Tuesday, 3 April 2012

T 122/10 – Don’t Bite The Dog

I find this case interesting because of the way in which Article 12(4) RPBA was invoked. This provision is mostly used by the Boards to refuse late-filed requests, but in the present case, it was the patent proprietor that tried to take advantage of the wording of the article. Unsuccessfully, I should add.

This appeal was against the revocation of the European patent under consideration.

The Board decided not to admit auxiliary requests 2 to 4, for the following reasons:

[3.1] These requests were filed during the oral proceedings (OPs), hence at the latest possible stage in the proceedings. According to Article 13(1) RPBA, it lies within the discretion of the Board to admit any amendment to a party’s case after it has filed its grounds of appeal or reply. This Article also states that
“the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.”
[3.2] Claim 1 of all these requests has been amended compared to claim 1 of the corresponding requests 2 to 4 filed with letter of 9 November 2011 by deleting the term “non-folded” which was discussed as not being allowable in the course of the OPs in view of its nature as a disclaimer with reference to the decision of the Enlarged Board of Appeal G 1/03.

[3.3] Accordingly, the now claimed subject-matter of claim 1 of the second to fourth auxiliary requests is identical to the subject-matter of claim 1 of the corresponding requests 2 to 4 filed with the grounds of appeal. Also, the subject-matter of claim 1 of the second auxiliary request is identical to the subject-matter of claim 1 of the first auxiliary request found not to involve an inventive step by the opposition division.

[3.4] The communication of the Board sent prior to the OPs contained a statement in item 2 in relation to a possible interpretation of claim 1 whereby two bristles could be formed from a single folded filament, whereby novelty of the subject-matter of claim 1 would appear to be in doubt having regard to Example 2 in D1. Hence, at least in response to the Board’s communication, any doubts concerning such an interpretation could have been presented, and the [patent proprietor] could have maintained a corresponding set of product claims. However, whilst arguing that a bristle was entirely straight, the [patent proprietor] chose only to file requests which excluded an interpretation of a bristle being one half of a folded filament via the insertion of the term “non-folded” into claim 1.

[3.5] Due to the deletion of the term “non-folded”, the subject-matter of claim 1 was broadened significantly with respect to claim 1 of the corresponding requests previously filed, thus raising issues which neither the Board nor the other parties could have been expected to deal with at that stage, even though such subject-matter corresponded to earlier withdrawn requests.

[3.6] Thus, the framework of the appeal would have been altered completely if the new requests were admitted; the Board as well as the parties would be faced with arguments as to why this claimed subject-matter would then be novel and why the Board’s preliminary view on lack of novelty was incorrect. Moreover, the Board’s communication was not the only indication that the subject-matter of claim 1 lacked novelty. Indeed such objection had already been raised by the [opponents]. Accordingly, the deletion of the feature “non-folded” would have the effect of changing the [patent proprietor’s] case in a direction which, objectively, could not have been expected, in particular because all of the earlier auxiliary requests 2 to 4 had been amended in this way without reservation. Requests corresponding to the current auxiliary request 2 to 4 could clearly have been maintained as filed with the grounds of appeal, had this been the [patent proprietor’s] intention. Likewise, the [patent proprietor] chose not to supply any arguments in support of novelty or inventive step of the claims, so it could not be deduced that the [patent proprietor] had any intention of trying to defend claim 1 of the withdrawn requests in any form, in view of the Board’s opinion. The submission of auxiliary requests 2 to 4 without the expression “non-folded” only during the OPs was thus not consistent with the requirements set out in Article 13(1) RPBA, in particular with respect to the need for procedural economy.

[3.7] Although reference was made to Article 12(4) RPBA which sets out that the Board shall take into account everything presented with the grounds of appeal, and thus in this case auxiliary requests 2 to 4 as presented during OPs, such provision can only be understood to apply if such requests have not previously been withdrawn in the course of the proceedings as was the case here. Once the [patent proprietor] chose to withdraw its earlier filed requests, the provisions of Article 13(1) RPBA apply since an amendment to the party’s case has been made. An interpretation of Article 12(4) in the sense that a party must always have the option to return at any time to previously withdrawn requests would run counter to the clear intention of Article 13(1) RPBA in terms at least of procedural economy and also the established case law of the Boards of Appeal according to which, when exercising its discretion under Article 13(1) RPBA (and thus considering amendments to a party’s case after filing its grounds of appeal or reply thereto), such requests should be convergent.

The purpose of Article 12(4) RPBA is to ensure that the parties’ right to be heard on requests it has filed is guaranteed. However, and although not a procedural requirement, in the present proceedings the Board issued a communication giving an opinion on the subject -matter of the requests filed with the grounds of appeal, resulting in the [patent proprietor’s] choice to withdraw same.

[3.8] Hence, the late-filed second to fourth auxiliary requests did not fulfil the requirements of procedural economy, taking also into account that no comments were made by the [patent proprietor] to the (negative) preliminary opinion on novelty and/or inventive step of such requests in the communication issued by the Board.

[3.9] The fact that the [patent proprietor], at the start of the OPs before the Board, offered to remove the expression “non-folded” from its auxiliary requests 2 to 4, does not alter the aforegoing, since already at that stage of proceedings an entirely different legal situation existed for the parties, so that a return to previously filed requests raising issues which were seemingly no longer of importance would not have been anticipated.

Thus the Board exercised its discretion under Article 13(1) RPBA not to admit these requests.

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

The file wrapper can be found here.