T 2171/14 - Added subject matter is substantive

Key points

• " The opposition division drew a distinction between what it termed "formal arguments" [added subject-matter and insufficient disclosure] which it did "not want to get tied down in", and "the fundamental question" concerning "whether the actual subject-matter described in fact warrants the patent". " The ground for opposition under Article 100(c) EPC and the corresponding requirement of Article 123(2) EPC in regard to any amendment carried out on the patent in the course of the opposition and opposition appeal proceedings are of equal fundamental importance compared to other requirements, such as e.g. novelty, inventive step or sufficiency of disclosure, when it comes to deciding whether a patent can be maintained. Also, extension of subject-matter in the terms of Article 123(2) EPC is not a question of "form" of the patent, which might fall under the heading of a "formal requirement", but a substantive one. The standard used by the opposition division, concerning whether the invention "warrants the patent" is not a legal standard recognised by the EPC, not least since such a standard introduces undefined subjective criteria." 
• The lack of reasoning of the OD for rejecting the objections under Article 100(c) forms a substantial procedural violation. However, the case is not remitted, because the point was decided in favour of the appellant-proprietor, who requested the remittal. Together with the requested acceleration of the opposition procedure, these are "special reasons"  as required under Article 11 RPBA. The decision was given publication code [C] because of this decision not to remit.
• The patent is revoked. 

EPO T 2171/14 - link

Reasons for the Decision

Remittal

1. According to Article 111(1) EPC, second sentence, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

2. An absolute right for the parties to have each objection decided upon by two instances does not follow from this provision of the EPC. Rather it confers discretionary power to the Boards of Appeal, under due consideration of all circumstances of the case, whether or not to remit the case to the department of first instance.

3. Nevertheless, according to Article 11 of the Rules of Procedure of the Boards of Appeal (RPBA), a Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.

4. Fundamental deficiencies which may justify the immediate remittal include for example the lack of a reasoned decision (Rule 111(2) EPC).

The impugned decision presents a fundamental deficiency in that there is no reasoned decision in regard to the specific objections under Article 100(c) EPC made against Auxiliary Request V, which objections had been made originally against the main request and, as specifically stated in the minutes of the oral proceedings (see point VII above), had been maintained against the subject-matter of claim 1 of Auxiliary Request V found allowable by the opposition division.

5.1 As is apparent from point VIII above, the reasons given under the heading "Auxiliary Request V - disclosure" in points 36 to 40 of the decision address merely the amendments introduced during the opposition proceedings in claim 1 of auxiliary request V. Although points 39 and 40 comprise some allusions to the issues arising in respect of the various objections raised under Article 100(c) EPC, these cannot be considered to constitute a reasoned decision. There is no discussion of the arguments provided by the opponents in support of their objections and the cited passages of the description refer to the patent and not to the application as filed. Basis for the division's statement that the description "makes it clear that the baseplate should contain those components considered necessary" is not given; at least the cited paragraphs 19 and 43 of the patent do not contain such a disclosure. The final statement in point 40 of the decision, according to which there would be "no necessity apparent that all components must always be present", ignores the very principle to be applied when examining objections raised under Article 100(c) and 123(2) EPC, which is not about "necessity". Rather, the principle of direct and unambiguous disclosure of the subject-matter resulting from an amendment, as confirmed by the Enlarged Board of Appeal in its decision G 2/10 (OJ EPO 2012, 376, point 4.3), must be considered (see also below).

5.2 The Board additionally observes that the impugned decision also does not contain any reasoned decision with respect to the further opposition ground under Article 100(b) EPC, nor with respect to the subject-matter of independent claim 12.

5.3 The missing reasoning on the mentioned opposition grounds together with the remarks made by the opposition division in the "preliminary comments" section of the reasons for its decision, give rise to serious concerns as to the way in which the opposition division approached in particular the objections made under Article 100(c) EPC, as briefly explained below:

In its preliminary comments in point 2 of the Reasons for the Decision (see point VIII above), the opposition division drew a distinction between what it termed "formal arguments" which it did "not want to get tied down in", and "the fundamental question" concerning "whether the actual subject-matter described in fact warrants the patent". Although it is not explicit from this statement what the opposition division considered to be a "formal argument", the immediately following reference to "the main problem of the patent [being] one of novelty" as well as the absence of any reasoned decision on the opposition grounds of Article 100(b) and (c) EPC in regard to the auxiliary request V, certainly allow the Board to conclude that the latter grounds were considered by the opposition division precisely to be such "formal arguments".

The opposition grounds mentioned in Article 100 EPC, are not divided into substantial and formal requirements. The ground for opposition under Article 100(c) EPC and the corresponding requirement of Article 123(2) EPC in regard to any amendment carried out on the patent in the course of the opposition and opposition appeal proceedings are of equal fundamental importance compared to other requirements, such as e.g. novelty, inventive step or sufficiency of disclosure, when it comes to deciding whether a patent can be maintained. Also, extension of subject-matter in the terms of Article 123(2) EPC is not a question of "form" of the patent, which might fall under the heading of a "formal requirement", but a substantive one. The standard used by the opposition division, concerning whether the invention "warrants the patent" is not a legal standard recognised by the EPC, not least since such a standard introduces undefined subjective criteria.

