T 2168/11 - Reintroducing requests

T 2168/11

For the decision, click here

Key point

• Patentee had withdrawn an auxiliary request before the OD, patent was revoked, in the first appeal the case was remitted to the OD. Patentee reverts to one of previously withdrawn requests as auxiliary request. The Board decides to not admit this request. 
• As a comment, this case shows that if you withdraw an auxiliary claim request before the OD, reintroducing it in the second appeal (after remittal) may be difficult. 

Summary of Facts and Submissions

I. European patent no. 0 730 643 is based on European patent application no. 94 931 891.9, published as International patent application WO 95/11968. The patent was opposed by three opponents on the grounds as set forth in Articles 100(a),(b) and (c) EPC. The opposition division considered the Main Request and an Auxiliary Request to contravene Article 54 EPC and, accordingly, the patent was revoked.

Full decision after the jump. 

II. The patentees lodged an appeal against this first decision of the opposition division. In the decision T 1847/06 of 16 December 2008, this board in a different composition considered a second Auxiliary Request to fulfil the requirements of Articles 123(2),(3), 84 and 54(3),(4) EPC (1973). The case was remitted to the opposition division for further prosecution on the basis of the second Auxiliary Request.

III. In an interlocutory decision dated 26 July 2011, the opposition division considered the second Auxiliary Request filed in appeal (which was made patentees' new Main Request) to be entitled to the claimed priority dates and to meet the requirements of Articles 83 and 56 EPC. Thus, the opposition division maintained the patent in amended form on the basis of this request and a description adapted thereto.

IV. An appeal was lodged by opponent 01 (appellant) against this interlocutory decision. The appellant filed new documentary evidence (documents D41-D45) and requested that the decision under appeal be set aside and that the patent be revoked. As auxiliary request, oral proceedings were requested.

V. In reply to the appellant's Grounds of Appeal, the patentees (respondents) requested, as a Main Request, that the appeal be dismissed. As auxiliary requests, the respondents requested that the decision under appeal be set aside and that the patent be maintained on the basis of one of the newly filed first, second or third Auxiliary Requests. As an auxiliary request, oral proceedings were also requested.

[...]

Reasons for the Decision

Main Request (identical to claims 1 to 5 of the second Auxiliary Request before the opposition division)

Scope of the appeal proceedings

1. In the statement setting out its Grounds of Appeal, the appellant did not contest the findings of the opposition division as regards the entitlement to the claimed priority (cf. page 2, point 3 of the decision under appeal). Thus, the scope of the present appeal proceedings, as far as it concerns the Main Request, is limited to sufficiency of disclosure and inventive step (Articles 100(a) EPC, in connection with Article 56 EPC, and 100(b) EPC).

[...]

12. In consequence, the board decides that the Main Request does not fulfil the requirements of Article 56 EPC.

Admissibility of first, second and third Auxiliary Requests

13. In a communication pursuant to Article 15(1) RPBA, the board expressed a preliminary and non-binding positive opinion on the admissibility of these requests into the appeal procedure. The board also noted that there were no submissions on file addressing these Auxiliary Requests (cf. point VII supra).

14. In reply to this communication, the appellant addressed the Auxiliary Requests and provided arguments against their admissibility into the appeal procedure (cf. point IX supra). The respondents did not reply to the board's communication or to the appellant's reply thereto. They informed the board that they would not be attending the scheduled oral proceedings and explicitly withdrew their request for oral proceedings (cf. point VIII supra).

15. In its reply to the board's communication, the appellant drew the board's attention to the earlier procedural history of the case.

15.1 In preparation of the first oral proceedings before the opposition division, the patentees/respondents, on 27 January 2006, filed a Main Request and a First Auxiliary Request. Claim 1 of these requests comprised technical features ("produces detectable quantities of ATF-ßAPP", Main Request; "produces quantities of ATF-ßAPP which are at least two-fold higher than the quantities of ATF-ßAPP produced from wild type human ßAPP in an equivalent transgenic animal", First and Second Auxiliary Requests) which are identically contained in claim 1 of respondents' first, second and third Auxiliary Requests, newly submitted in the present (second) appeal procedure (cf. point XII supra).

