From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 21 September 2015

The purpose of appeal proceedings and "adverse effect" -- on appellants and on delicate digestions

"Here's something to chew on", announces one of our readers, a patent attorney on the other side of the English Channel from this Kat, making an observation on a recent decision of a European Patent Office Board of Appeal in Case T 0327/13 of 17.7.2015 Exchangeable continuous casting nozzle. The story goes like this:
In opposition proceedings, the patentee had requested dismissal of the opposition, or (as an auxiliary request) maintenance on the basis of granted independent claim 3. In his statement of grounds of appeal, he had requested (as a main request) maintenance of the patent on the basis of independent claims 2 and 3 (as granted).

The Board of Appeal held that the patentee was not entitled to appeal. Said the Board:
2.3 In the present case it is clear that the appellants are adversely affected by the Opposition Division's decision not to accede to the then main request. However, as follows from the statement setting out the grounds of appeal and the two new set of claims filed with it as main and auxiliary request, that this decision has not been contested with the appeal. 
2.3.1 On page 1 of the grounds of appeal, the appellants state their satisfaction with "the Decision in that claim 3 as granted was maintained". The appeal is actually against the decision of the Opposition Division that "claim 2 as granted was not maintained". [...]
2.3.2 The appellants do not defend the main request as filed before the Opposition Division, wherein claim 2 as granted figured. The grounds of appeal do not address this request at all, let alone indicate any reason for setting aside or amending the decision of the Opposition Division's decision that claim 1 of this request lacks novelty over D1. On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division.  
The Board continued:

"2.3.4 All this can only be understood to mean that the patent proprietors are not adversely affected by the Opposition Division's decision to dismiss the main request filed in the opposition proceedings, but by the non-maintenance of an independent claim based on claim 2 as granted, in addition to the duly filed (and maintained) independent claim based on claim 3 as granted. 
However, the subject-matter of claim 2 as granted was not the subject of an individual request in the opposition proceedings, so that it has not been addressed as such in the decision of the Opposition Division.[...] 
2.3.5 The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division.
2.4 Therefore, in view of the appellants' case, the Board considers that they cannot be regarded as "adversely affected" by the decision of the Opposition Division and thus are not entitled to appeal under Article 107 EPC".
All of this does not please our correspondent to adds, a little graphically, "I am reminded of Max Liebermann's verdict: "I can't even eat as much as I now want to vomit".

The IPKat adds, it seems that maintenance of the Main Request at first instance was not sufficient to be adversely affected by its refusal - the appeal needed additionally substantively address why that refusal was wrong.  Failure to do this apparently made the party not adversely affected.  Merpel is locked in a temporal anomaly - she always thought that "adversely affected" was judged at the time of appeal and wonders how it can be retrospectively lost by what is put in the Statement of Grounds of Appeal (filed up to two months later).

81 comments:

Anonymous said...

I also found this decision somewhat strange. Why did the board simply refuse to admit the new main request as late filed? This would have been a much simpler solution and would have meant the EPO could have pocketed an appeal fee (presuming, of course, that the fee for an appealing party not adversely affected is refunded).
If after reflection the patent proprietor comes to the opinion that claim 1 as granted cannot be upheld but there is an outside chance that a dependent claim might survive, all being equal they should have the opportunity to defend such a claim. To bring in such ab obtuse argument that they were not adversely affected because they did not argue the decision was wrong is without logic.

Kant

The Cat that Walks by Himself said...

I always with a bit of regret observe that BoA's decisions tend to become a battle of formalities, which does not contribute to an expected [elegant teaching] style of an appeal body. It does not seem quite right to me, especially, when I think that behind a contested patent hide years of research and financial investments.

I would say that a patentee whose claims as granted have not been maintained is "adversely affected" by the decision of the opposition division.

In general, I'm a supporter of appeal proceedings as "a second chance from scratch". I hope that one day the EBoA will open the door to more opportunities within the appeal procedure.

Bringbackalib said...

User fees are now being used for refugee projects.As commendable as this may sound,the EPO has no right to be donating 100,000 euros to this,or any other cause.

Dapdos said...

Regarding "adversely affected" , the approach in T1682/13 seems more convincing: if the Main Request is not granted, that party is adversely affected. The present appeal was also (independently) rejected as inadmissible for lack of substantiation (Rule 99(2) EPC. T1682/13 explains that Rule 99(2) does not require defending the Main Request as pending before the OD. Art. 12(4) RPBA indeed would have been sufficient to reject the new request as late filed and inadmissible (as was also done in T1682/13 and also, carefully reasoned, in T 467/13, both published on 07.07.15). By the way, appeal fee is not refunded in case of an inadmissible appeal (CLB IV.E.8.1.2); only in case the appeal is deemed not to have been filed.

Anonymous said...

The lucky Cat that Walks by Himself said:
"In general, I'm a supporter of appeal proceedings as "a second chance from scratch". I hope that one day the EBoA will open the door to more opportunities within the appeal procedure"

The chances for that day to arrive soon seem rather poor: recruiting procedures in the Boards have been stopped abruptly one and a half years ago and there is no sign that recruitment might resume any time before the question of the statute of the Boards has been settled, which obviously is not making much progress. A substantial number of members including chairmen have left already without being replaced, with more to go - leaving some boards with only two (2) technical members - and it will take years for the Boards just to recover their past capacity, not to speek of lost expertise.
So we should rather expect more "streamlined" case managing.

The Cat that walks with a rollator

MaxDrei said...

To reduce the backlog, DG3 is tightening up. If you don't get your requests in before DG1 decides, you run the risk of DG3 refusing your appeal admission because, for no good reason, you are too late with your request. You should have entered it early enough for the OD to have decided on it.

For each individual case that is up for decision, I find that both DG1 and DG3 operate by i) deciding what the "right" result should be for the case and then ii) getting to it by whatever route is most efficacious (and never mind which is correct in law). One route for clearing the DG3 backlog is "appeal inadmissible" but another is "not adversely affected". I presume that the latter is seen as being better adapted to condition more effectively how parties and their representatives prepare appeal briefs, going forward from here.

Either that or because it is quicker and easier to write a "not adversely affected" dismissal of the appeal than a "all requests inadmissible" decision.

The Cat That Walks by Himself said...

@Dapdos
the approach in T1682/13 seems more convincing: if the Main Request is not granted, that party is adversely affected.

Indeed, it sounds reasonable for the opponent. For the patentee, a better criterion for "adversely affected" would be if the claims as granted have been reduced in scope or, even more favourable, changed in scope.

@ The Cat that walks with a rollator
and it will take years for the Boards just to recover their past capacity, not to speek of lost expertise.

The BoA might never exist in the former capacity. The competition with the UPC seems to be looming.

Anonymous said...

Perhaps I'm missing something here, but (at least from your summary) the decision seems perfectly sensible. I can't understand why your correspondent thinks it's wrong - or why none of the other commenters have made my point.

If I've got this right - in the original case the patentee asked firstly to keep all his claims, or, secondly, if he couldn't have that, to drop claims 1 and 2 and keep claim 3. The OD wouldn't allow the first request, but allowed the second.

On appeal, he is asking to keep claims 1 and 2. Now, as I understand it, an appeal (whether here or in any other legal proceedings) is an attempt to persuade a higher court that the lower court (or whatever) was wrong, and have its decision overturned. Here, the patentee is not arguing that the decision to disallow claim 1 was wrong. Or that the decision to allow claim 3 was wrong. He's trying to negotiate a new option. This is not what appeals are for. If he wanted to keep claims 2 and 3 in the absence of claim 1, he should have asked for that before the OD.

(UK anon)

Raoul said...

Appeal procedures have the primary aim to verify whether the first instance decision was justified or not. There is thus no second opportunity from scratch, and there will never be one. This is for instance clearly explained in Point 3.1 of the reasons of T 340/11.

As the decision of the first instance was as such not challenged, the appeal could not be deemed admissible.

At the end of the opposition procedure the patent was maintained on the basis of claims 1+3 as granted. By the way all dependent claims 2-9 were dependent on claim 1 as granted.

The appeal was actually against the decision of the Opposition Division that "claim 2 as granted was not maintained". As such a request was never presented before the OD, the latter had no reason to deal with such a combination. Arguing in appeal that 1+2 should have been envisaged by the OD (or the Board) was somehow naïve, not to say more. This might be the way it works in Germany before the German Federal Patent Court (BPatG), but certainly not in Europe before an OD or the BA.

The appellants have filed two new sets of claims with the grounds of appeal, each comprising a new independent claim 2.

Appeal is not there to give the proprietor a further chance, if he did not grab it in first instance. This has gone up to the Enlarged Board, cf. T 144/09 and R 11/11, where the proprietor did deliberately ignored the invitation by the OD to file an AR, but waited until he was in appeal.

In the present case, even if he had appealed the non-allowability of claim 1 as granted, he could not fall back on claims 1+2 during the appeal procedure, as this request would have represented an amendment to its case, see Art 13(1)RPBA, and moreover it should have been filed in first instance, see Art 12(4)RPBA. Even if filed immediately when entering appeal, the proprietor would have been faced with Art 12(4)RPBA, for exactly the same reason, and the appeal dismissed for lack of an allowable or admitted request in appeal.

Raoul said...

Continuation

A good decision, albeit in German explaining how Art 12(4)RPBA works is T 419/12.

Art 12(4)RPBA also applies to requests not repeated when entering appeal, cf. T 137/09, which could also apply here.

Art 12(4)RPBA further applies to requests not admitted by the OD, cf. T 367/12, withdrawn in fin 1st instance and resubmitted in appeal, cf. T 1231/09, or filed in 1st instance, but not pursued there, cf.
T 935/12.

The decision is by no way harsh or excessively formal, it corresponds to the current practice of the Boards of Appeal.

It would have been easy for the proprietor to file such a request (1+2 as granted) during OP before the first instance, as a combination of granted claims is in principle always admissible during OP before the OD as it does not change the legal and factual framework of the opposition, cf. T 570/02.

