19 Apr 2018

T 2046/14 - No surprising development

Key points

  • This is a straightforward case of not admitting requests in appeal. But still instructive.
  • The ninth request is filed after the boards negative conclusion on higher ranking request. 
  • " Independently of [whether AR-9 overcomes] the objections, the Board considers that a piecemeal filing of auxiliary request(s) in a case where the relevant objections were known from the beginning of the appeal proceedings neither satisfies the requirements of Article 12(2) RPBA, according to which the appellant should submit a complete case in its statement of grounds of appeal, nor satisfies the requirements of due process (efficient conduct of the proceedings) and the need for economy of the proceedings (Article 13(1) RPBA). 
  • The Board also does not admit AR-10 to AR-12, filed with the Statement of grounds.
  • " The appellant has not justified why those requests were only filed at the present stage of the proceedings. Besides, it was not shown that there had been any surprising development of the case which could justify the filing of those requests only with the statement of grounds of appeal. Therefore, there is no apparent reason which could justify why the appellant has not submitted those requests already in the first instance proceedings." 



EPO  T 2046/14 - link

Ninth auxiliary request
7. Admittance
7.1 The respondents requested that the ninth auxiliary request be not admitted into the proceedings.
7.2 Since the ninth auxiliary request was filed during the oral proceedings before the Board, its admittance into the proceedings underlies inter alia the stipulations of Article 13(1) RPBA.
7.3 According to the case law, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of his rights as early and completely as possible, in particular in inter partes proceedings in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings (Case Law, supra, IV.E.4.1.2 and 4.1.4).


7.4 As may be seen from the minutes of the oral proceedings before the Board, the ninth auxiliary request was submitted by the appellant after the Board had announced its conclusion that the main request and the first to the eighth auxiliary requests were either not allowable or not admitted into the proceedings and as a further attempt to overcome the objections pursuant to Article 123(2) EPC (and Article 84 EPC) retained against the higher ranking requests.
7.5 Independently of its success in overcoming the objections, the Board considers that a piecemeal filing of auxiliary request(s) in a case where the relevant objections were known from the beginning of the appeal proceedings neither satisfies the requirements of Article 12(2) RPBA, according to which the appellant should submit a complete case in its statement of grounds of appeal, nor satisfies the requirements of due process (efficient conduct of the proceedings) and the need for economy of the proceedings (Article 13(1) RPBA). This is particularly true in the present case for the ninth auxiliary request which was only submitted after a negative conclusion against each higher pending requests had been announced and despite the fact that all objections retained were known by the appellant from the beginning of the appeal proceedings (the objection pursuant to Article 123(2) EPC against claims 7, 8 and 16-18 of the sixth auxiliary request was submitted in respondent 2's rejoinder to the appellant's statement of grounds of appeal dated 10 April 2015, section VII.1). Also, all those objections were identified in the Board's communication which was sent to the parties well in advance of the oral proceedings (see above: section IX, last but one paragraph), so that they had sufficient time to prepare their case accordingly, in particular to file in due time any auxiliary requests susceptible to overcome the issues identified therein.
7.6 For those reasons, the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA by not admitting into the proceedings the ninth auxiliary request submitted during the oral proceedings before the Board.
Tenth to twelfth auxiliary requests
8. Admittance
8.1 The respondents requested that the tenth to the twelfth auxiliary requests be held inadmissible because they should have been filed in first instance proceedings.
8.2 Considering that the tenth to the twelfth auxiliary requests were submitted together with the appellants' statement of grounds of appeal, they were filed pursuant to Article 12(2) RPBA and underlie the stipulations of Article 12(4) RPBA according to which the Board has the power to hold inadmissible requests which could have been presented in the first instance proceedings.
8.3 The appellant has not justified why those requests were only filed at the present stage of the proceedings. Besides, it was not shown that there had been any surprising development of the case which could justify the filing of those requests only with the statement of grounds of appeal. Therefore, there is no apparent reason which could justify why the appellant has not submitted those requests already in the first instance proceedings.
8.4 The appellant argued that he should be allowed to file new requests together with its statement of grounds of appeal in direct reaction to the contested decision.
8.4.1 However, in its statement of grounds of appeal the appellant provided no substantiation why the tenth to the twelfth auxiliary requests may overcome the objection of lack of inventive step retained against the third to the fifth auxiliary requests dealt with as last requests in the contested decision.
Regarding the objections pursuant to Article 123(2) EPC retained by the opposition division against the then pending main request, first and second auxiliary requests, the appellant only indicated that the tenth to twelfth auxiliary requests were allowable because the amendments made was based on the passage at page 22, third paragraph of the application as filed. Therefore, the appellant's line of argumentation was similar to that used in respect of the main request, first and second auxiliary requests dealt with and not allowed in the contested decision, apart from the fact that it relied on the combination of original claims with a different passage of the application as filed. However, considering that that passage of the application as filed is directed to the embodiment of Figure 7, i.e. to a specific embodiment comprising features which are not reflected in e.g. claim 1 of each of the ninth to the eleventh auxiliary requests, it is not apparent and it was not explained by the appellant why those new requests could possibly overcome the opposition division's findings in respect of Article 123(2) EPC.
8.4.2 Also, it is noted that in the present case, the contested decision did not deal with claims directed to "resin valve covers" as now defined in operative claims 1, 9 and 10 of any of the tenth to the twelfth auxiliary requests (whereby claims 9 and 10 correspond to original claims 9 and 10, respectively).
Besides, the subject-matter of operative claim 1 of the tenth to the twelfth auxiliary requests is directed to "resin valve covers" instead of the "valves" defined e.g. in claim 1 of the sixth to the eighth auxiliary requests. Claim 1 of the tenth to the twelfth auxiliary requests is further related to different embodiments of the resin valve covers otherwise defined in the higher ranking requests e.g. in claims 9 and 10 of the sixth auxiliary request (corresponding to claims 9 and 10 of the application as filed), i.e. they are related to fundamentally different subject-matter. On that basis these requests appear to diverge from the previous requests.
Under those circumstances, although it is not contested that the subject-matter of the tenth to the twelfth auxiliary requests is within the scope of the opposition (see e.g. granted claim 1), admitting any of those requests into the proceedings would have required dealing for the first time with completely new issues during the appeal proceedings or, possibly, to remit the case to the first instance for further prosecution. This would run counter to the need for economy of the proceedings and would not be in line with the purpose of the inter partes appeal proceedings which is mainly to give the losing party a possibility to challenge the decision of the opposition division on its merits (G 9/91, section 18 of the reasons).
In view of this the Board considers that these requests together with the submissions relevant to them in the statement of grounds of appeal cannot be seen as a proper reaction to the decision, so that these requests could and should have been filed in opposition proceedings, if a decision on them was desired.
8.4.3 Under these circumstances, the Board finds it appropriate to make use of its power under Article 12(4) RPBA to hold inadmissible the tenth to the twelfth auxiliary requests.
9. None of the appellants' requests which are in the proceedings (main request, first, second and sixth to eighth auxiliary requests) being allowable, the appeal is to be dismissed.

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