T 23/10 – They Come In Threes

Not long ago, I have reported two cases (here and here) where the Board found auxiliary requests inadmissible because they could have been filed or were withdrawn after having been filed before the Opposition Division (OD). In both cases, Article 12(4) RPBA was invoked, and this article seems to be en vogue. Here is another decision refusing to admit the requests on the same basis.

Here the OD revoked the patent because all requests contained claim 11 as granted which was found not to comply with the requirements of A 123(2). Before doing so, the OD had asked the patent proprietor whether it wished to file more requests, but it had declined this offer.

The patent proprietor filed an appeal. One main and 15 auxiliary requests were filed together with the statement of grounds of appeal. In each of the auxiliary requests 8 to 15, claim 11 was deleted.

Before the oral proceedings (OPs), the patent proprietor withdrew its main request and auxiliary requests 1 to 7. So only auxiliary requests 8 to 15 remained on file.

In the following paragraphs, the Board deals with the admissibility of those auxiliary requests.

[2.1] In its response to the statement of grounds of appeal, the [opponent] argued that the [patent proprietor] could and should have presented during opposition proceedings amended requests in which the contested claim 11 of the previous main request was deleted. The [patent proprietor] had been invited by the OD to submit new sets of claims addressing its objections under A 100(c) together with A 123(2) regarding dependent claim 11. The [patent proprietor] had however deliberately refused to file amended claims which the OD could have considered as regards the other grounds of opposition raised by the opponents. In the [opponent’s] view, the [patent proprietor] had thereby implicitly waived any rights to have his case heard by two instances. Moreover, the [opponent] believed that the [patent proprietor] had deliberately sought to prolong proceedings by refusing to file amended claims in opposition proceedings and requesting remittal for consideration of outstanding issues in opposition appeal proceedings. The filing of amended claims in appeal proceedings was thus considered to be an abuse of proceedings. Although these arguments were intertwined with the [opponent’s] request relating to remittal, they pertained, upon an objective reading, to the admission into proceedings of auxiliary requests 8 to 15.

[2.2] According to the principles developed by the Enlarged Board of Appeal, the appeal procedure is a judicial procedure, separate from the preceding purely administrative opposition procedure, in which an administrative decision of an OD is reviewed by a judicial authority (G 1/97 [5c], G 8/91 [7]). As a consequence, the function of the opposition appeal procedure is mainly to give the losing party an opportunity to challenge the administrative decision against it and to obtain a judicial ruling on whether this decision is correct (G 10/91 [18]). Since the purpose of the appeal is not to conduct the case anew, the issues to be dealt with on appeal are determined by the dispute underlying the opposition proceedings. While this does not preclude new submissions (requests, facts or evidence), their admission is restricted and hinges on the procedural stage at which the submissions are made (T 356/08 [2.1.1], T 1685/07 [6.4]; both decisions cite Brigitte Günzel, The treatment of late submissions in proceedings before the boards of appeal of the EPO, Special edition OJ EPO 2/2007, 30, No. 5).

[2.3] A patentee who has lost before an OD thus has the right to have the rejected requests reconsidered by the competent board of appeal. If however the patentee wants other requests to be considered, admission of these requests into the proceedings implies the discretion of the appeal board. This discretion has to be exercised appropriately which requires the appeal board to consider and weigh up the relevant factors having regard to the particular circumstances of each case (Brigitte Günzel, loc. cit., No. 4.1 and 4.2). Examples of factors to be taken into consideration by the boards of appeal when exercising their discretion are the state of the file, the complexity of the new submissions, and the general interest in the appeal proceedings being conducted in an effective and reliable manner.