It is surprising to see how often "qualified" representatives consider appeal a continuation of first instance proceedings. Even if the client requests such a thing, there should be no illusion as to the chances of success. By the way, the RPBA in their present form exist since 2003, so that they should be known to any qualified representative.

From the file, it results as well that the original representative of the proprietor requested postponement of the OP in view of school holidays, without explaining why another qualified representative could not come, and without giving any proof of already booked holiday.

The Board accepted the holiday reason, even without proof, what is quite benevolent, but not the absence of reasons for non-substitution as this rule was known since 2007, cf. Special Ed. OJ 2007 and is repeated every year. The date set remained. Some homework was forgotten....
Sub-authorisation was then given to another representative.

I would therefore add, that the Board had no reason to be lenient with such a “qualified” representative who confused German and European procedure, and was manifestly not aware of the rules of procedure of the Boards of Appeal.

Yes, some patents end up for very formal reasons, but this is not the fault of the BA, but rather more of the representative.

The Cat that Walks by Himself said...

@(UK anon)
He's trying to negotiate a new option. This is not what appeals are for.

This position is understandable for a UK anon. It corresponds to common law understanding of an appeal. Case law in civil law systems accepts "a second chance appeal proceedings".

The patentee, who had the scope of his claims reduced during the opposition procedure could have had an opportunity to use a different strategy/requests in the appeal.

@Raoul
Appeal procedures have the primary aim to verify whether the first instance decision was justified or not. There is thus no second opportunity from scratch, and there will never be one.

It's quite free interpretation of the EPC, supported neither by the EBoA decisions nor national practice.

The result of Raoul's reasoning is a big number of auxiliary requests in the opposition procedure, which with a small increment reduce the scope of the claims. This doubtfully would lead to procedural efficiency.

At the end of the opposition procedure the patent was maintained on the basis of claims 1+3 as granted. By the way all dependent claims 2-9 were dependent on claim 1 as granted.
The appeal was actually against the decision of the Opposition Division that "claim 2 as granted was not maintained".


So, the decision of the opposition division was (to allow 1+3) AND (not to maintain 1+2 as granted, since the main request was not allowed). The patentee has appealed the second part of the decision, i.e., (not to maintain 1+2 as granted).

Raoul said...

@ The Cat that Walks by Himself
1) The patentee, who had the scope of his claims reduced during the opposition procedure could have had an opportunity to use a different strategy/requests in the appeal.

If this would become a rule, it would mean that indeed appeal is the continuation of proceedings in first instance. As in general the proprietor requests rejection of the opposition, he should be free to do what he wishes when appealing the decision. See my reply in 2).

2) It's quite free interpretation of the EPC, supported neither by the EBoA decisions nor national practice.

On which serious analysis is this sweeping statement based? Did you have a look at the decisions quoted? All the decisions quoted are exemplary of a whole string of similar decisions.

Appeal procedure is not a continuation of procedure in first instance, see for instance T 23/10, Reasons § 2.2. This decision is exemplary in how Art 12(4)RPBA is to be applied.

3) The patentee has appealed the second part of the decision, i.e., (not to maintain 1+2 as granted).

This statement is incorrect as such a request was never filed.

In the present instance the proprietor decided to file as auxiliary request 1+3 as granted. He hoped that the OD would also decide on 1+2 as granted, as for instance it is done by the BPatG. In European procedure, an OD would commit a substantial procedural violation if it would decide upon a request which had not been formally filed.

There is thus no decision of the OD with respect to 1+2 as filed, as this request was never filed. Filing in appeal 1+2 as filed was at least daring in view of the RPBA, and the reaction of the BA should not come as a surprise.

There is no last chance for a proprietor to file a request in order to save his patent, cf. T 5/08.

4) Large number of auxiliary requests
As far as a large number of auxiliary requests is concerned, there is a limited risk that a proprietor files a lot of requests. It is not only costly, but as well not very successful. This statement is valid in first instance and in appeal, as far as a large number of requests is filed.
If he nevertheless does so, and goes for instance above 10-15 requests, experience shows that very often, either all auxiliary requests or at least a large majority of them, suffer the same drawback and can be dealt with quite swiftly. The record seems to be 681 requests, whereby 454 requests were filed 3 days before OP before the BA, see T 280/11. You can guess how it ended….

Anonymous said...

My beef is with the appeal being declared inadmissible based on an argument that the patent proprietor was not adversely affected rather than the decision that the appeal was inadmissible per se.

In the main request, both claims 1 and 2 were present. The AR fell back to claim 3. Accordingly, in the main request, the proprietor sought to have a patent maintained with claims 1 and 1+2. If the request had been allowed and the patent upheld, in a hypothetical UK revocation action, he could then have argued independent validity for both claims 1 and 2 and so by refusing this request, the OD deprived the proprietor of such claimed subject matter. The proprietor sought to appeal on the basis of claim 2 which had been taken away by the decision of the OD and as such he was adversely affected by the decision.
That the request may have been inadmissible for other, procedural, reasons does not, in my opinion justify this decision.

Kant

BRICabrac said...

I have never understood the public policy rationale for a second instance de novo. If the first instance doesn't have the resources to get to the right answer first time, then allocate more resources to that first instance, not to a subsequent instance. The subsequent instance should be there as a supervisor, to check that the first instance did their job properly. If they did, then nothing doing. If they did not, well, then there is a question over whether they should decide themselves (if the issues follow straightforwardly) or whether they should send the matter back downstairs for the first instance to correct their mistake. Otherwise, the first instance is nothing more than a rehearsal for the big show.

The Cat that Walks by Himself said...

@Raoul
3) The patentee has appealed the second part of the decision, i.e., (not to maintain 1+2 as granted).

This statement is incorrect as such a request was never filed.


I cannot agree with your conclusion.

First of all, subject-matter that was granted during examination but not maintained in opposition belongs to the decision of the opposition division. The purpose of the appeal is to verify the decision of the OD, in its explicit and implicit parts.

You cannot consider that the patentee takes distance from all subject-matter that was no literally mentioned in (auxiliary) requests.

In particular case, the main request was dismissal of the opposition. As a result, maintaining the claims as granted.



In opposition, the granted claims, where claim 2 was dependent on claim 1, were not maintained. Thus, the extent the OD's decision is that claim 1+2 is not maintained. While the main request addressed this combination, because it was the combination as granted.

Appeal procedure is not a continuation of procedure in first instance, see for instance T 23/10, Reasons § 2.2. This decision is exemplary in how Art 12(4)RPBA is to be applied.

RPBA is a secondary law, open for amendments as well as views of T-decisions might evolve over time. Your argument reduces to "things should stay as they are". I cannot agree to that either.

DrowningInPaper said...

More than fifteen Auxiliary Requests too many? But the need for many more than this is a direct consequence of the caselaw, which requires the "objectively allowable" request to already be present in the set of requests filed when proceedings are begun, to be certain of it being admitted for consideration.

Consider a not-atypical opposition. We may have one independent claim. Lack of novelty is alleged against the independent claim on the basis of art 54(3) documents D1 and D2, as is lack of inventive step on the basis of each of D3+D4 and D5+D6. Added subject-matter is alleged against two prosecution amendments. Assuming that each attack has a (barely) arguable rebuttal as granted (to preserve rights for the appeal), a plausible (maybe unclear, maybe adds matter, maybe doesn't overcome the attack) yet desirable fallback position by amendment, and a safe fallback position (certainly allowable, but in the client's view overly limited). Hence, there are 6 issues under discussion, with three possible resolutions to consider. For a full set of requests, we therefore need 3^6 requests, that is, 729 requests, if we want to ensure that the "allowable" request is on file from the start. This does not consider the situation that there might be other independent claims, or that the dependent claims might also have been attacked for added matter, insufficieny, or lack of patentability if (possibly) not entitled to the independent claim's priority date. Of course, once each issue is resolved, the number of requests to be considered is divided by three, which rapidly reduces the volume of paper to be considered. Procedurally effective it may not be, compared with simply offering curative amendments "in the event the Division decides otherwise", but it is an inevitable consequence of the caselaw.

Anonymous said...

BRICabrac said...
"I have never understood the public policy rationale for a second instance de novo"

The examination procedure actually is not a judicial but an administrative instance, subject to all kinds of interference from the executive power. The appeal procedure therefore is no "second instance" but the first and only independent judicial instance available to the parties.

The Cat that walks with a rollator

BRICabrac said...

TCTWWAR - and what is the public policy rationale for the second instance being required to re-hear the matter de novo? Why is the "independent judicial instance" (such as it is) not permitted to restrict itself to deciding firstly whether or not the administrative section did its job properly before turning to the question of whether remission or some other remedy would best serve justice?

Raoul said...

@ The Cat that Walks by Himself
1) A request with 1+2 as granted has never been positively filed
Whether you like it or not, if a request is not positively filed, the OD would go ultra petita, and would commit a substantial procedural violation, if it were to discuss such a request which has not been positively filed. In European practice there are no such hypothetical requests.

Requiring the OD to examine such requests has no basis in European procedure.

It was the deliberate intention of the proprietor to limit himself to 1+3 as granted. If he wanted the OD to look at 1+2 as granted, he should have positively filed this request.

If your reasoning was to be followed, the proprietor could have filed 1+9 as granted and expect the OD and later the Board to look at 1+n, n=2 to 8. Are you seriously contemplating such a procedure?

If the reply is positive, you should look at plenty more case law of the BA to quickly come away from such an illusion.

As the opposition has a legal and factual framework ruled by R 76(2,c), the proprietor sets his legal and factual framework with the requests he positively files when replying to the opposition and during the whole procedure.

Accepting such a way of looking at the proprietor's possibility would simply grossly advantage the proprietor with respect to the opponent.

According to G 9/91 and G 10/91, opposition is a contention procedure in which each party has to clearly set out what it wants. No more, but no less.

