T 253/10 – Admission Problems

This case deals extensively with the admissibility of late filed requests.

The Opposition Division had revoked the opposed patent.

Together with its statement of grounds of appeal (SGA), filed on April 9, 2010, the patent proprietor filed a new main request and one auxiliary request.

In their replies, filed on August 26, 2010 and September 6, 2010, the opponents raised A 123(2), clarity, novelty and inventive step objections.

On December 12, 2011, the Board summoned the parties to oral proceedings (OPs) to be held on March 15 and 16, 2012.

On February 15, 2012, the patent proprietor filed a new main request replacing the former main request as well as several sets of auxiliary requests. The former auxiliary request was withdrawn.

More new requests were filed during the OPs.

Most of the decision deals with the admissibility of the late filed requests.

*** Translation of the German original ***

Main request and auxiliary requests 1 to 7 of series A to D of February 15, 2012

Admission

[2.1] The [patent proprietor] has filed a new main request as well as four series (A-D) of seven auxiliary requests each, i.e. a total of 29 requests at a very late stage, i.e. close to one month before the OPs and more than 17 and 21 months, respectively, after the response of the [opponents] to the SGA. It has not given any justification for the late filing in the accompanying letter. The [opponents] criticised these requests as belated and requested that they be not admitted into the proceedings.

[2.2] According to the RPBA, the appeal proceedings are based on the SGA and the corresponding reply. The SGA and the reply shall contain a party’s complete case (Article 12(2) RPBA). They shall contain not only all facts, arguments and pieces of evidence but also all requests. Thus the disputed matter (Streitstoff) that is relevant for the appeal proceedings results from the SGA and the corresponding reply. Later amendments of the submissions are not completely excluded, but the RPBA expressly stipulate that it is at the Board’s discretion whether amendments to a party’s case after it has filed its grounds of appeal or reply are admitted (Article 13(1) RPBA). Amendments made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs (Article 13(3) RPBA). According to this provision, the Board has no discretion in this respect.

It follows from Article 13 RPBA as a whole that there is not legal right to amend the submissions at a later stage with respect to the introductory exchange of submissions.  Moreover, the systematic connection between Articles 12 and 13 RPBA makes clear that amendments of a party’s submissions after the filing of the SGA and the corresponding reply do not form part of the disputed matter of the appeal proceedings but need to be introduced into the proceedings in order to be taken into account. Thus a party wishing to amend its submissions after the introductory exchange of submissions cannot rely on the fact that possible amendments will be taken into account but has to work towards (hinwirken) the admission of the amended submission by the Board.

[2.3] The criteria for the exercise of discretion cited as examples in Article 13(1) RPBA (the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy) do not constitute exclusive requirements that all have to be fulfilled in order for a belatedly amended submission to be ignored (R 16/09 [2.2.4]). Accordingly, the Boards of appeal consider further aspects in their case law, such as the reasons for an amendment, or its extent (Umfang). As a rule, the Boards admit amendments when they are filed in response to objections or evidence that are not part of the impugned decision but have been submitted for the first time in the course of the appeal proceedings. As stated by the Enlarged Board of appeal (EBA) it belongs to the discretion of the Boards of appeal to decide which criteria are to have precedence according to the circumstances of the case (R 16/09 [2.2.11]). In this context the criterion of lateness can outweigh the other criteria and be decisive for the exercise of discretion (R 16/09 [2.2.12]).

[2.4] In the present case the Board is not persuaded by the argument of the [patent proprietor] according to which the filing of amended claims was an adequate and appropriate reaction to objections raised by the [opponents]. The [patent proprietor] could have drafted its fall-back positions, which it considered to be required in view of the objections raised, on the basis of the impugned decision, and in any case on the basis of the reply to the SGA. The [patent proprietor] was unable to cite cogent reasons why it had waited for so long before it filed the amended sets of claims for which it was the sole responsible. In particular, neither the course of the proceedings nor the behaviour of the [opponents] justified a reaction of the [patent proprietor].

