T 0936/09 01-03-2012

1. The appeal is admissible.

Non-admittance of the appellant's main request (filed as a sole request with the statement setting out the grounds of appeal) into the appeal proceedings

2. According to the principles developed by the Enlarged Board of Appeal, the appeal procedure is to be considered as a judicial procedure (G 1/99, OJ EPO 2001, 381, point 6.6 of the Reasons, G 8/91, OJ EPO 1993, 346, point 7 of the Reasons). Appeal proceedings are wholly separate and independent from the preceding, purely administrative, first-instance proceedings and not a mere continuation of those first-instance proceedings (see e.g. T 34/90, OJ EPO 1992, 454, point 2 of the Reasons). The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first-instance department (see e.g. T 34/90, loc. cit., and G 9/91 and G 10/91, OJ EPO 1993, 408, 420). It follows that 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, loc. cit., point 18 of the Reasons). 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). It is not the purpose of the appeal to conduct the case anew and, therefore, the issues to be dealt with in appeal proceedings are determined by the dispute underlying the opposition proceedings (see e.g. T 356/08, point 2.1.1 of the Reasons). Thus the appeal proceedings are not just an alternative way of dealing with and deciding upon an opposition. Parties to first-instance proceedings are therefore not at liberty to shift their case to the second instance as they please, thereby compelling 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 (see also T 1067/08, point 7.2 of the Reasons). The filing of new submissions (requests, facts or evidence) by a party are not precluded in appeal proceedings, but their admission is restricted, depending inter alia on the procedural stage at which the submissions are made (see e.g. T 356/08, point 2.1.1 of the Reasons, T 1685/07, point 6.4 of the Reasons; Brigitte Günzel, "The treatment of late submissions in proceedings before the boards of appeal of the European Patent Office", Special edition OJ EPO 2/2007, 30).

3. The afore-mentioned principles are reflected in the provisions of Articles 12(4) and 13 RPBA. Since the appellant filed its main request with its statement of grounds of appeal, Article 12(4) RPBA is the relevant provision to be applied in the present case.

4. Article 12(4) RPBA requires the board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent that it relates to the case under appeal and meets the requirements in Article 12(2) RPBA. However, according to Article 12(4) RPBA, the board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. This discretionary power serves the purpose of ensuring a fair and reliable conduct of judicial proceedings (T 23/10, point 2.4 of the Reasons).

5. It follows from the above that a party to appeal proceedings has no right to have a request which could have been filed in first-instance proceedings but was only filed with the statement setting out the grounds of appeal admitted into appeal proceedings (see also e.g. R 10/09, point 3.2 of the Reasons; R 11/11, point 9 of the Reasons; T 144/09, point 1.14 of the Reasons). Consequently, a patent proprietor who files such a request cannot defend its patent on the basis of that request in appeal proceedings if the board, exercising its discretion under Article 12(4) RPBA, holds it inadmissible.

6. According to established jurisprudence, discretion has to be exercised equitably, i.e. all relevant factors which arise in a case have to be considered, taking into account the particular circumstances of the case (G 7/93, OJ EPO 1994, 775, point 2.5 of the Reasons; R 11/11, point 9 of the Reasons; T 931/06, point 3.5 of the Reasons; T 23/10, point 2.3 of the Reasons).

7. In the first-instance proceedings of the present case the patent proprietor reacted to the opposition filed against its patent only after receipt of several EPO communications (see points IV. to VI. above) and in a very restricted manner. The patent proprietor merely stated that it was interested in maintaining the patent as granted and that it would not reply to the notice of opposition (see point VII. above). In fact the patent proprietor did not file any further submissions, such as arguments or requests, in the course of the first-instance proceedings, despite being given several opportunities to do so (see points IV. and VI. above). Indeed, in the whole course of the first-instance proceedings, the patent proprietor did not take the opportunity to defend its patent as granted or in amended form in writing. Nor did the patent proprietor file a request for oral proceedings, with the result that the opposition division was not obliged to hold oral proceedings in case of a revocation of the patent. Although it is true that not requesting oral proceedings is not a waiver of the right to file submissions, it does, however, amount to dispensing with presenting the case orally during oral proceedings. In the board's view, by its conduct in the first-instance proceedings the patent proprietor thus made a "considered and deliberate choice" not to submit any arguments or amended claims, or any further requests in the first-instance proceedings in writing or orally, despite being given the opportunity to do so. In this respect the present case is indeed comparable to case T 144/09, in which the patent proprietor did not avail himself of the opportunity to file any request which could have overcome one of the grounds for opposition, despite being given the opportunity to do so in oral proceedings before the opposition division (see T 144/09, point IV. of the Summary of Facts and Submissions and points 1.4 to 1.18 of the Reasons), and therefore made a "considered and deliberate choice" not to file an amended request in those proceedings (see T 144/09, point 1.14 of the Reasons). The board notes that, according to the facts of T 144/09, the patent proprietor had not explicitly stated in that case that he would not file any further request. However, the present board does not consider it necessary that such a choice is explicitly stated.

