T 1311/17 - A bona fide attempt to defend the patent

Key points

• The Board admits the new AR filed with the Statement of grounds (in this opposition appeal, by patentee).
• The Board: “contrary to the submissions of the appellant-opponent 2, "clear allowability" is not the decisive criterion for the admission of new requests filed for the first time with the statement of grounds”
• The Board: “In the light of the [course of the procedure before the OD], it cannot be said that the appellant-proprietor during the first-instance written proceedings had received a clear indication that the now disputed added subject-matter objection was a key issue for the validity of the granted claims. On the contrary, this only became clear during oral proceedings [before the OD].”
• “Only after issuance of the decision was the appellant confronted with the full reasoning of the opposition division. Subsequently, with enough time for proper consideration of their response and the knowledge of the reasoning of the opposition division, did the patentee formulate what they considered an appropriate response to the reasons given in the decision.”
• “[AR-1] is therefore regarded by the Board as an appropriate and legitimate reaction of a losing party to the impugned decision.”

EPO T 1311/17 -  link

2. First auxiliary request - Admissibility

2.1 The appellant-proprietor files this request for the first time with the statement of grounds of appeal. The admission of the new request is thus at the discretion of the Board, Article 12(4) RPBA.

In this regard the main question to be addressed is whether such a new request could and should have been submitted already in first instance. According to established case law, this issue relates to the question of whether the presenting party (the appellant-proprietor in the present case) could have been expected to present its request in the first-instance proceedings in the circumstances of the specific case, see CLBA, V.A.4.11.3.d).

Accordingly, and contrary to the submissions of the appellant-opponent 2, "clear allowability" is not the decisive criterion for the admission of new requests filed for the first time with the statement of grounds.

2.2 In the present case, the opposition proceedings developed as follows. The opponents raised, with the notices of opposition, a number of added subject-matter, insufficiency, novelty and inventive step objections. The proprietor responded to the objections in good time by way of argument, which in the Board's understanding is a legitimate way to defend their case. In the summons dated 6 July 2016, the opposition division merely listed the issues to be discussed, namely added subject-matter for the reasons raised by the opponents, sufficiency of disclosure, the validity of the priority claim, novelty over E1, E2, E7 to E13 and inventive step over the combination of the documents given by both opponents. Only for sufficiency of disclosure did the division express its preliminary opinion that the invention was sufficiently disclosed, without further substantiation. The opponent 2 filed further submissions in respect of sufficiency of disclosure with letter of 7 December 2016, while opponent 1 filed further arguments in respect of different added subject-matter objections and also in respect of sufficiency, novelty and inventive step objections, with letter of 13 January 2017.

In the light of the above, it cannot be said that the appellant-proprietor during the first-instance written proceedings had received a clear indication that the now disputed added subject-matter objection was a key issue for the validity of the granted claims. On the contrary, this only became clear during oral proceedings on 15 February 2017.

2.3 It was also during these oral proceedings before the opposition division, within the limited time available in the circumstances, that the appellant-proprietor made an attempt to find a wording of the independent claim which was acceptable to the opposition division and submitted an auxiliary request combining originally filed claims 1 and 3. This request was not admitted by the opposition division. The Board is unable to see this as a deliberate choice on the part of the appellant proprietor to avoid a ruling on the issue at first instance. The Board rather considers such behaviour as an ordinary and bona fide attempt to defend the patent in the circumstances, bearing in mind that the patentee had to face two opponents and a number of different objections on the three grounds of opposition.

2.4 Only after issuance of the decision was the appellant confronted with the full reasoning of the opposition division. Subsequently, with enough time for proper consideration of their response and the knowledge of the reasoning of the opposition division, did the patentee formulate what they considered an appropriate response to the reasons given in the decision.

In the present case the first auxiliary request which, there being no main request, is in fact the appellant's primary request, as explained above attempts to address the sole reason for revoking the patent. It is therefore regarded by the Board as an appropriate and legitimate reaction of a losing party to the impugned decision.

2.5 The Board thus decided to admit auxiliary request 1 into the appeal proceedings.