T 1613/13 - Reintroducing requests

Key points

• " The request of the appellant during the oral proceedings to reinstate one of the requests filed with the statement of grounds of appeal, after these had been replaced by the new requests [] amounts, in terms of procedure, to the very late filing of a new request. 

• "There is no legal basis which would justify the non-admissibility of a request merely because it has been replaced by another. The board has a discretion to assess whether or not the withdrawal should be considered definitive, and whether the attempt to reintroduce the withdrawn request was justified or a misuse of proceedings." 

T 1613/13 - link

Reasons for the Decision

1. Admissibility of the request

1.1 The request of the appellant during the oral proceedings to reinstate one of the requests filed with the statement of grounds of appeal, after these had been replaced by the new requests (filed with letter of 11 February 2016) amounts, in terms of procedure, to the very late filing of a new request. The respondent contended that the appeal proceedings should be closed immediately and that the appeal be dismissed, since the board had not admitted the requests replacing those filed with the statement of grounds. According to the respondent there were no more requests on file, and no possibility for the board to allow the appellant to revert to a withdrawn request.

1.2 As stated above, the appellant's request to have one of its former requests considered had the status of a newly filed request, hence it was necessary for the board to consider the admissibility of this request as it would with any late filed request. In this particular case, however, besides the criteria set out in Article 13 (1)RPBA, the board had also to consider whether the fact that the newly filed request resulted in reverting to a request previously withdrawn during the appeal proceedings was per se a reason not to admit the request.

1.3 Regarding the criteria set out in Article 13(1) RPBA the board took the following aspects into consideration.

1.3.1 The history of the request

In its preliminary opinion the board requested the appellant to clarify the state of the requests submitted with the grounds of appeal, and to submit marked and clear copies of the different sets of claims forming the basis of the requests.

The board further indicated that it was not persuaded by the reasoning and conclusion given in the contested decision for lack of inventive step of the method defined in auxiliary request VI.

With letter of 11 February 2016 the appellant replaced the requests initially filed with the grounds of appeal by a new main request and new auxiliary requests 1 to 3. During the oral proceedings the appellant requested the opportunity to file again the requests filed with the grounds of appeal, should none of the new requests be deemed admissible.

During the discussion of the admissibility of the new requests, the board, after hearing the respondent, noted that an unclear feature had been taken from the description and introduced into the claims of all the new requests; the board therefore decided that the new requests would not be admitted.

When the appellant requested the reintroduction of the requests filed with the statement of grounds, the board expressed the view that, if any, only a request corresponding to auxiliary request VI could potentially be admitted into the proceedings for the reasons given in point 3 of the provisional opinion.

The appellant then replaced the requests filed with letter of 11 February 2016 by a sole request based on the single claim corresponding to the claim of said auxiliary request VI.

1.3.2 The contents of the request

As stated above, the claim of this new request corresponds to that of auxiliary request VI, which had been dealt with both in the contested decision and the provisional opinion of the board. The subject-matter of the claim was thus familiar to the respondent.

In addition, the claim of the new request substantially corresponds to the method claim of the third auxiliary request filed with the letter of 11 February 2016, with the difference that the added feature ("which suction piles are a thin walled steel cylinder, closed at the upper longitudinal end") taken from the description was deleted in reaction to the objection of a prima facie lack of clarity introduced by this feature.

The definition of the method according to claim 1 of the request was thus not new in the proceedings and could be dealt with in the oral proceedings.

Under these circumstances the new request, in spite of being a late-filed request in the proceedings, did not in fact change the case as made out in the statement of grounds, and did not introduce further complexity; it could be dealt with by the respondent and the board without any delay. Accordingly the requirements of Article 13(1) and (3) RPBA were not an obstacle to the reintroduction of the request at this stage.

1.4 Then the board had to consider whether the fact that the new request corresponded to a withdrawn request was, in addition to the requirements of Article 13 RPBA, enough to render the request inadmissible.