[2.5] The [patent proprietor] justified the belated filing of its requests as a reaction to the summons [to OPs], to which it has reacted within the usual and acceptable time limit of one month before the OPs. It also referred to the similar “rice case” that was directed at weed control for another tolerant crop and which had been discussed on January 23, 2012, before the Board, in the presence of the same parties. It was of the opinion that this case had certain parallels to the present case, in particular in view of the split of claim 1 as granted into several independent claims. Therefore, for the sake of procedural economy, [the patent proprietor] wished to await the decision in the rice case. The incorporation of glyphosate-sulfosate was an outcome of the rice case, too, and in particular of the discussion of A 123(2) in that case. Very much like in the rice case, where incidentally the split of the claims had been considered to be admissible, in the present case the scope of the claims was limited to the groups (A1), (A2), and (A3), which were said to be preferred compounds in the original description. Said sulfosate was found among them, in the (A2) group. In view of the objection raised against new independent claim 4, the [patent proprietor] argued that this claim was a reaction to the objection of [lack of] novelty against claim 1, in view of document D48. Its purpose was to overcome the novelty objection while claiming what could still be protected.

Moreover, the [patent proprietor] was of the opinion that the amendments were very limited. They did not trigger any new questions or problems which the [opponent] were not aware of in view of the present proceedings and the rice case, respectively. The number of requests was admittedly great, but their complexity was low. Series A, B, C, and D only differed by the presence or absence of claim 7, respectively.

[2.6] The Board is not persuaded by the arguments of the [patent proprietor].

[2.6.1] The communication annexed to the summons summarised the issues to be discussed at the OPs resulting from the impugned decision, the SGA and the replies of the [opponents] to the SGA: in particular, objections under A 123(2) concerning the split of granted claim 1, objections as to a lack of novelty with respect to documents D1, D3, D42, D48, and D70 as well as inventive step, for instance in view of the question whether the alleged synergy was proven over the whole scope. Thus the summons cannot be considered to have caused the subsequently amended requests by which the [patent proprietor] claimed to react to the objections of the [opponents]. The [patent proprietor] was aware of the objections, in particular concerning novelty and inventive step, from the very beginning. It had sufficient time to consider its fall-back positions and to file accordingly amended claims, if it believed such to be required. This is what it should have done, in view of the requirements for regular proceedings, which obliges the parties to file all facts, evidence, arguments and requests as soon an as complete as possible, as well as reasons of fairness towards the [opponents], who should know as soon as possible to which extent the [patent proprietor] wishes to maintain its patent, and for which reasons. Irrespective of that fact the [patent proprietor] was not entitled to interpret the communication annexed to the summons as an invitation to unroll the case afresh in order to reorient it by amending its requests. Such an interpretation would contradict the duty of all parties to submit their complete case, i.e. all means of attack and defence, together with the SGA and the corresponding reply. Moreover, this interpretation also does not sufficiently account for the purpose of the OPs, which come last in EPC proceedings and which, therefore, also terminate the appeal proceedings.

[2.6.2] The Board does not share the opinion of the [patent proprietor] according to which the one-month time limit was a common time limit within which amended submissions were still accepted. First, when asked by the Board, the [patent proprietor] was not able to indicate a legal basis for its opinion. It only invoked a custom. The Board does not consider that there is such a custom, and such a custom would not be in line with Article 13 RPBA. Rathern, in view of its knowledge of the case law of the Boards of appeal and the RPBA, the representative of the [patent proprietor] had to be aware that the admission of amended requests was at the discretion of the Board, which discretion is exercised in consideration of the circumstances of the individual case (R 5/11 [4.2]). In view of the extent of the amendments, it had to expect the application of Article 13(3) RPBA the mandatory legal consequence of which is independent of the reasons for the belated amendment. Thus the patent proprietor was not entitled to trust that its 29 requests by which it amended the object of the appeal less than a month before the OPs would be admitted into the proceedings.

[2.6.3] As regards the similar rice case invoked by the [patent proprietor], for which incidentally there was no written decision on the day of the OPs, it has to be noted that the EPC does not provide for any binding effect for decisions taken by the same or a different Board with respect to another case, even if the issues to be discussed are the same. This was conceded by the [patent proprietor] upon request by the Board.

