Tuesday, 7 March 2017

T 1768/11 - Almost destroyed the chance to present new requests with the statement of grounds


In the Annex to the summons for oral proceedings, the Examining Division raised objections under Art. 84, 123(2) and 56 EPC.  The applicant responded by requesting "that instead of Oral Proceedings an appealable decision be issued based on the state of the file". The applicant neither commented on the substance of the communication nor submitted amended claims. After the Examining Division had issued the requested decision, the applicant filed the present appeal and, with its statement of grounds of appeal, replaced its sole substantive request with a new main request and first and second auxiliary request. The applicant hereby took a major risk: when wanting to file new requests, the proper reaction would have been to comment on the objections and file amended claims in first instance proceedings, as Art. 12(4) Rule of Procedure of the Board of Appeal allows the Board to held requests inadmissible that could -and should- have been presented in first instance. Luckily, the Board decided to exercise this discretionary power in the appellant's favour and to admit them into the proceedings (... but they failed on Art.123(2) and 84).

Summary of Facts and Submissions

I. The applicant (appellant) appealed against the decision of the Examining Division refusing European patent application No. 03774370.5, which was filed as international application PCT/KR2003/002627 and published as WO 2004/053870.

II. The decision was issued as a so-called "decision on the state of the file" on EPO Form 2061 in response to a corresponding request by the appellant filed by letter of 8 March 2011. For the reasons for the refusal the form referred to the communications of the Examining Division dated 2 June 2008 and 7 December 2010.

The communication dated 2 June 2008 was based on the claims "as published". It cited documents D1, D2 and D3 and raised objections under Articles 54, 56 and 84 EPC.

The communication dated 7 December 2010 was based on claims 1 to 11 filed with the letter of 2 October 2008 and was annexed to a summons to oral proceedings. It cited a document D10 and raised the following objections:

- the feature added to claim 1 as published infringed Article 123(2) EPC;
- the same feature of claim 1 violated Article 84 EPC;
- claim 1 lacked an essential feature, contrary to Article 84 EPC;
- the subject-matter of claim 1 lacked inventive step over a combination of documents D10 and D3; and
- the same objection of lack of inventive step applied to the subject-matter of corresponding independent claims 5 and 9.

III. With the statement of grounds of appeal, the appellant submitted a main request and first and second auxiliary requests.

IV. In a communication accompanying a summons to oral proceedings, the Board questioned whether the statement of grounds of appeal was sufficiently substantiated and whether the newly filed requests should be admitted into the proceedings. It further expressed the preliminary view that independent claims 1, 5 and 9 of the main request and of the first auxiliary request and independent claim 5 of the second auxiliary request infringed Articles 84 and 123(2) EPC and that the subject-matter of the independent claims of each request lacked inventive step.

V. With a letter dated 9 January 2017, the appellant filed an amended main request and amended first and second auxiliary requests and informed the Board that it would not be represented at the oral proceedings.

VI. Oral proceedings were held on 7 February 2017 in the appellant's absence. At the end of the oral proceedings, the chairman pronounced the Board's decision.

VII. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the claims of the main request or, in the alternative, on the basis of the claims of one of the first and second auxiliary requests. Alternatively, the appellant requested "allowance of the application based on such other claim set it approves that the Board of Appeal will allow" (see page 3 of the statement of grounds of appeal).

VIII. Claim 5 of the main request reads as follows:

"A method of recording information on and/or reproducing information from an information storage medium, the method comprising: [...]."

Claim 5 of each of the first and second auxiliary requests is identical to claim 5 of the main request.

IX. The appellant's arguments as relevant to the decision are discussed in detail below.

Reasons for the Decision

1. Admissibility of the appeal

1.1 According to Rule 99(2) EPC, the statement of grounds of appeal is to indicate the reasons for setting aside the decision impugned. If this requirement is not complied with before expiry of the time limit for filing the statement of grounds of appeal, the appeal is to be rejected as inadmissible (Rule 101(1) EPC). For the statement of grounds of appeal to comply with Rule 99(2) EPC, it should address in sufficient detail each of the grounds for the decision (see decision T 305/11 of 26 April 2016, reasons 1.1, and the decisions cited there). In principle, a ground for refusal can be addressed by arguing why the objection raised was incorrect or by amending the application and explaining why the objection is no longer relevant.