[2.4] The procedural principles developed in the case law regarding the treatment of new submissions in appeal proceedings have been codified at least in part in the Rules of Procedure of the Boards of Appeal (RPBA). Article 12(4) RPBA is of relevance in the present case. According to this provision, an appeal board can hold inadmissible facts, evidence or requests that could have been presented in the opposition proceedings. The boards of appeal thus retain discretion, as a review instance, to refuse new material including requests (claim sets) not submitted during opposition proceedings (T 240/04 [16.2], T 1705/07 [8.4]). The discretion given to the boards of appeal pursuant Article 12(4) RPBA serves the purpose of ensuring fair and reliable conduct of judicial proceedings. By requiring all parties to complete their relevant submissions during opposition proceedings, the moment in time when the parties’ case has to be complete is not determined by the procedural strategy chosen by the parties. According to Article 12(4) RPBA, admission of auxiliary requests 8 to 15 into proceedings hinges on the question whether a party to appeal proceedings was in a position to make its submission earlier, and whether it could have been expected to do so under the circumstances.

[2.5] Point 34 of the OD’s minutes of the OPs of 27 October 2009 show that the [patent proprietor], after the chairman had announced that the subject-matter of claim 11 did not meet the requirements of A 123(2) and that this conclusion would apply mutatis mutandis to all requests, was asked whether he had any further requests. After an interruption (evidently for consideration of new requests), the [patent proprietor] announced that it had no further requests. These facts were confirmed by the [opponent] in its reply to the statements of grounds and not contested by the [patent proprietor]. The [patent proprietor] thus was given the opportunity to file amended requests but did not avail himself of this option.

[2.6] The [patent proprietor] advanced as the reason for its conduct of the proceedings that it had been necessary to study the decision in writing before amendments could have been made. The [patent proprietor] referred to decision T 269/02.

This decision however is not to the point: the reasoning to which the [patent proprietor] referred is concerned with a request for apportionment of costs pursuant to A 104(1), which implies considerations proper to this provision. Moreover, while this request turned on the issue of whether the claim sets on appeal could have been submitted during opposition proceedings, the facts underlying the decision are distinct from the present case: two features of an independent claim which had been deleted in the granting procedure were objected to on the ground of A 100(c) together with A 123(2). At OPs before the OD, this issue was first discussed with the parties, although the OD, in the communication accompanying the summons to OPs, had not mentioned that deletion of these features would possibly be a point which needed to be discussed for the purposes of the decision to be taken. At the end of the debate, the chairman directly announced that the requests before the OD did not meet the requirements of A 100(c) together with A 123(2). The [patent proprietor] was not given the opportunity to consider and file amended requests as in the present case. In its decision, the OD found the deletion of only one of the features to be an inadmissible broadening of the claims. This finding was not made known to the patentee during OPs. Under these circumstances, the board of appeal held that the patentee could not have anticipated that the deletion of the features objected to would prejudice, in whole or in part, the maintenance of the European patent in opposition proceedings. The dispute dealt with in decision T 269/02 is thus different from the present case.

Besides, the [patent proprietor] gave no explanation as to why it had needed to study the decision of the OD in writing in order to be able to decide on the formulation of appropriate requests. As the [opponent] pointed out, the objections regarding dependent claim 11 were no surprise to the [patent proprietor] and did not involve complex issues that justified the need to await the decision of the OD. The deletion of dependent claim 11 in all requests under consideration was a straightforward amendment suitable to address the OD’s objections that had been made known to the [patent proprietor]. Thus, the board cannot accept that the [patent proprietor] could not have been expected to submit amended requests because their drafting required difficult technical considerations.

[2.7] The [patent proprietor] further argued that it was its right not to be pushed into making amendments it did not want to make. The patentee did not want to delete dependent claim 11 as granted because of the commercial interest in the subject-matter claimed therein.

According to the principle of party disposition, it is the patentee’s sole right and responsibility to define the subject-matter of the patent in opposition proceedings. The board therefore concurs with the [patent proprietor’s] position that it is the patentee’s right to decide whether or not to file amended claim sets. The principle of party disposition is however counterbalanced by the general interest in the proceedings being conducted in an effective and reliable manner. Moreover, the extent to which a party may have its case examined depends on whether the proceedings are before an administrative or judicial authority […]. Therefore, the principle of party disposition cannot give rise to a right of the [patent proprietor] to have requests automatically admitted at any stage of opposition and opposition appeal proceedings.

