Thursday, 30 June 2011

T 1067/08 – No Forum Shopping

The patent proprietor appealed against the decision of the Opposition Division (OD) to revoke the patent.

Claim 15 of the patent as granted read:
A granulate comprising dried granules formed from a phytase and a solid carrier which comprises at least 15% (w/w) of an edible carbohydrate polymer.
During the opposition proceedings, the patent proprietor filed an auxiliary request file 5 of which read:
A granulate comprising dried granules formed from a phytase and a solid carrier which comprises at least 30 % (w/w) of starch, wherein the range of size of the granulate is from 100 mym to 2000 mym, preferably 200 to 1800 mym and most preferably 300 to 1600 mym.
As the OD made A 123(2) objections, the patent proprietor filed an amended main request claim 3 of which read:
A granulate comprising dried granules formed from a phytase and a non-fibrous solid carrier which comprises at least 30 % (w/w) of starch, wherein the range of size of the granulate is from 100 mym to 2000 mym and the granulate has an activity of at least 6000 FTU/g.
During the oral proceedings (OPs), the OD informed the parties that this request did not comply with A 123(2). The patent proprietor then filed a set of amended claims to become its sole request. Claim 1 of this request read:
A granulate comprising dried granules formed from a phytase and a non-fibrous solid carrier which comprises at least 15% (w/w) of an edible carbohydrate polymer and the granulate has an activity of at least 6000 FTU/g.
The Board having announced that this request was “not allowable”, the patent proprietor affirmed that he did not want to file any further request. Thus the patent was revoked.

The patent proprietor filed an appeal and requested that the latest main request be admitted into the proceedings and the patent be maintained on the basis of that request.

[2] The patent in suit was revoked for non-compliance with A 113(2), following the OD’s decision not to admit the proprietor’s sole request as filed during the OPs (that is what was clearly intended by the OD and what was understood by the parties, even if the division said the request was “not allowable” […]) and the subsequent refusal of the proprietor to amend that request and/or to file auxiliary requests. Whether or not the decision under appeal correctly relied on the absence of a text of the patent submitted or agreed by the proprietor depends, thus, on the answer to the preliminary question whether or not the OD was right in not admitting the proprietor’s final request filed during the OPs on the ground that its filing constituted an abuse of the proceedings.

[3] In principle, during opposition proceedings a patent proprietor is free to withdraw at any time a request which contains limitations made in an attempt to overcome objections raised against its patent, or to amend it subsequently and, in particular, resume a defence of the patent as granted, unless this would constitute an abuse of procedural law (established case law starting with T 123/85).

In line with this principle, R 71a EPC 1973, now R 116, gives the OD the discretionary power to refuse new requests for amendments, if amended claims are presented after the final date fixed under that provision.

This applies in particular to requests which are, like the one under consideration, presented for the first time during the OPs (case law of the boards of appeal, see e.g. T 64/02). The purpose of this provision is in particular to prevent parties from seeking unjustified procedural advantages by abusive tactics (nemo auditur propriam turpitudinem allegans - T 1705/07, it being, however, in this board’s view, not a requirement for procedural abuse that the party responsible also acted in bad faith) in disregard of procedural economy and to the disadvantage of other parties.

Therefore, any amendment has to be carried out in the most expedient manner, which has to be established by the OD taking into account the interests of all parties (T 382/97), and the power to refuse late requests must be exercised by considering all relevant factors which arose in a particular case, taking account inter alia of whether there were good reasons for the late filing, whether the other parties are taken by surprise and whether new issues are raised by the amendments made.