The proprietor's representative committed a gross mistake in not challenging the decision of the OD and hoping that the Board would interpret his plea as requesting the Board to look at 1+2.

2) RPBA is a secondary law, open for amendments
Yes as the Implementing rules of the EPC which are part of the EPC. The Implementing Rules and the RPBA can be amended by decision of the Admin Council, which has a legislative function in this respect.
Have a look at Art 23EPC with respect to the BA, and Art 33EPC for the implementing regulations. The competence of the Admin Council results from this two articles of the EPC.

Anonymous said...

TCTWWAR - I'm with BRICabrac on this - as long as a court can check that the lower decision is right and fix things if it isn't, there seems no need for the court to offer new options of its own. For example, under UK law if a Patent Office Opinion goes against a patentee, he can appeal it (on certain grounds), first by asking for a review and then by appealing the review to an actual court. But both the review and the court decision are limited to approving, or not, the decision below.

(UK anon)

Garfield said...

Have I got this right? The patentee could have saved this trouble if he had simply asked for the maintenance of claim 1 as granted in his notice of appeal. Then in his grounds of appeal, put forward a half-baked argument in favour of claim 1, plus an auxiliary request for claim 1+2 and claim 1+3 if claim 1 was not allowable.

This would have given the Board of Appeal extra work considering the main request and issuing a reasoned refusal, before going on to consider what the patentee really wanted them to grant.

Instead, the patentee tried to be reasonable, and has been punished for it.

Moral for patentees in future appeals: don't try to be reasonable and save the Board some work.

The Boards of Appeal are under attack from the EPO management for alleged inefficiency. So by being unduly rigid they've saved themselves some work in this one case, at the expense of making their lives more difficult and even less efficient in countless future cases.

Raoul said...

@Garfield
A half-baked argument for claim 1 might have render the appeal admissible, but certainly not successful.
As 1+2 had never be requested before the OD, the Board would apply Art 12(4)RPBA for not admitting it, as it could, and certainly should have been filed there, should the proprietor have wanted protection for this combination.
He would then have ended with 1+3 which was already OK.
Result: the appeal would have been dismissed, especially in view of the prohibition of reformatio in peius. As the proprietor was the sole appellant he could not be in a worse position as if he had not appealed, unless the OD overlooked a problem in such a combination, see G1/99.
The application of the RPBA has nothing to do with the pressure put by the President of the EPO on the BA.
There might be some Boards which are more formal than others when applying Art 12(4)RPBA, but his has manifestly nothing to do production pressure, more with educating proprietors.
If one looks at case law, a few years ago the BA could be considered as targeting opponents with late filings, more recently the emphasis has been put on proprietors with late requests.

Ralf said...

Moral for patentees =

Use a reliable representative who understands the law of the area they are working in, and don't blame the EPO for you own mistakes.

The Cat that Walks by Himself said...

@Garfield

Have I got this right? The patentee could have saved this trouble if he had simply asked for the maintenance of claim 1 as granted in his notice of appeal. Then in his grounds of appeal, put forward a half-baked argument in favour of claim 1 ...

Instead, the patentee tried to be reasonable, and has been punished for it.


Indeed, this is what I call "a battle of formalities". From now on, every appeal will start from a few pages of precautionary objections to unallowed requests, just in case.

The decision of the Board is easy to circumvent, just one more layer of formalities.

@Raoul

"Adversely affected" test should be objective and general enough in order to be applicable to all cases. Going into analysing opposition vs appeal requests for this purpose does not seem right.

It should be as general as "the main request was not allowed", "the claims were limited with respect to the claims as granted".

As 1+2 had never be requested before the OD, the Board would apply Art 12(4)RPBA for not admitting it, ...

This general statement cannot stand because application of Art 12(4)RPBA strongly depends on the facts of the case. And again, only very formal application of Art 12(4)RPBA would result in not admitting 1+2.



Raoul's approach to appeal proceedings leaves no space for substantive considerations and, certainly, can save a lot of time/costs for the BoA. I think such handling of appeals put all the accent on the competition between the parties, where the BoA is a mere formal observer with a few freedom for its own motion and outcome might have nothing in common with objective assessment of the case on its substance.

Anonymous said...

Merpel, some commentators and possibly the Board mix the concept of negatively affected and the necessity to reason an appeal. Just maintanng a request evidently is devoid of reasoning it. A negative effect is a precondtion for a reason, it is not a reason in itself. Either way the decision is highly desirable for the public as it has the potential to speed up the establishment of legal certainity. It is to be hoped that it be applied slso in applications, there is no reason it should not. Applicants and attorneys will have to work in the first instance proceedings and think what they want rather than buddening the public with ridiculously broad claims and think later.

cesar said...

It is quite clear that the patentee was represented by a less than knowledgeable representative. Why should the board or the opponent have bothered to deal with a request the proprietor did not bother to deal with. It was the proprietor who wasted his time and money that of the board and that of the othher party, A clear abuse of procedure that evidently and rightly the Boards are no longer ready to accept.

cicero said...

i completely agree with Raul. In fact, the mere expectation that saving a Tribunal some work or hazzleo or some other form of conveniance provided deserves some form of compensation as Garfield suggests is highly embarassing, embarassing for the profession should he be one of the profession. Should the board's impeccable conduct frustrate the lazy cat so much as to make him consider changing profession, well this consideration is indeed worth while.

Brutus said...

Artikel 108[
Time limit and form

R. 3, 6, 99, 101, 111

Notice of appeal shall be filed, in accordance with the Implementing Regulations, at the European Patent Office within two months of notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid. Within four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulation.


Stating one wants something because it would be nice to have, is a motive not a ground.

Raoul said...

@The Cat That Walks by Himself

You do not seem to understand or want to understand the RPBA, and especially how Art 12(4)RPBA works. this is quite sad.

It is however very clear how it works, and there are numerous decisions which clearly show that a request not positively filed in first instance might not be admitted in appeal. A quick look in my (recent)collection of decisions shows 14 decisions in which requests were not admitted by a BA under Art 12(4)RPBA, vs. 1 in which the Board did not make use of Art 12(4)RPBA, e.g. T 1229/10, which is rather an exception confirming the rule.

Your are only correct when coming to the conclusion that when applying Art 12(4)RPBA there is no space for substantive considerations.

You think it is unfair or not right that going into analysing opposition vs. appeal requests for this purpose, but this thought is irrelevant and is exactly what is done when applying Art 12(4)RPBA.

The proprietor is affected by the decision not to maintain the patent as granted, and that's it. But this does not mean that he can in appeal come with any request he thinks fit!

You seem as well to forget something very important in European practice: if a single claim in a given set of claims is not allowable, then the WHOLE set is not allowable, and neither an ED, an OD or a BA will have look at any other claim of said set.

The MR of the proprietor in most of oppositions will be rejection of the opposition=maintenance as granted, but if claim 1, or any claim as granted is not allowable, then the MR is not allowable, and it is for the proprietor to decide which AR he files in order to try to save his patent.

An OD or a BA will never look at possible other combinations of claims which may be grantable. If they did so, they would take sides with the proprietor which is not correct at all. They have to remain neutral.

By the contradictory nature of opposition and opposition appeal proceedings the OD or "the BoA is a mere formal observer with a few freedom for its own motion and the outcome might have nothing in common with objective assessment of the case on its substance".

This is correct, and neither an OD or a BA will suggest to the proprietor what he should file as requests. If they did so, they would not be neutral. Only positively filed requests will be examined as to their admissibility and their substance.

The situation is different in examination as an ED can make suggestions, as it is an ex parte procedure. There are however also limits in what an ED can admit, cf. R 137(3 or 5). For a BA, the RPBA will apply, and here again is for the applicant to say what he wants, not for the Boards to guess what could be grantable.

I can only concur with the comment that representation of the proprietor was not of the standard required to be successful in appeal.

May I suggest that discussions should come to an end, as a mere repetition, albeit in a different form, will not help bring matters forward.

Garfield said...

Raoul

I think you're losing sight of the fact that the present case was not decided under Art 12(4) RPBA, but on a rather strange interpretation of the term "adversely affected" in Art 107 EPC. It's that strange interpretation that people are criticising.

Instead of addressing that criticism, you're pointing to a different reason why the Board could have held the main request inadmissible.

My point was that the patentee could have easily avoided this strange interpretation. Had he requested maintenance of claim 1 as granted during the appeal, he would clearly have been adversely affected. This leads to the conclusion that the Board made a decision on formalistic grounds with little underlying substance.

Would the patentee then have been able to make an admissible auxiliary request for claim 1+2? You're right that he should have expected problems with Art 12(4) RPBA. There have certainly been a lot of situations where a request has been found inadmissible because it could have been presented at first instance.

But on its plain wording, Art 12(4) is discretionary. Sometimes the Boards are more lenient, perhaps taking account of how matters proceeded in the first instance proceedings. Possibly the representative in this case would have had a better chance if he had presented the amendment to claim 1+2 as a response to the opposition division's novelty objection against claim 1.

You've found 15 decisions which actually mention Art 12(4) RPBA, and in all but one the Board exercised its discretion against the party concerned. But how many decisions are there where requests have been admitted without any mention of Art 12(4), even though they could have been presented in the first instance proceedings?

pilsner urquell said...

@Raoul:

You do not seem to realise that a fundamental difference exists between the admissibility of an appeal and the discretionary decision to admit a claim request.

The admissibility of the appeal is NOT a matter of the RPBA. It is also NOT a discretionary decision. It is meant to be a relatively simple and objective check.

You also seem to be too fixed on the idea that the only purpose of an appeal is a judicial check of the correctness of the first instance decision. That idea is simply false if we are talking about the EPC.

T 327/13 is plainly wrong on the law. Have a look at T 1682/13 and the case law it cites to find out how admissibility should be treated.

