- In this opposition appeal, the OD had admitted AR-1 because it was filed within the time limit set under Rule 116(1) EPC. Therefore, the requests were not considered to be late filed.
- The opponent points out that essentially that the relevant time limit is that of Rule 79 EPC.
- The Board confirms that AR-1 is admissible, but now on the ground that AR-1 filed with the written submissions under Rule 116 is identical "as regards its content" to a request filed with the Rule 79 EPC response.
- “Consequently this auxiliary request was filed in due time in accordance with Rule 79(1) EPC, even if refiled at a later date and complemented with an adapted description. As the request was filed in time the question whether it is "clearly allowable" is not relevant. The Board is therefore unable to see any error in law in the opposition division's consideration of this request (though it may have overlooked the date of first filing the request)”
- As a comment, I note that the Board here confirms that ‘filed in time’ means the Rule 79(1) date, i.e. the period of typically four months for Patentee to file the response, not the Rule 116 date for written submissions.
- Perhaps the OD had indeed “overlooked the date of first filing the request” as the Board suggests. In practice, many OD’s appear to treat Rule 116 EPC - incorrectly in my view - as giving Patentee's a right to auxiliary requests one/two months before the oral proceedings, such that any request filed by the Rule 116 deadline is admissible.
- I note that although 5 requests had been filed with the Rule 116 date, only 1 request had been submitted with the Rule 79 response. Nevertheless, the OD decided to admit all five requests as not being late filed. However, the Board considers AR-1 to be allowable so that it does not have to deal with whether or not AR-2 to AR-5 were correctly admitted by the OD.
EPO T 0908/19 - link
Decision OD
Reasons for the Decision
1. The appeal is admissible.2. Background
The invention concerns a method of transporting compost inoculated with mycelium of mushrooms for human consumption. In order to transport the compost at a temperature of less than 20°C, a mass of compost is subjected to subatmospheric pressure and water vapour is removed from the mass of compost resulting in a cooled mass of compost. The mass of compost is subjected to said subatmospheric pressure and for a time that results in a temperature of the mass of compost of less than 15°C before said cooled mass of compost is transported. By evaporating water in the compost and substantially eliminating that evaporated water from the compost, the temperature of the compost can be lowered effectively and quickly (paragraph 6 of the published patent specification).
3. Admissibility of auxiliary request 1
The appellant contests admission of the auxiliary requests by the opposition division as it should have exercised discretion by applying the criterion of "clear allowability".
The Board disagrees. The present auxiliary request 1 is identical with auxiliary request 1 underlying the impugned decision. It is undisputed that an auxiliary request was filed on 30 October 2017 within the Rule 79(1) EPC time limit with the proprietor's timely reply to the opposition, and that an identical request, as regards its content, was filed as auxiliary request 1 with their submission of 23 August 2018. Thus the then opponents were aware of the subject of this request in due time at the earlier date of filing of this request. They can therefore not reasonably argue that they did not have sufficient opportunity to respond thereto e.g. by providing new facts and evidence. The situation described in the Guidelines E-V,2.1 and H-II, 2.7.1 therefore does not apply. This is not changed by the fact that the request was formally refiled at a later date (together with an adapted description). Consequently this auxiliary request was filed in due time in accordance with Rule 79(1) EPC, even if refiled at a later date and complemented with an adapted description. As the request was filed in time the question whether it is "clearly allowable" is not relevant. The Board is therefore unable to see any error in law in the opposition division's consideration of this request (though it may have overlooked the date of first filing the request), let alone a serious error that might, for example, have justified an immediate cancellation of the decision under appeal.
Auxiliary request 1 was therefore validly admitted into the opposition proceedings by the opposition division.
Reader X wrote:
ReplyDeleteFor the opponent the time limit to file any submission is the end of the opposition period, whereas for the proprietor, the time limit is that in R 116(1).
This does not mean that any request filed within the time limit under R 116(1) is automatically admissible. In order to be admissible the proprietor has to explain for each request how it overcomes the grounds of opposition.
Waiting until the day of the oral proceedings to give a justification, amounts to a late filing of the requests. It cannot be expected from the opponent and from the division to guess why the request has been filed, and why and how it overcomes any ground of opposition. See for instance T 1732/10, conformed in T 122/13 Older decisions of the same kind are T 642/04, T 340/06 or T 1678/11.
I would say, the same rule applies mutatis mutandis to any request filed under R 79(1).
If no argumentation as to why the patent should be revoked leads to the opposition not being admissible, why should the proprietor be dispensed from the obligation to justify the request he files? No justification = no admissibility.
reader X makes a good point, I think. If the Boards truly want proceedings to be compact, economical, efficient and fair, then they should admit material, whether from patentee or opponent, only when that material is accompanied by an explanation of its relevance to the proceedings and how it is that the outcome could depend decisively on the additional material (whether it be evidence, argument or another AR).
ReplyDeleteWho could reasonably argue otherwise?
I agree with reader X that also in the first instance opposition proceedings, auxiliary requests must be filed with a substantiation as to which objections are addressed by the amendments, and how (in addition to indicating the basis under Art. 123(2)).
ReplyDeleteI disagree with reader X that "for the proprietor, the time limit [to file any submission] is that in R 116(1)." As T0908/19 shows, the time limit is that of Rule 79. See also T0406/86. But I would be glad to learn about any case law confirming the view of Reader X.