When an Opposition Division (OD) raises new objections during oral proceedings (OPs) and asks you whether you wish to file amended claims, think twice before declining the offer, because doing so may shut the door to filing such amendments in appeal proceedings.
In the present case, the patent proprietor had introduced the feature “… so that the space requirement in the building is substantially limited to the space required by the elevator car and counterweight on their paths including safety distances and the space needed for the hoisting ropes” into claim 1 in a submission that was received by the OD after the issue of a summons to OPs. During the OPs, the OD found this feature of the main request not to comply with the requirements of A 123(2). The chairman of the OD then stated that the auxiliary requests on file seemed to have the same problem. Having been asked whether it would file any further requests, the patent proprietor did not avail himself of the opportunity to do so. Thus the chairman announced the decision to revoke the patent.
Together with its grounds of appeal, the patent proprietor requested that the patent should be maintained on the basis of its (new) requests. In claim 1 of the main request and of the first and second auxiliary requests, the feature “so that the space requirement...”, was not present.
This situation gave the Board the opportunity to discuss the precise meaning of Article 12(4) RPBA, which reads :
Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) [i.e. in the notice of appeal and statement of grounds of appeal, any written reply of the other parties filed in due time, any communication sent by the Board and any answer thereto] shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2) [i.e. the complete case of each party, including all the facts, arguments and evidence relied on, should be contained in the statement of grounds of appeal and its response thereto, respectively].
[1.1] The OD issued a summons to OPs dated 11 January 2008. This did not mention the need to include the space requirement feature (i.e. the feature “so that the space requirement in the building is substantially limited to the space required by the elevator car and counterweight on their paths including safety distances and the space needed for the hoisting ropes”). In its submission dated 26 August 2007 (sic), which was received at the EPO on 8 September 2008, a new main request and three new auxiliary requests were filed, each of which included the space requirement feature. It may also be noted that the written submission with which these requests were filed made no mention at all of having included the space requirement feature, nor where it had its basis in the application as filed.
The fact that during the OPs of 7 October 2008 an objection under A 123(2) was found to exist by the OD concerning the inclusion of the space requirement feature, is thus considered to be entirely in line with the normal course of proceedings.
[1.2] The OD, as also indicated in the minutes of the OPs at 11:40 and 11:50, not only explained the reason for its finding under A 123(2) but also asked the proprietor explicitly whether he would file any request that would overcome the objection.
[1.3] The proprietor’s choice not to file any amended or auxiliary request in light of these circumstances is found by the Board to be of importance in considering the admissibility of certain new requests in the appeal proceedings in accordance with Article 12(4) RPBA.
[1.4] Article 12(4) RPBA reads as follows:
“(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirement in (2).”
It follows from Article 31 of the Vienna Convention on the Law of Treaties that the EPC should be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of the treaty’s object and purpose (see J 9/07 [13]). The same applies to the interpretation of the Implementing Regulations on the Grant of European Patents and the Rules of Procedure of the Boards of Appeal, as they are part of the EPC (A 164(1)) or have their basis in the Implementing Regulations (R 12(3)). Article 12(4) RPBA thus allows the Board, to hold any such request as inadmissible if it could have been presented in the first-instance proceedings. Thus, when deciding on this issue, the Board should state the facts that show why the specific request(s) now on file could have been presented in first instance proceedings. In particular, the Board should take into account all relevant circumstances. It is evident that a request can be held inadmissible under Article 12(4) RPBA when, as in the present case, added subject-matter held unallowable during proceedings before the OD is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings.
[1.5] The amendments made by way of the main request and the first and second auxiliary requests, all involved inter alia deletion of the space requirement feature. However, the simple removal of that feature which the proprietor had itself added as an amendment during the opposition proceedings, could evidently have been done by way of presenting a request to this effect during OPs before the OD so as to overcome the objection of the OD. This is particularly so in light of the fact that the OD chairman explicitly asked the proprietor whether he would file a request which overcame the objection.
[1.6] Although the proprietor argued that it was a complete surprise to be presented with an A 123(2) objection because the annex to the summons had stated that a flat drive machine unit was not essential, this does not provide an overriding reason as to why the proprietor, when offered the chance of filing requests to overcome that objection, did not do so. Not only can an OD depart from its preliminary opinion, in view of argumentation by the parties for example, but in the Board’s view the proprietor should not at all have been surprised that a feature it introduced by way of amendment was subject to objection. Moreover, the OD had not indicated in its annex to the summons that a flat drive machine unit was not essential in combination with the space requirement feature, because the space requirement feature was not in any of the claims on file at that time. Any comment in the annex to the OPs summons concerned a differently worded claim.
