T 1855/16 - Resubmitted request admitted

Key points

• The Board in this opposition appeal decides on admissibility of AR 6 and 7. “Auxiliary requests 6 and 7 correspond to the first and the second auxiliary request, respectively, filed with letter dated 4 May 2016 in preparation of the oral proceedings before the opposition division. At the beginning of those oral proceedings, they were withdrawn and substituted by five new auxiliary requests.”
• Nevertheless, the requests are admitted. 
• The Board: “a criterion often cited in this context is whether the withdrawal of the request has prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on those issues or to remit the case to the department of first instance”
• “It is the board's view that auxiliary requests 6 and 7 do not amount to an entirely fresh case. The critical issue in the first auxiliary request filed with letter dated 4 May 2016 was [the interpretation of feature M]. Claim 1 of the second auxiliary request filed with letter dated 4 May 2016 merely differed from claim 1 of said first auxiliary request by the additional feature M6. Both issues were discussed at the oral proceedings and decided on by the opposition division, albeit in the context of different auxiliary requests []. The admission of auxiliary requests 6 and 7 would therefore not put the board in a position where it was forced to give a first ruling on the critical issues.”

T 1855/16 -

https://www.epo.org/law-practice/case-law-appeals/recent/t161855eu1.html

Resubmission of requests withdrawn during opposition proceedings (Auxiliary requests 6 and 7)

6.8 Auxiliary requests 6 and 7 correspond to the first and the second auxiliary request, respectively, filed with letter dated 4 May 2016 in preparation of the oral proceedings before the opposition division. At the beginning of those oral proceedings, they were withdrawn and substituted by five new auxiliary requests.

6.9 The case law is clear that auxiliary requests that were filed but subsequently withdrawn during first-instance proceedings also fall under the category of requests that could have been presented in first-instance proceedings. A criterion often cited in this context is whether the withdrawal of the request has prevented the department of first instance from giving a reasoned decision on the critical issues, thereby compelling the board either to give a first ruling on those issues or to remit the case to the department of first instance (cf. "Case Law", V.A.4.11.3.f)).

6.10 It is the board's view that auxiliary requests 6 and 7 do not amount to an entirely fresh case. The critical issue in the first auxiliary request filed with letter dated 4 May 2016 was whether the sealer was disposed only on the first layer or only on the second layer (feature M4"). Claim 1 of the second auxiliary request filed with letter dated 4 May 2016 merely differed from claim 1 of said first auxiliary request by the additional feature M6. Both issues were discussed at the oral proceedings and decided on by the opposition division, albeit in the context of different auxiliary requests (cf. points 4.2.5 and 4.2.1, respectively, of the reasons of the decision under appeal). The admission of auxiliary requests 6 and 7 would therefore not put the board in a position where it was forced to give a first ruling on the critical issues.

6.11 This was different in the case underlying T 1525/10, on which the respondent relies for its request not to re-admit withdrawn claim requests in the appeal proceedings. In that decision, the board ruled that the withdrawal of the claim requests in opposition proceedings had appeared to be made with the intention of avoiding an adverse decision on novelty and inventive step (Reasons 2.2 and 2.3).

In T 936/09, also cited by the respondent, the patent proprietor filed a set of amended claims for the first time with its statement setting out the grounds of appeal, after having remained inactive in opposition proceedings that led to their patent being revoked. The board cannot see how this decision bears relevance on the question of re-admitting withdrawn requests.

6.12 Hence, the board does not see any reason not to admit auxiliary requests 6 and 7 into the appeal proceedings (Article 12(4) RPBA 2007).