Tuesday, 13 September 2011

R 5/11 – Boilerplates Etc.

In yesterdays post, we have seen decision T 1685/07, where Board 3.2.03 dismissed the appeal of the patent proprietor against the revocation of its patent. The patent proprietor then filed the present petition for review.

The petition was based on an alleged violation of the right to be heard (A 112a(2)(c), A 113). The patent proprietor pointed out that the non-admission of auxiliary requests 4 to 6 was based on reasons which it had not been able to comment.

The relevant file history is as follows:

Together with its statement of grounds of appeal, the patent proprietor filed a main and an auxiliary request. The main request was directed at a method for producing an air separation installation comprising at least one coldbox for at least one module of the installation. About five weeks before the oral proceedings (OPs) before the Board, the patent proprietor filed six new auxiliary requests:
  • Auxiliary request 1 was identical to the main request, but the two-part form was abandoned;
  • Auxiliary requests 2 and 3 were directed to an embodiment with three coldboxes;
  • Auxiliary requests 4 to 6 were directed to an installation with at least two coldboxes of a particular size.
As we have seen in the previous post, the Board did not admit auxiliary requests 4 to 6. The Board said (point [6.8] of the Reasons) that:
“… All in all, the claim versions according to auxiliary requests 4 to 6 go into a completely different direction than the claim versions according to the main request and auxiliary requests 1 to 3. Contrary to the opinion of the respondent (sic) it is not relevant that auxiliary requests 2 and 3 have been found not to be allowable under 123(2), because this deficiency could have been easily overcome by convergent limitations of the claim versions.
The way in which the respondent (sic) proceeded presents both the appellant (sic) and the Board with an unacceptable situation because the respondent (sic) forces them to deal with divergent claim versions and, consequently, with a completely new factual situation. This way of proceeding is not a regular defence that is consistent with efficient proceedings (verfahrensfördernd) in the above sense. Therefore, the Board has exercised its discretion under Article 13(1) RPBA by not admitting auxiliary requests 4 to 6 into the proceedings. …”
The petitioner pointed out that these reasons came as a surprise. Neither the belated filing nor Article 13 RPBA had been mentioned. T 565/07 had not been referred to either.

According to the petitioner, the violation of the right to be heard was fundamental within the meaning of A 112a(2)(c) because it resulted in a patent being definitively destroyed (vernichtet).

The EBA first stated that it did not find the petition clearly inadmissible. It then examined whether it was clearly unallowable:

*** Translation of the German original ***

[2] As can be seen from the course of the proceedings […], the main reason for not admitting the auxiliary requests 4 to 6 was that they went, in the opinion of the Board, “into a completely different direction” than the claim versions of the main request and of auxiliary requests 1 to 3, i.e. a lack of convergence of auxiliary requests 4 to 6 with respect to the requests of higher order. The Board had already pointed out this problem in its summons [to OPs], when commenting on former auxiliary request 3 on which the later filed auxiliary requests 4 to 6 were based. The petitioner explained that this aspect was indeed discussed during the OPs. No violation of the right to be heard under A 113(1) is manifest in this respect.

[3] The petitioner considers that its right to be heard has been violated because the way in which the proceedings were conducted by the Board of appeal (BoA) did not give it any opportunity to comment on the question of whether the requests under consideration were late filed in view of Article 13 RPBA, or to take appropriate alternative action. This was particularly true for the provision of Article 13(3) RPBA dealing with the issue of whether amendments filed after the summons for OPs were acceptable, which had been applied in the decision without having been discussed at all.

[4] The EBA cannot share this opinion, for the following factual and legal reasons:

[4.1] As can be seen from the course of the proceedings […], the BoA not only mentioned the problem of diverging claims but also pointed out that the admission of amended requests was within the discretion of the Board pursuant to Article 13 RPBA. The Board cannot be held responsible for the petitioner having understood this to be a boilerplate text (Leerformel) without there being a reference to the facts of the case.

[4.2] Irrespective of this reference the petitioner’s representative had to be aware, in view of the established practice of the Boards of appeal (see Case Law of the Boards of appeal, 6th edition, 2010, VII.E.16 “Filing of amended claims in appeal proceedings”) that the admission of amended claims during the appeal proceedings is within the discretion of the Board. This discretion is exercised by pondering all the circumstances of the case under consideration. This established practice was codified in 2003 to form the RPBA, which a professional representative may be expected to know.

[4.3] As admitted by the petitioner, the BoA announced during the OPs that it intended not to admit auxiliary requests 4 to 6. It is alleged that it has justified this by pointing out the lack of convergence of those claims without referring to their late filing. This remark has doubtlessly given the appellant the opportunity to provide arguments in favour of the admission of auxiliary requests 4 to 6. It has not asserted that it has been hindered from doing so. It merely points out that after several enquiries, only A 106 had been cited as legal basis for the intention not to admit [the requests] and that it had expressed doubts in this respect. The EBA is of the opinion that this cannot be an objective reason hindering [the petitioner] from presenting its own arguments in favour of the admission of auxiliary requests 4 to 6, especially if it had doubts concerning the correctness of the response it had received. That the aspect of late filing is part of the argument follows from the mere fact that the requests had been filed late; there was no need for the Board to refer to this fact.

[4.4] Even if the BoA did not address the belatedness of auxiliary requests 4 to 6 of its own motion during the OPs, the fact that it took it into account when exercising its discretion does not constitute a violation of the right to be heard of the petitioner. In the summons [to OPs] the BoA had clearly referred to the problem of amended requests and to its discretion under Article 13 RPBA in this respect. There was no need for repeating this remark during the OPs. The fact that the Board referred not only to Article 13(1) RPBA but also to Article 13(3) RPBA, which does not leave any room for discretion, does not do any harm because this provision is not relevant for the reasons.

[5] The arguments submitted by the petitioner, according to which the alleged violation of A 113(1) were fundamental within the meaning of A 112a(2)(c), are not persuasive either.

[5.1] The mere fact that the BoA confirmed the revocation of the petitioner’s patent cannot as such qualify the alleged violation of A 113 as fundamental. It is not sufficient that the issue of the appeal proceedings is fundamental for the petitioner.

[5.2] Also, the EBA cannot endorse the petitioner’s opinion according to which it had not been able to comment reasons that were essential for the decision. See the considerations under [4.3] above.

[5.3] Finally, the petitioner’s argument according to which the conduct of the proceedings by the BoA had prevented it from taking easily available measures for saving the patent, is not persuasive. The petitioner is of the opinion that it could have fallen back on its previous third auxiliary request filed on March 31, 2009, which would have meant that the provisions of Article 13(3) would not have been applicable to this request. When arguing in this way, the petitioner overlooks that the admission of its previous third auxiliary request was also within the discretion of the Board because this request had been filed after the statement of grounds of appeal and that the Board had already pointed out in its summons that this request lacked convergence with respect to the preceding requests. Consequently, the situation would not have been very different from the situation underlying the decision.


For these reasons, it is unanimously decided that:

The petition for review is rejected as clearly unallowable.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.