The patent was revoked as the OD held that the patent as granted as well as according to the AR1-3 did not meet the requirements of Art 123(2).
The proprietor requested inter alia that the decision under appeal be set aside and the patent be maintained in amended form on the basis of the MR or any of the AR 1 to 4 as filed with the statement of grounds of appeal in that order.
Claim 1 according to both the MR and AR 1 filed with the statement of grounds of appeal corresponds to claim 1 according to AR 1 underlying the decision under appeal.
Claim 1 according to both AR 2 and 3 filed with the statement of grounds of appeal corresponds to claim 1 according to AR 3 underlying the decision under appeal.
Claim 1 according to AR 4 was filed with the statement of grounds of appeal. It was thus a new request never discussed in first instance.
With a further letter the proprietor requested to reorder the requests filed with the statement of grounds of appeal by renumbering the former AR 4 as new MR and the former MR and AR 1 to 3 as AR 1 to 4 respectively.
The proprietor justified the proposed reordering by referring to the need for procedural economy in view of the preliminary opinion of the Board stating that the MR and AR 1 to 3 filed with the statement of grounds of appeal were considered to infringe Art 123(2) while AR 4 was likely to overcome all the objections raised under Articles 83, 84 and 123(2) by the opponent, thereby opening the way for a remittal of the case to the department of first instance for further prosecution as requested by the proprietor.
After having heard the parties the Board came to the conclusion that the reordering of the requests filed with the statement of grounds of appeal requested by the proprietor could not be taken into account.
The Board observed that allowing the proposed reordering would force the Board to firstly decide on a fully new MR, i.e. AR 4 submitted with the statement of grounds of appeal, not underlying the decision under appeal. This would be contrary to the provisions of Art 12(2) RPBA20.
In fact, should the Board confirm the preliminary opinion that the new MR meets the requirements of Articles 83, 84 and 123(2), the proposed reordering of the requests would potentially lead to a situation where the Board would have to remit the case to the department of first instance without having decided on requests/claims underlying the decision under appeal still on file, but only on a new request.
This would be contrary to the scope of the appeal proceedings and might be also detrimental to procedural economy as a whole. Furthermore, the Board agreed with the opponent that the proposed reordering of the requests clearly results in lack of convergency thereof.
Finally, the preliminary positive assessment of AR 4 by the Board could not be seen as an exceptional circumstance in the meaning of Art 13(2) RPBA20 justifying a change of the proprietor’s appeal case, but rather as a foreseeable and thus not unexpected result of the preliminary assessment of the case by the Board taking into account that the amendments introduced clearly address all the issues at stake.
In view of the intention expressed by the Board in the course of the oral proceedings not to consider the requests according to the new order as proposed with the letter dated 08 April 2022, the appellant (patent proprietor) withdrew the MR submitted with the statement of grounds of appeal and maintained AR 1 to 4 in this order, whereby the AR 1 became the new MR. Following the reaction of the opponent that requested not to take this further change to the proprietor’s appeal case into account under Art 13(2) RPBA20, the proprietor requested to reintroduce the MR filed with the statement of grounds of appeal.
For the BA, the reintroduction of a previously withdrawn request, namely the MR filed with the statement of grounds of appeal, constitutes an inadmissible amendment to the proprietor’s appeal case that cannot be taken into account under Art 13(2) RPBA20 in the absence of any exceptional circumstances.
The BA confirmed the OD’s decision that AR 1 to 3 were infringing Art 123(2).
The case was remitted to the OD for further prosecution on the basis of AR4.
Reordering requests in appeal is by no means always acceptable.
At least the requests upon which a decision of the first instance has been based should be kept.
The order of those might most probably be changed, although reordering those also represents a change in the proprietor’s submissions.
Withdrawing a request in appeal and reintroducing it later is not acceptable at all as this represents a not acceptable manifest change in the proprietor’s submissions.
Art 13(2) RPBA20 has many different aspects!