T 3020/19 - Opponent should attack all granted dependent claims

Key points

•  An auxiliary request filed during the oral proceedings before the Board is admitted.
• The Board takes the view that there is no case amendment under Art. 13(2) RPBA if there is no "geänderte Sachlage bzw. keine Neugewichtung des Verfahrensgegenstands".
• The higher-ranking request had five independent claims 1-5. In the AR at issue, only independent claim 3 is maintained. That claim 3 (new claim 1) in turn was based on dependent claim 7 as granted.
• The original granted dependent claim 7 was not attacked in the Notice of opposition (in substance), nor (in substance) with the opponent's appeal reply brief, even though at that time it was already independent claim 3 of an auxiliary request.
• " Somit kann die Kammer in der Stellung des Hilfsantrags IV in der mündlichen Verhandlung mit Rückgriff auf einen im bisherigen Verfahren nie angegriffenen Gegenstand kein geändertes Beschwerdevorbringen erkennen, das im Sinne von Artikel 13 (2) VOBK 2020 nur ausnahmsweise bei Vorliegen außergewöhnlicher Umstände in das Beschwerdeverfahren zugelassen werden kann." 
• The new substantive attacks against the new claim 1 / former claim 3 are not admitted.
• " Eine erstmalige materialrechtliche Diskussion in der mündlichen Verhandlung im Beschwerdeverfahren in Bezug auf den Gegenstand des Anspruchs 1 des Hilfsantrags IV wurde von der Kammer nicht in das Verfahren zugelassen " 
• The new attack is based on document E5 which was already in the file. Still, the attack is not admitted.
• The Board notes that the opponent had directed the opposition against claims 1-13, claims 2-13 being dependent claims. However, substantive attacks were presented only against independent claim 1 and dependent claims 2-6 and 10-13.
• " Insbesondere fehlte es also bereits im Einspruchsschriftsatz an einer substantiierten Argumentation zu einer mangelnden Patentfähigkeit des erteilten Anspruchs 7 (und des von Anspruch 7 abhängigen Anspruchs 8). Auch in ihrer Erwiderung auf das Einreichen von Hilfsanträgen I und II mit ebenfalls jeweils nur 13 Ansprüchen im Einspruchsverfahren (die noch den erteilten abhängigen Anspruch 7 enthielten) ging die Einsprechende nicht auf die Merkmale des erteilten Anspruchs 7 ein." 
• "  eine unzumutbare "Explosion des Prüfstoffs" wie von der Beschwerdegegnerin [opponent] behauptet kann die Kammer nicht erkennen, da die zusätzlichen unabhängigen Ansprüche lediglich Merkmale der erteilten Ansprüche aufgreifen." 

EPO T 3020/19

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/t193020du1.html

Machine translation

4. Admission of auxiliary request IV filed in the oral proceedings before the board into the proceedings

4.1 The auxiliary request IV submitted in the oral hearing was admitted to the appeal proceedings (Article 13 (2) RPBA 2020).

4.2 Pursuant to Article 13 (2) RPBA 2020, changes to a party's appeal submissions after the summons to oral proceedings has been served are generally not taken into account, unless the party concerned has shown good reasons for the existence of exceptional circumstances.

4.3 The appellant cited decision T 995/18, in which the deletion of a (dependent) claim was not seen as altering the appeal's submissions, since this did not result in a changed situation (see also T 1480/16, point 2.3). In the present case, it must first be examined whether there is a change pursuant to Article 13 (2) RPBA 2020, and if so, whether the complainant has shown valid reasons for the existence of extraordinary circumstances.

4.4 An amendment to a patent usually constitutes an amendment to the submissions of the appeal (see J 14/19, reasons 1.5). In the case law of the Boards of Appeal to date on Article 13 (2) RPBA 2020, the deletion of process or product claims is also seen as an amendment to the patent in principle, unless this results in no changed situation or no re-evaluation of the subject-matter of the process (see e.g e.g. T 1569/17, reasons 4.3.1 and 4.3.2).

4.5 In the present case, after the auxiliary requests III to V originally filed with the statement of grounds of appeal contained independent claim 1 of auxiliary request I or II and were therefore not allowable on the same grounds, the appellant filed new auxiliary requests III and IV in the oral proceedings before the board and finally only maintain auxiliary request IV.

