4.12. Criteria for consideration of amended claims
T 52/15 × View decision
Filing of a series of main requests resulting in each new main request being considered as replacing the previously filed main request. Procedural steps preventing the department of first instance from deciding on relevant issues. (See points 1.1-2.11 of the reasoning)
In T 52/15 the proprietor (appellant) filed a new "main request" every time the opposition division announced its opinion that the previous main request did not comply with the requirements of the EPC. Since the opposition division was of the opinion that the last main request did not comply with Art. 56 EPC, it revoked the patent. The appealed decision dealt only with this last main request. The proprietor requested that the decision be set aside and that the patent be maintained as granted or, alternatively, on the basis of one of auxiliary requests 1 to 4, which differed substantially from the request which was decided upon in the appealed decision. The proprietor argued that the previously filed main requests had not been withdrawn. Each new request was meant to supersede the previous one for the purpose of discussion only, but not to replace it. The board noted that the opposition division did not err when considering that each newly filed "main request" was clearly meant to replace the previously filed one/s. The board emphasised that the withdrawal of a request was a serious procedural step which was usually announced explicitly by a party via a corresponding statement and that any such statement must be mentioned in the minutes (see T 361/08). However, an explicit withdrawal was not required if a party's behaviour or procedural steps it took during the proceedings made its intention unequivocal (see T 388/12). The board also highlighted the fact that, according to established EPO practice, parties filing more than one request must specify which request is the main request, which is/are the auxiliary request(s), and, if there are several auxiliary requests, their ranking (see e.g. R 14/10). The board concluded that the written decision of the opposition division was based on the only request that was pending when the decision to revoke the patent was orally announced. The main request and auxiliary requests 1 and 2 were filed with the statement setting out the grounds of appeal and corresponded to the proprietor's initial request and two auxiliary requests filed during the oral proceedings before the opposition division. These requests differed substantially from the request which was decided upon in the appealed decision. The board stated that the reintroduction of previously withdrawn requests on appeal ran counter to the main purpose of inter partes appeal proceedings, namely to give the losing party the possibility of challenging the decision of the opposition division on its merits. The board also noted that although there have been decisions where the boards have allowed patent proprietors to reinstate broader requests which had been withdrawn or not maintained during the opposition proceedings, numerous decisions have also been issued in which the board's discretion has been applied in a strict manner and such requests have not been admitted into the appeal proceedings (see T 390/07, T 361/08, T 671/08, T 922/08, T 1525/10, T 140/12, T 1697/12, T 143/14). This appeared to be the current predominant approach applied by the boards. The requests were not admitted into the appeal proceedings (Art. 12(4) RPBA 2007).
In T 1695/14 the auxiliary request in question, which the patent proprietor had filed during the oral proceedings, was the same as one of the auxiliary requests it had filed with its grounds of appeal. But the proprietor had not then pursued that original auxiliary request in the written proceedings, instead filing new auxiliary requests with a written submission stating that it wanted them to replace its previous ones. The board interpreted this statement as an implicit withdrawal of the auxiliary request; requests could be withdrawn either explicitly or implicitly, the latter being when the circumstances left no doubt that a party no longer wished to pursue them (see T 388/12, T 52/15). Requests not later pursued as the main or an auxiliary request, but (implicitly) withdrawn, did not remain in the proceedings; procedural law provided for current and withdrawn requests, but not for ones on hold. The board then considered the relevant criteria for admitting a resubmitted request. Since a withdrawn request no longer formed part of the proceedings (see T 1732/10, T 143/14), its admission on resubmission later in them was subject to the same procedural standards as applied to an entirely new one (see T 1732/10, T 122/10); this was the boards' settled case law. Hence a request initially filed on appeal but implicitly or explicitly withdrawn later on in the proceedings had to be considered a new request when subsequently refiled. Its admission was then governed in particular by Art. 13 RPBA 2007 and the criteria for exercising discretion under it developed by the case law.
4.12.13 Reinstating broader claims in appeal proceedings
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The limitation of claims may represent attempts to respond to objections by the EPO or an opponent without necessarily involving any immediate intentions of substantive abandonment. In this case the question arises of whether the applicant or patent proprietor can reinstate broader claims which had been proposed at an earlier stage of the proceedings.
