T 0629/19 - Allegedly forced by the OD

Key points

•  "According to the minutes of the oral proceedings before the Opposition Division [] the opponent withdrew a previously raised objection of lack of inventive step in view of the combination of D3a and D26. [...] "
• "The opponent's argument that it was forced by the Opposition Division to withdraw the objection is an unsubstantiated assertion. The opponent could and should have maintained the objection if it had wished to obtain an appealable decision on the matter. For these reasons, in accordance with Article 12(4) RPBA 2007, the Board does not admit the objection on the basis of D3a in combination with D26 into the appeal proceedings."

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/t190629eu1.html

5.4 The opponent argued that the subject-matter of claims 1 and 8 of the main request was also obvious in view of the combination of D3a and D26.

According to the minutes of the oral proceedings before the Opposition Division (page 7), as noted by the proprietor, the opponent withdrew a previously raised objection of lack of inventive step in view of the combination of D3a and D26.

According to Article 12(4) RPBA 2007, which applies by virtue of Article 25(2) RPBA 2020, the Board has the discretion to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings.

Admitting the objection based on D3a and D26, which is a statement of fact based on evidence, after its express withdrawal before the Opposition Division would require the Board to conduct an examination of the objection without any decision of the Opposition Division on its merit. This would be against procedural economy and against the primary object of the appeal proceedings which is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020).

The opponent's argument that it was forced by the Opposition Division to withdraw the objection is an unsubstantiated assertion. The opponent could and should have maintained the objection if it had wished to obtain an appealable decision on the matter.

For these reasons, in accordance with Article 12(4) RPBA 2007, the Board does not admit the objection on the basis of D3a in combination with D26 into the appeal proceedings.

5.5 In conclusion, the opponent's objections of lack of inventive step (Article 56 EPC) do not prejudice the maintenance of the patent on the basis of the main request.