I believe T 327/13 is an isolated decision in so far as it mistreats the concept of a party being "adversely affected". However, it does fit in a recent line of case law that declares appeals (and not: requests) inadmissible once the appellant in some sense "accepts" the first instance decision, i.e. if the appellant does not maintain the claims that were found unallowable but attempts to meet some of the objections by amendment. Most of these decisions argue that the appeal was not reasonsed rather than that the appellant was not adversely affected, but all of these decisions are wrong.

Requiring that the appellant maintains his claims and gives some silly reason why the decision to refuse them was incorrect is just a waste of everybody's time and adds a formality for no good reason whatsoever. It would ONLY make sense if there were an absolute ban on filing new claim requests and new evidence in the appeal proceedings, but there is no such ban. Just go through some randomly picked decisions and you will see. Or just read the RPBA!

Obviously parties should not abuse the system and not on purpose delay submissions until the appeal stage is reached. To prevent such abuse (and for other reasons), BoAs have the discretionary power to declare individual requests (and essentially all other kinds of submissions) inadmissible. But there will always be circumstances that make it entirely reasonable and appropriate to appeal against the decision to refuse claim 1 by amending claim 1 to include the features of claim 2.

Anonymous said...

Pilsner, I would agreee with most of your comments. However, if all requests are deemed inadmissible because of the RPBA, the result is that the appeal itself is deemded inadmissible and to that extent it is a discretionary decision.

Kant

Anonymous said...

Another point to the contributors (EPO examiners?) criticising the attorney's actions: you are in no position to judge since you are not aware of the communications between the proprietor and the representative. It is quite possible that the attorney advised that such an approach was risky but the proprietor insisted on such a request being filed.

Kant

Ralf said...

If none of us are in a position to judge, what is the purpose of the blog or the comments? What is the good of our knowledge and experience?

Presumably Kant is the attorney for the case, so knows better, otherwise Kant would not be commenting either.

So Kant, why did the proprietor make such a silly instruction to their representative? If a client's instructions are clearly contrary to advice on such formal matters, the representative must be a little clearer in their advice.

If a client asked their representative to delay the filing of an application until the 12 month priority period had expired, with the intent still being to claim priority, would Kant oblige? If so, I suggest the client has been ill-advised.

Garfield said...

Ralf

There is a difference between advice which says "The law is clear, we will fail" and advice which says "Art 12(4) RPBA could be a problem, but it is discretionary so there is a chance".

In the present case, the patentee did not fail because the law is clear. The Board's interpretation of "adversely affected" (Art 107 EPC) is not in accordance with other case law, as Pilsner has pointed out. It seems to be perverse.

Ralf said...

"Dear client who knows how to makes widgets and nothing about patents, which is why you must pay my huge bills, I write to advise you that your recent instructions regarding the appeal and auxiliary requests may be problematic under Art 21(4) RPBA"

This is not something I would write. Would the client have been supplied with a copy of the EPC etc with the original engagement letter?

Meldrew said...

Ralf,

You are unlikely to get an attorney to say "my client is an idiot" on an open forum but most attorneys will admit to clients sometimes asking them to do things that appear stupid. However, even then, what looks stupid is not always stupid and may have good unapparent reasons.

For example, fiercely prosecuting an EP through to allowance and then not paying the grant fee looks stupid. However, I have known of several cases where the only reason for fighting hard in prosecution was to avoid an adverse decision that might be pointed to in litigation elsewhere [e.g. USA]. Allowing the patent to go to grant might attract an opposition, so in these circumstances not paying the grant fee was the smart move, even if perplexing to the EP examiner (and in one of these cases perplexing to the EP attorney until he was told what was happening).

Having said that, those clients who treat their attorneys like mushrooms [keep them in the dark, cover them with horse shit, and hope something nice will result] seldom gets the best results. If the attorney is kept fully aware of what the client is seeking to achieve, better results normally ensue.

In short, IP is all about managing ignorance, and we are all ignorant to some extent.

Until you know what someone knows, you are not in a position to determine whether what they did with that knowledge was stupid or not.





Garfield said...

Ralf, I wouldn't write those exact words either. But I would explain the nature of the likely problems and my assessment of the chances of success or failure. I would also explain the likely costs of an appeal. Then I would have a discussion with the client to help them assess the commercial value of obtaining their desired claims.

The final decision about whether to appeal is for the client, and should balance all those factors. For example, if the commercial value is higher than the costs, an appeal could be worthwhile even if the chance of success is low.

But all this good advice and sensible decision-making falls apart if the Board then refuses to admit the appeal, not because of the problems you foresaw, but on grounds which perversely do not agree with the usual understanding of the term "adversely affected" in Art 107 EPC.

I agree there could be a question in the present case about why the commercial value of claim 1+2 was not apparent during the first instance proceedings. Though all sorts of issues can arise unexpectedly during oral proceedings, and clients don't always give you the full picture at the outset. So it is probably unfair to criticise if you weren't there.

Ralf said...

Meldrew,
My client is an idiot.
Ralf.

p.s. I am in-house and my company is called......

Raoul said...

@pilsner urquell and garfield

I am fully aware of the fundamental difference between admissibility of an appeal and application of Art 12(4)RPBA. If the appeal is not admissible, then it is moot to discuss whether a set of claims should have been filed in first instance or not. The concentration on Art 12(4)RPBA was more following comments from The Cat That Walks by Himself. Just a remark: Art 12(1)RPBA defines the basis of the appeal procedure.

Before continuing long discussions, we should look at the decision itself. The decision and the reasons given are perfectly clear.
That the proprietor was aggrieved by the decision of the OD is not in dispute. The Board even acknowledges this, see 2.3 “In the present case it is clear that the appellants are adversely affected by the Opposition Division's decision not to accede to the then main request”. What the Board added, is that this decision was not challenged in the grounds for appeal, cf. 2d sentence in Point 2.3.
Moreover the Board went further and considered in 2.3.1 that “On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division”.
If an appellant does not challenge the decision of the first instance, the only possible conclusion was that the appeal could not be admissible. This is the more so, since the Board also said in 2.3.1 “On page 1 of the grounds of appeal, the appellants state their satisfaction with "the Decision in that claim 3 as granted was maintained".

In 2.3.5 the Board further stated “The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division”.

When adding the alternative of claim 2, then Art 12(4)RPBA is lurking in the background. I only ever said that if the appeal had been admissible, then very probably the new request would not have been admissible under Art 12(4)RPBA. In the present decision Art 12(4)RPBA never played a role, and this is OK.

I would therefore not dare say that T 327/13 is against the law, and that the appeal has been dismissed for very formal reasons. The contrary is true!

What has happened here is that the German representative of the proprietor was expecting the BA to be acting in the same way as does the BPatG. Having filed 1+3 in front of the OD and lost on claim 1, he expected that the BA would also look at the previous combination 1+2 as it is usual in Germany. The BA was not prepared to play this game. It is not uncommon for German representatives to try this, and they regularly end up with a bloody nose. The blog was started on IPKat by a message from “a patent attorney on the other side of the English Channel from this Kat”, very probably a German attorney. We are back to the beginning of this §.

That T 1682/13 is much better is not in dispute. But in the circumstances, T 327/13 is absolutely correct.

Ralf said...

Nice summary and explanation Raoul.

National attorneys should always remember to apply the law according to the EPC and not mix things up. Or, if they do so, to at least not moan when they get stung.

pilsner urquell said...

@Kant:

if all requests are deemed inadmissible because of the RPBA, the result is that the appeal itself is deemded inadmissible

Why would the appeal be inadmissible?

(Non-)admittance of requests logically comes after the examination of the admissibility of the appeal. It is true that admissibility must be checked at every stage of the proceedings, but, as far I understand, that does not mean that a sufficiently reasoned statement of grounds of appeal can become insufficiently reasoned or that a negatively affected party can stop being negatively affected.

pilsner urquell said...

@Raoul:
Before continuing long discussions, we should look at the decision itself. The decision and the reasons given are perfectly clear.
That the proprietor was aggrieved by the decision of the OD is not in dispute. The Board even acknowledges this, see 2.3 “In the present case it is clear that the appellants are adversely affected by the Opposition Division's decision not to accede to the then main request”.


Yes, the board acknowledges in point 2.3 that the appellant was adversely affected, only to contradict itself in point 2.3.4 by stating that the appellant was NOT adversely affected. Does that make sense? Not really.

When adding the alternative of claim 2, then Art 12(4)RPBA is lurking in the background. I only ever said that if the appeal had been admissible, then very probably the new request would not have been admissible under Art 12(4)RPBA. In the present decision Art 12(4)RPBA never played a role, and this is OK.

The appeal should not have been rejected as inadmissible (and in particular not for the reasons given). That is the point of this discussion. That is why the IPKat's correspondent got upset. Rightly so.

Art. 12(4) RPBA may have been lurking in the background, but, despite what you seem to be thinking, appellants mostly have rather good chances at getting new requests admitted if they are filed no later than the grounds of appeal. By finding the appeal inadmissible the board unfairly and wrongly cuts off this possibility.

But in the circumstances, T 327/13 is absolutely correct.

The reasons given in T 327/13 for finding the appeal inadmissible are wrong, as you seem to admit by stating that T 1682/13 is "better". T 327/13 is therefore certainly not "absolutely correct". That possibly the appeal should have been dismissed for other reasons is irrelevant for the present discussion.

If the reasoning of one decision contradicts the reasoning of another decision, as is the case with T 1682/13 and T 327/13, then at least one decision is wrong. There is only one EPC.

T 327/13 might remain an isolated decision, but if its reasoning (or that of the other questionable decisions I referred to in my first comment) is adopted by other boards it will have serious consequences for many pending appeals. That is worrying.

You cannot blame the representatives in most of the cases that are now threatened with inadmissibility of the appeal. When the appeal in T 327/13 was filed, these strange decisions had not yet come out. T 2532/11 is from late 2013, see e.g. here for a discussion. Try to find one decision listed in the 2013 edition of the Case Law book that found an appeal inadmissible because the appellant's main request tried to deal with all the grounds for refusal or revocation by amendment (thereby "accepting" the decision).

