The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to revoke its patent.
The Board established that the main request and the first auxiliary request on file lacked inventive step and that the second and third auxiliary requests did not comply with the requirements of A 123(2). It then dealt with the question whether late filed auxiliary requests 4 to 6 should be admitted.
*** Translation of the German original ***
[6] Auxiliary requests 4 to 6, which had been filed by the [patent proprietor] together with the written submissions dated June 30, 2010, on July 1, 2010, i.e. a little less than five weeks before the oral proceedings, were not admitted into the proceedings.
[6.1] Pursuant to A 106(1), first sentence, an appeal shall lie from decisions of, inter alia, the OD.
Once appeal proceedings pursuant to A 106(1) have been opened, their aim is to review (Kontrolle) the concrete particular case. This means that the extent of review (Prüfungsumfang) is limited to fully or partly remedying the fact that one or more losing parties are adversely affected by the impugned decision of the EPO, upon request of these parties. The Board of appeal does so by setting aside or modifying the impugned decision. In this context, the Enlarged Board of Appeal (EBA) has explained in its established case law that the main purpose of inter partes appeal proceedings is to give the losing party the opportunity of contesting the decision of the OD (G 9/91 and G 10/91; G 1/94). In this respect the appeal proceedings aim at providing an independent judicial review of the administrative decisions of the EPO, which have to be strictly distinguished from the appeal proceedings, in view of their correctness from a factual, procedural and substantive point of view (T 26/88; T 611/90; T 34/90; T 534/89; T 506/91)
It follows from this alone that there are certain limits for the way in which parties can conduct appeal proceedings. These limits follow from both procedural principles (principle of party disposition, binding nature of requests (Antragsbindung), prohibition of reformatio in peius, principle of party presentation and of examination by the office of its own motion (Verhandlungsgrundsatz-Amtsermittlungsgrundsatz), principle of fair trial, right to be heard) and immanent requirements any regular proceedings have to comply with. Thus it is the duty of any party to the proceedings to submit all facts, evidence, arguments and requests that are relevant for the assertion or defence of rights, respectively, as soon and as complete as possible.
[6.2] The requirements which the parties have to comply with if the proceedings are to be conducted in a regular manner follow from the Rules of Proceedings of the Boards of appeal (RPBA), and in particular from Articles 12 RBPA (Basis of proceedings) and Article 13 RPBA (Amendment to a party’s case).
The admissibility of subsequent amendments of the requests of a party are expressly subject to the Board’s discretion. These rules are the expression of the principle of expedition of proceedings (Beschleunigungsgrundsatz) and of the principle of fairness towards the other party.
[6.3] As far as amendments of the patent application or the patent are concerned, R 137(3) and R 80 are relevant, via R 100(1), for examination and opposition appeal proceedings, respectively.
In opposition appeal proceedings, such as here, the only amendments possible are amendments occasioned by a ground for opposition. From a temporal point of view, it is within the discretion of the Board of appeal to refuse late filed requests also in opposition appeal proceedings, in analogous application of R 137(3).
[6.4] The function of appeal proceedings, i.e. to give the losing party the opportunity to have the correctness of the decision of the administrative instance reviewed, has led some decisions to conclude that the patent proprietor is not entitled at all to amend his requests in the appeal proceedings and that the admission of amendments generally lies within the discretion of the Board of appeal (T 840/93; T 427/99 [3 et seq.] T 455/03 [2.1]; T 651/03 [2]; T 339/06 [6.2 et seq.]; T 240/04 [16.1 et seq.])
According to T 153/85 [5 et seq., headnote 1], an applicant shall only be entitled to have a set of claims which differs from the claims on file in the proceedings of the administrative instance, examined in examination appeal proceedings in which he is the sole appellant and sole party to the proceedings if he has filed this set of claims together with the statement of grounds of appeal or as soon as possible thereafter. This has been criticized in decision T 577/97 where it is said that there is no legal basis for refusing requests for amendments during appeal proceedings, unless [the filing of the requests amounts to] an abuse of procedural rights (similar T 162/97 [1.2 et seq.] : the patent proprietor has the right to change his request and amend the patent when filing the statement of grounds of appeal and in the course of the appeal proceedings)
Notwithstanding all those differences of point of view, in practice amendments filed together with the statement of grounds of appeal are, as a rule, admitted, at least when this does not lead to a completely new case. In T 356/08 [2.1.1] the Board of appeal has explained that, as a rule, the decision of the Board of appeal should be taken on the basis of the matter of dispute before the administrative instance. This does not exclude the admission of new requests but makes it dependent on the fulfilment of certain requirements. As a matter of fact, no “fresh case” should be brought (B. 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).
