Monday 25 June 2012

T 383/11 – No Free Hand


In this case there was a first appeal after the Opposition Division (OD) had maintained the opposed patent in amended form.

The Board found the main request and the first two auxiliary requests not to comply with the requirements of A 123(2) remitted the case for further processing on the basis of the third auxiliary request on file (T 911/06; also reported on this blog).

After remittal the proprietor filed a new main request and four auxiliary requests. Subsequently, in oral proceedings (OPs), the proprietor withdrew the first and second auxiliary requests and renumbered the third and fourth requests as first and second requests. Claim 1 of the second auxiliary request (after renumbering) corresponded to claim 1 of the third auxiliary request that had been the subject of the Board's decision on the first appeal.

The OD finally revoked the patent for lack of novelty.

The proprietor appealed against this second decision and, with the grounds for appeal, submitted a main request and first and second auxiliary requests, which corresponded to those which were the subject of the OD’s second decision.

The second decision of the Board, wherein the Board finally maintained the patent in amended form, contains an interesting passage on the admissibility of the main and first auxiliary requests on file.

[1.1] The Boards of Appeal have derived, in particular from R 79(1), the principle that the proprietor does not have a right to have amendments admitted at any stage of opposition proceedings. At the discretion of the OD or the Board of Appeal, amendments can be refused if they are neither appropriate nor necessary (see case law of the Boards of Appeal, 6th edition 2010, VII.D.4.1.2, second paragraph).

[1.2] In its decision on the first appeal (T 911/06), the Board found that the main request and first auxiliary request valid at that time offended A 123(2) (see T 911/06 [7-8]) and that the patent as granted and the second auxiliary request valid at that time offended A 83 (see T 911/06 [4,9]).

Considering the third auxiliary request valid at that time, the Board held that the amendments made to claim 1 did not introduce subject-matter that extended beyond the content of the application as filed (see point [10]) and that they restricted the scope of the claim in such a way that the insufficiency of disclosure that had been identified in respect of claim 1 as granted no longer existed (see point [11]). Hence, the Board passed judgement on the then third auxiliary request at least as regards A 123(2) and A 83.

In point [12] of the reasons for the decision, entitled “Remittal to the first instance for further prosecution”, the Board decided to remit the case to the department of first instance for further prosecution, noting in particular that the amendments made according to claim 1 of the third auxiliary request and the attempt to introduce into the proceedings a new document (D8: “Variable speed diesel power generation design issues” by Anthony L. Rogers, UMI Number 9639021, Copyright 1996) had created an entirely new situation that had not been considered in the contested [first] decision. It is evident from this reasoning that for the Board the purpose of the remittal was to allow further prosecution on the basis of the new situation that had been instrumental in bringing it about. In other words, the third auxiliary request was to be the basis for the further prosecution, taking due account of the Board’s judgement on the issues of A 123(2) and A 83.

[1.3] In the post-remittal proceedings before the OD, the proprietor introduced a new main request and a new first auxiliary request (filed as main request and third auxiliary request with letter dated 7 September 2010). These requests correspond to the present main request and first auxiliary request. Claim 1 of each of these two requests has been broadened in scope with respect to claim 1 of the third auxiliary request upon which the remittal had been obtained.

The OD admitted these new requests into the opposition procedure and examined them, finding inter alia that the new main request met the requirements of A 123(2) and A 83 […] and that the new first auxiliary request met the requirements of A 123(2) […]. It is evident from the fact that the OD carried out an examination of the new main request and first auxiliary request for the requirements of A 123(2) and A 83 , that by admitting these new requests, the examination had to be re-opened on issues which had already been judged upon in the first appeal proceedings in respect of the request that led to the remittal.

[1.4] It cannot be the purpose of a remittal to the department of first instance to give the proprietor a free hand to redefine the claimed invention and have the examination start afresh, as that would have the effect of allowing the proprietor to restart the discussion of issues that had been settled by the appeal, even when no new situation has arisen that might justify amending the claims. Furthermore, the overall duration of further opposition and possibly further appeal proceedings after remittal would be likely to severely impair the legitimate interests of the other party and of the general public in having some degree of legal certainty about the existence and scope of the European patent within a reasonable time span. To avoid these problems, the prosecution of the case after remittal must in some way follow on from the situation that existed at the end of the appeal procedure, and that led to the remittal.

In conclusion, the Board holds that in the present case, where after remittal the proprietor filed new requests which required examination to be re-opened on issues that had already been judged upon by the Board of Appeal, without the justification that might be provided, for example, by the proprietor being faced with a new situation, then such requests should be deemed to be inadmissible.

Thus, the Board decided to disregard the appellant’s main request and first auxiliary request.

[1.5] For the sake of completeness, the Board notes that this decision is in line with decision T 796/02, which was relied upon by the opponent in his submission that the filing of the new main request of 7 September 2010 constituted an abuse of procedure.

In that case, the patentee, in a first appeal, had obtained a remittal to the OD on the basis of a request which contained a feature (g) that was defined in relatively narrow terms. Subsequently, in the second proceedings before the OD, the patentee sought to introduce a request in which the feature (g) was more broadly defined (see point [7]). Requests comprising the more generally defined feature (g) had already been filed during the first appeal procedure, but had been withdrawn. The Board held that by withholding the broader requests for tactical reasons, the patentee had deprived the competent Board of an opportunity to decide thereon. Furthermore, the Board held that as a direct result of the patentee’s own tactical choice, the matter of the appeal proceedings had been limited from the broader version of the claims to a much more restricted subject-matter by limiting the feature (g).

The present case differs from that underlying T 796/02 in that during the first appeal the proprietor did not withdraw any requests which correspond to the present main request and first auxiliary request. However, the proprietor did file various requests in preparation for OPs (i.e. the main request and first to seventh auxiliary requests of 9 October 2009). These requests were filed in response to the communication of the Board dated 27 August 2009 in which the Board informed the parties:
“granted claim 1 covers cases where the controllable source is controlled in response to the current of the intermediate DC output, or in response to the voltage (independently from the current) of the controllable source. It is not clear to the board whether these claimed alternatives are sufficiently disclosed in the patent” […]
Thus, the proprietor had at least the opportunity during the first appeal to amend his case as he wished to meet the objection that eventually led to the decision of the Board in the first appeal that the requirement of sufficiency of disclosure (A 83) was not met by claim 1 as granted and that this insufficiency of disclosure no longer existed in claim 1 of the then third auxiliary request (corresponding to the present second auxiliary request) (see T 911/06 [4.4-5,11]).

In this way, the Board considers that as a direct result of the proprietor’s own informed choice, the matter, following the first appeal proceedings, was limited from the broader version of the claims (claim 1 as granted) to a more restricted subject-matter by the limiting features added to claim 1 in the third auxiliary request, on the basis of which remittal was obtained.

The board considers that in such circumstances it would not be justified to admit requests that are broader than the third auxiliary request and that could have been presented before the conclusion of the first appeal proceedings.

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

The file wrapper can be found here.

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