T 0101/15 - Parties are expected

Key points

• The Board: “In inter partes proceedings, the parties are expected to play an active role and to provide requests and substantive submissions at an early stage.”
• The Board makes this remark in the context of opposition appeal proceedings, but in my view, the principle applies equally to first instance opposition proceedings. The Board's phrasing appears therefore entirely accurate.
• The Board also notes that: “An opinion of a board expressed in a communication pursuant to Article 15(1) [RPBA], which is solely based on arguments put forward in the statement of the grounds for appeal, is not an invitation for parties to file new requests or generally to present new facts.”

EPO T 0101/15 -  link

3.3 Auxiliary request 2bis was filed one month before the oral proceedings. According to the respondent it was filed as a response to the indication of the Board in the communication accompanying the summons to oral proceedings that claim 1 of the main request appeared not to fulfil the requirement of Article 123(2) EPC.

However, this objection was already raised before the Opposition Divison, and was dealt with in the decision under appeal. The Appellant has raised again this objection in the statement of grounds of appeal. In its reply to the statement of the grounds of appeal, the respondent provided arguments why this objection should be rejected, but did not file new requests, such as the ones currently under discussion, in order to overcome the objection, should the Board follow the arguments of the appellant in this respect.

Contrary to the respondent's submission, it cannot be surprising to a party that a board may depart from the conclusion reached by an Opposition Divison on an issue in a contested decision. An opinion of a board expressed in a communication pursuant to Article 15(1) [RPBA], which is solely based on arguments put forward in the statement of the grounds for appeal, is not an invitation for parties to file new requests or generally to present new facts. In inter partes proceedings, the parties are expected to play an active role and to provide requests and substantive submissions at an early stage.

According to Article 13(1) RPBA any amendment to a party's case after it has filed the reply of the statement of the grounds of appeal may be admitted and considered at the Board's discretion, which should be exercised in view of the current state of the proceedings and the need for procedural economy. Furthermore, the request was filed after oral proceedings have been arranged, so that Article 13(3) RPBA also applies.

3.4 Auxiliary requests filed after oral proceedings have been arranged shall not be admitted if they cannot be easily and promptly assessed as to their patentability by the other parties and the Board. This criterion falls within the principle of procedural economy for the exercise of the Board's discretion to admit late requests.