Kuifje said...

Anonymous (Wednesday, 23 September 2015 at 17:27:00 BST) wrote: 'Applicants and attorneys will have to work in the first instance proceedings and think what they want rather than buddening the public with ridiculously broad claims and think later'.

Nonsense. It is well established that as a basic principle a creator is entitled to protection. He is fully in his right to try to obtain as wide a protection as possible, without being restricted by unneccessary formalities.

Let's not forget (EPC A. 1) that the EPC is a system of law for the grant (not the refusal) of patents.

Basically, the system is like this:

The inventor explains his invention and gives a proposal for the scope of protection
The state says: No, too wide. Not novel, or not inventive, or not supported
The inventor comes with a new reasonable proposal taking into account the objections of the state, etc etc;


Applicants should think what they want, you say. But isn't that clear? What they want (and are entitled to) is 'As wide a protection as the system will allow'.

There is no implicit requirement in the EPC that applicants should decide at the start what they want. That would unfairly limit them in their legal right to try to obtain the the maximum possible.

Anonymous said...

Looking at the file documents, it would appear that claim 2 was the subject of original AR1 but in the hearing before the OD, the objection of "non-convergence" of requests was raised and as a consequence AR2 became AR1. It would also appear that the proprietor did not attend the hearing.

It is therefore possible that after a review of the decision, the propietor or its representative felt that an argument could be raised in respect of claim 2 as granted and that the Board might not raise the same "non-convergence" argument if claim 3 was included as an independent claim. On the face of it, a reasonable strategy but one ulitmately stymied by a Board wishing to dispose of the matter.

Kant

Anonymous said...

Pilsener, may be "inadmissible" was the wrong term - in, for example, T 1400/11, all requests were deemed indamissible and hence the appeal was dismissed.

Kant

Tired observer said...

The underlying problem with decisions like this one (even if one would consider it a nice piece of legal artwork) is that, although other boards may not follow it, opponents will raise the objection whenever a similar situation arises and the pertinent will have the trouble to justify in their decision why they did not follow this approach. More and more time and energy is wasted in formalistic discussions instead of going to the bone of whether the alleged invention merits to be protected by a patent or not.

Decisions like this leave a bitter taste.

Garfield said...

Raoul

Pilsner has explained it well, but perhaps I can summarise it like this. You are arguing that T 327/13 comes to the correct result in the circumstances of the case. But if so, then has it done it for the right reasons? I don't believe it has.

The danger comes if other Boards follow this new interpretation of "adversely affected" in future, and not just in the circumstances of this case. "Adversely affected" is a mandatory requirement of the EPC, so every appellant must now provide arguments in support of their first instance main request, even if they intend to amend it. That's a waste of time and effort for all concerned.

The correct place to deal with the circumstances of T 327/13 would have been under Art 12(4) RBPA. That's discretionary, not mandatory. So future Boards in different cases would be able to adjust the outcome to suit different circumstances.

MaxDrei said...

As we all know, decisive for the rights of our clients is what we ask for i) in the priority document and ii) in the PCT application, as filed, one year later. We get only one chance. It has to be right first time. We have to be careful what we ask for.

So too, in opposition proceedings. We are all deemed to know the by now age-old Rules of Procedure of the Boards of Appeal, in all their strictness and severity. We all tell the world that our fees are justified because of the immennse difficulty of passing the written examination that entitles us to style ourselves "European Patent Attorney". In these days of a swarm of hungry and aggressive UPC attorneys about to burst on the EPO scene, do we want the EPO Rules so forgiving that any old unstudied Tom, Dick or Harry can prosecute appeals at the EPO as effectively as we can?

So this case goes down on "not adversely affected". So what? It might also have gone down on "request inadmissible". It is our job to craft the right Requests and make sure they are admitted. That means getting it, wait for it, "right first time", I mean, in reply to the Notice of Opposition.

Who, amongst the ranks of the competent, would want anything else?

Kuifje said...

MaxDrei

For me it is obvious that a request also includes all dependent requests. So if the main request was refused in opposition, at the same time this is a refusal of all dependent requests (except those that were singled out in an auxiliary request)

So in this case, the applicant was explicitly adversely affected wrt claim 1, but implicitly also wrt to all other combinations of claims (except 1+3 and dependent claims which were in the AR)

At the start of opposition the patentee has it all. Certain parts he loses during opposition. But the logical position is then that he keeps rights to whatever remained, whether he explixitly defined it as requests or not.

In this case the Appeal decision implies that the patentee lost something (claim 2) in opposition proceedings that was not even explicitly decided on by the OD.

How can that be?

MaxDrei said...

In reply to Kuifje I say:

1. I haven't read the file, so what I write now might not be right. But:.
2. The Opponent attacked all claims in the patent and requested that the patent be revoked. He paid a big fee to the EPO. Is his Request to be ignored, and given no attention?
3. Suppose the OD wanted to uphold Claim 2 but that the patent owner gave the OD no chance to "keep" Claim 2, no chance at all to issue a Decision upholding Claim 2? Whose fault was it then, that no such Decision came out of proceedings before the OD?

Raoul said...

@pilsner urquell
The way you read the decision is quite strange. You read one § at a time and then after the second one you forget the whole context and claim that the decision is contradictory in itself.

You give an interpretation of “better” which as well is quite strange. It is not if one decision is better that the other one is plainly wrong. By better I meant that it appears more generally applicable. My apologies if I was not clear enough.

Every decision is to be seen only valid in the specific circumstances in which it was taken. Should any party want to apply it in another case, it has to be justified, why by analogy it can be applied in the circumstances at stake. For instance, it does not help to simply fling around with decisions when sitting the EQE. In order to get marks, an explanation has to be given why it is applicable in the exam situation.

You claim that the decision is plainly wrong. Let’s just settle to the fact that we agree to disagree. To me, if the proprietor considers in its grounds of appeal that the decision is correct, he is, in the end, not aggrieved by the decision, and the plain and logical consequence is that the appeal is not admissible. No more, no less has been said in this decision.

That is exactly what has also been said in T 2532/11, cf. first sentence of 2.3.2. That decision acknowledges that the obligation to contest the decision of the first instance remains. In T 2532/11, the BA acknowledged that there exists less stringent case law in admissibility matters.

In T 2532/11 the BA stated that “The aim of the present appeal is thus to gain an opportunity to get the patent maintained in amended form through new claims making the revoked patent compliant with the reasons given by the opposition division, or through the introduction of new features thus forming different embodiments of the alleged invention which were never discussed before regarding their compliance with the requirements of the EPC.” That is similar to the case at stake, and hence the conclusion is identical.

When looking at T 2115/09, T 395/12 or T 1101/14,no reasons were brought forward as to why the impugned decision was to be set aside. as a consequence the appeal were not admissible. In our case it is worse: the proprietor accepts the decision, but wants something else.

In T 746/12 or T 1359/11 it was held that an appeal is not admissible, if the grounds of appeal did not give a response to the grounds in the OD’s reasons, for instance by only responding to an obiter dictum not part of the actual decision.

T 899/13 went even one step further, and considered an appeal not admissible as not all the reasons for refusal had been answered. The Headnotes are worth looking at, albeit they apply primarily in examination appeal procedure.

Raoul said...

When looking at case law in which an appeal has been deemed admissible even if new requests have been filed, it was always immediately apparent that the requests filed when entering appeal tried to overcome the reasons for revocation, e.g. T 137/09, T 249/11(with purely “formal” requests) or T 935/12.

To be admissible, at least one objection leading to revocation has to be addressed in the grounds for appeal, but then the proprietor cannot try later to deal with the other grounds for revocation.
In all those decisions, the patent was revoked, which is not the situation in our case, where the patent was maintained in amended form.

While it is true that the original main request, maintenance as granted=rejection of the opposition was not allowed, this does not mean that the proprietor can discharge himself from his duty to explain why the decision was wrong and should be set aside. Here the proprietor even admitted that the decisions of the OD were correct!

In T 501/09, the opponent’s appeal was not admissible, as he simply filed new documents with his grounds of appeal and did not address the reasons underlying the decision to be set aside. Point 8 of the reasons is very interesting, as it links admissibility of the appeal with admissibility of late submissions under Art 12(4)RPBA.

It might have been more elegant for the BA in T 327/13, to decide that the appeal was admissible, and then not to admit the new requests, but the way chosen was certainly not wrong. In this I can agree with Garfield and with Max Drei (in his earlier comment), but certainly not with Kuifje.

The decision should not leave a bitter taste. It is just to remind that appeal proceedings are not the continuation of first instance proceedings, but a judicial review of decisions taken in first instance.

Re Max Drei’s reply to Kuifje: even if the OD would have considered 1+2 as allowable, the OD had to remain neutral and not suggest a possible allowable claim. It was the free decision of the representative to request 1+3. Who is to blame for not requesting 1+2 before the OD? Neither the OD nor the BA.

To sum it up, there are no hypothetical requests to be considered, either by an OD or by a BA. As I have stressed many times, they can only deal with positively filed requests, and if claim 1 as granted, neither the OD nor the BA have a duty to look at all possible combination of requests to see if one could be allowable. This is the more so, if the proprietor files a specific combination of claims as granted, like here 1+3. Even if 1+3 had not been deemed allowable, the conclusion on admissibility when filing in appeal 1+2 would not change.

Roufousse T. Fairfly said...

PART 1/3
MaxDrei,

It is interesting that you should write (3) considering your (1).

Es lohnt sich doch die Akte zu lesen!

P filed a main request amending claim 1 (addressing Art. 123 issues) with his reply to the notice of opposition, together with ARs 1 to 8. These consisted of the amended claim 1 combined with the s.-m. of original dependent claims 2 to 9, each individually dependent from 1.

So when P walked in the conference room in Munich, he was in essence demanding that every claim should be examined individually, and in their original order.