1.2 In the present case, one of the grounds for refusal is lack of inventive step in the subject-matter of independent claims 1, 5 and 9 of the set of claims filed with the letter of 2 October 2008. With the statement of grounds of appeal, the appellant amended these claims in accordance with a main request and first and second auxiliary requests and submitted arguments in support of inventive step. These arguments fully rely on the feature "the information storage medium is a read-only storage medium" added to independent claims 1 and 9 of each request. Independent claim 5 of each request, however, was identical to claim 5 of the set of claims filed with the letter of 2 October 2008 and did not include this feature. Hence, it could be argued that the statement of grounds of appeal fails to address the lack of inventive step objection raised against claim 5.

1.3 At the same time, it is apparent that the appellant, when preparing the statement of grounds and the replacement application documents, must have overlooked the fact that its claims included an independent claim 5 in addition to independent claims 1 and 9. In fact, not only did the appellant fail to add a limitation to a read-only storage medium to claim 5 of all requests, but it also forgot to apply to claim 5 of the two auxiliary requests any of the other amendments that it did make to independent claims 1 and 9 of those requests. In its letter of 9 January 2017, the appellant confirmed that it had overlooked independent claim 5.

1.4 Thus, it is evident from the statement of grounds of appeal how the appellant intended to overcome the lack of inventive step objections raised against all independent claims. The Board considers, therefore, that the statement of grounds of appeal does address these grounds for refusal in sufficient detail.

1.5 As the statement of grounds of appeal also addresses the remaining grounds for refusal of the set of claims filed with the letter of 2 October 2008, namely by giving arguments why the objections under Articles 84 and 123(2) EPC were not justified, the appeal is sufficiently substantiated.

1.6 The appeal also complies with the other provisions referred to in Rule 101 EPC. It is therefore admissible.

2. The decision under appeal

2.1 According to the contested decision, the applicant was informed in the communications dated 2 June 2008 and 7 December 2010 of the reasons why the application did not meet the requirements of the EPC. This can only be taken to mean that the grounds for refusal are the objections raised in those two communications.

The communication dated 2 June 2008 was based on the claims (and other application documents) "as published" and contained objections under Articles 54, 56 and 84 EPC. By letter of 2 October 2008, the applicant replaced the claims as published with a set of amended claims 1 to 11. The objections raised in the communication of 2 June 2008, which form part of the grounds for refusal, are thus based on a text that was no longer approved by the applicant. This is in violation of Article 113(2) EPC, which requires the EPO to decide on a European patent application only in the text submitted to it, or agreed by, the applicant.

2.2 In the present case it can be deduced from the file that the Examining Division intended to refuse the application for the reasons given in the communication dated 7 December 2010. That communication was self-contained and clearly identified both the text on which it was based and the objections being raised. Furthermore, it is apparent from the statement of grounds of appeal, which refers only to the "Summons dated 7 December 2010" and the objections raised therein, that the appellant had not been confused by the superfluous and incorrect reference to the communication of 2 June 2008. The Board therefore considers that, despite the fundamental character of Article 113(2) EPC, an immediate remittal to the Examining Division would serve no purpose.

3. Admission of the main request and first and second auxiliary requests

3.1 In its communication, the Board expressed concerns as to whether the main request and first and second auxiliary requests filed with the statement of grounds of appeal should be admitted into the proceedings under Article 12(4) RPBA. These concerns are still valid for the current main request and first and second auxiliary requests, which were obtained from the previous requests by including in claim 5 of each request a feature specifying that the information storage medium is a read-only information storage medium.

