T 366/11 – Wrong Order

The parties to opposition proceedings often file documents and requests just one month before oral proceedings (OPs), the common time limit set for such submissions. The Opposition Division (OD) has to take great care when deciding on the admissibility of these submissions, as the present decision shows.

The opposition had been filed against the patent as a whole based among others on A 100(a) in combination with A 54 and A 56 in view of inter alia document D1.

In an annex to summons to OPs issued on 2 June 2010, the OD communicated its preliminary opinion that the cited prior art appeared prejudicial to both novelty and inventive step.

Prior to the OPs the opponent, with two letters received on 5 and 9 October 2010 respectively, filed new documents D6 to D9 as further evidence of lack of novelty against the granted claims.

Almost at the same time, with letter received 7 October 2010, the patentee submitted new main and auxiliary requests directed at amendments to the granted claims.

OPs before the OD took place on 8 November 2010. The admissibility of the new documents D6 to D9 and the admissibility of the new requests were discussed. The OD decided not to admit the new documents but to admit the new requests. It subsequently held that the patent could be maintained in amended form according to the main request.

The opponent filed an appeal.

Substantial procedural violation

[3.1] In the case at hand, the appellant-opponent in the lead-up to OPs before the OD filed new documents D6 to D9 in two submissions on 5 and 8 October 2010. Both were filed on or before the deadline for filing submission set in the summons. In the accompanying letters the [opponent] cited these documents in new attacks against the granted claims then on file.

[3.1.1] Almost concurrently the respondent proprietor on 7 October 2010 filed new main and auxiliary requests. Whereas granted claim 1 was directed at a ventilation unit with a fan with cup-shaped central body and connected blades and at least one through window in the annular walls of the central body for channelling out condensate, the new requests added features of an external frame with an annular wall, a central sleeve and connecting ribs, with the annular wall of the fan central body extending from its base wall to the central frame of the sleeve, and of the condensate being channelled out due to centrifugal force when the fan rotates.

[3.1.2] At the OPs, the OD chose to first discuss admissibility of D6 to D9, deciding not to admit them. The division reasoned, see its written decision, reasons 2, first paragraph, that these documents were “prima facie not more relevant than documents D1-D5”. In the following paragraphs it then summarized each document’s contents in relation to the features of granted claim 1, in particular the central features of openings in the annular wall of the fan’s central body. D6 and D7 were not found to have this feature, while D8 and D9 were not seen to relate to a ventilation unit but were in a different technical field. No mention is made of any of the features added to claim 1 of the new main or auxiliary requests. Clearly, the division assessed prima facie relevance of D6 to D9 in relation to the granted claim 1 then still on file.

[3.1.3] Subsequently, it discussed admissibility of the new requests and decided to admit them, as recorded in sections 4 and 5 of the minutes. This would have been unobjectionable but for the fact that the appellant-opponent had expressly stated at the OPs that he was now citing D6 to D9 against the new requests: point 4.1 of the minutes records: “OPP argues that D6-D9 are admissible due to the newly filed main request and auxiliary requests from PRO, where new subject-matter has been introduced into the claims from the description.... “ and again at point 4.5: “OPP repeats that new features were introduced ....”.

[3.1.4] After the new requests had been admitted and the discussion had moved on to inventive step, the appellant opponent made a further attempt to introduce D6 to D9: the minutes duly record at section 9.6 :

“OPP ... also considers that novelty of claim 1 is not fulfilled in view of documents D6 and D9 and requests that this statement is minuted”. The OD denied this attempt stating, point 9.7 of the minutes: “CH reminds the OPP that documents D6-D9 are not part of the file and hence no novelty objections on the basis of D6-D9 had been validly brought in the opposition procedure”.

[3.2] D6 to D9 may thus have been originally cited against the granted claims, it is clear from the above that at the first instance OPs the appellant-opponent decided to cite these documents in response to the new requests, which he had received shortly before the proceedings. He did so in particular as he believed these documents to be more pertinent than those already on file for the features added to claim 1 in the new requests, as is clear from the minutes […].

[3.3] The Board notes that the amendments made to claim 1 in the new main and auxiliary requests are by no means trivial or insignificant. More importantly, the appellant-opponent could not reasonably have foreseen them.

[3.3.1] As stated, the new main and auxiliary requests added new features to claim 1 that pertain to an external frame with annular wall, central sleeve and connecting ribs, the relative position of the fan central body and the external frame, as well as condensate being channelled out due to centrifugal force when the fan rotates.

As indicated in the accompanying letter of 7 October 2010 […] the respondent-proprietor included these features to better distinguish the claimed ventilation unit from that of D1 cited in the opposition grounds. He was reacting to the provisional finding of the OD in […] the annex to the summons […], that the ventilation unit of D1 appeared to fall within the terms of granted claim 1, taking away novelty. The new features were thus intended to establish novelty. They were thus clearly substantial amendments to the claimed subject-matter.

[3.3.2] However, rather than being based on dependent claims, which together with the independent claims define the exclusive rights that are the object of an opposition, they derive from the description. […] As the description is not the main focus of an opposition, and it moreover contains a wealth of detail it is difficult if not impossible for an opponent to foresee amendments deriving from the description.

