Monday, February 08, 2021 T 353/18 - no legal primacy of a clean request over the annotated version

Almost identical, but not quite

With its response to the statement of grounds of appeal, the patent proprietor (respondent) filed, inter alia, an auxiliary request 3, in a clean and a mark-ed up version. Unfortunately, unbeknownst to any one, these two versions were not the same. 

At the oral proceedings the differences came to light. The appellant had used the the annotated version, which happened to contain impermissible added subject matter. The respondent declared that the clean version was the valid version, which happened not to contain said added subject matter. In the end, the board assumed an honest mistake and remitted the case.

 The board provided the following catchword:

Discrepancies between the clean and the annotated versions of a request: no provision in the EPC establishing any legal primacy of the clean version over the annotated version; special reasons justifying a remittal (reasons: section 8)

Reasons for the Decision

(...)

Auxiliary request 3

8. Remittal for further prosecution

8.1 During the oral proceedings before the board when discussing the admittance of objections under Article 123(2) EPC against claim 1 of auxiliary request 3, there turned out to be a discrepancy between the wording of that claim in the clean and the annotated versions of that request. The respondent declared that the clean version was the valid one and that the discrepancy was due to an error when preparing the annotated version of auxiliary request 3.

8.2 The appellant pointed out that it had worked on the assumption that the two versions were identical and had prepared the case only on the basis of the annotated version.

8.3 In proceedings before the EPO, users of the European patent system who are parties to proceedings must act in good faith. In the case in hand, there is no indication on file, and nor has the appellant alleged, that the respondent acted contrary to the principle of good faith when preparing the annotated version of auxiliary request 3. However, the same is also valid for the appellant. The respondent filed auxiliary request 3 during the opposition proceedings by letter of 20 October 2017. When filing that request, and even later on in the appeal proceedings, the respondent did not provide detailed information on the basis for the amendments in the application as originally filed. In view of the information provided by the respondent, the appellant had no reason to doubt that the annotated version of auxiliary request 3 was correct and matched the clean version.

8.4 While in view of these considerations the board has no doubt that both parties acted in good faith, account needs to be taken of the principle of protection of legitimate expectations, under which users of the European patent system should not suffer a disadvantage as a result of having relied on erroneous information received from the department of first instance or the Boards of Appeal (cf. G 2/97, OJ 1999, 123, point 4.1 of the reasons). While there was no erroneous information from the opposition division or the board in this case, the outcome was the same as the appellant received erroneous information as a result of the respondent providing two different versions of auxiliary request 3 and was given no indication of this discrepancy.

8.5 Furthermore, there is no provision in the EPC establishing any legal primacy of the clean version over an annotated version of a request, so if they are different only a declaration by the proprietor can establish the valid one. In the case in hand, however, this declaration was not provided until the oral proceedings before the board. Thus, in view of the above, the appellant could assume the annotated version of auxiliary request 3 was correct up to that point in time and should not suffer a disadvantage as a result of having done so, even though the respondent declared later that the annotated version was not the valid one.

8.6 Pursuant to Article 111(1) EPC the board may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. Under Article 11 RPBA 2020, the board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.

8.7 The discrepancy between the two versions of auxiliary request 3 concerns the amounts of BADGE and bisphenol-A-resins in the composition, i.e. a feature which was central to the appellant's objections under Article 123(2) EPC and which could not be interpreted in isolation from other features, for instance the weight percentages of the further components, especially in view of the use of the term "consisting of" in the preamble of the claim. Consequently, the allowability of any such amendment pursuant to Article 123(2) EPC may additionally depend on further amendments made to the claims; if several amendments are made compared with the application as filed, which appears to be the case here, the question arises as to whether the application as filed provides a basis for the claimed combination of features.

8.8 Since the appellant relied on the correctness of the annotated version of auxiliary request 3, it did not provide any written submissions on the specific wording of claim 1 of the clean version of auxiliary request 3, in particular as far as Article 123(2) EPC is concerned. Not raising objections in this respect until the oral proceedings was therefore justified and, as explained above, cannot result in a disadvantage for the appellant.

8.9 However, a ruling on the valid version of auxiliary request 3, namely the clean version filed by letter of 20 October 2017, would have required a substantive discussion for the first time during the oral proceedings before the board, without any prior exchange of arguments between the parties. Handling the case in this way would clearly run contrary to the primary object of the appeal proceedings, which is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020).

8.10 In view of the above, the board considers that in the case in hand there are "special reasons" in the sense of Article 11 RPBA 2020 justifying the remittal of the case to the department of first instance for further prosecution; this was explicitly agreed to by the appellant and was not contested by the respondent at the oral proceedings before the board.

8.11 For these reasons, the case is remitted to the department of first instance for further prosecution (Article 111(1) EPC; Article 11 RPBA 2020).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution. 

This decision T 0353/18 (pdfpdf) has European Case Law Identifier: ECLI:EP:BA:2020:T035318.20201111. The file wrapper can be found here. Photo by Moonzigg via Pixabay, under the Pixabay license (no changes made).