9 Mar 2017

T 1349/13 - Preparing for not yet admitted documents

Key points
  • The Board admits D6, filed by the opponent with its Statement of grounds, because it is a reaction to the 2nd Aux. Req. That request was admitted by the OD, even if it was filed by the proprietor two months before the oral proceedings, " in spite of the amended feature of claim 1 []  having been taken from the description, possibly relating to unsearched subject-matter as objected to by the opponent" 
  • The Board does not remit the case, and does not admit further auxiliary requests filed after the summons for oral proceedings, even if they are in reaction to D6, because D6 was on the table since the Statement of grounds.
  • " Furthermore, since D6 was filed together with the opponent's statement of grounds of appeal, the patentee had ample opportunity, and even the obligation under Article 12(2) RPBA, to examine D6 and present its complete case with its reply to the statement of grounds of appeal without awaiting the board's decision concerning the admission of D6 into the proceedings."

EPO T 1349/13 - link
3. Second auxiliary request
3.1 Admissibility of D6
Document D6 was filed by the opponent together with its statement of grounds of appeal.
3.1.1 The board is of the view that D6 is to be admitted into the proceedings for the following reasons:
(a) The filing of D6 by the opponent is to be considered as an allowable reaction to the patentee's filing of the present second auxiliary request two months before the first-instance oral proceedings. Indeed, claim 1 of the second auxiliary request was admitted into the proceedings by the opposition division in spite of the amended feature of claim 1 relating to the spray pump actuator including an output trigger signal and having been taken from the description, possibly relating to unsearched subject-matter as objected to by the opponent.
(b) D6 is sufficiently relevant to the case at stake. In particular, figure 1 of D6 and the corresponding description disclose details about how the spray actuator, the illumination source and the camera are connected and/or synchronized.
3.1.2 The patentee argued that D6 was late-filed and was technically not relevant enough to the case at stake. The filing of the second auxiliary request did not justify the filing of D6 because D6 did not disclose any of the newly claimed features, i.e. D6 did neither disclose a signal that triggered a camera, nor a spray pump actuator, nor a spray pump.
The board does not consider the filing of D6 as being late because the facts of the case were changed substantially by the patentee's filing of the second auxiliary request shortly before the first-instance oral proceedings. It is not reasonable to expect the opponent to file D6 earlier than with the statement of grounds of appeal. Concerning the technical relevance of D6, the board is satisfied that D6 discloses a method of spray data acquisition comprising aspects relating to the synchronization of the spray injector, the laser light source controller and the imaging camera. It is not necessary for D6 to disclose these features explicitly for D6 to be regarded as sufficiently relevant to justify its admittance into the proceedings.
3.2 Remittal to the first instance
During oral proceedings, the patentee reiterated its request, already filed with its letter of 30 December 2013, that the case be remitted to the department of first instance. The reasons for its request were that D6 was only admitted into the proceedings on the day of the oral proceedings before the board of appeal and that, according to the case law of the boards of appeal, it had the right to have its case examined by two instances.
The opponent requested not to remit the case to the department of first instance for the reasons that there was no absolute right to two instances and that the examination of the present application had lasted already more than 17 years.
First of all, the board, referring to the "Case Law of the Boards of Appeal" (8th edition 2016), pages 1170 and 1171, is of the opinion that there is no absolute right of a party to have each issue considered by two instances. In the circumstances of the present case, D6 cannot be considered late-filed but must be seen as an allowable reaction to the admission by the opposition division of the patentee's second auxiliary request into the proceedings (see point 3.1 above). Furthermore, since D6 was filed together with the opponent's statement of grounds of appeal, the patentee had ample opportunity, and even the obligation under Article 12(2) RPBA, to examine D6 and present its complete case with its reply to the statement of grounds of appeal without awaiting the board's decision concerning the admission of D6 into the proceedings. Considering the overall length of the present proceedings, the need for procedural efficiency, the balance of interests of both parties and that of the public and the lack of specific reasons for remittal, the board exercised its discretion in not remitting the case.
3.3 Novelty
The claimed subject-matter is anticipated by the disclosure of D6 (Article 54 (1) and (2) EPC 1973).
[] 3.3.2 Counter-arguments of the patentee
[] It follows that the counter-arguments of the patentee in favour of novelty of the claimed subject-matter are not found convincing by the board.
4. Third and fourth auxiliary requests
4.1 Following the opponent's request not to admit the third and fourth auxiliary requests into the proceedings and taking into account the arguments of both parties, the board decides not to admit the third and fourth auxiliary requests into the proceedings under Article 12(2) and 13(3) RPBA for the following reasons:
