This week, both K's law and Laurent Teyssèdre's french blog have commented on the decision T 144/09 wherein the failure of the patentee to file a claim suggested by the opposition lead to a refusal of the same claim in the pertinent appeal procedure on the basis of Art 12(4) RPBA.
Article 12(4) RPBA reads as follows:
(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirement in (2).
In this case, the patentee had delibeartely chosen not to cancel a feature allegedly offending Art. 123 EPC in any of the requests filed in the opposition and the board finds:
A request can be held inadmissible under Article 12(4) RPBA when added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings (Reasons 1.4).
Whilst the diligent patent attorney will immediately learn from this decision that he should better file as many auxiliary requests as possible overcoming the objections raised by the OD in the opposition proceedure, the situation turns out to be more complicated in the ex parte procedure.
In the opposition, if the patent is maintained in amended form according to the auxiliary request, the patentee has the opportunity to consider appealing this decision while relying on the principle of non reformatio in peius to at least have saved the patent according to the auxiliary request as a fallback possition.
In the examinaition procedure, if the applicant follows a "suggestion" of the Examining Division and files amended documents as an auxiliary request, the ED will very likely issue a communiation under R71(3)EPC according to the auxiliary request and, if the applicant apprioves the documents intended for grant, has no possibility to appeal the decision to grant due to his approval.
If, on the other hand, the applicant disapproves the documents of the communication under R71(3)EPC, this is entirely equivalent to a withdrawal of his auxiliary request such that he may be barred from prosecuting this request in the appeal procedure just as if the auxiliary request had not been filed.
There is actually no reliable possibility to keep the ED's suggestion as a fallback position as in the opposition procedure and to have the pertinent questions of law examined by the BoA without risking to lose the entire patent. In poker you would say the suggestion of the ED puts the applicant in an "all in or cashing out" position.