8. The board considers the patent proprietor's conduct in the first-instance opposition proceedings particularly significant since a patent proprietor usually files at least arguments as to why the grounds for opposition raised do not prejudice the maintenance of the granted patent if he wants to maintain his patent in that form, and/or he amends his patent if he (also) wants to defend a limited version of his patent.

9. However, under the EPC, there is no legal obligation for the patent proprietor to take an active part in opposition proceedings. To that extent, the board agrees with the appellant. But the board does not accept that the patent proprietor is free to present or complete his case at any time that he wishes during the opposition or opposition appeal proceedings, depending, for example, on his procedural strategy or his financial situation. This view is in line with the provisions of Article 114(2) EPC (and Article 114(2) EPC 1973) and of Articles 12(4) and 13 RPBA, which give a discretion to the deciding body not to admit a party's submissions filed at a late stage of proceedings. In particular, in view of the judicial nature and purpose of inter partes appeal proceedings (see point 2 above) and in the interests of an efficient and fair procedure, the board considers it necessary that all parties to opposition proceedings complete their submissions during the first-instance proceedings in so far as this is possible. If a patent proprietor chooses not to respond in substance at all to the opposition, for example by filing arguments or amended claims, or chooses not to complete his submissions at the stage of the first-instance proceedings, but rather presents or completes his case only in the notice of appeal or the statement setting out the grounds of appeal, then he will need to face the prospect of being held to account for such conduct by the board when, for example, exercising its discretion under Article 12(4) RPBA.

10. The board turns now to the appellant's argument that, as in case T 848/09, the reasons for the patent being revoked were not known to the patent proprietor until the decision under appeal was notified to the parties, because the opposition division had not held oral proceedings or issued a preliminary opinion before notifying its decision. This argument does not convince the board. First, the notice of opposition clearly indicated the grounds for opposition, together with the supporting evidence and submissions, and the patent proprietor should have expected that the ground(s) for opposition raised in the notice of opposition would most probably be dealt with in the decision of the opposition division. Second, the board agrees with the respondent that there is nothing in the decision under appeal which goes beyond the content of the notice of opposition. This has also not been contested by the appellant (see point XVI. above). Thus all the reasons for revocation of the opposed patent were known to the patent proprietor before it received the impugned decision. Consequently, the facts of the present case differ from those in case T 848/09, in which the competent board concluded that the reasons for revocation had not been explicitly made known to the patent proprietor and therefore that it was plausible that the formulation of a suitable new request overcoming the objection was not immediately evident to the patent proprietor at oral proceedings before the opposition division.

11. Since the reasons for revocation of the patent were known to the patent proprietor before the opposition division notified its decision, the board does not accept the appellant's argument that the appeal proceedings were the first possibility to file amended claims suitable to overcome the reasons for revocation of the opposed patent. Moreover, the patent proprietor was given several opportunities to meet the grounds for opposition (see points IV. and VI. above). Instead of not taking the opportunity to defend its patent in the first-instance proceedings, the patent proprietor could at that stage have filed a request in the form of that filed with the statement setting out the grounds of appeal. That this could have been done is also supported by the appellant's submission that the present main request is a straightforward limitation of the granted claims which took into consideration the reasons for revocation of the patent given by the opposition division. The appellant's argument that the present main request was "a direct reaction to the reasons for revocation given by the opposition division" does not alter the board's view since, as explained above, these reasons were essentially the same as the objections raised in the notice of opposition. Furthermore, the appellant's motives for not limiting its patent in the first-instance proceedings in view of the objections raised in the notice of opposition are not a valid reason for accepting that the appellant could not have filed the present main request in the proceedings before the opposition division. Even if the patent proprietor did think that these objections would not be relevant to the granted patent and for that reason did not file amended claims in the first-instance proceedings, this does not mean that it could not have done so.

