During a recent discussion with a friendly group of patent attorneys in Cambridge we broached the familiar question of the best time to file auxiliary requests. I expressed my almost standard view, namely as soon as possible, and ideally as many as possible during first instance proceedings to avoid, or minimise, admissibility issues on appeal. This provoked some more familiar questions – as many as possible and as soon as possible even if you don’t actually want some of them? Won’t that tell an opponent that you are prepared to accept less than you want? Well, my answer, which is not always popular, was – better to have a fall-back position, even one you would prefer to avoid, than no fall-back position.
And then the next question was, suppose you have a really large number of requests, should you still file them all? Or keep some back? Still better safe than sorry, was my answer. But it set me thinking about numbers of auxiliary requests. For many years, the largest number I could recall was 50 plus in T 446/00, a decision which warned against both late filing of requests and filing too many on appeal. Then there was T 221/06 in which, although the number of auxiliary requests actually filed was only 15, they were put forward as open to such wholesale re-shuffling of the various claims that, according to the board of appeal’s calculation, the total number of potential requests came to 384. The board rejected that as the “pick and mix approach”. Undeterred, the patentee petitioned for review of that decision but fared no better before the Enlarged Board (see R 11/08).
But now we have T 280/11 which must not only beat all previous records but set an almost impossible challenge for those hoping to do better (or worse?). In that case, the optimistic patentee filed a total of 685 auxiliary requests, of which only a paltry 227 were filed much in advance of the oral proceedings, 454 were added a few days before, and another 4 on the day. Mind you, the patentee was refused a request to file his 686th request during the afternoon of the hearing. As I say, best to plan the fall-back position….