Friday, 28 August 2015

T 1273/11 - Provoking appeal

Of interest in this opposition appeal is the request of the respondent that his costs are to be apportioned to the appellant as, according to the respondent, the costs related to the present appeal have been deliberately provoked by the appellant because he withheld relevant material from the first instance proceedings, and therefore prevented the opposition division from taking a complete decision encompassing also this material.

Of further interest is the Board deciding on admissibility of late filed requests, which according to the respondent should be admitted since they are a reaction to the communication of the Board and have been submitted timely before the oral proceedings, such that the appellant had enough time to do a search and prepare for discussing them.

Summary of Facts and Submissions

I. The appellant (opponent) lodged an appeal against the decision rejecting the opposition against European patent EP-B-1 474 347, and requested that the decision under appeal be set aside and that the patent be revoked.

He also submitted further written evidence and offered two new witnesses.

II. The respondent (patent proprietor) requested that the appeal be dismissed, alternatively, that the decision under appeal be set aside and the patent be maintained on the basis of any of the auxiliary requests 1 to 4, filed with the statement setting out the grounds of appeal, or on the basis of any of the auxiliary requests 5 or 6, filed with the letter dated 23 June 2015.

Additionally the respondent requested not to admit the new evidence submitted with the statement of grounds of appeal, and that his costs be apportioned to the appellant.
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V. The appellant argues, insofar as relevant for the present decision, essentially as follows.

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The fifth and sixth auxiliary requests should not be admitted into the proceedings because they are late filed and they are not clearly allowable, as the features added to the respective independent claims result from unallowable generalizations of a specific embodiment in the description.

Concerning the request for a different apportionment of costs, the appellant remarks that as this request relates to costs incurred during the opposition proceedings, it should have been presented before the opposition division and not before the Board.

VI. The respondent argues, insofar as relevant for the present decision, essentially as follows.

The appellant deliberately decided, for tactical reasons, not to attend the oral proceedings in opposition. All the costs incurred by the respondent for the preparation of the first instance oral proceedings should therefore be apportioned to the appellant.

Also the costs related to the present appeal have been deliberately provoked by the appellant, and should be apportioned to him. This is because he withheld relevant material from the first instance proceedings, and therefore prevented the opposition division from taking a complete decision encompassing also this material.

(...)

The fifth and sixth auxiliary requests should be admitted into the proceedings because, although being late filed, they are a reaction to the communication of the Board and have been submitted timely before the oral proceedings, such that the appellant had enough time to do a search and prepare for discussing them. They are also clearly allowable.

Reasons for the Decision

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6. Admissibility of the fifth and sixth auxiliary requests

6.1 These requests have been filed with letter of 23 June 2015, i.e. after the first exchange of the statement of grounds of appeal and the reply thereto. Moreover, they were filed after the issue of summons to oral proceedings.

Amended claims may be admitted into the proceedings even if they have been late filed, if the introduced amendments are properly justified, e.g. can be seen as a (timely) response to objections or evidence which were not part of the decision under appeal, the first exchange in appeal or were raised by the Board. According to the jurisprudence (see Case Law of the Boards of Appeal, 7th edition 2013, chapter IV.E.4.4.1), they should also be clearly allowable (Article 13(1) RPBA).

Such is the case when the Board can quickly ascertain that they do not give rise to new objections and that they overcome all outstanding objections, see Case Law of the Boards of Appeal, 7th edition, 2013, IV.E.4.4.2, first paragraph.

According to Article 13(3) RPBA amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

6.2 Article 13(1) RPBA

According to Article 13(1) RPBA any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Considering these criteria the Board has come to the conclusion that the fifth and sixth auxiliary requests are not to be admitted.

The Board does not share the respondent's view that the late filing of these auxiliary requests was justified as a response to the Board's communication. The latter did not contain any invitation or directions for the appellant to file such requests. In respect of the type of motors to be used, it was not introducing new aspects either, since the remarks made by the Board were not different from what was raised by the appellant in its opposition.

