T 1232/09 – Only By Reference

In this case the patent proprietor, who appears to have been frightened by recent Article 12(4) RPBA case law, sent the following letter to the Board.

The question arose whether this way of filing requests was alright.

[1.2] Regarding auxiliary requests 1 to 6, the [patent proprietor] declared on 5 August 2011 that these requests filed in the first-instance proceedings were “maintained in the appeal proceedings”.

With this declaration, the board considers that said requests were formally introduced into the appeal proceedings on 5 August 2011. The sole fact that they were submitted only by reference and not in written form cannot be seen as a serious ground for disregarding them during the appeal proceedings.

[1.3] The board therefore decides, in the exercise of its discretion under Articles 13(1) and (3) RPBA, to admit auxiliary requests 1 to 6 […] into the appeal proceedings.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 2097/10 – React!

This is an appeal against the revocation of the opposed patent by the Opposition Division (OD).

Among other things, the patent proprietor complained that it had been deprived of the possibility to file further requests.

The Board did not see things that way:

*** Translation of the German original ***

[2.4] The [patent proprietor] further criticised that the OD had terminated the proceedings although [the patent proprietor] had announced that it intended to file amended claims.

However, [… the OD] can only decide on the admissibility of requests that have actually been filed; it cannot decide on requests the filing of which was announced.

The [patent proprietor] admitted that it had announced further auxiliary requests but had not filed them.

When the OD interrupts the proceedings in order to examine whether it can reach a decision, the parties have to expect that there will be a decision on the requests on file and that, depending on those requests, this decision may be final and, therefore, lead to the proceedings being terminated.

Moreover, the OD would not respect the principle of impartiality – which governs the opposition proceedings, which are inter partes proceedings of a contentious nature – if it offered a party a further opportunity to file requests after it had dealt with all the requests of the party.

If the OD had invited the patent proprietor to file amended requests after it had discussed [the requests on file] and found them to lack inventive step, this would have been tantamount to favouring one of the parties and would have constituted a clear procedural violation.

The [patent proprietor] has submitted that the OD had announced in advance that it would only admit one single auxiliary request. However, this could not hinder the [patent proprietor] from filing another auxiliary request and, therefore, obtaining an appealable decision on the admissibility of this further request.

[2.5] The Board acknowledges that the course of the oral proceedings cannot be considered to have been absolutely fortunate (uneingeschränkt glücklich), but not to the point that the OD could be said to have committed a substantial procedural violation within the meaning of R 103(1)(a).

Thus the request for reimbursement of the appeal fee cannot be granted either.

The Board would like to point out that it would have been desirable to provide more detailed reasons for the impugned decision and in particular, why documents D18 and D19 were found to be relevant and introduced into the proceedings.

Moreover, as inventive step was also questioned along a new line of argument (Angriffsline) (starting from D7), the OD could have been expected to ask the patent proprietor whether, in view of this new factual situation, it wanted to file the announced amendments before the discussion of inventive step. That this has not happened is regrettable but not fundamentally wrong (grundsätzlich fehlerhaft).

In the end it is the parties that bear the responsibility for reacting to a changed factual situation by filing appropriate requests in due time. They cannot transfer this responsibility to the OD by adopting a wait-and-see attitude.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 309/09 – Excessive?

This appeal was against the refusal of an application by the Examining Division (ED).

In its summons to oral proceedings (OPs), the ED fixed the time limit for making written submissions to September 16, 2008.

On September 15, 2008, the applicant filed six auxiliary requests.

The ED told the applicant on the phone that it intended not to admit those requests under R 137(3).

The OPs were held in the absence of the applicant.

The ED found claim 1 of the main request to lack inventive step and refused to admit the auxiliary request. It justified this course of action as follows (English translation):

“a) There are unjustifiably many auxiliary requests and those requests do not converge towards patentable subject-matter. Each auxiliary request differs from the main request by a different feature. The features concern completely different aspects (use of the final device, way in which the data are transmitted, server properties, conditions of reproduction, biometrical measurements).

b) Former objections appear not to have been overcome.

The additional features cannot establish an inventive step. They correspond to details of implementation that are well known to the skilled person and that do not obtain any additional technical effect going beyond their well-known purpose in connection with the other features of the claim.”

The Board won’t have it that way:

*** Translation of the German original ***

[7] The refusal articulates the reasons for the discretionary decision of the ED not to admit auxiliary requests 1 to 6 as follows […]:

There are unjustifiably many auxiliary requests and those requests do not converge towards patentable subject-matter.

Former objections appear not to have been overcome.

[7.1] According to its wording, point (a) presents the number of auxiliary requests and their lack of convergence as two independent reasons. This is also reflected in the summons to OPs […] which presents both reasons – independently from each other – as possible criteria for not admitting auxiliary requests. However, it is also possible that the ED considers the number of auxiliary requests as a single reason in view of the lack of convergence. Both possibilities are treated in the following.

Unjustifiably many auxiliary requests

[7.2] The Board doubts that, as a rule, the number of auxiliary requests is a suitable criterion for a sweeping (pauschal) refusal of requests pursuant to R 137(3). The Board does not want to exclude that in particular cases a great number of auxiliary requests may provide sufficient justification for refusing all of them. However, this question may be left open because in any case [the number of] six auxiliary requests cannot be considered to be excessive just like that (ohne Weiteres). It may also be left open whether in the present case those six auxiliary requests may be considered to be unjustifiably many and whether their lack of convergence is relevant, because the impugned decision does not contain any considerations concerning the particular cases which could support this conclusion.

Lack of convergence of the auxiliary requests

[7.3] The Board agrees with the appellant that “there is no provision in the EPC according to which auxiliary requests may not cover entirely different aspects”.

However, the Board is of the opinion that under particular circumstances it may be justified to take into consideration, when exercising discretion as to whether admit an auxiliary request, weighting the interests of the applicant and the EPO […], whether its subject-matter converges with the subject-matter of previous requests or requests of higher rank. Whether there are such circumstances or not has to be examined in each particular case and reasons have to be given, R 111(2).

It may be left open whether there are such particular circumstances in the present case, for instance in view of the fact that the auxiliary requests were filed within the time limit fixed pursuant to R 116 and that the independent claims of at least some of the auxiliary requests (1, 2, and 4) are supported by dependent claims as originally filed.

This is because a criterion of convergence has to be examined separately for each individual request. In the present case, the independent claims of all auxiliary requests are limited with respect to the independent claims of the main request. The independent claims of the main request had been amended only once in the preceding examining proceedings, in response to an objection of [lack of] clarity by the ED […]. Thus, at least the first auxiliary request is convergent with the main request and the convergence criterion cannot possibly justify the refusal to admit the first auxiliary request.

