T 0144/09 04-05-2011

1. Non-admittance of the main request and the first, second, fourth and sixth auxiliary requests into the appeal proceedings - Article 12(4) of the Rules of Procedure of the Boards of Appeal (RPBA)

1.1 The opposition division issued a summons to oral proceedings dated 11 January 2008. This did not mention the need to include the space requirement feature (i.e. the feature "so that the space requirement in the building is substantially limited to the space required by the elevator car and counterweight on their paths including safety distances and the space needed for the hoisting ropes"). In its submission dated 26 August 2007 (sic), which was received at the EPO on 8 September 2008, a new main request and three new auxiliary requests were filed, each of which included the space requirement feature. It may also be noted that the written submission with which these requests were filed made no mention at all of having included the space requirement feature, nor where it had its basis in the application as filed.

The fact that during the oral proceedings of 7 October 2008 an objection under Article 123(2) EPC was found to exist by the opposition division concerning the inclusion of the space requirement feature, is thus considered to be entirely in line with the normal course of proceedings.

1.2 The opposition division, as also indicated in the minutes of the oral proceedings at 11:40 and 11:50, not only explained the reason for its finding under Article 123(2) EPC but also asked the proprietor explicitly whether he would file any request that would overcome the objection.

1.3 The proprietor's choice not to file any amended or auxiliary request in light of these circumstances is found by the Board to be of importance in considering the admissibility of certain new requests in the appeal proceedings in accordance with Article 12(4) RPBA.

1.4 Article 12(4) RPBA reads as follows:

"(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirement in (2)."

It follows from Article 31 of the Vienna Convention on the Law of Treaties that the EPC should be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of the treaty's object and purpose (see J 9/07, Reasons, item 13). The same applies to the interpretation of the Implementing Regulations on the Grant of European Patents and the Rules of Procedure of the Boards of Appeal, as they are part of the EPC (Article 164(1)) or have their basis in the Implementing Regulations (Rule 12(3) EPC). Article 12(4) RPBA thus allows the Board, to hold any such request as inadmissible if it could have been presented in the first-instance proceedings. Thus, when deciding on this issue, the Board should state the facts that show why the specific request(s) now on file could have been presented in first instance proceedings. In particular, the Board should take into account all relevant circumstances. It is evident that a request can be held inadmissible under Article 12(4) RPBA when, as in the present case, added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings.

1.5 The amendments made by way of the main request and the first and second auxiliary requests, all involved inter alia deletion of the space requirement feature. However, the simple removal of that feature which the proprietor had itself added as an amendment during the opposition proceedings, could evidently have been done by way of presenting a request to this effect during oral proceedings before the opposition division so as to overcome the objection of the opposition division. This is particularly so in light of the fact that the opposition division chairman explicitly asked the proprietor whether he would file a request which overcame the objection.

1.6 Although the proprietor argued that it was a complete surprise to be presented with an Article 123(2) EPC objection because the annex to the summons had stated that a flat drive machine unit was not essential, this does not provide an overriding reason as to why the proprietor, when offered the chance of filing requests to overcome that objection, did not do so. Not only can an opposition division depart from its preliminary opinion, in view of argumentation by the parties for example, but in the Board's view the proprietor should not at all have been surprised that a feature it introduced by way of amendment was subject to objection. Moreover, the opposition division had not indicated in its annex to the summons that a flat drive machine unit was not essential in combination with the space requirement feature, because the space requirement feature was not in any of the claims on file at that time. Any comment in the annex to the oral proceedings summons concerned a differently worded claim.

1.7 The appellant's contention that the space requirement feature had been an essential part of the whole "machine room-less" concept in the other family members is not found to be convincing in relation to admissibility of the various requests in appeal proceedings, since by the amendments made in the main request and the first and second auxiliary requests, the space requirement feature has been entirely removed, whereas the opposition division did not object to the space requirement feature being introduced into the claims per se, but instead that the application as filed required that a flat drive machine unit also be included when considering the space requirement feature.