These requests, however, were withdrawn at the beginning of these first oral proceedings, held on 29 March 2006 before the opposition division. They were replaced by a new Main Request and First Auxiliary Request that did not contain any of the above mentioned technical features (cf. Minutes of the oral proceedings before the opposition division, issued on 8 May 2006, page 1, point 2 and Annexes 1 and 2). The newly filed requests were considered by the opposition division not to fulfil the requirements of Article 54 EPC (cf. Minutes, supra, page 3, points 17 to 23).

According to page 4, point 24 of the Minutes (supra), the patentees/respondents "announced that no further requests would be submitted".

15.2 The decision of the patentees/respondents to withdraw certain requests at the beginning of the oral proceedings deprived the opposition division from the opportunity to examine the subject-matter of these requests and to assess whether the technical features, mentioned in point 15.1 above, provided a technical contribution over the prior art, i.e. whether the withdrawn requests fulfilled the requirements of Article 54 EPC and Article 56 EPC.

15.3 The patentees/respondents lodged an appeal against the first decision of the opposition division, whereby the patent was revoked (cf. point II supra). During this appeal proceedings, they filed several new Auxiliary Requests, first, with their statement of Grounds of Appeal on 23 January 2007 (Main Request and Auxiliary Requests 1-4) and then, on 17 November 2008 in reply to the board's Summons to oral proceedings (Main Request and Auxiliary Requests 1-4). None of these Requests contained the technical features mentioned in point 15.1 above.

In their third Auxiliary Request, which was made patentees/respondents' second Auxiliary Request during the oral proceedings, and which was remitted to the first instance for further prosecution, the patentees/respondents introduced a new feature. This new feature was completely unrelated to the features referred to above and related to a dosage of the agent to be tested to the transgenic animal (cf. point XI supra).

Thus, the patentees/respondents, at this stage of the proceedings, had a further opportunity to re-file a request containing the features referred to above which would have allowed the Board of Appeal to decide on it.

15.4 In the Summons to the second oral proceedings before the opposition division, issued on 25 November 2010, the facts and submissions were summarized and a preliminary, non-binding opinion was given to the Main Request (former second Auxiliary Request) on entitlement to the claimed priority and on inventive step. At the end of these Summons, the opposition division stated that "(i)t is foreseen that full consideration of inventive step, focusing principally on the documents mentioned above and employing, if possible, a correctly applied problem-solution approach, will take place at the upcoming oral proceedings. At that time, sufficiency and all other outstanding matters are also to be discussed".

Thus, the opposition division left it open whether the Main Request fulfilled the requirements of Articles 56 and 83 EPC. Also at that point in time the patentees/respondents did not consider it necessary to file an Auxiliary Request containing the technical features referred to in point 15.1 above, which, for the second time deprived the opposition division of the opportunity to decide on such a request.

15.5 Only with their letter dated 16 April 2012, which was sent in reply to appellant's statement of Grounds of Appeal, the respondents filed Auxiliary Requests containing the features mentioned in point 15.1 above (cf. point V supra). In the light of the history of the case, these Auxiliary Requests have been filed at a very late stage of the procedure. No reasons have been given to explain the filing of these requests only at this late point in time.

New substantive issues, such as the entitlement to priority rights, which have not been examined yet, neither by the opposition division nor by the board, may well arise due to the re-introduction of the features mentioned in point 15.1 above, which counteracts procedural economy. According to the established case law of the Boards of Appeal, the purpose of an appeal procedure is not 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 (cf. inter alia, T 361/08 of 3 December 2009, T 1231/09 of 12 December 2012, point 1.3 of the Reasons, T 2046/11 of 13 April 2015, point 2.1 of the Reasons).

16. The board, in exercising its discretion (Article 114(2) EPC), governed by the principles laid down in Article 12(4) RPBA, decides not to admit the respondents' first, second and third Auxiliary Requests into the appeal procedure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.