Previously, the boards consistently ruled that a proprietor who has defended his patent to only a limited extent in opposition proceedings is not prohibited a priori (i.e. except in specific cases where the reformatio in peius prohibition applies or there has been abuse of procedure) from returning to a broader version of his patent, including the granted version, in subsequent appeal proceedings. Intervening limitations of the patent do not imply any express abandonment of parts of it but are to be regarded merely as attempts to word the patent so as to delimit it against objections (see inter alia T 123/85, OJ 1989, 336; T 296/87, OJ 1990, 195; T 331/89; T 900/94; T 699/00; T 880/01; T 794/02; T 934/02; T 1018/02; T 386/04; T 1276/05). In T 331/89, the board found the reactivation of earlier claims to be an abuse of procedure because the request had not been filed until the oral proceedings and, in view of its content, was not immediately allowable.
This case law must, however, be interpreted in the light of Art. 12(4) RPBA 2007.
Since adoption of R. 116(2) EPC and Art. 12(4) and 13 RPBA 2007, the relevant legislation differs from that applicable at the time of the decision in T 123/85. Whether sets of claims presented on appeal are to be considered is therefore not be determined in accordance with the case law established in that decision, but rather in accordance with the procedural rules now applicable to appeal procedures and the specific circumstances of the case. Accordingly, the admission of auxiliary requests is subject to Art. 12(4) RPBA 2007, which provides that the boards may at their discretion disregard sets of claims which were found to be late filed and not admitted at first instance or which ought already to have been presented at first instance. This discretion also applies to sets of claims presented for the first time on appeal as a means of defending a broader version of the patent than that at issue in the opposition proceedings (T 28/10, T 36/12, T 467/13).
Referring to T 28/10, the board stated in T 671/08 that there was no absolute right of the patent proprietor to revert in appeal to the patent as granted nor that he is in principle hindered from doing so. There will be cases, as the present case shows, in which the admission of such a request poses no additional work and other cases in which such a request may even constitute an abuse of the proceedings. It follows thus that if such a request is submitted in appeal the board has to exercise its discretion under Art. 12(4) RPBA 2007 and decide whether to admit or not such a request.
In T 1282/05, on being summoned to oral proceedings the appellants had filed new requests, the independent claims in these requests being worded far more broadly than the matter previously claimed in the appeal proceedings and essentially constituting a return to the original claim 1. The board found that the amendments could not be regarded as a response to objections in the summons, nor had the appellants given any reasons for them. Moreover, the statement of grounds gave no indication that such a return towards the originally claimed matter was intended. Hence the appellants' actions constituted an infringement of Art. 12(2) RPBA 2007. Furthermore, comparable requests could have been submitted before the department of first instance (T 1420/06).
In T 2075/11 the patent as granted could clearly have been defended in the opposition proceedings but the appellant (patent proprietor) had instead chosen to limit it, which meant that no first-instance decision had been taken on the granted version (see also similar case T 933/04). The board did not regard the appellant as having abandoned the patent as granted but it was of the firm view that admitting the request for maintenance as granted at the appeal stage went against the principle of procedural economy. In T 781/13, too, the board did not allow the appellant to revert to the original version of claim 1 as granted as it was against the principle of procedural economy.
In T 796/02, the board held that it amounted to an abuse of procedure to withdraw a request with broader claims in appeal proceedings in order to prevent the board from taking a negative decision on it, but then re-introduce those broader claims before the opposition division, after a remittal of the case for further prosecution on the basis of much more limited claims was obtained.
In T 1578/13, the appellant requested that its patent revoked by the opposition division be maintained on the basis of three auxiliary requests already dealt with in the contested decision. In a fourth auxiliary request, it requested that it be maintained as originally granted. In its first three auxiliary requests, the wording of the granted patent had been amended to read "gas outlet casing" instead of "gas inlet casing". During the opposition proceedings, the appellant, instead of requesting that the opposition be rejected or defending the patent as granted, had merely requested that the patent be maintained in versions correcting the allegedly obvious mistake. The board considered that, at the latest on learning at the oral proceedings at first instance, that the opposition division was not minded to allow the requested correction, the appellant ought to have begun defending the patent as granted. By that point, it had to have been clear to it that reverting to the patent as granted would immediately overcome the objection under Art. 123(3) EPC.