T 0834/14 - Requests not admitted by OD

Key points

• The OD considers claim 1 of the main request to include a feature that lacks basis in the application as filed, as submitted by the opponent in the Notice of opposition. The OD had refused to admit auxiliary requests filed during the oral proceedings. The Board does not consider this to form a substantial procedural violation.
• "As mentioned by the Opposition Division in its decision (point 11.2), the opponent had already objected to the feature [x] in the notice of opposition (point II), and the [proprietor] had not reacted by amending claim 1 to overcome that objection [prior to the oral proceedings]. In the Board's opinion, the [proprietor] could have filed an amended version of the claims to address this objection together with its reply to the notice of opposition, or at the latest before the oral proceedings. Therefore, for that reason alone, the Board does not see any substantial procedural violation in forbidding the appellant to file additional requests during the oral proceedings. "
• For not admitting the new requests, it does not matter that the OD had also raised new objections during the oral proceedings.
• "the fact that there was one objection which had been in the file right from the start of the opposition proceedings and which could and should have been addressed earlier seems enough to justify the refusal to file new requests. Such a decision by the Opposition Division might be considered severe, but in the present situation it does not constitute a substantial procedural violation."

EPO T 0834/14 - link

6. Substantial procedural violation

In its statement of grounds, the appellant considered that given the objections raised for the first time during the oral proceedings and introduced into the proceedings by the Opposition Division, the appellant should have been given an opportunity to file amended requests. Moreover, since in the annex to the summons to the oral proceedings the Opposition Division did not comment on the feature "valve actuation flow path", the appellant considered that the Opposition Division did not see any problem with it, which was an additional reason to allow the filing of auxiliary requests. It also requested that in case of a remittal the composition of the Opposition Division be changed for reasons of equity.

As mentioned by the Opposition Division in its decision (point 11.2), the opponent had already objected to the feature "valve actuation flow path" in the notice of opposition (point II), and the appellant had not reacted by amending claim 1 to overcome that objection. In the Board's opinion, the appellant could have filed an amended version of the claims to address this objection together with its reply to the notice of opposition, or at the latest before the oral proceedings.

Therefore, for that reason alone, the Board does not see any substantial procedural violation in forbidding the appellant to file additional requests during the oral proceedings. Despite that the Opposition Division accepted to consider other objections raised by the opponent only during the oral proceedings (points 10.2 (clarity) and 10.3.5 (support) of the decision), which would normally give a right to file a response to these new objections, the fact that there was one objection which had been in the file right from the start of the opposition proceedings and which could and should have been addressed earlier seems enough to justify the refusal to file new requests. Such a decision by the Opposition Division might be considered severe, but in the present situation it does not constitute a substantial procedural violation. Hence, also the composition of the Opposition Division does not have to be changed for reasons of equity.

7. Since the objections having led to the revocation have been overcome or found not well founded and the remaining requirements of the EPC have not yet been dealt with by the department of first instance, the Board exercises its discretion under Article 111(1) EPC to remit the case to the department of first instance for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.