T 0081/20 - First level of convergence

 Key points

• “[In] its statement of grounds of appeal the appellant [opponent] for the first time brought forward objections of a lack of original disclosure with respect to [certain claim features]. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.”
• “Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.”
• The objection is also covered by “Article 12(6), second sentence, RPBA 2020”. In particular, “the board is of the opinion that the appellant could and should have submitted the newly raised objections already in the first-instance proceedings. The appellant did not set out any circumstances (and the board fails to see any) which would justify the admittance of the new objections.”
• “In view of the above, the need for procedural economy and the fact that these objections appear prima facie not to prejudice maintenance of the patent, the board, exercising its discretion under Article 12(2),(4) and (6) RPBA 2020, does not admit the objections raised by the appellant for the first time in the grounds of appeal into the proceedings.”

T 0081/20 -

https://www.epo.org/law-practice/case-law-appeals/recent/t200081eu1.html

1.2 Further features

In the present appeal case the statement of grounds of appeal was filed on 25 February 2020, i.e. after the date of entry into force (1 January 2020) of the new Rules of Procedure of the Boards of Appeal (RPBA 2020).

According to Article 12(2) RPBA 2020, a party's appeal case should be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. However, in its statement of grounds of appeal the appellant for the first time brought forward objections of a lack of original disclosure with respect to features relating to the reflective element and the primary and secondary paths. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.

Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.

[read more after the jump]

What is more, under Article 12(6), second sentence, RPBA 2020 the board "shall not admit ... objections ... which should have been submitted ... in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance". The board is of the opinion that the appellant could and should have submitted the newly raised objections already in the first-instance proceedings. The appellant did not set out any circumstances (and the board fails to see any) which would justify the admittance of the new objections.

In view of the above, the need for procedural economy and the fact that these objections appear prima facie not to prejudice maintenance of the patent, the board, exercising its discretion under Article 12(2),(4) and (6) RPBA 2020, does not admit the objections raised by the appellant for the first time in the grounds of appeal into the proceedings.