T 0052/15 04-04-2019

1. Requests decided/not decided upon in the appealed decision

1.1 As set out in detail in the facts and submissions and as apparent from the minutes of the oral proceedings before the opposition division, the proprietor initially confirmed the request that the patent be maintained as granted. After a negative opinion was announced by the chairman with respect to this request, the proprietor filed a new request and identified it as the "main request". This occurred again two more times in succession. The new main requests were named Annex I, Annex II and Annex III in the minutes. After deliberation on the last main request filed, the chairman announced the opposition division's opinion that this request did not meet the requirements of inventive step and then announced the decision that the patent was revoked.

1.2 The appealed decision deals only with this last request, which was filed and identified as the "main request" by the then proprietor and is annexed to the decision as Annex III. As stated on page 5 of the decision, during the oral proceedings, the then proprietor requested that the patent be maintained on the basis of this request. No reference is made to any other request for maintenance of the patent on the basis of any auxiliary request. The reasons of the decision deal exclusively with said main request, Annex III. From the content of the decision, it does not transpire that the opposition division failed to deal with any pending request.

1.3 The minutes of the oral proceedings also do not record any fact or circumstance indicating that pending requests were neglected. It is true that the minutes of the oral proceedings before the opposition division do not explicitly mention the withdrawal of any of the requests filed before the last one. However, despite the absence of an explicit statement to this effect, the board considers that, in the situation described above, the opposition division did not err when considering that each newly filed "main request" superseded and was clearly meant to replace the previously filed one/s, and, consequently, when deciding on the last request only.

1.4 It is not disputed that the withdrawal of a request is a serious procedural step which is usually announced explicitly by a party via a corresponding statement. Any such statement must be mentioned in the minutes (EPO Guidelines E-III, 10.3 and T 361/08, mentioned by the appellant). However, an explicit withdrawal is not required if a party's behaviour or procedural steps it takes during the proceedings make its intention unequivocal (see T 388/12, point 4.2, mentioned by the appellant). Requiring an explicit statement to be made for a withdrawal to take legal effect would render the proceedings a purely formalistic exercise in which the entire body of evidence and facts surrounding the specific case would not be taken into account.

1.5 The appellant argued that the expectation of the then proprietor was that a request would only be considered withdrawn if the relevant party expressly withdrew it, which was not the case in this instance. This ostensible expectation is not reflected, however, in any of the following procedural steps or assertions of the proprietor/appellant. Neither the correctness of the minutes was contested, nor were complaints raised when the appeal was filed that the decision was flawed because it did not deal with pending requests.

1.6 It is also noted 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 and legal advice from the EPO No 15/05 (rev. 2), OJ EPO 2005, 357). The appellant appears to be well acquainted with this practice, since in the statement of grounds of appeal a main request as well as four auxiliary requests were filed, the latter being identified as such and ranked. No such procedure was followed during the oral proceedings before the opposition division.

1.7 It could be argued that the opposition division should have asked the proprietor to confirm the withdrawal of the previously filed requests. The board endorses the view that, in order to avoid any misunderstanding, the opposition division should always clarify the status of previously filed requests before closing the debate. The EPO departments have the duty to ensure that any uncertainty with regard to procedural acts of the parties is clarified, and so they may be expected to draw attention to evident deficiencies. However, if a procedural act performed by a party is clear and there are no reasons to suggest that its intentions were not correctly understood, e.g. on account of subsequent actions and/or statements, that party cannot expect not to have to bear the consequences of that procedural act. This applies all the more so when the party is represented by a professional representative.

1.8 In the present instance, from the sequence of events which took place during the oral proceedings, it was correct to conclude that each new main request which was subsequently filed replaced the previously filed main request. Furthermore, on the basis of the facts recorded in the minutes, there was no reason to assume that the proprietor intended to maintain those previously filed requests.

1.9 The appellant cited numerous decisions allegedly supporting the view that no request should have been considered as withdrawn by the opposition division. However, the facts and the circumstances surrounding those decisions differ substantially from those of the present instance. In those cases, the allegedly withdrawn request had been decided upon in the written decision (T 348/14), requests had been filed and explicitly identified as auxiliary requests (T 361/08, T 388/12, T 169/96 and T 1105/96), and/or the alleged procedural error had taken place during a different stage of the proceedings (e.g. at the grant stage: T 169/96 and T 1105/96). None of these decisions deals with a case like the present one where, during the oral proceedings, the proprietor filed new requests in succession identifying each of them as the "main request".