This notwithstanding, the Board also is of the opinion that the decision of the Board in this allegedly similar case, which concerns another invention, is irrelevant for the assessment of novelty and inventive step in the present case, because this assessment only depends on the facts and evidence that are in the present proceedings, i.e. the concrete state of the art, the comparative date submitted, the claimed subject-matter, etc. The [patent proprietor] has not claimed that the latter are the same in both cases. For the same reasons decision T 888/08 cannot support the arguments of the [patent proprietor].

Therefore, the Board is of the opinion that there was no legitimate interest (schützenswertes Interesse) and, as a consequence, no good reason to wait for the OPs in the rice case before filing requests that take into account objections that have existed for a long time and are specific for the present case.

[2.6.4] The argument of the [patent proprietor] according to which in the present case the introduction of the sulfosate was justified by the outcome of the discussion in the rice case, is not convincing. According to the [patent proprietor], its introduction has its origin in the A 123(2) discussion in the rice case. In the present case, there have been objections under A 123(2) regarding the split of claim 1 of the impugned patent and specific combinations resulting from it. According to the statements of the [patent proprietor], in the rice case such a split was not considered to be a violation of A 123(2). Thus the introduction of sulfosate in the rice case manifestly is not linked to this objection, which is essential in the present case.

[2.6.5] Nor can the Board see that the requirements of A 123(2) and of novelty are interwoven in such a way that the [patent proprietor] would have been hindered from drafting suitable fall-back positions in due time, as alleged by the [patent proprietor]. The Board is aware that such sets of claims may under certain circumstances result in a significant limitation of the subject-matter of the impugned patent. It may well be that such limitations are not in the interest of the [patent proprietor], but this does not mean that the [patent proprietor] was hindered from drafting amended claims that are both new and supported by the original application, at an early stage of the proceedings in case it did not consider the two requests filed together with the appeal to be sufficient for overcoming the known objections.

[2.6.6] The Board does not share the opinion of the [patent proprietor] according to which new claim 4 was justified by the objection of novelty in view of document D48 and, therefore, did not contravene R 80. Document D48 only discloses the use of glyphosate and metazachlor in tolerant colza and was the reason why this combination was deleted from claim 2, which is directed at combinations of (A2) compound. Claim 4 is directed at the use of compounds of formula (A1), formula (A2), which inter alia comprises glyphosate, and formula (A3) in combination with herbicides of formula (B1), which inter alia comprises metazachlor, and formula (B3) in post-emergence treatment (Nachauflauf-verfahren). The Board is of the opinion that claim 4 is neither necessary not appropriate as reaction to the lack of novelty due to a particular novelty-destroying combination.

Moreover, this claim, although drafted as an independent claim, is almost completely covered by independent claims 1 to 4, which encompass all application methods (pre-emergence, post-emergence, pre- and post-emergence) and, therefore, with the exception of the specific combination claimed in document D48, corresponds to the subject-matter of a dependent claim. However, according to the established case law, the addition of new dependent claims is neither necessary nor appropriate for overcoming a ground for opposition (see, e.g. T 674/96 [3.10]).

[2.6.7] In view of the complexity of the submission of the [patent proprietor], the Board is of the opinion that the mere number of requests significantly increased the complexity of the case. This was even amplified by the fact that, as pointed out by [opponent 2], some of the amendments in auxiliary requests 1 to 7 in the sets A to D appeared to be directed at different directions and were filed by the [patent proprietor] almost without any comments regarding the objections to be overcome and the support for the amendments in the original documents. Thus the [patent proprietor] left it to the Board and the [opponents] to form an opinion on the amendments underlying the auxiliary requests and their justification.

[2.7] Thus the Board decided not to admit the requests of February 15, 2012, into the proceedings (Article 13(1) RPBA).

Main request of March 15, 2012

Admission

[3.1] This request is based on the main request of February 15, 2012, and had been filed by the [patent proprietor] during the OPs, after the Board had decided not to admit the requests of February 15, 2012. This requests differs from the main request of February 15, 2012, in that glyphosate-sulfosate was removed from claim 2 and claim 4 was deleted. The following claims were renumbered accordingly. The [opponents] requested [the Board] not to admit the new main request into the proceedings because it had been filed belatedly.