Former objections not overcome

[7.4.1] There have been objections of lack of novelty and lack of inventive step, respectively, against the independent claims. Moreover, there have been objections of [lack of] clarity against some of the dependent claims […]. However, the ED appears to have dropped the latter in view of the amended claims […]. In any case the summons to OPs of April 23, 2008, does not contain any objection of [lack of] clarity.

[7.4.2] Regarding the novelty and inventive step of the dependent claims, the written statements of the ED are limited to cursory objections […] as well as sweeping references to prior art documents […]. These explanations cannot be considered to be reasoned objections within the meaning of R 111(2).

[7.4.3] The independent claims of all auxiliary requests are limited with respect to the independent claims of the main request: in auxiliary requests 1, 2, and 4, features taken from former dependent claims have been added; in auxiliary requests 5 and 6 features taken from the description have been added; and in auxiliary request 3 one previously claimed alternative has been deleted. In view of these amendments, the appellant could expect to have overcome the objections of lack of novelty and inventive step, or at least to have appropriately responded to the reasons given in writing. Therefore, the Board agrees with the appellant that the sweeping reference to “former objections” that had not been overcome does not allow to understand which former objections were meant.

[8] Summing up, the Board comes to the conclusion that, in the absence of the appellant, the ED indeed was entitled to exercise its discretion and that in principle it has exercised its discretion according to correct criteria within the meaning of G 7/93, but that it has not provided sufficient reasons in the impugned decision, which is contrary to R 111(2). Even a lack of reasons is a substantial procedural violation justifying a remittal to the first instance in application of Article 11 RPBA and a reimbursement of the appeal fee for the sake of equity, R 103(1)(a).

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 1679/09 – When One Becomes Two

Recently, a reader enquired on case law concerning R 80. Well, here is a recent decision dealing with a multiplication of independent claims in the course of opposition proceedings.

One landmark decision on this topic was T 223/97 [2.2], where Board 3.2.1 stated (my translation of the French original):

“According to a principle set forth in decision G 1/84 [9] opposition proceedings are not to be considered an extension of the examination proceedings and is not to be misused as such. This means that only the independent claims challenged in the opposition may be amended, provided that this amendment is a response to the grounds for opposition invoked, in particular lack of patentability, and also satisfied the requirements of the EPC and in particular the double requirement expressed in paragraphs 2 and 3 of A 123. It is clear that the addition of two new independent claims cannot be admissible because this addition, which does not have any effect on the fate of claim 1 that has been challenged, cannot be considered to be a limitation of claim 1 itself in response to a ground for opposition that has been invoked against it.

If claim 1, as here, covers two particular embodiments, the patent proprietor may as a response to the lack of patentability, limit [the patent] to those two embodiments and, consequently, file two independent claims each of which protects one of those two embodiments. If, as in the auxiliary request, the main claim that has been challenged is deleted, the two new independent claims replacing it constitute a limitation of this main claim because only two particular embodiments are still protected. As a consequence, these claims are admissible provided that they satisfy the double condition of A 123(2) and (3).

However, if, as in the main request, the main claim, which already covers the two particular embodiments is essentially maintained in its entirety, the introduction of these two new requests (3 and 4) violates the well-established principle mentioned above, because then the addition of those two new claims cannot be considered to be a limitation of the main claim itself in response to the ground for opposition, i.e. the lack of patentability invoked against it.

Moreover, the requirement of concision of the claims pursuant to A 84 [EPC 1973] pleads against the introduction of superfluous new claims that do not improve the fate of the European patent under consideration. Therefore, [the Board] has to conclude that the independent claims 3 and 4 that have been introduced in the course of the opposition proceedings are not admissible.” (my emphasis)

In the present case, both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

Claim 1 of the main request (identical to the set of claims as granted) read (in English translation):

A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), characterized in that the rotor of the synchronous motor (03) has poles comprising permanent magnets.

Auxiliary requests I, Ia and Ib each had two independent claims:

1. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein a receiving unit (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two pairs of receiving units (05; 06; 16) are arranged so that each receives one material reel (02) or a scrap reel, wherein each receiving unit (05; 06; 16) of the reel changer has its own actuator (21) for adjusting the receiving units (05; 06; 16) in the axial direction of the material reel (02), wherein the actuators (21) are movable together with the receiving units (05; 06; 16).

2. A reel changer for a web-fed rotary printing press with a drive with at least one electric motor (03) by which a material reel (02), which is held on a receiving unit (06) in the reel changer (01) and onto which the material web is wound, is capable of being driven in a rotating manner, wherein the electric motor (03) is embodied as a synchronous motor (03), wherein the rotor of the synchronous motor (03) has poles comprising permanent magnets, wherein a receiving units (05; 06; 16) engages with each end of the two ends of the material reel (02), wherein two receiving units (05; 06; 16) are arranged for bearing the material reel (02), wherein both receiving units (05; 06; 16) are rotatably supported and wherein only one of the two receiving units (05; 16) is driven by the electric motor (03), wherein the receiving units (06; 16) have structurally identical bearings.

The Board found the main request to lack inventive step and then dealt with auxiliary requests I, Ia and Ib. Here is what the Board had to say on their compliance with R 80:

*** Translation of the German original ***

[4.1] The OD did not admit auxiliary request I inter alia based on R 80 because the addition of the second independent claim 2 was not required to overcome an objection under A 100 (a). This was only admissible in exceptional cases. The OD also argued that its reasoning was supported by decisions T 610/95 and T 181/02.

[4.2] The Board cannot adopt this point of view, for the following reasons:

R 80 essentially provides that the description, claims and drawings of the European patent may be amended, provided that the amendments are occasioned by a ground for opposition under A 100, even if that ground has not been invoked by the opponent.

In the present case the single independent claim of the patent as granted was considered to lack novelty. During the opposition proceedings [the patent proprietor] has filed two independent claims limited to different subject-matter, wherein the independent claim as granted was limited by adding the features of dependent claims as granted (claims 36, 47, 53 and 54, and claims 36, 37 and 40, respectively). The Board is of the opinion that the [patent proprietor] was right in pointing out that under these circumstances such an amendment complies with the requirements of R 80.

[4.3] Decision T 181/02, which has been cited by the OD, discusses a situation that can be compared to the present case. There also the competent Board came to the conclusion that the replacement of a single independent claim by two or more dependent claims may be caused by a ground for opposition, e.g. when two dependent claims as granted were inked in parallel to a single independent claim. Then the filing of two independent claims might be possible.

Decision T 610/95, which has also been cited in the impugned decision, concerns the situation where the patent proprietor keeps the single independent claim which has been attacked in the opposition proceedings and adds a second independent claim, which was considered to be inadmissible in view of R 57a EPC 1973 (now R 80). However, as the present factual situation is different, decision T 610/95 is not suitable for justifying the dismissal of auxiliary request I based on R 80.

