Over the last months, we have seen that the Boards more and more often rely on Article 12(4) RPBA as legal basis for not admitting new requests. This certainly is a trend to be taken into account by patent proprietors facing opposition proceedings. It is, however, not true that the Boards refuse requests whenever they can. There are situations where they do not invoke Article 12(4) RPBA although they could have done so (and were invited to do so by the opponent), as the present case shows.
Here the Opposition Division (OD) had revoked the opposed patent because it found that the ground for opposition under A 100(c) (i.e. A 123(2)) because neither the main claim (rejection of the opposition) nor the nine auxiliary requests on file complied with this provision.
The patent proprietor filed an appeal; the statement of grounds of appeal contained the main request as well as the nine auxiliary requests. In its preliminary opinion the Board of appeal pointed out that the characterising feature of claim 1 as granted appeared to violate A 123(2).
During the oral proceedings (OPs) before the Board, the patent proprietor withdrew auxiliary requests 2 to 4 and 8 and filed an auxiliary request 10.
Opponent 1 argued that the auxiliary requests should not be admitted because:
- the appellant had not made clear in the notice of appeal that auxiliary requests were maintained – this had only become clear in the OPs before the Board; and
- auxiliary request 10 was filed too late; as it could have been filed during the first instance proceedings, it should not be admitted under Article 12(4) RPBA. Moreover, as the request could have been filed at an earlier stage of the appeal proceedings, its filing was tantamount to a tactical abuse.
The Board first examined the patent as granted and found that the ground for opposition under A 100(c) indeed prejudiced its maintenance. It then dealt with the admissibility of the auxiliary requests:
[3.1] [Opponent 1] argued that auxiliary requests 1 to 9 should not be admitted into the appeal proceedings. In support he contended that (i) the notice of appeal did not clearly specify which requests were being maintained in appeal proceedings and that (ii) the claims were clearly unallowable because the auxiliary requests did not contain dependent claims and thus the relationship between features of the independent claims and those of dependent claims of the patent as granted was not clear. The arguments of [opponent 1] did not convince the board for the following reasons.
Re (i)
[3.2] The appellant defended auxiliary requests 1 to 9 in the statement of grounds of appeal. These requests had already been filed and admitted in the first-instance proceedings, and the decision under appeal is based on these requests. The board therefore does not see any reason to hold these requests inadmissible under Article 12(4) RPBA. Rather, given that the conditions of this provision are complied with, under this very provision, the board shall take into account those auxiliary requests that the appellant did not withdraw in the oral proceedings, i.e. auxiliary requests 1, 5, 6, 7 and 9.
[3.3] This finding cannot be called into question on the basis of the fact that the appellant’s request in the notice of appeal was limited to maintenance of the patent as granted and it was only in the statement of grounds of appeal that the appellant also defended auxiliary requests 1 to 9.
A board may, independently of Article 12 RPBA, decline to admit a request into appeal proceedings in relation to which the admissibility requirements are not met, in particular where sufficient grounds within the meaning of A 108, third sentence, have not been furnished (see T 509/07 [2]).
Pursuant to A 108, first sentence,
“Notice of appeal shall be filed, in accordance with the Implementing Regulations ...”.
Pursuant to A 108, third sentence,
“... a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.”
R 99 deals with the content of the notice of appeal and the statement of grounds (see its title). In this respect the board concurs with the view expressed in T 358/08 [5] that R 99 has not altered the previous law as to the requirements of either the notice of appeal or the statement of the grounds of appeal as regards the appellant’s requests. R 99(1)(c) is satisfied if the notice of appeal contains a request, which may be implicit, to set aside the decision in whole or (where appropriate) only in part. Such a request has the effect of “defining the subject of the appeal” within the meaning of R 99(1)(c). Nor is it necessary in the case of an appeal by a proprietor for the notice of appeal to contain a request for maintenance of the patent in any particular form. This is something which relates to “the extent to which [the decision] is to be amended”, and which is therefore a matter for the statement of grounds of appeal under R 99(2).
In the case at hand it is clear from the notice of appeal that the decision under appeal should be set aside. Furthermore, from the fact that the appellant defended auxiliary requests 1 to 9 in the statement of grounds, it is equally clear which were the requests on the basis of which the patent should be maintained, i.e. the main request and auxiliary requests 1 to 9. R 99 thus being complied with, there is no basis for the board not to admit any of the residual auxiliary requests 1, 5, 6, 7 and 9 for lack of compliance with A 108, third sentence, in conjunction with R 99.
Re (ii)
[3.4] As for the arguments by [opponent 1] pertaining to the lack of dependent claims, the board notes that, in the present case, the fact that the dependent claims of the auxiliary requests had not been filed was not decisive for the decision under appeal, which deals with only one of the several grounds for opposition on which the oppositions were based, namely added subject-matter, and more particularly is limited to the issue of added subject-matter in independent claims. Hence the fact that the dependent claims have not been filed is also not decisive for the board’s review of the decision under appeal.
