T 28/10 – You Have To Concentrate

We have seen in the previous post that the Board confirmed the decision of the Opposition Division (OD) not to admit the patent proprietor’s main request. In today’s passage the Board considered the auxiliary requests on file and made some interesting comments on Article 12(4) RPBA with respect to former case law. 

NB: This is one of the rare Board decisions that invoke the Konzentrationsgrundsatz. I did not really know how to translate this term, which normally expresses the idea that proceedings should not be diluted, so I translated quite literally (“principle of concentration”). This principle is related to the principle of judicial economy.

Anyway, the patent proprietor asked the Board of appeal (BoA) to admit broadened auxiliary requests AR1 to AR10 altough they had not been presented before the OD. It justified the filing of these requests by pointing out that the previous patent proprietor had different economic interests and that the claims that had been defended before the OD were not economically relevant to the transferee. 

*** Translation of the German original ***

[3.1] The AR on which the impugned decision is based contain claims directed at

• the use of mixtures of ipconazole and at least one further fungicidal agent as microbiocidal agent for protecting technical materials (claim 4 of AR1 and claim 1 of AR2), and
• mixtures of active agents as such, wherein the definition of the further fungicidal agent was significantly reduced as compared to the use claims (claim 1 of AR1), respectively.

Present AR 1 to 10, however, contain claims directed at

• the use of the mixtures as fungicides (claim 1 of AR 3, 4, 6, 8, and 10)
• mixtures if ipconazole with further fungicidal agents which additionally comprise at least one of the following active substances or groups of active substances in addition to those of claim 1 of AR1 considered in the impugned decision: phenols, methoxyacrylates (such as azoxystrobin or trifloxystrobin) or one or several formerly deleted triazole compounds.

Such mixtures of active substances and uses, respectively, were not object of AR1 and AR2 filed on September 24, 2009, on which the impugned decision of the OD was based. Consequently, the sets of claims according to present AR1 to AR10 are directed to subject-matter that has been claimed for the first time in the appeal proceedings and have not been discussed before.

[3.2] The [patent proprietor] is of the opinion that claims on which the opposition proceedings had not been based could nevertheless be pursued in opposition appeal proceedings, even if this meant that [patent proprietor] defended the patent in a version that was broader than [the versions discussed] in the opposition proceedings. It invokes decision T 123/85 as well as decisions T 386/04 and T 755/00.

[3.2.1] Decision T 123/85 formed the basis for case law the essential findings of which may be summarised as follows:

In opposition proceedings, the patent proprietor cannot declare that it surrenders part of the patent and thereby irrevocably limit the patent (T 123/85 [3.1.1]). In principle (i.e. as far as there is no abuse of procedure) the patent proprietor having defended the patent in amended form only cannot be hindered from returning to a broader version (including the version as granted) of the patent during the appeal proceedings because intermediate limitations of the patent do not constitute a surrender of parts of the patent but have to be considered as drafting attempts intended to limit the patent in view of objections (T 123/85 [3.1.1-2]). Decisions T 755/00 [5] and T 386/04 [1], which have been invoked by the [patent proprietor], confirm this case law.

[3.2.2] The Board is of the opinion that in order to understand the ratio of decision T 123/85 and the case law that is based on it, it is necessary to distinguish between the patent as subjective right in rem (dinglich) the effect of which is governed by the national law of the Contracting States (A 64), on the one hand, and procedural actions directed at the patent as object of the opposition and opposition appeal proceedings, as well as the corresponding procedural rights, on the other hand (more on this distinction can be found in the EBA decision G 1/09 [3.2.1]).

[3.2.3] Insofar as decision T 123/85 [3.1.1], following decisions T 73/84 [4] and T 186/84, states that the patent proprietor could not surrender its patent as a whole or in part in the opposition proceedings, the term ‘surrender’ designates a unilateral delcaration through which the subjective rights conferred by a patent are abandoned as a whole or in part. In this context, decision T 123/85 points out that the EPC 1973 makes no provision for a patent proprietor to surrender the patent during opposition proceedings. As it was not possible to validly declare such a surrender before the EPO, the decision rejected the opinion of the opponent according to which limited sets of claims that were submitted in the course of the opposition proceedings had to be understood as declarations of surrender. In the context of decision T 123/85, this statement has to be limited to mean that a European patent as subjective right cannot be changed in a legally constitutive manner (rechtsgestaltend) – and, in particular, irrevocably limited – by means of a unilateral declaration of the patent proprietor in the opposition proceedings (cf. in this context G 1/90 [8]; T 386/01 [3.2]), so that limited sets of claims for the opposition proceedings are not to be seen as a surrender. In contrast, one cannot conclude from these statements that it has to be possible without procedural restrictions (verfahrensrechtlich vorbehaltlos) to revert to broader claim versions that have not been defended in the course of the opposition proceedings, [these broader claims being understood] as amendments to the procedurally relevant submissions.

