T 1847/22: Procedural considerations in appeal: Re-ordering of requests and the impact on admissibility

Background

This case concerned EP 3 085 344 B1, which relates to a wound pad, a self-adhesive member comprising a wound pad. The patent was opposed by two opponents. During opposition, the patent was maintained in amended form. The proprietor and the opponents appealed the decision, and the patent was ultimately revoked by the Board of Appeal. The focus of this article concerns the re-ordering of the proprietor’s requests and their admissibility in appeal.

Sequence and evaluation of the proprietor’s requests

The patent was maintained by the opposition division in accordance with the claims filed as auxiliary request 4 by the proprietor. This request was previously numbered as auxiliary request 13 and then re-ranked as auxiliary request 4 during the oral proceedings.

In their grounds of appeal, the proprietor argued in favour of the main request as filed during opposition and included auxiliary requests 1 to 15 as fallback positions. Whilst the subject matter of the auxiliary requests corresponded to those filed during opposition proceedings, the order of the requests was modified. In particular, former auxiliary request 4 (i.e. the request deemed allowable by the opposition division) was re-ranked as auxiliary request 12 in appeal. Further changes were made to the order of the remaining auxiliary requests such that the sequence of requests differed considerably when compared to those filed before the opposition division.

On evaluation of the requests during appeal, the Board determined that the main request and auxiliary requests 1, 2, 4, 13, 14 and 15 all contravened Article 123(2) EPC. Auxiliary requests 3 and 12 were found to lack novelty over D2. The outcome of the case further depended on the admissibility of auxiliary requests 5 to 11 as these claim sets included additional limitations alleged to provide a means of distinction over the cited prior art.

Admissibility of auxiliary requests 5 to 11 – Proprietor’s arguments

The proprietor argued that it had reordered the requests during the oral proceedings before the opposition division because it was surprised by the conclusion of the opposition division that claim 1 of the main requests was not novel with regard to D1. The reordering/renumbering of the auxiliary requests was not an arbitrary procedural manoeuvre, but a response to the new circumstances that emerged during the oral proceedings, and the reordering was an attempt to maintain procedural efficiency. The reordering of those requests again on appeal should therefore be allowed.

Admissibility of auxiliary requests 5 to 11 – Opponent’s arguments

The opponent argued that the proprietor’s action prevented the opposition division from reaching a decision on auxiliary requests 5 to 11, which the proprietor now wished to have examined before the request upheld by the opposition division. Amongst other things, this was not procedurally efficient, and these requests should not be admitted.

The Board’s decision on admissibility of auxiliary requests 5 to 11

Auxiliary requests 5 to 11 as submitted with the grounds of appeal were submitted during opposition proceedings, before the time limit set under Rule 116 EPC. However, at that time they were auxiliary requests 6 to 12, and were thus ranked above auxiliary request 13, which was the request later found allowable by the opposition division, albeit re-ranked and numbered as auxiliary request 4 by the proprietor. These requests were reordered during the oral proceedings as auxiliary requests 7 to 13, and thus to a rank lower than auxiliary request 4 found allowable by the opposition division, just to be reordered again to auxiliary requests 5 to 11 with the filing of the proprietor’s grounds of appeal to a rank higher than the request found allowable by the opposition division.

Regarding the proprietor’s justification for reordering, the Board remarked that the change of mind by the opposition division on novelty in respect of a certain document should not have come as a surprise, since the annex to the summons issued by the opposition division is only a preliminary opinion. In addition, whilst it is true that reordering the requests may often reduce the duration of oral proceedings before the opposition division, the proprietor should bear in mind that the order of claim requests is determined by the proprietor itself and should reflect the order of preference in which requests are to be considered and the text in which the proprietor wishes a patent to be maintained. The reordering of the requests, even if it does not change the subject matter of the underlying claims, is not merely a formalistic amendment of the proprietor’s case without procedural consequence, since it signals how the proprietor has chosen, specifically, to proceed with its case and thus on the requests, and in which order, the opposition division must reach its decision.

The Board thus determined that the proprietor’s actions prevented the opposition division from reaching a decision on auxiliary requests 5 to 11 such that there is no decision of the opposition division which the Board can review. Consequently, these requests became “procedurally inactive” in the same way as if the proprietor had withdrawn these requests; such withdrawal would have led to non-admittance under Article 12(6) RPBA [1]. There is no reason to treat requests which are not formally withdrawn but downgraded such the opposition division is prevented from taking a decision differently because the purpose is to ensure the primary object of appeal proceedings to review decisions of the first instance according to Article 12(2) RPBA is impaired in the same manner. The Board could not see any reason for the reordering of the requests with the proprietor’s grounds of appeal which would justify the Board considering the requests in a new order and thus for the first time in appeal.

Accordingly, auxiliary requests 5 to 11 were not admitted into appeal proceedings and the patent was revoked.

Conclusions

This case highlights the significance of the sequence of all requests presented in opposition and appeal. Even though requests may be filed before the opposition division in due time, the reordering of requests can impact their admissibility for any appeal proceedings.

The Decision also demonstrates how procedural provisions can be leveraged to reduce the number of requests for consideration and simplify matters for discussion before the Boards of Appeal.

[1] The Board also referred to: T 1404/20, reasons 1.4; T 1853/22, reasons 3.2; T 1809/22, reasons 4.3

This article was prepared by Partner & Patent Attorney Adam Hines.