proprietor to revert to the granted claims.

[1.3] In the present case both oppositions sought revocation of the patent as a whole. Originally the proprietor had requested the rejection of the oppositions, i.e. the maintenance of the patent as granted. The OD summoned to oral proceedings (OPs) with a preliminary opinion that the systems of claims 1 and 2 of the patent as granted did not present novelty. The patent proprietor then sought maintenance of the patent in amended form, which was then rejected for the amendments not complying with A 123(2). In the appeal proceedings, the first auxiliary request, reverting back to essentially the claims as granted, was filed together with the grounds of appeal. It is not difficult to understand that this request clearly overcomes at least the reasons for the impugned decision, which manner of proceeding can hardly be seen as an abuse of procedure.

[1.4] The objection of [opponent II] that the admittance of this request into the appeal proceedings would lead to an inacceptable (sic) delay of the present proceedings, due to the unavoidable remittal of this request to the OD, becomes moot due to the Board’s conclusion not to remit the case with said request, see below.

[1.5] [Opponent II] argued that the only point in consideration for the appeal should be whether the impugned decision is confirmed or has to be reversed, but only on the elements discussed before the OD. Consideration of any other point would “create a serious uncertainty for the third party’s legal security”.

This means to the Board that the appellant/patent proprietor would not have the right to file in the appeal proceedings any claims other than the ones dealt with in the impugned decision, or more limited ones: the extent of the protection defended ultimately for the decision under appeal would constitute the upper limit of what could come out of the appeal proceedings.

The Board cannot concur with this, as it would amount to an abandonment of subject-matter for which there is no basis, unless it has been clearly presented as such at the time. That is not the case here.

Secondly, until the final decision in the appeal proceedings (which are a continuation of the opposition proceedings) the legal security for the parties continues to find its limits in the form of the claims of the patent as granted, which would have been the result if the oppositions had been rejected. The requirements of A 123(3) make sure that third parties are never affected worse than that.

[1.6] For the above mentioned reasons, the request of [opponent II] not to admit the [the patent proprietor’s] first auxiliary request into the proceedings is refused.

Remittal of the first auxiliary request to the OD

[2.1] After having its first auxiliary request admitted into the appeal proceedings the [patent proprietor] requested the remittal of the case on the basis of this request to the OD for considering novelty and inventive step.

The [patent proprietor] took the position that the framework within which the Board could operate in this respect was determined by its appeal filed pursuant to A 106(1). As the decision under appeal was limited to the question of inadmissible amendment it was negatively affected only in that respect and could only appeal to that extent. As a consequence the Board’s examination of the appeal pursuant to A 110 and its decision on the appeal pursuant to A 111(1), first sentence, were limited to this issue only.

[2.2] The Board cannot concur with this. A 106(1) stipulates that appeals lie from decisions. This means that the framework of the appeal is determined by the final result of the decision, rather than by the grounds of such a decision.

When the impugned decision revokes the patent, as it is the case here, the whole case is before the Board and the jurisdiction of the present Board therefore extends from allowing the appeal according to the [patent proprietor’s] requests (setting aside the decision under appeal and remitting the case to the OD as the objections under A 123(2) of the impugned decision have been overcome) on the one hand, to dismissing it on the other hand, which is not less than what was denied to the [patent proprietor] by the OD, nor different from what the [opponents] request. There thus cannot be here a case of “reformatio in peius”.

[2.3] The [patent proprietor] argued that there was a contradiction between what is stipulated in A 106 on the one hand, and A 111(1), second sentence, on the other. The first mentioned determined clearly for the [patent proprietor], the Board and the other parties to stay within the boundaries set by the reasons of the decision appealed and the appeal filed against it. The second appeared to open up for the Board the possibility to move outside of these boundaries, whereas the parties had to stay within.

[2.4] Point [2.2] above has dealt with the question as to what constitutes the framework of the appeal. In that respect the Board cannot see a contradiction with A 106 arising out of A 111(1), second sentence, as it clearly further defines the two possibilities the Board has within its – broader than wished for by the [patent proprietor] – jurisdiction: it can deal with the outstanding issues of the opposition proceedings itself or remit the case for further prosecution to the OD.

