T 704/11 – Issues Of Complexity

I found this case interesting because of the refusal to admit the patent proprietor’s auxiliary request. One of the arguments of the Board was that the disclaimer raised complex issues involving G 1/03 and G 2/10:

[3.1] The [patent proprietor] submitted this request during oral proceedings (OPs), following the debate concerning the relevance of document D14, as a precaution against a possible adverse decision on novelty. Questioned by the Board, the [patent proprietor] provided no further justification for this course of action.

[3.2] In this respect, the Board remarks that

i) it was known to the [patent proprietor] since the receipt of the statement of the grounds of appeal of 31 May 2011 that the Appellant maintained his novelty objection based on the disclosure of D14, which objection had already been raised during the proceedings before the first instance; and

ii) the [patent proprietor] submitted amended claims (first auxiliary request at issue) with its reply to the statement of the grounds of appeal, which claims were supposed to overcome another objection maintained by the Appellant, i.e. the objection raised under A 123(3), but it refrained from filing amended claims as an attempt to overcome the novelty objection based on D14, also maintained by the Appellant.

Therefore, there is no justification for the filing of an auxiliary request addressing the novelty objection at such a late stage of the proceedings.

[3.3] Moreover, the amendment to claim 1 is not based on any of the dependent claims already considered during the opposition and appeal proceedings till the day of the OPs. Instead, the amendment consists in the insertion of a proviso (a so-called disclaimer) supposed to exclude the only potentially novelty-destroying subject-matter disclosed in example II/composition III of D14.

3.4 Hence, neither the Board nor the Appellant could foresee that the [patent proprietor] would consider proposing this type of amendment for the first time at the OPs before the Board.

[3.5] Furthermore, the insertion into claim 1 of a disclaimer not disclosed as such in the application as filed raises further issues of some complexity. In particular, this type of amendment cannot be considered to clearly comply, at first sight, with all the requirements of the EPC since it has to be evaluated, for example, whether it meets the criteria identified in the Order (points 2.2 and 2.4) of decision G 1/03 and to which extent some of the findings in decision G 2/10 (last two paragraphs of the Reasons) have a bearing on the assessment of the compliance of the proposed amendment with the requirements of A 123(2).

[3.6] Therefore, the Board decided not to admit the second auxiliary request into the proceedings (A 114(2) EPC 1973 and Articles 13(1) and (3) RPBA).

I take this for another indirect confirmation that as a result of G 2/10 we are in quite a difficult situation regarding disclaimers. The discussion of a recent decision (here) has shown that even among people having a keen interest in case law matters we are far from having a common understanding of where we stand. And apparently even some Boards feel that evaluating the bearing of G 2/10 on G 1/03 is not a straightforward task. Let us hope that the Enlarged Board will have an opportunity to dispel the fog in the near future.

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