T 28/10 – Abuse? Of Discretion?

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

The patent proprietor complained that the OD had not admitted its main request filed during the oral proceedings (OPs), which corresponded to the claims as granted. Contrary to the findings of the OD, the filing of this request had not been abusive as its aim was to avoid a reformatio in peius situation.

The Board found the appeal as such to be admissible and then went on to examine the admissibilty of the main request:

*** Translation of the German original ***

[2.1] According to Article 12(4) RPBA (OJ EPO 2007, 536), the Board may decide not to take into account submissions of a party which could have been presented or were not admitted in the first instance proceedings. Insofar as [a Board] has to decide on the admission, into the appeal proceedings, of submissions that had not been admitted in the first instance proceedings, under Article 12(4) RPBA, this boils down to a review of the discretionary decision of the OD based on R 116(2). If the way in which the first instance body of the EPO has exercised its discretion is contested in the appeal, then, according to G 7/93 [2.6], it is not the function of a BoA to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In such cases a BoA should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion. Although the object of decision G 7/93 was the interpretation of R 51(6) EPC 1973, its explanations regarding the review of discretionary decisions are of general importance and have to be taken into account when applying Article 12(4) RPBA. Accordingly, the Board has to limit itself to a review of the way in which the OD has exercised its discretion when it decided not to admit the late filed request and should set aside the first instance decision only if it found that the discretion had been exercised in a wrongful way. Otherwise, the Board would circumvent the discretion conferred to the OD by R 116.

[2.2] The main request corresponds to the claims of the patent as granted. This request had not been defended in the written proceedings before the OD. Rather, it was filed only on the day of the OPs before the OD, where the (limited) set of claims of November 2, 2007, which had been in the proceedings until then […] had been replaced by the new main request and two more auxiliary requests. Thereby, the OD correctly applied R 116(2) by treating these requests as late-filed.

[2.3] The admission under R 116(2) of the main request filed on September 24, 2009, was discussed during the OPs […]. Therefore, the [patent proprietor] had the opportunity to make submissions regarding the reasons for the late filing. After having discussed with the parties, the OD exercised its discretion by not admitting this main request into the proceedings because it considered its late filing to be an abuse of procedure […]. In its reasons for its  decision the OD explained that the main request was not novel – as the patent proprietor had admitted – and, therefore, not suitable for overcoming a ground of opposition. Thus the filing of the main request amounted to an abuse of procedure.

[2.4] The Board cannot see a wrongful exercise of discretion in the fact that the OD based its decision above all on [the finding] that the patent proprietor admittedly did not intend to defend the late filed main request and acknowledged that this request did not comply with the requirements of A 54. The OD could indeed - without any arbitrariness - understand these statements of the [patent proprietor] to mean that even the [patent proprietor] did not consider the main request to be based on an acceptable (vertretbar) substantive legal position. The filing of such a request that openly (erklärtermaßen) does not pursue any justified legal claims has to be considered a violation of the duty to act in good faith (Gebot des Handelns nach Treu und Glauben) which obliges the parties to act in a candid (redlich) way (for the application of this principle to the actions of the parties, see G 2/97 [4.2]; R 4/09 [2.3.2]). 

The prodedural (verfahrensrechtlich) interest that has been invoked by the [patent proprietor] will be dealt with below […].

As a consequence, the OD has not exercised its discretion in accordance with wrong principles or in an unreasonable way by not admitting the main request of September 24, 2009, because of an abuse of procedure, nor did it act in an arbitrary manner insofar as it considered the violation of this procedural principle to be of decisive importance when exercising its discretion.

[2.5] The [patent proprietor] also objected that the purpose of the filing of the main request was to avoid a [situation of] reformatio in peius, which meant that there was no abuse of procedure. This argument cannot succeed.

[2.5.1] The principle of prohibition of reformatio in peius (Verschlechterungsverbot) concerns appeals (Rechtsmittelverfahren) and can be derived from the principle of party disposition (Verfügungsgrundsatz). The latter asserts that the appellant’s requests determine to which extent the judge can and may modify the impugned decision. Therefore, the requests forming the appeal (Rechtsmittelanträge) constitute the scope of the litigation beyond which the judge must not go. As a consequence, if there is only one appellant, the judge must not modify the impugned decision in a way that would disadvantage the appellant. This is referred to as the prohibition of reformatio in peius. In cases G 9/92 and G 4/93, the EBA decided that the prohibition of reformatio in peius can be applied in proceedings before the BoA. Whether it applies depends on the entitlement to file an appeal and on the filing of an appeal by the parties to the proceedings that are entitled to do so. All in all, it is only relevant in the case of an interlocutory decision maintaining the patent in amended form that is contested by only one of the adverse parties.

