T 0099/16 - Lose the claims as held allowable by OD

 Key points

•  Both patentee and opponent appeal. The board observes in the preliminary opinion that " the version of the patent held by the opposition division to meet the requirements of the appeal is no longer pursued by the patent proprietor".
• "  [Patentee] argued that their intention had always been to defend the version of the patent as maintained by the opposition division, i.e. auxiliary request 1. This was clear from the fact that they invested a great deal of effort in presenting complete lines of argument in order to defend this request in their reply to [the opponent's] statement of grounds dated 22 July 2016. They never explicitly abandoned auxiliary request 1, such that it had always been in the appeal proceedings. There was an obvious mistake in the numbering of the auxiliary requests [1 to 6] in the letter dated 10 January 2017 that they corrected by letter dated 18 March 2020 [by renumbering them as AR-2 to 7]. " 
• The Board is not convinced. "the allegedly obvious mistake in the letter of 10 January 2017 arises neither from the letter itself nor from the fact that no change in the appeal file occurred between [patentee's] letters dated 22 July 2016 and 10 January 2017. As a matter of fact, a party is entitled to change their requests at any time during the proceedings without justification when it concerns withdrawals, whether tacit or not. As a result, there was no reason to doubt whether the letter of 10 January 2017 reflected the real intention of [patentee] at that time." 
• " Since the maintenance of the version of the patent as upheld by the opposition division was not comprised in the requests filed on 10 January 2017, auxiliary request 1 is considered to be re-filed with letter dated 18 March 2020." 
• " Since the re-filing of auxiliary request 1 was done after the parties' replies, even after the board's communication pursuant to Article 15(1) RPBA 2020, a justification from [patentee] for its admissibility into the appeal proceedings is mandatory. Even if the RPBA 2007 had still been applicable, a justification would have been necessary in order for the board to judge whether it should exercise its discretion under Article 13 RPBA 2007 in favour of the patent proprietor.  However, [patentee] did not provide any valid justification for the re-filing of auxiliary request 1 after the board's communication but relied solely on their "obvious mistake" arguments, so that the request cannot be admitted into the proceedings already for this reason alone (Article 13(1) RPBA 2020)." 
  
  
• The requests 2-7 filed with the letter of 10 January 2017 are not admitted either.
• " Article 13(1) RPBA 2020 applies. In order to take into account that RPBA 2020 entered into force after the actual filing of auxiliary requests 2 to 7, the attention of [patentee] was drawn to the lack of justification for the late filing of these requests in the communication of 3 February 2020 (point 5.1). Therefore [patentee] had the opportunity to provide in a timely manner a justification as required by Article 13(1) RPBA 2020." 
• " However, [patente's] arguments merely reflect the course of the appeal proceedings and do not constitute a justification for the late-filing of auxiliary requests 2 to 7 with the letter dated 10 January 2017. Said letter was filed nearly six months after the parties' replies and is therefore an amendment to [patentee's] case according to Article 13(1) RPBA 2020, irrespective of whether or not something happened in the interim and of how far in advance of the oral proceedings it was filed." 
• The main request was found to lack an inventive step (the Board agreeing with the OD). None of the auxiliary requests was admissible and the patent is revoked.
• Note, where the Board writes "Said letter was filed nearly six months after the parties' replies and is therefore an amendment to [patentee's] case according to Article 13(1) RPBA 2020", probably this means no more than that the letter of 10 January 2017 was not the patentee's reply to the Statement of grounds of the opponent, but a subsequent letter.

T 0099/16

https://www.epo.org/law-practice/case-law-appeals/recent/t160099eu1.html

2. Auxiliary request 1

2.1 By letter dated 10 January 2017, appellant II explicitly stated their requests on page 2 as follows:

"- It is requested to set aside the decision of the Opposition Division dated 20 November 2015 and

to maintain the patent as granted. 

- Auxiliary, it is requested to maintain the patent in amended form based on the amended claims of the respective auxiliary request enclosed to this letter. 

- Further, oral proceedings are requested."

