Saturday, 14 April 2012

T 67/09 – Unseen So Far

This is an appeal against the revocation of the patent by the Opposition Division (OD).

The Board found the main request to lack inventive step and then discussed the admissibility of the auxiliary requests:

*** Translation of the German original ***

[4.1] At a very late stage of the appeal proceedings, i.e. about one month before the oral proceedings (OPs) before the Board, the [patent proprietor] has filed for the first time amended claims according to auxiliary requests 1 and 2, in which features from various dependent claims as well as features taken from the description were incorporated into claim 1 […]. There have not been claims with such amendments before, neither in the opposition, nor in the subsequent appeal proceedings. The [opponent] criticized those requests as being late-filed and requested that the Board should not admit them into the proceedings.

[4.2] The main purpose of the inter partes appeal proceedings is to grant the adversely affected party – here: the patent proprietor – the opportunity to challenge the first instance decision. According to the Rules of proceedings of the Boards of appeal (RPBA, published in OJ EPO 2007, 536) the appeal proceedings shall be based on the statement of grounds of appeal and, in cases where there is more than one party, the reply [of the other party or parties]. The statement of grounds of appeal and the reply shall contain the parties’ complete case. (Article 12(1) and (2) RPBA). There is no right to have amended requests admitted at a later time; the admission is at the Board’s discretion. (Article 13 RPBA). According to the established case law, when exercising their duty of discretion regarding the admission of fresh requests, the Boards consider the complexity of the new submission, the state of the proceedings and the [need for] procedural economy. Among other things, a decisive criterion to be examined is the question of whether the amended claims of the fresh requests raise question the Board or the other parties may be expected to deal with without a postponement of the OPs.

[4.3] In the present case the impugned patent was revoked during the first instance proceedings for lack of inventive step. About one month before the OPs before the Board the patent proprietor has filed for the first time amended requests 1 and 2 without there having been a change of the factual situation. Therefore, the Board is of the opinion that the [patent proprietor] could have filed auxiliary requests 1 and 2 together with the statement of grounds of appeal.

As a consequence, the Board of appeal cannot endorse the opinion of the [patent proprietor] according to which the auxiliary requests were admissible because the amendments were essentially limited to a combination of granted claims the subject-matter of which had already been attacked during the first instance proceedings. In view of the fact that both during the proceedings before the OD and during the appeal proceedings only the patent as granted was object of the discussions, neither the Board nor the [opponent] had any reason to deal with the subject-matter of dependent claims when preparing the OPs, all the more as there had never been a request directed to them.

Moreover, the amendments in claim 1 of auxiliary requests 1 and 2 raise further questions regarding inventive step, as now technical features related to the materials or the specific construction - such as the fact that the resistance layer is a nickel-chromium alloy layer that had been vapour-deposited or sputtered as a thin layer under vacuum, and that the resistance element is encapsulated (vergossen) with a flame-resistant insulation cement having high thermal conductivity in the heating block - have been incorporated into claim 1, which had never been a matter of considerable debate (im Fokus gestanden) in the impugned decision or in the appeal proceedings. These new questions arising in the context of inventive step cannot be answered without a detailed discussion and perhaps a different assessment of the prior art, which means that one cannot expect to have an appropriate discussion of the amended submissions of the [patent proprietor] during the OPs before the Board.

[4.4] For the above reasons the Board exercises its discretion pursuant to Article 13(3) RPBA not to admit the late-filed auxiliary requests 1 and 2 into the proceedings.

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

The file wrapper can be found here.