This is how the OP before the OD went, according to the minutes:

8. The admissibility of the "prior use" of an exchangeable continuous casting nozzle, which was submitted by the opponent, was discussed. [...]

After a break, the OD [announced] that the evidence of the opponent with respect to the matter are not convincing [...]. Therefore, said evidence is prima facie not relevant and therefore not admissible in the proceedings (under Art. 114(2) EPC).
[what's this "prima facie" stuff doing here anyway?]

9. Novelty of the main request was discussed in view of D1 and D6. [...] [The OD announced] that the MR was not new over D1 (Art. 54(3) EPC) but new over D6 (Art. 54(2) EPC).

The chairman indicated that the 8 auxiliary requests were not converging and that for this reason not all requests would be discussed during oral proceedings. [P] indicated he now wanted to discuss auxiliary request 2.

[O] presented objections under Art. 123(2) EPC for this request for claims 2 to 6. [P] agreed that there was a problem
[RTF: SHEESH! Never ever confess or admit anything!] and suggested to file a new first auxiliary request based on this second auxiliary request with claims 2 to 6 deleted.

10. [P] filed a new [AR1 consisting of] [...] claims 1 and 3 of the MR. [...] [The OD announced] that the new AR 1 would be admissible under Art. 123(2) EPC.


Was P coerced into dropping his original AR1 (1+2), or voluntarily responded to a gentle nudge? Did he have a choice, or was his right to be heard infringed? What if he had stuck to his guns, and refused to withdraw any of his original requests, which had been filed in due time?

The notion of "converging requests" stems from the limited discretion provided by R. 137 in EXAMINATION proceedings for the ED not to allow amendments. You will note that the part of the Guidelines H-III-3.3.1.2 mentioning "convergence" specifically falls under the heading "3.3 examination proceedings".

[note: These new Guidelines came into force around the the time the OP was held. Even if they were not yet released on the day of the OP, they would still reflect the current prevailing thinking.]

For opposition, H-III-3.4.2 clearly state that the OD should only very subtly suggest dropping requests after at least some semblance of debate over their substance.

Roufousse T. Fairfly said...

PART 2/3:

From the above minutes, I gather that this is not what happened during the OP. It looks to me it went something more like "hey guys, if we have to go through all of those ARs, we're still gonna be here at midnight, and the porters will throw us out of the building, so hurry up, will ya?."

Why did P's attorney comply?

Did he have a reasonable brief from his client, and good fallback positions based on a sound commercial strategy? Or was he merely instructed not to cede any ground under any circumstances and do his best? From my own experience, I think I know the answer to that one...

P seems to have realised belatedly that both 1+2 and 1+3 were needed, and "appealed".

Suppose the requests had been examined in the order originally intended, and that AR1 (1+2) had been allowed.

In that case AR2 (1+3) would never have been examined.

Had P appealed this hypothetical decision and tried to tuck 1+3 to the maintained 1+2 in the same fashion, the appeal would have ended exactly the same way: since the applicant got what he wanted (1+2), he would not have been adversely affected by not seeing his lower ranking AR for (1+3).

Some readers appear to adhere to the specious argument that the rejection of the MR amounted to a rejection of 1+2. But such an approach belies the nature of proceedings before the EPO, which is request based: the deciding instance only needs ONE ground to reject a request in its entirety, regardless of the objective merits of any its other parts [e.g. Art. 100: "whether at least one ground for opposition"]. So if claim 1 of the MR lacked novelty, there stops the discussion, basta!

Roufousse T. Fairfly said...

PART 3/3:

This is a fundamental difference between European and US proceedings. On the other shore, all instances from the Examiner to the SCOTUS will usually grind through claims one by one, and individually mark those that are allowable.

This explains in my opinion the frequently unreadable, mechanical nature of USPTO OAs. When PAIR initially came online I compared a PCT application I had worked on with the corresponding US domestic one. Both had the same gazillion number of claims. My friend across the Atlantic had used my D1 and argued 102 on the independent claims. He then picked up a keyword from each dependent claim, found some random document which mentioned that keyword, and wrote an individual rejection for each and every claim, resulting in a 50+ page long document. He must have filled his quota, but how can a human work like that?

[Sometimes the notion of a "representative claim" is used in the US. It makes me cringe, but that's an other issue.]

So in the US 1+2 and 1+3 would have made it through if allowable.

Errors were made by both the OD and the representative. If P had better been aware of his rights and limitations, this wouldn't have happened.

Requests for 1+2 and 1+3, could/should have filed in due time. But then other issues would arise:

Amendments must be examined for compliance with with ALL of the EPC under Art. 101(3). The conflict between Art. 100 and 101 was the subject of much case law.

So, should a set of independent claims be examined for

1) Unity (Art. 82) and
2) Clarity (Art. 84 as expanded by Rule 43(2))?

My general feeling: Art. 82 and 84 are already frustrating enough to handle in examination; in opposition, I would generally be inclined to let through multiple independent claims of the same category, or a recitation of unrelated alternatives within a given claim, even if this is not too elegant.

I have to disagree with other earlier commenters:

I always with a bit of regret observe that BoA's decisions tend to become a battle of formalities, which does not contribute to an expected [elegant teaching] style of an appeal body.

If you want to have formalistic, look at the USPTO and PTAB with petitions and motions of all descriptions, and obligations. Moreover, I consider it to be "formalistic" to argue that the decision against the MR was specifically directed to the 1+2 combination.

It does not seem quite right to me, especially, when I think that behind a contested patent hide years of research and financial investments.

The opponent alleged prior use, and produced as evidence bills for rather largish sums for products which he felt fell within the scope of the claims. He also had patents and applications of his own. The EPO or the courts are there to adjudicate between the interests of the parties, and one will walk away less happy than he other.

The "it cost us a lot of money" argument does sound to me like the tired "800 million dollar pill" one.

Furthermore, the objective of patent law has been described for at least one century as the quest of a balance of the public.

I sometimes see on this blog calls for criminal liability in cases of IP infringement. Shouldn't this cut both ways? The proprietor has certainly profited from the long period of uncertainty about the scope of his patent.

And a final unrelated point, concerning the reference to Liebermann: GODWIN ALERT! The painter uttered this pronouncement in the Berlin dialect on 30 January 1933 as he was looking at torch-holding uniformed thugs marching right under his window which overlooked the Pariser Platz.

pilsner urquell said...

@Raoul:
The way you read the decision is quite strange. You read one § at a time and then after the second one you forget the whole context and claim that the decision is contradictory in itself.

Do the two paragraphs not contradict each other?

You give an interpretation of “better” which as well is quite strange. It is not if one decision is better that the other one is plainly wrong. By better I meant that it appears more generally applicable. My apologies if I was not clear enough.

What I wrote is that if two decisions contradict each other on a legal point, at least one of the two got it wrong.

T 1682/13: adversely affected means that the appellant got less than what he requested, i.e. his main request was not allowed. Decisive is a comparison of the party's requests in the first instance proceedings with the order of the decision.

If you apply this very clear and simple rule to the facts of T 327/13, then the appellant was adversely affected. As his main request he asked for claim 1 as granted, but he did not get it.

T 327/13 starts out correctly in point 2.3: the appellant did not get his main request, so was adversely affected. But then, mysteriously, the board starts looking at the appellant's requests filed with the statement of grounds and somehow concludes that he was not adversely affected after all.

So first of all, there is a plain logical contradiction. Once it has been determined, unconditionally, that the appellant was adversely affected by the OD's decision, one cannot logically arrive at the opposite conclusion as well.

I can read, so I understand that in point 2.3.4 the board uses a different notion of "adversely affected by the OD's decision" than in point 2.3. In point 2.3 it used the correct notion, in agreement with T 1682/13 and the established case law. In points 2.3.4 and 2.4 it used a notion of its own making.

To me, if the proprietor considers in its grounds of appeal that the decision is correct, he is, in the end, not aggrieved by the decision, he is, in the end, not aggrieved by the decision

Assuming that by "not aggrieved" you mean not "adversely affected" within the meaning of Art. 107 EPC, then try to find a decision referred to in the 2013 edition of the case law book that supports your position. See in particular IV.E.2.4.2.

And just look Art. 107 EPC itself. It clearly defines what parties are entitled to appeal against a particular decision without saying anything about what should be in the appeal. It is Art. 108 (and its implementing rules) that defines the requirements of an appeal filed by a party that is entitled to appeal. If a party is "entitled" to appeal, it may still file an inadmissible appeal by missing a time limit or screwing up the statement of grounds of appeal, but that will not cause it to lose its status of being "entitled" to appeal.

That is exactly what has also been said in T 2532/11, cf. first sentence of 2.3.2.

No, that is not "exactly" what T 2532/11 said. T 327/13 turns on the "adversely affected" criterion for admissibility. See point 2.4, it refers to Art. 107 EPC. T 2532/11 is about Rule 99(2) EPC. I am sorry if this degree of legal subtlety disturbs you (you already seemed not to care about the distinction between admissibility of the appeal and admittance of requests), but such details are in fact important.

T 2532/11 and T 327/13 have in common that not "contesting" the decision renders the appeal inadmissible, but they arrive at that conclusion in different ways. They also have in common that they are wrong. Being based on R. 99(2) the reasoning of T 2532/11 makes more sense than that of T 327/13, but it is inconsistent with too many decades of BoA jurisprudence and practice.

pilsner urquell said...

When looking at T 2115/09, T 395/12 or T 1101/14,no reasons were brought forward as to why the impugned decision was to be set aside. as a consequence the appeal were not admissible. In our case it is worse: the proprietor accepts the decision, but wants something else.

The appellant indeed must give reasons why the decision should be set aside and, for example, be replaced with a decision allowing an amended main request filed with the grounds of appeal. And before T 2532/11, that was sufficient (both for Art. 107 and for Rule 99(2)).