In its communication pursuant to Article 15(1) RPBA 2020 dated 3 February 2020, point 6, item 2, the board observed:

"- that the version of the patent held by the opposition division to meet the requirements of the appeal is no longer pursued by the patent proprietor".

In reply to the board's communication, appellant II stated by letter dated 18 March 2020:

"that the Patent Proprietor confirms that he still intends to pursue the patent as maintained by the opposition division, i.e. according to the first auxiliary request of the first instance proceedings. This auxiliary request, of course, forms the first auxiliary request. The numeration of any following auxiliary request has to be adjusted accordingly. Thus, former auxiliary requests 1 to 6 become auxiliary requests 2 to 7. "

As mentioned in the board's communication dated 12 May 2020, point 4, item 1:

"Admissibility of former auxiliary request 1 as maintained by the opposition division (now "renamed" auxiliary request 1 again in appeal proceedings) is at stake (Articles 12(4), 13(1) and 13(3) RPBA 2007 and Article 13(1) RPBA 2020)."

2.2 At the oral proceedings before the board, appellant II argued that their intention had always been to defend the version of the patent as maintained by the opposition division, i.e. auxiliary request 1. This was clear from the fact that they invested a great deal of effort in presenting complete lines of argument in order to defend this request in their reply to appellant I's statement of grounds dated 22 July 2016. They never explicitly abandoned auxiliary request 1, such that it had always been in the appeal proceedings. There was an obvious mistake in the numbering of the auxiliary requests in the letter dated 10 January 2017 that they corrected by letter dated 18 March 2020. The mistake in the letter dated 10 January 2017 was all the more obvious since there was no occurrence in the appeal proceedings since their letter dated 22 July 2016, i.e. no letter from the appellant's side or from the board, which could have justified their modifying their intention to pursue the version of the patent as maintained by the opposition division.

In view of the above reasons, auxiliary request 1 had always been in the appeal proceedings and, hence, was not to be considered as deemed re-filed by letter dated 18 March 2020.

2.3 The board does not share the appellant's view for the following reasons, which were discussed at the oral proceedings.

Appellant II's letter dated 10 January 2017 clearly recites on page 2 the requests in their entirety, i.e. including the request to hold oral proceedings, and in a logical order. With respect to the auxiliary requests, reference is made therein only to the amended claims of the respective auxiliary request enclosed with this letter, i.e. auxiliary requests 1 to 6 renumbered as auxiliary requests 2 to 7 by the subsequent letter from appellant II dated 18 March 2020. Hence, no wrong numbering can be derived from the letter dated 10 January 2017 as far as the auxiliary requests are concerned, and the version of the patent as maintained is neither explicitly nor implicitly mentioned therein.

Hence, the allegedly obvious mistake in the letter of 10 January 2017 arises neither from the letter itself nor from the fact that no change in the appeal file occurred between appellant II's letters dated 22 July 2016 and 10 January 2017. As a matter of fact, a party is entitled to change their requests at any time during the proceedings without justification when it concerns withdrawals, whether tacit or not. As a result, there was no reason to doubt whether the letter of 10 January 2017 reflected the real intention of appellant II at that time.

Moreover, neither in their letter of 18 March 2020, nor at any other moment before the oral proceedings did the patent proprietor try to explain that the letter of 10 January 2017 contained a mistake and did not signify a change of mind. This was argued for the first time at the oral proceedings.

Since the maintenance of the version of the patent as upheld by the opposition division was not comprised in the requests filed on 10 January 2017, auxiliary request 1 is considered to be re-filed with letter dated 18 March 2020.

2.4 The revised Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force on 1 January 2020. Subject to the transitional provisions (Article 25 RPBA 2020), the revised version also applies to appeals pending on the date of the entry into force. As a consequence, Article 13(1) RPBA 2020 applies in the present case (see e.g. T 634/16, points 7 to 14 of the reasons). The board drew the attention of the parties to Article 13(1) RPBA 2020 in the communications of 3 February 2020 and 12 May 2020.

