T 1624/16 - No last chance doctrine

Key points

• The patentee files auxiliary requests during the oral proceedings before the Board, after the Board had announced a negative conclusion on the claims as granted.
• The Board: “As regards the [patentee's] argument that late filing of the auxiliary requests was justified as a "last chance" to save its patent, the board notes that submissions of the parties are subject to Articles 12 and 13 RPBA and admissibility of late requests is always a matter of the board's discretion (see e.g. T 446/00, point 3.3 of the Reasons). There is no established "last chance" doctrine or any absolute right of a patentee to such a "last chance".”
• The Board: “the [patentee] has failed to present any arguments why, in its view, any of these requests should be prima facie allowable, although e.g. claims 2 and 4 as granted [now incorporated in claim 1] were already objected to for lack of inventive step in the grounds of appeal.”

T 1624/16 -  link

3. First to sixth auxiliary requests - admissibility

3.1 The first to sixth auxiliary requests were filed during the oral proceedings, after the board had given its negative opinion with regard to novelty of the subject-matter of claim 1 as granted. As compared to the previous first to sixth auxiliary requests filed with the respondent's letter dated 27 June 2019, the term "prevention" in claim 1 has been replaced in all requests by the term "inhibition".

3.2 Under Article 13(1) RPBA, the boards have discretion to admit and consider any amendment to a party's case after it has filed its grounds of appeal or reply. The 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.

In this context, according to well-established case law of the Boards of Appeal, amended claims filed only shortly before or during the oral proceedings must in general be prima facie allowable in order to be admitted in the sense that it is immediately apparent to the board that they overcome all outstanding issues without raising new ones (see Case Law of the Boards of Appeal (CL), 8th edition, IV.E.4.1.3, 4.2.2).

In any case, it should be considered whether there is a proper justification for their late filing.




3.3 In the present case, the board observes that the respondent had ample opportunities to file auxiliary requests at an earlier stage of the proceedings. As acknowledged by the respondent, the interpretation of the term "prevention" in view of the translation from the originally filed Italian application had already been discussed in proceedings before the opposition division. In the reply of the patent proprietor to the notices of opposition with its letter dated 10 December 2014, the patent proprietor had argued that the translation of the Italian verb "inibire" was "to prevent from" or "to inhibit from". The appellant contested in its grounds of appeal (page 5, first to third paragraph) that the term "inhibited" or a similar term was disclosed in the application documents as originally filed. However, if the respondent wanted to rely on the allegedly more limited or specific term "inhibition" as compared to "prevention", it could and should have filed a correction on the basis of the originally filed Italian application documents under Article 14(2) EPC with its reply to the grounds of appeal, provided that such correction satisfied the requirements of Article 123(3) EPC (see e.g. T 516/12).

The respondent had even more good reasons to file respective auxiliary requests at least in appeal proceedings at an earlier stage, at least with its letter of reply, since the appellant argued in its grounds of appeal (see page 5, third and fourth paragraph) that the term "to prevent" did not mean "to block" or "to lock" or any active intervention of the technical system as found in the contested decision under point 4.2.3. Having failed to do so, the respondent waited until the last possible moment to take into account the objections which had been discussed at length during the entire opposition and appeal proceedings to amend its case.

On this ground alone, the board has already difficulties to see how its discretion can be exercised in the respondent's favour in view of the "current state of the proceedings" (see Article 13(1) RPBA).

Contrary to the respondent's assertion, the board has indicated quite clearly in its preliminary opinion that it has difficulties in following the interpretation of the contested decision under point 4.2.3 and that document D2 appears to be highly relevant for assessing novelty of the subject-matter of claims 1 and 3 (points 4 and 5).

As regards the respondent's argument that late filing of the auxiliary requests was justified as a "last chance" to save its patent, the board notes that submissions of the parties are subject to Articles 12 and 13 RPBA and admissibility of late requests is always a matter of the board's discretion (see e.g. T 446/00, point 3.3 of the Reasons). There is no established "last chance" doctrine or any absolute right of a patentee to such a "last chance".

3.4 Moreover, changing the wording of e.g. claim 1 by replacing the term "prevention" by "inhibition" would start a new discussion on whether the claimed subject-matter has changed or not. On the one hand, assuming that "inhibition" implied a more specific meaning than "prevention" as argued by the respondent, it had to be discussed in particular whether the modification in the respective method step of claim 1 merely limited the claimed subject-matter as compared to the subject-matter of claim 1 as granted, or whether the claimed scope of protection might have shifted and Article 123(3) EPC was violated, as suspected by the appellant. On the other hand, the respondent itself has argued in its written submissions that both terms were synonyms, which already raises the question how the amendment in claims 1 in auxiliary requests 1 and 2 (which only consists in replacing "prevention" by "inhibition") could establish novelty over D2, i.e. how these auxiliary requests could be prima facie clearly allowable.

In addition, claims 1 and 3 of the third to sixth auxiliary requests (similar to the auxiliary requests previously filed with letter of 27 June 2019) have been amended by either adding features taken from the description, or - in case of the sixth auxiliary request - features from granted claims 2 and 4. Apart from indicating in its letter of 27 June 2019 (page 6) where the support for the amendments is to be found and stating (last paragraph) that "all the amendments are directed to matter which was extensively dealt in the Opposition and Appeal proceedings", the respondent has failed to present any arguments why, in its view, any of these requests should be prima facie allowable, although e.g. claims 2 and 4 as granted were already objected to for lack of inventive step in the grounds of appeal. Moreover, the conformity of amendments with the requirements of Articles 123(2) and 84 EPC is an issue when extracting features from the description.

The board finds that dealing with these issues of allowability of amendments and patentability for the first time during the oral proceedings would run counter to the "need for procedural economy" (see Article 13(1) RPBA) and therefore also speaks against admission of the auxiliary requests into the appeal proceedings.

3.5 Under these circumstances, having regard to the state of the proceedings and the need for procedural economy, the board exercised its discretion under Article 13(1) RPBA in not admitting the first to sixth auxiliary requests into the proceedings.

The appellant's request for remittal to the first instance cannot be granted as no further prosecution is needed.