Friday, October 12, 2018 T 1280/14 - No switching between lines of defense

Can the Board exercise its discretion under Art. 13 RPBA not to admit auxiliary requests in the proceedings even if these have already been filed in direct response to the Opponent/Appellant's grounds of appeal and correspond to those submitted during first instance proceedings?

In the present case, the Opposition Division had rejected the opposition against the patent. In the ensuing appeal, the Opponent-Appellant already requested in his grounds that none of the (39) auxiliary requests filed during opposition proceedings be admitted, as these were "excessive, filed in unspecified order, and/or late filed".

In his response to the grounds, the Proprietor-Respondent filed 15 auxiliary requests based on a selection from the requests filed during opposition proceedings. The Proprietor stated that these auxiliary requests were properly numbered, therefore having a clearly specified order. From the arguments in support of the requests it could be deduced that these requests were classifiable as forming six diverging lines of defense, auxiliary requests 1, 2 and 4 thereof forming the first line of defense.

In the summons for oral proceedings, the Board pointed out (referring to T 1903/13) that the Proprietor should be prepared to comment on how the other diverging lines of defense would represent the alleged invention. The Proprietor did not provide any further comments.

Accordingly, the Opponent/Appellant and the Board had to assume prior to the oral proceedings that the Respondent intended, after the main request, to first prepare the patent in suit in accordance with the first line of defense, with auxiliary requests 1, 2 and 4 to defend. However, it was not until the oral hearing (in which the Main Request had fallen as lacking novelty over prior art document D9 filed with the Opponent-Appellant's grounds) that the Proprietor made it clear that he now intended to only pursue his third and sixth lines of defense - corresponding to auxiliary requests 8 and 15, respectively, and renumbered as auxiliary requests 1 and 2.

This unannounced change of strategy did not fare well with the Board, who found that both the Opponent and Board had unnecessarily prepared for auxiliary requests which turned out not to be relevant in the further proceedings; thus, the Respondent had not complied with the procedural economics offered. According to the Board, contrary to the Respondent's submission, his actions did not constitute a mere renumbering of the requests, since new auxiliary requests 1 and 2 (formerly auxiliary requests 8 and 15) corresponded to lines of defense diverging from the former auxiliary requests 1, 2 and 4. Thus, what was now claimed as an invention had fundamentally shifted. Hereby, the multiplicity of interlocked features rendered the changes in subject-matter of the auxiliary requests very complex.

As a result, remaining auxiliary requests 1 and 2 were not admitted in the proceedings and the patent was revoked.

Tuesday, January 30, 2018 T 2101/14 – Not admissible if not promptly substantiated

The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.

Wednesday, January 25, 2017 T 1205/13 - A request that was not decided upon

In the summons to oral proceedings before the Examining Division, the Examining Division objected under Art.56 EPC (inventive step). The applicant then replaced those claims with two new sets, which were refused because of deficiencies under Art.123(2) and 84 (extension of subject-matter and clarity) caused by the amendments. In appeal, the applicant filed the original claims as main request. What did the Board do? No decision was taken in first instance about this claim set, as the applicant replaced them before a decision could be taken - the applicant was adversely affected by the refusal, but the refusal related to the replaced claim. Also, the refusal was based on Art. 123(2) and 84, and not on Art. 56 that the Examining Division held against these claims in its preliminary opinion.