Article 13(1) RPBA 2020 states that any amendment to a party's appeal case after it has filed its grounds of appeal or reply is subject to the party's justification for its amendment and may be admitted only at the discretion of the Board.

Since the re-filing of auxiliary request 1 was done after the parties' replies, even after the board's communication pursuant to Article 15(1) RPBA 2020, a justification from appellant II for its admissibility into the appeal proceedings is mandatory. Even if the RPBA 2007 had still been applicable, a justification would have been necessary in order for the board to judge whether it should exercise its discretion under Article 13 RPBA 2007 in favour of the patent proprietor.

2.5 However, appellant II did not provide any valid justification for the re-filing of auxiliary request 1 after the board's communication but relied solely on their "obvious mistake" arguments, so that the request cannot be admitted into the proceedings already for this reason alone (Article 13(1) RPBA 2020).

3. Auxiliary requests 2 to 7

3.1 Auxiliary requests 2 to 7 were filed for the first time with the appellant II's letter dated 10 January 2017, after filing the reply to appellant I's statement of grounds of appeal and after expiry of the period in Article 12(1)(b) RPBA 2007. Therefore they were not part of the submissions to be taken into account under Article 12(4) RPBA 2007, but constituted an amendment to appellant II's case. Hence, as in the case of auxiliary request 1, Article 13(1) RPBA 2020 applies, see point 2.4 above.

3.2 Appellant II argued at the oral proceedings that auxiliary requests 2 to 7 were based on the non-admitted auxiliary request 1, i.e. their claims 1 were merely further restricted with respect to claim 1 of auxiliary request 1. Furthermore, that they had been filed only six months after the reply of 22 July 2016, without any change in the file in the interim, and three years before the board's first communication. They did not imply any procedural delay. They were to be considered as a legitimate reply to appellant I's reply and, hence, part of the proceedings. At the time of their filing, the board's criteria, set in the then valid Rules of Procedures of the Boards of Appeal (2007) for admitting late-filed requests, were not as strict as now in RPBA 2020. For these reasons, auxiliary requests 2 to 7 were to be admitted into the appeal proceedings.

Appellant II further argued that, if the list of requests in letter of 10 January 2017 was considered valid and complete (and thus did not include auxiliary request 1), it was contradictory to not admit auxiliary requests 2 to 7 which were explicitly mentioned in said list of requests and were actually filed with said letter.

3.3 The board does not share appellant II's view for the following reasons discussed at the oral proceedings.

As already mentioned under point 3.1 above, Article 13(1) RPBA 2020 applies. In order to take into account that RPBA 2020 entered into force after the actual filing of auxiliary requests 2 to 7, the attention of appellant II was drawn to the lack of justification for the late filing of these requests in the communication of 3 February 2020 (point 5.1). Therefore appellant II had the opportunity to provide in a timely manner a justification as required by Article 13(1) RPBA 2020.

However, appellant II's arguments merely reflect the course of the appeal proceedings and do not constitute a justification for the late-filing of auxiliary requests 2 to 7 with the letter dated 10 January 2017. Said letter was filed nearly six months after the parties' replies and is therefore an amendment to appellant II's case according to Article 13(1) RPBA 2020, irrespective of whether or not something happened in the interim and of how far in advance of the oral proceedings it was filed.

Finally, a party is entitled to modify their requests at any point in time of the proceedings. However, the admissibility of any new late-filed requests can be questioned. With its letter dated 10 January 2017, appellant II omitted auxiliary request 1 (see point 2 above) and filed for the first time new auxiliary requests 2 to 7. The question of admissibility of auxiliary request 1, re-filed with letter dated 18 March 2020, is independent of the question of admissibility of auxiliary requests 2 to 7 filed for the first time with the letter of 10 January 2017. The board cannot see why there would be a contradiction between the assessment of admissibility of auxiliary request 1, on the one hand, and of auxiliary requests 2 to 7, on the other hand.

In the absence of valid justification for their late-filing, auxiliary requests 2 to 7 are not admitted into the proceedings (Article 13(1) RPBA 2020).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.