After T 2532/11, appellants should maintain one of the refused requests even if they know the request is not allowable, and they have to come up with some silly reason why the decision to refuse that request was wrong. That is especially problematic if you have filed your appeal before T 2532/11 came out. It is still annoying and a waste of everybody's time if you file an appeal today.

None of the decisions you cite in your last three paragraphs of your 17:44 comment (T 2115/09 etc.) follows the line started by T 2532/11.

When looking at case law in which an appeal has been deemed admissible even if new requests have been filed, it was always immediately apparent that the requests filed when entering appeal tried to overcome the reasons for revocation, e.g. T 137/09, T 249/11(with purely “formal” requests) or T 935/12.

In T 2532/11, the OD had refused all admitted requests for lack of novelty over either D1d or D4. The statement of grounds of appeal contains detailed reasons why the amended requests are new over these two documents. But the board did not care as the appellant had not explained why it considered the decision to be wrong.

The situation in T 137/09 and in T 935/12 was very similar, but those boards did get it right (appeal admissible). See e.g. point 1.4 of T 935/12:
1.4 The main and four auxiliary requests filed together with the statement of grounds of appeal did not contain the features objected to in the appealed decision. Therefore, it is immediately apparent that the basis for that decision no longer exists.

The appellant evidently "accepted" the decision, see point X under a).

In T 249/11 the appellant had requested a remittal to the OD for further prosecution on the basis of the claims as granted, which essentially corresponded to his main request before the OD.

While it is true that the original main request, maintenance as granted=rejection of the opposition was not allowed, this does not mean that the proprietor can discharge himself from his duty to explain why the decision was wrong and should be set aside.

So where in T 935/12 did the appellant explain why the decision was wrong?

MaxDrei said...

Lots of good stuff there from Roufousse (as ever). It's Saturday and I'm not going to spend the week-end reading the file or blogging but am going to spend just enough time to keep the debate moving.

As we all know, what DG1 thinks is neither here nor there, because if it gets it wrong there is an appeal, and what the TBA thinks is decisive. So the imperative for any party is to preserve its position for appeal.

My point though is that as a representative you have to think through, ever earlier, what is the "position" that my client takes, on each issue, and has to preserve, at all costs, for presentation to the better judges of the TBA. This case perhaps shows that you need to know it before the OD orals begin, because you might come under pressure from the Chair to step back. You need to know when you can step back, and when you can't.

I think that DG3 is sending a message here, to representatives. I think it parallels what EPO management is urging on DG1. Proceedings before the Opposition Division are to be used to put cases in good shape for decision, and the appeal instance is there ONLY to examine for error by the OD.

So Roufousse, could the aggrieved patentee here complain of a substantial procedural violation. Did the crimes of the OD rise to that level? I doubt it. But because the patentee didn't ask, we shall never know.

Kuifje said...

MaxDrei

The problem I have is that the situation in OP has now de facto become:

The patentee defines some request. He gets them or not, but he may appeal what he did not get.
However, he lost irrevocably that what was not even discussed, that what he did not explicitly put in a request.

So basically as soon as somebody opposes a patent, the patentee loses EVERYTHING irrevocably, except that what he places explicitly in requests and fights for in OP. That, and only that, he may keep at the end of OP, or lose and appeal.

The whole philosophy behind that doesn't seem right. He should only lose what the OD considered not patentable.

In this case, he lost claim 2, even though no adverse decision was taken on claim 2.

So what if the patentee would have wanted to keep both claims 2 and 3 (and 4,5,6 etc, why not). The only possibility would have been to file a request with all claims made independent, each with their own set of dependent claims.

Surely you don't advocate that, do you?

Say a neighbour claims your land. And he wins wrt part of it. And you appeal and find out that all of a sudden all your other land has become state property. Would you find that logical?

Kuifje said...

Roufousse wrote

'Some readers appear to adhere to the specious argument that the rejection of the MR amounted to a rejection of 1+2. But such an approach belies the nature of proceedings before the EPO, which is request based: the deciding instance only needs ONE ground to reject a request in its entirety, regardless of the objective merits of any its other parts [e.g. Art. 100: "whether at least one ground for opposition"]. So if claim 1 of the MR lacked novelty, there stops the discussion, basta!'

Yes, proceedings are request based. But it is only logical that a request comprises all the 'dependent' requests. Otherwise the basic right enshrined in A 17(2) of the UNIVERSAL DECLARATION OF HUMAN RIGHTS 'No one shall be arbitrarily deprived of his property' is not respected.

In this case the patentee lost claim 2, even though no decision was taken on it, and he can't even appeal. If't that's not 'arbitrarily deprived of his property', what is?



Note that "whether at least one ground for opposition" is Art 101, not 100

MaxDrei said...

Thanks for your post Kuifje: it made me smile.

There are some patent attorneys who claim "Anything disclosed in this patent application that is new and not obvious" and are surprised when objection arises, that the claim is not clear enough to grant. The reality these days is that you have to write out your full set of claims before you file your application and if you need to start writing your claims, drawing on the description, after the patent has issued, you are in trouble already. Not because the Board is sticky on admitting Requersts late but because you cannot meet the provisions of Art 123(2) and 84 EPC.

Your Land Registry metaphor is flawed. Most representatives retain, going into appeal, a precautionary Main Request for the patent as granted. OD chairs understand this very well.

Finally, every time a writer resorts to "Surely" as a first word, It alerts me that what they are about to write isn't sure at all. Rather, the contrary.

Anonymous said...


Amazed how much agitation a one-off decision can cause.

Most commentators clearly over-estimate the significance of a single decision. Shit happens, even in the boards of appeal (more to be expected after the reform).

says Kaka

pilsner urquell said...

@Rouffouse:
Had P appealed this hypothetical decision and tried to tuck 1+3 to the maintained 1+2 in the same fashion, the appeal would have ended exactly the same way: since the applicant got what he wanted (1+2), he would not have been adversely affected by not seeing his lower ranking AR for (1+3).

According to the established case law he would still have been adversely affected, because his main request was not allowed.

Of course if your main request is 1+2 (or 1+3) and you get 1+2 (or 1+3), you will not be adversely affected and you are not entitled to appeal.

So, should a set of independent claims be examined for

1) Unity (Art. 82) and
2) Clarity (Art. 84 as expanded by Rule 43(2))?


In opposition, no and no. See G 1/91 and T 263/05.

@Kuifje:
So basically as soon as somebody opposes a patent, the patentee loses EVERYTHING irrevocably, except that what he places explicitly in requests and fights for in OP. That, and only that, he may keep at the end of OP, or lose and appeal.

The whole philosophy behind that doesn't seem right. He should only lose what the OD considered not patentable.


He only loses the requests that the EPO considered not allowable. It's up to the parties to define their requests.

Provided he files such a request, a proprietor is allowed to cancel only his claim 1 and continue with his dependent claims now turned independent (G 1/91, T 263/05). For each of the resulting independent claims the proprietor will have to come up with a good argument why it overcomes the objection against the previous independent claim.

Don't expect the EPO to draft your requests.

Ralf said...

Another attorney claiming breach of an applicant's human rights. Incompetence is not the fault of the EPO and human rights have been stretched too far if it is going to protect incompetent, negligent, acts. The EPO had such a sad case earlier this month.
And, there is no property right in a property that doesn't exist.
My advice = if you can't cut it, find a new career path and stop the whining about the EPO.

Raoul said...

I think the discussion is now turning in circles. It is time to stop, especially when suddenly human rights are brought in. This path is too slippery to be taken, and to be honest brings us away from the real problems.

Be it an OD or a BA, it can only decide upon requests which have been positively filed. The rest is just irrelevant.

And if a proprietor who is a priori aggrieved considers that the decision taken was correct, then he should not be surprised if his appeal is at the end not admissible. From aggrieved he goes over to being non-aggrieved. Anything else is a waste of time for everybody.

As far as a patent is considered as a piece of property who has to be properly defended, please have a look at T 2513/11, Point 3.2 of the reasons. It could not be more clear. The result, which is wanted by the legislator is that in a contradictory procedure as opposition, the proprietor may loose his patent.

Here as well, the proprietor`s representative acted in a sub-optimal way, like in the case at stake.

pilsner urquell said...

@Raoul:
And if a proprietor who is a priori aggrieved considers that the decision taken was correct, then he should not be surprised if his appeal is at the end not admissible. From aggrieved he goes over to being non-aggrieved.

And have you by now found any support for that position in, let's say, the 2013 edition of the case law book?

SecretAgent said...

Kuifje: A claim is not property. A patent is property. A request is for maintenance of an invalid patent in amended form. At the EPO, dependent claims are ready-prepared amendments in convenient form of which the public is deemed to have had reasonable notice. The EPO will not tell the Proprietor what they may have; the EPO will tell the proprietor whether it is willing to grant what he requests.

And a revoked patent does not become state property with analogy to state possession of private land: at worst, a revoked patent causes a limited-time state-granted right to fence off common land to fail.

Kuifje said...

I'm still bewildered.

SecretAgent put it nicely 'A request is for maintenance of an invalid patent in amended form'. Fair enough, I don't dispute that.

And Raoul is also right 'Be it an OD or a BA, it can only decide upon requests which have been positively filed.'.

But an adverse decision by the OD on a request is appealable.

What bothers me though is the unappealability of the loss of the dependent claims (claim 2 in this case)

Let's take a helicopter view:

Before the opposition proceedings the patentee had exclusivity right to the subject matter of claim 2. After the opposition proceedings not, and he can't even appeal. So he must have lost his right to appeal somewhere along the way.

So where exactly in the OP did he lose his right to appeal against the loss of claim 2? Which decision, or which of his own actions caused this to happen?

It can't be his decision to have claim 3 considered as an auxiliary request, because the loss of the higher ranking request (which included claim 2) is appealable.

So what is it, the action or decision or legal provision that made the patentee lose the right to appeal the loss of claim 2?

The outcome of this appeal, and the underlying logic, goes firmly against my sense of justice, but appearently this is a minority view. So be it, then.