[3.2] The [patent proprietor] pointed out that the [opponents’] objections regarding novelty and clarity had been taken into account. Moreover, the particular degree of complexity […] had been removed. Thus the present request could not be considered to be an inappropriate reaction any more. The [patent proprietor] also pointed out that a new main request had been filed together with the SGA and that experience showed that the summons once again gave the patent proprietor an opportunity to consider the objections. At least this is what had happened in the quasi-identical rice case. Moreover, the amendments were only deletions limiting the scope of the impugned patent. In view of the objection of lack of inventive step further deletions had been carried out. A rejection of the request by the Board would be too severe because this would deprive the [patent proprietor] of any further opportunity of reacting to objections, although the points were the same as in the rice case, which also involved the same parties. The patent proprietor could not be expected to determine fall-back positions in view of all possible objections.

[3.3] As objected by the [opponents], the new main request is based on the main request of February 15, 2012. The admission of the new main request would circumvent the decision not to admit the requests of February 15, 2012. As a matter of fact, the objection raised against the requests of February 15, 2012, according to which they could and should have been filed at an earlier date if the proceedings had been conducted in a careful way, also apply to the new auxiliary request of March 15, 2012. The novelty and clarity objections raised against the requests filed together with the SGA were known to the [patent proprietor]. Moreover, the question of whether the asserted synergy was proven over the whole breadth, which was essential for the assessment of inventive step, had already been raised. The summons did not add anything further. Thus the [patent proprietor] had had enough time for filing suitable fall-back positions in the form of amended claims in due time. It has not made use of this opportunity. It now tries to remedy this failure to the detriment of the adverse party, which still faced very limited means of defence one month before the OPs, by an amendment of its submissions.

However, the Board is of the opinion that in inter partes appeal proceedings it is contrary to an efficient and fair conduct of proceedings when the patent proprietor deals with objections that have been raised long before, by filing amendments only after the summons to OPs. This holds true for both the main request of March 15, 2012, and for the requests of February 15, 2012. The Board emphasises that this situation is different from cases where amended requests are filed in response to objections or evidence which are not part of the impugned decision but which have been presented (and admitted into the proceedings, as the case may be) for the first time in the course of the appeal proceedings.

[3.4] The argument of the [patent proprietor] based on the low complexity of the new request did not dispose the Board to weigh the circumstances in a different way when exercising its discretion. The complexity of the new subject matter submitted is one example cited in Article 13(1) RPBA besides the current state of the proceedings and the need for procedural economy. However, these criteria do not have to be fulfilled cumulatively. It is within the discretion of the Board to decide which criterion prevails under the circumstances of the case (see above under [2.3]; R 16/09 [2.2.4;2.2.11-12]. As already explained in the preceding paragraph, what is decisive in the present case is that there were no good reasons justifying the late submission.

The Board is of the opinion that the right to have an appropriate opportunity to present one’s case (A 113(1)) does not create an unconditional right to perform procedural acts that are possible and required at the beginning of the proceedings, such as the filing of sets of claims that amend the disputed subject-matter, shortly before the end of the proceedings. In the last stage of the proceedings the purpose of terminating the proceedings for the sake of legal security gains momentum and prevails over the other criteria for the exercise of discretion regarding the admission of amended submissions. The Board is of the opinion that the claim of the [patent proprietor] for a possibility of introducing amended sets of claims as a means of defence, regardless of subsequent changes, is incompatible with the requirement of fair treatment of the parties in contentious proceedings such as inter partes proceedings.

[3.5] Moreover, the Board does not share the opinion of the [patent proprietor] according to which the summons for OPs issued in the present case are to be considered as an invitation or opportunity to file requests […]. The purpose of a communication under Article 15(1) RPBA is to refer [the parties] to points of particular importance and to help them to concentrate the arguments set forth in the OPs on what is essential.

[3.6] As to the allegedly different handling of the admission of late filed requests by the Boards of appeal, in particular by this Board in the rice case, the Board notes that the admission of such requests always depends on the concrete circumstances of the individual case. Differences regarding the admission of requests reflect the exercise of discretion by the Boards in view of such concrete circumstances. However, the Board is of the opinion that even in similar cases the specifics of the course of the proceedings may lead to a different assessment of the admissibility of late filed requests, without there being a different interpretation of the RPBA as claimed by the [patent proprietor].