3.2 The Examining Division's communication of 7 December 2010 was annexed to a summons to oral proceedings. By letter of 8 March 2011, the appellant responded by requesting "that instead of Oral Proceedings an appealable decision be issued based on the state of the file". The appellant neither commented on the substance of the communication of 7 December 2010 nor submitted amended claims.

After the Examining Division had issued the requested decision, the appellant filed the present appeal and, with its statement of grounds of appeal, replaced its sole substantive request with a new main request and first and second auxiliary requests.

3.3 Requesting a "decision on the state of the file" instead of responding in substance to objections raised in a communication may be a proper course of action where, for example, the applicant considers that the application is in an allowable state and all arguments have been sufficiently put forward (cf. Guidelines for Examination, E-IX, 4.4). But in the present case, the Examining Division's communication of 7 December 2010 had raised new objections and introduced a new prior-art document. Instead of responding to those objections with substantive submissions, the appellant chose to request a decision on the state of the file and to file an appeal. Only with the statement of grounds of appeal did the appellant, for the first time, respond in substance to the Examining Division's new objections.

3.4 According to Article 12(4) RPBA, a board of appeal has the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings.

This provision reflects the principle that appeal proceedings are not intended as a continuation, let alone a replacement, of the first-instance proceedings. Parties to EPO proceedings are not at liberty to forgo the proceedings before a department of first instance and take their case directly to a board of appeal for further prosecution. They can rely on the boards of appeal for a judicial review of the first-instance decision, not for a continued full examination of the merits of the application.

3.5 Upon receiving the Examining Division's summons to oral proceedings, the appellant was in the same position as later when it filed the statement of grounds of appeal; the decision to refuse the application merely confirmed the objections previously communicated. Thus the appellant should have realised that the newly raised objections necessitated the filing of amended requests. It also had the opportunity to file such requests before the date fixed by the Examining Division under Rule 116 EPC. Yet it refrained from doing so. It appears that the appellant preferred to discontinue the still-ongoing proceedings before the Examining Division and to prosecute its case instead directly before the Board. But Article 12(4) RPBA is intended to prevent just that.

3.6 Thus, the present case is one where the appellant could - and should - have presented its new requests in the first-instance proceedings, and consequently the Board may exercise its power under Article 12(4) RPBA to hold them inadmissible (see also decisions T 1212/08 of 13 January 2012, reasons 4.1 to 4.7; T 1108/10 of 9 March 2012, reasons 3.2.1 to 3.2.5; and T 1178/08 of 9 May 2012, reasons 2.6 to 2.6.4). Nevertheless, since the requests now on file present the Board with no difficulties, it decides to exercise this discretionary power in the appellant's favour and to admit them into the proceedings.

4. The invention

The invention is related to an information storage medium and a method of reproducing information recorded thereon. As explained in the background section of the application, a known recordable information storage medium such as a CD-R or a CD-RW includes user data areas and additional areas serving as spare areas located before and after the user data areas (page 1, last paragraph, to page 2, first paragraph, of the published application). To improve the ability of reproducing systems to differentiate between additional data areas and user data areas, the invention proposes including second sync patterns in the additional data areas which are different from first sync patterns included in the user data areas (page 3, last paragraph, to page 4, second full paragraph). The invention as presently claimed is limited to a "read-only storage medium".

5. All requests - added subject-matter and clarity

5.1 Claim 5 is identical in all requests and includes the feature "the additional data area is configured for compatibility in different formatted information storage media". As a basis for this feature, the appellant relies on the phrase "can maintain consistency with the formats of different types" appearing on page 9, lines 1 to 5, of the published application and in the paragraph bridging pages 7 and 8.

5.2  [...].

Since the Board has not been able to identify any other passage in the application as filed that could serve as a basis for the feature, it considers that the subject-matter of claim 5 extends beyond the content of the application as filed.

5.3 In addition, it is unclear what is meant by compatibility "in" different formatted information storage media. It is also not clear whether it is "the additional data area" that is made compatible or the information storage medium that includes the additional data area.