Even considering said decisions the Board is of the opinion that auxiliary request I complies with the requirements of R 80. For the same reason, auxiliary requests Ia and Ib also comply with the requirements of R 80.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


NB: Another interesting decision in this context is T 642/06 [4.2], where Board 3.2.03 said (again, my translation of the French original):

“Moreover, the set of claims filed comprises not one single independent claim by three such claims, i.e. new claims 1, 10, and 15, which are based on the combinations of claims 1 and 6, claims 1 and 10 and claims 1 and 3 as granted. However, dependent claims 3, 6 and 10 as granted are neither parallel nor exclusively dependent on claim 1. Quite obviously, as their subject-matter is not directed at alternative or equivalent developments of a single concept or embodiment (see Case Law, 5th edition, 2006, VII.C.6.1.3 and T 181/02), they cannot correspond to the only exception where the case law allows the filing of supplementary independent claims during opposition or opposition appeal proceedings. The amendments included in the set of claims according to the first auxiliary request go beyond the amendments that are necessary for overcoming the grounds for opposition (in particular, A 56) and, therefore, violate R 80.” (my emphasis)

T 382/10 – The Last Word

The applicant filed an appeal after the Examining Division (ED) had refused his application.

The relevant facts of the first instance proceedings are as follows:

In reaction to a summons to oral proceedings (OPs) before the ED, the applicant filed a main request and two auxiliary requests, and commented on the objections of lack of inventive step.

During the OPs, an objection under A 123(2) was raised against all pending requests. The ED invited the applicant to file a new request.

The applicant inserted a new “first auxiliary request” but maintained the other requests.

The ED was satisfied that the first auxiliary request overcame the objections. A substantive examination of inventive step followed. At the end of the discussion of inventive step of claim 1 according to the first auxiliary request, the ED interrupted the OPs in order to deliberate. According to the minutes of the OPs, the chairman announced “that a decision on the four requests on file will likely be taken after the break”. After the break, the chairman announced the decision that the application was refused according to A 97(2).

The Board found the ED to have committed a substantial procedural violation:

[2.1] In the statement setting out the grounds of appeal […], the appellant argued that the statement in the minutes that the chairman of the ED announced that a decision on the four requests on file would likely be taken after the break “cannot be confirmed by the representative as it was not heard”. However, the appellant did not question the correctness of the minutes after they were sent to the party and before the appeal proceedings. The correctness of the minutes is therefore not formally in doubt and the board has to consider the minutes as correctly reflecting the course of the OPs (see R 11/08 [16]).

[2.2] In the statement setting out the grounds of appeal […], the appellant went on to argue that such a statement “could not have been expected to be made at this time”. The appellant stressed that apart from the introducing remark that all requests had the same problem with A 123(2), an objection under A 123(2) had been discussed only with regard to the main request, however not with regard to the rest of the pending auxiliary requests, i.e. after filing a new first auxiliary request during OPs the second and third auxiliary requests. This could not be considered to be a full discussion of all subsequent requests. The board notes that the discussion of the objection under A 123(2) is reported in the minutes […]. In particular […] reference is made to “the three requests” or “the first auxiliary request”. Therefore, the board is not convinced that the objection under A 123(2) was not discussed with respect to the first and second auxiliary requests.

[2.3] From the written decision […] it is understood that the main request, the second auxiliary request and the third auxiliary request were considered not to fulfil the requirements of A 123(2), whereas the first auxiliary request was considered to fulfil the requirements of A 123(2) but not those of A 56 EPC 1973. This clearly shows that the applicant’s amendments made during OPs did overcome the objection raised at the beginning of the OPs by the chairman.

[2.4] Any party has to be prepared that a new objection may be raised by the ED during OPs in reaction to amendments to the claims made by the applicant in reaction to the summons for OPs. The ED should give the party adequate opportunities to react to such a new objection during the course of the OPs. In fact, the ED did so when it announced that it would exercise its discretion under R 137(3) to consent to the filing of a new request if the representative wished to do so […].

In reaction to this statement, the applicant filed an amended request, which was introduced into the proceedings as first auxiliary request. Since the amendments were considered to overcome the objections under A 123(2) with respect to the main request, compliance with the provisions of A 56 EPC 1973 was discussed. At the end of the discussion the ED announced that a decision on the four requests might be taken. After deliberation it announced the final decision. This implies that the ED considered the four requests to be the final requests.

[2.5] The appellant in the statement setting out the grounds of appeal said that these four requests were not its final requests and pointed out that “before the last break, the ED did not ask the usual question whether the Applicant has any further submission or request, but did then immediately refuse the application at a time where this could not have been expected.”

[2.6] The board considers it to be common practice that a party being confronted with a new objection which is raised with respect to several requests during OPs first tries to overcome this objection by dealing with a single request only (here the main request). This is a sensible approach in the light of procedural economy and avoids filing multiple versions of all requests during OPs. Thus, the board judges that the appellant did not consider the second and third requests as final requests. On the other hand, the minutes fail to provide an indication that the final requests had been established before the ED deliberated and made the final decision.

[2.7] A 113(2) EPC 1973 requires the EPO to examine an application only in the text which the applicant has submitted or approved. In cases in which a request of a party is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation (see decision of the Enlarged Board of Appeal R 14/10 [6.1]). To avoid any misunderstanding, in particular when requests are amended during OPs, the ED should clarify the final requests before pronouncing its decision at the conclusion of OPs. In accordance with prevailing case law, (see e.g. T 666/90, T 552/97 and T 1439/05), the fact that the final requests were not established contravenes the provisions of Article 113(2) EPC and is considered a substantial procedural violation.

[3] The substantial procedural violation requires that the decision under appeal be set aside and justifies the reimbursement of the appeal fee according to R 67 EPC 1973 (applicable here, see J 10/07 [7]).

Pursuant to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise. The board is not aware of such special reasons in the present case. With the appeal proceedings, all requests have been amended except for the fourth auxiliary request which corresponds to the former first auxiliary request before the first instance. The other present requests have been amended in different ways such that each of them comprises combinations of amended features which have not yet been examined by the department of first instance. Since the board is bound by the order of the requests submitted by the appellant, and the first instance has not carried out a complete examination of the requirement of an inventive step for the subject-matter of the second and the third auxiliary requests, which are the basis for the present second and the third auxiliary requests, the board is exercising its discretion under A 111(1) EPC 1973 to remit the case so that a decision not vitiated by substantial procedural violations can be made by the first instance and so that the appellant does not lose an instance before the EPO.