1.8 Further, in regard to the reliance placed on decision T 545/01 by the appellant, the independent claim found allowable by the Board in that case (see page 3 of that decision) included not only the space requirement feature but also the drive machine unit of a flat construction. In the Reasons 1.3 of that decision, it is also stated that the application as originally filed disclosed to the skilled person that a flat machine was essential. Even on this basis alone, the appellant should thus not have been surprised that the opposition division also found that a flat drive machine was an essential feature of the disclosure.

1.9 The appellant's argument that the proprietor "did not want to follow this invitation, as the limitation to 'flat machines' would have effectively reduced the scope of protection to the content of maintained EP 784 030", shows only that the proprietor had made a conscious and deliberate choice not to overcome the objection made by the opposition division for reasons unconnected with the objection itself. The Board therefore does not find such an argument persuasive. On the contrary, the proprietor's deliberate choice not to file any request to overcome the objection, despite the offer to do so, is a further indication as to why a request filed only with the appeal grounds should not be admitted into the appeal proceedings.

1.10 The further argument that the proprietor did not know the reasons why the opposition division had reached its conclusion and that this meant the proprietor had to completely revise its defence strategy is also found unconvincing in relation to why no further request was filed during opposition proceedings. The amendment to the claim to include the space requirement feature was made of the proprietor's own volition at a late stage of proceedings (about 1 month before the oral proceedings) and it should have been expected that objections may have arisen and it could thus likewise be expected that the proprietor should have taken this possibility into account.

1.11 The further argument of the appellant that a deletion of the space requirement feature during those oral proceedings would have resulted in objections from the opponents due to late filing is also unconvincing. Merely because an objection might be raised, whether or not such an objection would be justified, is not a hindrance to filing a request, not least when the chairman invited the proprietor to do so.

1.12 The Board is also not convinced by the appellant's argument that the necessity to drop the space requirement feature only became clear after receiving the decision, because the opposition division explained at the oral proceedings what the objection was. Indeed, the opposition division explained in detail the nature of the objection, as is clear from the minutes of those proceedings.

1.13 The appellant's argument that the Board, by not admitting certain requests, would be disrespecting the proprietor's right to have its patent examined on claims it has agreed and would thus be in violation of Article 113(2) EPC as made evident in T 1854/08, is also not found convincing.

Article 113(2) EPC does not require that a request must be found admissible, merely because it has been filed. Nor is the Board deciding on requests which have not been submitted to it. Merely because a request is filed, does not prevent the Board from finding the request inadmissible. This is evident from the straightforward wording of Article 12(4) RPBA.

Further, the case T 1854/08 cited by the appellant concerns an ex parte matter, in which new requests were filed and, due to a perceived lack of clarity of the claims in those requests reported to the applicant by email, a decision was taken on a previous set of claims which had however been replaced. In the present case, the Board would not be deciding on a previous set of claims, since those claims are not the subject of this decision. T 1854/08 thus concerns an entirely different matter and does not add any support to the appellant's argument.

1.14 The appellant further argued that any new request made on appeal could, as a general rule, have been filed in the first instance proceedings, so that a restrictive use of Article 12(4) RPBA in this manner to prevent the proprietor from filing claims in this case would lead to a situation where claims could never be forwarded which have not already been forwarded in the first instance, and that this could not have been the intention of Article 12(4) RPBA.

This interpretation of Article 12(4) RPBA is not considered to be in line with the intention addressed by this Article. Although from the very wording of Article 12(4) RPBA it is clear that such claims can be held inadmissible, it is up to the Board to exercise its discretion in such matters, having regard to the particular circumstances of the case. It is certainly not so that any request not filed in the first instance proceedings should not be admitted into the appeal proceedings; far from it. The Board has also (see below) admitted a new request, the third auxiliary request, into proceedings.

