Brief outline of the case
The patent at stake is a divisional application of EP 07711716/EP 2 119 287.
The present invention relates to self-configuring and optimisation of cell neighbours in wireless telecommunications networks.
The ESR only quoted A documents. In the ESO, claims 1-10 were considered directly allowable, but claims 11-22 were considered not in accordance with Art 76(1).
In reply to the search report the applicant explained why it considered that none of the claims 11 and 14 were objectionable under Art 76(1).
With some minor amendments to the claims and an adapted description quoting the CPA, i.e. the first A document in the ESR, the ED proceeded to a direct grant.
In view of the result of the opposition and the appeal, the patent should never have been granted.
Oppositions were filed by no less than 6 opponents.
O 1, O 4, O 5 and O 6 withdrew their respective oppositions during the opposition proceedings.
The proprietor appealed the decision of revocation by the OD.
O 2 withdrew its opposition after having sent a reply to the statement of grounds of appeal. The board has also considered the arguments in this reply.
From the originally 6 opponents, only O3 was left at the time of the OP.
in appeal, the proprietor’s MR was that the patent be maintained in its granted form or that the patent be maintained in amended form on the basis of the claims of one of 67 AR.
O 3 requested that the appeal be dismissed.
Claim 1 as granted was not allowable under Art 76(1).
For the board, the claims of the earlier application as filed taken alone cannot provide a basis for claim 1 as granted. If anything, the fact that some of the features of claim 1 of the earlier application as filed are not present in claim 1 as granted corroborates that the original context is missing from claim 1 as granted. Besides, claim 1 of the earlier application as filed discloses “detecting unique cell identifier information”, whereas claim 1 as granted refers to “retrieving the unique cell identity”.
AR 6, 12, 18, 24 were also not allowable under Art 76(1).
AR 1-5, 7-11, 13-17, 19-23, 25-29 were not admitted by the OD and were consequently not admitted by the by the BA under Art 12(4) RPBA07. The non-admitted requests by the OD were not manifestly overcoming the objections raised by the opponents or were manifestly lacking clarity.
AR 30 was not admitted under R80. Furthermore a correction under R 139 in claim 9 of AR 30 was not allowable as no error was apparent.
AR 31, 32, B1, B2, B3, B4, B5, B6 and B7 were also not admitted under R80; no correction under R 139 was allowed as here as well no error was apparent
AR 6F, 12F, 18F, 24F, 30F, 31F, 32F, B1F, B2F, B3F, B4F (“the F series”), 30G, 31G, 32G, B1G, B2G, B3G, B4G, B5G, B6G, B7G (“the G series”), and 30FG, 31FG, 32FG, B1FG, B2FG, B3FG and B4FG (“the F-G series”) were not admitted under Art 13(2) RPBA20.
At the end of the OP the appeal was dismissed and the revocation confirmed.
The large number of AR
The board noted that during the opposition proceedings, the proprietor filed no less than 32 AR.
With the statement of grounds of appeal, the proprietor filed 7 additional AR.
In response to the board’s preliminary opinion, and without withdrawing any of the 40 claim requests already on file, the proprietor filed another 28 AR.
The position of the board
The board did not consider the filing of 28 AR in response to the board’s preliminary opinion as an appropriate reaction.
Eleven of those AR (the F series) ostensibly fail to address all the objections raised.
The proprietor’s piecewise approach in the course of the appeal proceedings put O3 and the board under an undue burden and held back a complete discussion of all the pending topics within a reasonable time frame.
Those topics could have been addressed much earlier in the appeal proceedings, had the proprietor filed and/or maintained less, and more focused, claim requests at an earlier stage.
Rather than overcoming all the issues raised in the appeal proceedings without giving rise to new objections, the new claim requests fanned out so as to create a complex matrix of fall-back positions.
For the board, this is clearly contrary to procedural efficiency, approaching “abuse”, even more so if account is taken that every single claim of each claim request should ultimately meet the requirements of the EPC. Furthermore, AR B5G, B6G and B7G contain network-side claims exclusively, for which N and IS where never discussed during opposition proceedings. If admitted into the appeal proceedings, they would constitute a “fresh case”.
There is no limit to the number of AR a proprietor can file, be it in first instance or in appeal.
There is no figure to be given as to the number of AR. It all depends on the case.
That the proprietor filed a large number of AR in both instances means probably that the patent was important for the proprietor. By the way, the proprietor is a NPE.
Filing of AR in first instance
The conditions for filing AR in first instance are less strict, as the proprietor has to be given a fair chance to defend his patent.
On the other hand, in the present case, filing 32 AR is bound to bring about problems, with the result that quite a few AR were not admitted by the OD.
Filing in first instance a large number of AR before an OP is always a dangerous game as the chance of having late-filed requests admitted during OP is in general inversely proportional to the number of requests filed beforehand.
Filing in first instance a large number of AR before an OP can also lead to adjournment of the OP as often not all AR can be dealt with within the original time frame of the OP.
It is worth remembering that for any AR filed during OP before an OD, the proprietor has to demonstrate
- that they are clear in the meaning of G3/14
- do not comprise features from the description or the drawings
- where the claims find their support in the original disclosure and hence do not infringe Art 123(2 and 3)
- give some reasons why they could not have been filed earlier
- that they prima facie overcome long standing objections, like lack of N or IS
Any doubts in those matters are not resolved in the proprietor’s advantage and can easily lead to the non-admissibility of such late filed requests.
The criteria of convergence also plays a role for late-filed requests, even in first instance.
It often happens that the same feature is to be found in a plurality of requests. If such a feature for instance infringes Art 123(2), there is a domino effect and all requests are dismissed at once.
Filing of further AR during an OP before an OD is legitimate if the legal and factual situation has changed, for instance if a late-filed document has been admitted, or an objection, never raised before was raised for the first time during the OP and admitted in the procedure.
Before the boards of appeal
The board is to be followed when it states that AR in appeal, should be rather focused and not fanned out so as to create a complex matrix of fall-back positions. In previous decisions the boards did not admit AR if they resulted from a “pick and mix” approach by the proprietor.
Requests which have never been subject of a decision of the OD have, in principle, no chances to be admitted in appeal.
With the RPBA07 and even more with the RPBA20 the chances of new requests filed in appeal to be admitted are very remote and the proprietor will have a lot of work to do in order to convince a BA to admit such requests.
Unless the legal and factual situation has changed following the communication of the board or during OP, Art 13(2) RPBA20 is presently a very high hurdle.
Even if a request could be admissible under Art 13(2) RPBA20, the conditions of Art 13(1) RPBA20 apply and hence a request can end up not being admissible at all, should it either give raise to further objections or does not resolve existing objections.
In any case filing a total of 67 AR is anything but reasonable. .
If you want a positive reply for your client, the best is not to start rubbing up the deciding body the wrong way.
Even filing 32 AR in first instance is already rather high, but a total of 67 AR in appeal is inordinate.
No wonder that the board did not like it.