R 0011/08 (Fundamental violation of Article 113 EPC and procedural defect under Rule 104(b) EPC/PANASONIC) 06-04-2009

I. The petition for review concerns the decision T 221/06 of Board of Appeal 3.4.02, announced at the end of oral proceedings on 24 July 2008, to revoke European Patent No. 0636880 ("the patent") which concerned quantitative analysing apparatus. The petitioners (Panasonic Corporation and Kyoto Daiichi Kagaku Co., Ltd.) were the patent proprietors and appellants. The opponent (Roche Diagnostics Corporation) was also an appellant. Both appeals were against the decision of the Opposition Division of 16 December 2005 to maintain the patent in amended form on the basis of the petitioners' fourth auxiliary request filed during oral proceedings on 10 November 2005 which was considered to be novel and inventive by virtue of the feature "a buzzer for notifying that a sensor has been inserted into the apparatus" (hereafter "the buzzer feature").

II. The petitioners requested, in their statement of grounds of appeal filed on 25 April 2006, that the decision under appeal be set aside and that the patent be maintained as granted (main request) or on the basis of one of auxiliary requests 1 to 15 filed with the grounds of appeal. In addition to the usual sequential numbering of claims in each auxiliary request, the claims were also arranged in seven numbered groups and within each group each claim was given a letter such that the claims were annotated 1A to 1G, 2A to 2E, 3A to 3C, 4A, 5A, 5B, 6A and 7A. These annotations were used, in a table entitled "Annex A - Claim Combinations in Requests", to show which claims appeared in each of the fifteen auxiliary requests. A separate Annex B showed, again by reference to those annotations, the additional features of each claim compared with the main request. All fifteen auxiliary requests contained a common claim with the buzzer feature annotated 4A (hereafter "the buzzer claim") and both the claims annotated 5A and 5B as alternatives. After referring to those fifteen auxiliary requests and Annexes A and B the petitioners' grounds of appeal stated:

"In case the Auxiliary Requests are not acceptable, the Patentee is ready to file further Auxiliary Requests to solve potential problems by, for example, deleting any claims or combining claims of different Auxiliary Requests, and as a precautionary measure the Patentee requests that the patent be maintained based on at least one of the independent claims of either of the Auxiliary Requests. This shall avoid numerous further Auxiliary Requests." (This is referred to hereafter as "the general request". Although the petitioners disagreed, the Enlarged Board considers the word "either" should, to make sense, read "any".)

III. The opponent and other appellant requested, in its statement of grounds of appeal dated 20 April 2006, that the decision under appeal be set aside and the patent be revoked. All the appellants requested oral proceedings. Both the petitioners and the opponent filed replies to the other's grounds of appeal. The opponent's reply of 12 September 2006 observed that all the petitioners' auxiliary requests were ambiguous as each contained the alternative claims annotated 5A and 5B and submitted that, as the patent proprietor had proposed no less than fifteen auxiliary requests, had indicated a willingness to amend the claims further and had requested maintenance of the patent on the basis of at least one of the proposed independent claims, it would not be helpful to discuss each of the auxiliary requests in order with respect to each ground of opposition. The opponent then made a number of detailed objections to the petitioners' claims which the petitioners answered in further written submissions of 5 February 2007.

IV. In a communication of 27 March 2008 sent with the summons to oral proceedings, the Board of Appeal summarised the decision under appeal, the petitioners' appeal and opponent's appeal and then made inter alia the following comments:

"2. The parties seem to be structuring their cases along the lines set out in the letter of the opponent dated 5 February 2007 using the annexes A and B presented by the patent proprietor with the statement of appeal. Probably this is a reasonable way to work through the issues during the oral proceedings.

3. In view of the large number of objections (Art. 123(2), Art. 83 and Art. 84) against the requests filed, it is not clear whether any requests will even remain for consideration of patentability (Art. 54 and 56 EPC). If that stage is reached, the complex of requests submitted by the patent proprietor could give the impression of "fishing around" for patentable subject matter in a verbal way, rather than submissions in support of features of a clearly perceived invention.

4. It is intended, if possible, to decide the case at the end of the oral proceedings. The attention of the parties in relation to amendments of a party's case is directed to Article 13(3) of the Rules of Procedure of the Boards of Appeal..."

(The reference in the communication to a letter from the opponent of 5 February 2007 was clearly erroneous, that being the date of a letter from the petitioners. The reference should have been to the opponent's letter of 12 September 2006.)

V. The petitioners responded to the communication in a letter of 18 June 2008 saying that they were "prepared to modify the respective wording as follows if the Board of Appeal considers it appropriate" and then setting out a number of possible amendments, including in one case alternative amendments, to certain claims identified by their annotations. The petitioners also filed a letter of 16 July 2008 stating that, as regards three features appearing in the claims of their requests, they were prepared to make further amendments, including in one case alternative amendments, if the Board of Appeal considered it appropriate.

