Tuesday, 14 June 2011

T 2112/09 – Like Mother, Like Daughter

This appeal concerns the refusal of an application by the Examining Division (ED). As a matter of fact, the application under consideration was a divisional application from a parent application that had been granted and was then revoked by the Opposition Division (OD). The patent proprietor had filed an appeal (T 1292/09), but this appeal was dismissed on October 22, 2010.

Following the refusal of the divisional application, the applicant filed an appeal. The case was examined by the same Board of appeal in almost the same composition as in the opposition appeal case (2 members identical), only two months after the decision on the parent patent. So it was perhaps not so good an idea to file a main request that encompassed the claim that had been found not to be allowable in the opposition appeal case …

*** Translated from the German ***

[2.1] The main request was filed as part of written submission made on November 22, 2010, i.e. more than a year after the submission of the statement of grounds of appeal and less than one month before the oral proceedings. Pursuant to Article 13(1) RPBA such a request may be admitted at the Board’s discretion. The discretion is to be exercised in view of the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. If, as here, the request is amended at a very late stage, the need for procedural economy requires the request to be admitted only if the amended claims forming the request are clearly allowable (also see, for instance, T 153/85 [2.1]).

[2.2] The present main request concerns a divisional application to the parent patent that has been revoked by decision T 1292/09, which is final (rechtskräftig). Therefore, it has to be examined whether the objection of lack of inventive step that has been raised in decision T 1292/09 also applies to the main request and, therefore, hinders the latter from being considered to be clearly allowable.

[2.3] Claim 1 of the main request and of the patent that was revoked in decision T 1292/09, which is final, have the following wording:

Main request (divisional application): 
1. The use of an organic polymer which is suitable for feedstuffs for increasing the pelletizing stability of a raw granulate containing enzymes.
Parent patent:
1. The use of an organic polymer which is suitable for feedstuffs for increasing the pelletizing stability of granulated feedstuff additives containing enzymes by coating with a polymer, wherein the coating … (followed by several coating alternatives with specific organic polymers suitable for feedstuffs)
Claim 1 of the main request is broader than claim 1 that has been found not to be allowable in T 1292/09 and completely overlaps with it, because in contrast to claim 1 of the parent patent, claim 1 of the main request neither limits the granulated component containing enzymes to feedstuff additives nor the polymers to organic polymers suitable for feedstuffs, whereas the remaining features of the claims are identical.

It follows directly that the objection of lack of inventive step that was raised by the Board against the subject-matter of claim 1 of the parent patent applies to the subject-matter of claim 1 of the main request by analogy. There is no indication justifying a different assessment, either.

[2.4] Thus the main request does not fulfil the requirement of clear allowability. Consequently, the request is not to be admitted into the proceedings.

[2.5] In view of this factual situation, the question of whether there is a res iudicata effect based on the decision of the Board of appeal concerning the parent patent, which is relevant for the divisional application, as discussed in T 51/08 [3], and whether the main request cannot be admitted for this reason alone, may be left unanswered.

As the auxiliary request was found to be unclear, it was not admitted either. So there was no request on file and the appeal had to be dismissed.

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

The file wrapper can be found here.


Anonymous said...

... and whether the main request cannot be admitted for this reason alone, may be left unanswered.

Aaaaargh! Our DG3 friends succeeded again in avoiding answering a difficult (but interesting) question.

Myshkin said...

Very unfortunate indeed to not get some new views on T 51/08.

One reason why I'm not so sure about T 51/08 is that it seems to apply Art. 111(2) by analogy (binding effect of the ratio decidendi), which to me seems to go beyond merely recognising the finality of the earlier decision.

Recognising the finality of the decision would mean that requests identical to those that were found not allowable could not be admitted. I'm not so sure the same should hold for requests that only share some claims with the earlier requests, because then one would have to look at the reasons for refusing those requests, i.e. at the ratio decidendi.

This might seem nitpicking, but it can make a lot of difference if an ED or OD deciding on a divisional application is bound by all the little points already decided in an appeal on the parent, e.g. on whether the prior art discloses certain features or not, whether certain combinations of features have a basis in the application as filed, etc.

pat-agoni-a said...

In T 51/08 the board invoked the principle of res judicata. Implicitly it seems to have used A 125 for introducing this principle. Although quoting a legal dictionary it provided no further basis for nor the details of the application of this principle in different member states. Something it should have done.

Probably the present board was not convinced if and how this principle had to be applied to the present case and carefully avoided the discussion.

Anonymous said...

I think there is a clear distinction between this case and T 51/08 as there the earlier decision concerned the parent application whereas here it concerned the granted patent deriving from the parent application. Thus here one of the fundamental requirements for a finding of res iudicata - that the parties to the proceedings be the same - is not given.

Myshkin said...

It is true that the parties are not the same, but all parties to the proceedings for the divisional (i.e. the applicant) were parties to the proceedings for the parent. That seems sufficient to me.

Suppose that after an appeal in opposition resulting in remittal to the OD, one of the opponents withdraws the opposition. Then res iudicata would still apply.