Thursday, 10 November 2011

T 334/08 – No Surprise

When requests filed by the patent proprietor one month before oral proceedings (OPs) have not been transmitted to the opponent, will this have an effect on the admissibility on the requests? That is one of the questions the Board had to deal with in the present case.

The patent proprietor filed an appeal against the decision of the Opposition Division maintaining the opposed patent – the claims of which were directed to flame-retardant epoxy resins and flame retarders for epoxy resins – in amended form.

He filed new requests at the beginning of the OPs. In what follows, the Board discusses the admissibility of those requests.

*** Translation of the German original ***

[3.1] At the beginning of the OPs the [patent proprietor] has filed a new main request and new auxiliary requests 1 and 2.

[3.2] The [opponent] criticized the new requests as late filed and requested [the Board] not to admit them into the proceedings. In particular, the [opponent] argued that he had only become aware of the written submissions of the [patent proprietor] dated February 24, 2011, on March 18, 2011, i.e. six days before the OPs, by precautionary inspection of the EPO “on line” file. The [patent proprietor] had not communicated those submissions to him and he had not received the corresponding communication of the registrar (Geschäftsstelle) dated March 4, 2011, until that date. Therefore, he had been surprised such that he had not been able to sufficiently familiarize himself with the new requests, consulting his client – both had ignored the new requests when meeting at the beginning of March – and to file appropriate comments. Moreover, there was no justification for the late filed requests because the factual situation had not changed for more than four years. Also, the submission dated February 24, 2011, did not explain to which extent these requests met the objections of the Board. The [opponent] referred to decisions T 755/96, T 1105/98, T 401/02 and T 153/85 in order to support his plea.

The [opponent] also referred to the complexity of the amendments, in particular of the amended main request and the second auxiliary request. For example, independent claim 16 of the main request introduced a new feature (a phosphor content of at least 50% by weight chemically bonded to the epoxy resin). In view of the great number of claims of the original main request and the different alternatives comprised therein, this amendment was practically tantamount to introducing a feature of the description and, therefore, led to a new factual situation for the assessment of which the [opponent] had not had enough time. In this context the [opponent] referred to decision T 681/02. The second auxiliary request contained amendments which had never been filed before in this form. Moreover, it was not to the point because it was not clear which objections it was intended to meet. The claim still contained the compound DOP, which was also disclosed in document D6 in view of which the [patent proprietor] wanted to delimit [the claims].

[3.3] The admission of late filed requests into the proceedings is within the discretion of the Board (article 13(1) and (3) RPBA). According to the established case law of the Boards of appeal, complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy submission are decisive criteria [to be taken into account] when exercising this discretion.

[3.4] The amendments in the new main request as well as in the new first and second auxiliary requests consist in the deletion without replacement of a series of independent claims as well as of claims that depend from them or which refer back to them, as well as in further limitations of the independent claims 11 and 16 (the latter being deleted as well in the first and second auxiliary requests). The feature of dependent claim 18 has been incorporated into claim 16 and claim 11 has been limited to one group of compounds encompassing one preferred embodiment. These amendments rather contribute to reducing the complexity of the case. Moreover, they can be considered to be a serious attempt of meeting the objection of lack of novelty raised by the Board in its summons. The [patent proprietor’s] letter dated February 24, 2011, also contains reasons to that effect. The second auxiliary request corresponds to a further attempt of the [patent proprietor] to delimit the claims in view of document D6 which the Board had considered relevant both for novelty and inventive step.

[3.5] Moreover, it is to be noted that the new main request and the new auxiliary request as such had already been filed as third and fourth auxiliary requests, respectively, one month before the OPs. Considering the simplicity of the amendments (deletion of many claims and, as far as claim 16 is concerned, incorporation of features from dependent claims) the period of one month can normally be considered sufficient for allowing the [opponent] to prepare himself adequately. Moreover, the [patent proprietor] was not obliged to inform the [opponent] on its submission, even though this is often done by the parties, because it can rely on the fact that the EPO will send the submission to the [opponent] pursuant to R 100(1) and R 79(3).

[3.6] However, in the present case the [opponent] apparently has not received the communication of the registrar dated March 4, 2011. As far as the Board can see, for some obscure reasons the communication was sent by registered letter to the former address of the representative of the [opponent]. This error was not detected until the receipt of the letter of the [opponent] dated March 18, 2011, because the registered letter only came back to the Office on March 14, 2011. The Board regrets this error and the fact that the [opponent] only became aware of the submission of the [patent proprietor] a few days before the OPs through his own efforts. However, the Board is convinced that this fact has no decisive influence on the assessment of the admissibility of the requests into the proceedings in the present case because the [opponent] did not have to face a surprising new factual situation and no new questions have been raised which would have required a postponement of the OPs.

