Tuesday, 24 May 2011

T 1122/09 – The Deadly Four

The Boards’ requirements concerning the admissibility of auxiliary requests appear to be more and more restrictive. If you file auxiliary requests (1) that are not clearly allowable (2) belatedly and (3) in an unclear order, (4) without stating how those requests overcome the objections made so far, you have optimized your chances of having them rejected as being inadmissible.

In the present case, the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke the opposed patent.

The Board finds the claim as granted not to comply with A 123(2) and then deals with the admissibility of the auxiliary requests:

*** Translated from the German ***

[3] In its statement of grounds of appeal the [patent proprietor] only requested that the impugned decision be set aside and explained that it was of the opinion that the requirements of A 123(2) had been complied with. It is only in its written submissions of February 28, 2011, i.e. after the summons to oral proceedings (OPs) sent on January 17, 2011, and about one month before the OPs that the [patent proprietor] filed 23 auxiliary requests. In its letter it did not explain why those requests were filed at so late a moment in time, nor did it set out how the amendments should overcome the objections raised.

This behaviour on behalf of the [patent proprietor] is out of line with the Rules of proceedings of the Boards of appeal of the EPO (RPBA) […] and the corresponding case law (see “Case Law of the Boards of appeal of the EPO”, 6th edition (2010), VII.E.16), in several respects.

Pursuant to Article 12(2) RPBA the statement of grounds of appeal shall contain a party’s complete case. According to the established case law, this comprises not only all the arguments, facts and evidence but also all requests (see, e.g. T 764/03 [6.7]). Besides the very general request to set aside the first instance decision, in a letter of February 28, 2011, containing a request to maintain the patent as granted, the [patent proprietor] has not filed any explicit request together with the statement of grounds of appeal.

NB: The last sentence of the statement of grounds of appeal read as follows (my translation from the German):
“Moreover the written submissions filed during the opposition proceedings so far are maintained (gelten) in respect of the further arguments of the opponents, which were not discussed in the impugned decision.”
Pursuant to Article 13(1) RPBA any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of the complexity of the submission, the state of the proceedings and procedural economy. Pursuant to Article 13(3) RPBA, amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which require adjournment of the OPs.

When the patent proprietor intends to file amended claims during the appeal proceedings, this should be done at the earliest possible moment in time. A request that has not been filed in time will only be taken into account in exceptional circumstances, provided that the late filing is justified and the reason for the amendments is explained (see, e.g. T 95/83 [8]). None of these two criteria has been satisfied in the present case. The [patent proprietor] has not explained why the auxiliary requests were filed so late, nor did it state how the objections that had been raised were overcome by the proposed amendments. The Board does not see any reasons for this either. As the A 123(2) objection mentioned in the summons had already been part of the impugned decision, requests intended to overcome this objections could and should have been filed together with the statement of grounds of appeal.

Moreover, it is not obvious to the Board in which order the auxiliary requests 1 to 11, A and 1’ to 11’ were to be treated. In its written submission of February 28, 2011, the [patent proprietor] links these requests in an inadmissible way to certain requirements, which, moreover, are not clear.

NB: The patent proprietor’s fax of February 28, 2011, referred to a main request (claim 1 as granted), auxiliary requests 1 to 11 (“already on file before the OD and which were referred to in the statement of grounds of appeal”), an auxiliary request A, “to be discussed in case the main request is not granted”) and auxiliary requests 1’ to 11’’ (“which contain the limiting feature of the preamble of auxiliary request A […] but which, apart from that, correspond to auxiliary requests 1 to 11).

Finally, requests which, as the present requests, have been filed only shortly before OPs, are not to be taken into account if they are not clearly allowable (see, e.g. T 95/83). This is a decisive shortcoming of the present claims because all 23 auxiliary requests, very much like the main request, contain the combination of the features “projecting engaging means” and “sleeve”, which as shown above under point [2], violate the requirements of A 123(2). The fact that the “projecting engaging means”, according to auxiliary request A (and auxiliary requests 1’ to 11’), has the shape of a bulge or a needle pinch (Nadelquetschung) cannot alter this fact. For this reason alone, all 23 auxiliary requests are not clearly allowable.

Based on the reasons given above, the Board decides not to admit the 23 late filed auxiliary requests.

To read the whole decision (in German), click here.

The file wrapper can be found here.