In this opposition appeal case, on the second day of the oral proceedings (OPs) before the board the patent proprietor submitted the following request:
“we herewith request adjournment of the OPs scheduled for 17 and 18 September 2013 in view of the new lines of attack brought by the opponents under A 100(c) for the first time during the OPs of 17 September 2013, …”
The Board refused to grant the adjournment:
[1.3] The appellant-patentee’s request for adjournment of the OPs in view of several “new lines of attack” against claim 6 of the main request […] was refused by the board at the OPs.
The present inter partes appeal proceedings lie from an interlocutory decision of the Opposition Division (OD) maintaining the patent in amended form on the basis of an auxiliary request which is identical to auxiliary request 8 filed with the patentee’s grounds of appeal. The patentee and four of the five opponents lodged appeals against the first-instance decision. Therefore, the situation of reformatio in peius does not arise in relation to the examination by the board of any of the sets of claims on file. Moreover, A 100(c) is within the framework of the present appeal proceedings and all the sets of claims on the basis of which the appellant-patentee has requested maintenance of the patent contain amended claims. Additionally, as is evident from the facts and submissions, the patent as granted contains a multitude of independent claims.
It is undeniable that one of the main duties of the board is to review the first-instance decision as to its merits, but the fact that the OD decided to conduct the OPs on the 13-14 September 2011 in a certain way for reasons of economy and efficiency of the proceedings, and thus decided to focus on one single independent claim (claim 1 for the main request), or one single ground of opposition (novelty for the method claims 6 and 7 of auxiliary request 2) in order to find out whether or not a set of claims failed, does not restrict the framework of the present inter partes appeal proceedings to those claims or those reasons which were specifically discussed at the OPs before the OD.
Moreover, independent claim 6 of the main request derives from granted claim 31 which was amended in the course of opposition proceedings. Therefore, the board has the power and the duty (A 114(1)) to assess whether or not independent claim 6 of the main request fails pursuant to grounds under A 100(c), in conjunction with A 123(2) and A 76(1), since a patent should not be maintained in amended form on the basis of unallowable amendments.
Maintaining a patent in appeal proceedings on the basis of unallowable amendments introduced during opposition and/or opposition appeal proceedings would be contrary to the spirit and purpose of the EPC (Article 23 RPBA). Thus, a literal interpretation of Article 13(1) RPBA should be avoided in the present case.
Additionally, the appellant-patentee itself cited page 11 of the parent application as filed as the basis for claim 6 of the main request. Therefore, the board must investigate first those cited passages of page 11 before being able to conclude whether or not they represent an allowable basis for the amendments. In doing so the board is not restricted to the reasoning submitted by the parties in writing before the OPs. The OPs may serve to clarify some additional aspects related to the arguments submitted in writing in relation to A 123(2) and A 76(1). This preserves the parties’ right to be heard (A 113(1)). Under the circumstances depicted above, artificially restricting the discussion about the allowability of amendments would have deprived the OPs of their meaning, and adjourning the OPs would have made the proceedings interminable. After all, the filing date of the application from which the patent in suit derives is 5 December 1991.
The fact that the appellants-opponents presented orally a more detailed reasoning in relation to A 123(2) and A 76(1) than their reasoning in writing can be easily explained by the high number of independent claims in the main request and the fact that the OD focused only on claim 1, ignoring the other claims.
The so-called “new lines of attack” correspond to the necessary discussion of added matter which directly arises when undertaking a comparison between the wording of independent claim 6 of the main request and inter alia the text on page 11 of the parent application as filed, cited by the appellant-patentee as being its allowable basis under A 76(1). Therefore, the board is convinced that it was to be expected that in the course of the OPs before the board the features and expressions appearing on page 11 of the parent application as filed would have to be compared with the expressions in independent claim 6 of the main request, and thus the appellant-patentee should have been prepared accordingly.
However, the board does not consider that the appellant-patentee has committed an abuse of proceedings by filing the auxiliary requests in the course of the OPs before the board. The question which in fact arises in this inter partes appeal case relates to an evaluation of the fairness of the proceedings. The fact that there was a detailed discussion during the OPs before the board in relation to claim 6 of the main request was taken into account when assessing whether the filing of auxiliary requests was justified in the course of the OPs.
In the end the patent was revoked.
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