Friday, 18 September 2015

T 327/13 - Standing and falling as a whole


This opposition appeal is against the Opposition Division's decision to maintain claim 3 as granted (in the context of claim 1 of auxiliary request 1). The appellant considered himself to be adversely affected as by the Opposition Division's decision not to maintain claim 2 as granted. Of relevance in the present case is that claim 2 as granted was not the subject of an individual request in the opposition proceedings, but rather only included as a dependent claim in the main request.

Summary of Facts and Submissions

III. The Opposition Division held that the patent proprietors' main request could not be allowed because the subject-matter of amended claim 1 lacked novelty over D1, but that, account being taken of the amendments in the patent proprietors' auxiliary request 1, the patent and the invention to which it relates meet the requirements of the EPC.

IV. This interlocutory decision has been appealed by the patent proprietors (in the following "the appellants").

(...)

IX. The written and oral arguments of the appellants, insofar as they are relevant for the present decision, can be summarised as follows:

The Opposition Division's decision to maintain claim 3 as granted (in the context of claim 1 of auxiliary request 1) is not challenged; however, the appellants are adversely affected by the Opposition Division's decision not to maintain claim 2 as granted, although its subject-matter is novel and inventive in view of D1 (WO 00/35614 A1, filed with the notice of opposition and cited in the decision under appeal).

Clearly the appellants are adversely affected by the Opposition Division's decision to dismiss their main request. It also follows from T 528/93 that, only when a request is withdrawn during the opposition proceedings and re-filed in appeal, is the appellant not adversely affected by the decision of the Opposition Division as far as this request is concerned. In the present case, the appellants did not withdraw their main request and thus, following the reasoning of T 528/93, they are adversely affected by the decision of the Opposition Division to dismiss it.


It is established case law, see for instance T 760/08 (point 2 of the reasons) and T 1708/08 (point 1.3 of the reasons), that the statement of the grounds for appeal satisfies the requirements of Article 108 EPC, third sentence, even if it does not state any specific reason why the decision is contested, provided there is a change in the subject of the proceedings due to the filing of new claims and where the reasons for the decision are no longer relevant in view of the new claims. The appellants filed two new sets of claims which remedy the deficiency of the appellants' main request as identified by the Opposition Division in its decision. Thus, the appeal should be considered as being sufficiently substantiated.


Reasons for the Decision
1. The contested decision

1.1 The Opposition Division refused the proprietors' main request for lack of novelty of claim 1 in view of D1, and held that claim 1 of the proprietors' auxiliary request 1 was allowable.

1.2 The subject-matter of claim 1 of the main and auxiliary request 1 addressed in the decision corresponds essentially to that of granted claim 1 and granted dependent claim 3, respectively.

2. Admissibility of the appeal

2.1 Article 107 EPC, first sentence, states that any party to proceedings adversely affected by a decision may appeal.

2.2 The Board considers that, to establish whether a party has been adversely affected by a decision, it is not enough to consider the end result in isolation, but to consider the party's complete case, as is defined in Article 12(2) RPBA, in conjunction with the substance of the decision.

2.3 In the present case it is clear that the appellants are adversely affected by the Opposition Division's decision not to accede to the then main request. However, as follows from the statement setting out the grounds of appeal and the two new set of claims filed with it as main and auxiliary request, that this decision has not been contested with the appeal.

2.3.1 On page 1 of the grounds of appeal, the appellants state their satisfaction with "the Decision in that claim 3 as granted was maintained". The appeal is actually against the decision of the Opposition Division that "claim 2 as granted was not maintained". The appellants have filed two new sets of claims with the grounds of appeal, each comprising a new independent claim 2 that includes "the subject matters of claims 1 and 2 as granted with further limitations being added thereto" (see page 1, paragraph 1 of the grounds of appeal). In pages 2 to 5 of the grounds of appeal, the appellants only indicate why the subject-matter of this newly filed independent claim based on claim 2 as granted is novel and inventive in view of D1.

2.3.2 The appellants do not defend the main request as filed before the Opposition Division, wherein claim 2 as granted figured. The grounds of appeal do not address this request at all, let alone indicate any reason for setting aside or amending the decision of the Opposition Division's decision that claim 1 of this request lacks novelty over D1. On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division.

2.3.3 Each of the new sets of claims according to the main and auxiliary requests comprise:

- an independent claim 1, which corresponds to a combination of claims 1 and 3 as granted;

- an independent claim 2, which corresponds to a combination of claims 1 and 2 as granted, with further features taken from Figure 2; and

- dependent claims 3 and 4, which correspond to dependent claims 8 and 9 as granted.

Thus, these new claim sets differ essentially from the set of claims according to the auxiliary request 1 as filed during the opposition proceedings only in that an additional new independent claim based on claim 2 as granted has been incorporated.

2.3.4 All this can only be understood to mean that the patent proprietors are not adversely affected by the Opposition Division's decision to dismiss the main request filed in the opposition proceedings, but by the non-maintenance of an independent claim based on claim 2 as granted, in addition to the duly filed (and maintained) independent claim based on claim 3 as granted.

However, the subject-matter of claim 2 as granted was not the subject of an individual request in the opposition proceedings, so that it has not been addressed as such in the decision of the Opposition Division. It is reminded that requests stand or fall as a whole, not as individual claims. In the present case, it was enough for independent claim 1 not to be allowable for the entire main request to fall, so that it cannot be considered that claim 2, which defines an alternative preferred embodiment to that defined in claim 3 as granted, has been dealt with per se with the rejection of the main request.

2.3.5 The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division.

2.4 Therefore, in view of the appellants' case, the Board considers that they cannot be regarded as "adversely affected" by the decision of the Opposition Division and thus are not entitled to appeal under Article 107 EPC.

