T 0598/17 - Procedural obligation to actively participate

Key points

• The Board does not admit auxiliary requests, filed by the patentee-respondent after the preliminary opinion of the Board.
• “It is the respondent's [patentee's] procedural obligation to actively participate in the proceedings and to react to the grounds of appeal by filing appropriate (auxiliary) requests suitable for overcoming the objections raised in the grounds of appeal.”

EPO T 0598/17 -  link

2. Fifth to eighth auxiliary requests - admittance

2.1 In its reply to the grounds of appeal, the respondent [patentee] had refrained from filing auxiliary requests. It was only after the parties had been summoned and after the board had issued a communication under Article 15(1) RPBA that it filed those requests to which the present fifth to eighth auxiliary requests essentially correspond. The admittance of the present fifth to eighth auxiliary were therefore in the board's discretion (Article 13(1),(3) RPBA).

2.2 According to the respondent [patentee], it had refrained from filing auxiliary requests when replying to the grounds of appeal because in the absence of a preliminary opinion by the board, it had not been clear "in which direction the case would develop".

This argument is flawed. It is the respondent's [patentee's] procedural obligation to actively participate in the proceedings and to react to the grounds of appeal by filing appropriate (auxiliary) requests suitable for overcoming the objections raised in the grounds of appeal. In doing so, it is the respondent [patentee] that determines, to a great extent, "in which direction the appeal case will develop".