The appellant requested grant of a patent on the basis of the main request or the auxiliary requests. However, as stated in decisions T 42/90 [5] of the reasons and T 315/92 [5] of the reasons, the decision to remit the case to the first instance is not to be considered as being adverse in substance to that party, so that no OPs before the board need to be appointed. With the remittal to the first instance for further prosecution, the party still has the possibility of appealing against the final decision on the substance, possibly with OPs.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1634/06 – Improve Your Figure

Auxiliary requests normally consist of amended claims. The present case is noteworthy because there were auxiliary requests that consisted in amendments to the drawings.

Here the applicant appealed against the decision of the Examining Division to refuse its application for lack of inventive step. 

Claim 1 before the Board read:

A method for use in an interactive television program guide implemented on user television equipment (22) for displaying programs and associated program data, the method characterised by:

storing on a digital storage device programs and program data that is associated with the programs using the interactive television program guide; maintaining on the digital storage device a directory of the program data for the stored programs using the interactive television program guide, and

providing to the user a list of selectable options, wherein a first selectable option is provided for allowing the user to access information for at least one broadcast television program and at least one recorded program stored on the digital storage device, and wherein a second selectable option is provided for allowing the user to access a list of currently stored programs from the directory.

During the appeal proceedings, on January 26, 2007, the applicant filed a new figure 5b

to replace figure 5b then on file:

In an annex to the summons to oral proceedings (OPs), the Board indicated that the new figure might be objectionable under A 123(2). The applicant then filed claims according to a new main request, a new figure 5b (“Auxiliary request #1”) and figure 5b as originally filed (“Auxiliary request #2”).

During the OPs, the applicant filed claims 1 to 8 and withdrew all previous requests. Its final requests were that the decision under appeal be set aside and a patent granted on the basis of claims 1 to 8 filed in the OPs before the board with the description and drawings on which the decision under appeal was based, except for figure 5b, which according to the main request should be that filed with the letter dated January 26, 2007. As a first auxiliary request only figure 5b of the main request should be replaced by figure 5b filed as “Auxiliary Request #1” with the letter dated 4 February 2011. As a second auxiliary request only figure 5b of the main request should be replaced by figure 5b as originally filed.

The Board found the main request to lack inventive step. When coming to this conclusion, the Board made an interesting statement on converging fields of technology:

[2.1.2] [T]he invention concerns both television technology - in particular television program guides which allow digital storage of information - and computer and computer-interface technology. In this context the board takes the view that it was well known, before the priority date of the present application, that these two areas of technology were converging. Therefore, the common general knowledge of a person skilled in the art of television program guides included common general knowledge of computers and computer interfaces in so far as it related to television technology and television program guides.

This is indeed a (novel ?) alternative to construing teams of skilled persons.

The Board also made the following comments on the auxiliary requests:

[3.1] The interpretation of claim 1 is not dependent on the content of the respective version of figure 5b. In the present case, the different presentation of the program listings grid does not change the meaning of the selectable options as claimed and is merely a matter of allowability of the respective amendment made. Hence the above analysis concerning inventive step is not dependent on the particular version of figure 5b which is part of the documents forming the basis on which grant of a patent is requested. This has also been acknowledged by the appellant. From this it follows that the first and second auxiliary requests are not allowable because of lack of inventive step of the claimed subject-matter.

[3.2] Under these circumstances there is no need for a decision on whether the inclusion of figure 5b according to the main request and the first auxiliary request respectively meets the requirements of A 123(2).

To read the whole decision, click here. The file wrapper can be found here.

T 5/08 – Locked Out

The appeal was against the decision of the Opposition Division (OD) to revoke the opposed patent. The Board found the main request on file not to comply with A 123(2) because the disclaimer inserted by the patent proprietor was not large enough and, therefore, did not fulfil the conditions fixed by G 1/03.

The Board then deals with the admissibility of the auxiliary request that was filed during the oral proceedings (OPs), after several versions had been filed and withdrawn.

[11] Articles 12(2),(4) and 13(1) RPBA are relevant for assessing the admissibility of the auxiliary request. Article 12(2) RPBA requires the statement of grounds of appeal to contain the appellant’s complete case. Article 13(1) RPBA leaves to the board’s discretion to consider and admit any amendment to a party’s case after it has filed its grounds of appeal or a reply thereto. In the exercise of its discretion, account is to be taken of inter alia the current state of the proceedings. Article 12(4) RPBA refers to the power of the board to hold inadmissible requests which could have been presented in the first instance proceedings.

[12] The subject-matter of the auxiliary request at issue is directed to a pair of oligonucleotides consisting of a first and a second oligonucleotide consisting, respectively, of the sequences SEQ ID NO: 1 and 5 […]. The combination of this pair of oligonucleotides is disclosed in the patent-in-suit and in the application as filed as “a most preferred pair of oligonucleotides according to the invention” […] and, accordingly, it is the subject-matter of a dependent claim in the claims as granted (claim 3) and in the original claims of the application as filed (claim 5). However, both in the patent-in-suit and in the application as filed, the pair of oligonucleotides is not directed to the very specific oligonucleotides of sequences SEQ ID NO: 1 and 5 but to general sequences having a total length of 10-50 nucleotides (original and granted claims) - or 10-26 nucleotides (granted claims) - and comprising a fragment of at least 10 nucleotides of these SEQ ID NO: 1 and 5 (original and granted claims).

[13] A similar subject-matter is also found in the requests dealt with at the OPs before the first instance and decided upon by the OD as well as in several of the claim requests filed by the [patent proprietor] with its statement of grounds of appeal. However, none of these requests - either in the opposition or in the appeal proceedings - contemplated a pair of oligonucleotides with the first and second oligonucleotides restricted to the very specific oligonucleotides of sequences SEQ ID NO: 1 and 5, respectively. This is all the more surprising since the experimental reports filed by the [patent proprietor] in the opposition proceedings and with its statement of grounds of appeal contained data derived from such a specific pair of oligonucleotides.

[14] Thus, even though the objection of lack of inventive step put forward by the OD in the decision under appeal was mainly based on the scope of the claims, in the words of the OD

“ … it is even reasonable to assume that not all the primer pairs … are effective in amplifying HIV. Hence, the problem is not solved over the whole claimed range and consequently the claim is not inventive over the whole claimed scope …” (underlining added by the board), the [patent proprietor] chose not to file a request specifically directed, and limited to, a pair of oligonucleotides as that claimed in the present auxiliary request which was characterized, both in the patent-in-suit and in the application as filed, as a preferred embodiment of the invention. Nor was such a request filed in the [patent proprietor’s] reply to the board’s communication pursuant to Article 15(1) RPBA, even though the pair of oligonucleotides of sequences SEQ ID NO: 1 and 5 was identified in that communication (albeit in the context of A 123(2),(3)) and the issue concerning the scope of the claims was also mentioned therein […].

