Thursday, 6 December 2012

T 162/12 – Card Games

This appeal was filed against the refusal of the application under consideration.

The Board found the main request to lack novelty. It then dealt with the admissibility of the auxiliary requests that had been filed during the oral proceedings (auxiliary request 1) and one month before the OPs (auxiliary requests 2 and 3), respectively.

(New) auxiliary request 1 filed during the OPs

[2.1.1] (New) auxiliary request 1 corresponding to the combination of claims 1 and 2 of the main request was not filed until the end of the discussion concerning the patentability of the subject-matter of claim 1 of the main request. The appellant argued that the need for a further limitation of the subject-matter of the claim 1 of the main request became apparent to him only during the OPs and that the amendments in said request establish novelty for the subject-matter of amended claim 1.

[2.1.2] According to the established case law of the Boards of Appeal the admission of amended claims submitted for the first time during OPs is subject to a legally relevant excuse for their late filing, see Case Law, 6th edition, 2010, Chapter VII.E. 16.3.3(a).

[2.1.3] In the present case the discussion during the OPs has been essentially limited to the objection raised in the Board’s annex to the summons concerning lack of novelty of the subject-matter of claim 1 of the main request, without any new issues coming up which could have left the appellant facing a new situation.

As stated under point [2.1.1] above claim 1 of the (new) auxiliary request 1 corresponds to the combination of claims 1 and 2 of the main request. However, the Board has already expressed in its annex to the summons its preliminary opinion that the subject-matter of claim 2 of the main request did not involve an inventive step, see point 3. The appellant therefore could have filed said auxiliary request, properly supported by arguments (see point 2.3 below), sufficiently in assurance for the Board to prepare itself for the OPs. In acting as it did, the appellant kept all its cards to itself whereas the Board with its annex to the summons has laid its cards on the table. That cannot be considered conclusive to efficient proceedings.

[2.1.4] Thus, there is no legally relevant excuse for the late filing of this auxiliary request, which is therefore not admitted.

(Renumbered) auxiliary requests 2 and 3
filed with letter of 2 July 2012 as then 1st and 2nd auxiliary requests

[2.2.1] In its annex to the summons to OPs set for 2 August 2012, sent by virtue of Article 15(1) RPBA the Board specifically raised objections concerning lack of novelty of the subject-matter of claims 1 and 3 to 10 and lack of inventive step of claims 2 and 11 to 15 of the appellant’s main request. In this communication the ultimate date for filing submissions was set out at one month before the OPs and reference was made to the provisions of Article 13 RPBA. With its letter of 2 July 2012, the appellant filed two auxiliary requests. It only indicated that for the then 1st auxiliary request claim 6 of the main request was incorporated into the independent claims 1 and 10 of the main request and that in the then 2nd auxiliary request the independent claim 11 of the main request became the only independent claim. The request was not accompanied by any reasoning concerning the patentability of the claims of these requests, The appellant did not indicate what the objective of the amendments was nor how said changes responded to the objections raised in the Board’s communication.

The (renumbered) auxiliary requests 2 and 3 are therefore to be regarded as not being substantiated.

[2.2.2] According to Article 13(1) RPBA it is in the Board’s discretion to admit and consider any amendment to a party’s case after it has filed its grounds of appeal or reply. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

[2.2.3] It is exactly with a view to procedural economy that the Board has taken the trouble of giving a detailed preliminary opinion on novelty and inventive step, not only regarding the independent claims, but also the dependent claims and in particular those claims that are now the subject of the subsequently filed auxiliary requests 2 and 3.

Filing such requests without any substantiation, let alone any argumentation taking account of the Board’s remarks, does not serve the purpose of procedural efficiency.

Already for these reasons alone the Board does not exercise its discretion in favour of the appellant; the (renumbered) auxiliary requests 2 and 3 are not admitted into the appeal proceedings in accordance with Article 13(1) RPBA.

[2.3] The Board considers the non-admittance of the appellant’s auxiliary requests 2 and 3 into the appeal proceedings not a harsh decision. It makes clear that also the parties have a duty to keep the proceedings efficient, be it ex-parte or inter-partes proceedings. In their dealings with the Boards of Appeal, the interested circles persistently request the Boards to issue preliminary opinions, in advance of the OPs. If a Board comprises (sic) with such a wish, like the present Board, it may expect an appropriate reaction in return, timely submitted and substantiated in advance of the OPs.

Filing such requests “just in time” before the ultimate date mentioned in the annex to the summons, but supplying the substantiation only at the OPs is for this Board equivalent to filing such requests at the OPs, and can be treated accordingly. The comparison with a game of cards, as used in point 2.1.3 above, also applies here.

[2.4] The Boards also cannot follow the appellant’s argument that is was its role to evaluate any reasonable request whether or not it meets, the requirements of the EPC. In the Board’s judgment, for an auxiliary request to qualify as a “reasonable request” at this stage of the proceedings requires not only at least some substantiations and clear allowability, but should also comply with and procedure efficiency. That is not the case here.

[2.5] Finally, the Board wishes to point out that the provisional opinion of the Board in the annex to the summons is not necessarily a sufficient reason for having further requests admitted; the obligation to provide a complete case with the appeal or the reply to the appeal, established by Article 12(2) RPBA, still holds.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


pantagruel said...

In my opinion, the card player analogy is unfortunate. The Board is not the adverse party, even in ex parte proceedings. That being said, the message is alright: “No last minute surprises, please.”

MaxDrei said...

Agreed, pantagruel, that the analogy to playing cards is unfortunate. But to hold back one's case until after the Rapporteur has assessed the "full case" of each and every party to the proceedings and, with the Summons, set out what seem to be the decisive issues is, in my view, disrespectful to the Board and destructive of procedural efficiency.

RPBA require the "full case" at the outset of the appeal procees. Quite right too. But why do it, if you can get away with not doing it and, instead, ambush everybody at (or just before) those culminating oral proceedings?