In the present case, in view of the appellant’s request that the case be remitted to the first instance, the board considers that presenting complete sets of claims is not a necessary precondition for admitting them and deciding on the limited issue of added subject-matter. The [opponents’] right to be heard is safeguarded in that any objection not dealt with in the decision under appeal and decided by the board can be raised before, and may be dealt with by, the OD within the framework of the oppositions and in the exercise of the division’s discretion. As a consequence, the board sees no basis for refusing admittance of the residual auxiliary requests 1, 5, 6, 7 and 9 into the proceedings on this strand of reasoning by [opponent 1].
Auxiliary request 10
[3.5] Auxiliary request 10 was filed only during the OPs before the board. [Opponent 1’s] argument that, for reasons of procedural economy, the appellant had had an obligation to file auxiliary request 10 in the first-instance proceedings and therefore auxiliary request 10 should not be admitted on appeal did not convince the board.
The board agrees with [opponent 1] that the appellant could have presented this request in the first-instance proceedings because it is a simple combination of claims as granted which do not have the defect which was the ground for revocation of the opposed patent. Article 12(4) RPBA explicitly gives a board of appeal the power not to admit such requests.
In the present case, the patent proprietor made an attempt in the OPs before the OD to seek a wording of the independent claims which was acceptable to the OD and submitted auxiliary requests 8 and 9. It is a matter of speculation which decision(s) the OD would have taken if auxiliary request 10 had been filed in the first-instance proceedings, as the patent was opposed on the basis of several grounds for opposition and the opponents presented several chains of arguments referring to a large number of documents.
Thus the board sees no reason not to admit auxiliary request 10 on the basis of Article 12(4) RPBA.
[3.6] This request, however, still faces scrutiny under Article 13(1) RPBA. This is because it was filed only during the OPs before the board. Therefore, it also constitutes an amendment to the appellant’s case, admittance and consideration of which are subject to the board’s discretion pursuant to Article 13(1) RPBA.
In this respect the board notes that the appellant defended auxiliary requests 1 to 9 made in the first-instance proceedings in the statement of grounds of appeal to convince the board that the OD was wrong and that the appellant was entitled to a broader scope of claims. It was only when the appellant noticed in the OPs that the board was not convinced by the arguments that he chose a combination of claims as granted as a last chance to overcome the ground for revocation.
Claim 1 of auxiliary request 10 is a combination of claims 1 and 2 as granted, and claim 6 of auxiliary request 10 is a combination of claims 7 and 8 as granted. Hence these claims relate to feature combinations which were recognisable as potential fall-back options and do not introduce any new amendment that would need further extensive consideration. Furthermore, these claims 1 and 6 do not have the defect which was the sole ground in the decision under appeal for revoking the patent. Therefore, the subject-matter of these claims is not so complex that a decision on the limited issue of whether or not the decision under appeal should be set aside and the case remitted to the first instance for further prosecution could not have been taken in the OPs before the board.
Furthermore, the filing of auxiliary request 10 only during OPs before the board is unlikely to have caused a prolongation of the appeal proceedings, because the appeal proceedings including the board’s decision might have been similar if auxiliary request 10 had already been filed with the statement of grounds of appeal.
[3.7] Also, for the reasons given above, in the context of Article 12(4) RPBA […] [opponent 1’s] argument that the late filing of auxiliary request 10 without giving a proper justification constituted a tactical abuse did not convince the board. It is established case law that a patent proprietor has the right to defend his request before the board of appeal and that, under the discretion of the board pursuant to Article 13 RPBA, the appellant may file amendments to his case, in particular amendments which remove deficiencies in response to observations made by the board and which do not introduce new complex subject-matter.
In the present case, an earlier filing of auxiliary request 10 in the appeal proceedings would possibly have led to the same decision of the board, so that filing auxiliary request 10 only in OPs did not necessarily improve the appellant’s situation. And in the present case [opponent 1] did not need to respond in detail to the filing of auxiliary request 10 since the board did not take a final decision as to the substantive issues of this request.
[3.8] The argument that auxiliary request 10 was not clearly allowable and infringed A 84 EPC 1973 and A 123(2) concerns features which were already present in the claims of the patent as granted and in particular their meaning in the light of the dependent claims which have not been filed […]. However, since the board remits the case to the first instance, this objection as well as any objections against dependent claims may be dealt with by the OD in the exercise of their discretion. In this respect the board had informed the parties with the communication dated 7 February 2011 that the present case might be remitted to the first instance for further prosecution if it came to the conclusion that the decision under appeal was to be set aside.
[3.9] In the light of the considerations set out above, the board has admitted auxiliary request 10 into the proceedings pursuant to Article 13(1) RPBA.
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