T 679/09 – Unintended Consequences

Article 12(4) RPBA strikes again:

[7] Claim 1 of auxiliary request I is, although not literally, identical with claim 1 of auxiliary request III, submitted to the opposition division (OD) on 8 October 2008, in all its technical features and hence its scope. According to the minutes of the oral proceedings (OPs), the patentee (appellant) withdrew auxiliary request III at the OPs before the OD.

[8] In its grounds of appeal, the appellant heavily contested that it had withdrawn auxiliary requests I to IV during opposition proceedings. It stated that

“[T]he representative never withdrew previous ARs I to VI (sic) at this point (or at any other point) in the OPs. The Minutes themselves prove how the OD unilaterally deemed AR1 - AR4 filed at the start of OPs to be withdrawn, without considering or deciding on the issue of prima facie admissibility of those claim requests.”

[9] From the minutes of the OPs it can be seen that the appellant filed a new main request and new auxiliary requests I to IV at the beginning of the proceedings. In the course of these proceedings it replaced the main request filed at the beginning by a further main request, and it replaced auxiliary request I twice by amended auxiliary requests I. According to point 19 of the minutes, the patentee itself withdrew auxiliary requests I to IV when submitting the last version of auxiliary request I. A statement to the same effect is also contained in item 6 of the section «Facts and Submissions» of the decision issued by the OD.

[10] The board notes that the patentee, at the end of the OPs, after the OD had considered the main request and auxiliary request I then on file and had decided to revoke the patent and to close the proceedings, did not protest that the OD had not decided on the admissibility of auxiliary requests I to IV filed at the beginning of the OPs. The board also notes that the patentee never requested a correction of the minutes.

[11] On the basis of the available evidence, the board therefore can only conclude that auxiliary request III was indeed withdrawn during opposition proceedings.

[12] According to Article 12(4) RPBA, the board has the power to hold inadmissible requests which could have been presented in the first instance proceedings. This includes requests which were filed but then withdrawn or abandoned.

One criterion for exercising its discretion is to consider whether the withdrawal of a request has prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board of appeal either to give a first ruling on those issues or to remit the case to the department of first instance (cf. T 495/10 [2.1.2]).

Withdrawal of auxiliary requests I to IV in opposition proceedings had exactly this effect. While the appellant may not have intended to avoid a decision of the OD on the admissibility of inter alia auxiliary request III, this was the inevitable result of its withdrawal (cf. T 495/10 [2.1.7]).

[13] For these reasons, the board, exercising its discretion under Article 12(4) RPBA, decided not to admit auxiliary request I into the proceedings.

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