Wednesday, 9 May 2012

T 670/09 – Bad Timing

This decision, which deals with an appeal against the revocation of the opposed patent, is interesting because it makes use of a legal concept that is often used in (at least, French) national case law but very rarely invoked in the case law of the Boards of appeal (I have found only four decisions, including the present one): the requirement to present certain requests in limine litis, i.e. at the start of the proceedings.

The Opposition Division (OD) had found the two requests on file to lack novelty with respect to document D1. The patent proprietor filed an appeal and submitted a new main request as well as two amended auxiliary requests.

The opponent raised A 123 objections against the new requests and stated that the amendments were not sufficient for establishing novelty over document D1.

On July 19, 2011, the parties were summoned to oral proceedings (OPs) to be held on December 14, 2011. On July 22, 2011, the opponent requested the Board to make a statement on its provisional opinion as well as the points to be discussed during the OPs.

The Board then informed the parties that the requests of the patent proprietor appeared to be incomplete because they only contained one single claim. It also explained that the requests on file were to be examined in view of the aspects referred to by the parties during the opposition and appeal proceedings. The Board fixed a time limit of two months for further statements and submissions.

On October 21, 2011, the patent proprietor filed claimed files 2 to 6 as granted as a complement for the requests on file. On December 8, 2011, it then filed a further (third) auxiliary request.

In a fax sent on December 12, 2011, the opponent informed the Board of a change of representative and requested the Board to dismiss the appeal because it was insufficiently reasoned.

*** Translation of the German original ***

[1.1] Two days before the OPs, on November 12, 2011, the [opponent] for the first time put forth the argument that the appeal was inadmissible because it was not reasoned within the meaning of R 99(2) and questioned the admissibility of the requests of October 21, 2011, because they went beyond the object (Gegenstand) of the appeal.

Admissibility of the appeal

[1.1.1] Pursuant to A 12(2) RPBA, the reply to an appeal shall contain a party’s complete case.

In principle, objections against the admissibility of an appeal or against the competence of a Board, which are a prerequisite for establishing the factual situation, have to be made in limine litis, i.e. before the party defends itself on substantive grounds (vor der sachlichen Verteidigung einer Partei).

It is true that there is no duty for a party to object to the admissibility of an appeal and can limit itself to a substantive defence in its reply pursuant to Article 12(2) RPBA. However, the consequence of this way of proceeding is that, in this respect, the respondent endorses [the result of] the examination of the facts by the Board of appeal.

In the present case it is undisputed that [the EPO] has received a written document within the time limit for filing an appeal pursuant to A 108, i.e. on June 19, 2009. At that time the [opponent] has considered this document filed by the [patent proprietor] to be a statement of grounds of opposition […] and has only brought forward factual arguments in its reply, which indicates that it did not have the intention to challenge the admissibility of the appeal. Moreover, it should be noted that during the whole appeal proceedings, until far after the summons to OPs, the [opponent] has based its defence only on factual arguments, which means that an objection of admissibility cannot be made at a later stage.

[1.1.2] In its answer to the communication of the Board of appeal of August 26, 2011, the [patent proprietor] has filed amended claims according to its main request and auxiliary request in due time on October 21, 2011 […]. In its communication the Board has expressed doubts that the [patent proprietor] had the intention to abandon claims 2 to 6 as granted.

Therefore, there was no reason to challenge the admissibility of these requests in view of claims 2 to 6  as late as December 12, 2011.

The fact that the late filing of the objection was due to the change of representative, as explained by the [opponent], cannot be taken into consideration in inter partes proceedings because this could result in putting the other parties at a disadvantage.

[1.1.3] The objection of the [opponent] concerning the inadmissibility of the appeal and the requests of October 21, 2011, as well as the written submission of December 12, 2011, as far as it concerns this objection, will, therefore, not be taken into account.

[1.2] In its letter of December 8, 2011 […], i.e. significantly after the time limit fixed in the communication of December 26, 2011, the [patent proprietor] has filed requests according to a third auxiliary request, without any justification. During the OPs it has justified the late filing with the argument that the further limitation had become possible only now because the inventor had left the company.

It has not established a link between the limitation of the request with the preceding proceedings or with the patentability requirements. The latter is all the more remarkable  as the third auxiliary request is a combination of the then first and second auxiliary requests, so that it is not apparent why this request should be allowable should the requests of higher rank fail.

Consequently, there is no apparent procedural necessity for the filing of the third auxiliary request. As far as the justification for the late filing is concerned, it has to be noted that it is the duty of the [patent proprietor] to file its requests in due time.

Therefore, the third auxiliary request of the [patent proprietor] is not admitted into the proceedings.

[1.3] During the OPs the [opponent] has tried for the first time to comment on independent claims 4 to 6, and it has done so only after the Board had expressed the opinion that the new main request might fulfil the patentability requirements.

The [opponent] has pointed out that it was triggered to act in this way by the request that had only been filed during the OPs.

Claims 4 to 6 are so-called “product-by-process” claims that were already present in the patent as granted and covered the subject-matter of the pending main request.

The [opponent] has never attacked these claims on the grounds of lack of novelty or inventive step but has left it to the Opposition Division and the Board of appeal, respectively, to examine these claims of their own motion.

The Board is of the opinion that the submission of such objections at a time when the likely result of this examination by the Office is communicated during the OPs, is definitely belated.

The way in which the [opponent] has acted is all the more questionable as it was [the opponent] who requested a communication of the points to be discussed in the OPs in reply to the summons to OPs, whereupon the Board referred to the time limit for filing written submissions of the parties. The [opponent] has not used this last opportunity for comments.

The late filed comments of the [opponent] on claims 4 to 6 are not admitted pursuant to Article 12(4) RPBA together with A 114(2).

To download the whole decision (in German), click here.

The file wrapper can be found here.