T 0998/17 - It raised to prominence, for the first time

Key points

• This is an opposition appeal.  The Board has to decide on the admissibility of a document filed by the opponent with its Statement of grounds.
• “just 1 month before the opposition oral proceedings [i.e. before the opposition division], the proprietor withdrew all its previous auxiliary requests and filed 12 new auxiliary requests. During the oral proceedings, auxiliary request 12 was made the first auxiliary request and is the current main request. 3.3 This request combines granted claims 7 and 10. In so doing, it raised to prominence, for the first time, the feature [X] as an indispensable feature of the invention.”
• The Board: “there are no provisions in the EPC which oblige the opponent to provide evidence against every possible fallback position defined in dependent claims.” [citing T1830/11 hn.]
• “in the Board's view, just as an opponent cannot be expected to know which claim of a set of granted dependent claims might be used to uphold a patent, so too could the opponent in the present case not have known which of the 12 auxiliary requests on file at the start of the opposition oral proceedings might eventually be used to uphold the patent. This only became clear at the oral proceedings. Under these circumstances, the Board considers that filing E11 at the earliest opportunity in appeal was a timely reaction to the impugned decision. In other words, the Board considers E11 to have been filed in due time in the sense of Article 114(2) EPC.
• As a comment, the Board considers document E11 to have been filed "in due time in the sense of Article 114(2) EPC". Still it would have been a case amendment under Art. 12(4) RPBA 2020 (based on the text of Art.12(4)(s.1) RPBA 2020 and therefore a submission that “may be admitted only at the discretion of the Board” (Art. 12(4)(s.2) RPBA 2020). The question may be raised whether Art. 12(4) RPBA 2020 here confers powers on the Boards that the EPC does not give them. 

T 0998/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t170998eu1.html

3. Admission of document E11

3.1 E11 was filed with the grounds of appeal. It is thus late filed and its admittance is subject to the discretion afforded by Article 12(4) RPBA (2007) with Article 114(2) EPC. E11 is said to have been filed as a response to the amended claims of the main request.

3.2 The Board notes (see impugned decision, facts and submissions, points 6 and 9) that just 1 month before the opposition oral proceedings, the proprietor withdrew all its previous auxiliary requests and filed 12 new auxiliary requests. During the oral proceedings, auxiliary request 12 was made the first auxiliary request and is the current main request.

3.3 This request combines granted claims 7 and 10. In so doing, it raised to prominence, for the first time, the feature of the front metal layer and adhesive layers covering only a part of the scratch-off layer as an indispensable feature of the invention.

According to established jurisprudence (see Case Law of the Boards of Appeal, 9th edition, 2019 (CLBA) V.A.4.11.3.c, in particular T1830/11, headnote and reasons, part 1) there are no provisions in the EPC which oblige the opponent to provide evidence against every possible fallback position defined in dependent claims.

In the present case, it is true that the proprietor filed auxiliary requests 1 to 12 in opposition just within the 1 month time limit defined by Article 116 EPC. The circumstances of the present case are therefore different from T1830/11 where a new request combining dependent claims was filed at oral proceedings.

Nevertheless, in the Board's view, just as an opponent cannot be expected to know which claim of a set of granted dependent claims might be used to uphold a patent, so too could the opponent in the present case not have known which of the 12 auxiliary requests on file at the start of the opposition oral proceedings might eventually be used to uphold the patent. This only became clear at the oral proceedings. Under these circumstances, the Board considers that filing E11 at the earliest opportunity in appeal was a timely reaction to the impugned decision. In other words, the Board considers E11 to have been filed in due time in the sense of Article 114(2) EPC.

3.4 Moreover, the Board considers E11 (see for example abstract, column 4, lines 22 to 26 and figure 5a) to be prima facie relevant to claim 1, since it discloses scratch-off labels where a front security element 6 is adhesively attached to the scratch off layer 5 and extends only partly over the scratch off layer.

3.5 For these reasons, the Board decided to exercise its discretion under Article 12(4) RPBA with Article 114(2) EPC by admitting document E11 into the proceedings.

4. Main request, claim 6, inventive step starting from E1 with E