T 1067/08 (High-activity phytase/BASF SE) 10-02-2011

1. The appeal is admissible.

The decision under appeal

2. The patent in suit was revoked for non-compliance with Article 113(2) EPC, following the opposition division's decision not to admit the proprietor's sole request as filed during the oral proceedings (that is what was clearly intended by the opposition division and what was understood by the parties, even if the division said the request was "not allowable" - see minutes, point 3.3.) and the subsequent refusal of the proprietor to amend that request and/or to file auxiliary requests. Whether or not the decision under appeal correctly relied on the absence of a text of the patent submitted or agreed by the proprietor depends, thus, on the answer to the preliminary question whether or not the opposition division was right in not admitting the proprietor's final request filed during the oral proceedings on the ground that its filing constituted an abuse of the proceedings.

3. In principle, during opposition proceedings a patent proprietor is free to withdraw at any time a request which contains limitations made in an attempt to overcome objections raised against its patent, or to amend it subsequently and, in particular, resume a defence of the patent as granted, unless this would constitute an abuse of procedural law (established case law starting with T 123/85, OJ EPO 1989, 336). In line with this principle, Rule 71a EPC 1973, now Rule 116 EPC, gives the opposition division the discretionary power to refuse new requests for amendments, if amended claims are presented after the final date fixed under that provision. This applies in particular to requests which are, like the one under consideration, presented for the first time during the oral proceedings (case law of the boards of appeal, see e.g. T 64/02). The purpose of this provision is in particular to prevent parties from seeking unjustified procedural advantages by abusive tactics (nemo auditur propriam turpitudinem allegans - T 1705/07, it being, however, in this board's view, not a requirement for procedural abuse that the party responsible also acted in bad faith) in disregard of procedural economy and to the disadvantage of other parties. Therefore, any amendment has to be carried out in the most expedient manner, which has to be established by the opposition division taking into account the interests of all parties (T 382/97), and the power to refuse late requests must be exercised by considering all relevant factors which arose in a particular case, taking account inter alia of whether there were good reasons for the late filing, whether the other parties are taken by surprise and whether new issues are raised by the amendments made.

4. The opposition division's finding that the filing during the oral proceedings of the new claims according to the proprietor's sole and final request lacked adequate justification and disregarded the legitimate interests of the other parties, and therefore amounted to an abuse of procedure, was based on the following facts and considerations:

- The appellant's conduct up to the oral proceedings suggested that it intended to defend the patent only in a restricted form, within the amendments made in preparation for the oral proceedings. There was no indication that the proprietor would defend any broader subject-matter and what it might be.

- There were no adequate objective reasons which would have justified the other parties having to prepare and discuss any further issues arising from the submission of the much broader claims comprising the feature "at least 15% (w/w) of carbohydrate polymer", but no longer any feature regarding the particle size.

- There was nothing preventing the proprietor, who was aware, inter alia from the preliminary opinion of the opposition division, of the objections under Article 123(2) EPC to the feature "at least 30% (w/w) of starch", from filing the new claims according to his final request in time. As these claims comprised a more general definition of the subject-matter and would involve reviewing a large number of submitted prior-art documents, the proprietor should have realised that the filing of such new claims in advance of the oral proceedings was required, having regard to the legitimate interests of the other parties to the proceedings, including their right to duly prepare for discussion of the new claims.

- The proprietor's contention that the negative finding on compliance with Article 123(2) EPC of the then pending request came as a surprise was unfounded: proprietors should be aware that new sets of claims have to be examined for compliance with Article 123(2) EPC, even more so in the present case where the critical feature had already been questioned by the opponents and by the opposition division during the written proceedings.

5. As regards the appellant's arguments in support of its contention that the opponents could not have been taken by surprise by the late filing of the eventual single request, the board observes the following:

5.1 The appellant's submission that the subject-matter of the new request was identical to the subject-matter as granted and thus had been discussed since the beginning of the opposition proceedings (point 3.1 of the minutes of the oral proceedings before the opposition division; point IV, above) is not supported by the facts. Claim 1 according to the eventual single request submitted during the oral proceedings before the opposition division is not at all identical to the text of the corresponding Claim 15 as granted. That text had never been discussed, since the appellant had already submitted an amended version (Claim 5) in response to the notices of opposition.

5.2 The same is true for the appellant's contention, during the oral proceedings before the board, that the opponents had already been familiar with all the features of the final request and the relevant documents.

There is nothing which could justify such an assumption. Quite to the contrary. In the claims filed during the oral proceedings the appellant also deleted the feature concerning the particle size, a feature which had not been objected to at all. This feature had been introduced into the claims as a first reaction to the notices of opposition. It could thus have been assumed by the respondents that this would be one of the essential features of the subject-matter pursued during the opposition proceedings. While it can be admitted that the replacement of the feature "at least 30% (w/w) of starch" following the opposition division's negative finding on its compliance with Article 123(2) EPC was foreseeable, the appellant has not given any reason, nor is there any apparent, for the deletion of the particle size which led to a considerable broadening of the subject-matter at a very late stage of the opposition proceedings. Such an inconsistent course of action by the proprietor was not to be anticipated by the other parties or the opposition division. In addition, the new request would have raised new issues, not least because its claims differed from the subject-matter of the granted claims by a feature taken from the description, namely the "non-fibrous" solid carrier.

5.3 Under these circumstances it is irrelevant that the replacement as such of the feature objected to in amended claims could not have been a surprise to the other parties. Nor is it relevant that, as the appellant alleged before the board, the opponents were facing as a result of their attacks, considerably less complex claims.