1.10 For these reasons, it is concluded that the written decision of the opposition division is based on the only request that was pending when the decision to revoke the patent was orally announced. This also means that, by choosing the course of action described above during the oral proceedings, the patent proprietor had prevented the opposition division from rendering a decision on all the requests discussed at those oral proceedings, except the last one.

Main request and auxiliary requests 1 and 2

2. Admission of the requests

2.1 The main request and auxiliary requests 1 and 2 were filed with the statement setting out the grounds of appeal and thus form part of the proceedings (Article 12(2) RPBA). Nonetheless, under Article 12(4) RPBA, a board of appeal has discretionary power to refuse to admit requests that could have been presented at or were not admitted into the first-instance proceedings. In the board's view, this applies all the more to requests that were filed during first-instance proceedings and subsequently withdrawn. The inevitable result of the withdrawal of the requests is that the department of first-instance is prevented from deciding on them. The reintroduction of previously withdrawn requests on appeal runs 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 (see Case Law of the Boards of Appeal, 8th edition, IV.E.4.3.2d, the cited decisions and G 9/91).

2.2 Such a situation has been created in the present case, as far as the main request and auxiliary requests 1 and 2 are concerned:

- The main request corresponds to the set of claims as granted and the proprietor's initial request during the oral proceedings before the opposition division.

- Auxiliary request 1 corresponds to the first main request filed during those oral proceedings, which is annexed to the minutes as Annex I.

- Auxiliary request 2 corresponds essentially to the second main request filed during the oral proceedings (Annex II of the minutes). It differs from it only in the following amendment "..being at least about 50g/25mm higher than the seal strength of said sealing layer to [deleted: the filmic polyolefinic material][deleted: of] the individually wrapped packages at the sealing condition..". According to the appellant, this difference does not change the interpretation of the claims. Since in view of the outcome of the present decision this assumption is not detrimental to the respondents, it will not be challenged or further discussed in the following reasoning.

2.3 These requests differ substantially from the request which was decided upon in the appealed decision in that:

- claim 1 of each of the three requests does not entail the requirement that a component of layers A and B and of the film wrapping the individually wrapped packages is made of certain combinations of polyethylene/polypropylene and/or polybutylene materials,

- claim 1 of the main request and auxiliary request 1 does not set specific values for the strength of the seals; it further foresees the use of pressure as optional and requires the seal to be formed at 80°C instead of 100°C, and

- claim 8 was deleted in auxiliary requests 1 and 2.

2.4 As is apparent from pages 1 to 6 of the minutes of the oral proceedings before the opposition division, which lasted two days, a lengthy discussion took place on whether the aforementioned requests (the last one in slightly different form) complied with Articles 123(2), 83 and 84 EPC. During this discussion the parties addressed several issues relating to the definition of the strength of the seals present in the claimed collation package and to the choice of the materials and temperature used to prepare the films and the seals. Since a negative opinion was announced in respect of these requests, whereas the following request was considered positively, as far as these articles were concerned, it can be deduced that the addition of specific definitions relating to the strength of the seals, the addition of the materials used for preparing the films, and the deletion of an independent claim were conspicuous for overcoming pending objections. However, neither the minutes nor the written decision report the reasoning followed by the opposition division when it orally announced its negative conclusion with respect to these requests.

2.5 Accordingly, admitting these requests into the appeal proceedings would compel the board to decide as if it were the department of first instance on the aforementioned complex issues (e.g. for compliance with Article 83 EPC). This course of action would run counter to the primary purpose of appeal proceedings mentioned above in point 2.1.

2.6 Referring to some earlier decisions of the boards of appeal (T 155/88, T 386/04 and the Case Law of the Boards of Appeal, 8th edition, IV.E.4.3.1(f), the appellant argued that proprietors must be free in appeal proceedings to reinstate their patent as granted, even if they had explicitly and unconditionally withdrawn all requests apart from the one finally defended in the opposition proceedings.

These decisions are based on the idea that, when requesting maintenance of a patent in more limited form, the patentee is not irrevocably abandoning the subject-matter that lies outside such a request.