[4] The OD’s finding that the filing during the OPs of the new claims according to the proprietor’s sole and final request lacked adequate justification and disregarded the legitimate interests of the other parties, and therefore amounted to an abuse of procedure, was based on the following facts and considerations:
  • The [patent proprietor’s] conduct up to the OPs suggested that it intended to defend the patent only in a restricted form, within the amendments made in preparation for the OPs. There was no indication that the proprietor would defend any broader subject-matter and what it might be.
  • There were no adequate objective reasons which would have justified the other parties having to prepare and discuss any further issues arising from the submission of the much broader claims comprising the feature “at least 15% (w/w) of carbohydrate polymer”, but no longer any feature regarding the particle size.
  • There was nothing preventing the proprietor, who was aware, inter alia from the preliminary opinion of the OD, of the objections under A 123(2) to the feature “at least 30% (w/w) of starch”, from filing the new claims according to his final request in time. As these claims comprised a more general definition of the subject-matter and would involve reviewing a large number of submitted prior-art documents, the proprietor should have realised that the filing of such new claims in advance of the OPs was required, having regard to the legitimate interests of the other parties to the proceedings, including their right to duly prepare for discussion of the new claims.
  • The proprietor’s contention that the negative finding on compliance with A 123(2) of the then pending request came as a surprise was unfounded: proprietors should be aware that new sets of claims have to be examined for compliance with A 123(2), even more so in the present case where the critical feature had already been questioned by the opponents and by the OD during the written proceedings.
[5] As regards the [patent proprietor’s] arguments in support of its contention that the opponents could not have been taken by surprise by the late filing of the eventual single request, the board observes the following:

[5.1] The [patent proprietor’s] submission that the subject-matter of the new request was identical to the subject-matter as granted and thus had been discussed since the beginning of the opposition proceedings […] is not supported by the facts. Claim 1 according to the eventual single request submitted during the OPs before the OD is not at all identical to the text of the corresponding Claim 15 as granted. That text had never been discussed, since the [patent proprietor] had already submitted an amended version (Claim 5) in response to the notices of opposition.

[5.2] The same is true for the [patent proprietor’s] contention, during the OPs before the board, that the opponents had already been familiar with all the features of the final request and the relevant documents.

There is nothing which could justify such an assumption. Quite to the contrary. In the claims filed during the OPs the [patent proprietor] also deleted the feature concerning the particle size, a feature which had not been objected to at all. This feature had been introduced into the claims as a first reaction to the notices of opposition. It could thus have been assumed by the [opponents] that this would be one of the essential features of the subject-matter pursued during the opposition proceedings.

While it can be admitted that the replacement of the feature “at least 30% (w/w) of starch” following the OD’s negative finding on its compliance with A 123(2) was foreseeable, the [patent proprietor] has not given any reason, nor is there any apparent, for the deletion of the particle size which led to a considerable broadening of the subject-matter at a very late stage of the opposition proceedings. Such an inconsistent course of action by the proprietor was not to be anticipated by the other parties or the OD.

In addition, the new request would have raised new issues, not least because its claims differed from the subject-matter of the granted claims by a feature taken from the description, namely the “non-fibrous” solid carrier.

[5.3] Under these circumstances it is irrelevant that the replacement as such of the feature objected to in amended claims could not have been a surprise to the other parties. Nor is it relevant that, as the [patent proprietor] alleged before the board, the opponents were facing as a result of their attacks, considerably less complex claims.

As regards the [patent proprietor’s] argument that the admission of the amended claims would have been justified in view of the fact that three of the four opponents were apparently willing to discuss the new claims after a (substantial) break for preparation […], it is pointed out that the concept of procedural abuse is not limited to conduct necessitating an adjournment of the OPs, and that such necessity is not solely determined by the affected parties’ view of whether or not an adjournment of the OPs is necessary or appropriate.

[6] For the reasons given by the OD and those given above, the board is satisfied that the OD, in taking the view that the filing of the amended claims during the OPs was an abuse of procedure and therefore declining to admit them into the proceedings, has correctly exercised its discretionary power, namely on the basis of the given relevant facts, in accordance with the right principles and in a reasonable way. There is therefore no reason to overrule the OD’s discretionary decision not to admit the late-filed claims (cf. G 7/93).

Main request

[7] The [patent proprietor’s] main request is identical to the (then sole) request which was not admitted into the opposition proceedings. The [patent proprietor] argued that during the OPs before the OD it had seen no reasonable chance of success with that request or any new requests, and had therefore decided to seek redress at the department of second instance. Therefore, it should be given the opportunity to defend that request before the board of appeal.