[3.2.4]  T 123/85 based the possibility of subsequently amending sets of claims the purpose of which was the maintenance of the patent in amended form, on A 113(2) and, therefore, on the principle of party disposition (T 123/85 [3.1.1]; in this context, the reference to decision G 1/84 is obsolete: see G 9/93). Even when T 123/85 is followed, this possibility of amending the submissions is not without restrictions. Rather, the Board decided that this subsequent amendment must not constitute an abuse of procedure. The subsequent case law has confirmed this restriction. Decision T 123/85 does not define the notion of abuse of procedure in detail but has provided a concrete illustration by referring to the example of self-contradictory behaviour (venire contra factum proprium; T 123/85 [3.1.2]).

In this context decision T 123/85 also relies on decision T 64/85 [2.6], which states that an abuse of the possibility of reverting to previous claims after having filed amended claims. might be sanctioned under A 114(2) or R 86(3), respectively. Thus decision T 64/85 considered the principle of concentration (Konzentrationsgrundsatz) expressed in A 114(2) and R 86(3) EPC 1973 to be restrictive.

[3.2.5] The Board endorses this view, according to which – in addition to the prohibition of abuse of rights and the prohibition of reformation in peius (see e.g. T 934/02 [3.2]) – the principle of concentration of party submissions also restricts the principle of party disposition. As far as amendments of sets of claims in opposition and opposition appeal proceedings are concerned, the principle of concentration is laid down in R 116(2) and in Article 12(4) RPBA as well as Article 13 RPBA. It is true that a subsequent amendment of the submission is not completely excluded, via strict time limits for submitting certain elements, but it is within the discretion of the deciding body to take into account such amendments.

[3.2.6] R 116(2) was introduced as R 71a(2) EPC 1973 in a decision of the Administrative Council (AC) dated December 13, 1994, and entered into force on June 1, 1995 (JO EPO 1995, 9). Article 12(4) RPBA and Article 13 RPBA, introduced as Article 10a(4) and Article 10b RPBA, respectively, in a decision of the AC dated December 12, 2002, are applicable to proceedings in which the notice of appeal was received after the date of the entry into force of these amendments, i.e. on May 1, 2003 (Article 2 of the Decision of the Presidium, annexed to the Decision of the AC of December 12, 2002, JO EPO 2003, 61). The previous versions of the RPBA (RPBA of June 4, 1980, OJ EPO 1980, 171, in their version of OJ EPO 1983, 7) did not contain comparable provisions, nor did the versions of OJ EPO 1989, 361 or OJ EPO 2000, 316. Article 11(1), which was unchanged in all the versions until May 1, 2003, only required the Board to endeavour to ensure, if OPs were to take place, that the parties have provided all relevant information and documents, before the OPs.

[3.2.7] As a consequence, the legal situation has changed with respect to decision T 123/85 when R 116(2) as well as Articles 12(4) and 13 RPBA were enacted and it is not possible to apply this decision and the subsequent case law without taking into account these amendments. This also holds true for decision T 755/00 which was based on the RPBA as amended on October 1, 2000, which did not contain any provision corresponding to what is now Article 12(4) RPBA. Moreover, the decision did not concern the application of R 71a EPC 1973. As a consequence, this decision is not relevant for the present proceedings as it does not take into account the amendments of the law that are relevant for the latter (cf. T 1282/05 [1]).

[3.2.8] The RPBA in its version of May 1, 2003 (JO EPO 2003, 61) are not explicitly mentioned and taken into account in decision T 386/04, which had been cited by the [patent proprietor], either. Moreover, the reasons do not make clear whether the Board considered the discretion conferred to it by the RPBA to be restricted – based on decision T 123/85 and the case law based on it – such that a set of claims by which the patent proprietor reverts to broader subject-matter that has not been defended in previous proceedings could only be disregarded in case of an abuse of procedure. In the particular case which it had to decide upon the Board came to the conclusion that the behaviour of the patent proprietor – defending the patent as granted as its main request in the appeal proceedings for the first time – did not qualify as abuse of procedure. When doing so, the Board took into account the fact that the patent proprietor had defended the version of the patent as granted until shortly before the OPs before the OD. These findings are within the framework of the discretion conferred by the RPBA.

[3.2.9] According to what has been said, decisions T 386/04, T 755/00, and T 123/85 cannot support the point of view of the [patent proprietor] because they do not deal with the legal situation as modified by R 116(2) (previously R 71a(2) EPC 1973) and Articles 12(4) and 13 RPBA (previously Articles 10a and 10b RPBA) and do not meet the scope of the rule (Normzweck) pursued by these provisions, i.e. the acceleration of the proceedings. Whether sets of claims that are submitted in appeal proceedings are to be taken into account does not depend on the case law based on decision T 123/85; it depends on the procedural rules that now apply to the appeal proceedings and on the facts of the proceedings under consideration. Therefore, the decisive rule for the admission of AR1 to AR10 is Article 12(4) RPBA.

