5 Jun 2018

T 1739/13 - Admissibility objection of own motion

Key points
  • In this opposition appeal, the Board raises an admissibility objection to the Main Request of its own motion. The reason is that Main Requests contains dependent claims which were added in appeal. 
  • " the main request additionally comprises dependent claims encompassing subject-matter which, as such, was not examined and decided upon by the opposition division. The subject-matter of dependent claims 23 to 25 was not present in any of the auxiliary requests underlying the decision under appeal. The introduction of this subject-matter into the appeal proceedings is not in line with the case law "

EPO  T 1739/13  -  link
Dependent claims 23 to 25
4. In the communication pursuant to Article 15(1) RPBA, the board drew the parties' attention to the case law on the filing of requests that had been filed and subsequently withdrawn in proceedings at first instance (Article 12(4) RPBA; cf. inter alia, T 361/08 of 3 December 2009, point 13 of the Reasons, and T 679/09 of 13 November 2012, point 12 of the Reasons). The board noted that deficiencies under Article 84 EPC of claims directed to a kit had already been dealt with during the opposition procedure and amended claim requests had been filed to address them (cf. points 2.2 and 2.3 of the "Summons to attend oral proceedings" issued by the opposition division; and claims 22 and 23 of auxiliary requests 1 and 2 filed by the patent proprietor on 15 March 2013 in reply thereto). None of these auxiliary requests were prosecuted at the oral proceedings before the opposition division because the patent proprietor replaced all requests then on file by a new main request and new auxiliary requests 1 to 3; the requests underlying the decision under appeal.
5. Claim 22 of the main request differs from claim 22 of the main request underlying the decision under appeal by the deletion of subject-matter defining the chemical nature of the ribonuclease inhibitor (cf. point IX supra). The deletion of this subject-matter in claim 22 and its introduction in dependent claims 23 to 25 attempts to overcome the objection raised under Article 84 EPC against the main request underlying the decision under appeal (cf. pages 10 and 11, point 5 of the decision under appeal).
6. The scope of claim 22 of the main request is identical to that of claim 22 of auxiliary request 1 of the decision under appeal. However, the main request additionally comprises dependent claims encompassing subject-matter which, as such, was not examined and decided upon by the opposition division. The subject-matter of dependent claims 23 to 25 [which are dependent on claim 22 and define the nature of the ribonuclease inhibitor (granted claims 31 to 33), see IX of the decision] was not present in any of the auxiliary requests underlying the decision under appeal. The introduction of this subject-matter into the appeal proceedings is not in line with the case law referred to above.
Conclusion
7. Thus, the board, exercising its discretion pursuant to Article 13(1) RPBA, does not admit the main request into the appeal proceedings.

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