2.7 Even if, as a rule, a proprietor could not be prevented from reverting to the patent as granted, it would be illogical if this right could be exploited without restrictions. For example, a proprietor may not steer the appeal proceedings in a manner that undermines the main purpose for which these proceedings were foreseen, i.e. to give a judicial decision on what was decided at first instance. This would also result in the board being precluded from exercising its discretionary power under Article 12(4) RPBA in these cases.

2.8 Article 12(4) RPBA is not mentioned in T 155/88 or T 386/04 (it entered into force on 13 December 2007, after the dates of these decisions). However, T 155/88 explicitly states that amendments such as those described above are subject to the discretionary control of the board and should be admitted only when appropriate and necessary (see point 2.2).

The appellant also referred to T 2599/11, in which the board admitted a request which had not been maintained in opposition proceedings and was broader in scope than the one on which the appealed decision was taken. Yet, in this case, the board argued that the issues which were critical for the appeal had already been dealt with by the opposition division in its decision, so that no fresh case was created by admitting that request.

2.9 It is also noted that although there have been decisions, such as the aforementioned ones, 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 not admitted into the appeal proceedings (see the Case Law of the Boards of Appeal, 8th edition, IV.E.4.3.2d and IV.E.4.5.1; 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 appears to be the current predominant approach applied by the boards.

2.10 The present board endorses the principle that the admission of any such request is under the board's discretion, taking into account, inter alia, whether the undecided issues are critical for the board's decision, the complexity of those undecided issues and possibly also the reasons for not maintaining that request before the department of first instance.

2.11 In the present case, considering that:

- the undecided technical issues are complex and also critical for a decision to be taken by the board (e.g. with regard to Articles 83 and 100(b) EPC),

- these issues could not be decided upon by the opposition division as a consequence of procedural steps chosen by the proprietor during the opposition proceedings, and

- there are no special reasons for admission into the appeal proceedings,

the main request and auxiliary requests 1 and 2 are not admitted into the appeal proceedings (Article 12(4) RPBA).

Auxiliary request 3

3. Admission of the request

3.1 Auxiliary request 3 was filed with the statement of grounds of appeal. It corresponds to the request on which the decision was based, with the following exception: in claim 1 an embodiment was added which defines a third possible combination of polyethylene/polypropylene and/or polybutylene materials included in layers A and B and in the film wrapping the individually wrapped packages (where this film contains a polybutylenic component). The application of pressure during seal formation is also said to be optional.

3.2 The appellant submitted that this request contained amendments which were necessary to correctly claim the invention. It also argued that during the oral proceedings before the opposition division the then proprietor was not given enough time to react to an unexpected negative findings of the division and to prepare a properly drafted request. The first paragraph of page 6 of the minutes of the oral proceedings confirms that the then proprietor had asked if the filing of the request could be postponed to the following day and that this request was refused. Taking into account this fact and that auxiliary request 3 includes all other features relating to the strength of the seals which characterise the request upon which the earlier decision is based, auxiliary request 3 is admitted into the appeal proceedings (Article 12(4) RPBA).

4. Added subject-matter

4.1 Claim 1 of auxiliary request 3 derives from claim 1 of the application as originally filed and is characterised, inter alia, by the following additional technical features:

(a) "...the sealing incompatibility being indicated by a seal strength of less than 40g/25 mm at the sealing conditions...",

(b) "...seal strength of the or each sealing layer of the naked collation film to itself and/or to the other sealing layer of the naked collation film being at least about 50g/25mm higher than the seal strength of the said sealing layer to the individually wrapped packages at the sealing condition...", and

(c) "the sealing condition comprises a temperature above 100°C".

4.2 Feature (a) is disclosed on page 11, third paragraph, of the application as filed, where the value 40g/25mm is listed as one of nine alternative values.

Feature (b) is disclosed on page 11, second paragraph, where the value 50g/25mm is listed as one of three alternative values.

Feature (c) is disclosed on page 13, second paragraph, which mentions the value of 100°C besides four other alternative values.

4.3 There is no pointer in the application as filed to choose and combine exactly the three aforementioned features. It is also noted that the values characterising the seal strength and the temperature used for preparing the seals of the films described in the examples are so scattered that, even taking into account the experimental section of the application as filed no preferential pattern pointing to the aforementioned combination of values can be identified.