[3.3] Article 12(4) RPBA sanctions the violation of the duty to facilitate the progress of the proceedings (Verfahrensbeförderung) in first instance proceedings, i.e. the requirement – which is mandatory but which has not been honoured – to submit facts, evidence ore requests before a certain stage of the proceedings. Therefore, it serves the requirement of both fair and quick proceedings. If the appeal proceedings offered the parties the possibility of introducing submissions that could already have been filed (bereits veranlasste Vorbringen) in first instance proceedings, the parties could chose to base the appeal proceedings on disputed matter (Streitstoff) different from the matter that was considered by the OD and thereby create a completely new case, which prolongs the proceedings to the detriment of the adverse party, based on considerations that are not related to the case as such (sachfremd). Therefore, Article 12(4) RPBA prohibits carless and incomplete submissions on behalf of the parties in first instance proceedings but not candid attempts of the parties to introduce the relevant requests, facts and evidence when required by an appropriate and careful conduct of the proceedings.

On the other hand, it is not possible to use Article 12(4) RPBA as basis for a legal right – restricted by abuse of procedure – to the introduction of a set of claims directed at a broader version of the claims that has not been defended in the opposition proceedings so far. Rather, these provisions make clear that the principle of party disposition is breached (durchbrochen) by the principle of concentration in this respect. This opinion has been confirmed in the case law of the EBA according to which A 113(2) does not provide a legal right to have late filed submissions considered (R 11/11 [10]).

[3.4] In view of Article 12(4) RPBA the [patent proprietor] explained that there was no reason (Veranlassung) to file sets of claims corresponding to AR1 to AR10 because the economic interests of its legal predecessor, who had acted in the opposition proceedings, were different from those of the [patent proprietor] to whom [the patent] had been transferred. The following has to be objected:  

According to A 99(3) the patent proprietor is a party to the opposition proceedings. The case law has made clear that in a case where the patent is legally (rechtsgeschäftlich) transferred, the procedural party status is transferred to the transferee, too. The transfer of the party status with respect to substantive law has to be distinguished from the procedural effectiveness of the change of party. In order for a change of party to be effective for the proceedings under consideration, proof for the legal transfer has to be provided to the EPO. As a matter of fact, for the sake of procedural legal security, a change of party resulting from a legal transfer cannot take place outside the proceedings without formal knowledge of the Board, and cannot be retroactive either, because otherwise procedural actions or decisions could be made or take place in the absence of the new patent proprietor, who is the sole entitled party. Consequently, R 22(3) provides that a transfer shall has effect vis-à-vis the EPO only when it has been proven via the submission of documents. According to R 85 (also together with R 100(1)), this provision this provision also applies to any transfer of the European patent made during the opposition or opposition appeal proceedings, respectively (T 128/10 [3]).

In the present case transfer of the impugned patent was registered at the request of the appellant filed on November 23, 2011, based on an agreement signed on March 22, 2010, and April 12, 2010, respectively. As a consequence, the substitution of the legal predecessor by the appellant was only effective on November 23, 2011. Requests AR1 to AR10 were filed together with the statement of grounds of appeal dated March 15, 2010, before the legal transfer became effective vis-à-vis the EPO. Therefore, it is not possible to use the fact that the economic interests had changed as a consequence of the subsequent legal transfer in order to retrospectively explain why the legal predecessor had had no reason to file requests AR1 to AR10 before.

Even if the legal transfer had been effective before the statement of grounds of appeal had been filed on March 15, 2010, the admissibility of requests AR1 to AR10 would be within the discretion of the Board.

As a transferee, the appellant takes over the procedural status of its legal predecessor as soon as the legal transfer is effective vis-à-vis the EPO and, therefore, receives the status of a party to the proceedings. As such it has to enter into the proceedings at the very stage [the proceedings] have reached when the legal transfer takes place. It has to accept the effects of procedural actions of its legal predecessor. It would be contrary to legal security and, as far as inter partes proceedings are concerned, unfair towards the other parties to the proceedings, if the transferee of a patent could invoke the change of party – which does not require approval by the other parties – in order to change the object of the appeal proceedings without cogent reasons related to the course of the proceedings (in particular a different factual situation) with respect to the opposition proceedings.

Moreover, circumstances that are outside the proceedings (verfahrensextern) such as considerations of the patent proprietor as to which content the patent should be prosecuted, for economic or competitive reasons, are not aspects that can be taken into account when deciding when requests that determine the content of the patent have to be filed in appeal proceedings. Otherwise, a party to the proceedings could control the course of the proceedings (T 764/03 [6.4]; T 356/08 [2.2.2]).

Therefore, the Board is of the opinion that the change of the economic interests resulting from the legal transfer of the patent was not to be taken into account when exercising discretion under Article 12(4) RPBA. The [patent proprietor] has not submitted any further reason related to the course of the proceedings why there had been no reason to file requests AR1 to AR10 before.

[3.5] The Board is of the opinion that requests AR1 to AR10 could have been filed before the OD and that their filing could have been expected at an earlier time if the proceedings had been conducted in a careful manner. Consequently, the Board did not admit requests AR1 to AR10 into the proceedings (Article 12(4) RPBA).

OMG, what a translator’s nightmare that was!

The Board then refused to refer questions to the EBA and also found auxiliary requests 11 to 15 to be inadmissible under Article 13(1) RPBA. As there was no valid set of claims on file, the Board finally dismissed the appeal.

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

The file wrapper can be found here.