In this case there was a first appeal after
the Opposition Division (OD) had maintained the opposed patent in amended form.
The Board found the main request and the
first two auxiliary requests not to comply with the requirements of A 123(2) remitted
the case for further processing on the basis of the third auxiliary request on
file (T 911/06; also reported on this blog).
After remittal the proprietor filed a new
main request and four auxiliary requests. Subsequently, in oral proceedings
(OPs), the proprietor withdrew the first and second auxiliary requests and
renumbered the third and fourth requests as first and second requests. Claim 1
of the second auxiliary request (after renumbering) corresponded to claim 1 of
the third auxiliary request that had been the subject of the Board's decision
on the first appeal.
The OD finally revoked the patent for lack
of novelty.
The proprietor appealed against this second
decision and, with the grounds for appeal, submitted a main request and first
and second auxiliary requests, which corresponded to those which were the
subject of the OD’s second decision.
The second decision of the Board, wherein
the Board finally maintained the patent in amended form, contains an
interesting passage on the admissibility of the main and first auxiliary
requests on file.
[1.1] The Boards of Appeal have derived, in particular from R 79(1), the
principle that the proprietor does not have a right to have amendments admitted
at any stage of opposition proceedings. At the discretion of the OD or the
Board of Appeal, amendments can be refused if they are neither appropriate nor
necessary (see case law of the Boards of Appeal, 6th edition 2010,
VII.D.4.1.2, second paragraph).
[1.2] In its decision on the first appeal (T 911/06), the Board found
that the main request and first auxiliary request valid at that time offended A
123(2) (see T 911/06 [7-8]) and that the patent as granted and the second
auxiliary request valid at that time offended A 83 (see T 911/06 [4,9]).
Considering the third auxiliary request valid at that time, the Board
held that the amendments made to claim 1 did not introduce subject-matter that
extended beyond the content of the application as filed (see point [10]) and
that they restricted the scope of the claim in such a way that the
insufficiency of disclosure that had been identified in respect of claim 1 as
granted no longer existed (see point [11]). Hence, the Board passed judgement
on the then third auxiliary request at least as regards A 123(2) and A 83.
In point [12] of the reasons for the decision, entitled “Remittal to the
first instance for further prosecution”, the Board decided to remit the case to
the department of first instance for further prosecution, noting in particular
that the amendments made according to claim 1 of the third auxiliary request
and the attempt to introduce into the proceedings a new document (D8: “Variable
speed diesel power generation design issues” by Anthony L. Rogers, UMI Number
9639021, Copyright 1996) had created an entirely new situation that had not been
considered in the contested [first] decision. It is evident from this reasoning
that for the Board the purpose of the remittal was to allow further prosecution
on the basis of the new situation that had been instrumental in bringing it
about. In other words, the third auxiliary request was to be the basis for the
further prosecution, taking due account of the Board’s judgement on the issues
of A 123(2) and A 83.
[1.3] In the post-remittal proceedings before the OD, the proprietor
introduced a new main request and a new first auxiliary request (filed as main
request and third auxiliary request with letter dated 7 September 2010). These
requests correspond to the present main request and first auxiliary request.
Claim 1 of each of these two requests has been broadened in scope with respect
to claim 1 of the third auxiliary request upon which the remittal had been
obtained.
The OD admitted these new requests into the opposition procedure and
examined them, finding inter alia that the new main request met the
requirements of A 123(2) and A 83 […] and that the new first auxiliary
request met the requirements of A 123(2) […]. It is evident from the fact that the OD carried out an
examination of the new main request and first auxiliary request for the
requirements of A 123(2) and A 83 , that by admitting these new requests,
the examination had to be re-opened on issues which had already been judged
upon in the first appeal proceedings in respect of the request that led to the
remittal.
[1.4] It cannot be
the purpose of a remittal to the department of first instance to give the
proprietor a free hand to redefine the claimed invention and have the
examination start afresh, as that would have the effect of allowing the
proprietor to restart the discussion of issues that had been settled by the
appeal, even when no new situation has arisen that might justify amending the
claims. Furthermore, the overall duration of further opposition and possibly
further appeal proceedings after remittal would be likely to severely impair
the legitimate interests of the other party and of the general public in having
some degree of legal certainty about the existence and scope of the European
patent within a reasonable time span. To avoid these problems, the prosecution
of the case after remittal must in some way follow on from the situation that
existed at the end of the appeal procedure, and that led to the remittal.
In conclusion, the Board holds
that in the present case, where after remittal the proprietor filed new
requests which required examination to be re-opened on issues that had already
been judged upon by the Board of Appeal, without the justification that might
be provided, for example, by the proprietor being faced with a new situation,
then such requests should be deemed to be inadmissible.
Thus, the Board decided to
disregard the appellant’s main request and first auxiliary request.
[1.5] For the sake of completeness, the Board notes that this decision
is in line with decision T 796/02, which was relied upon by the opponent in his
submission that the filing of the new main request of 7 September 2010
constituted an abuse of procedure.
In that case, the patentee, in a first appeal, had obtained a remittal
to the OD on the basis of a request which contained a feature (g) that was
defined in relatively narrow terms. Subsequently, in the second proceedings
before the OD, the patentee sought to introduce a request in which the feature
(g) was more broadly defined (see point [7]). Requests comprising the more
generally defined feature (g) had already been filed during the first appeal
procedure, but had been withdrawn. The Board held that by withholding the
broader requests for tactical reasons, the patentee had deprived the competent
Board of an opportunity to decide thereon. Furthermore, the Board held that as
a direct result of the patentee’s own tactical choice, the matter of the appeal
proceedings had been limited from the broader version of the claims to a much
more restricted subject-matter by limiting the feature (g).
The present case differs from that underlying T 796/02 in that during
the first appeal the proprietor did not withdraw any requests which correspond
to the present main request and first auxiliary request. However, the
proprietor did file various requests in preparation for OPs (i.e. the main
request and first to seventh auxiliary requests of 9 October 2009). These
requests were filed in response to the communication of the Board dated 27
August 2009 in which the Board informed the parties:
“granted claim 1 covers cases where the controllable source is controlled in response to the current of the intermediate DC output, or in response to the voltage (independently from the current) of the controllable source. It is not clear to the board whether these claimed alternatives are sufficiently disclosed in the patent” […]
Thus, the proprietor had at least the opportunity during the first
appeal to amend his case as he wished to meet the objection that eventually led
to the decision of the Board in the first appeal that the requirement of
sufficiency of disclosure (A 83) was not met by claim 1 as granted and that
this insufficiency of disclosure no longer existed in claim 1 of the then third
auxiliary request (corresponding to the present second auxiliary request) (see T 911/06 [4.4-5,11]).
In this way, the Board
considers that as a direct result of the proprietor’s own informed choice, the
matter, following the first appeal proceedings, was limited from the broader
version of the claims (claim 1 as granted) to a more restricted subject-matter
by the limiting features added to claim 1 in the third auxiliary request, on
the basis of which remittal was obtained.
The board considers that in
such circumstances it would not be justified to admit requests that are broader
than the third auxiliary request and that could have been presented before the
conclusion of the first appeal proceedings.
Should you wish to download the whole
decision, just click here.
The file wrapper can be found here.
0 comments:
Post a Comment