T 711/07 – Nothing New Under The Sun

וְאֵין כָּל-חָדָשׁ תַּחַת הַשָּׁמֶשׁ

as wise man Qohelet put it, “There is nothing new under the sun.” Apparently Munich is under the sun, at least as far as admissibility is concerned.

The patent proprietor appealed against the decision of the Opposition Division to revoke the opposed patent.

In response to the communication annexed to the summons to oral proceedings (OPs), the patent proprietor filed two auxiliary requests replacing the auxiliary request on file.

The patent proprietor did not attend the OPs.

The Board found the main request on file not to comply with the requirements of A 123(2).

It admitted the first auxiliary request because it was an appropriate response to the objections raised in the summons. However, it dismissed this request because its subject-matter lacked inventive step.

The Board then dealt with the second auxiliary request. It found that the subject-matter of this request introduced a number of new complex issues at a time when this was not appropriate from the point of view of procedural economy and the state of the proceedings and could not be dealt with in the absence of the appellant. Therefore, it decided not to admit the second auxiliary request into the appeal proceedings in application of Article 13(1) RPBA. The decision also contains an interesting paragraph on the famous Article 12(4) RPBA:

[5.9] In his letter of 1 April 2011 the appellant argued with respect to the admissibility of the second auxiliary request under Article 12(4) RPBA that in the time since the opposition had been filed the practice of the boards had changed significantly. It used to be the case that a party to an appeal could rely on being able to submit amendments at various points in the procedure without being questioned as to why the amendments had not been first introduced in the opposition procedure.

In respect of this argument it is sufficient to note that the board declined to admit the second auxiliary request into the appeal proceedings in application of Article 13(1) RPBA, and not of Article 12(4) RPBA referring to the power of the boards “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings”. The latter provision had been cited by the board in respect of the auxiliary request filed with the statement setting out the grounds of appeal. However, the appellant submitted further amendments in reply to the board’s communication accompanying the summons to OPs which introduced a number of new complex issues at a time when this was not appropriate from the point of view of procedural economy and the state of the proceedings and could not be dealt with in the absence of the appellant.

It is therefore only for the sake of completeness that the board adds that the provisions of Article 12(4) RPBA, previously numbered Article 10a(4), have applied to proceedings before the boards in which the notice of appeal was received after 1 May 2003, i.e. long before the opposition was filed in February 2005, see Articles 2 and 3 of the decision of the Presidium of 28 October 2002 (OJ EPO 2003, 62) in conjunction with Article 2 of the decision of the Administrative Council of 12 December 2002 (OJ EPO 2003, 61). Article 10a was renumbered as Article 12 by the decision of the Presidium comprising the amended RPBA of 12 September 2007 (OJ EPO 2007, 537), with the wording of paragraph 4 left unchanged. This decision was approved by the decision of the Administrative Council of 25 October 2007 (OJ EPO 2007, 536). Pursuant to Article 24 RPBA,

“[t]hese Rules of Procedure shall enter into force upon entry into force of the revised text of the EPC in accordance with Article 8 of the Revision Act”.

The date of entry into force of the revised text of the EPC was 13 December 2007. Thus the renumbering of Article 10a as Article 12 became effective as of 13 December 2007.

Should you whish to download the whole decision, just click here.

The file wrapper can be found here.

NB: There is nothing new on this blog - this decision has already been reported on Le blog du droit européen des brevets.