Saturday, 24 December 2011

T 491/09 – Clairvoyance

Member of an Opposition Division consulting the DG3 oracle
The opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form, based on the third auxiliary request, which had been filed during oral proceedings (OPs)

The opponent claimed that the OD should not have admitted this request into the proceedings.

Here is what the Board had to say on this matter:

[1.1] The Board notes that if the way in which a department of first instance has exercised its discretion on admitting requests filed during OPs is challenged in appeal, it is not the function of a Board to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as or different from the department of first instance. A Board of Appeal should only overrule the way in which a department of first instance has exercised its discretion if the Board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see Case Law of the Boards of Appeal of the EPO, 6th edition 2010, VII.E-6.6).

[1.2] The question therefore arises whether the OD exercised its discretion properly according to the above stated criteria.

[1.3] In chapter E-III, 8.6 of the Guidelines for Examination in the EPO is stated that in exercising its discretion according to R 116(1) and (2)
“the Division will in the first place have to consider ... the allowability of the late-filed amendments, on a prima facie basis. If these ... amendments are clearly not allowable, they will not be admitted. Before admitting these submissions, the Division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarise themselves in the time available with ... the proposed amendments”.
Prima facie allowability

[1.4] It transpires from points 3 and 4 of the minutes of the OPs that the OD regarded the then final 3rd auxiliary request as prima facie overcoming the opposition grounds based on A 100(b) and A 100(c) (in combination with A 123(2)) and thus as prima facie allowable in these respects. The appellant argues, however, that the OD did not examine the prima facie clarity of the claims, which it should have.

[1.4.1] The Board observes in the first place that the minutes of the OPs before the OD are silent on any issue of clarity raised by the appellant as a hindrance to admitting the request in question. Also at the OPs before the Board the appellant could not recollect having made such an objection in this particular respect.

To the contrary, the minutes, page 3 state that “the opponent raised no other objections than those already discussed”, which clearly could lead the OD to assume that no further formal issues remained, nor that any new formal objections were raised.

Admitting this request in such circumstances can already for that reason alone not be criticised.

[1.4.2] The appellant argued that the OD should ex officio have examined the entire claim for clarity, following the principles of T 1459/05 and T 656/07.

The Board wishes to point out that the OD could hardly take account of T 656/07 which was issued in 2009, i.e. after the OPs in opposition held on 10 November 2008. Remains only one decision T 1459/05, which was decided on 21 February 2008.

Apart from the fact that ODs can hardly be held to have immediate knowledge of any single decision when it issues, the Board cannot find fault with an OD which does not follow a decision which itself explains why its case is so particular that it warrants departing from otherwise consistent case law. It should be kept in mind that the allowability is examined merely on a prima facie basis and all the more so only in connection with a discussion on admissibility of a request.

Procedural expediency, abuse

[1.5] In the first place, due to the direct treatment of the 3rd auxiliary request by the OD, instead of returning to written proceedings, a protracting of the proceedings was avoided and the [patent proprietor] did not benefit from any further delay of the final decision on the part of the OD. Secondly, it is clearly the purpose of OPs before the department of first instance that all concerned are aware of the outstanding issues and which positions are taken on them, including those of the OD. Not allowing simple further amendments to resolve such issues would clearly run counter to this purpose.

In fact, the Guidelines, chapter E-III, 8.7, makes this clear by referring to the fact that it should be ensured (by the OD) that the parties file requests which are to the point and that claims are formulated appropriately. If the OD finds that some patentable subject-matter results from a limitation/amendment, it may even inform the proprietor of the fact and allow him an opportunity to submit amended claims thereon.

In view of the above, the Board can only conclude that the [patent proprietor] needed quite some prompting to finally come up with this request addressing the point under discussion, but not that this amounts to an abuse of proceedings by, nor to/an unwarranted advantage for the [patent proprietor].

Opponent reasonably expected to familiarise itself

[1.6] As argued by the [patent proprietor], the 3rd auxiliary request filed during the OPs was not going in a different direction, but was prepared on the basis of the 3rd auxiliary request filed before the deadline of one month before the OPs. Its claim 1 follows the course of the discussions during the OPs, in that it differs from claim 1 of the earlier 3rd auxiliary request by the expressions “blades, a base opposite to the blades”, “said adapter unit being adapted to be snap fitted ... toward the base” and “fixedly” having been deleted. These had been criticized by the appellant in its letter dated 30 April 2008, section 2.3, which was repeated at the OPs (see point 3 of the minutes). Further, the expressions “at least one of the second adapter engagement member and the handle engagement member being resiliently yieldable” and “such that said snapping may occur” have been added in reply to objections raised in this respect in the OPs. The three latter amendments exactly address the issues the appellant was well aware of before the OPs since it raised objections on them at the OPs.

The OPs were therefore proceeding towards resolution of the outstanding issues.

[1.7] From the minutes of the OPs it transpires that a number of interruptions have taken place, which the Board considers as sufficient for the appellant.

This is confirmed in the first three paragraphs of page 3 of the minutes where it is further stated:
“The chairman interrupted the OPs at 15:05 to allow the patentee to prepare a new and final request.

After reopening of the proceedings by the chairman, the patentee submitted a third auxiliary request (Annex AIII) and explained the amendments done.

The opponent raised no other objections than those already discussed”.
The Board can therefore only conclude that the appellant had sufficient opportunity to familiarize itself with the amended subject-matter.

[1.8] In summary, the Board sees no indication that the OD exercised its discretion to admit the 3rd auxiliary request into the proceedings according to the wrong principles, or without taking into account the right principles or in an unreasonable way.

This request is therefore in the proceedings.

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

The file wrapper can be found here.