In so far, the circumstances of the present case are particularly noteworthy, since the considered and deliberate choice made by the proprietor not to file a further request, despite being given the opportunity to do so after the objection had been explained, is found by the Board to precisely correspond to the intention of Article 12(4) RPBA. Indeed, the primary purpose of an appeal is to provide the opportunity for a final instance review of the decision of a previous instance, thereby (in inter partes proceedings) allowing the losing party to challenge the decision of an opposition division on its merits and to obtain a judicial ruling as to whether the decision of the opposition division is correct (G 9/91 and G 10/91 - OJ EPO 1993, 408, 420). The appeal proceedings do not have the purpose of starting a new examination of different subject matter, in particular where such subject matter involves broadening of claims considered by an opposition division.

For an interpretation in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of the treaty's object and purpose (see point 1.4. above), additional reference is made to CA/133/02 e, the document put to the Administrative Council concerning the change to the RPBA when introducing Article 10a(4) (which later became Article 12(4)), where the following is stated (see page 12):

"... and the boards will retain their discretion, as a review instance, to refuse material excluded at first instance or not submitted during first instance proceedings."

Also from this, it is evident that the function of the Boards of Appeal was not only recognised to be that of a review instance, but that one way of ensuring this function was respected was codifying, in the Rules of Procedure, that material not submitted at first instance could be refused. Article 10a(4) refers to such material as "facts, evidence or requests" (see CA/133/02 e, page 15), as does current Article 12(4) RPBA.

1.15 The appellant also stated that a contravention of Article 113(1) EPC would occur if the requests were not admitted. However, the Board fails to see any such contravention. The appellant, in writing (by means of its response of 20 April 2011) and orally during the oral proceedings, both had and took the opportunity to present its arguments as to why its requests should be found admissible and allowed into the appeal proceedings. The fact that the Board finds its arguments unconvincing does not mean that the appellant has not had an opportunity to present its arguments on the matter or that the Board had ignored the appellant's submissions in this respect.

1.16 In consequence of the aforegoing, the Board decided not to admit the main request and the first and second auxiliary requests into the appeal proceedings, based on the provisions of Article 12(4) RPBA.

1.17 For the same reasons, the Board also holds the fourth auxiliary request filed by the appellant with its submission of 20 April 2011 as inadmissible with respect to Article 12(4) RPBA, as claim 1 of this request also omits the space requirement feature. In this regard it should be noted that Article 12 RPBA is entitled "Basis of Proceedings", and whilst Article 12(4) RPBA makes a reference to Articles 12(1) and (2) RPBA, this reference only concerns which matters are to be taken into account when considering the appeal. It does not state that Article 12(4) RPBA is restricted in its application by the time limit for filing the grounds of appeal or any reply thereto. Indeed, a restriction in that sense would not seem to serve any useful purpose and might even result in a possibility of artificially circumventing Article 12(4) RPBA, irrespective of whether Article 13(1) RPBA might be a further provision of the Rules of Procedure that could provide a different barrier to filing such requests.

1.18 The sixth auxiliary request, filed during the oral proceedings after discussion of the previous requests, does include the space requirement feature as per the claim considered by the opposition division in its decision. Additionally the further feature is added that the drive machine unit "is of a flat construction as compared to its width" (in addition to the space requirement being "irrespective of hoisting height" which was added first in the fifth auxiliary request).

A claim including this particular combination of features, in view of the objection made by the opposition division during oral proceedings and the offer to file amendments, is a claim which the Board finds could have been filed during opposition proceedings in order to overcome the Article 123(2) EPC objection.

Again, the deliberate choice of the appellant not to file such a claim with this or similar wording during the oral proceedings before the opposition division, in the knowledge of the Article 123(2) EPC objection, is held by the Board to result in this being an inadmissible request in appeal proceedings, for the same reasons as given above on the basis of Article 12(4) RPBA.

The appellant's arguments that the subject matter of the claim was the subject matter of a dependent claim and was not complex do not alter the aforegoing conclusion on admissibility of the request, since neither the complexity of the request nor the fact that the feature was in a dependent claim relates to the reasons for the Board's conclusion.

