T 1436/18 - (II) Legitimate reaction to appealed decision

Key points

• The Board admits AR-6 filed with the appeal, under Art. 12(4) RPBA 2007.
• The Board essentially finds AR-6 to be a legitimate reaction to a point that became clear only in the written decision of the OD.
• In AR-6, the product claims were cancelled; only the method claim was maintained (corresponding to claim 6 as granted).
• "Claim 6 as granted was objected to and discussed between the parties since the beginning of the opposition proceedings. The decision under appeal deals with both the device claim and the method claim as granted. Even if claim 6 during oral proceedings mainly was discussed in amended form [...], the reasoning in the impugned decision for novelty and inventive step of the method claim is solely based on features of granted claim 6 "
• "the board follows the argumentation of the appellant 1 (patent proprietor) that the course of the proceedings gave the impression that claim 6 as granted was not considered new by the opposition division. As the main request was rejected for lack of novelty of claim 1 over E6, claim 6 as granted was not further discussed in connection with the main request. However as the preliminary opinion of the opposition division likewise was negative for claim 6 in view of E6, there was no motivation for the patent proprietor to file an auxiliary request according to AR6 during the first instance oral proceedings. AR6 is thus a legitimate reaction to the decision of the first instance from which it became clear for the first time that claim 6 as granted was considered new by the opposition division."

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/t181436eu1.html

3. Auxiliary request 6 - Admissibility

3.1 The Board did not make use of its power to hold auxiliary request 6 (AR6) inadmissible (Article 12(4) RPBA 2007).

3.2 As compared to the patent as granted (main request), which includes claims 1 to 5 directed to a device and claims 6 to 13 directed to a method, AR6 only includes the latter method claims renumbered to claims 1 to 8.

3.3 Claim 6 as granted was objected to and discussed between the parties since the beginning of the opposition proceedings. The decision under appeal deals with both the device claim and the method claim as granted. Even if claim 6 during oral proceedings mainly was discussed in amended form (as claim 1 of auxiliary request 2), the reasoning in the impugned decision for novelty and inventive step of the method claim is solely based on features of granted claim 6 (points 26, 27 and 29).

3.4 Furthermore, the board follows the argumentation of the appellant 1 (patent proprietor) that the course of the proceedings gave the impression that claim 6 as granted was not considered new by the opposition division. As the main request was rejected for lack of novelty of claim 1 over E6, claim 6 as granted was not further discussed in connection with the main request. However as the preliminary opinion of the opposition division likewise was negative for claim 6 in view of E6, there was no motivation for the patent proprietor to file an auxiliary request according to AR6 during the first instance oral proceedings. AR6 is thus a legitimate reaction to the decision of the first instance from which it became clear for the first time that claim 6 as granted was considered new by the opposition division.

3.5 Under these circumstances, the Board sees no reason to exercise its discretion pursuant to Article 12(4) RPBA 2007 not to admit AR6 in the appeal proceedings.