T 2301/12 - Post 1 - Inadmissible or not allowable

Key points

• In this opposition appeal, the Board has firstly to decide (under Article 12(4) RPBA) on whether to admit requests withdrawn during the first instance proceedings. Patentee initially disputes that he had withdrawn the requests, but is bound by the (non-challenged) minutes that the new requests  (including new Main Request) "replaced" the initial requests during the oral proceedings before the OD, such that these initial requests were in fact withdrawn. The Board observes that "where a proprietor files multiple requests, there must be a single main request, and it must be apparent at every stage of the proceedings which request this is." 
• However, the OD had (before the withdrawal) indicated that the initial main request did not meet Article 123(2) EPC and was "therefore was not admitted into the proceedings". The Board explains that "The finding of the Opposition Division that the initial main request did not meet the requirements of Article 123(2) EPC should therefore have led to a decision that the patent could not be maintained according to this request. Failure to meet the requirements of Article 123(2) EPC does not - by itself - render a request inadmissible, and the decision not to admit the initial main request into the proceedings therefore required a separate legal basis." Accordingly, the decision to not admit the requests is "flawed" (the request should have been admitted and rejected). 
• The OD also misapplied Rule 80 for a further not admitted request. That request was not admitted, because the OD considered the claim cancelled therein to meet the requirements of Article 123(2) EPC. "This does not correspond to the Board's understanding of the functioning of Rule 80 EPC." "If an opponent objects to a request on the grounds that one or more dependent claims fail to meet the requirements of Article 123(2) EPC, the filing of an amended set of claims in which these claims are deleted is certainly "occasioned by a ground for opposition", and the requirements of Rule 80 EPC are met. For the purposes of applying Rule 80 EPC, whether subsequent examination confirms the opponent's objections under Article 123(2) EPC or not (a judgement which could, in any event, be overturned on appeal) is [irrelevant]"
• In these circumstance, the patentee is not bound by the withdrawal of the requests during the oral proceedings before the OD, and the request are admitted in appeal. 

EPO T 2301/12 - link

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of the main request

2.1 For convenience of reference, the main request and the seven auxiliary requests which were on file at the start of the oral proceedings before the Opposition Division will be referred to as the proprietor's "initial requests".

2.2 According to Article 12(4) RPBA the Board has the power to hold inadmissible requests which could have been presented, or which were not admitted, in the first instance proceedings.

2.3 The current main request is identical to the initial main request, which was not admitted into the proceedings. The opponent argues that, regardless of whether this decision of the Opposition Division was correct, the initial main request was subsequently withdrawn (as were all of the initial requests). It was therefore not presented for a decision by the Opposition Division, and the Board should use its discretion under Article 12(4) RPBA not to admit it into the proceedings at this stage. The proprietor denies that it was ever withdrawn. The first issue to decide is therefore whether the initial requests were in fact withdrawn.

2.4 The accuracy of the minutes of the oral proceedings has never been challenged, and the Board starts from the position that they represent a faithful account of events.

According to the minutes, the Opposition Division decided not to admit any of the initial requests, and the oral proceedings were interrupted "to allow the proprietor to prepare an admissible request". The proprietor subsequently "filed a new main request and auxiliary requests 1-3 ... to replace the [initial] main request and auxiliary requests 1-3 ... Auxiliary requests 4-7 ... were withdrawn" (page 2, third paragraph).

The use of the word "replace" clearly implies that the initial main request was no longer the current main request, and since there was no attempt to retain it as a new auxiliary request either, it is difficult to avoid the conclusion that it was simply withdrawn.

2.5 The new requests were annexed to the minutes and the first of them is clearly entitled "MAIN REQUEST". The Board does not accept the argument that the titles of requests should be considered mere labels for identification. Where a proprietor files multiple requests, there must be a single main request, and it must be apparent at every stage of the proceedings which request this is. One reason why this is essential is that where the main request is not allowed, the proprietor is adversely affected by the decision, and may appeal pursuant to Article 107 EPC, whereas this would not normally be the case if the main request is allowed.

The Board therefore takes the view that filing a new main request "to replace" the initial main request constitutes withdrawal of the initial main request.

2.6 The opponent points out correctly that cases exist in which the boards have used their discretion under Rule 12(4) RPBA to refuse to admit a request in appeal proceedings on the grounds that it had been withdrawn before the department of first instance. However, this remains a matter of discretion to be exercised on a case by case basis.

In the present case the communication annexed to the summons to oral proceedings included the provisional opinion of the Opposition Division that claims 21 and 22 of the granted patent failed to meet the requirements of Article 123(2) EPC and that the subject-matter of claim 1 was not new. In response, the proprietor filed new requests ("the initial requests") one month prior to the oral proceedings, thus respecting the time limit set by the Opposition Division pursuant to Rule 116 EPC. That the initial requests were an attempt to address the above objections has not been disputed.

It was therefore not unreasonable for the proprietor to assume that these requests would be the focus of the substantive discussions at the oral proceedings. In fact, the proprietor was confronted at oral proceedings by the decision of the Opposition Division not to admit any of the initial requests. While the opponent is correct in saying that the proprietor had options available other than withdrawing the initial requests, for example, filing new auxiliary requests, the Board accepts that the proprietor had been put into the uncomfortable position of having to decide - during the oral proceedings - how to react to an unexpected turn of events.

