T 2776/19 - OD was right to hold request inadmissible

Key points

• In this opposition appeal, the Board does not admit a request held inadmissible by the OD. The OD held the request inadmissible because it was filed during the oral proceedings and was considered to be late-filed.
• The Board: " The board is not able to see an undue exercise of discretion in the way the opposition division handled the case. Therefore, following the principle laid down in decision G7/93, point 2.6, and applied, for instance, in T28/10, point 2.1, a principle according to which the exercise of discretion by the first instance should only be overturned by the board in case wrong criteria were applied or the discretion was exercised unreasonably, the board upholds the opposition division's decision and does not admit the seventh auxiliary request into the proceedings " 
• The patentee argued that the OD's decision was incorrect because "the Opposition Division has not examined whether these amendments are prima facie suited to overcome the objections" and |" Moreover, "in case the opinion [of the opposition division] changes, the proprietor shall be given the opportunity to react"." 
• The Board: "Whether the patentee's view is convincing that "clear allowability" is a sufficient criterion for admitting a late-filed claims request into first-instance proceedings can remain an open question. In this case "clear allowability" had been disputed by the opponents raising various objections, including objections of lack of novelty and of inventive step." 
• In my view, it's unfortunate that there is no clearly established case law on this point.
• Perhaps more importantly, the Board: " the fact that the opposition division changes its view on certain technical aspects between its preliminary opinion provided in the communication annexed to the summons to oral proceedings and its opinion formed during the debate taking place during the oral proceedings, so that the opposition division's view becomes less favourable to the patentee, does not mean that the patentee automatically has the right to file a new claims request during oral proceedings. Indeed, since the objections raised by the opponents and the documentary evidence on which these objections were based, remained essentially unchanged since the beginning of the opposition proceedings, the change of view of the opposition division did not correspond to an unforeseeable or unknown situation for the patentee." 
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EPO 

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/t192776eu1.html

8. Seventh auxiliary request

The seventh auxiliary request is not admitted into the proceedings (Article 12(4) RPBA 2007).

8.1 The seventh auxiliary request is the same as the fourth auxiliary request underlying the appealed decision which had been submitted by the patentee on the day of the oral proceedings before the opposition division. The request was not admitted into the opposition proceedings by the opposition division for being late filed.

The board is not able to see an undue exercise of discretion in the way the opposition division handled the case. Therefore, following the principle laid down in decision G7/93, point 2.6, and applied, for instance, in T28/10, point 2.1, a principle according to which the exercise of discretion by the first instance should only be overturned by the board in case wrong criteria were applied or the discretion was exercised unreasonably, the board upholds the opposition division's decision and does not admit the seventh auxiliary request into the proceedings under Article 12(4) RPBA 2007.

8.2 According to the patentee's statement of grounds of appeal, "the Opposition Division has disregarded the legal standard of assessing late-filing" (P1-S1, pages 14 and 15). In particular, "the Opposition Division has not examined whether these amendments are prima facie suited to overcome the objections".

Moreover, "in case the opinion [of the opposition division] changes, the proprietor shall be given the opportunity to react". It concluded that "[the] correct exercising [sic] of discretion has to take into account the concept of 'clear allowability'".

8.3 Whether the patentee's view is convincing that "clear allowability" is a sufficient criterion for admitting a late-filed claims request into first-instance proceedings can remain an open question. In this case "clear allowability" had been disputed by the opponents raising various objections, including objections of lack of novelty and of inventive step.

In addition, the fact that the opposition division changes its view on certain technical aspects between its preliminary opinion provided in the communication annexed to the summons to oral proceedings and its opinion formed during the debate taking place during the oral proceedings, so that the opposition division's view becomes less favourable to the patentee, does not mean that the patentee automatically has the right to file a new claims request during oral proceedings. Indeed, since the objections raised by the opponents and the documentary evidence on which these objections were based, remained essentially unchanged since the beginning of the opposition proceedings, the change of view of the opposition division did not correspond to an unforeseeable or unknown situation for the patentee.

9. For the above reasons the board comes to the conclusion that none of the patentee's requests is allowable.