T 0543/20 - (II) Art. 12(4)(s.4) RPBA bites

Key points

• Auxiliary request 2 (renumbered from AR-5) is a carry-over auxiliary request.

Admissibly raised before OD

• The first question is whether the unless-clause of Art. 12(4) RPBA applies, particularly whether it was admissibly filed before the OD.
• The Board, in translation: "Auxiliary request 5 was submitted in the opposition proceedings after the time specified in the summons to oral proceedings, up to which pleadings and/or documents can be filed under Rule 116 EPC, and was therefore filed late in the opposition proceedings (see, for example, the second guidance sentence in T 1776/18 and Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.4.3.2 and IV.C.5.1.4). Its admission and consideration was therefore at the discretion of the opposition division. For this reason alone, auxiliary request 5 cannot per se be viewed as being submitted in an admissible manner. The current auxiliary request 2 is therefore an amendment in accordance with Article 12(4) RPBA, the approval and consideration of which is now at the discretion of the Board."
• "The respondent's [proprietor's] opinion cannot be accepted in this respect, according to which auxiliary request [5] was a response to an objection raised by the [opponent] in the written statement filed [before the OD] under Rule 116 EPC [...]. It had already been argued in the notice of opposition that document D2 disclosed a liquid detergent which contained the R99E protease variant and the phosphonate HEDP, and that the claimed subject matter was not new via this disclosure or only differed from it [by an obvious feature] (see pages 3 and 4, the first two complete paragraphs on page 6 and the last paragraph on page 9 of the notice of opposition)."
• "Auxiliary request 2, which [specifies a difference with ] document D2, could therefore have already been filed in response to the notice of opposition in order to address the objections raised therein under novelty and inventive step ."
• It may be wise for proprietors to take the first opportunity to file a reply to a Notice of opposition seriously.

Requirement to indicate the basis

• The proprietor had, as respondent, not indicated the basis for the amendment in its appeal reply brief. Therefore, Art. 12(4)(s.4) is not met, and the request is not admissible on that ground. The Board considers that the requirement of indicating the basis of claim amendments is, in translation, "a further essential prerequisite".
• " Weitere essentielle Voraussetzung für die Berücksichtigung nach Artikel 12(4) VOBK ist, im Falle einer Änderung der Patentanmeldung oder des Patents, die Angabe der Grundlage der Änderung in der ursprünglich eingereichten Fassung der Anmeldung, sowie die Anführung der Gründe, warum mit der Änderung die erhobenen Einwände ausgeräumt werden."
• Some further requests are not admitted either, and the patent is revoked. 

EPO 

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

https://www.epo.org/de/boards-of-appeal/decisions/t200543du1

Translation

Admission and consideration of auxiliary requests 2 to 7

(Article 12 RPBA)

Auxiliary request 2

40. In light of the primary objective of the appeal procedure, which is to judicially review the contested decision, Article 12(2) RPBA requires that the parties' appeal submissions be directed to the requests, facts, objections, arguments and evidence on which the contested decision is based.

41. According to Article 12(4) RPBA, any part of a party's complaint that does not meet the requirements of Article 12(2) RPBA is to be regarded as an amendment, unless the party shows that this part was included in the procedure to which it was based the contested decision was "put forward and maintained in an admissible manner". Contrary to the respondent's opinion, Article 12(4) RPBA is therefore fundamentally also applicable to applications submitted in opposition proceedings. Requests that are not the basis of the contested decision and were not presented in an admissible manner in the opposition proceedings are to be viewed as amendments, the admission of which lies at the discretion of the board.

42. Auxiliary request 2 is not the basis for the contested decision because the opposition division rejected the opposition and therefore only made a decision for the patent as granted. It therefore does not fulfill the first (alternative) requirement specified in Article 12(2) RPBA (see point 40). Since the set of claims of auxiliary request 2 submitted with the response to the complaint is identical to the set of claims of auxiliary request 5 submitted in the opposition proceedings with the submission of October 31, 2019, auxiliary request 2 is not one in accordance with Article 12(4) RPBA Change if auxiliary request 5 was submitted and maintained in an admissible manner in the opposition proceedings.

43. Auxiliary request 5 was submitted in the opposition proceedings after the time specified in the summons to oral proceedings, up to which pleadings and/or documents can be filed under Rule 116 EPC, and was therefore filed late in the opposition proceedings (see, for example, the second guidance sentence in T 1776/18 and Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.4.3.2 and IV.C.5.1.4). Its admission and consideration was therefore at the discretion of the opposition division. For this reason alone, auxiliary request 5 cannot per se be viewed as being submitted in an admissible manner. The current auxiliary request 2 is therefore an amendment in accordance with Article 12(4) RPBA, the approval and consideration of which is now at the discretion of the Chamber.

44. The Chamber's discretion must be exercised ex officio, regardless of any requests made by a party. It is therefore irrelevant for the board's decision in this context that the appellant only submitted her request for non-admission of auxiliary request 2 during the oral hearing before the board.

45. A further essential prerequisite for consideration under Article 12(4) RPBA is, in the event of an amendment to the patent application or patent, the indication of the basis for the amendment in the originally filed version of the application, as well as the reasons why Change the objections raised are resolved.

46. ​​In its response to the complaint, the respondent did not provide any information on the basis of the claims in auxiliary requests 2, 3 and 4 in the application. Although it explained which changes were made, it did not explain where the claimed feature combinations resulting from the changes had a basis in the application. The basis of auxiliary requests 2, 3 and 4 in the application was therefore not sufficiently substantiated. The respondent's arguments that all changes are based on the granted claims and therefore no further information about the basis needs to be provided are not per se convincing, because a new subject matter can arise by selecting from different lists available in granted claims. For this reason alone, auxiliary request 2 cannot be admitted into the appeal procedure under Article 12(4) RPBA.

47. The respondent's opinion cannot be accepted in this respect, according to which auxiliary request 2 was a response to an objection raised by the appellant in the written statement filed under Rule 116 EPC and should also be viewed in the appeal proceedings as a response to the new document D10 and should therefore be taken into account . It had already been argued in the notice of opposition that document D2 disclosed a liquid detergent which contained the R99E protease variant and the phosphonate HEDP, and that the claimed subject matter was not new via this disclosure or only differed from it through the phosphonate mentioned in the claim -concentration range, which, however, is not associated with any technical effect (see pages 3 and 4, the first two complete paragraphs on page 6 and the last paragraph on page 9 of the notice of opposition).

48. Auxiliary request 2, which limits the phosphonate to the phosphonate DTPMP examined in the patent, which is not disclosed in document D2, could therefore have already been filed in response to the notice of opposition in order to address the objections raised therein under novelty and inventive step .

49. Auxiliary application 2 was therefore not to be admitted into the proceedings under Article 12(4) RPBA.