T 0716/17 - Reordering requests inadmissible

 Key points

• In this opposition appeal, “ the patent proprietors substantially re-ordered their pending requests several times. This resulted in a repeated change of the subject-matter to be discussed, since the auxiliary requests selected by the patent proprietors related to a variety of different and diverging attempts to find allowable subject-matter”.
• However, can the Board hold this reordering inadmissible? Nothing new is filed by reordering requests. 
• Yes they can. The Board: “as follows from the above discussion, the re-ordering of pending requests carried out by the proprietors amounts to an amendment of the case, which needs to be justified according to Article 13(2) RPBA 2020. However, no special circumstances for such amendments, in the sense of Article 13(2) RPBA 2020, have been justified with cogent reasons by the patent proprietors”.
• I'm not sure what part of the preceding paragraphs in the decision forms the ‘above discussions’. However, the Board noted that “As a consequence [of the reordering], during the oral proceedings it became more and more difficult for the opponent and the board to follow what the patent proprietors were attempting to achieve. ”
• Not only the reordering is inadmissible, also the requests at issue. The patent is revoked. 

T 0716/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t170716eu1.html

9. First to third, fifth, new sixth, ninth and tenth auxiliary requests - admittance


During the oral proceedings the patent proprietors substantially re-ordered their pending requests several times. This resulted in a repeated change of the subject-matter to be discussed, since the auxiliary requests selected by the patent proprietors related to a variety of different and diverging attempts to find allowable subject-matter.

As a consequence, during the oral proceedings it became more and more difficult for the opponent and the board to follow what the patent proprietors were attempting to achieve. Moreover, treating the auxiliary requests in the changed sequence as finally requested by the patent proprietors would have required re-discussing objections already addressed with respect to higher ranking auxiliary requests.

When wishing to proceed with the ninth auxiliary request, the patent proprietors had already been allowed no less than six re-orderings of the sequence of their auxiliary requests during the oral proceedings.

Further, with respect to the ninth and tenth auxiliary requests, the patent proprietors had already been informed during the oral proceedings of the board's preliminary opinion that these were not considered to be sufficiently substantiated in the sense of Article 12(2) RPBA 2007. As regards the first to third and fifth auxiliary requests, the patent proprietors had been informed in the board's communication under Article 15(1) RPBA 2007 that the subject-matter according to the first auxiliary request did not involve an inventive step in the sense of Article 56 EPC and that none of the second, third or fifth auxiliary requests was considered to be clear in the sense of Article 84 EPC.

The patent proprietors' reply dated 8 February 2021 merely discussed inventive step regarding the new sixth auxiliary request, not regarding the first auxiliary request. Clarity was only discussed on a very general basis without a discussion of the features objected to as unclear by the opponent. Consequently, no further arguments of the patent proprietors in favour of the first to third, fifth and new sixth auxiliary request ware apparent from the file. During the oral proceedings no arguments were presented regarding the admissibility of these auxiliary requests either.

As claim 1 according to the new sixth auxiliary request is identical to claim 1 according to the sixth auxiliary request (request to dismiss the opponent's appeal), the objections discussed with respect to the non-allowable sixth auxiliary request apply mutatis mutandis to the new sixth auxiliary request. Thus, there is no justification to admit the new sixth auxiliary request into the proceedings.

Further, as follows from the above discussion, the re-ordering of pending requests carried out by the proprietors amounts to an amendment of the case, which needs to be justified according to Article 13(2) RPBA 2020. However, no special circumstances for such amendments, in the sense of Article 13(2) RPBA 2020, have been justified with cogent reasons by the patent proprietors.

The board has therefore decided to exercise its discretion under Article 13(2) RPBA 2020 not to admit the first to third, fifth, new sixth, ninth and tenth auxiliary requests into the appeal proceedings.

10. Conclusion

All of the patent proprietors' requests are either not admissible or not allowable. Consequently, the board accedes to the opponent's request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.