The case law has elaborated rules for taking into account amendments that have been filed belatedly, at an advanced stage of the appeal proceedings, modelled on the principles for exercising discretion in view of late filed submissions. As in the case of late filed submissions, criteria [to be taken into account] are: the time of the amendment, the reasons for it, its extent, or the difficulty or complexity of the amended claims (T 942/05 [1.2]; T 81/03 [2.4]).
[6.5] Notwithstanding the above criteria and the general requirements with respect to the conduct of the proceedings by the parties, which are immanent to appeal proceedings and for which the Boards of appeal have developed a comprehensive casuistry (see Case Law of the Boards of appeal, 6th edition, 2010, VII.E.16 […]), it is of particular importance for the admission of new requests filed only in the course of the proceedings, whether the applicant or the patent proprietor, as the case may be, who files more than one request, follows a consistent line of defence in its different requests and does not, especially towards the end of the proceedings, use a “screen” of divergent versions of claims to create, for both the other party and the Board of appeal, a confusing and unacceptable procedural situation in which they are obliged to select from a great number of incongruous versions the one which could eventually prevail.
Contrary to the opinion of the respondent (sic) there is no need for an explicit legal basis for being restrictive in admitting a great number of requests comprising different versions of claims in view of convergence or divergence. Neither the EPC nor the RPBA contain any express rule for the use of different versions of claims in the form of auxiliary requests. As a rule, such requests are conditional requests in that a subsequent auxiliary request is only to be considered if the preceding request(s) cannot be allowed. Therefore, each such request on file depends on another decision [to be taken] in the course of the proceedings. The hitherto existing case law has, as a rule, held this way of filing requests to be admissible, and it has indeed proven convenient in practice, but it is an exception to the principle according to which requests are to be filed unconditionally, and, therefore, it has to be subject to limiting rules. What is of particular importance, besides the time at which the request is filed, is the question of whether the versions “converge” or “diverge”, i.e. whether they develop the subject-matter of the independent claim of the main request in a given direction or in the direction of an inventive idea, respectively, or else pursue different [lines of] development by incorporating different features in each case.
[6.6] Insofar the Board maintains its previous jurisprudence and refers to its decision T 565/07 [2.5]
“Even if in principle a patent proprietor has to be authorised within the framework of R 80 to limit the subject-matter of a patent by incorporating features of a dependent claim in order to meet objections against the patentability of the independent claim that has been granted, the repeated application of this right in different directions, e.g. in the form of parallel our subsequently filed requests would lead to the result that the patent proprietor leaves it to the Board to decide in which of the different versions the patent should be maintained. This result is not reconcilable with A 113(2) according to which the Board has to stick to the “text submitted … by the proprietor”, which means that it is incumbent on the patent proprietor to decide on the version in which the patent is to be prosecuted, and to file one or several sets of claims that have to correspond to this decision and, as a consequence, to the chosen direction of limitation (see also T 382/96 [5.2] and T 446/00 [4.3]).”
A similar position is also held by other Boards of appeal, as can be seen from the cited decisions T 382/96 and T 446/00, but also decisions T 1126/97 [3.1.1 et seq.] and T 47/03 [1.1, 1.4 et seq.] as well as T 745/03 [2.2] and T 221/06 [2.2].
In the latter decisions the Board of appeal explained that it was up to a party to decide on presentation of its case. When filing several sets of claims, a party usually listed them in order of preference, wherein the broadest claims formed the main request and more limited versions formed auxiliary requests. If a higher order request should fail, then a lower more limited request would still have a chance of success. In the case before the Board, the approach chosen could more aptly be designated as “pick and mix” (buntes Zusammenwürfeln), as independent claims present in higher order requests were also found in lower order requests in differing permutations of independent claims. Such a “pick and mix” approach could give rise to a situation where the final decision did not refer to some independent claims because if even just one of the independent claims in a particular request incorporated from a higher order request did not meet the requirements of the Convention, the particular request concerned had to fail for this reason, without a decision being necessary on the other independent claims.
[6.7] In the present case, the auxiliary requests 1 to 6 filed together with the written submission dated June 30, 2010, i.e. after the summons for oral proceedings, are divergent.
Whereas claim 1 of auxiliary request is distinguished from claim 1 of the main request only in that it is a one-part claim, claim 1 of auxiliary requests 2 and 3 limits claim 1 of the main request to a specific arrangement of three coldboxes for different modules of the installation. However, this limitation is not found in independent claim 1 of auxiliary requests 4 to 6. These claims are drafted more generally because there only have to be two coldboxes and there is no more allocation to particular modules of the installation, as claimed in auxiliary requests 2 and 3.
[6.8] 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.
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