VI. The pertinent passages in the Board of Appeal's decision can be summarised as follows. In the "Summary of Facts and Submissions" it said (sections VIII to XI):

At the start of the oral proceedings, the Chairman remarked that the Board's view on the auxiliary requests had not changed. The auxiliary and potential auxiliary requests involved some three hundred and eighty four possibilities. Regarding possible alternative auxiliary requests, only requests in an exact form could be considered; otherwise the order and content of potential requests was not known. The Board could not indicate what might be appropriate or acceptable and would therefore decide on specific requests put on the table. The parties were asked for their requests.

The petitioners confirmed their auxiliary requests were the fifteen already submitted in writing, each of which comprised either claim 5A or 5B. Replying to the Chairman, they observed that the number of auxiliary requests did not amount to "fishing around" for an invention, but were intended to achieve a fair protection for the invention. They commented that there could nevertheless be a problem with the auxiliary requests on the table in that, if the buzzer claim should fall, then all the requests would fail. It might therefore be necessary to file further auxiliary requests without this feature. When asked if they were to file any further requests then, the petitioners replied that no further requests were to be filed at that point.

The opponent complained of difficulties in presenting its case should it not be clear which requests were on the table. There were simply too many too unclear requests.

Before the Board adjourned for deliberation, the Chairman asked the parties to confirm their requests and the petitioners in particular if they were now to file further auxiliary requests. The petitioners stated that no further requests were to be filed.

In the "Reasons for the Decision" the Board of Appeal said (points 2.2 and 2.3):

The petitioners pointed out that if the buzzer claim contained in all the auxiliary requests were to fall, then all the auxiliary requests would fail in consequence. The Board considered this analysis of the patent proprietor to be correct and referred to and quoted point 2.2 of the Reasons of T 745/03, a decision of the same Board in a different composition which observed that a party has to decide on presentation of its case and can be assumed to know upon what requests it requires a decision. When filing several sets of claims, a party usually lists them in order of preference with the least limited claims as a main request and more limited versions as auxiliary requests so that, if a higher order request fails, then a lower more limited request still has a chance of success. But in T 745/03 the approach could more aptly be designated as "pick and mix", as independent claims present in higher order requests were also found in lower order requests in differing permutations. This gave an impression of fishing around for something patentable. It also meant that a lower order request might fail simply because it repeated even just one independent claim from a higher order request which has not met the requirements of the EPC. Then no decision on other independent claims in the lower order request was necessary, whatever the Board might think of the merits of those other claims.

Just the situation, as envisaged by both the petitioners and those last observations cited from T 745/03, arose in the present case. Although the petitioners attempted to avoid the situation with conditional requests to file separate requests to each independent claim or to sets of claims without the "buzzer" claim, this approach was doomed to failure because it tried to "flush out" a pre-decision of the Board in advance of defining its requests. If the Board had co-operated by more or less telling the petitioners to tailor the number and content of claims to the maximum permissible, it would not have acted impartially. In practice, the Board hears the case before it decides and cannot give a decision until the parties have had a chance to comment but co-operating with the petitioners would have prevented this, as was illustrated by the other party's justifiable protest that it had difficulties in presenting a case against unclearly presented requests.

VII. The petition for review was filed on 8 December 2008 and the petition fee was paid on the same date. The petition identified the grounds relied on as those in Article 112a(2)(c) and (d) EPC. The petitioners requested the Enlarged Board of Appeal to set aside the decision of 24 July 2008 and re-open the proceedings before the Board of Appeal and to order that the members of the Board of Appeal who participated in taking the decision be replaced. The petitioners also requested oral proceedings as an auxiliary measure if the Enlarged Board of Appeal should not allow the other requests.

VIII. On 17 February 2009 the Enlarged Board issued a summons to oral proceedings which was accompanied by a communication containing the Enlarged Board's provisional and non-binding opinion that, while the petition was not clearly inadmissible, it did appear to be clearly unallowable and therefore oral proceedings had been appointed. The reasons for this opinion were substantially those set out in the Reasons below. The communication further indicated that the impugned decision appeared consistent with the case-law and referred to the decisions cited in the Reasons below. The petitioners replied to the communication by a letter dated 5 March 2009. Oral proceedings before the Enlarged Board were held on 6 April 2009. The petitioners' requests remained unchanged (see section VII above).

IX. The facts set out in the petition can be summarised as follows.

(a) The petition summarised the written appeal proceedings, in particular as regards the petitioners' requests and quoting paragraphs 2 and 3 of the Board of Appeal's communication of 27 March 2008 (see section IV above). Those requests were clear and no specific objections were raised either by the opponent or by the Board of Appeal's communication which "allowed the conclusion that the way the requests were formulated was not objectionable".

(b) The minutes of the oral proceedings on 24 July 2008 before the Board of Appeal did not mention the general request. The written decision of the Board of Appeal required additional comments in order to give a complete account of the oral proceedings before the Board of Appeal on 24 July 2008.

(c) At the beginning of the oral proceedings the chairman of the Board of Appeal said the petitioners' requests were not clear. Their representative explained each auxiliary request had both claims 5A and 5B as alternatives and that, as regards the general request, if for example the Board of Appeal considered the buzzer claim not patentable, that claim would be deleted from the claims of each of the auxiliary requests and similarly with any other claim. The chairman asked the petitioners to clarify their requests during the oral proceedings and, in particular, to reduce the total number of requests as too many auxiliary requests would result from the general request. The petitioners' representative replied that this type of request is perfectly clear because it simply amounts to the deletion of any independent claim and was necessary because the petitioners did not know how the Board of Appeal would decide individual questions.