[7.1] The purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the OD on its merits and to obtain a judicial ruling on whether the decision of the OD is correct (G 9/91 and G 10/91). The appeal proceedings are not about bringing an entirely fresh case; rather, the decision of the board of appeal will in principle be taken on the basis of the subject of the dispute in the first-instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in second-instance proceedings (T 1705/07 [8.4]).

[7.2] This means that appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition and that - contrary to the [patent proprietor’s] view, which apparently prompted it in the opposition proceedings to eventually limit itself to the request under consideration - parties to first-instance proceedings are not at liberty to bring about the shifting of their case to the second instance as they please, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of “forum shopping” which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. In order to forestall such abusive conduct, Article 12(4) RPBA provides that the Board has the power to hold inadmissible any requests which were not admitted in the first-instance proceedings.

[7.3] Hence, in the present case, neither the fact that the claims according to the main request were filed together with the notice of appeal (Article 12(1)(a) RPBA) nor the [patent proprietor’s] motives for limiting itself to the set of claims according to the single request eventually submitted in the opposition proceedings are, in themselves, a valid reason for admitting those claims into the appeal proceedings.

[7.4] Quite to the contrary: given the history of these claims, their admission by the board would be incompatible with the judicial nature of the inter partes appeal procedure and would in effect render pointless the OD’s correct decision not to admit them. Moreover, to admit the [patent proprietor’s] main request in the given circumstances would put the [opponents] in a worse position than if the request had been admitted and decided upon already by the OD. Either the subject-matter of that request would be dealt with only by the board as department of second instance, meaning higher costs and loss of one instance to the opponents, or - much more likely, as the OD has not yet decided on novelty and inventive step - the case would be remitted to the department of first instance, as requested by the [patent proprietor]. As pointed out in particular by [opponent 3], this could entail a further delay of several years before the present case would be finally settled. Such a prolongation of the proceedings is incompatible with procedural economy and would for a long time and without good reason deprive the other parties and the public of legal certainty about the validity of the patent in suit.

[7.5] For these reasons, the board has decided to exercise its power under Article 12(4) RPBA not to admit the main request into the appeal proceedings.

Auxiliary requests

[8] Similar considerations are valid for the [patent proprietor’s] auxiliary requests. Article 12(4) RPBA makes it clear that new claims, even if filed together with the notice of appeal, are unlikely to be considered if they ought to have been presented in the first-instance proceedings (T 339/06).

[8.1] Auxiliary Request 1 is, due to the deletion of the feature “non-fibrous”, even broader than the main request. The claims of Auxiliary Requests 2 and 3 contain the feature “30% w/w of starch”, Claim 1 of the latter request being identical to Claim 3 of the (main) request which the [patent proprietor] had withdrawn in reaction to the negative opinion of the OD regarding that feature’s compliance with A 123(2). By withdrawing any claim containing that feature and refusing to file any amended and/or auxiliary requests, the [patent proprietor] prevented the OD from giving a reasoned decision on that issue. Thus, if the [patent proprietor] had intended to pursue it, it ought not to have withdrawn all claims containing that feature from the proceedings (cf. T 933/04).

[8.2] As mentioned earlier, in opposition proceedings a proprietor is free to refrain at any time from filing further requests, and may then file different (new) requests in the appeal proceedings. However, contrary to what the [patent proprietor] suggested, this does not mean that these new requests then have to be admitted into the proceedings as of right. Rather, the admissibility of a request first submitted in appeal proceedings and relating to an independent claim which, although within the scope of the opposition, had not been considered in the first-instance decision has to be decided in the light of whether it could have been submitted earlier (T 339/06).

[8.3] According to the [patent proprietor], the reason for not already submitting these or similar requests in the opposition proceedings was its incorrect assumption as to the procedural consequences of not doing so. No objective reason preventing the [patent proprietor] from following the invitation by the OD has been put forward or is apparent to the board, in particular in respect of Auxiliary Request 3 which is identical to a request withdrawn in reaction to the negative (preliminary) ruling of the OD on compliance with A 123(2). The [patent proprietor’s] purported view that any new requests submitted to the opposition had no reasonable chance of success was mere speculation.