Furthermore, even if the feature were to be interpreted contrary to its wording as meaning that the information storage medium is somehow compatible with other (known?) types of information storage media, the claim would remain unclear both because those other types are left completely unspecified (apart from being "different") and because the claim fails to state in what precise technical sense they are "compatible" and by what specific technical measures that compatibility is achieved. In this respect, the appellant's arguments that "compatibility simply means it can work with others and different information storage media just means ones that are simply different" fail to persuade the Board.

5.4 Hence, the main request and the first and second auxiliary requests infringe Articles 123(2) and 84 EPC.

6. As to the appellant's request for "allowance of the application based on such other claim set it approves that the Board of Appeal will allow", it is not the Board's task to formulate the appellant's claims.

7. Conclusion

Since none of the requests on file is allowable, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision 1768/11 (pdf) has European Case Law Identifier:  EECLI:EP:BA:2017:T176811.20170207. The file wrapper can be found here. Photo "homework ritual" by woodleywonderworks obtained via Flickr under CC BY 2.0 license (no changes made).

2 comments :

  1. It appears a very dangerous practice not to reply to objections raised in first instance by filing amended requests. Waiting to file new requests when entering appeal is rarely successful, be it in examination or in opposition. Appeal is not the continuation of first instance proceedings, and merely to decide whether or not the first instance decision was correct.

    In examination, it is worth looking at T 569/08 according to which even a combination of originally filed claims may not be admitted under Art 12(4)RPBA.

    In G 10/93 (OJ 1995, 172; see point 4 of the reasons), it was held that "proceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision". In
    T 1089/09 it was added that: “Article 12(4) RPBA provides that the board has the power to hold inadmissible requests which could have been presented in the first-instance proceedings. Hence there was no obligation and indeed no reason for the board to start a full examination of the amended claims according to the second auxiliary request, which could have been presented in the examination proceedings”.

    In opposition, it is worth looking at T 144/09. In this case the proprietor was even asked by the OD if he did not want to file an AR in order to overcome an objection raised during OP. The answer was no, and the corresponding request was only filed when entering appeal and promptly not admitted under Art 12(4)RPBA. A petition for review on the non-admission was rejected, as the non-admissibility was subject of discussions during the OP before the BA.

    In T 936/09 the headnote stated: "the patent proprietor is not free to present or complete his case at any time that he wishes during the opposition or opposition appeal proceedings, depending, for example, on his procedural strategy or his financial situation. In view of the judicial nature and purpose of inter partes appeal proceedings (...) and in the interests of an efficient and fair procedure, the board considers it necessary that all parties to opposition proceedings complete their submissions during the first-instance proceedings in so far as this is possible. If a patent proprietor (...) chooses not to complete his submissions at the stage of the first-instance proceedings, but rather presents or completes his case only in the notice of appeal or the statement setting out the grounds of appeal, then he will need to face the prospect of being held to account for such conduct by the board when, for example, exercising its discretion under Article 12(4) RPBA. (...)."

    The few decisions above here are exemplary of a long line of case law.
    It is thus very clear what an applicant/proprietor has to do in front of the first instance.

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  2. The EPO and the BOAs should take care not to push Art 12(4) RPBA too far. It can be argued that the examining or opposition divisions do not issue a "first instance decision" but merely an administrative decision. If this administrative decision is not open for a judical review, it might be unconstitutional/against the basic law in some EPC member states. If I remember correctly, there is a case pending at the German constitutional court that revolves around the question whether the BoAs can be considered as a "judical review" as guaranteed by the German basic law. I think the trigger of this specific case was the impression of some that the BoAs are not truly independent from the EPO. However, Art 12(4)RPBA could create similar problems as there is no way to review the decision of a BOA when it rejects an appeal as inadmissible "because it could have been presented in the first instance". The German consitutional court has previously pointed out in a different matter that while the German basic law does not guarantee multiple judical instances, a court may not construe the legal basis for an appeal such as to make the appeal de facto ineffective. Speaking as a practitioner, if the BoAs start to take this seriously, there are hardly any requests that could not have been already made in the first instance (withdrawing an appeal could be one, lol).

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