T 0309/21 - Carry-over requests and proof discretionary decision

Key points

•  The proprietor and the opponent both appeal against the decision of the OD that the patent as amended can be maintained in amended form.

•  With its grounds of appeal, the patent proprietor requested that the decision under appeal be set aside and the patent be maintained as granted or, as an auxiliary measure, that the patent be maintained according to one of

  - auxiliary request 1 as filed with its grounds of appeal; or

  - auxiliary request 2 (corresponding to auxiliary request 1 before the opposition division which was found to meet the requirements of the EPC); or

  - auxiliary requests 3 to 8 or 10 to 21 (all as filed with its grounds of appeal).

• Note, requests 3-8 and 10-21 are pre-emptive with the SoG of the proprietor; the proprietor  could have filed them with their reply to the SoG of the opponent .

•  The proprietor withdraws their appeal. The Board therefore begins with AR-2. AFter a discussion of inventive step, AR-2 is found to be not allowable.

  
  

• " In the same manner as that found for auxiliary request 3 (see point 2. above), auxiliary requests 4 to 8 and 10 to 17 also lack substantiation as required by Article 12(3) RPBA. Discussion of novelty and inventive step (where any can be seen as having been made at all) is primarily limited to referring to arguments presented for the main request and auxiliary request 1, yet such a reference is of no assistance in understanding how auxiliary requests 4 to 8 and 10 to 17 may overcome the objections to those requests, since the added features are simply not present there. Where the statement is made that the newly added features in claim 1 of a particular request are not disclosed in E1 or E2, this does not address any issues concerning inventive step and why, with the particular features added in the request, these would overcome any particular objections which were based on the combination with further documents. In view of the number of features which have been added and the lack of convergence it is also not self-evident which objections are intended to be addressed by the respective requests."

• Auxiliary requests 18 to 20 are carry-over requests. "These auxiliary requests were on file before the opposition division as auxiliary requests 5a, 5b and 6 but the impugned decision was not based on these requests. According to Article 12(4) RPBA such requests are to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the first instance proceedings."

• "The proprietor has [] not demonstrated that these auxiliary requests were admissibly raised in the opposition proceedings. The proprietor provided the date on which these auxiliary requests were filed during the opposition proceedings and explained that they were just based on combinations of granted claims. However, the proprietor did not present any reasoning why the requests were admissibly raised at that stage of the opposition proceedings. In this respect the Board holds that not every claim request submitted after the expiry of the time limit set under Rule 79(1) EPC, but before the expiry of the time limit set under Rule 116(1) EPC, is automatically admissibly raised (see e.g. T 364/20, Reasons 7.2.3). Rather, this depends on several criteria, one of which may be procedural economy depending on the case in question, and in many cases convergence with higher ranking claim requests (see T 364/20, Reasons 7.2.10). In the present case it is thus, without further explanations from the proprietor, not evident that the auxiliary requests were admissibly raised during the opposition proceedings.

• As a comment, because decisions on admissibility are discretionary, what kind of proof could be given of how the OD would have decided if they had arrived at the set of claims? Is this like requiring proof of tossing a coin?

• " In the present case, with higher ranking auxiliary requests having been inserted before auxiliary requests 18 to 20, the overall sequence of auxiliary requests for consideration relative to the opposition has changed, which materially changes the focus of auxiliary requests 18 to 20. This has also led to a lack of convergence because the higher ranking requests are based on combinations with dependent claims and also include newly introduced features from the description (see e.g. the opponent's analysis on page 10 of its reply to the proprietor's grounds of appeal). In the Case Law of the Boards of Appeal such a change of case resulting from the introduction of higher ranking requests has been regarded as an amendment (see with respect to Article 13(1) RPBA: T 1185/17, Reasons 3.1; T 2112/16, Reasons 7.1; and with respect to Article 12(4) RPBA: T 1516/20, reasons 2.8)."
• This appears to be possibly a new ground for losing a carry-over request in appeal. I'm not sure if this is envisaged under  Art.12(4). I'm not sure if it strikes a fair balance between quality of the decision (and legal peace, see T 0732/21) and procedural efficiency. 

