T 0725/18 - Should file fallback positions before OD

 Key points

• The Board applies Art.12(4) RPBA 2007.
• “In the present case the appellant (patent proprietor) justified the filing of these auxiliary requests at the appeal stage [with the statement of grounds] in view of the fact that, at the oral proceedings, the Opposition Division changed its preliminary view on lack of novelty over D2, and therefore the amendments had become necessary in order to better distinguish the subject-matter of claim 1 from D2. ”
• “The Board, however, sees no reasons in the course of the opposition proceedings that justify the filing of these requests in appeal proceedings. The arguments of the opponent as regards lack of novelty in view of D2 were already present in its notice of opposition and the appellant should have from the outset of the opposition proceedings reacted with its requests accordingly. As regards the change of view of the Opposition Division during the oral proceedings with respect to novelty in view of D2, it is the nature of a preliminary opinion that it is not binding of the final decision and the [patent proprietor] should have expected that the lines of argument of the opponent could persuade the Opposition Division and should have filed auxiliary requests as fall-back positions accordingly ”
• “Hence, the appellant should have filed in the course of the opposition proceedings - preferably with the reply to the notice of opposition, but at the latest before the oral proceedings within the given time limits [note i.e. the last day for written submissions under Rule 116] - the requests it deems necessary to overcome the objections that in its view are validly raised [note: by the opponent in the Notice of opposition] in order to maintain its patent in a form that it approves including the relevant fallback positions.”

T 0725/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180725eu1.html

Reasons for the Decision

1. Main request and first auxiliary request - Novelty

[...]

Lastly, that the structure and functionality of the anti slip device of D2 differs from the one shown in the specification of the patent is not relevant when assessing novelty of the subject-matter of claim 1. What matters is whether the anti slip device disclosed in D2 falls under that subject-matter claimed. This is indeed the case.

2. Second and third auxiliary requests - admissibility

2.1 The second and third auxiliary requests were submitted by the appellant (patent proprietor) for the first time with the statement of grounds of appeal.

2.2 Article 12(4) RPBA 2007 (Rules of Procedure of the Boards of Appeal OJ EPO 2007, 536) applies to the current appeal (see Article 25(2) RPBA 2020; Rules of Procedure of the Boards of Appeal OJ EPO 2019, A63). Under this provision the Board has the power to hold inadmissible requests which could have been presented in the first instance proceedings.

2.3 In the present case the appellant (patent proprietor) justified the filing of these auxiliary requests at the appeal stage in view of the fact that, at the oral proceedings, the Opposition Division changed its preliminary view on lack of novelty over D2, and therefore the amendments had become necessary in order to better distinguish the subject-matter of claim 1 from D2. Further, in view of the developments during the oral proceedings before the Opposition Division, it did not have the possibility to present these auxiliary requests during the opposition proceedings since the Opposition Division already stated during the oral proceedings that subject-matter of claim 1 lacked novelty not only in view of D2 but also in view of D7. Since the current second and third auxiliary requests were directed to overcome the novelty problem only in view of D2 but not in view of D7, it was allegedly not possible to present these requests before the Opposition Division during the oral proceedings.

2.4 The Board, however, sees no reasons in the course of the opposition proceedings that justify the filing of these requests in appeal proceedings. The arguments of the opponent as regards lack of novelty in view of D2 were already present in its notice of opposition and the appellant should have from the outset of the opposition proceedings reacted with its requests accordingly.

As regards the change of view of the Opposition Division during the oral proceedings with respect to novelty in view of D2, it is the nature of a preliminary opinion that it is not binding of the final decision and the appellant (patent proprietor) should have expected that the lines of argument of the opponent could persuade the Opposition Division and should have filed auxiliary requests as fall-back positions accordingly (cf. Case Law of the Boards of Appeal, 9th edition, III.B.2.3.7).

The Board states there is no principle right in inter-partes proceedings for a party to get a valid opinion of the deciding body with respect to the submitted arguments before having the possibility to adjust its requests accordingly.

2.5 The argument of the appellant that the present second and third auxiliary requests would not have been admitted during the oral proceedings after the negative conclusion of the Opposition Division on novelty for the first auxiliary request with respect to D2 and D7 is not relevant for the present decision. The corresponding objections were on file since the filing of the notice of the opposition and the outstanding objections did not change.

The appellant should have been aware that the oral proceedings could lead to situations in which it would not only be unable to maintain its maximum position, but would also be unable to formulate potential fallback positions. If such a fallback position has not been defined by a suitable request beforehand it may occur that it is not possible to do so during the oral proceedings. This results in the subject-matter of the potential fallback position not being part of the Opposition Division's decision.

In the present case, this means that the fact that the appellant did not submit suitable requests before the oral proceedings in due time led to the situation that it was obliged to file requests during the oral proceedings which had to cope with all objections as announced by the Opposition Division at that time (lack of novelty over D2 and D7) and thereby to refrain from filing the current second and third auxiliary requests that just deal with the novelty issue over D2.

Hence, the appellant should have filed in the course of the opposition proceedings - preferably with the reply to the notice of opposition, but at the latest before the oral proceedings within the given time limits - the requests it deems necessary to overcome the objections that in its view are validly raised in order to maintain its patent in a form that it approves including the relevant fallback positions.

2.6 Under these circumstances the Board exercising its discretionary power under Article 12(4) RPBA 2020 did not admit auxiliary requests 2 and 3 into the proceedings.

Order

For these reasons it is decided that:

1. The appeal is dismissed.