4.4 The appellant contended that the specified values relating to the seal strength were neither essential nor relevant to define the invention. These values were only introduced in the claims to provide some orientation and for the purpose of clarification. Furthermore, by selecting the value of at least about 50g/25mm for feature (b), the list of possible values relating to feature (a) was shortened. Thus, claim 1 did not contain added subject-matter.

4.5 The board does not agree. The introduction of the aforementioned precise values relating to features (a), (b) and (c) results inevitably in a more specific characterisation of the scope of the claims. Furthermore, even assuming that the selection of the value at least about 50g/25mm for feature (b) would inevitably result in a shrinking of the list relating to feature (a), this list would still contain six possible alternative values.

4.6 Accordingly, it is concluded that the aforementioned combination of features inserted into claim 1 is not directly and unambiguously disclosed in the application as filed and that, for this reason, this claim contains added subject-matter extending beyond the content of that application (Article 123(2) EPC). Thus, auxiliary request 3 is not allowable.

Auxiliary requests 6 and 7

5. Admission of the requests

5.1 Auxiliary requests 6 and 7 were filed by the appellant during the oral proceedings before the board. Therefore, their admittance is subject to the board's discretion under Article 13 RPBA. This discretion is to be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

5.2 Claim 1 of each of auxiliary requests 6 and 7 differs from claim 1 of the request decided upon by the opposition division (Annex III) in that a third possible combination of polyethylene/polypropylene and/or polybutylene materials included in layers A and B and in the film wrapping the individually wrapped packages was added.

5.3 Furthermore, in auxiliary request 6 the feature identified as feature (b) in point 4.1 above was deleted; the value of 40g/25mm characterising the feature identified as feature (a) in point 4.1 above was replaced by the value of 100g/25mm; the temperature of 100°C (feature (c)) was replaced by 80°C.

5.4 In auxiliary request 7 the two features identified above as features (a) and (b) were deleted, but the temperature for feature (c) remained 100°C.

5.5 Claim 1 of each of auxiliary requests 6 and 7 can be considered as a hybrid between claim 1 as decided upon by the opposition division and granted claim 1. The appellant justified the late filing of these auxiliary requests as a reaction to the board's conclusion reached during the oral proceedings that auxiliary request 3 contains added subject-matter. The appellant further submitted that the amendments made in these requests directly addressed the objection of added subject-matter, were simple to understand and did not create a fresh case.

5.6 As already pointed out in point 2.4, the definition of the strength of the seals present in the claimed naked collation package together with the relevance of setting specific values to define that strength was one of the issues that was discussed at length during the oral proceedings before the opposition division, when the first three main requests were considered. It also appears that the addition of specific values for defining the strength of the seals was one of the amendments which later resulted in pending objections being considered as overcome (e.g. under Article 83 EPC). The absence of any reason as to why the opposition division gave a negative opinion on requests not comprising these features renders it difficult or even impossible for the board to distinguish between decided and undecided issues that are relevant for the new requests, and possibly obliges the board to decide on complex issues that were not decided on by the department of first instance in view of the then proprietor's repeated filing of main requests.

5.7 Furthermore, the reasons put forward by the appellant for the late filing are not convincing. The objection that the combination of features characterising auxiliary request 3 added subject-matter had already been raised by respondent 3 in its reply to the statement of grounds of appeal (see paragraphs 7, 8, 271, 273). A negative preliminary opinion on this issue had also been expressed in the board's communication issued in preparation for the oral proceedings (see points 5.1 and 5.2). Whilst a detailed reasoning for the negative preliminary opinion on each pending request was not given in this communication, the conclusions reached by the board during the hearing could not be surprising. The appellant also could not have expected the board to provide an exhaustive reasoning on all open questions and all pending requests in its communication and should not have waited until the outcome of the different issues in the oral proceedings to decide its line of defence and tailor the claims accordingly.

5.8 Thus, taking into account the technical and procedural complexity associated with auxiliary requests 6 and 7, the advanced state of the proceedings, and procedural economy, these requests are not admitted into the appeal proceedings (Article 13(1) RPBA).

5.9 In summary, the appellant's only request on file is auxiliary request 3, claim 1 of which is found not to meet the requirements of the EPC.