In the present case, however, the [patent proprietor] intended to defend the patent as granted. This is equivalent to the request that the oppositions be rejected. If this [request] had been granted, only the opponents would have been entitled to file an appeal. Therefore, the prohibition of reformatio in peius would not have applied in favour of the [patent proprietor]. Even if the patent had been revoked in view of the claims as granted, the prohibition of reformatio in peius would not have been relevant, because the outcome of the appeal proceedings could not have put the [patent proprietor] in a situation that is worse than the revocation by the OD. Therefore, it is not clear to which extent the prohibition of reformatio in peius could justify the filing of the main request corresponding to the claims as granted during the OPs before the OD. Therefore, the OD cannot be criticised for having exercised its discretion in a wrongful way by not taking into account the reference to the prohibition of reformatio in peius in favour of the [patent proprietor].

[2.5.2] As can be seen from the statement of grounds of appeal […] the [patent proprietor’s] reference to the prohibition of reformatio in peius indeed aimed at justifying its desire to maintain, by means of the main request, the possibility of filing an appeal and to make sure that it could amend – within the limits of A 123 – its requests in the appeal proceedings without being bound by the single set of claims filed before the OPs in the opposition proceedings.

Neither the prohibition of reformatio in peius nor the principle of party disposition that underlies it allow to derive the right that amended sets of claims filed by the applicant or the patent proprietor have to be taken into account at any stage of the proceedings (referring to A 113(2), which is related to the principle of party disposition, R 11/11 [10]). Rather, pursuant to R 116(2), this is within the discretion of the deciding body of first instance. As a consequence, it is not at the applicant’s or patent proprietor’s discretion to modify the object of the proceedings by filing amended sets of claims even at a late stage of the proceedings in order to change the course of the proceedings. All in all, the OD, when exercising its discretion, has neither violated a legal right of the [patent proprietor] nor left aside a relevant legal aspect.

[2.6] The remaining arguments submitted by the [patent proprietor] during the appeal proceedings do not establish a wrongful exercise of discretion by the OD either.

[2.6.1] First of all, the [patent proprietor] points out that the filing of the main request of September 24, 2009, was triggered by the submission of the [opponent] of August 21, 2009, wherein it first raised an objection of lack of novelty against claim 3 of the patent as granted, based on document D25. However, it has to be noted that the [opponent] had already attacked claims 1, 2 and 7 for lack of novelty (A 54) over document D25. The notices of opposition of the [opponents] comprised a series of further novelty objections. In view of that background, the BoA cannot see how the [patent proprietor’s] return to the set of claims as granted, which had not been defended until the OPs, can seriously be considered to be an appropriate reaction to a change of the course of the proceedings. As a matter of fact, the main request of September 24, 2009, did not overcome the objection of lack of novelty against claim 3, nor did it ensure a convergent conduct of the opposition proceedings. It rather meant a return to the point of departure of the proceedings.

[2.6.2] The [patent proprietor] also explained that the filing of the main request did not delay the proceedings and could not surprise because it was part of the patent as granted and, consequently, of the opposition filed by the respondents.

It may be true that, in view of the acknowledgement of lack of novelty, the required examination of the main request would not have taken a long time, but this aspect is not of decisive importance to the effect that it would justify challenging the balance of interests made by the OD based on the circumstances of the case and have an effect in favour of the [patent proprietor] on the decision on the admission of the main request.

The restraint required by decision G 7/93 [2.6] of the EBA when discretionary decisions are to be reviewed means that the Board may only intervene in the weighing of the circumstances to be carried out by the OD if the latter exercises its discretion in a wrongful way. In this context, the OD may rightfully give one aspect decisive importance over other aspects. In the impugned decision, the OD considered that there had been an abuse of procedure. Such abuses are not limited to behaviour that makes the postponement of the OPs necessary (cf. T 1067/08 [5.3]). As a consequence, the OD has not exercised its discretion in a wrongful way.

Apart from that, the second argument of the [patent proprietor] according to which the return to the claims as granted could not surprise is not correct. The Board agrees with the [opponents] that based on the behaviour of the [patent proprietor] until the OPs, the filing of a main request corresponding to the claims as granted was not to be expected. The [opponents] have referred to the following passage of the response to the notices of appeal dated November 2, 2007:

“[The patent proprietor] requires [the OD] to maintain the patent on the basis of claims 1 to 9 according to the enclosure and, for the rest (im Übrigen), to dismiss the oppositions.”

Together with the set of amended claims filed as enclosure to this submission, the [opponents] could legitimately understand in good faith that the [patent proprietor] did not have the intention to defend the claims as granted. This is all the more true as the [patent proprietor] did not come back to the patent as granted during the written proceedings. It is true that the filing of a request corresponding to the patent as granted did not concern an hitherto unknown object, but it still was surprising because the submission conflicted with the previous actions of the [patent proprietor] (venire contra factum proprium). Even in this respect [the Board] cannot find any wrongful exercise of discretion on behalf of the OD.

[2.7] As the Board has come to the conclusion that the first instance had exercised its discretion in accordance with the right principles and in a reasonable way, and had not exceeded the proper limits of its discretion conferred by A 116(2), the Board has not granted the request to admit the main request of September 24, 2009, into the proceedings (Article 12(4) RPBA, G 7/93 [2.6]).

NB: This decision has much more to offer, because the Board also dealt with the admissibility of several new auxiliary requests. In order to keep my posts reasonably short, I shall present these aspects in a forthcoming post.

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

The file wrapper can be found here.