[3.7] Thus the Board decided not to admit the main request filed during the OPs into the proceedings (Article 13(1) RPBA).

Main and auxiliary request of April 9, 2010

Readmission

[4.1] The [patent proprietor] was of the opinion that the non-admission of its previous requests entailed that the main and auxiliary request filed together with the SGA still were in the proceedings. Alternatively, it requested [the Board] to readmit these requests.

[4.2] The Board does not share the opinion of the [patent proprietor] according to which the requests filed together with the SGA, which had been replaced by the requests of February 15, 2012, or withdrawn, as the case may be […] automatically were in the proceedings as a consequence of the refusal to admit the previous requests. However, it readmitted these requests because it was of the opinion that the [opponents] were not adversely affected by this [readmission] because they already knew these requests as from the beginning of the appeal proceedings and, as a consequence, they had had sufficient opportunity to prepare for the discussion of these requests. Thus the [opponents] may be expected to comment on these requests.

The Board found the main and auxiliary requests of April 9, 2010, to lack novelty. It then discussed the admissibility of the auxiliary request dated March 15, 2012:

[7.1] This request was filed after the Board had informed the parties on its conclusion regarding the novelty of the requests filed together with the SGA. The request differs from the main request filed together with the SGA in that in claim 1 and claim 11 in the (B3) and (B3’) group, respectively, the Fluazifop-P compound and its ester have been deleted. The [opponents] criticise this auxiliary request as belated and unjustified because it only overcame an objection that had been raised long ago, and as inappropriate because it was not prima facie allowable.

[7.2] The [patent proprietor] argued that it had filed this request as a reaction to the preceding discussion of novelty and the conclusion drawn by the Board. The amendment was suitable for overcoming this objection. It consisted in the deletion of one single compound, which meant that the amendment was small and acceptable. There was no need for postponing the OPs. Moreover, the [patent proprietor] was of the opinion that in view of Article 13(1) and (3) RPBA, which have to be taken into account when exercising discretion, [the idea of] dismissing this request only because of the moment in time when it had been filed was inadmissible.

[7.3] The Board does not share this opinion of the [patent proprietor].

[7.3.1] As already explained under point [3.4] above, the criteria for the non-admission of late filed submissions which are cited as examples in Artlcle 13(1) RPBA do not have to be fulfilled cumulatively. It also is part of the discretionary decision of the Board which aspect it privileges when considering the circumstances of the case. In the present case what is decisive in the eyes of the Board is that the objection of lack of novelty over document D1 has been part of the proceedings for a long time and it was not justified to wait for a concluding opinion of the Board on a disputed question in order to adapt the requests to this opinion. It follows from the case law of the EBA in petition for review proceedings that [parties are] not entitled to full or partial explanations by the Board of the foreseeable reasons before the decision is given in writing (see R 6/11 [8.2] with further references to the established case law). Consequently, a party may not expect the Board to inform it on [the Board’s] opinion on particular disputed issues so that it can file new requests. As a consequence, the communication of the opinion of the Board in the course of OPs cannot be considered to constitute an objective incentive for amended requests. As stated by the EBA (R 12/09 [11] with further references to the case law) any party is free to present its case as it wishes, whereas the Board has to decide on the basis of the submissions of the parties. When doing so, in inter partes proceedings, a Board should not one-sidedly assist a party by giving it indications in advance during OPs or in a communication. The Board would give up the objectivity and impartiality it is required [to exhibit] if it communicated its opinion on a question that has been disputed from the beginning of the proceedings and therefore assisted the party whose point of view is dismissed, insofar as this party would have to be offered a possibility to react by amending its submission (cf. R 15/10 [9] with further references).

The EBA also stated that a party that wishes to obtain a decision in its favour has to actively participate in the proceedings and submit of its own motion whatever may support its position. It is part of the duties of professional representatives to decide of their own motion – i.e. without being assisted by a Board – how to conduct their cases (R 12/09 [11]; R 16/11 [2.6]). Accordingly, [a party] has to carefully examine the validity (Stichhaltigkeit) of the arguments of the adverse party and to react to them in due time, in particular by defining appropriate fall-back positions.

