T 853/10 – A Limited Statement

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

The OD found in its decision that claim 1 according to then pending main and first auxiliary requests lacked clarity and that the subject-matter of independent claim 12 according to the then pending second auxiliary request lacked novelty, inter alia, over document D3.

Before the Board, the patent proprietor filed a new main request corresponding to the second auxiliary request but which did not contain claim 12 any more.

The patent proprietor complained about the way in which the first instance proceedings had been handled:

• after the amended claims according to the main request and the first auxiliary request had been found to lack clarity, the OD gave it a last opportunity to file a new request;
• the claims of the then filed second auxiliary request were found to comply with the requirements of A 84, A 123 and A 83; however, the opponents raised novelty objections against claim 12, which corresponded to claim 17 as granted; these novelty objections raised had not been submitted previously in writing and, in fact, the OD had communicated in the summons to oral proceedings (OPs) its provisional opinion that the claimed subject-matter was novel over the cited prior art;
• after an interruption for deliberation, the Chairman of the OD informed the parties that further amendments would not be accepted, that claim 12 lacked novelty and that therefore the patent was revoked;
• the OD thus did not give the patent proprietor a further opportunity to file a new request not containing any longer the objected claim 12, which request had been already prepared during the interruption; this represented a violation of the right to be heard and a substantial procedural violation; since the patent proprietor had to file an appeal because of the OD’s decision not to give a further opportunity to amend the claims, it was equitable to reimburse the appeal fee in accordance with R 103(1)(a).

In what follows the Board dealt with the alleged substantial procedural violation and its consequences:

[1.1] It is not disputed and it results from the minutes of the OPs of 4 February 2010 before the OD that

• the patent proprietor was allowed to submit three new requests;
• after the discussion on the clarity of the first auxiliary request the OD gave the patent proprietor a last opportunity to file a new request;
• the claims of the then filed second auxiliary request were found to comply with the requirements of A 84 EPC (1973), A 123 and A 83 EPC (1973); however, the opponents raised new novelty objections, which had not been submitted previously in writing, against claim 12, corresponding to claim 17 as granted;
• the patent proprietor had ample time to discuss these new facts and had no difficulty in discussing the objections raised;
• the patent proprietor did not ask for the possibility of submitting further requests and did not inform the OD that it intended to prepare an amended request in order to overcome the raised novelty objections before the proceedings were interrupted by the chairman for deliberating on the novelty of the second auxiliary request;
• after an interruption for deliberation, the Chairman of the OD informed the parties that claim 12 lacked novelty and that therefore the patent was revoked.

[1.2] The admissibility of the new novelty objections has not been challenged by the patent proprietor. Moreover, as already explained above, the patent proprietor had sufficient time for considering the new objections raised against its amended claims and had no difficulty in dealing with them.

As regards the fact that the OD had communicated in the summons to OPs its provisional opinion that the product claims were novel over the cited prior art, the Board remarks that the opinion expressed in the summons was provisional and, consequently, subject to revision on the basis of the arguments submitted by the parties at the OPs. In fact, such a communication sent to the parties with the summons serves only as orientation for the discussion that has to take place during OPs but it has no limitative effect on the arguments which can be then presented by the parties.

Under these circumstances the Board cannot recognise any procedural violation in the admission of the new novelty objections.

[1.3] The [patent proprietor] submitted during the OPs before the Board that, in its recollection, the chairman, after reopening the proceedings, stated that further amendments would not be allowed, de facto depriving the patent proprietor of the possibility of filing a further amended request as a reaction to the new novelty objections raised.

A confirmation of this fact cannot be found in the minutes.

The [opponents] submitted in writing that, after the discussion on the clarity of the first auxiliary request, the chairman gave the patent proprietor a last opportunity to file a new request, as reported in the minutes, and stated also that no further amendments would be allowed.

Therefore, the chairman’s statement concerned exclusively the attempt of the patent proprietor of overcoming the clarity objections discussed so far. Hence, it cannot be assumed that this statement had still to be considered applicable in the light of the new facts introduced into the proceedings with the novelty objections raised for the first time by the opponents against claim 12 of the second auxiliary request.

[1.4] Even though the Board is convinced that it would have been a substantial procedural violation to refuse a request by the patent proprietor to submit amended claims in an attempt to overcome the new novelty objections which could not have been foreseen before OPs, the Board can rely in its judgement only on the minutes of OPs, which were not disputed by the patent proprietor (see also T 642/97 [9.3]), and on the facts agreed upon by all parties.

On the basis of these undisputed facts, it does not result that the chairman stated, after reopening the OPs, that further amendments would not be allowed.

Therefore, the Board can only conclude that the OD, in deciding after deliberation to revoke the patent, did not commit any substantial procedural violation.

[1.5] Since the OD did not commit a substantial procedural violation, the request for the reimbursement of the appeal fee cannot succeed.

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