There is no legal basis which would justify the non-admissibility of a request merely because it has been replaced by another. The board has a discretion to assess whether or not the withdrawal should be considered definitive, and whether the attempt to reintroduce the withdrawn request was justified or a misuse of proceedings. In this respect, the important point was that the request was part of the scope of the appeal, since it corresponded to auxiliary request VI examined by the opposition division and was filed with the statement of grounds of appeal. The new requests filed with the letter of 11 February 2016 were in reaction to the board's communication and an attempt to solve outstanding objections, these requests being announced as replacing the pending ones. It could have been expected that, in view of the communication of the board with respect to auxiliary request VI, in the event that the board found the new requests inadmissible, the appellant would reintroduce an appropriate request. Rejecting this request merely because it was a consequence of the withdrawal in such circumstances would not comply with the spirit of the rules of procedure of the boards of appeal, Articles 12 and 13 in particular.

The result is that the board exercised its power of discretion and admitted the request into the proceedings.

2. Amendments

The request contains a single claim which is formed by the combination of the features of independent claim 9 and its dependent claim 10 as granted.

The requirements of article 123 EPC are fulfilled; the respondent did not raise an objection.

3. Article 100(b)/83 EPC

During opposition procedure the opponent (respondent) raised an objection under article 100(b) EPC that the terms "self foundating" and "suction pile" were unclear to such an extent that neither of them could be reasonably interpreted, meaning that the invention as claimed could not be realised (see section 12.1 of the impugned decision).

During oral proceedings the respondent objected that there was an insufficient disclosure of the claimed method because the teaching of the last feature of the claim, i.e. the feature contained in claim 10 as granted and defining the step of feeding air into the suction pile(s), was not clear enough for the skilled person to carry it out.

This attack is thus a newly raised objection under article 100(b) EPC, as it does not relate to the objection raised in the opposition proceedings and dealt with by the opposition division in its decision.

Since the appellant expressed his refusal to the introduction of a fresh attack under article 100(b) EPC raised by the respondent during oral proceedings is not to be considered.

4. Novelty

[]

The claimed method is therefore new as compared to D1 within the meaning of article 54(1) EPC.

5. Inventive step

[]

5.4 The method of the single claim thus fulfils the requirement of article 56 EPC.

6. Third party's submission

First, it is not apparent from the content of the third party's submission dated 22 October 2015 which claim of which request is addressed by the objection.

Secondly, the cited document GB-B- 2292167 (GB) is clearly less relevant than the documents cited by the respondent, since the self-installing platform disclosed in GB lacks suction piles and requires instead the use of a barge and a hollow concrete base structure. The replacement of the base and barge structure by suction piles seems to be based on a pure ex post facto analysis.

In summary the third party's observations are not particularly relevant to the case and are therefore disregarded pursuant to Article 114(2) EPC.

7. Objection of a procedural defect

7.1 The respondent contended that the board did not give it any opportunity to discuss the admissibility of the appellant's request filed at the oral proceedings.

This objection was raised when the chairman was confirming the final requests.

7.2 In order to assess whether this objection concerned a procedural error that the board could remedy, the following facts were taken into consideration.

There was a discussion about the admissibility of the request and the respondent's arguments were taken into account (see paragraph 2 above and paragraph 4 of the minutes of oral proceedings). When the appellant announced its intention to revert to its former request, it was made clear that only auxiliary request VI could be considered in order to avoid any unreasonable requests which would have delayed the proceedings. The proceedings were interrupted to allow the appellant to print copies of the request.

The discussion about admissibility took place prior to the interruption for printing copies of the request, since the subject-matter of the request was already known, with the appellant emphasising the similarities between the reintroduced request, auxiliary request III filed with the letter of 11 February 2016 and auxiliary request VI filed with the statement of grounds.

At resumption, the respondent was given the floor to comment on the request, and immediately raised an objection under Article 83 EPC.

The board was given no indication that the respondent had something further to add to its admissibility objections raised prior to the interruption.

This would have been the appropriate time to remedy any alleged deficiency in right to be heard about admissibility issues.

The respondent raised its objection after the discussion on the substantive merits of the request and the announcement of the board's conclusion in these respects.

However,in the board's view the respondent had not been deprived of its right to be heard on admissibility, and there was no reason to reopen the discussion on the issue, which at the time it took place was not challenged.

Therefore the objection was dismissed.

Order

For these reasons it is decided that:

1. The objection of procedural violation is dismissed.

2. The decision under appeal is set aside and the case is remitted to the opposition division with the order to maintain the patent on the basis of:

- the claim of the main request filed during the oral proceedings,

- a description and figures to be adapted.