[15] It was only at the beginning of the OPs before the board that the [patent proprietor] filed - as its second auxiliary request - a request which intended to limit the claimed subject-matter to the specific pair of oligonucleotides consisting of a first and a second oligonucleotide of the sequences SEQ ID NO: 1 and 5, respectively. However, this auxiliary request presented several deficiencies which required the [patent proprietor] to necessarily introduce further amendments and modifications.

In all, five different versions of the auxiliary request were submitted at the OPs before the board, each time replacing the previously submitted version. Except for the last version, all other versions of the auxiliary request were withdrawn before the board decided on their admissibility […]

[16] There is no doubt that the auxiliary request is a very late filed request. No convincing reasons have been provided by the [patent proprietor] to justify its filing at this very late stage of the proceedings. Indeed and in view of the above mentioned facts, the board considers that such a request limited to a preferred embodiment of the invention could well have been filed at an earlier stage of the appeal or the opposition proceedings, either with the [patent proprietor’s] statement of grounds of appeal - so as to have a complete case as required by Article 12(2) RPBA, in reply to the board’s communication pursuant to Article 15(1) RPBA, or even at first instance in order to overcome the objection of the opposition division regarding the breadth of the claims (Article 12(4) RPBA). The [patent proprietor’s] choice not to file such a request deprived the respondents of the opportunity for preparing and presenting their case appropriately and it certainly did not contribute to the procedural economy of the present case.

[17] This situation is further aggravated by the fact that the present auxiliary request, as such, has not been directly put forward by the [patent proprietor] itself but it is the final result of a lengthy discussion between the respondents, the [patent proprietor] and the board that took place at the OPs and occasioned the introduction of several amendments, modifications and changes, in several different versions of a first filed auxiliary request […]. This chain of events is not in line with the function of an appeal proceedings as established in the case law of the Boards of Appeal, namely to give a judicial decision upon the correctness of a separate earlier decision taken by a department of the EPO (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1, page 821).

As repeatedly stated in the case law, it is not the purpose of an appeal proceedings to give the patent proprietor the opportunity to recast its claims as it sees fit and to have all its requests admitted into the appeal proceedings - a principle mirrored in Articles 12(4) and 13 RPBA (cf. inter alia decision T 361/08 [14]).

[18] As for the [patent proprietor’s] argument that the auxiliary request represents the [patent proprietor’s] last chance to save the patent […], the board considers this argument inappropriate to justify, in the present case, the very late filing of the auxiliary request and the complete chain of events or the history of its prosecution as cited above. It has also been clearly established by the Boards of Appeal that there is no absolute right for a patentee to such a last chance. On the contrary, the admissibility of a late filed request is always a matter of the board’s discretion (cf. inter alia T 446/00 [3.3]).

Although not part of the present appeal proceedings, the fact that a divisional application is still pending before the first instance speaks also against the [patent proprietor’s] argument (cf. “Case Law”, 6th edition 2010, VII.E.16.5.5, page 903).

[19] In view of the complete chain of events cited above and the particular circumstances of the present case, it is the board’s conviction that not even the principle of procedural economy can assist the [patent proprietor’s] request to have its late filed auxiliary request admitted into the appeal proceedings.

First, the [patent proprietor’s] auxiliary request is not clearly and directly allowable but requires further examination as to the substantive requirements of the EPC, at least for those of A 56.

Second, the conduct of the [patent proprietor] during the OPs, in particular the filing, modification and replacement of a fairly large number of auxiliary requests in a short time, is not seen as being in accordance with a party’s obligation to take care not to act in a manner detrimental to the efficient conduct of OPs (cf. “Case Law”, 6th edition 2010, VII.E.16.5.4, page 902). This is all the more important specially in those cases, as in the present one, in which a decision taken by the board in appeal proceedings might be of relevance for pending divisional applications and for possible subsequent litigations before national courts. In these cases, the respondents should be given at least an opportunity to prepare and present their case appropriately. This was not so in the present case. Reasons of procedural economy cannot, in principle, override the actual purpose of an appeal proceedings or excuse [a patent proprietor] from complying with the basic requirements of these proceedings, such as an early filing of amendments and an efficient conduct at OPs.

[20] In view of the foregoing considerations, the state of the appeal proceedings and the complete prosecution history of the present auxiliary request, the board, in the exercise of its discretion under Article 13(1) RPBA, decides not to admit the auxiliary request into the appeal proceedings.

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T 837/07 – One Last Chance?

The main request and the first and second auxiliary requests on file having been found to contravene A 123(3), A 84 and A 123(2), respectively, the Board has to deal with the request to adjourn the oral proceedings (OPs) in order to give the patent proprietor the possibility of drafting and submitting a further auxiliary request. In case you had doubts – this request is not successful:

[12] Article 12(2) of the Rules of Procedure of the Boards of Appeal (RPBA) requires the statement of grounds of appeal to contain a party’s complete case. Article 13 RPBA, which deals with the amendments to a party’s case, states in paragraph (1) that

“any amendment to a party’s case after it has filed its grounds of appeal ... may be admitted and considered at the Board’s discretion” and that this discretion “shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.”

[13] The objections of lack of clarity of the subject-matter of claim 1 of the first auxiliary request were already raised and discussed in detail at the OPs before the first instance […]. Although, in contrast to the board […], these objections were considered not to arise from the amendments made during the opposition proceedings and they were not decided upon by the opposition division (OD) […], they were nevertheless on file and part of the proceedings - as shown by their presence in [the opponent’s] statement of grounds of appeal, even though admittedly under other EPC articles […]. However, none of the claim requests filed by [the patent proprietor] - in its grounds of appeal or in its reply to those of [the opponent] - took into account these objections.

[14] It was only after the board’s communication issued under Article 15(1) RPBA in which the parties’ attention was drawn again to these objections […], that [the patent proprietor] filed - one month before the date scheduled for the oral appeal proceedings - a second auxiliary request specifically addressing them and maintaining a first auxiliary request that clearly did not address any of these objections […].

[15] It derives directly from the review nature and the judicial character of the appeal proceedings (cf. “Case Law”, supra, VII.E.1, page 821), that claim requests filed at the OPs in appeal before the board are to be considered in principle as late-filed requests and, as a result thereof, their admissibility into the appeal proceedings is to be fully justified before the board can examine them and decide thereupon. In the present case and in view of the facts mentioned […] above, the board considers that, at this stage of the proceedings and in the light of the amendments introduced into [the patent proprietor’s] second auxiliary request […], the introduction of a new auxiliary request into the appeal proceedings with the sole purpose to overcome the very same formal objections which allegedly were already addressed by that second auxiliary request, cannot be justified.

[16] According to [the patent proprietor], it is established case law of the Boards of Appeal that the patentee should always be given a “last chance” to save its patent […]. It has been thoroughly discussed and clearly established by the Boards of Appeal that there is no absolute right for a patentee to such a “last chance” request. On the contrary, the admissibility of a late filed request is always a matter of the board’s discretion. Moreover, as stated inter alia in decision T 446/00 [3.3], the concept of a “last chance” suggests one last chance at the end of the proceedings and not multiple “last chances” on numerous occasions during the course of the appeal.