1.19 The appellant's arguments concerning G 1/05 and the subsequent revision of the implementing regulations limiting the possibility of filing serial divisional applications over the lifetime of an application do not alter any of the aforegoing conclusions. The findings in G 1/05 do not relate to the finding of non-admissibility of certain requests under Article 12(4) RPBA, even if the conclusions reached therein may have been of importance had any request been both admitted and found to meet the requirement of Article 123(2) EPC. The appellant also did not further explain why G 1/05 would be of consequence for the present decision in this regard.

2. Third auxiliary request

2.1 Claim 1 of the third auxiliary request includes the space requirement feature but does not define a flat drive machine unit. Other amendments are made to the claim as well, but these are unrelated to the combination of the flat drive machine unit in combination with the space requirement feature and thus do not affect the matter of Article 123(2) EPC. The appellant also did not argue that these other features were of any significance in that regard.

2.2 As also stated in the Board's communication of 21 March 2011, the space requirement feature as included in claim 1 failed to include the terminology "irrespective of the hoisting height" which was however contained in paragraph [0005] as follows: "for which the space requirement in the building, irrespective of the hoisting height, is substantially limited to...". That missing terminology, in the context of paragraph [0005], can only be understood in the light of the whole disclosure to relate to the presence of a flat drive machine unit, since the only disclosure of a drive machine unit in the entire application as filed which meets such space requirement is one which is of a flat construction (see e.g. the published application at paragraph [0011]). The appellant also did not dispute the fact that a flat drive machine unit was the only type of drive disclosed specifically in any embodiment.

The appellant however argued that a skilled person reading the application would understand that the claims were broad enough to cover different types of drive units such as elongated ones which could be fitted into the space between the elevator car and the elevator shaft wall, the cross-sectional area of which not being greater than the footprint of the counterweight and its guiding means including safety distances. A skilled person would recognise that any such drive unit would correspond to the basic principle of the invention, which was efficient space utilization.

However, the Board finds this argument unconvincing, because it is not based on any direct and unambiguous disclosure in the application as filed, but rather on a non-disclosed intention of how paragraph [0005] could be interpreted. Paragraph [0005] of the application refers inter alia to the problem of efficient space utilization being solved by a "new type of traction sheave elevator" as the invention, and that invention being defined by the features of the characterizing part of claim 1. Not only did the invention defined in claim 1 as filed not include the space requirement feature, but nowhere is there any indication that a general idea of the invention was merely to provide coverage for all types of drive unit as long as they could fit into the cross-sectional area provided by the elevator car and the counterweight on their paths including safety distances.

The appellant further argued that it could be seen in the GPP, GP and P applications as filed, that the underlying concept of space utilization was common throughout the family of applications in particular when looking at the claims as filed. However (and irrespective of the matter that a comparison of the disclosures of the GPP, GP and P applications might itself give rise to further objections in relation to Article 76(1) EPC when considering the subject matter of claim 1 of the third auxiliary request), in as far as concerns Article 123(2) EPC, the content of the family applications and their possible disclosures is not a matter for consideration.

2.3 Thus, based on the content of the application as filed, the Board can find no disclosure of the space requirement feature without requiring the presence of a flat drive machine. Since claim 1 does not also define a flat drive machine in addition to the space requirement feature, the requirement of Article 123(2) EPC is not met.

The third auxiliary request is therefore not allowable.

3. Fifth auxiliary request - non-admittance into proceedings in accordance with Article 13(1) RPBA

3.1 The fifth auxiliary request was filed in response to the Board's communication of 21 March 2011 and supplemented the space requirement feature with the expression from paragraph [0005] of "irrespective of the hoisting height".

3.2 However, it was already stated in the Board's communication (item 2.1.3) that at least a flat drive machine was a structural feature implicitly required in the context of paragraph [0005] (from where the space requirement feature had been taken).

Instead of including that feature, the appellant chose to include the feature "irrespective of hoisting height", even though the Board had stated in 2.1.2 of that communication that the space requirement feature could only seemingly be fulfilled by the inclusion of a flat drive machine.

The feature "irrespective of the hoisting height" is however an unclear functional indication of an additional result to be achieved by the space requirement feature, rather than defining a clear structural feature in accordance with the application as filed.