12. The appellant's further argument that after the patent proprietor's reply of 10 March 2008 to the EPO communications there was no indication at all that the opposition division would issue the impugned decision is not convincing either. As the respondent pointed out, the EPO communication dated 13 December 2007 contained the information that it was likely that, if the patent proprietor did not react within the period specified in that communication, the opposition proceedings would be continued pursuant to Article 101 EPC. Since, in its reply to that communication, the patent proprietor clearly indicated that it would not reply to the notice of opposition and did not request oral proceedings, it should not have come as a surprise to the patent proprietor that the opposition division continued the examination of the opposition and proceeded directly to issue the written decision. The board also agrees with the respondent that there was no surprising element as far as the time of notification of the impugned decision is concerned because there was indeed a period of almost two years between the filing of the notice of opposition and the notification of the decision under appeal as well as a period of about one year between the patent proprietor's reply to the EPO communication and the notification of the decision under appeal.

13. Finally, the board turns to the appellant's argument that in fact there had been no further opportunity for the patent proprietor to react to any opinion of the opposition division by filing amended claims in the first-instance proceedings. The board does not find this argument persuasive, since there was no reason for the opposition division to give an opinion on the opposition before taking its decision in view of the course of the first-instance proceedings as set out above (see point 7 above).

14. In view of the foregoing, the board concludes that the present main request could already have been filed in the first-instance proceedings in response to the objections raised in the notice of opposition. Hence the board does not accept the appellant's argument that the provisions of Article 12(4) RPBA were not pertinent in the present case.

15. Taking into account the course of the first-instance proceedings, it is the board's view that an admission of the main request into the appeal proceedings would be incompatible with the judicial nature of the appeal procedure (see point 2 above). As set out above (points 7 to 9), the appellant patent proprietor made a considered and deliberate choice not to respond in substance to the opposition at all in the first-instance proceedings but to defend its patent for the first time in appeal proceedings, by filing amended claims and corresponding arguments. In fact, it was only in the appeal proceedings that the appellant for the first time took an active part after receipt of the opposition. As argued by the respondent, the appellant effectively circumvented the first instance and defended its patent exclusively in the appeal proceedings. By this conduct, the appellant tried to shift its case entirely to the second instance, thereby compelling the board either to give a first ruling on the appellant's case or to remit the case to the opposition division. Such a shifting of the case would also put the respondent at an unjustified disadvantage because if the main request were admitted and decided upon by the board, the subject-matter of that request would have been dealt with only by the board and the respondent would be deprived of an examination of the claims before two instances.

16. For the above reasons, the board, exercising its power under Article 12(4) RPBA, decided not to admit the appellant's main request into the appeal proceedings.

The appellant's auxiliary request for remittal

17. At the oral proceedings before the board the appellant's new representative requested, as an auxiliary measure, that the case be remitted to the opposition division on the basis of the amended set of claims which were filed with the statement of grounds of appeal and which form the basis for the appellant's main request.

18. Although it is true that a remittal pursuant to Article 111(1) EPC 1973 would avoid the loss of two instances, it would clearly be in contradiction to the board's discretionary decision not to admit the main request into the appeal proceedings. In particular, it would go against the reasons which the board had for not admitting the appellant's main request into the appeal proceedings.

19. As pointed out by the respondent, a remittal would also be disadvantageous for the respondent since it would involve higher costs and a prolongation of the proceedings by several years before the present case would finally be settled. Moreover, the prospect of second appeal proceedings would not be excluded. Hence a remittal would go against the principles of procedural economy without any justification. Further a remittal would cause legal uncertainty for a long period for the respondent, as well as for the public, regarding the validity of the opposed patent. The board accepts the argument of the respondent, namely that, in the case of a remittal, the respondent and the public would be left with a provisionally valid patent for a considerable time until the issue of a final decision and, therefore, would have to be careful as far as possible infringements of the present patent were concerned.

20. It is the board's conviction that, even if it decided to remit the case to the opposition division, an order for a different apportionment of costs in the respondent's favour would not offset the above disadvantages of a remittal.

21. For the above reasons the appellant's auxiliary request is not allowable.

22. Since none of the appellant's requests is allowable, the appeal must be dismissed.