2.5 The appellants referred to T 528/93 in support of their submissions. In this case, a request was withdrawn during opposition proceedings and was thus not the subject of the contested decision; the board decided that a virtually identical request filed during appeal proceedings was not the subject of the appeal, because the appellant was not adversely affected by the decision of the opposition division as far as this request was concerned. The appellants in the present case relied on this legal argument and argued that, when the premise of T 528/93 is false, i.e. when a patent proprietor does not withdraw a claim request in opposition, then the conclusion of T 528/93 is inevitably false, i.e. the proprietor is adversely affected by a decision dismissing this request. In this Board's opinion this argument is logically flawed: it is an example of the so-called "denying the antecedent" logical fallacy (in terms of formal logic: if P, then Q; not P, therefore not Q). In addition, the Board finds that the circumstances are not comparable, since - as explained above - in the present case the appellants' main and auxiliary requests were filed for the first time with the grounds of appeal, so that the issue of (non) withdrawal cannot play a role in the evaluating the case.

2.6 Finally, the present appeal is not sufficiently substantiated to satisfy the requirements of Article 108, third sentence, together with Rule 99(2) EPC. It is established case law, see e.g. T 760/08 and T 1708/08 as cited by the appellants, that an appeal can be based on new amended claims in so far as the amendments are intended to address the reasons of the contested decision. In the present case, however, it is readily apparent that the new sets of amended claims are not intended to address the reason in the Opposition Division's decision to refuse the main request (see point 2.3 above).

2.7 In conclusion, the appeal does not meet the requirements of Articles 107 and 108 EPC and is thus not admissible.

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.


This decision T 327/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T032713.20150717. The file wrapper can be found here.

5 comments :

  1. So, if they would have just appealed properly against the original main request (claims as granted) and argued against the objections (claim 1 as granted is not novel), they could have probably fallen-back on claim 2 during the proceedings?
    That seems harsh.
    From the decision, it looks like the opponent did not appeal - so has reformatio in peius played a role?

    ReplyDelete
  2. Appeal procedures have the primary aim to verify whether the first instance decision was justified or not. As the decision of the first instance was as such not challenged, the appeal could not be admissible. At the end of the opposition procedure the patent was maintained on the basis of claims 1+3 as granted. By the way all dependent claims 2-9 were dependent on claim 1 as granted.
    Claiming in appeal that 1+2 should have been envisaged by the OD or the Board was somehow naïve, not to say more.
    Appeal is not there to give the proprietor a further chance, if he did not grab it in first instance.
    Even if he had appealed the non-allowability of claim 1 as granted, he could not fall back on claims 1+2 during the procedure, as this request would have represented an amendment to its case, see Art 13(1)RPBA, and moreover should have been filed in first instance, see Art 12(4) RPBA. even if filed immediately when entering appeal, Art 12(4)RPBA, the proprietor would have been faced with Art 12(4)RPBA and the appeal dismissed for lack of an allowable or admitted request in appeal.
    The decision is by no way harsh, it corresponds to the current practice of the Boards of Appeal.
    It would have been easy for the proprietor to file such a request during OP before the first instance, as a combination of granted claims is in principle always admissible during OP before the OD as it does not change the legal and factual framework of the opposition.
    It is surprising to see how often qualified representatives consider appeal a continuation of first instance proceedings. Even if the client requests such a thing, there should be no illusion as to the chances of success.

    ReplyDelete
  3. When looking at the file, it appears that the Board of Appeal did indeed draw the attention of the parties to the prohibition of reformatio in peius as the proprietor was the only opponent.
    It remains that the problem of not having claimed 1+2 before the OD could not be overcome.
    From the file, it results as well that the original representative of the proprietor requested postponement of the OP in view of school holidays, without explaining why another qualified representative could not come, and without giving any proof of already booked holiday.
    The Board accepted the holiday reason, without proof, what is quite benevolent, but not the absence of reasons for non-substitution as this rule was known since 2007, cf. Special Ed. OJ 2007 and is repeated every year. The date set remained. Some homework was forgotten....
    Sub-authorisation was then given to another representative.

    ReplyDelete
  4. This decision goes against the established case law that a substantiated intermediate request is enough for admissibility. It goes without saying that a claim request with two alternatives is intermediate between no patent and only one alternative !

    ReplyDelete
  5. Which case law are talking about? Probably German case law, but certainly not European case law.

    What has happened here is that the German representative of the proprietor was expecting the BA to be acting in the same way as does the BPatG. Having filed 1+3 in front of the OD and lost on claim 1, he expected that the BA would also look at the previous combination 1+2 as it is usual in Germany. The BA was not prepared to play this game. It is not uncommon for German representatives to try this, and they regularly end up with a bloody nose.

    Before continuing long discussions, we should look at the decision itself. The decision and the reasons given are perfectly clear.

    That the proprietor was aggrieved by the decision of the OD is not in dispute. The Board even acknowledges this, see 2.3 “In the present case it is clear that the appellants are adversely affected by the Opposition Division's decision not to accede to the then main request”. What the Board added, is that this decision was not challenged in the grounds for appeal, cf. 2d sentence in Point 2.3.

    Moreover the Board went further and considered in 2.3.1 that “On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division”.

    If an appellant does not challenge the decision of the first instance, the only possible conclusion was that the appeal could not be admissible. This is the more so, since the Board also said in 2.3.1 “On page 1 of the grounds of appeal, the appellants state their satisfaction with "the Decision in that claim 3 as granted was maintained".

    In 2.3.5 the Board further stated “The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division”.
    .
    The decision could not be more transparent.

    Another way at looking at this is the appellant wanting the BA to take position on a request which was never subject of first instance proceedings.

    ReplyDelete

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