This is a revocation appeal.
When summoning the parties to oral proceedings (OPs), on October 16, 2009, the Opposition Division (OD) expressed its provisional opinion according to which the prior art on file did not destroy the novelty and inventive step of the claim of the opposed patent.
The proprietor informed the OD on December 12, that it would not attend the OPs.
On February 12, 2010, the opponent cited new documents E6 and E7.
The OPs were held on March 4, in the absence of the patent proprietor. At the end, the OD revoked the patent.
The patent proprietor filed an appeal as well as new requests taking into account E6 and E7.
It finally decided not to attend the OPs before the Board.
It finally decided not to attend the OPs before the Board.
The Board found these requests to be inadmissible.
*** Translation of the French original ***
[1.1] Claims 1 of the main request and of auxiliary requests 1 to 3 have been amended by introducing the subject-matter of claims 5, 7, and 8 of the patent as granted (which correspond to original claims 5, 7, and 8). During the appeal proceedings [the patent proprietor] has presented no argument whatsoever in support of the inventiveness of claim 1 of the patent as granted. The [patent proprietor] does not contest that the decision of the first instance to revoke the patent on the ground of lack of inventive step of said claim was correct.
[1.2] In such a case where the patent proprietor requests the Board of appeal to examine new requests, the question arises whether these requests could have been filed in the course of the first instance proceedings, and their admission into the proceedings is within the discretion of the Board of appeal, which is entitled “to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings” (Article 12(4) RPBA).
[1.3] This discretionary power has to be exercised in view of the purpose of appeal proceedings, which are distinct from and independent of the first instance proceedings and aim at delivering a judicial decision on the validity (bien-fondé) of a decision issued beforehand by the first instance department. Thus the appeal gives the losing party the possibility to contest the first instance decision (G 9/91) and aims at removing the “adverse effect” (“grief”) by modifying or setting aside the impugned decision. As a consequence, a party cannot decide to present its case only before the second instance department. This would be tantamount to “forum shopping” and would jeopardize the normal distribution of functions between the first instance departments and the Boards of appeal (cf. T 1067/08 [7.2, 8.1]). Also, a party cannot compel [a Board] to remit the case to the first instance as it likes (T 240/04 [16.1-2]). Filing requests that could have been filed in the course of the first instance proceedings is also contrary to the principle according to which no party may take advantage of its own negligence (nemo auditur turpitudinem propriam allegans – T 1705/07 [8.7])
[1.4] The following particular elements of this case are relevant in this regard:
[1.4.1] E6 and E7 have a publication date before the priority date of the opposed patent and, therefore, belong to the state of the art according to A 54(2). The passages cited by the opponent immediately reveal that the content of these two disclosures had the potential to overturn the provisional opinion of the OD because of the light they shed on the information contained in D1 in regard of the “dual phase” steels, even in case the documents had been cited for the first time during the OPs.
[1.4.2] The amendments of claims 1 consisting in a combination of the independent claim with one or several dependent claims were possible and appropriate during the opposition proceedings. The amendments are not surprising and do not give rise to particular problems. Such amendments can be made during an interruption of 10 to 15 minutes, which is a normal reaction during OPs before the OD.
[1.4.3] Unlike the situation dealt with in decision G 4/92, the [patent proprietor] was aware of the fact that two new documents were introduced by the opponent […] and of its arguments (at least) three days before the date on which the OPs were to be held. Thus, the [patent proprietor] had several options other than the filing of the requests comprising the amendments referred to above and in particular in point [1.4.2], such as:
- requesting [the Board] not to admit the late-filed documents;
- requesting a postponement of the OPs; and
- reconsidering its decision not to attend the OPs.
[1.5] It has chosen none of these options. Even the statement of grounds of appeal did not contain any argument whatsoever related to this lack of reaction. As a matter of fact, the sole argument of the [patent proprietor] was that it believed that the OD should have postponed the OPs in order to allow the patent proprietor to react to the new documents and to their potential effect on the final decision, as three days clearly was much too short a time for preparing OPs in a proper way.
[1.6] However, the question to be answered is not so much whether there is a minimum time limit, nor how much time the [patent proprietor] would have needed for preparing the OPs under consideration, which it did not even intend to attend. As far as the discretionary power of the Board to hold inadmissible requests that have been presented for the first time during the appeal proceedings is concerned, the relevant question is whether the fact that the new requests have not already been examined by the first instance department is not due to the latter (here, the OD) but to the party concerned (here, the [patent proprietor]), whose behaviour has de facto hindered [the OD] from examining those requests (as has been stated in case T 1067/08 [8.1]).
[1.7] As for the OD, it has acted correctly; [the Board] cannot see any procedural violation. Under the circumstances [of the case], the only possible interpretation of the lack of reaction of the [patent proprietor] was that it was aware of [the situation], relied on the submissions that were on file and left it to the OD to decide according to its discretionary power. The [patent proprietor] knew, or should have known, that its passivity made the opponent and the OD understand that it would not contribute any more to the remaining proceedings. Moreover, the fact that it was very easy to check that the late-filed documents were quite suitable for establishing that a “dual-phase steel” as the one of D1 contained aluminium, that the OD had good reason to accept the documents E6 and E7 that had been filed after the time limit fixed pursuant to R 116(1) and to maintain the OPs and that it had no reason to postpone the OPs. Quite to the contrary, as things stood, the public and the parties could expect a decision to be taken without any further delay.
[1.8] As to the admissibility of the new requests filed before the Board of appeal, it clearly follows from the above that it was the sheer passivity of the [patent proprietor] in the presence of new and clearly relevant documents that caused the OD not to take a reasoned decision on the subject-matter of the claims as amended in response to these documents, and that, as a consequence, the Board of appeal is in a position where it either would be the first and last instance to decide, or had to remit the case to the first instance, despite the fact that the [patent proprietor] again did not attend the proceedings. Moreover, a discussion of and a decision on the requests in the appeal proceedings would offer the [patent proprietor] the possibility of remedying an omission for which it is responsible, for its sole benefit and to the detriment of the interest of the [opponent] and the public to have an immediate decision on the case.
[1.9] Consequently, the admission of the requests would be contrary to the purpose of appeal proceedings and the principles that govern it (see [1.2] above). Thus the Board of appeal makes use of its power to hold them inadmissible.
[1.10] As a consequence, there is not text submitted or agreed upon by the patent proprietor within the meaning of A 113(2). […]
The appeal is dismissed.
Should you wish to download the whole decision (in French), just click here.
The file wrapper can be found here.
NB: This case has already been presented on Le blog du droit européen des brevets (here).