T 0493/12 - Acceleration after remittal

Key points

• In this opposition appeal, the proprietor restricted to the method claims in appeal.
• " The Board holds that the filing with the statement of grounds of appeal of a request which essentially corresponds to a request decided upon by the Opposition Division, wherein claims which were found unallowable by the first instance have been deleted, said request thereby being restricted to subject-matter of a different category for which no negative decision has been issued by the Opposition Division, deprives the contested decision of its basis, and is normal behaviour of a losing party. " 
• There is no provision of the EPC under which any competence is given to a Board of Appeal to decide the time frame of first instance proceedings after remittal (see T 2362/08)

T 0493/12 - link

Auxiliary request 2

3. Admissibility

3.1 Auxiliary request 2 was filed with the statement of grounds of appeal. It is based on the main request wherein granted claims 1 to 5, namely the claims to the reactor system, have been deleted, and granted independent claim 6, directed to a method for starting up the reactor system of claim 1, has been reformulated as claim 1, wherein the features of the reactor system of granted claim 1 have now been incorporated into said claim in full. []

3.2 Appeal proceedings are based inter alia on the statement of grounds of appeal filed pursuant to Article 108 EPC, said statement containing the party's complete case (see Art. 12(1) and (2) RPBA). The Board may however hold inadmissible requests which could have been presented in the first instance proceedings (see Art. 12(4) RPBA).

3.3 The Respondent submitted that auxiliary request 2 should not be admitted into the proceedings, since the Appellant had failed to provide proper justification as to why said request had been filed only on appeal when it could have been presented before the first instance. Nor had had any reasons been given in the statement of grounds of appeal as to why the subject-matter of the method of this request was inventive over and above the reasons given for inventiveness of the reactor system used in the claimed method. 

3.4 The Board holds that the filing with the statement of grounds of appeal of a request which essentially corresponds to a request decided upon by the Opposition Division, wherein claims which were found unallowable by the first instance have been deleted, said request thereby being restricted to subject-matter of a different category for which no negative decision has been issued by the Opposition Division, deprives the contested decision of its basis, and is normal behaviour of a losing party. This behaviour of the Appellant is thus not considered to constitute an abuse of procedure.

3.5 With regard to the arguments of the Respondent, the Appellant had indeed provided arguments before the Opposition Division as to why the method for starting up a reactor system of granted claim 6 was inventive (see pages 9 and 10 of letter dated 27 May 2010). At the time of filing its statement of grounds of appeal, the Appellant had no negative decision from the first instance with regard to this method, such that it did not need to defend itself, it never having been determined, neither by the Opposition Division nor by the Respondent, which document represented the closest prior art for said subject-matter, the Appellant having argued all along, both before the Opposition Division and the Board, albeit in the statement of grounds of appeal only in relation to the reactor system per se, that none of the cited documents related to a method for starting up a reactor. As such, the Board holds that the filing of a request which is restricted to subject-matter which deprives the contested decision of its basis, clearly represents a serious attempt to overcome the objections on file. 
With regard to the Respondent's objections to lack of clarity of the claims of this request, the claim essentially corresponded to (combinations of) granted claims, such that prima facie their clarity could not be contested (see G 3/14, OJ EPO 2015, A102), so that the Board holds that any purported lack of clarity is not sufficient reason to not admit the claims into the proceedings. 
There is no requirement that the admissibility of claims filed with the statement of grounds of appeal be "clearly allowable", said requirement applying rather to requests which have been filed at a later stage, e.g. during the oral proceedings (see T 153/85, point 2.1 of the Reasons, OJ EPO 1988, 1).
Similarly, the argument based on unforeseen developments is irrelevant at the stage of filing the statement of grounds of appeal, since at this stage of the appeal proceedings, no developments have yet occurred which may be considered to be unforeseen or not. Procedural economy alone cannot be a reason for not admitting a request into the proceedings which deprives the contested decision of its basis. In any case, had the Opposition Division in the contested decision also decided upon the patentability of granted method claim 6, which lay before it, remittal would not now be necessary, such that the delay in ending the proceedings did not lie in the hands of the Appellant alone.
[...]

7. Remittal (Article 111(1) EPC)

7.1 The Opposition Division has not yet ruled on the method claims. It is not the duty of the Boards of Appeal to consider and decide upon questions raised for the first time during the appeal proceedings. Instead, the main purpose of appeal proceedings is to give the losing party the opportunity to challenge the decision of the Opposition Division (cf. G 9/91, loc. cit., point 18 of the Reasons). Taking into account that the closest prior art for these method claims has not yet been ascertained, the Board considers it appropriate to exercise its power conferred on it by Article 111(1) EPC to remit the case to the Opposition Division for further prosecution on the basis of the claims according to the auxiliary request 2tris.

In view of Article 114(1) EPC, it will be the task of the first instance to examine and decide on the grounds of opposition raised, i.e. Articles 100(a) and (c) EPC, of the subject-matter of these method claims.

8. Apportionment of costs (Article 104(1) EPC)

8.1 Under Article 104(1) EPC, each party to opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders a different apportionment of costs. This principle applies equally to the opposition-appeal proceedings in view of Article 111(2) EPC in combination with Rule 100(1) EPC.

8.2 In the present case, the Respondent requested that the Board award all costs in its favour, both of the present and all future proceedings, on the basis that it was essentially an abuse of the proceedings on behalf of the Appellant to file a request relating exclusively to the method claims at such a late stage of the opposition(appeal) proceedings. It was entirely the Appellant's responsibility to have filed such a request before the Opposition Division which would have avoided the need for any remittal.

8.3 However,the Board has already ascertained that the Appellant has not committed an abuse of procedure (see point 3.4 above), the present proceedings being in any case necessary in view of the finding in the contested decision that the subject-matter of granted claim 1 was not inventive (see point III above), the filing of auxiliary request 2 being irrelevant in this respect.

8.3.1 Hence, the Board sees no reason for a different apportionment of costs for the present proceedings.

8.4 With regard to future costs, the Board is not in possession of the necessary facts at this stage to decide upon an apportionment of costs for subsequent proceedings, of which the unfolding and outcome is pure speculation (see T 369/08, point 7.12 of the Reasons and T 1282/08, point 22 of the Reasons, both not published in OJ EPO).

8.4.1 Thus, the Board holds that is incumbent on the Opposition Division in its further prosecution of the case following remittal to it by the Board, to consider and decide upon the issue of apportionment of costs in the light of the facts and requests before it, in accordance with the power conferred upon it by Article 104(1) EPC.

9. Request for acceleration of the opposition proceedings

9.1 The Respondent requested that the Board direct the Opposition Division to accelerate the further proceedings before it.

9.2 There is no provision of the EPC under which any competence is given to a Board of Appeal to decide the time frame of first instance proceedings after remittal (see T 2362/08, point 6 of the Reasons, not published in OJ EPO). The Board therefore cannot take any decision on the request for acceleration of the opposition proceedings. This should be presented to the opposition division taking into account the conditions under which a request of this kind may be made (see notice in OJ EPO 2008, 221).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the Opposition Division for further prosecution on the basis of auxiliary request 2tris filed during the oral proceedings before the Board.

3. The request for apportionment of costs is refused.