Saturday, 29 December 2012

T 1431/10 – Resisting The Lego Approach

Patent proprietors sometimes hesitate which claims to pursue and find strategies how to submit a great number of sets of claims without actually presenting them as individual requests. Such strategies invariably fail. The present decision provides yet another example.

[1.1] In its letter dated July 19, 2012, [the patent proprietor] requested to replace the auxiliary requests that had been filed before by three “claim groups”. Several variants were filed for each [claim group]. The patent proprietor was of the opinion that the individual “claim groups” should be discussed and that then admissible requests of the three “claim groups” should be combined to complete requests. Given the resulting number of possible combinations, the patent proprietor has determined the total number of sets of claims submitted to be 111. On August 29, 2012, i.e. less than a week before the oral proceedings (OPs), amended alternatives concerning “claim group 1” were filed.

[1.2] The filing of requests corresponding to 111 sets of claims, six weeks before the OPs, and their amendment one week before the OPs results in making the work of the adverse party and of the Board difficult to an extent that cannot be accepted. Even if, as pointed out by the patent proprietor, “only” twelve aspects would have to be discussed, such a [great] number of requests and the filing of partial requests (Teilanträge) contradicts the principle of procedural economy. Moreover, not all of the aspects of the amendments were already discussed in the statement of grounds of appeal, and it is the duty of the patent proprietor to draft the complete requests.

[1.3] It is for these reasons that the Board exercises its discretion under Article 13(1)(3) RPBA and considers the late filed sets of claims corresponding to the auxiliary requests filed on July 19 and August 29, 2012, to be inadmissible.

In decision T 382/96, the Board had judged a similar approach even more severely:
[5.2] It is a basic principle of European patent law that the applicant – in opposition proceedings, the patent proprietor – bears the responsibility for determining the subject-matter of the patent. This is expressed, for example, in the provisions of R 51(4)-(6) and R 58(4)(5) [EPC 1973]. The applicant/patent proprietor cannot, by presenting a excessive number (Unzahl) of requests, let alone incompletely drafted variants of requests, shift this responsibility de facto to the EPO, in this case the Board of appeal, or as the case may be to other parties, in this case the respondents/opponents. 

[5.3] According to the Board, such behaviour amounts to an abuse of procedure because the EPO and, as the case may be, other parties to the proceedings are burdened in a disproportionate manner (unverhältnismäßig) with duties that do not originally concern them and because the orderly operation of the proceedings is impeded.
T 1898/07 (also presented on this blog - here) is also relevant in this context.

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

The file wrapper can be found here.


Anonymous said...

The expression : "phishing for something patentable" comes to mind.