5.3.2 Of course, the opposition division is in principle free to reach a decision based on any ground of opposition prejudicing the maintenance of the patent. It may therefore choose to consider only one particularly "promising" ground for opposition and to disregard some other, if the promising ground is indeed prejudicial to maintenance of the patent. In the present case, the opposition division indeed decided that the patent could not be maintained as granted due to lack of novelty of the subject-matter of claim 1 and it was thus not obliged to consider any other opposition ground potentially also prejudicing maintenance of the patent. It is however not free to disregard other opposition grounds - or any other objection raised against amended claims under for example Article 83, 84, 123 - when these other grounds (or objections falling under these grounds) which have been raised have not been withdrawn or abandoned and where the previously considered opposition ground (or objection) is not found prejudicial to maintenance of the patent.

5.3.3 In the present case, the original grounds for opposition were not abandoned or withdrawn as is clear from the statement in point 7.4 of the minutes.. The opposition division was thus obliged to give a reasoned decision in regard to all pending objections with respect to the request upon which it considered that the requirements of the EPC were met. Article 101(3)(a) EPC also states that for a patent to be maintained in amended form the requirements of the Convention must be met (see also G 9/91, OJ 1993, 408, Reasons 19).

5.4 Despite the fundamental deficiencies in the impugned decision noted above, the Board decided, having due consideration to the circumstances, not to remit the case to the opposition division.

5.4.1 The first point to note here is that the appellant-proprietor is strictly speaking not negatively affected by the lack of a reasoned decision of the opposition division on the matter of Article 100(c) EPC, precisely since this was decided in its favour. The appellant proprietor also did not provide a plausible argument demonstrating in which way, other than the loss of the possibility of obtaining a reasoned decision in two instances, the missing reasoned decision negatively affected its position in the appeal procedure.

5.4.2 Although argued to be so by the appellant-proprietor, the Board does not accept its argument that the Board had made a fresh case by way of its preliminary opinion given in the communication sent in preparation for the oral proceedings.

As is clear from points II, IV, VII and XI above, the essence of the objection considered in point 1.1.1 of its communication, namely the question of whether or not there was a basis in the application as filed for "at least one" instead of "all" active component(s) which need to be in contact with the liquid in, leaving or entering the tank to be incorporated on the baseplate, had been raised in the notices of opposition and discussed by the parties during the oral proceedings before the opposition division. The objections were further maintained in the appeal grounds of all three appellant-opponents.

5.4.3 To the extent that the Board's analysis of the opponents' objections, as formulated in the communication, was considered by the appellant-proprietor to rely on an interpretation of the terminology used in the claims which had not been discussed before, this per se does not constitute sufficient reason for remitting the case.

The appellant-proprietor also did not argue that the Board's analysis itself had resulted in a specific need for remittal of the case (e.g. for the purpose of gathering further evidence or expertise), in order to demonstrate any possible incorrectness of the Board's analysis, which it could not have done equally in the appeal proceedings.

The interpretation of the features of a claim or of terminology which is subject to an objection, is part of the normal tasks performed by the parties and the Board in opposition-appeal proceedings. As long as such interpretation does not raise new issues for which the parties do not have the opportunity to appropriately prepare, the Board does not see any justification for a remittal merely on this ground.

Further, the appellant-proprietor did not argue that the time after receipt of the Board's communication (setting out the alleged "fresh case") was insufficient or that it had not been given appropriate opportunity in the appeal to defend its case. In fact, the appellant-proprietor submitted new auxiliary requests before the oral proceedings as well as during the oral proceedings.

5.4.4 The opposition division did not see any merit in the corresponding objections of the opponents, as shown by the statements in point 7.4 of the minutes of oral proceedings before the opposition division (see point VII above), it being noted that the correctness of minutes was not contested by the proprietor.

Thus, even if the case were to have been remitted, the opposition division could only have been expected to provide the reasons why it considered these opposition grounds not to prejudice maintenance of the patent. These reasons would also be expected to be confined essentially to the arguments provided by the parties in writing, because this is what the opposition division must have considered when reaching its decision (according to the cited statement in the minutes). The Board is thus not convinced that such reasoning would have had a more favourable effect on the appellant-proprietor's position in the present appeal as it could only be based on the appellant-proprietor's arguments submitted during the opposition procedure.

The Board can also not see in which way a reasoned decision, favorable for the proprietor, would have helped the proprietor to prepare auxiliary requests in reply to the present issues, except that it might possibly have had more time to prepare its requests. However, as noted above, the Board does not see that the appellant-proprietor had insufficient time at its disposal for preparing such requests, nor did the proprietor argue that this was the case.

5.4.5 A remittal would therefore primarily have resulted in a further procedure before the opposition division which could not be expected to change the substance of the issue with which the Board is faced in the present proceedings. A remittal of the case would also have considerably prolonged the total duration of the procedure, which would have been unhelpful given the ongoing infringement proceedings as well as the request of appellant-opponent AO2 for acceleration.

5.4.6 The Board nevertheless also had to take into account the potential severe consequences the case might have (and has ultimately had) for the appellant-proprietor, i.e. the possible revocation of the patent (see below). Since the appellant-proprietor however did not provide any convincing argument demonstrating how, under the given circumstances, a reasoned decision of the opposition division on the crucial objection might have changed its position in subsequent appeal proceedings, the Board cannot see that the final outcome of the appeal case would have been different merely due to reasons having been given by the opposition division on this specific issue.

It may be added that the present case is also different from other cases in which remittal is frequently found justified, such as remittal on the basis of new evidence admitted into the appeal proceedings or when the claims have been substantially amended based on features taken from the description or the like. All the facts and arguments had already been presented in the opposition proceedings and again in the appeal proceedings.

5.5 In summary, the Board finds that remittal of the case to the department of first instance is not appropriate. The appellant-proprietor's request for remittal must therefore be rejected.