This is the second appeal concerning EP 2079319. At the end of the first appeal, see T 692/14, the case was remitted to the OD for further prosecution.
The proprietor and both opponents appealed against the OD’s interlocutory decision holding the then AR 7 allowable.
The decision is interesting in two respects. Here we will deal with the admissibility of the MR in appeal.
The opponents’ position
The opponents submitted that the MR should not be admitted into the current, second appeal proceedings. This request corresponds to a request which was filed in the first appeal proceedings as AR 2.
However, it was not filed with the proprietor’s grounds of appeal but, instead, only in reply to the opponents’ grounds of appeal.
In the opponents’ view, this behaviour is to be considered as an abandonment of this request, which should not therefore be admitted into the current appeal proceedings. The opponents referred in this context to case T 446/00. Also, the request was not convergent with the higher-ranking requests filed with the reply.
The board’s position
The board admitted the MR into the current appeal.
The MR was filed as AR 2 in the first appeal proceedings. The then competent board admitted a broader claim request and remitted the case to the opposition division for further prosecution.
The proprietor maintained and re-filed the current MR as AR 8 in the proceedings before the OD.
This request was also formally “admitted” into the proceedings by the OD
This request was not included in the proprietor’s grounds of appeal, but was filed as AR 13 with the proprietor’s reply to the opponents’ grounds of appeal.
The board held that not filing the MR already with its own grounds of appeal, but only in reply to the opponents’ grounds of appeal, cannot be considered as the abandonment of this request.
The MR was filed with the reply to the opponents’ grounds of appeal and thus in compliance with Art 12(3) RPBA20.
For the board, the situation is hence not comparable to that in case T 446/00, in which the proprietor was the sole appellant against a decision of the OD to revoke the patent.
The board considered that the request at stake was in conformity with Art 12(4) and 12(2) RPBA07.
The current MR, which is identical to AR 2 filed during the first appeal proceedings, is convergent with the then MR admitted into the proceedings by the competent board and on the basis of which the case was remitted to the opposition division for further prosecution.
For these reasons, the question of whether this request is allegedly not convergent with higher-ranking requests filed in the current appeal proceedings is irrelevant.
Outcome of the procedure
The board considered the MR allowable and remitted to the OD for adaptation of the description.
Comments
A request maintained throughout the procedure before entering appeal cannot be considered as abandoned. Whether there was a second appeal appears irrelevant.
That the request was only filed in reply to the opponent’s grounds of appeal is as well irrelevant if both proprietor and opponent appeal.
It might have been better for the proprietor to file the MR with its own statement of grounds of appeal as then the question of admissibility/abandonment would not have arisen at all.
If the proprietor would have been the sole appellant the story would have ended differently if the request had not been filed within the time limit for filing the grounds of appeal.
It would not have been abandoned, but late filed and Art 13(1) RPBA20 would have applied.
Convergence of requests can play a role in appeal proceedings from the outset, but only for late-filed requests in opposition.
https://www.epo.org/law-practice/case-law-appeals/recent/t181109eu1.html
Comments
2 replies on “T 1109/18 – Admissibility/abandonment of a request”
Thank you for this summary. This case is interesting for other reasons too.
First, why is this the second appeal proceedings? In the first opposition proceedings the proprietor had no requests left – they were all withdrawn. The patent should have been revoked with no chance for appeal (the BoA confirmed this in its first decision). However the OD “for the sake of public certainty” let the patenee have its granted claims back, which were not allowable, and revoked the patent – allowing the patentee to appeal and continue for several more years and 10s of new auxiliary requests.
Second, the auxiliary request which was finally allowed in the second decision, had been filed at first instance, it is true. But the patentee when it filed the request never gave any reasons why it overcame any grounds for opposition, and the request was never discussed at previous oral proceedings. You will see from the second decision that the opponent tried to start an inventive step attack from document “DX” as closest prior art but this was not admitted by the board, as a “new attack”. But as the auxiliary request had never been discussed before, and on the other side the patentee had not said why the request was patentable, I feel that the opponent should have been allowed to argue freely why the request was not patentable.
