In this appeal against the revocation of the opposed patent the Board – as so often – found late filed requests to be inadmissible:
*** Translation of the German original ***
[1.3] In the present case the Opposition Division (OD) had informed the [patent proprietor] before the oral proceedings (OPs) that it agreed with the opinion of the opponent according to which the main request of October 14, 2009, as well as the auxiliary request filed on the same day (and having the same claim 1) was not novel over document D1 […]. The [patent proprietor] then replaced both requests by a new main and auxiliary request […]. The decision of the OD to revoke the patent was taken on the basis of the requests that had been filed during the OPs […].
[1.4] In the course of the OPs the [patent proprietor] could not have any doubt that the main and auxiliary request of October 14, 2009, would be dismissed on the ground of lack of novelty. In this situation it has taken the decision to remove these requests from the proceedings, which has had the effect that the OD did not have to decide on the novelty of the requests of October 14, 2009. The fact that the [patent proprietor] has again filed the main request which it had removed from the proceedings via an intentional procedural act clearly contradicts its earlier behaviour. The Board is of the opinion that there would have to be good reasons for admitting this request of which the opponent could rightly expect that it would not be pursued.
[1.5] In its statement of grounds of appeal, the [patent proprietor] argues that the decision of the OD to revoke the patent was justified by the lack of novelty of the main and auxiliary request of October 14, 2009. This is also what the [patent proprietor] has set forth during the OPs.
[1.6] The Board does not agree. The decision of the OD to revoke the patent is clearly based on the fact that the requests filed during the OPs held on December 15, 2009 as main and auxiliary request violate A 123(2) […]. It is true that the OD explains in the “Reasons for the decision” that the requests of October 14, 2009, lack novelty. However, the Board is of the opinion that these indications are not part of the decision because these requests had been withdrawn and, as a consequence, the OD did not have to decide on these requests. The OD was aware of this because in the impugned decision it refers to the fact that the requests of October 14, 2009, had been withdrawn by the [patent proprietor] and the request that were now on file (nunmehr geltend) and on which the decision is based were the requests that had been filed during the OPs on December 15, 2009 […]. It clearly follows from both the minutes and the impugned decision that the OD has not made an interlocutory decision on the novelty of the main and auxiliary request of October 14, 2009 […].
[1.7] Moreover, the [patent proprietor] argued that the withdrawal of the requests of October 14, 2009, was due to an error. The new requests had been filed in view of the decision of the OD regarding lack of novelty and had to be understood as auxiliary requests. The filing of the new requests did not express the intention to remove the requests of October 14, 2009, from the proceedings. In this context the [patent proprietor] again referred to the fact that there had been a decision of the OD on the novelty of the requests of October 14, 2009, as could be seen from the minutes […].
[1.8] The Board is not persuaded by the arguments of the [patent proprietor].
[1.8.1] First, it has to be noted that, contrary to the opinion of the [patent proprietor], the minutes do not show either that the OD has decided on the requests of October 14, 2009.
[1.8.2] Point 1 of the minutes reflects the requests of the parties. The [patent proprietor] had requested that the patent be maintained in amended form on the basis of one of the requests of October 14, 2009. According to point 2 of the minutes these requests were discussed and the opponent invoked a lack of novelty. Point 3 of the minutes shows that after deliberation the OD has merely indicated to the [patent proprietor] that it agreed with the opponent as far as novelty was concerned. Moreover, it is stated that the [patent proprietor] was given some time to draft new requests.
[1.8.3] Point 4 of the minutes makes clear that the [patent proprietor] has filed new requests in response to this conclusion and that the OD has admitted these requests into the proceedings. The requests are added to the minutes. The [patent proprietor] clearly has labelled them as “main request” and “auxiliary request”. The OD has understood them to be the requests now on file, which is logically consistent.
Under these circumstances the Board cannot see any objectively understandable (objektiv nachvollziehbar) reasons why these requests should have been considered to be additional auxiliary requests, contrary to their clear labelling. Moreover, the [patent proprietor] never requested the minutes to be corrected, nor has it ever pointed out that its filing of the requests on December 15, 2009, had been misinterpreted.
Moreover, the [patent proprietor] was represented by a professional representative, who may be expected to have performed procedural acts (here: the filing of a new main and auxiliary request) that correspond to his intentions and to be fully aware of the consequences of his way of proceeding. The Board is of the opinion that the retrospective argument that this was a mistake cannot justify the admission of the main request into the proceedings.
[1.9] Thus the Board has exercised its discretion by not admitting the main request of the [patent proprietor] into the proceedings.
I would say that in view of Article 12(4) RPBA and the case law of the Boards, it is much wiser to add auxiliary requests and request the OD to take decisions on the preceding requests rather than replacing requests which the OD has stated not to be patentable, but on which it has not taken a formal decision yet. You might be inclined to avoid adverse decisions by withdrawing requests, but this inclination may prove fatal when you arrive before the Board of appeal.
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