Like any party to opposition proceedings, the patentee is under an obligation to conduct them with due care. In order to render the procedure transparent, fair, and effective and in order to achieve legal certainty, Article 12(4) RPBA requires all parties to complete their relevant submissions during opposition proceedings […]. The [patent proprietor], in the present case, was thus under the procedural obligation to file its claim requests at that stage of proceedings, unless there were compelling reasons for being given an opportunity to amend the claims at a later stage. The [patent proprietor] has not presented any good reason in this regard.

Concerning the [patent proprietor’s] alleged commercial interests in the embodiment of dependent claim 11, the board notes that the [patent proprietor] could have maintained the requests which the OD had found to be unallowable and could have submitted new claim sets in addition to these requests. It would then have been incumbent on the OD to give a reasoned decision on all requests found unallowable. The [patent proprietor] would thus have preserved its right for judicial review and could still have evaluated the commercial interest on appeal without delaying the proceedings.

[2.8] No other reason has been advanced that could satisfy the board that the [patent proprietor] has conducted its proceedings with the required diligence. On the contrary, the [patent proprietor], when seeking remittal on the basis of new claim sets on appeal, acted in a manner inconsistent with its prior conduct: during opposition proceedings, the [patent proprietor] chose not to file claim sets in which dependent claim 11 was deleted. Since the wording of the claims constitutes the basis on which maintenance of the patent is judged, the [patent proprietor], by retaining such claim requests, deliberately limited the dispute before the OD and prevented the OD from considering other grounds for opposition than A 100(c). On appeal, the [patent proprietor], on the basis of new claim sets which it had previously chosen not to submit, requested that the case be remitted to the OD for consideration of outstanding issues which the [patent proprietor] had previously prevented from being considered.

To admit auxiliary requests 8 to 15 into the proceedings would allow the [patent proprietor] to take advantage of its inconsistent conduct of the proceedings: the [patent proprietor] could complete its case on appeal and thus extend the scope of discussion as determined by the decision under appeal. Since the appeal board cannot be expected, as a review instance, to deal with all the outstanding issues after the amendment of the [patent proprietor’s] case, admission of auxiliary requests 8 to 15 into the proceedings would give the [patent proprietor] the opportunity to compel the board to remit the case (cf. T 240/04 [16.3]). This would disadvantage the [opponent]s who could have reasonably expected that the requests considered by the OD would form the substantial basis for appeal proceedings. Moreover, the [opponent]s would be forced to either accept remittal and prolongation of proceedings or, in the alternative, to abandon the option of having the case considered by the OD, in which case the [opponent]s would need to convince the board to exercise the powers within the competence of the OD under A 111(1). Admission of auxiliary requests 8 to 15 into proceedings would thus be contrary to a reliable and fair conduct of proceedings.

When exercising its discretion under Article 12(4) RPBA, the board is required to prevent the use of the appeal procedure in a way which runs counter to the interest in a fair and reliable conduct of judicial proceedings. A patentee withholding claim requests in opposition proceedings should thus be precluded from having those requests admitted on appeal, since the patentee would otherwise be permitted to disadvantage the adverse parties by conducting appeal proceedings contrary to its actions before the OD. In view of the foregoing, the board concurs with decision T 1705/07 [8.7] which refers to the principle “nemo auditur propriam turpitudinem allegans”.

[2.9] To the [patent proprietor’s] improper conduct of proceedings must be added, in the present case, its failure to substantiate its new claim requests as required. Although this is not crucial to the present decision, the board notes that where sufficient grounds within the meaning of A 108, third sentence, have not been furnished in relation to a new claim request, the board could not admit these requests for that reason alone (see T 382/96 [5.5], T 509/07 [2.1-3]).

[2.10] In conclusion, the board, having regard to the facts and arguments presented to it, decided to make use of its discretionary powers according to Article 12(4) RPBA not to admit auxiliary requests 8 to 15 into the proceedings. Since no other requests were submitted, the appeal is to be dismissed.

If generalised, this approach is going to change the way in which opposition proceedings have to be conducted by patent proprietors. I think the EPO should publish one of these decisions in the Official Journal so that more people than just case law blog readers become aware of this trend.

To read the whole decision, click here. The file wrapper can be found here.

NB : Laurent Teyssèdre has already commented this decision here.