Nor was there any hint in the annex to the summons of the OD that exactly those parts of the description, or those specific features should play a role in the discussion on novelty vis-à-vis D1. Section 3 […] identifies as central to novelty the question of how to interpret the features in granted claim 1 of the base and annular wall of the fan central body. There is no suggestion, let alone mention, of the external frame or its role in the unit. In conclusion the amendments could not reasonably have been foreseen.

[3.4] Confronted with amendments filed shortly before OPs that were significant and could not reasonably have been foreseen by the opponent, the OD had the discretion to take two possible courses of action. The first was to not admit the amendments, exactly because the opponent could not have reasonably foreseen the amendments, and continue the proceedings on the basis of the claims then on file, namely the granted claims.

It chose not to follow this route but to rather admit the requests. In this case, however, the principles of equal treatment and the right to be heard required that the OD should then afford the appellant opponent a fair opportunity of responding in an appropriate manner to what were objectively speaking, unforeseeable amendments. Here, according to established jurisprudence and best practice as summarized above, an appropriate response could mean adducing new evidence. This indeed is how the opponent responded, when he stated at the OPs that he wished to cite D6 to D9 against the new requests.

[3.5] The appellant opponent cited D6 to D9 in particular because he considered these documents to disclose all or some of the added features. A cursory examination of these documents confirms this view. They are all indisputably concerned with electrically driven cooling fan units.

[3.5.1] Figures 1 and 2 of D6 show a fan 10 with a cup-shaped hub 12 having a base 13 and an annular wall 14 set within an external frame with annular wall 44, central sleeve 52 and connecting ribs 48. The central hub 12 moreover has what appear to be openings 26 where base and walls meet, similar to the placement of the windows 25 in figures 2 and 4 of the contested patent.

That the teaching of D6 might be so deficient as not to be realizable is not immediately apparent to the Board from the cursory inspection necessary to determine whether its citation is an appropriate response.

[3.5.2] D7, see figures 5 and 6, also shows a frame 10 surrounding bladed fan 16.

[3.5.3] The passages of D8 cited by the appellant opponent in the accompanying letter of 9 October 2010, page 1, lines 12 and 13, and figure 1, page 2, lines 69 to 92, 116 and 117 refer to the use of centrifugal force to expel water in a motor that can be used for a fan.

[3.5.4] D9, finally, shows a similar arrangement of an electric motor with surrounding fan unit 10 with airing holes at 10, see also cited passage in column 2, lines 41 and 42.

[3.5.5] Upon cursory inspection the Board thus finds D6 to D9 to be relevant to the added features. It considers their citation to thus constitute an appropriate response to the amendments.

[3.5.6] In this regard it is irrelevant that D6 and D9 had originally been cited against the granted claims and before the appellant opponent could have known of the amendments. Once the amendments had been admitted it was his prerogative under the principle of equal treatment and the right to be heard to adduce evidence of his choice in formulating an appropriate response. That he should choose to rely on the same documents he had belatedly submitted against the granted claims, as these by chance also happened to be relevant to the added features, cannot change this fact.

[3.6] As the appellant-opponent’s citation of D6 to D9 is seen to constitute an appropriate response to substantial amendments to claim 1 that were not reasonably foreseeable, the OD’s final refusal during the discussion of inventive step of the amended claim 1 […] to consider these documents deprived the appellant-opponent of the opportunity to respond in an appropriate manner to the amendments. This refusal severely limited his ability to react to these unforeseeable amendments. In a manner of speaking the appellant-opponent was made to fight with his hands tied behind his back. This violated both the principle of equal treatment of parties and the appellant-opponent’s right to be heard. This violation of fundamental procedural principles is a substantial procedural violation that has seriously flawed the procedure and prejudiced its outcome. It justifies a remittal to the first instance and the reimbursement of the appeal fee, Article 11 RPBA and R 103(1)(a).

[3.7] The Board adds that an OD, naturally, must have some discretion in the way it conducts OPs, this in particular if it wishes to hear the parties on all decisive issues in as efficient a manner as possible. It is therefore not wrong in principle to decide the admissibility of new documents prior to discussing the admissibility of new claims. This would be the case, for example, if new documents are cited exclusively against the claims then on file (say, the granted claims) or, alternatively, if the amendments do not result in significant changes in the claimed subject-matter. In that case admissibility could be decided on the basis of the documents’ prima facie relevance to the claimed subject-matter in accordance with well-established practice. Nor can this approach be faulted if the amendments in question are then subsequently not admitted.

[3.8] In the present case, however, in order to safeguard the appellant-opponent’s rights, once he had cited D6 to D9 also against the proposed substantial amendments the OD should have first discussed the admissibility of the amendments. Only once that issue had been decided, would it have been clear in which context – that of the granted or the amended claims – admissibility of the documents could be discussed. Here the Board notes that documents that have limited relevance to an initial set of claims may acquire new relevance as a result of subsequent amendments to those claims. A document’s relevance is thus not an absolute; (for the purpose of admissibility) it should normally be decided relative to the amended claims against which it is cited.

Further procedure

[4] To expedite the procedure and given the prima facie relevance of D6, D8 and D9 to the amended claims of the main request that the OD admitted into the proceedings and ultimately held allowable, the Board exercises the powers of the first instance under A111(1) and admits these documents into the proceedings. The appellant-opponent no longer requests admission of D7 and this document can be disregarded. Further prosecution of the case should consider all outstanding issues raised by the appellant-opponent in view of the prior art of D6, D8 and D9, in particular novelty and inventive step, as well as any issues that may arise in connection with amendments made.

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