In the present case, the possible admission into appeal proceedings of a new auxiliary request could hardly be seen as the patentee’s “last chance” since that new request would only be filed to overcome formal issues discussed at length and in detail during both opposition and appeal proceedings but it would still leave completely open to discussion substantive issues on novelty and inventive step raised during these proceedings […].

[17] Thus, the board comes to the conclusion that [the patent proprietor’s] request for an adjournment of the OPs in order to draft and submit a set of claims as a further auxiliary request is, at this stage of the proceedings and after consideration of all the above facts, not allowable and cannot be granted. […]

The patent is revoked.

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T 299/08 – Bad Tactics

** Translation from the German **

[1] When issuing the summons for oral proceedings (OPs) on February 10, 2010, the Board has presented its provisional opinion in the present case and given a time limit of two months for filing statements. The [patent proprietor] has not taken advantage of this time limit although it had to be aware that the maintenance of its patent was in danger. It rather presented an auxiliary request for the first time during the OPs, without any plausible explanation for the belatedness.

The only argument of the [patent proprietor] was that the amendment was very simple and easily comprehensible, consisting in the mere introduction of features of a hitherto dependent claim into the main claim.

It is precisely because of the simplicity of the amendment that the [patent proprietor] could and should have filed the auxiliary request within the time limit set by the Board for responding to its notification of February 10, 2010. Therefore, the filing of the auxiliary request during the OPs is tantamount to tactical behaviour aiming at surprising the [opponent] with new facts and arguments.

The Board considers such a way of proceeding to be procedurally abusive (verfahrensmissbräuchlich). Therefore, the auxiliary request is not to be taken into account.

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R 16/09 – Substance Does Not Always Come First

This petition for review was filed by the patent proprietor after its patent had been revoked in decision T 764/06. The proprietor was upset by the decision of the Board not to admit any auxiliary requests during the oral proceedings (OPs), a decision taken before the proprietor could explain the subject-matter of the auxiliary requests.

The petitioner based its petition on two alleged defects: a violation of the right to be heard (A 112a(2) (c) and A 113) and a violation of the principle of impartiality, A 112a(2)(d) and R 104. We will deal only with the first defect today and leave the impartiality argument for a subsequent post.

[2.1] […] In its oral submissions the petitioner fastened on the fact that it had been heard only on admissibility issues in general and not on the subject-matter of the proposed auxiliary request, and could not comment on the substance; this amounted, in its view, to a violation of its right to be heard. In addition, the fact that the Board of Appeal had refused the filing of auxiliary requests without knowing the subject-matter thereof amounted to an abuse or a misuse of discretion and also to a breach of the principle of impartiality because in such circumstances it was general case law of the Boards of Appeal to admit new requests.

The right to be heard

[2.2] The petitioner focused on the allegation that the Board of Appeal misused its discretion because it decided in general without a proper set of claims in hand, leaving the petitioner no opportunity to comment on the subject-matter. In other words, if the Board of Appeal had let the petitioner expand on the technical issues of a precise set of claims, it would at least have stood a chance.

[2.2.1] Considering the facts […], the petitioner had been aware of the new challenge under A 100(c) raised by the opponent II in the grounds of appeal three years prior -to the oral proceedings (OPs) before the Board of Appeal. It had objected in its written submissions of 5 March 2007 and 29 December 2008, to the admissibility of this objection and also replied concerning its merits […]. The petitioner chose not to file an auxiliary request because it was sure that this new attack under A 123(2) was scientifically hopeless, as it argued during the OPs before the Enlarged Board (EBA) and had contended in its written submissions in appeal […].

It is thus important to note that it was only during the closing stages of OPs before the Board of Appeal, when it became clear that its main and sole request would not be allowed, that the petitioner started to express its intention to present an auxiliary request, and this evidently in the absence of a prepared set of claims in text form. Consequently the request of the patent proprietor is to be understood as a request for authorisation to file at least a set of claims as an auxiliary request.

Under these circumstances, where there had been opportunities to file auxiliary requests far earlier […], the Board of Appeal dealt with this last minute attempt by the petitioner to change the course of events, as an announced amendment to the case pursuant to Article 13 RPBA. This article leaves to the discretion of the Board of Appeal the question of the admissibility of amendments to a case.

[2.2.4] Article 13 RPBA makes a distinction between any amendment to a party’s case made after the filing of the grounds of appeal or the reply (Article 13(1)), and amendments sought to be made after OPs have been arranged (Article 13(3)). This article furthermore gives in paragraph (1) examples of criteria to be taken into consideration by the Board of Appeal when exercising its discretion: complexity of the new subject-matter, current state of the file and the need for procedural economy. In compliance with the wording of Article 13(1) RPBA which refers to the criteria as “inter alia” the boards of appeal have applied these criteria in different combinations depending on the circumstances of the case, considering them as exemplary and not cumulative. Therefore in the EBA’s view a situation may arise where the importance of one of them may outweigh the others.

[2.2.5] The question to be decided with respect to the alleged violation of the right to be heard, is whether the Board of Appeal decided not to admit auxiliary requests without giving the petitioner the opportunity to comment on the issues on which it based its decision.

[2.2.6] According to the petitioner, there was a debate about the forma1 admissibility of new requests; as it appears from its written submissions and as acknowledged during the OPs before the EBA, it was not limited in its pleading for the admissibility of auxiliary requests. It could explain the reasons why it intended to file this request, in particular the absence of a preliminary communication from the Board of Appeal informing it that the objection under A 100 c) would be admitted.

[2.2.7] It is evident from […] the Reasons of the decision under review that the criteria which weighed :’ with the Board of Appeal were as follows:

“It was clear in the given circumstances, that amended sets of claims, even if they were found to meet the requirements of A 123(2) (the same requirements as under A 100(c)), would have had to be examined in respect of all other formal and substantive requirements of the EPC, the board and the opponents not having had the opportunity for the necessary discussion of all issues raised by the amended claims, which were unknown to them and whose filing they didn’t expect given the late stage of the proceedings and the respondent’s behaviour up to then (cf. A 13 (3) EPC (sic): ‘Amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the OPs’)”.

[2.2.8] In other words, the Board of Appeal evidently exercised its discretion on the basis of all the exemplified criteria: the procedural stage which had been reached (terminally late), the subject-matter proposed to be admitted (an amended set of claims with the associated need for full examination) as well as the unexpectedness of the proposa1 […] which would militate against the need for procedural economy.