MaxDrei said...

I think it a pity that Kuifje still thinks natural justice is being denied. I think that's why the Member states set up a review process for the Enlarged Board of Appeal, to put such injustices straight, when they happen. But they didn't happen here, did they?

There have to be Rules of Play. Without them, there is not just inefficiency; there is chaos, and nothing more than children stamping their feet and declaring "It isn't fair!".

If the Rules are unjust then, Kuitje, say so. But I don't know anybody who says that there is injustice in the EPC, the Regs, the G'lines or the RPBA. Nor is anybody here saying that the TBA failed to follow the Rules.

Imagine doing obviousness without the Problem and Solution Approach Rulebook. Just look at how they do it in the USA, for example. Again, chaos (paradise for lawyers). Who wants that in Europe? Not me.

MaxDrei said...

Re-reading Kuifje just above, I'm struck by a much shorter answer to his question about claim 2. Dependent claims are there to provide the fall-back positions. But all that changes, at grant. In inter partes proceedings at the EPO, they are no longer fall-back positions. The ONLY fall-back positions you have are your Requests. So draft your sequence of Auxiliary Requests for the OD even more carefully than you draft your set of claims for your client's about-to-be-filed patent application. In this case as in every opposition at the EPO, your Auxiliaries are the ONLY ice axe you've got that has any chance of stopping your client's patent going down the icy slope and over the precipice.

One more thought: There are two sorts of Auxiliary request; good ones and bad ones. The bad ones simply remind the tribunal that, even at its core, the patent is still unconvincing.

The good ones are those that advertise that the core is solid. When an EPO tribunal sees that, it is more inclined to allow the Main Request (and finish before lunch). So when your client urges you to file few if any Auxiliary Requests, out of a misplaced supposition that it will encourage the tribunal to jump immediately to the last Request, explain to him that i) they are there to do the job of the dependent claims and ii) well-crafted auxiliaries increase rather than diminish the chances of getting home on the Main Request.

Ralf said...

Dear Max,
you have breached my firm's copyright and unregistered TM rights (soon to be registered) by use of the phrase:
"nothing more than children stamping their feet and declaring "It isn't fair!"

We have significant goodwill in such whining against the EPO and we claim a monopoly in not accepting incompetence on behalf of our attorneys. To do so would be to admit to the company's shareholders that the EPO isn't responsible for our dire exclusivity position. And we can't have that, can we?

The Cat that Walks by Himself said...

Re: So basically as soon as somebody opposes a patent, the patentee loses EVERYTHING irrevocably, except that what he places explicitly in requests and fights for in OP. That, and only that, he may keep at the end of OP, or lose and appeal.

It reminded me the story: "Company Y sold an airplane to company X, along with 1001-pages of instructions on assembling the airplane. When employees of company X assembled the object according to the instructions, they received a ship, not an airplane. Company X immediately contacted company Y and requested technical support. When experts of company Y arrived and examined the assembled object, they came to the conclusion that company X has forgotten to execute the very last assembling step on page 1001, i.e., "after the assembling, shape the object with a file".

pilsner urquell said...

@Kuifje:
What bothers me though is the unappealability of the loss of the dependent claims (claim 2 in this case)

Firstly, this specific appeal should have been found admissible. The appellant was negatively affected by the refusal of his main request, and he filed arguments and amendments to overcome the reasons for that refusal.

Secondly, if the appellant had really wanted claim 2 even if he could not get claim 1, then he SHOULD have maintained his AR1 before the OD. He SHOULD have put the OD in a position to decide on that claim. By withdrawing AR1 he prevented the OD from deciding on it. That very often has the consequence that the BoA decides not to admit the request (Art. 12(4) RPBA).

In the present case the appeal should have been found admissible, but the appellant would still have had to come up with very good arguments why the board should have admitted the request into the proceedings. Withdrawing it during the oral proceedings before the OD was really not wise. But perhaps he can argue that the OD pressured him into dropping AR1. He will effectively have to argue that he should be excused for not really knowing how OD and appeal proceedings work, but there is a chance that the board will exercise its discretion to be forgiving.

So in short: if you want the OD to decide on a particular claim, then file a corresponding request!

As was already pointed out by others, following your reasoning an applicant could simply dump 200 pages of description on the EPO and request "give me everything that is patentable". That is not how things works before the EPO.

Raoul said...

@pilsner urquell

It might be irritating to have to accept that the appeal should have been admissible, but I still think the decision was correct.
And if it would have been admissible, then 1+2 would not have been admitted.
For the proprietor the result is the same.

@Kuifje
You might have missed that in the present case, all dependent claims were dependent on claim 1. In the present instance, there is thus not a higher request with claim 2. All request based on 1+n, n=2 to 9 have the same rank.
If claim 3 was dependent on claim 1 or 2 and the proprietor chose to file 1+3, there is again no question of higher ranking request. It could be only the case if we had the constellation 2/1 and 3/1, but even there if the proprietor chooses 1+3 and he is not offending Art 123(2) it is his choice.
It is up to the proprietor to decide what he wants to pursue in opposition, and if he considers later that he made the wrong choice, it is his problem.
A far as a patent as property is concerned, have a look at T 2513/11. The Board made it very clear of what it thinks about this amendment.

Anonymous said...

Raoul said: "And if [the appeal] would have been admissible, then 1+2 would not have been admitted. For the proprietor the result is the same"
This argument - often put forward in the above comments - does not convince me. Admissibility of an appeal is a fundamental issue, which should not be tinkered with only because in this particular case the result at first glance appears the same.
An appellant might exceptionally have convincing reasons in favour of the admissibility of a late request or modification of its case (which clearly is not excluded under Art. 12(4)RPBA and is often admitted by Boards). If its appeal were considered not admissible following the reasoning in the present decision, then he would not even have a chance to present its reasons for such late request!
Incidentally I wonder whether e.g. the Bundesverfassungsgericht might be very happy with such way of restricting a party's right to file an appeal.

The cat that still walks with a rollator

SecretAgent said...

T2513/11. Spot on. Hadn't read that one, but EXACTLY explains how the Boards see this nebulous sort of appeal to vague principles of justice and the like. It's all very well for us to argue about how things should be, but in the meantime we have to advise our clients on how things are, and how to get the results they want within that reality. So, do the Opposition properly, file the requests you want at first instance, and then let the Board sort it out on the basis of those requests if your Opposition Division get things in a tangle.

Kuifje said...

Sorry, been away a few days

MaxDrei stated that 'all that changes, at grant. In inter partes proceedings at the EPO, they are no longer fall-back positions. The ONLY fall-back positions you have are your Requests.'


So, the situation then is: As soon as opposition is filed, everything is off the table, without even a right to appeal, except what the patentee explicitly places in a request.


So in essence: as soon as a patent is opposed, irrespective of the outcome, (unless of course the patent is upheld unamended), the patentee loses much more than what the opponent successfully attacked.

Yes, this goes against my sense of natural justice, especially because in practice the number of request is limited, and a (fictive) ranking is legally imposed.


Anonymous said...

Sometimes the Board is reasonable and allows a new request. This decision is a case in point
http://www.epo.org/law-practice/case-law-appeals/pdf/t130919eu1.pdf
which really should be read together with the OD decision, the latter being good entertainment for a Friday afternoon.

Kant

SecretAgent said...

"As soon as opposition is filed, everything is off the table, without even a right to appeal, except what the patentee explicitly places in a request."

Absolutely. Art 101(2) and (3) EPC. Only one defect kills the patent, unless the proprietor amends the patent such as to remove the defect. Never are "claims" mentioned, only "the patent", which is treated as an indivisible whole, which is either invalid or valid. Therefore, the three possible outcomes - maintained as granted, maintained in amended form, or revoked. It is up to the proprietor to make the amendments, not the EPO, which he must do in an appropriate request. That's how the system works, and was designed to work.

pilsner urquell said...

@Kuifje:
So, the situation then is: As soon as opposition is filed, everything is off the table, without even a right to appeal, except what the patentee explicitly places in a request.

Even before a patent is granted, you can only be sure that the ED considers that what you have actually requested.

You may sometimes be lucky with an ED that points out to you what kind of claim set would be allowable, but you really should not rely on such help. In opposition you can be sure that the OD will not offer such help.

Look up Article 113(2) EPC: the EPO does not have the freedom to draft your claims. The OD would commit a substantial procedural violation by adding claim 3 to claim 1 and maintaining the patent as so amended.

Regarding "right to appeal", make sure your main request in opposition is rejection of the opposition. Do not drop that request unless you really know what you are doing. Also make sure to file any auxiliary request as early as possible. And do not withdraw any unless you really know what you are doing. Do not withdraw a request only because you think the ED or OD might otherwise be annoyed with you. If the ED or OD does get annoyed, or you think they might, calmly explain that you are only preserving your right to appeal.

In the case we have here, the patentee dropped AR1. Why did he do that? Can you come up with a good explanation why the patentee dropped AR1 before the OD, only to reintroduce it on appeal? (The answer might be a change of mind, but the appeal procedure does not exist to accommodate changes of mind regarding what subject-matter the patentee really wants to get patented.)

Yes, this goes against my sense of natural justice, especially because in practice the number of request is limited, and a (fictive) ranking is legally imposed.

Fictive ranking?
What do you expect? That the OD makes a random choice from those requests that it considers allowable? Of course requests must be ranked. Only one request can be allowed, so the patentee had better decide which request he likes best, which request he likes 2nd best, etc. (In case you want to argue that the OD should first figure out what subset of requests are allowable and then let the patentee pick one, that's just a waste of time. The patentee does not need to know which requests are allowable before he can rank his requests.)

Natural justice certainly has nothing to do with not having to tell the court precisely what you want it to decide on. No court will let you dump hundreds of pages on it with the request "give me everything that I am entitled to".

Regarding the number of requests being "limited", just file early or come up with good arguments why the late filing should be excused.

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