T 2613/18 - Taking up the hint provided by the Board

Key points

• The Board, on admitting an auxiliary request under Art. 13(2) RPBA: " Notwithstanding the fact that a "new" objection raised by a board in appeal proceedings cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (cf. T 2632/18, Reasons 4.3; T 2271/18, Catchword), it is apparent that such a request could and should have been filed already before the oral proceedings in appeal proceedings, at least in response to the board's preliminary opinion. " 
• Board 3.5.03 states their view (the part in italics) for the third time in the present decision, but of course it is beyond doubt (isn't it?) that if the Board raises a new objection, Article 113(1) EPC prescribes that the applicant/patentee must be given a fair opportunity to address the issue by submitting amended claims, this opportunity includes the right to have the amendments fully considered by the Board. 
• " The objection of lack of support by the description, specifically mentioning the lack of definition of an "active time" for the contention case, had already been raised by the board in point 4.5 of its communication under Article 15(1) RPBA 2020. So, instead of seriously taking up the hint provided in that communication, i.e. that "the active time for the contention case is not defined by claim 1 in a manner consistent with the description and drawings" (cf. point 3.2.3 above) and of remedying the mentioned defect according to the teaching of the original description (cf. point 3.2.4 above, in particular the emphasised part of that teaching), the appellant chose to wait only until the hearing before the board to then concede that claim 1 might indeed not be fully consistent with the description. Such a conduct cannot justify admittance of a late-filed claim request." 
• As a comment, the EPO merely providing a hint of an ex officio raised ground for refusal (or revocation) respectfully does not comply with Article 113(1) EPC in my view.
• "the additional comments and explanations given by the board during the oral proceedings in relation to its objections raised in its preliminary opinion do not constitute "new" objections just because they are not a repetition of a written statement or because they helped the representative understand the written objection."
• Again, as a comment, if the applicant could reasonably (or objectively) have understood the objection raised by the Board only after the "additional comments and explanations" by the Board, Article 113(1) EPC prescribes that the applicant is given a (fair) opportunity to address the objection by submitting amended claims. 

EPO - T 2613/18

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t182613eu1.html

appeal proceedings. Thus, Article 13(2) RPBA 2020 applies.

4.2.2 In support of admittance of this auxiliary request, the appellant submitted that it constituted an appropriate reaction to the new objections raised by the board during the oral proceedings and that such request could not have been filed earlier.

4.2.3 This is not persuasive. The objection of lack of support by the description, specifically mentioning the lack of definition of an "active time" for the contention case, had already been raised by the board in point 4.5 of its communication under Article 15(1) RPBA 2020. So, instead of seriously taking up the hint provided in that communication, i.e. that "the active time for the contention case is not defined by claim 1 in a manner consistent with the description and drawings" (cf. point 3.2.3 above) and of remedying the mentioned defect according to the teaching of the original description (cf. point 3.2.4 above, in particular the emphasised part of that teaching), the appellant chose to wait only until the hearing before the board to then concede that claim 1 might indeed not be fully consistent with the description. Such a conduct cannot justify admittance of a late-filed claim request.

4.2.4 Notwithstanding the fact that a "new" objection raised by a board in appeal proceedings cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (cf. T 2632/18, Reasons 4.3; T 2271/18, Catchword), it is apparent that such a request could and should have been filed already before the oral proceedings in appeal proceedings, at least in response to the board's preliminary opinion. The negative opinion on allowability under Article 84 EPC of the main request and on admittance under Article 13(2) RPBA 2020 of the first to fourth auxiliary requests announced by the board during the oral proceedings does not constitute per se an "exceptional circumstance". Hence, it could not justify a further amendment to the appellant's case at such a late stage of the appeal proceedings. Moreover, the additional comments and explanations given by the board during the oral proceedings in relation to its objections raised in its preliminary opinion do not constitute "new" objections just because they are not a repetition of a written statement or because they helped the representative understand the written objection.

4.2.5 It follows that there are neither "exceptional circumstances" nor "cogent reason" which could justify the admittance of this claim request.

4.3 Consequently, the fifth auxiliary request was not admitted into the appeal proceedings (Article 13(2) RPBA 2020) either.

5. Since there is no allowable claim request, the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.