Compared to the present auxiliary request I, which in addition to claim 1 discussed above also has independent claims 2 to 5, independent claims 1, 2, 4 and 5 have essentially been deleted in the new auxiliary request IV, so that in auxiliary request IV only a single independent claim corresponding to claim 3 of auxiliary request I discussed above.

4.6 As further argued by the appellant, this claim 1, which is based on a combination of the granted claims 1 and 7, was not attacked according to auxiliary request IV in the notice of opposition (see page 26 there) and - at least in substance - also not in the response of the respondent, although it was always part of the proceedings in the form of independent claim 3 of auxiliary request I. The Respondent did not dispute this either.

4.7 Thus, the Board cannot see any changed appeal submissions in the position of the auxiliary request IV in the oral proceedings with recourse to a subject matter that has never been challenged in the previous proceedings, which within the meaning of Article 13 (2) RPBA 2020 only exceptionally in the presence of extraordinary circumstances in the appeal proceedings can be allowed.

During the oral proceedings, the respondent did not raise any formal objections to the admissibility of claim 1 according to auxiliary request IV.

In addition, against this background, the previous submissions of the parties represent the basis for a decision on auxiliary request IV in favor of the appellant and is suitable for clearing up the questions raised so far (prima facie allowability).

5. New objection to auxiliary request IV

5.1 A first-time substantive discussion in the oral hearing in the appeal proceedings in relation to the subject-matter of claim 1 of auxiliary request IV was not admitted into the proceedings by the board (Article 13 (2) RPBA 2020).

5.2 The admission of this amended submission, which should only be made at the oral hearing after the service of the summons to the oral hearing, is subject to the provisions of Article 13 (2) RPBA 2020 already cited above.

5.3 As acknowledged by the respondent, this objection has never been raised - not even in the proceedings before the opposition division - although the document E5 relevant according to the respondent has already been filed in the opposition proceedings. Document US 2011/227 308 A1, which belongs to the same patent family, was already available in the examination proceedings (see cover sheet of the B document of the patent in suit).

The Board cannot identify any exceptional circumstances which could have prevented earlier raising of this new objection. The Respondent has also not submitted any valid reasons that would indicate exceptional circumstances and thus justify the consideration of new objections based on E5.

5.4 The Respondent's argument that due to the abundance of claims and the explosion of test material in the opposition proceedings it was not previously reasonable for the opponent to comment on each individual claim is unconvincing.

In the notice of opposition, the opponent requested the revocation of the European patent in the scope of all claims 1 to 13. In addition to its arguments on the lack of novelty and lack of inventive step of independent claim 1, however, it only explained why subclaims 2-6 and 10-13 from are already known in the state of the art or are not inventive (see page 23 there). In particular, there was already a lack of substantiated argumentation in the notice of opposition regarding the lack of patentability of granted claim 7 (and claim 8, which is dependent on claim 7).

Even after the appellant patent proprietor filed auxiliary requests with its statement of grounds of appeal, which contained several independent claims - each including an independent claim restricted with the features of claim 7 as granted - as a fallback position for a claim 1 considered unallowable - the respondent did not submit its submissions added. The board also cannot see an unreasonable "explosion of the examination material" as claimed by the respondent, since the additional independent claims only pick up features of the granted claims.

5.5 The Respondent also cannot invoke the principle of ex officio investigation according to Article 114(1) EPC, since according to settled case law the appeal procedure, unlike the purely administrative opposition procedure, as an administrative court procedure is less geared towards investigations and more towards a review of the decision rendered at first instance (see G 9/91, Reasons No. 18). The principle of ex officio investigation enshrined in Article 114(1) EPC is to be applied more restrictively in appeal proceedings than in opposition proceedings. There are limits to this duty of investigation, initially under Article 114(2) EPC in the event that facts and evidence are submitted late.

As stated in T 2843/19 on the reasonableness of "cascades of lines of argument" (orientation clause, point 3), the parties are obliged to conduct the proceedings carefully and expediently, for reasons of fairness towards the other party, but also to keep the proceedings within a reasonable to bring the process to a conclusion. A breach of this obligation (which is already expressed in Article 114(2) EPC) at a very late stage of the proceedings is sanctioned by Article 13(2) RPBA 2020.

6. Since there is thus no pending objection by the respondent to auxiliary request IV, this request provides the basis for maintaining the patent in suit in an amended form.