The deletion without replacement of a part of the independent claims and of claims that refer to them, whereby the subject-matter of a set of claims is further delimited towards the subject-matter of the invention discussed during the proceedings, does not modify the matter at issue (Prozessstoff) in a way that would be inacceptable to the parties. Nor can it come as a surprise to the [opponent] if the [patent proprietor] deletes claims that have been attacked in answer to objections of the Board and of the [opponent] himself […]. The same holds true for the amendment of claims that have been attacked by incorporation of further limiting features from dependent claims. Claim 16 of the new main request corresponds exactly to dependent claim 18 of the main request filed together with the statement of grounds of appeal, which exclusively referred to claim 17, which exclusively referred to claim 16. Contrary to the opinion of the [opponent] this situation is not equivalent to the situation where an arbitrary (beliebiges) feature, which could not have been foreseen by the Board or the [opponent], is incorporated into the claim from the description.

Moreover, the Board points out that the subject-matter of claim 18 had already been attacked by the [opponent] in its response to the statement of grounds of appeal based on documents D6 and D17 […]. Therefore, it is not clear why the [opponent] should be surprised by a situation which it had already taken into account or why this would necessitate a further consultation of the client, because there are no new aspects related to this claim as compared to the main request that had originally been filed together with the statement of grounds of appeal.

The same holds true for the amended auxiliary request, wherein the subject-matter of the invention to be discussed is further limited by deletion without replacement of claims 16 to 21 of the new main request.

[3.7] New auxiliary request 2, which has been filed at the beginning of the OPs contains further limitations to independent claim 11, whereby the [patent proprietor] wanted to delimit [his claims] even more clearly with respect to the teaching of document D6, which, in contrast to the opposed patent, referred to halogenated epoxy resins. The [opponent] was of the opinion that this request was not relevant because it still contains the DOP compound, which was disclosed in document D6, too. However, the Board points out that the parties disagreed on the question of whether the use of DOP as flame retardant in epoxy resins, to which claim 11 refers, was disclosed in the prior art or made obvious by the latter. Moreover, this limitation does not change the factual situation but only concentrates it on the use of a group of compounds encompassing the preferred embodiment DOP. In view of the documents filed by the [opponent] during the opposition proceedings, for instance document D6, this group of compounds is not “new” to the [opponent], i.e. [a group] which it had not taken into account yet. Therefore, the Board cannot see why the limitation to this issue should have surprising aspects for the [opponent].

[3.8] In view of the decision on which the [opponent] bases his arguments, the following has to be said:

[3.8.1] Decision T 755/96 [4.3] pointed out that a particular concern was that in oppositions other parties are not taken by surprise. Therefore, there could be good reasons not to admit new requests filed after the time limit pursuant to R 116, in particular if they would require that the professional representative consult his client and the latter’s technical experts. As stated under point [3.6], the Board cannot see any surprising facts which would require a further consultation of the client in the new requests.

[3.8.2] The facts underlying decision T 1105/98 were different. Here claim 1 of the patent comprised two alternatives. The objections of the opponent concentrated essentially on one of them. The Board was of the opinion that the limitation proposed during the OPs would have required a further search. This is not necessary in the present case. Claim 16 as limited results from dependent patent claims which had already been attacked by the [opponent] during the opposition proceedings. Claim 16 as amended still encompasses DOP and, therefore, does not shift the subject-matter to an unsearched alternative. By the way, decision T 1105/98 [3.7] also confirms that the opponent has to expect such amendments and has to be prepared accordingly.

[3.8.3] In decision T 401/02 the Board has not admitted an auxiliary request that had only been filed during the OPs, because neither the Board nor the adverse party could have been expected to deal with the request. Its admission might have required, in particular in view of the inventive step assessment, to postpone the OPs or, as requested by one party, to remit the case to the first instance. However, in the present case, there is no need for postponing the OPs or for remitting the case to the first instance because there is no new and surprising factual situation. Nor did the parties request either of those measures.

[3.8.4] In decision T 153/85 the Board refused to admit the main request which had been filed during the OPs and which referred to a further alternative with different limitations than in the sets of claims filed so far. The Board found that there was no justification for filing the alternative set of claims during the OPs because the examination of the appeal was terminated to a large extent and it was contradictory to the purpose of the OPs, i.e. to come to a decision at the end of the proceedings. Moreover, the set of claims was not novel, either. In the present case, the second auxiliary request filed during the OPs is an attempt of the [patent proprietor] to more clearly delimit his [claims] from document D6 which the Board and the [opponent] had considered to be relevant. This request does not correspond to an alternative that had not be taken into account so far but it represents a further limitation of the group of compounds that had already been discussed in the proceedings.

[3.8.5] In decision T 681/02 the Board refused to admit the auxiliary request because its claim 1 had been amended by adding a feature taken from the description. The Board acted on the assumption that this feature had not been searched (see point [3.4] of that decision). By contrast, only features of a dependent claim as granted have been incorporated in the present case. It may be assumed that this subject-matter had been searched, so that a final assessment was possible.

[3.9] Under these circumstances the Board has decided to admit the new main and auxiliary request as well as the new second auxiliary request into the proceedings.

The Board finally dismissed the appeal.

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

The file wrapper can be found here.