Apart from that the Board agrees with the opinion of [opponent 2] which considered the [patent proprietor’s] way of proceeding with the auxiliary request filed on March 15, 2012, to be an attempt to arrive again at a request the admission of which had been refused because it was late filed, and thereby to circumvent the discretionary decision of the Board in respect of the claims of February 15, 2012. The Board is of the opinion that this way of proceeding, by which the [patent proprietor] attempts, to its sole benefit, to react to objections that had been raised long ago in a stepwise manner, would be unfair to the [opponents].

[7.3.2] Nor is the Board persuaded by the argumentum e contrario drawn from Article 13(3) RPBA; this argument cannot justify the admission of this request. Article 13(3) provides that amendments sought to be made after OPs have been arranged shall not be admitted if they make it necessary to adjourn the OPs. Thus this article defines the conditions under which the non-admission is a mandatory legal consequence and, therefore, not within the discretion of the Board, but beyond that it does not interfere with the discretion which is given to the Board by Article 13(1) RPBA.

[7.3.3] Moreover, as submitted by [opponent 2], there are prima facie doubts regarding the allowability of this set of claims, e.g. under R 80, in view of dependent claim 6, which is new with respect to the impugned patent.

[7.4] Thus the Board decided not to admit this request into the proceedings (Article 13(1) RPBA).

The Board dismissed the auxiliary request filed on March 16, 2012, for the very same reasons. It then went on to consider the complaint under R 106 in connection with A 112a(2)(c):

[9.1] During the OPs before the Board the [patent proprietor] has raised objections under R 106 after the decisions not to admit the main request of March 15, 2012, as well as both auxiliary requests of March 15 and 16, 2012, […]  because it was of the opinion that its right to be heard had been violated.

[9.2] The [patent proprietor] was heard on the admissibility of its requests in all cases and was not restricted in the presentation of its arguments related to that question. Thus its right to be heard regarding the admissibility of the late filed submissions was not curtailed. This was not contested by the [patent proprietor]. Its objection is directed at the discretionary decision of the Board not to admit the late filed requests into the proceedings. This exclusion was said to violate the right to be heard of the [patent proprietor] under A 113(1).

[9.3] However, the Board is of the opinion that the [patent proprietor] cannot derive the right to file requests at any stage of the proceedings from its right to be heard.

The parties are not completely free in the way in which they conduct the proceedings. They are subject to certain limits that are defined, in inter partes proceedings, by the principle of fairness to the adverse party and, more generally, by the requirements for regular proceedings (T 1685/07 [6.1]). In particular, the parties to inter partes proceedings have the duty to conduct the proceedings in a careful and diligent (beförderlich) way. It is part of this duty to file facts, evidence, arguments and requests as soon and as completely as possible (T 1685/07 [6.1-2]; T 2102/08 [4.3.1]). Article 13 defines a legal sanction of the violation of this duty, i.e. the fact that the parties should have participated until a certain point of the proceedings but did not do so. The underlying purpose is to concentrate the submissions of the parties to an early stage of the proceedings. The intention is to make the proceedings predictable (berechenbar) and allow them to lead to an adequate decision through proceedings the duration of which is appropriate.

The duty to conduct the proceedings diligently (Verfahrensbeförderung) applies to the opponents (with respect to the submissions of the means of attack) and the patent proprietor (with respect to the means of defence) in the same way. There is no support in the EPC and in the procedural law governing the Boards of appeal for the idea that the Board should be more tolerant towards one party or the other, for instance in order to ensure that the inventor is duly remunerated or to avoid the survival of an invalid legal title (Rechtstitel). Such an approach is incompatible with the objectivity and impartiality of the Boards of appeal which are required in opposition appeal proceedings, which are contentious proceedings (G 10/91 [2]).