[2.2.9] Consequently, the EBA is satisfied that the petitioner could submit its arguments about the procedural issues on which the Board of Appeal based its decision to refuse auxiliary requests, especially the possible exceptional circumstances namely the reasons of a such late filing, put forward to justify the late filing.

[2.2.10] Seen against this background, the main argument of the petitioner, that no opportunity was given to speak to the subject-matter of the proposed auxiliary request, i.e. to the text of any amended claims to be filed is not relevant.

[2.2.11] It is the view of the EBA that it belongs to the discretion of the boards of appeal to decide which criteria are to have precedence according to the circumstances of the case.

[2.2.12] Much speaks, in the view of the EBA, for the criterion of lateness, in appropriate circumstances, to outweigh the criterion of the subject-matter to be submitted, in the exercise of discretion on admissibility of amended claims.

[2.2.13] In fact, the EBA sees no legal basis for an obligation incumbent on the Board of Appeal to hear the petitioner on substantive issues before deciding the issue of admissibility of a proposed auxiliary request if, given the particular circumstances of the case, these issues are found not to correspond to the relevant decisive criterion. A requirement for a party in any case to be invited to formulate and supply a text before any decision is taken as to the admissibility of a proposed auxiliary request, regardless of the relevant surrounding circumstances, would in the view of the EBA be to deprive the boards of appeal of the discretion explicitly provided by Article 13 RPBA.

[2.2.14] Equally irrelevant, and for the same reasons as set out above, is the petitioner’s argument that the Board of Appeal could not exercise its discretion in an informed and therefore appropriate way, in the absence of a knowledge of the text of the claims to be submitted.

[2.2.15] This argument on which the petitioner insisted at the OPs before the EBA, is in any case weakened by the statements in its written submissions, according to which, firstly the specific crystalline modification of the compound which was the subject-matter of the patent in suit could only be claimed in an auxiliary request by additional physical measurement parameters […] and secondly, in view of the statements, appearing no less than three times in the petition for review, that it had been indicated by the Respondent to the Board of Appeal during the OPs that the auxiliary request to be filed “will be based on the set of claims as originally filed”.

[2.2.16] These written statements, which contrast with the thrust of the petitioner’s oral arguments before the EBA, tend to indicate that neither the Board of Appeal nor the other party could have been in any appreciable doubt as to what the text of the proposed auxiliary request would be.

[2.2.17] Nor is it of any significance in the present case that the Board of Appeal had not issued a communication to inform the patent proprietor of its provisional opinion prior to the OPs. The critical issue had already been raised by the appellant in its statement of grounds of appeal […], three years before the OPs before the Board of Appeal.

As results from Article 12 RPBA and as already recalled in the decision R 21/09 […], the framework of the appeal proceedings in inter partes cases as in any judicial procedure is also defined by the written submissions of the parties. This is also a particular consequence of the general procedural principle of party disposition as defined for example in G 9/92 [1]. The communication of the Board of Appeal, if any, is a means at the Board’s disposa1 to streamline the appeal proceedings and above all the OPs. […]

[2.2.19] Consequently the EBA comes to the conclusion that the petitioner was fully able to explain its case as it stood at that time, when the only outstanding request, apart from the main request, was to be allowed to file an auxiliary request. Thus there was no violation of its right to be heard.

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T 690/09 – Don’t Wake The Dead (Without Consent)

[8] The appellant further complained that the decision under appeal was taken on the basis of claims that had not been approved in accordance with A 113(2) EPC 1973.

In the minutes the following statement is found after the chairman announced the decision not to admit the sets of claims filed on 8 September 2008:

“Consequently the latest admitted request filed by the applicant with the letter dated and received 07.07.2005 will be the basis for further discussion during the oral proceedings (OPs). After being asked by the chairman, the applicant confirmed that the main request and two auxiliary requests dated 08.09.2008 were maintained. The applicant was informed that this decision and its reasoning will be furnished to him in written form, which may be subject to appeal” (emphasis added).

The appealed decision was finally taken on the basis of the set of claims filed with letter of 7 July 2005 with further minor amendments.

A 113(2) states that the EPO shall consider and decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant for or proprietor of the patent. Here the examining division (ED) refused to consent to the introduction into the procedure of the claims submitted on 8 September 2008, which had been put forward in substitution for the claims put forward with letter of 7 July 2005, and then proceeded to discuss and refuse the claims of 7 July 2005 which were, at the time, not put forward by the appellant for consideration. Deciding to refuse an application on the ground that claims are not allowable contravenes A 113(2) if the applicant is no longer putting forward these claims, and amounts to a substantial procedural violation (see e.g. T 946/96 [3]; T 647/93 [2.6]). If the ED refuses consent to the latest submitted amended set of claims under R 137(3) this does not automatically revive the previous set of claims that the ED had consented to consider, unless the applicant has indicated that he was relying on these as an auxiliary request. There was no such indication here. A question by the chairman on the status of the “old” requests would have been necessary. In contrast the applicant had to continue with the set of claims he wanted to replace.

The fact that those claims were further amended by the applicant later during OPs does not imply the applicant’s consent under A 113(2).

The correct procedure would have been to notify the applicant of the grounds for intending to refuse consent to admit the latest set of claims and to ask him whether he wanted a decision on that basis. If the applicant then maintained his request solely on the basis of these claims (as was the case - see the minutes), and any further arguments by the applicant did not persuade the ED to change its mind, then a decision should have been given in which the reasons for the refusal of consent under R 137(3) were stated, and the application was refused under A 97(2) and A 78(1)(a) on the basis that the application contained no claims to which the applicant had agreed.

Thus, the ED decided on sets of claims which were neither submitted, nor agreed by the applicant, in violation of Article 113(2). This provision is a fundamental procedural principle, being part of the right to be heard and is of such prime importance that any infringement of it must be considered to be a substantial procedural violation (see T 647/93 [2.6]).

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T 421/09 – Don’t Be So Quick To Replace

The present decision shows that in appeal proceedings it may be dangerous to replace existing requests by late filed requests.

The Examining Division had refused the application. The applicant filed an appeal. During oral proceedings (OPs) before the Board it filed a new main and a new auxiliary request to replace all requests on file.

The Board of appeal uses its discretion under Article 13(1) RPBA not to admit these late filed requests and then pursues:

[4] By at the OPs expressly replacing all requests then on file with the present main and auxiliary request, the Appellant has effectively withdrawn the previous requests. (This situation contrasts with one in which requests are filed as subsidiary to those already on file). As the Board does not admit the replacing requests, there is no longer a valid text of the claims submitted by the applicant as appellant upon which the EPO can decide upon the European patent application, A 113(2). Such a valid text is a fundamental procedural prerequisite for the Board to be able to review the decision under appeal.

Absent a valid text the appeal must fail.