[8.4] For these reasons, the board, in due exercise of its discretionary powers, has decided not to admit Auxiliary Requests 1 - 3 into the proceedings.

[9] As there were no further requests, the procedural situation is the same as that prevailing at the end of the opposition proceedings, namely that there is no text of the patent in suit which meets the requirements of A 113(2).

This is quite consistent with the recent decisions invoking Article 12(4) RPBA, which we have seen in earlier posts (e.g. here).

Made me think of a Leonard Cohen song: “… I’ve seen the future, brother. It is murder. …” :-)

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: The decision is also commented here.


Manolis said...

I have to admit that I kind of like this way the Boards are going.
Theoretically a second instance should be for challenging the decision of the first instance and not for re-opening the case and starting the discussion from the beginning...

A small remark on this statement:
"... meaning... loss of one instance to the opponents..."
There are some Boards - or at least some decisions - that explicitly or implicitly admit that the parties have a right to two instances. On the other hand, it seems that when parties invoke this right, the Boards point always to Art.111 EPC and affirm that such a right does not exist under the EPC...

Michael Thesen said...

I think that the right to two instances is particularly critical for the patentee (and not for the opponent), because the current procedure violates Art. 32 of the TRIPS agreement, which says "An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available".

If a patent is revoked at the BoA while having been upheld by the OD, the EPC does not provide an opportunity for judicial review of this decision.

The EPO does not care because it is not member of the TRIPS agreement. However, I wonder if the EPC member states violate TRIPS by conferring the right to revoke patents to the BoA?

oliver said...

Interesting point, Michael.

Anonymous said...

The BoA *IS* the judicial review instance, or otherwise the EPC couldn't exist.

Decisions made by the ED or OD are administrative in nature, and according to national constitutional law should be judicially reviewable. Thus, to achieve centralisation, the BoA must be designed to have a judicial character.

I understand that this is one of the reasons why OPs before the BoA are public (as in a national court), whereas they are not before the ED. This is also the reason for providing a much higher degree of independence to BoA members in comparison with EDs and ODs, even though the latter already enjoy a good one.

Furthermore, Article 135(1)(b) EPC does indirectly provide the theoretical possibility of submitting a refused patent to the purview of national courts, albeit in a limited fashion, through a request for transformation.

I wonder though how the logic of the EU court for rejecting the proposed community patent instances would apply to the present EPC system.

About the observation by Manolis, I can only concur.

Myshkin said...

Whether the current procedure violates Art. 32 TRIPS depends on how one interprets this article, see in particular Jacob LJ's analysis in Pozzoli SPA v BDMO SA quoted here.

The interpretation by which the current procedure would violate Art. 32 TRIPS does not make too much sense. If a BOA considers that a decision of an OD to maintain the patent cannot be upheld, the reason will often be that the claims are found not to be allowable. Forcing the BOA to remit the case would then effectively result in an order to the OD to revoke the patent due to res iudicata. The proprietor can then formally appeal that decision, but without any chance of success. This isn't helpful.

The counterargument to this is that the proprietor after a remittal by the Board can again try to amend his case, and again after a revocation by the OD. However, the possibility of making amendments has nothing to do with the idea of a judicial review. Art. 32 TRIPS certainly does not imply that a proprietor has a right to amend after a revocation of the patent.

I submit that in Art. 32 TRIPS "any decision to revoke" should be interpreted as including "any decision on a request for revocation".

pat-agoni-a said...

There is a clear danger in a BoA deciding an issue for the first time (and this is also true for any court), since it is very hard to overview one´s own convictions.

Despite this, every procedure has to come to an end in a reasonable time and with a reasonable use of the available resources. The more resources a case consumes the less resources remain avalable for the others waiting.

oliver said...

I completely agree.

Maybe it is because I was shaped by the French legal system, but sometimes I feel it would be great to have something like a Cour de cassation.

But then the number of cases where the Boards misapply the law might not justify a separate court.

Perhaps an extended petition for review procedure (hopefully without R 106) would do the job.