As regards the appellant's argument that the admission of the amended claims would have been justified in view of the fact that three of the four opponents were apparently willing to discuss the new claims after a (substantial) break for preparation (point IV above), it is pointed out that the concept of procedural abuse is not limited to conduct necessitating an adjournment of the oral proceedings, and that such necessity is not solely determined by the affected parties' view of whether or not an adjournment of the oral proceedings is necessary or appropriate.

6. For the reasons given by the opposition division and those given above, the board is satisfied that the opposition division, in taking the view that the filing of the amended claims during the oral proceedings was an abuse of procedure and therefore declining to admit them into the proceedings, has correctly exercised its discretionary power, namely on the basis of the given relevant facts, in accordance with the right principles and in a reasonable way. There is therefore no reason to overrule the opposition division's discretionary decision not to admit the late-filed claims (cf. G 7/93, OJ EPO 1994, 775).

Main request

7. The appellant's main request is identical to the (then sole) request which was not admitted into the opposition proceedings. The appellant argued that during the oral proceedings before the opposition division it had seen no reasonable chance of success with that request or any new requests, and had therefore decided to seek redress at the department of second instance. Therefore, it should be given the opportunity to defend that request before the board of appeal.

7.1 The purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the opposition division on its merits and to obtain a judicial ruling on whether the decision of the opposition division is correct (G 9/91 and G 10/91 - OJ EPO 1993, 408, 420). The appeal proceedings are not about bringing an entirely fresh case; rather, the decision of the board of appeal will in principle be taken on the basis of the subject of the dispute in the first-instance proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in second-instance proceedings (T 1705/07, point 8.4 of the reasons).

7.2 This means that appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition and that - contrary to the appellant's view, which apparently prompted it in the opposition proceedings to eventually limit itself to the request under consideration - parties to first-instance proceedings are not at liberty to bring about the shifting of their case to the second instance as they please, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. In order to forestall such abusive conduct, Article 12(4) RPBA provides that the Board has the power to hold inadmissible any requests which were not admitted in the first-instance proceedings.

7.3 Hence, in the present case, neither the fact that the claims according to the main request were filed together with the notice of appeal (Article 12(1)(a) RPBA) nor the appellant's motives for limiting itself to the set of claims according to the single request eventually submitted in the opposition proceedings are, in themselves, a valid reason for admitting those claims into the appeal proceedings.

7.4 Quite to the contrary: given the history of these claims, their admission by the board would be incompatible with the judicial nature of the inter partes appeal procedure and would in effect render pointless the opposition division's correct decision not to admit them. Moreover, to admit the appellant's main request in the given circumstances would put the respondents in a worse position than if the request had been admitted and decided upon already by the opposition division. Either the subject-matter of that request would be dealt with only by the board as department of second instance, meaning higher costs and loss of one instance to the opponents (respondents), or - much more likely, as the opposition division has not yet decided on novelty and inventive step - the case would be remitted to the department of first instance, as requested by the appellant. As pointed out in particular by respondent 3, this could entail a further delay of several years before the present case would be finally settled. Such a prolongation of the proceedings is incompatible with procedural economy and would for a long time and without good reason deprive the other parties and the public of legal certainty about the validity of the patent in suit.

7.5 For these reasons, the board has decided to exercise its power under Article 12(4) RPBA not to admit the main request into the appeal proceedings.

Auxiliary requests

8. Similar considerations are valid for the appellant's auxiliary requests. Article 12(4) RPBA makes it clear that new claims, even if filed together with the notice of appeal, are unlikely to be considered if they ought to have been presented in the first-instance proceedings (T 339/06).

8.1 Auxiliary Request 1 is, due to the deletion of the feature "non-fibrous", even broader than the main request. The claims of Auxiliary Requests 2 and 3 contain the feature "30% w/w of starch", Claim 1 of the latter request being identical to Claim 3 of the (main) request which the appellant had withdrawn in reaction to the negative opinion of the opposition division regarding that feature's compliance with Article 123(2) EPC. By withdrawing any claim containing that feature and refusing to file any amended and/or auxiliary requests, the appellant prevented the opposition division from giving a reasoned decision on that issue. Thus, if the appellant had intended to pursue it, it ought not to have withdrawn all claims containing that feature from the proceedings (cf. T 933/04).

8.2 As mentioned earlier, in opposition proceedings a proprietor is free to refrain at any time from filing further requests, and may then file different (new) requests in the appeal proceedings. However, contrary to what the appellant suggested, this does not mean that these new requests then have to be admitted into the proceedings as of right. Rather, the admissibility of a request first submitted in appeal proceedings and relating to an independent claim which, although within the scope of the opposition, had not been considered in the first-instance decision has to be decided in the light of whether it could have been submitted earlier (T 339/06).

8.3 According to the appellant, the reason for not already submitting these or similar requests in the opposition proceedings was its incorrect assumption as to the procedural consequences of not doing so. No objective reason preventing the appellant from following the invitation by the opposition division has been put forward or is apparent to the board, in particular in respect of Auxiliary Request 3 which is identical to a request withdrawn in reaction to the negative (preliminary) ruling of the opposition division on compliance with Article 123(2) EPC. The appellant's purported view that any new requests submitted to the opposition had no reasonable chance of success was mere speculation.

8.4 For these reasons, the board, in due exercise of its discretionary powers, has decided not to admit Auxiliary Requests 1 - 3 into the proceedings.

9. As there were no further requests, the procedural situation is the same as that prevailing at the end of the opposition proceedings, namely that there is no text of the patent in suit which meets the requirements of Article 113(2) EPC.