Now perhaps there was not much hope for the replaced requests either, but if the applicant had added new requests to the requests on file rather than replacing the latter, the Board would at least have had to deal with those requests.

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T 25/09 – It’s Party Time

The present decision also deals with a not so common request: the opponent requested that the patent proprietor not be allowed to withdraw auxiliary requests considered during oral proceedings (OPs) and that the Board express its opinion on these requests.

[30] Proceedings before the Boards of Appeal are governed by the principle of party disposition under which a public authority or court normally may not continue proceedings if the procedural act which gave rise to the proceedings (such as the filing of an appeal) has been retracted, unless procedural laws specifically permit continuation (G 8/91 [5]). Such exceptions are set forth, in particular, in R 70(1) (no withdrawal of the request for examination) and in R 84(2) (possible continuation of opposition proceedings after withdrawal of the opposition). There is no similar exception that would allow the continuation of the appeal proceedings with respect to claim requests withdrawn in appeal proceedings.

The principle of party disposition is of particular relevance for inter partes proceedings (see, e.g., T 240/01 [6]). It means, for example, that a department of the EPO is not allowed to decide on a non-pending application (T 1409/05 [3.2.26]). The Boards of Appeal do not intervene of their own motion, but only at the request of the appellants (T 60/91 [9.3]). Referring to the principle of party disposition, the Enlarged Board of Appeal confirmed that the appeal proceedings are terminated after the appeal is withdrawn in so far as the substantive issues are concerned (G 8/91 [4,5], see also decision G 2/91 [6.1]). This applies also in cases where a third party who intervened during appeal proceedings is interested in the continuation of the proceedings (G 3/04 [10]). The principle of party disposition (in German “Verfügungsgrundsatz” or “Dispositionsmaxime”) also allows that the patent proprietor changes the order of auxiliary claim requests or introduces new claim requests and thereby avoids that certain requests are examined. Such changes of the order of auxiliary requests were made – and were not contested – during the OPs in the present case.

[31] Not only an appeal in its entirety but also part of an appeal can be withdrawn if the appeal could initially have been accordingly limited in conformity with R 99(1)(c) and R 99(2) (see J 19/82 [4]). In the present case, [the patent proprietor] could have refrained from filing the auxiliary requests in question. Consequently, [the patent proprietor] should be allowed to withdraw individual auxiliary requests filed in the course of the appeal proceedings. For the Board, it is not relevant whether the Board has discussed the relevant requests with the parties and/or whether the Board has given its opinion on such requests as long as the debate has not been closed in accordance with Article 15(5) of the Rules of Procedure of the Board of Appeal (RPBA) and no decision has been announced (see below point (35)). Opinions given by the Board in appeal proceedings regularly trigger the filing of new requests, the admissibility of which will then be examined under Article 13 RPBA. Likewise, the withdrawal of requests – which normally does not raise any issues under Article 13 RPBA – must be possible as a reaction to an opinion given by the Board.

[32] In the Board’s view, it does not matter whether [the patent proprietor] filed the auxiliary requests in question as appellant or as respondent to the appeal filed by [the opponent]. In inter partes proceedings, the principle of party disposition applies to the procedural acts of both parties (see also T 240/01 [6]).

[33] Under A 113(2), the EPO shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. This provision not only specifies an aspect of the right to be heard; it is also relevant in the context of party disposition. It has been concluded from A 113(2) that a Board of Appeal has no authority to order the grant of a patent containing claims which are different from those submitted by the applicant (T 32/84 [19]). The principle that a patent may not be granted or maintained with claims to which the proprietor has never consented or to which the consent has been withdrawn applies to all procedural situations. If the patent proprietor in appeal proceedings withdraws its approval of the text of the patent as granted and declares that he will not be submitting an amended text, the appeal proceedings have to be terminated and the patent has to be revoked without any substantive examination (T 73/84 [3,5]). Accordingly, the withdrawal of the approval with respect to individual claim sets (filed as auxiliary requests) must result in the termination of the proceedings with respect to such claim sets. [The patent proprietor], by withdrawing his requests, withdrew his consent to the respective claim wording. In this context, any decision of the Board on the allowability of requests withdrawn by the patent proprietor would be completely pointless since a withdrawn request could never form the basis of a maintained patent.

[34] The principle of party disposition (which implies the right to withdraw an appeal in its entirety or in part) and the provision of A 113(2) imply, in the Board’s judgment, that [the patent proprietor], being the patent proprietor, must have the right to withdraw any of its claim requests filed in the course of appeals proceedings.

[35] A withdrawal of an appeal cannot have any effect on the decision if the appeal is withdrawn after the decision has been announced by the Board at OPs in accordance with R 111(1) (see T 1033/04 [3]). E contrario, an appeal may be withdrawn at any time before the decision is announced. When [the patent proprietor] withdrew part of its requests during the OPs, no formal decision had been announced yet on these requests. This fact was pointed out by the chair – and was not disputed – when the request was discussed. [The patent proprietor] was therefore allowed to withdraw part of its auxiliary requests in view of the status of the proceedings. The Board has to reject the request of [the opponent] that the withdrawal of claim requests of [the patent proprietor] considered during OPs shall not be allowed.

[36] If [the patent proprietor] is allowed to withdraw auxiliary requests before a final decision is taken, there is no room for any opinion or reasoning given by the Board on such withdrawn requests in the written decision. In view of R 111(1), decisions need to be given and reasoned only on admissible requests which are pending after the debate is closed.

[37] Any opinion or reasoning given by the Board on claim requests withdrawn during the proceedings would, in effect, constitute declaratory judgments or obiter dicta (i.e., findings which do not support the formula of the decision, see T 473/98). There is no basis in the EPC for any declaratory judgment. [The opponent] may therefore not request any formal decision on any claims which are not part of a pending request.

The Board agrees with [the opponent] that the Board may give comments or obiter dicta on points which need not to be decided in order to arrive at the final decision. The Board would not exclude that such obiter dicta may even comment on claims which do not form part of a pending request. However, it lies within the discretion of the Board to include or not to include such obiter dicta in the written decision. Any interest of [the opponent] in such obiter dicta which may arise in the course of pending or future application, opposition, infringement or invalidity proceedings cannot justify that obiter dicta (which may not have any relevance for any proceedings on the present patent before the EPO) are included in the final decision of the present proceedings. Even if a divisional application contains claims identical to claims forming part of withdrawn requests in the present proceedings, such claims in a divisional application could not be accepted or rejected on the basis of res iudicata if they were commented only in obiter dicta in the present proceedings.

Likewise, the Board does not accept the position of [the opponent] that the public interest would require the requested opinions on withdrawn claim requests. Third parties may not claim any right to learn about the Board’s opinion on claims that are not part of a pending request.

[38] For these reasons, the request that the Board expresses its opinion on withdrawn auxiliary requests has to be rejected.

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