In this context Article 13 RPBA does not contradict the parties’ right to be heard under A 113, even if the belatedly amended submission of a party is not taken into account in the further proceedings. This is because the legislator is free to limit the right to be heard for the sake of accelerating the proceedings, by [allowing the Boards] to ignore, partly or entirely, the factual submissions of a party that has infringed its duty to conduct the proceedings diligently, provided, however, that the party was offered in an appropriate way the opportunity to present its case, but that the party has failed, for reasons it is answerable for, to make use of the possibility of commenting. Moreover, in inter partes (contentious) proceedings the principle of equality of arms (Waffengleichheit) requires that the parties be given the opportunity of commenting under comparable conditions. Therefore, the admission of belated amendments of the submissions of a party must not lead to a situation where the adverse party is disadvantaged in its right to comment (Article 13(2) RPBA), for instance because it can exercise this right only insufficiently in the available time.

Thus, in so far as there is no legal right to having late filed amendments admitted in a permissible manner under Article 13 RPBA, the exercise of the discretion to which the Board is entitled can only violate the right to be heard if the discretion is exercised in an arbitrary manner. However, the [patent proprietor] has not raised, let alone substantiated, such an objection.

[9.4] If, in the present case, the [patent proprietor] considered it to be necessary, in view of the objections raised by the [opponents] against the maintenance (Rechtsbestand) of the impugned patent, to define fall-back positions in the form of amended sets of claims, in order to defend its legal position, it had the duty to file them at the earliest possible moment, i.e. as an immediate response to the submissions of the [opponents] where the relevant objection was raised in a comprehensible manner. It must not wait until a late stage of the proceedings, to the detriment of the [opponents]. If it omits to fulfil its procedural duties, it has to bear the consequences.

[9.5] As has already been stated several times, the [patent proprietor] had sufficient opportunities to counter the objections raised by the [opponents] in their replies to the SGA, in particular the lack of novelty, by filing correspondingly drafted fall-back positions. It cannot wait until it “knows the position of the Board with respect to the submission of the opponents”, as argued by the [patent proprietor]. The [patent proprietor] is the sole responsible for taking all measures that are required for defending its legal position, including the filing of appropriate sets of claims, in good time. It is part of the professional duties of professional representatives to decide of their own motion, i.e. without any assistance of the Board, how to conduct their cases (see above, point [7.3.1], referring to R 12/09 [11]). The fact that a Board subsequently endorses the factual submissions of the adverse party does not constitute new facts; it is a possibility which a party has to anticipate. The drafting of appropriate fall-back positions at the earliest possible moment is not an expression of anticipatory obedience (“vorauseilenden Gehorsams”), as argued by the [patent proprietor]. If they are drafted as auxiliary requests of lower rank, such fall-back positions are not concessions to the adverse party but a protection against misjudgements of the factual and legal situation and, as such, expression of a careful conduct of the proceedings. The patent proprietor is still at liberty to have a main request that allows it to defend the subject-matter of the invention with a breadth that it believes to be factually and legally justifiable.

[9.6] The [patent proprietor] has not sufficiently explained which new facts that are relevant for the present case have arisen from the OPs in the rice case, and to which extent these facts have justified the belatedly amended sets of claims. When filing the belated requests, the [patent proprietor] only reacted to the objections raised in the present case, which had been submitted by the [opponents] in their replies to the SGA and which are specific to the impugned patent that is the object of the present proceedings, in particular novelty and inventive step.

[9.7] The decision T 2085/10 cited by the [patent proprietor] concerns an ex parte case. On that ground alone the decision differs from the concrete circumstances which led the Board not to take into account the belated requests of the [patent proprietor] in the present case.

[9.8] The further arguments set forth by the [patent proprietor] in its complaints are identical to the arguments it had set forth in the discussion of the admission of the late filed sets of claims. They are discussed in points [2], [3], [7], and [8] of this decision and need not be repeated here.

[9.9] As the [patent proprietor] had an opportunity to file arguments on all questions concerning the admission of its late filed requests before the Board decided on their admission, the Board is of the opinion that its right to be heard has not been violated. Thus the objection under R 106 was dismissed.

The Board also dismissed a request for a referral to the EBA and dismissed the appeal as a whole.

This is one of the cases where I wonder whether the Board did not spend more time justifying its refusal to admit the late-filed requests than it would have needed to discuss the substance of the requests.

Anyway, the message is clear: patent proprietors have to define their fall-back positions as soon as possible in the proceedings. If they are filed only one month before the OPs, they are likely not to be admitted.

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

The file wrapper can be found here.