Key points
- T 0919/17 held that under the RPBA 2007: “It is correct that the appellant [opponent] did not file any objections against the auxiliary requests together with its grounds of appeal. However, it was under no obligation to do so. Since the opposition had been rejected, the appellant correctly argued in its grounds of appeal as to why the decision of the opposition division to reject the opposition was wrong. At that point in time the appellant could not have foreseen which lines of defence the patent proprietor would adopt during the appeal proceedings and there was no reason to assume that it would file the same auxiliary requests as during opposition proceedings.”
- See also T 2843/19 about the rejoinder under the RPBA 2020 ("The filing a rejoinder is appropriate for an appellant’s response to attacks or auxiliary requests that are not already the subject of the contested decision but are submitted by the respondent in the [appeal reply brief]."). Note that carry-over requests are indeed introduced in appeal, see the unless clause of Article 12(4) RPBA.
- The present board, in translation: "the statement of grounds of an opponent as appellant must include all grounds covering all requests pending before the opposition division, including those which were not considered in the contested decision. Failing this, the appellant risks having the grounds filed after the statement of grounds and relating to auxiliary requests pending before the opposition division and filed in response to the appeal brief by the patent owner being held inadmissible. ".
- The Board's reasoning, "3. According to Article 12(3) RPBA, the statement setting out the grounds for the appeal must contain all the grounds relied on by an applicant (opponent) in the appeal.
Auxiliary requests 3 to 15 had already been filed on September 12, 2019 before the opposition division. Applicant II therefore had to expect that the patent owner (applicant I) would re-file auxiliary requests 3 to 15 in the appeal proceedings. Consequently, applicant II should have addressed these requests in his statement explaining the grounds of appeal and provided the document at the latest at this stage (24). Therefore, the board does not admit document (24) into the appeal proceedings (Articles 13(1) and 12(3) RPBA)."
Note, Article 12(3) states that "accordingly, they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld". As the auxiliary requests were not considered in the decision under appeal, I do not see how Article 12(3) would require parties to comment on matters from the first instance procedure that did not make it into the decision. Article 12 RPBA is the first stage of the convergent approach. T 0664/20 goes in the opposite direction by requiring pre-emptive comments on requests that are not even in the appeal.
See also T 0248/22 indicating that the Statement of grounds of the proprietor should not include pre-emptive auxiliary requests.
Document admissibility (24)
1. Document (24) was filed on December 2, 2020 by applicant II, therefore after his brief setting out the grounds for his appeal.
Article 13(1), 1**(st) sentence RPCR 2020, states that any modification of the means presented by a party after the latter has filed its brief setting out the reasons for the appeal or its response must be justified by the party and its admission is left to the discretion of the chamber.
2. According to Applicant II, the filing of certain auxiliary requests by Applicant I with his response to the appeal brief dated September 28 necessitated an additional search due to a combination of features from the patent description. The documents provided with the opposition and appeal brief were sufficient to destroy the novelty of the main and auxiliary requests 1 and 2. Until the filing of requests 3 to 15, there was no need to provide new documents against the novelty. The new document (24) was simple to analyze and it was immediately apparent that it anticipated the subject matter of the claims of the main and auxiliary requests 1 to 3, 9 and 10.
The additional search was initiated immediately after the filing of auxiliary requests 3 to 15 in the appeal proceedings. Document (24) was filed as soon as applicant II became aware of it.
At first instance, applicant II did not have the possibility of carrying out an additional search made necessary by the filing of new requests, in particular auxiliary request 3, since this request was not filed before the division of opposition only on September 12, 2019, i.e. only 2 months before the oral proceedings on November 15, 2019. During these oral proceedings, the opposition division maintained a patent on the basis of auxiliary request 2.
The first opportunity to file documents resulting from an additional search was therefore during the appeal procedure.
As applicant I had already amended his sets of claims numerous times, including during a first appeal, it was not foreseeable that the applicant would re-file auxiliary requests 3 to 15 in the appeal procedure and therefore initiate an additional search before filing these requests.
3. According to Article 12(3) RPCR, the statement setting out the grounds for the appeal must contain all the grounds relied on by an applicant (opponent) in the appeal.
Auxiliary requests 3 to 15 had already been filed on September 12, 2019 before the opposition division.
Applicant II therefore had to expect that the patent owner (applicant I) would re-file auxiliary requests 3 to 15 in the appeal proceedings.
Consequently, applicant II should have addressed these requests in his statement explaining the grounds of appeal and provided the document at the latest at this stage (24).
Therefore, the board does not admit document (24) into the appeal proceedings (Articles 13(1) and 12(3) GDPR).
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