T 2255/15 - Admissibility of third party observations

 Key points

• In this opposition appeal, third party observations were filed, first anonymously, later signed by a ‘real industry company’. The Board has to decide on the admissibility of these observations.
• The Board: “ The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties.”
• The Board:“ Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.”
• As a comment, I agree that TPO's should not be treated more favourably than party submissions. This does not mean automatically that TPO's should be treated equally to party submissions in opposition and opposition appeal proceedings in my view. 
  
  
• The opponent requested a remittal. The  Board does not remit the case. “The attack starting from D4 as the closest prior art was filed for the first time during the oral proceedings before the board and thus is an entirely new attack. If by filing such a new attack, a party could force the board to remit the case, it would be at the party's disposition to shift the case back to the first instance at whatever stage of the appeal proceedings and to thereby start, at any point in the appeal proceedings, a new opposition before the opposition division. This would not only run counter to the principle of procedural economy but to the very nature of appeal proceedings, which is to review the appealed decision (Article 12(2) RPBA 2020) rather than to allow for the start of a second opposition proceedings.”
• The Board does not admit the new attack. “Document D4 was discussed in the appeal proceedings in the context of novelty of the granted claims. It was also discussed in the assessment of inventive step of the claims of auxiliary request 7 but for establishing the obviousness of the solution to the problem formulated in view of D1 or D2 rather than D4 as the closest prior art.”

T 2255/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t152255eu1.html

1.5 The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties. Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.

As set out above, the following objections were raised in the third-party observations:

- lack of novelty of the subject-matter of claims 1 and 4 as granted in view of A006 and D3a

- lack of novelty of the subject-matter of claim 1 of claim set D over A012

- lack of inventive step of the subject-matter of claims 2 and 6 as granted and the claims of all claim sets submitted by the patent proprietor over A006 in combination with A007

- lack of inventive step of the subject-matter of claims 1 and 4 as granted and claim 1 of claim sets A' to F' over A014 as the closest prior art in combination with A015

- lack of inventive step of the subject-matter of claim 1 as granted and claim 1 of claim sets A' to C' over D3a

None of these objections had been raised before in the opposition or appeal proceedings. Document A006 is a document discussed in the context of novelty of the granted claims. It is also discussed, in combination with annexes 1-2, in the context of inventive step of the claims of auxiliary request 7 (claim set D). Annexes 1 and 2 were filed to show activity of compositions according to the invention and compositions not according to the invention. The submission of A006 and annexes 1-2 does not constitute a direct and timely response to facts, objections, arguments or evidence on which the decision under appeal is based. The third-party observations of 15 February 2016 do not provide any argument why the impugned decision would not be correct and which would justify the submission of A006 and annexes 1-2. The same reasoning applies with regard to the attack of lack of inventive step over A006 in combination with A007; A014 and the attack of lack of inventive step based on this document as the closest prior art; the attack of lack of novelty based on D3a; and the attack of lack of novelty based on document A012.

Thus, the objections contained in the third-party observations filed on 15 February 2016, 14 November 2018 and 31 May 2019 (i.e. based on documents D3a, A006, A007, A012, A014 and A015) could and should have been made in opposition proceedings.

Furthermore, the purpose of appeal proceedings is to review the opposition division's decision rather than to start a second opposition proceedings (Article 12(2) RPBA 2020). However, admitting the new objections into the proceedings would have meant exactly that, namely it would have offered the third party and thus also the opponent a second go at opposition proceedings.

Therefore, the objections based on documents D3a, A006, A007, A012, A014 and A015 raised in the third-party observations filed on 15 February 2016, 14 November 2018 and 31 May 2019, as well as the submissions made by the opponent on the basis of these objections, were not admitted into the proceedings according to Articles 12(4) RPBA 2007 and 12(2) RPBA 2020.

[...]

11.6 The board thus concludes that the subject-matter of the claims of auxiliary request 3 is novel in view of any of D1, D2 and D4.

12. Remittal

12.1 The opponent requested that the case be remitted to the opposition division if novelty was acknowledged.

12.2 In accordance with Article 11 RPBA 2020, the board must not remit a case unless special reasons present themselves for doing so. As a rule, fundamental deficiencies apparent in the proceedings before the first-instance department constitute such special reasons.

In the case at hand, the board is not aware of any fundamental procedural deficiencies before the opposition division justifying remittal.

12.3 The opponent submitted that the opposition division did not assess the inventive step of the subject-matter of claim 1 of auxiliary request 3 in view of D4 as the closest prior art. Thus, the case should be remitted.

The attack starting from D4 as the closest prior art was filed for the first time during the oral proceedings before the board and thus is an entirely new attack. If by filing such a new attack, a party could force the board to remit the case, it would be at the party's disposition to shift the case back to the first instance at whatever stage of the appeal proceedings and to thereby start, at any point in the appeal proceedings, a new opposition before the opposition division. This would not only run counter to the principle of procedural economy but to the very nature of appeal proceedings, which is to review the appealed decision (Article 12(2) RPBA 2020) rather than to allow for the start of a second opposition proceedings.

Consequently, the board decided that the case was not to be remitted to the opposition division for further prosecution.

13. Inventive step

13.1 Admittance of the objection of lack of inventive step based on D4 as the closest prior art

13.1.1 As set out above, the opponent raised during the oral proceedings an objection of lack of inventive step of the subject-matter of claim 1 of auxiliary request 3 based on D4 as the closest prior art.

13.1.2 The patent proprietor objected to the admittance of this objection.

13.1.3 This objection had not been raised at a previous stage of the appeal proceedings and thus represented an amendment to the opponent's case, the admittance of which was at the board's discretion in view of Article 13(2) RPBA 2020, which applies to the case at hand in accordance with the transitional provisions set out in Article 25(3) RPBA 2020 (the summons to oral proceedings was notified after 1 January 2020).

In accordance with Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a summons to oral proceedings must, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

Document D4 was discussed in the appeal proceedings in the context of novelty of the granted claims. It was also discussed in the assessment of inventive step of the claims of auxiliary request 7 but for establishing the obviousness of the solution to the problem formulated in view of D1 or D2 rather than D4 as the closest prior art.

The board has seen no exceptional circumstances during the whole appeal proceedings which could justify the late-filing of the objection during the oral proceedings.

In addition, the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020) and not to start new opposition proceedings. Admitting the objection would offer to the opponent the opportunity to amend its case and introduce this new attack based on D4 as the closest prior art.

For these reasons, the objection of lack of inventive step based on D4 as the closest prior art was not admitted into the proceedings in accordance with Articles 12(2)and 13(2) RPBA 2020.

13.2 Inventive step in view of D1 or D2 as the closest prior art

During the oral proceedings, the opponent referred to a first attack based on D1 alone, or in combination with D4 and a second attack based on D2 as the closest prior in combination with D4.