[1.7] The appellant’s contention that the space requirement feature had been an essential part of the whole “machine room-less” concept in the other family members is not found to be convincing in relation to admissibility of the various requests in appeal proceedings, since by the amendments made in the main request and the first and second auxiliary requests, the space requirement feature has been entirely removed, whereas the OD did not object to the space requirement feature being introduced into the claims per se, but instead that the application as filed required that a flat drive machine unit also be included when considering the space requirement feature.
[1.8] Further, in regard to the reliance placed on decision T 545/01 by the appellant, the independent claim found allowable by the Board in that case (see page 3 of that decision) included not only the space requirement feature but also the drive machine unit of a flat construction. In the Reasons [1.3] of that decision, it is also stated that the application as originally filed disclosed to the skilled person that a flat machine was essential. Even on this basis alone, the appellant should thus not have been surprised that the OD also found that a flat drive machine was an essential feature of the disclosure.
[1.9] The appellant’s argument that the proprietor “did not want to follow this invitation, as the limitation to ‘flat machines’ would have effectively reduced the scope of protection to the content of maintained EP 784 030”, shows only that the proprietor had made a conscious and deliberate choice not to overcome the objection made by the OD for reasons unconnected with the objection itself. The Board therefore does not find such an argument persuasive. On the contrary, the proprietor’s deliberate choice not to file any request to overcome the objection, despite the offer to do so, is a further indication as to why a request filed only with the appeal grounds should not be admitted into the appeal proceedings.
[1.10] The further argument that the proprietor did not know the reasons why the OD had reached its conclusion and that this meant the proprietor had to completely revise its defence strategy is also found unconvincing in relation to why no further request was filed during opposition proceedings. The amendment to the claim to include the space requirement feature was made of the proprietor’s own volition at a late stage of proceedings (about 1 month before the OPs) and it should have been expected that objections may have arisen and it could thus likewise be expected that the proprietor should have taken this possibility into account.
[1.11] The further argument of the appellant that a deletion of the space requirement feature during those OPs would have resulted in objections from the opponents due to late filing is also unconvincing. Merely because an objection might be raised, whether or not such an objection would be justified, is not a hindrance to filing a request, not least when the chairman invited the proprietor to do so.
[1.12] The Board is also not convinced by the appellant’s argument that the necessity to drop the space requirement feature only became clear after receiving the decision, because the OD explained at the OPs what the objection was. Indeed, the OD explained in detail the nature of the objection, as is clear from the minutes of those proceedings.
[1.13] The appellant’s argument that the Board, by not admitting certain requests, would be disrespecting the proprietor’s right to have its patent examined on claims it has agreed and would thus be in violation of A 113(2) as made evident in T 1854/08, is also not found convincing.
A 113(2) does not require that a request must be found admissible, merely because it has been filed. Nor is the Board deciding on requests which have not been submitted to it. Merely because a request is filed, does not prevent the Board from finding the request inadmissible. This is evident from the straightforward wording of Article 12(4) RPBA.
Further, the case T 1854/08 cited by the appellant concerns an ex parte matter, in which new requests were filed and, due to a perceived lack of clarity of the claims in those requests reported to the applicant by email, a decision was taken on a previous set of claims which had however been replaced. In the present case, the Board would not be deciding on a previous set of claims, since those claims are not the subject of this decision. T 1854/08 thus concerns an entirely different matter and does not add any support to the appellant’s argument.
[1.14] The appellant further argued that any new request made on appeal could, as a general rule, have been filed in the first instance proceedings, so that a restrictive use of Article 12(4) RPBA in this manner to prevent the proprietor from filing claims in this case would lead to a situation where claims could never be forwarded which have not already been forwarded in the first instance, and that this could not have been the intention of Article 12(4) RPBA.
This interpretation of Article 12(4) RPBA is not considered to be in line with the intention addressed by this Article. Although from the very wording of Article 12(4) RPBA it is clear that such claims can be held inadmissible, it is up to the Board to exercise its discretion in such matters, having regard to the particular circumstances of the case. It is certainly not so that any request not filed in the first instance proceedings should not be admitted into the appeal proceedings; far from it. The Board has also […] admitted a new request, the third auxiliary request, into proceedings.
