Request not found

It is always much more difficult to get what you want from the patent office when you do not know exactly what you want. Or even worse, when the patent office does not know exactly what you want.

Looking at a recent batch of EPO case law decisions issued in French, I came across one example which illustrates this harsh principle. I realized a little bit late that the decision had already been discussed on the Blog européen des brevets, but here it goes anyway.

European patent No. EP 1265983 assigned to the Swiss company Danstar Ferment AG was opposed by Lesaffre International. Back in 2011, the patent was revoked by the opposition division. The patent proprietor appealed, and sadly for all users of the patent system, it is only five years later that the Board of appeal issued its decision, which is… that the appeal was inadmissible! Unfortunate that a case such as this one could not be disposed of earlier.

The reason for the inadmissibility of the appeal was that “the request which defines the object of the appeal is unclear (article 108 EPC in combination with Rules 99(1) and 99(2) EPC) (reasons, 6).

The board summarized the legal framework leading them to this conclusion in section 2 of the reasons for the decision:

According to established case law of the Boards of appeal, the appellant’s case must be presented in a consistent, clear and substantiated manner in the statement of the grounds of appeal, not only in relation with the appellant’s arguments, but also in relation with its requests (see, inter alia, decisions T 760/08 of January 19, 2010, reasons 5, and T 446/00 of July 3, 2003, reasons 2.1.1). Indeed, the purpose of the statement of the grounds of appeal as well as of the notice of appeal is to define the extent of the appeal. This definition is solely and exclusively made by the appellant (see, inter alia decision T 2532/11 of October 14, 2013, reasons 2.5.1). It is important to emphasize that, according to established case law, it is also the parties’ duty to state their requests and decide on the order of these requests (see, inter alia, decision T 148/06 of January 8, 2008, reasons 2). 

Point well taken. So, what happened in this case? First, the notice of appeal itself did not expressly state any request except that the decision under appeal should be set aside. Second, the statement of the grounds of appeal contained a discussion on claim 1 as granted and then on four auxiliary requests (referred to as “propositions of auxiliary requests” at some point in the brief).

The problem is that Danstar’s main request in first instance was not the maintenance of the patent as granted (rejection of the opposition), but rather the maintenance of the patent in an amended form.

The Board stated that it was thus unclear whether the appellant’s intention was to replace the main request filed in first instance with a new main request according to which the opposition should be rejected.

Also, the Board claimed that the so-called “propositions of auxiliary requests” could be meant to replace the previously filed auxiliary requests but could also be additional auxiliary requests.

Therefore, said the Board,

The appellant did not refer one or more clear, precise and converging requests to the Board, which would make it possible to unambiguously define the object of the appeal. 

As a side note, I wonder why the Board mentioned “converging” requests in this sentence. Surely, the converging nature of the requests is only of relevance for the admissibility of the requests themselves, and not for the admissibility of the appeal as a whole. Or is it not?

The Board made reference to some decisions, in particular T 1554/12 and T 1538/09, in which the appeal was held admissible although the appellant’s requests were contradictory or imprecise. The difference between the present case and these earlier ones was, according to the Board, that in the earlier cases the intent of the appellant was clear (despite the imprecise wording), whereas it the present case it was not.

I wanted to see for myself and thus had a look at Danstar’s statement of grounds of appeal. One can only concur with the Board that no main request was set forth in the brief. Since claim 1 of the patent as granted was discussed, it could be argued that the appellant’s intent was to go back to this original version (as opposed to the main request cited in the first instance decision, which is not cited in the brief).

On the other hand, no corresponding set of claims was attached, and the brief was silent on the dependent claims. Therefore, the Board could also have noted that the appellant’s intent with respect to the dependent claims was not clear – although, again, it may be logical to surmise that the dependent claims were also maintained unamended, just like in the auxiliary requests.

Speaking of auxiliary requests, the Board’s view on those may be considered somewhat strict. The four sets of claims were indeed attached to the statement of grounds of appeal, and the unfortunate expression “propositions of auxiliary requests” used at some point in the brief probably did not introduce a fatal ambiguity. Indeed, it was stated at the beginning of the letter: “we attach four auxiliary requests” (not four “propositions“).

In short, it seems relatively clear that the four sets of claims attached to and commented on in the statement of grounds of appeal were those that the appellant intended to rely on in the course of the appeal proceedings.

An interesting question is whether this makes any difference though. Possible answer 1 is: no, if the Board believes that the main request cannot be properly understood, the appeal cannot be decided upon at all, and it has to be held inadmissible. Possible answer 2 is: yes, the Board could disregard an unclear main request and then directly examine the auxiliary requests.

Practically speaking, the appellant did not really fight, which may partly explain the decision. They did not reply to a communication from the Board containing a preliminary opinion which was negative for them both on the admissibility of the appeal as well as on the merits of the case, and both parties renounced their right to oral proceedings.

Anyway, the take home message for us European patent professionals is that we should be crystal clear when we state our requests, and preferably use the keywords that the EPO departments expect from us (“main request“, “auxiliary request No.X“, etc.), as they are not huge fans of guesswork.

There is always a way to know what an appellant's requests are.
There is always a way to know what an appellant’s requests are.

CASE REFERENCE: T 1435/11, Board of Appeal 3.3.08, May 20, 2016, Danstar Ferment AG v. Lesaffre International.

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