Key points
- Both patentee and opponent appeal. The board observes in the preliminary opinion that " the version of the patent held by the opposition division to meet the requirements of the appeal is no longer pursued by the patent proprietor".
- " [Patentee] argued that their intention had always been to defend the version of the patent as maintained by the opposition division, i.e. auxiliary request 1. This was clear from the fact that they invested a great deal of effort in presenting complete lines of argument in order to defend this request in their reply to [the opponent's] statement of grounds dated 22 July 2016. They never explicitly abandoned auxiliary request 1, such that it had always been in the appeal proceedings. There was an obvious mistake in the numbering of the auxiliary requests [1 to 6] in the letter dated 10 January 2017 that they corrected by letter dated 18 March 2020 [by renumbering them as AR-2 to 7]. "
- The Board is not convinced. "the allegedly obvious mistake in the letter of 10 January 2017 arises neither from the letter itself nor from the fact that no change in the appeal file occurred between [patentee's] letters dated 22 July 2016 and 10 January 2017. As a matter of fact, a party is entitled to change their requests at any time during the proceedings without justification when it concerns withdrawals, whether tacit or not. As a result, there was no reason to doubt whether the letter of 10 January 2017 reflected the real intention of [patentee] at that time."
- " Since the maintenance of the version of the patent as upheld by the opposition division was not comprised in the requests filed on 10 January 2017, auxiliary request 1 is considered to be re-filed with letter dated 18 March 2020."
- " Since the re-filing of auxiliary request 1 was done after the parties' replies, even after the board's communication pursuant to Article 15(1) RPBA 2020, a justification from [patentee] for its admissibility into the appeal proceedings is mandatory. Even if the RPBA 2007 had still been applicable, a justification would have been necessary in order for the board to judge whether it should exercise its discretion under Article 13 RPBA 2007 in favour of the patent proprietor. However, [patentee] did not provide any valid justification for the re-filing of auxiliary request 1 after the board's communication but relied solely on their "obvious mistake" arguments, so that the request cannot be admitted into the proceedings already for this reason alone (Article 13(1) RPBA 2020)."
- The requests 2-7 filed with the letter of 10 January 2017 are not admitted either.
- " Article 13(1) RPBA 2020 applies. In order to take into account that RPBA 2020 entered into force after the actual filing of auxiliary requests 2 to 7, the attention of [patentee] was drawn to the lack of justification for the late filing of these requests in the communication of 3 February 2020 (point 5.1). Therefore [patentee] had the opportunity to provide in a timely manner a justification as required by Article 13(1) RPBA 2020."
- " However, [patente's] arguments merely reflect the course of the appeal proceedings and do not constitute a justification for the late-filing of auxiliary requests 2 to 7 with the letter dated 10 January 2017. Said letter was filed nearly six months after the parties' replies and is therefore an amendment to [patentee's] case according to Article 13(1) RPBA 2020, irrespective of whether or not something happened in the interim and of how far in advance of the oral proceedings it was filed."
- The main request was found to lack an inventive step (the Board agreeing with the OD). None of the auxiliary requests was admissible and the patent is revoked.
- Note, where the Board writes "Said letter was filed nearly six months after the parties' replies and is therefore an amendment to [patentee's] case according to Article 13(1) RPBA 2020", probably this means no more than that the letter of 10 January 2017 was not the patentee's reply to the Statement of grounds of the opponent, but a subsequent letter.
T 0099/16
source http://justpatentlaw.blogspot.com/2022/01/t-009916-lose-claims-as-held-allowable.html