2.7 It is for this reason that the Board considers that the correctness - or otherwise - of the Opposition Division's decision is a factor to be considered in the present case. If the Opposition Division was justified in deciding not to admit the initial requests, then the predicament in which the proprietor found itself at oral proceedings was a result of the proprietor's own actions in filing inadmissible requests. If the decision of the Opposition Division was wrong, then the proprietor arguably should not be penalised for making an inappropriate choice, under pressure, in response to an incorrect decision of the Opposition Division.

2.8 In relation to the main request, the Opposition Division decided, according to the minutes of the oral proceedings, two things: firstly that the initial main request did not meet a requirement of the EPC (namely, Article 123(2) EPC), and secondly that it "therefore was not admitted into the proceedings".

2.9 According to Article 101(3)(a) EPC, if the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled.

Conversely, the consequence of an amended request being judged not to meet the requirements of the EPC is that the Opposition Division shall decide that the patent cannot be maintained according to this request. The finding of the Opposition Division that the initial main request did not meet the requirements of Article 123(2) EPC should therefore have led to a decision that the patent could not be maintained according to this request.

Failure to meet the requirements of Article 123(2) EPC does not - by itself - render a request inadmissible, and the decision not to admit the initial main request into the proceedings therefore required a separate legal basis. No such basis was cited, and in the present case it is not apparent to the Board which provision of the EPC could have been cited as grounds for refusing to admit the initial main request.

The decision not to admit the initial main request into the proceedings was therefore flawed, and the same applies to the initial first to third auxiliary requests, which were not admitted for the same reasons.

2.10 The fourth to seventh auxiliary requests were not admitted for failure to meet the requirements of Rule 80 EPC.

Both claim 21 and claim 22 of the granted patent had been attacked by the opponent for failure to meet the requirements of Article 123(2) EPC, and the Opposition Division provisionally agreed with this conclusion in the communication annexed to the summons to oral proceedings. In response, both claims were deleted from the initial fourth to seventh auxiliary requests.

Subsequently, at the oral proceedings, the Opposition Division came to the conclusion that claim 21 did not meet the requirements of Article 123(2) EPC, but that claim 22 did. As a result, the fourth to seventh auxiliary requests were not admitted, since "deletion of claim 22 was not occasioned by a ground for opposition" contrary to the requirements of Rule 80 EPC.

2.11 This does not correspond to the Board's understanding of the functioning of Rule 80 EPC. If an opponent objects to a request on the grounds that one or more dependent claims fail to meet the requirements of Article 123(2) EPC, the filing of an amended set of claims in which these claims are deleted is certainly "occasioned by a ground for opposition", and the requirements of Rule 80 EPC are met.

For the purposes of applying Rule 80 EPC, whether subsequent examination confirms the opponent's objections under Article 123(2) EPC or not (a judgement which could, in any event, be overturned on appeal) is neither here nor there.

2.12 The Board therefore concludes that for the initial main request, and for each of the initial first to seventh auxiliary requests, the decision not to admit these requests into the procedure was not justified according to the EPC.

2.13 The Board fully accepts that it is necessary to consider the interests of both parties, and that the argument that it is unfair on the opponent to readmit requests which were previously withdrawn has merit. However, in the opinion of the Board, this is outweighed in the present case by the unfairness of penalising the proprietor for withdrawing the main request in response to an incorrect decision of a department of the EPO.

2.14 The opponent also raised the objection that the amendment to claim 1 of the main request did not comply with the requirements of Rule 80 EPC. The Board does not agree. In the notice of opposition (point 7.2.2.3) the subject-matter of claim 1 was was alleged to lack novelty based on an argument that "on" in claim 1 did not necessarily imply "in contact with". This interpretation was provisionally endorsed by the Opposition Division (point 4.2 of the annex to the summons to oral proceedings). The amendment to "on and in contact with" is a clear response to this objection and therefore complies with Rule 80 EPC. For the purposes of applying Rule 80 EPC, it is immaterial whether the opponent's novelty argument was valid or not, or if valid, whether the proprietor's response actually succeeds in overcoming it.

2.15 The main request is therefore admitted into the proceedings.

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3.6 The amendments to claims 21 and 22 are therefore found to contravene the requirements of Article 123(2) EPC, and consequently the patent cannot be maintained according to the main request according to Article 101(3)(a) EPC.

5. Admissibility of the 3rd auxiliary request

5.1 The third auxiliary request corresponds to the initial fourth auxiliary request. In the minutes of the oral proceedings it is explicitly stated that this request was "withdrawn". However, for the reasons given above in connection with the main request, this is not seen as a bar to admission into the proceedings in the present case. In addition, the Board has already given its reasons why this subject-matter is considered to comply with the requirements of Rule 80 EPC (see points 2.10 to 2.12, above).

5.2 The third auxiliary request is therefore admitted into the proceedings.

6. Third auxiliary request: Article 123(2) EPC

The Board has found that claim 1 of the main request meets the requirements of Article 123(2) EPC, but that claims 21 and 22 do not. The third auxiliary request corresponds to the main request, but with the said claims 21 and 22 deleted, and it therefore meets the requirements of Article 123(2) EPC.