Tuesday, 5 February 2013

T 162/09 – A Troublesome Screen

This decision on the admissibility of late filed requests reaffirms the principle that sets of claims filed belatedly as auxiliary requests have to converge in order to be admissible.

*** Translation of the German original ***

Auxiliary request 1 of the patent proprietor


[7.1] [Opponents 1 and 2] have objected to the admission of this request because it had been filed for the first time after the summons to oral proceedings (OPs) and was, therefore, filed belatedly. Moreover, it was directed at subject-matter that diverged with respect to the version of the patent as maintained because the last feature of independent claim 1 of the patent as maintained had been deleted and replaced by another aspect that had been submitted for the first time in the proceedings. It also had to be considered to be abusive that the [patent proprietor] had filed a great number of 37 mostly diverging requests (which were still pending in the OPs when the question was debated) in order to explore what the point of view of the Board might be. Such a screen (Schirm) of diverging claim versions at a late stage of the proceedings was inadmissible and in conflict with the requirement of a coherent line of defence. A consequence of claim 1 of the present auxiliary request 1, which belongs to this screen of diverging claim versions, was that the claimed subject-matter was moved in a direction which was not foreseeable and which differed from both the version as granted and the version as maintained, at a very late stage of the appeal proceedings, i.e. only four weeks before the OPs the framework of which had been fixed in the annex sent together with the summons. A “fresh case” had been generated by placing this new subject-matter even before the subject-matter [of the patent] as maintained in the ranking of the requests, which was inadmissible in view of the case law of the Enlarged Board of appeal (EBA), and in particular decisions G 9/91 and G 10/91.

[7.2] In principle it is within the discretionary power of the Board to admit late filed amendments of the requests of a party.

In its established case law the EBA has explained that the main purpose of inter partes appeal proceedings is to give the losing party the opportunity to contest the decision of the Opposition Division (OD) as to its substance (G 9/91 and G 10/91; G 1/94). In this respect appeal proceedings mainly aim at the independent judicial review of the decision as to its correctness, both as to its substance and from the point of view of procedural law. The discretion of the Board and the requirements for a regular conduct of the proceedings by the parties follow from the RPBA, and in particular Article 12 (Basis of proceedings) and Article 13 (Amendment to a party’s case) RPBA. These provisions have the purpose of accelerating the proceedings and express the principle of fairness vis-à-vis the other party or parties.

It follows that the parties to appeal proceedings are subject to certain limits in their conduct of the proceedings. For example, each party has the duty of submitting all facts, evidence, arguments and also requests that are relevant for the prosecution or defence of its rights (Rechtsverfolgung bzw. –verteidigung) as soon and as completely as possible. Thus Article 12(2) RPBA requires a party to set out its complete case when filing the statement of grounds pf appeal.

As a matter of fact, the patent proprietor has filed only one single auxiliary request together with the statement of grounds of appeal, in addition to the [request to maintain] the patent as granted (main request). This auxiliary request was directed at the version of the patent as maintained (now auxiliary request 2). Further fall-back positions were filed only four weeks before the OPs. They were directed at a great number of objects, some of which were divergent (37 auxiliary requests some of which had optional features).

Considering that these documents still had to be sent to the two other parties, the time for preparing for [dealing with] this great number of auxiliary requests in the OPs was even shorter. Thus the submission underlying auxiliary request 1 was late filed.

[7.3] Article 13(1) RPBA lists examples of criteria for exercising the discretion of the Board concerning amendments of the submissions. The criteria to be applied are criteria such as the time of the amendment, its reason, its extent or the difficulty or the complexity of the examination of the amendments as well as the question of allowability of the amended claims (T 942/05 [1.2]; T 81/03 [2.4]) and the general requirements concerning the parties’ conduct of the proceedings that are intrinsic to appeal proceedings. Moreover, it is of particular importance whether the patent proprietor filing more than one request pursues a coherent line of defence and does not, in particular towards the end of the proceedings, file a “screen” of diverging claim versions that creates a procedural situation, both for the other party and for the Board of appeal, where they have to “choose” the set of claims that could prevail among a great number of claim versions. Therefore, it is not only the time at which the requests were filed that matters, but also the “convergence” or “divergence” of the claim versions, i.e. whether they further develop the subject-matter of the independent claim of the main request by progressively limiting it in one direction or in the direction of one inventive idea, respectively, or whether they develop it along various [directions] by incorporating different features.

However, as shown above, this is precisely the situation that the patent proprietor has created by filing 37 auxiliary requests having diverging claim versions, among which the subject-matter of the present auxiliary request 1 is found. This request differs from claim 1 as maintained in that the last feature was deleted and was replaced by the data sent to a printer, which are transformed into a virtual document. However, the latter aspect was taken from the description and claimed for the first time during the appeal proceedings. Thus claim 1 of auxiliary request 1 diverges with respect to the version underlying the impugned decision.

[7.4] The fact that most of the 37 auxiliary requests have been withdrawn by the [patent proprietor] during the OPs cannot alter the fact that before and during the OPs the Board and the other parties were confronted with such a “screen” of diverging and incongruent claim versions, to which the present auxiliary request belongs and that, as a consequence, a confusing and unacceptable situation had been created.

[7.5] According to the established case law of the Boards of appeal, amendments filed together with the statement of grounds of appeal are, as a rule, admitted, at least when the amendments filed do not create a completely fresh case in the appeal proceedings. In T 356/08 [2.1.1] the Board has explained that the decision of the Board of appeal should in principle be taken on the basis of the disputed matter (Streitstoff) of the first instance proceedings. This does not exclude the admission of new requests but makes it dependent on the fulfilment of certain requirements. As a matter of fact, there should not be a completely “fresh case” in appeal proceedings (cf. T 1685/07 [6.4-5]).

As during the OPs the diverging subject-matter of present auxiliary request 1 was placed before the subject-matter [of the patent] as maintained in the ranking of the requests and, consequently, the prosecution of the impugned patent in a direction that diverged from the version as maintained was given priority, the present auxiliary request 1 has created a “fresh case” at a late stage of the proceedings, which [opponents 1 and 2] have rightfully criticized.

[7.6] The Board is not persuaded by the argument of the patent proprietor according to which auxiliary request 1 (which was one of the auxiliary requests filed in response to the summons) had been filed as a reaction to objections that had been raised for the first time in the summons. [Opponents 1 and 2] had made the argument that a pdf file was independent of the system already during the proceedings before the OD. Therefore, this objection could not surprise the patent proprietor at all. Moreover, the patent proprietor cannot justify the late filing of amended claim 1 according to auxiliary request 1 (filed four weeks before the OPs as auxiliary request and made auxiliary request 1 only in the course of the OPs) by an allegedly unexpected situation created by the annex to the summons because, when dealing with the novelty of claim 1 as amended, the Board had adopted a position that was contrary to the position of the OD.

[7.7] In this respect the Board, based on the above explanations and principles, has exercised its discretion and allowed the request of [opponents 1 and 2] not to admit auxiliary request 1 into the proceedings because it had been filed belatedly and because, as a consequence, a “fresh case” had been created during the OPs before the Board.

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The file wrapper can be found here.