Since the inclusion of this feature would give rise to at least a further objection (under Article 84 EPC 1973) and was thus not prima facie allowable, the Board, in exercising its discretion under Article 13(1) RPBA, did not admit this request into proceedings as it was not procedurally economical to examine a request in detail that already at first sight could not be the basis for the maintenance of a European patent.

4. Request for referral of a question to the Enlarged Board of Appeal - Article 112(1)(a) EPC 1973

The request of respondent/opponent OII to refer a question to the Enlarged Board of Appeal is not of relevance to the outcome of the present case, since all the requests of the appellant are either not admitted into proceedings or not allowable. Thus, no decision is required to clarify an important point of law, since it is not of relevance to the decision to be taken. Further, the Board finds that the question formulated by the respondent is anyway not a question which needs to be answered to ensure uniform application of the law, since there is no contradictory case law. The question as to whether subject matter of an application can be regarded as having been unequivocally and definitively abandoned, even more so in relation to a "real intention of an applicant" (see part (b) of the proposed question), will depend on the facts and circumstances of each individual case and is thus not a question of law.

The proposed question therefore fails to meet the requirements of Article 112(1)(a) EPC 1973.

5. Requests for apportionment of costs in favour of the respondents

Under Article 104(1) and Rule 100(1) EPC each party to the opposition proceedings shall bear the costs it has incurred, unless decided differently for reasons of equity. In this respect, Article 16(1)(e) RPBA mentions abuse of procedure as a possible reason for ordering payment of costs. The respondents argued that all of the requests could have been filed in the opposition proceedings and it was an abuse of procedure to file them e.g. with the grounds of appeal. If this had been done, the entire appeal proceedings and its associated costs could allegedly have been avoided.

However, the appeal procedure is a procedure in which the decision of a first instance department may be challenged. The fact that the Board finally judged the appellant's challenge unsuccessful on the grounds of non-admittance, inadmissibility or non-allowability of certain requests has not per se caused the respondents any additional unexpected costs in the appeal procedure, nor did it make the appeal procedure superfluous. Also, the oral proceedings were a necessary part of the procedure and all parties availed themselves of the opportunity to make arguments on the various requests.

In the case at hand, the respondents did not put forward any facts that could be regarded as equitable reasons for apportionment of costs in their favour. The Board also cannot find any facts underlying a direct abuse of procedure. But it is true that the non-admittance decision under Article 12(4) RPBA involves the assessment of elements of this nature. However, these procedural situations must be differentiated. Abuse of procedure as such is procedurally unfair and consequently there is a special need for protection of the other party to the proceedings that can result in a decision for apportionment of costs in the other party's favour. The non-compliance with Rule 12(4) RPBA already has severe consequences in itself that result in a restriction concerning the filing of further amended versions of the patent for consideration. In such circumstances there is no equitable need for an additional decision on costs in favour of the other party.

Thus, the Board finds no reason to apportion costs in favour of the respondents.

6. Article 112a / Rule 106 EPC

6.1 In response to the Board's communication of 21 March 2011 in which the Board provisionally considered the main request and the first and second auxiliary requests inadmissible with respect to Article 12(4) RPBA, the appellant responded with its submission of 12 April 2011 by stating that the non-admission of its requests would be forwarded for review by the Enlarged Board of Appeal in accordance with Article 112a EPC, based on a violation of Article 113(1) and (2) EPC.

6.2 At the oral proceedings, and having heard the parties on this matter, the Board decided not to admit the main request and the first and second auxiliary requests, and additionally the fourth and sixth auxiliary requests, into the proceedings.

6.3 The appellant then stated that it maintained its objection, in accordance with Rule 106 EPC, as explained in writing.

6.4 As explained e.g. in Reasons 1.13 and 1.15 supra, the Board has considered the appellant's objections with respect to Article 113(1) and (2), and the appellant was able to comment on these matters. The Board however does not find that they lead to the need for any different procedure to have been adopted by the Board.

The Board thus finds that the appellant's objection under Rule 106 EPC is void of substance and must be rejected.