(a) As a rule of principle, according to Article 12(2) RPBA, the parties must present their complete case at the beginning of the appeal proceedings. D6 was filed by the opponent with its statement of grounds of appeal. The patentee, in its letter of response of 30 December 2013, however, did not file any amendments to its claim requests in order to overcome possible objections based on D6, contrary to the requirements of Article 12(2) RPBA.
(b) The third and fourth auxiliary requests were filed after oral proceedings had been arranged. According to Article 13(3) RPBA, such requests shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings. In the present case, claim 1 was amended by introducing features taken from the description for limiting the claim's scope. Having been taken from the description, it is doubtful whether these features were searched by the EPO. The opponent explained convincingly that it had not had sufficient time to carry out a thorough search concerning the newly added features. Therefore, if the third or fourth auxiliary requests were admitted into the proceedings, an adjournment of the oral proceedings or a remittal of the case to the department of first instance would be necessary. In the board's view, this would be contrary to the wording and the spirit of Article 13(3) RPBA.
(c) No substantial change of the facts of the case occurred since the opponent's filing of D6, which possibly could have justified the filing of the third or fourth auxiliary request only one month before the oral proceedings before the board. In particular, the patentee cannot await the board's preliminary opinion or decision on the admittance of D6 into the proceedings before filing amendments intended to overcome objections based on D6 in case of its admittance. Moreover, except for minor clarifications of the initial arguments which were filed in writing by the opponent together with its statement of grounds of appeal, no substantial change of argumentation concerning the novelty objection in view of D6 was brought forward by the opponent or the board since the opponent's filing of D6.
For the above reasons, the board decides not to admit the third and fourth auxiliary requests into the proceedings.
4.2 Counter-arguments of the patentee
(a) The patentee argued that not admitting the third or fourth auxiliary request into the proceedings while having admitted D6 into the proceedings would be unfair. Acting this way would not preserve the balance of rights between the patentee and the opponent.
The board is of the view that this argument of balance of rights would presuppose that the patentee would have filed its amendments directly in response to the opponent's statement of grounds comprising D6, within the time limit set by the Office or at least sufficiently early before issuance of the summons to oral proceedings, so that the opponent and the board would have had time to examine the amendments. The patentee, however, did not avail itself of this opportunity, contrary to the requirements defined in Article 12(2) RPBA.
(b) The patentee further argued that, during oral proceedings, the opponent presented new arguments against novelty of claim 1 of the second auxiliary request in view of D6. The patentee learned only during oral proceedings how the opponent and the board exactly interpreted the disclosure of D6. In particular, the opponent amended its initial argumentation of lack of novelty (see the bottom of page 10 of the opponent's statement of grounds) concerning the definition of the "injection controller" of D6. Moreover, the opponent, in its statement of grounds, did not explain at all why D6 anticipated the "spray pump" of claim 1.
The board acknowledges that the debate on novelty of claim 1 of the second auxiliary request with respect to D6 was more extensive during oral proceedings than initially presented in writing in the opponent's statement of grounds. However, the board is of the view that the opponent did not amend its argumentation so extensively as to fundamentally change its case. In particular, the explanation provided by the opponent for the first time during oral proceedings that the "spray pump" was implicitly disclosed in D6 due to the use of a "high pressure fuel spray" (see the title of D6), cannot be considered to be unexpected so that it would justify admitting new auxiliary requests. The further passages and figures of D6, used by the opponent in its oral argumentation of lack of novelty, remained substantially the same as those used in its written argumentation.
(c) The patentee filed the third and fourth auxiliary requests as soon as it understood that there might be a chance that D6 would be admitted into the proceedings. There was no reason for the patentee to file amendments before knowing that D6 was effectively admitted into the proceedings.
The board does not agree with the patentee's argument because Article 12(2) RPBA requires the parties to present their complete case in their statement of grounds of appeal and in the reply to the other party's statement of grounds. This includes, if the patentee so wishes, the filing of auxiliary requests at this early stage of the appeal proceedings in order for the patentee to be prepared for the situation where documents, such as D6, would be admitted into the proceedings at a later stage.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.

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