As far as it concerns the "clear allowability" of the claims 1 of the fifth and sixth auxiliary requests the Board follows the appellant's argument that the added features, further characterizing the motorized roller, already prima facie result in an inadmissible intermediate generalisation of the roller as described at page 6, lines 14-26 of the description as originally filed. In that passage there is not only a mention of a 48 V DC motorized roller: it should also have a diameter of approximately 50 mm and an overall width of between 500 and 900 mm. If the argument of transporting heavy loads is to hold good, at least such features should also have been taken up in claim 1.

The Board concludes that the absence of these features leads to the claiming of a roller of any possible diameter and any possible length, without basis in the originally filed application.

The requirements of Article 123(2) EPC are therefore prima facie not fulfilled.

6.3 Article 13(3) RPBA

The features added to claim 1, relating to the type of motor chosen, come from the description. This leads directly to the question whether such features have been included in the original search, or whether an additional search would be necessary.

6.3.1 Since the description is rather indifferent on the choice of motor (no particular effect is mentioned for any of the choices) it is unlikely that these features were included in the original search (Guidelines B- III, 3,5).

6.3.2 This leads to the question whether it falls upon the appellant/opponent to perform such a search. The respondent argued that the six weeks available to the appellant should suffice. However, the Board questions whether it is actually incumbent on the appellant/opponent, in the present case, to perform such a search. It would be more a question of a remittal to the opposition division to perform or order an additional search (Guidelines, D-VI, 5, see also T 1732/10, point 1.5 and T 447/09, point 2.3 of the reasons).

6.3.3 Remittal of the case to the opposition division is equivalent to adjournment of the oral proceedings.

According to the consistent jurisprudence of the Boards of Appeal in respect of an amendment of a party's case after oral proceedings have been summoned, Article 13(3) RPBA speaks against the admissibility of such requests when they lead to such an adjournment, see also Case Law of the Boards of Appeal, 7th edition, 2013, IV.E.4.4.7, second paragraph.

6.4 In view of the above negative conclusions regarding admissibility of these late filed requests, the Board decides, in accordance with Articles 13(1) and 13(3) RPBA, not to admit the fifth and sixth auxiliary requests into the proceedings.

7. Apportionment of costs

7.1 The respondent argues that the appellant deliberately decided, for tactical reasons, not to attend the oral proceedings in opposition and now abusively submits new material.

For these reasons he requests that the costs he has incurred in the present appeal proceedings be apportioned to the appellant.

This request is refused, for the following reasons.

The mere fact that an appeal against an adverse decision has been filed, and further documents have been submitted with the statement of grounds of appeal according to Article 12(2) RPBA, does not justify a finding that there has been an abuse on the part of the appellant. These documents can be seen as a legitimate response to the decision under appeal and further supplement the line of argumentation which had been unsuccessful before the opposition division, more in particular they support the arguments based on the application of standard technical knowledge by the skilled person.

In the present case the Board does not see any need or obligation that the appellant should have filed such further material already in the opposition proceedings, this rather being a matter of normal party disposition.

In the present case, for the reasons above, the submission of these new documents does not justify a deviation from the normal rule that each party bears its own costs (Article 104 EPC).

This request of the respondent for apportionment of costs must therefore be rejected.

7.2 The respondent requested during oral proceedings a different apportionment of costs in relation to the additional costs incurred because of the extremely late cancellation of the oral proceedings before the opposition division. These proceedings were to be held on a Monday, the opponent only notified its absence on the preceding Friday; the oral proceedings were cancelled by fax on that same day.

The Board establishes that this request was not submitted before the opposition division, nor did the opposition division consider and decide upon such matter in the decision under appeal.

The Board concurs with T 1059/98 (reasons point 22) which states:

"Article 21(1) EPC provides that a Board of Appeal can only examine appeals from decisions of the first instance departments of the EPO. This clearly means, in the circumstances of the present case, that the Board cannot examine and decide upon a request for apportionment of costs incurred as a result of oral proceedings before the opposition division, if that request was presented for the first time before the Board of Appeal and thus no decision has been taken on this request by the first instance."

Also this request must therefore be rejected.