As you have noted the main request was formerly AR13, but the patentee later withdrew its old MR and AR1-12, causing the renumbering. AR12 was not novel over “DX” (it disclosed one sweetness enhancer). AR13 was fomally novel over DX by now claiming two sweetness enhancers – a trivial difference with no technical effect. So DX was the natural place to start an inventive step attack as closest art, in view of the previous novelty discussion, and I feel that the board should have admitted the inventive step attack starting from DX – especially as this was the first discussion ever about this request.
The original post was published on 17.11.2022. I did not expect a comment on 17.02.2023. I will nevertheless reply to the comment.
As it was a second appeal, I confess that I did not bother to see what had happened before and during the first appeal.
The attitude of the OD in the first part of the opposition procedure is somehow surprising to say the least. None of the requests filed by the proprietor were admitted by the OD.
In the facts and submissions of T 692/14, one reads the following: “As there were no further requests on file, the OD decided to reinstate claims 1 to 14 as granted “in the interest of the public and economy of the procedure”, and revoked the patent”. The ground for revocation was that claim 14 as granted contravened Art 123(2).
The proprietor was lucky as to my understanding in the absence of any requests in the procedure, the patent should have been revoked. According to Art 113(2), the EPO shall examine, and decide upon…. the European patent only in the text submitted to it, or agreed, by … the proprietor of the patent.
In Reasons 1.1 of T 692/14 the board even noted that the OD should have terminated the proceedings by revoking the patent on this basis.
The board held that, instead, the chairman of the OD asked the proprietor, whilst simultaneously announcing that no further opportunity to file new requests would be allowed, whether it still agreed to the text of the patent as granted. The proprietor indicated that this was the case. Indicating its agreement with the patent as granted is not filing a request for a decision on the patent as granted.
There was thus no legal basis for the OD to decide to reinstate the claims as granted. I would thus consider that the OD committed a substantial procedural violation by reinstating claims as granted although it was clear that the proprietor did not want to pursue them as he filed numerous other request which were all not admitted.
It might be “in the interest of the public” not to be confronted with patents which should not have been granted, but this does not allow the OD to ignore the requirements of Art 113(2). “Economy of procedure” is a criterion brought forward by the boards when dealing with some late-filed requests, but it has nothing to do in first instance.
The proprietor was lucky again in that the board admitted as MR, filed after receipt of the communication of the board in which the latter gave its preliminary opinion on the issues raised.
The MR consisted of claims 1 to 13 as granted (claim 14 as granted, objected to by the opposition division, was deleted).
When filing the appeal upon revocation, the proprietor even requested that the appeal fee be refunded on the grounds that the OD had committed various procedural violations. If there were substantial procedural violations, they were to the benefit of the proprietor as the OD decided ultra petita. Later, the proprietor withdrew its previous assertions of procedural violations and the request for reimbursement of the appeal fee. In T 1558/18 the OD had decided on the basis of the patent as granted in the absence of a corresponding request. As the decision was ultra petita, the OD committed a SPV.
It remains that the SPV to the benefit of the proprietor was manifest. It is surprising that neither the opponents nor the board discussed it. The only explanation could be that the chairman announced that no further requests would be admitted in opposition which actually boils down to a SPV, e.g. T 470/20. This could explain why the board admitted the last MR.
The proprietor also declared that reinstating the granted claims into the proceedings by the opposition division had not occurred against its will, since as proprietor it had agreed to the text of the patent as granted.
Whilst this is not wrong as such, it is manifest that the claims as granted were not pursued by the proprietor during the opposition.
I can thus agree with you that the second appeal should never have occurred and the first appeal should have dealt with the claims filed in opposition. The proprietor should at least have filed before the OD a last AR in which claim 14 was deleted.
In view of the succession of mishaps in this file, I consider that the proprietor had been extremely lucky.
That the objection raised by the opponent was deemed late-filed and not admitted is another oddity in this case.