Naturally, limits on the Board’s jurisdiction are set by the original extent of opposition and the grounds of opposition raised by the opponent(s) and/or the OD itself (G 9/91 and G 10/91).

The ground of opposition for lack of novelty has been raised in the oppositions against claim 1 of the patent as granted, therefore the Board is not stepping out of its bounds here either.

[2.5] The [patent proprietor] takes the position that it has the legitimate and fundamental right to have a reasoned written decision by two instances on its request. As the request was not decided upon in the decision under appeal, the case should be remitted to the OD to address that issue in a decision, so that the [patent proprietor] could properly challenge this decision on appeal. A legal basis for this position, however, could not be produced.

[2.6] The Board has no knowledge of any such requirement in the EPC, nor its Implementing Regulations. The consistent case law of the Boards of Appeal, to the contrary, is that there is no absolute right to two instances (see e.g. T 133/87 [2]), i.e. for having each and every issue decided by two instances. This is all the more evident in view of the discretion established for the Boards of Appeal, by virtue of A 111(1), second sentence, to exercise any power within the competence of the department which was responsible for the decision appealed, or to remit the case for further prosecution.

[2.7] The [patent proprietor] contended that it was established case law to remit a case to the department of first instance for the issue of novelty, if that issue had not been dealt with in the decision appealed. In support it referred to T 915/98.

[2.8] The present Board is not aware of any case law fit to be applied to the circumstances of this case. It is these circumstances which determine the Board’s exercise of discretion. The case referred to in this respect is not an appropriate example, as the circumstances are already different. The deciding Board states in point [6] of the Reasons of said decision that
“[h]ad the OD decided – or at least given a reasoned opinion – also on the questions of novelty and inventive step, the Board may well have been able to take a final decision on the case at this point instead of having to remit it” (emphasis added by the Board).
In the present case, however, the OD has given a reasoned opinion on the question of novelty in its annex to the summons to OPs. This is not affected by its presentation as a preliminary opinion. Thus, the conditions set by the Board in that decision to be fulfilled for not remitting the case are perfectly met.

[2.9] The [patent proprietor] argued further that the Board incorrectly assumed in its preliminary opinion that the OD would have confirmed its provisional opinion on the novelty issue in its final decision. However, that opinion was non-binding on the division and could have changed in the light of further submissions and the discussion at the OPs.

[2.10] The [patent proprietor’s] assumption appears to be based on the premise that the Board is limited in its present examination of the appeal to what has been (or to what could have been) decided by the OD. A 111(1), second sentence, and points [2.2], [2.4] and [2.6] above show that that premise does not apply in the opinion of the Board.

What could have happened in the opposition proceedings, had the request been maintained is insofar irrelevant, as the Board in its own examination of the appeal had come to the same preliminary result as the OD; no more, no less.

[2.11] Finally the [patent proprietor] argued that in the written proceedings also [opponent I] was initially in agreement with a remittal to the OD and that [opponent II] had not expressed an opinion on this matter. Therefore the Board should not of its own motion refuse to remit the case.

[2.12] The Board notes that [opponent II] had taken an even stronger standpoint, namely that the auxiliary requests should not even be admitted. To construe this as a tacit consent in the written proceedings to a remittal would go too far. Further, it is the Board which considers what is appropriate as regards the exercise of its discretion in view of the circumstances of the case, to which the parties may provide their views. In the present case the Board finds it appropriate for efficient proceedings to deal with the question of novelty of the subject-matter of claim 1 of the first auxiliary request itself, and to examine the remaining request for compliance with the requirement the infringement of which led to the impugned decision: the admissibility of the amendments (A 123(2) and (3)).

[2.13] The request to remit the case with the claims of the first auxiliary request to the OD is therefore refused.

Finally, the Board remitted the case to the OD for further prosecution on the basis of the fifth auxiliary request.

To read the whole decision, click here.

The file wrapper can be found here.