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Order

For these reasons it is decided that:
The decision under appeal is set aside.
European patent No. 1 474 347 is revoked.

This decision T 1273/11 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T127311.20150811. The file wrapper can be found herePhoto "Monopoly Money" by John Morgan obtained via Flickr under CC BY 2.0 license (no changes made).

3 comments :

  1. The decision is interesting for many reasons.
    Comment 1: Late filed requests
    There is a long line of case law according to which a communication from the Board is not to be taken as an invitation to file further requests: e.g. T 1932/12.
    Even filed within the time limit under R 116(1), requests might be late when taking into consideration Art 12(2) RPBA (Completeness of a party’s case), Art 12(4) RPBA (could have been filed or was not admitted in 1st instance). Such a late filing is an amendment to a party’s case, cf. Art 13(1) RPBA. Should late requests, also those filed during oral proceedings, need postponement of oral proceedings, they may also not be admitted, cf. Art 13(1) RPBA.
    It is surprising how some “qualified representatives” seem to ignore the RPBA. They are more than 10 years old in their present version.

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  2. Comment 2: Apportionment of costs
    The mere fact that documents have only been filed in appeal and not before the opposition division does certainly not justify a different apportionment. It is indeed free party disposition when it files documents. It is however a dangerous game, as the risk of Art 12(4) RPBA (could have been filed or was not admitted in 1st instance) is not to be underestimated. They will be admitted if these “documents can be seen as a legitimate response to the decision under appeal and further supplement the line of argumentation which had been unsuccessful before the opposition division”.
    That a Board is not competent to decide in appeal on a request for apportionment which should have been filed before the opposition division is nothing new, e.g.
    T 1059/98.

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  3. Comment 3. Responsibility for further search during opposition
    The present decision is also interesting as it brings in the question of the responsibility of a supplementary search during opposition when the proprietor limits its independent claim by incorporating features from the description. See below Point 6.3.2 of the reasons.
    To my understanding, in opposition, the responsibility for the search for further prior art lies with the opponent. The proprietor might well attempt to limit his independent claim by introducing in it features from the description. When the proprietor acts thus like this, why should it be the duty of the opposition division to look for further prior art? Prima facie, even in such a situation it the duty of the opponent to find relevant prior art, and such prior art is then not considered as being late filed but perfectly admissible, cf. T 1469/10.
    There is a long line of case law according to which the proprietor is not allowed to introduce features from the description shortly before or during oral proceedings. As examples: T 2058/11, T 2043/09 or T 1890/11. In T 1642/10, the Board decided that, even if filed 6 weeks before oral proceedings, AR 4-6 were not admitted for exactly this reason.
    The present decision, is in my opinion problematic as it seems based, in my opinion on a misunderstanding of the Guidelines D-VI, 5 when it comes to supplementary searches in opposition.
    In D-VI, 5 it is stated:
    Only in exceptional cases should an additional search by the Search Division be set in train. Such a case might arise, for example, if in the opposition the main subject covered by the patent shifts to elements of a dependent claim which were originally of subsidiary importance, to elements which were previously not set out in the claims, but only in the description, …….
    Should this position of Board 3.2.07 become confirmed case law, it simply means that when the proprietor introduces features from the description, the responsibility for a further search should lie with the opposition division.
    In point 6.3.2 of the reasons, Board 3.2.07 stated the following: “This leads to the question whether it falls upon the appellant/opponent to perform such a search. The respondent argued that the six weeks available to the appellant should suffice. However, the Board questions whether it is actually incumbent on the appellant/opponent, in the present case, to perform such a search. It would be more a question of a remittal to the opposition division to perform or order an additional search (Guidelines, D-VI, 5, see also T 1732/10, point 1.5 and T 447/09, point 2.3 of the reasons).”
    For this reason, the late filed request was not admitted under Art 13(3) RPBA, but the message from the Board is perfectly clear: it is the duty of the opposition division to perform a further search in such a situation. This is anything but acceptable.
    If the opposition division brings in new prior art on its own volition, or by virtue of the Guidelines D-VI, 5, it could well be considered as taking sides with the opponent. This is also not acceptable.

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