 

EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t210309eu1

4. Auxiliary requests 18 to 20

4.1 These auxiliary requests were on file before the opposition division as auxiliary requests 5a, 5b and 6 but the impugned decision was not based on these requests. According to Article 12(4) RPBA such requests are to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the first instance proceedings.

4.2 In the present case, with higher ranking auxiliary requests having been inserted before auxiliary requests 18 to 20, the overall sequence of auxiliary requests for consideration relative to the opposition has changed, which materially changes the focus of auxiliary requests 18 to 20. This has also led to a lack of convergence because the higher ranking requests are based on combinations with dependent claims and also include newly introduced features from the description (see e.g. the opponent's analysis on page 10 of its reply to the proprietor's grounds of appeal). In the Case Law of the Boards of Appeal such a change of case resulting from the introduction of higher ranking requests has been regarded as an amendment (see with respect to Article 13(1) RPBA: T 1185/17, Reasons 3.1; T 2112/16, Reasons 7.1; and with respect to Article 12(4) RPBA: T 1516/20, reasons 2.8).

4.3 The proprietor has also not demonstrated that these auxiliary requests were admissibly raised in the opposition proceedings. The proprietor provided the date on which these auxiliary requests were filed during the opposition proceedings and explained that they were just based on combinations of granted claims. However, the proprietor did not present any reasoning why the requests were admissibly raised at that stage of the opposition proceedings. In this respect the Board holds that not every claim request submitted after the expiry of the time limit set under Rule 79(1) EPC, but before the expiry of the time limit set under Rule 116(1) EPC, is automatically admissibly raised (see e.g. T 364/20, Reasons 7.2.3). Rather, this depends on several criteria, one of which may be procedural economy depending on the case in question, and in many cases convergence with higher ranking claim requests (see T 364/20, Reasons 7.2.10). In the present case it is thus, without further explanations from the proprietor, not evident that the auxiliary requests were admissibly raised during the opposition proceedings.

4.4 Auxiliary requests 18 to 20 are found, therefore, to be an amendment under Article 12(4) RPBA, according to the last sentence of which, the admittance of these requests is at the Board's discretion in view of inter alia the need for procedural economy.

4.5 As also indicated in the analysis on page 10 of the opponent's reply to the proprietor's grounds of appeal, the respective claim 1 of these auxiliary requests are broadly not convergent from their higher ranking auxiliary requests, such that at least procedural efficiency is negatively impacted by these requests.

4.6 In its communication under Article 15(1) RPBA the Board indicated that, due to the effect on procedural economy caused by this lack of convergence, it intended to exercise its discretion not to admit auxiliary requests 18 to 20 into the proceedings. To this preliminary opinion, the patent proprietor provided no counter-arguments. The Board thus hereby confirms its preliminary opinion and exercises its discretion under Article 12(4) RPBA not to admit auxiliary requests 18 to 20 into the appeal proceedings.

5. Auxiliary request 21

5.1 In the same manner as that found for auxiliary request 3 (see point 2. above), auxiliary request 21 also lacks the requisite substantiation required by Article 12(3) RPBA.

5.2 In its communication under Article 15(1) RPBA the Board indicated that it intended not to admit auxiliary request 21 into the proceedings on account of this being unsubstantiated. To this preliminary opinion, the patent proprietor provided no counter-arguments.

5.3 The Board thus hereby confirms its preliminary opinion and exercises its discretion not to admit auxiliary request 21 under Article 12(5) RPBA.

6. No further requests of the proprietor are on file and none of the proprietor's requests in the proceedings is allowable. Absent any requests upon which the patent can be maintained, revocation of the patent is to be ordered.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.