In so far, the circumstances of the present case are particularly noteworthy, since the considered and deliberate choice made by the proprietor not to file a further request, despite being given the opportunity to do so after the objection had been explained, is found by the Board to precisely correspond to the intention of Article 12(4) RPBA. Indeed, the primary purpose of an appeal is to provide the opportunity for a final instance review of the decision of a previous instance, thereby (in inter partes proceedings) allowing the losing party to challenge the decision of an OD on its merits and to obtain a judicial ruling as to whether the decision of the OD is correct (G 9/91 and G 10/91). The appeal proceedings do not have the purpose of starting a new examination of different subject matter, in particular where such subject matter involves broadening of claims considered by an OD.
For an interpretation in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of the treaty’s object and purpose (see point 1.4. above), additional reference is made to CA/133/02 e, the document put to the Administrative Council concerning the change to the RPBA when introducing Article 10a(4) (which later became Article 12(4)), where the following is stated (see page 12):
“… and the boards will retain their discretion, as a review instance, to refuse material excluded at first instance or not submitted during first instance proceedings.”
Also from this, it is evident that the function of the Boards of Appeal was not only recognised to be that of a review instance, but that one way of ensuring this function was respected was codifying, in the Rules of Procedure, that material not submitted at first instance could be refused. Article 10a(4) refers to such material as “facts, evidence or requests” (see CA/133/02 e, page 15), as does current Article 12(4) RPBA.
[1.15] The appellant also stated that a contravention of A 113(1) would occur if the requests were not admitted. However, the Board fails to see any such contravention. The appellant, in writing […] and orally during the OPs, both had and took the opportunity to present its arguments as to why its requests should be found admissible and allowed into the appeal proceedings. The fact that the Board finds its arguments unconvincing does not mean that the appellant has not had an opportunity to present its arguments on the matter or that the Board had ignored the appellant’s submissions in this respect.
[1.16] In consequence of the aforegoing, the Board decided not to admit the main request and the first and second auxiliary requests into the appeal proceedings, based on the provisions of Article 12(4) RPBA.
[1.17] For the same reasons, the Board also holds the fourth auxiliary request filed by the appellant with its submission of 20 April 2011 as inadmissible with respect to Article 12(4) RPBA, as claim 1 of this request also omits the space requirement feature. In this regard it should be noted that Article 12 RPBA is entitled “Basis of Proceedings”, and whilst Article 12(4) RPBA makes a reference to Articles 12(1) and (2) RPBA, this reference only concerns which matters are to be taken into account when considering the appeal. It does not state that Article 12(4) RPBA is restricted in its application by the time limit for filing the grounds of appeal or any reply thereto. Indeed, a restriction in that sense would not seem to serve any useful purpose and might even result in a possibility of artificially circumventing Article 12(4) RPBA, irrespective of whether Article 13(1) RPBA might be a further provision of the Rules of Procedure that could provide a different barrier to filing such requests.
[1.18] The sixth auxiliary request, filed during the OPs after discussion of the previous requests, does include the space requirement feature as per the claim considered by the OD in its decision. Additionally the further feature is added that the drive machine unit “is of a flat construction as compared to its width” (in addition to the space requirement being "irrespective of hoisting height" which was added first in the fifth auxiliary request).
A claim including this particular combination of features, in view of the objection made by the OD during OPs and the offer to file amendments, is a claim which the Board finds could have been filed during opposition proceedings in order to overcome the A 123(2) objection.
Again, the deliberate choice of the appellant not to file such a claim with this or similar wording during the OPs before the OD, in the knowledge of the A 123(2) objection, is held by the Board to result in this being an inadmissible request in appeal proceedings, for the same reasons as given above on the basis of Article 12(4) RPBA.
The appellant’s arguments that the subject matter of the claim was the subject matter of a dependent claim and was not complex do not alter the aforegoing conclusion on admissibility of the request, since neither the complexity of the request nor the fact that the feature was in a dependent claim relates to the reasons for the Board’s conclusion.
[1.19] The appellant’s arguments concerning G 1/05 and the subsequent revision of the implementing regulations limiting the possibility of filing serial divisional applications over the lifetime of an application do not alter any of the aforegoing conclusions. The findings in G 1/05 do not relate to the finding of non-admissibility of certain requests under Article 12(4) RPBA, even if the conclusions reached therein may have been of importance had any request been both admitted and found to meet the requirement of A 123(2). The appellant also did not further explain why G 1/05 would be of consequence for the present decision in this regard.
This approach certainly increases the pressure on representatives acting before ODs. Waiting for the outcome of the opposition proceedings and then adapting the strategy certainly becomes more and more risky.
To download the whole decision, click here. The file wrapper can be found here.
Also commented on Le blog du droit européen.
Also commented on Le blog du droit européen.