(d) The parties then presented their arguments on the Main Request and, after deliberation, the chairman of the Board of Appeal announced that this was not patentable. The parties were then invited to present their arguments on the auxiliary requests under Articles 123(2), 84 and 83 EPC and the opponent for the first time objected that the requests were unclear and too numerous. After a further interruption, the discussion continued with arguments on novelty and inventive step of the auxiliary requests. When asked by the opponent, the Board of Appeal declined to give its opinion on the issues discussed previously.

(e) After hearing arguments on novelty and inventive step of auxiliary request 1, the parties were asked for their requests and the petitioners replied that nothing had changed and their requests were maintained. It was not clear that the Board of Appeal was asking for the parties' final requests and it was not said that the debate was closed. The petitioners were under the impression that the further auxiliary requests remained to be discussed. After deliberation the chairman announced that the decision under appeal was set aside and the patent revoked. He did not give any information about the basis of the decision and in particular did not indicate that all the auxiliary requests were considered unallowable because the buzzer claim was not inventive.

X. The petitioners' arguments in the petition, in their letter of 5 March 2009 and at the oral proceedings before the Enlarged Board can be summarised as follows.

(a) There was a fundamental procedural defect under Article 112a(2)(c) EPC in combination with Article 113 EPC as the petitioners were denied the right to be heard in that, at the oral proceedings on 24 July 2008, the Board of Appeal took the decision to revoke the patent in suit without giving the parties a chance to discuss either the auxiliary requests 2 to 15 or the general request.

(b) The whole problem arose from the refusal in the opposition proceedings of the petitioners' main request to maintain the patent as granted. The petitioners had to file requests claiming various aspects of the invention which lead to several independent claims and several objections thereto by the opponent. The petitioners considered those objections to be of minor credibility but they modified each claim to meet them. That produced auxiliary requests 1 to 15 and the table in Annex A. The petitioners were aware of the case-law which established that one invalid claim leads to the end of a request but they made clear they were presenting different claims within their requests as alternatives. The case-law referred to in the Enlarged Board's communication was not applicable as the cases underlying the cited decisions were different from the present case.

(c) As regards auxiliary requests 2 to 15, the Board of Appeal's view (in its decision, point 2.2 of the Reasons), that a lower order request may fail simply because it repeats even just one independent claim from a higher order request which has not met the requirements of the EPC, does not mean that the request does not need to be discussed at all. That is not an established practice. Even if the Board of Appeal considered auxiliary requests 2 to 15 unallowable for the same reason as auxiliary request 1, it should have given the petitioners, who expected a long discussion on each independent claim, the opportunity to comment on those requests and not to allow that for reasons of procedural economy was a substantial procedural violation. The statement in section XI of the decision (see section VI above) was misleading: the Board of Appeal merely asked the parties to confirm their requests and not for their final requests.

(d) As regards the general request, the Board of Appeal did not examine any claims of auxiliary request 1 other than the buzzer claim. The petitioners strongly disagree with the view of the Board of Appeal that the formulation of requests was unclear. The deletion of an independent claim did not require any reformulation of remaining claims. The request to maintain the patent on the basis of any auxiliary request without the buzzer claim was particularly clear. The Board of Appeal intentionally decided without deciding that request. The Board of Appeal did not provide information about different issues but just asked the parties to present their arguments, leaving the Board's views regarding particular objections completely open so the petitioners had to present so many variants to defend their position. The Board of Appeal would not have assisted the petitioners by telling them whether claims were allowable or not, it was just a matter of deleting claims. The general request would not have created additional work for the Board of Appeal and neither the opponent nor the Board of Appeal in its communication raised that issue. The case was clearly presented by the petitioners with Annexes A and B which the communication regarded as a reasonable way to work through the issues. The general request was the only way for the petitioners to obtain the broadest possible protection in the face of the opponent's numerous objections.

(e) The second fundamental procedural defect was under Article 112a(2)(d) and Rule 104(b) EPC in that the Board of Appeal decided the appeal without deciding on a request relevant to that decision, namely the general request. There was no discussion of the merits of this request at the oral proceedings, only a request for clarification at the beginning and the petitioners then had the impression that the request was clear to the Board of Appeal. The request was not withdrawn and was not declared inadmissible. If that had happened, the petitioners would have immediately filed new requests. The petitioners were under the impression that the general request was their last chance to amend their requests during the oral proceedings. The petitioners believe that the statement in the third sentence of section VIII of the decision (Regarding possible alternative auxiliary requests, only requests in an exact form could be considered; otherwise the order and content of potential requests was not known. - see section VI above) was not made but, irrespective of that, the request was made and was a real not potential request. It was not filed in the form of written claims for procedural economy because that would require bothersome checking by the Board of Appeal as to which parts differed from the claims in the auxiliary requests which had been filed in writing.