27 November 2015

T 1125/13 - Unordered requests

T 1125/13
For the decision, click here

Key points
  • In this case, the OD had revoked the patent, the patentee filed an appeal, the opponent had withdrawn its opposition shortly before the oral proceedings, and the appellant/patentee did not attend the oral proceedings. 
  • Board: "The appeal proceedings were not affected by the withdrawal of the opposition. The board was still obliged to examine the substance of the opposition division's decision in order to ascertain if it was to be set aside and whether the patent, on the basis of the appellant's requests, met the requirements of the EPC. In so doing, under Article 114(1) EPC the board was able to take account of the submissions and evidence filed by the respondent prior to its withdrawal of the opposition". 
  • The Board found the Main Request not allowable. The Board then turned to the Auxiliary Requests. 
  • Board: "The appellant submitted the following five sets of auxiliary requests with the statement of grounds of appeal: B, C and D; 1 to 6; 1B to 6B; 1C to 6C and 1D to 6D (see section III above). Thus, the appellant has not presented its claim requests consecutively numbered in descending order of preference, " " As it was the appellant's responsibility to indicate the order of its claim requests, the board could only proceed as far the order of the requests was clear to it. It cannot be for the board to speculate which of the various sets of claim requests the appellant might prefer, or to choose the order which might seem suitable. That would run counter to the principle of party disposition and undermine confidence in the objectivity and impartiality of the board. [...] Accordingly, the board dealt with the appellant's main request but, as it was not in a position to establish which of the auxiliary requests should follow, it had no other choice than to ignore them. "

Reasons for the Decision
1. With its letter of 7 April 2015 the respondent withdrew its opposition. It thus ceased to be a party to the appeal proceedings. The appeal proceedings were not affected by the withdrawal of the opposition. The board was still obliged to examine the substance of the opposition division's decision in order to ascertain if it was to be set aside and whether the patent, on the basis of the appellant's requests, met the requirements of the EPC. In so doing, under Article 114(1) EPC the board was able to take account of the submissions and evidence filed by the respondent prior to its withdrawal of the opposition (see also T 629/90, OJ EPO 1992, 654, Headnote).
2. The duly summoned appellant did not attend the oral proceedings, as announced in its letter of 7 May 2015. In accordance with Rule 115(2) EPC and Article 15(3) RPBA the oral proceedings took place in the absence of the appellant, who was taken to rely on its written submissions.



21. In view of the above considerations, the subject-matter of claim 1 is considered to be obvious from the teaching of document D1. The main request fails to meet the requirements of Article 56 EPC and is not allowable.
Basis of the decision (Article 113(2) EPC)
22. Pursuant to Article 113(2) EPC the board decides upon a European patent application or patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. Enshrined in this provision is the principle of party disposition, which implies that it is the applicant's or patentee's responsibility to define the subject-matter of the application or the patent. This responsibility cannot be shifted to the board or other parties to the proceedings. In relation to the established system of main and auxiliary requests in the proceedings before the EPO, this means that the applicant or patentee must indicate the order of preference for each set of claims when filing alternative sets (see also R 14/10, Reasons 5.2 and 5.3; T 382/96, Reasons 5.2, neither decision published in the OJ EPO).
23. The appellant submitted the following five sets of auxiliary requests with the statement of grounds of appeal: B, C and D; 1 to 6; 1B to 6B; 1C to 6C and 1D to 6D (see section III above). Thus, the appellant has not presented its claim requests consecutively numbered in descending order of preference, but has filed different "series" of requests which have no discernible order.
23.1 The particular order in which these requests should be considered by the board can also not be deduced from the explanations provided by the appellant in the statement concerning the various features incorporated into these auxiliary requests (see section IV above).
23.2 And, while the submissions of the appellant in the context of novelty appear to imply that auxiliary request 1 is to be considered after the main request, the submissions in the context of inventive step seem to imply that it is auxiliary request B that should be considered after the main request (see section IV above).
23.3 Hence, the order in which the appellant wishes these claim requests to be considered by the board is not clear. As a result the board does not know what the text is upon which the patent proprietor wants to have a decision taken. It is in particular not clear whether auxiliary request B is higher-ranking than auxiliary request 1 and whether auxiliary request 1B is higher- ranking than auxiliary request 2.
24. The board informed the appellant prior to the oral proceedings that the order of the submitted claim requests was not clear (see section VII above), and thus gave it the possibility to clarify its requests. However, no submission was received in reply to the board's communication and no later clarification could be obtained due to the appellant's non-attendance at the oral proceedings. The appellant's statement of grounds of appeal thus remained the sole relevant submission in this respect.
25. As it was the appellant's responsibility to indicate the order of its claim requests, the board could only proceed as far the order of the requests was clear to it. It cannot be for the board to speculate which of the various sets of claim requests the appellant might prefer, or to choose the order which might seem suitable. That would run counter to the principle of party disposition and undermine confidence in the objectivity and impartiality of the board.
26. Accordingly, the board dealt with the appellant's main request but, as it was not in a position to establish which of the auxiliary requests should follow, it had no other choice than to ignore them. Hence, the sole request to be considered pursuant to Article 113(2) EPC was the main request.
Order
For these reasons it is decided that:
The appeal is dismissed.

No comments:

Post a Comment

Do not use hyperlinks in comment text or user name. Comments are welcome, even though they are strictly moderated (no politics). Moderation can take some time.