T 1717/13 - Not admitting further requests

Key points

• In this case, the OD had announced during oral proceedings that because the proprietor had already been given several opportunities to overcome the problems under Article 123(2) EPC, " at this late state of the proceedings further requests were not accepted" .
• The proprietor considers this to be a substantial procedural violation and requests refund of the appeal fee. 
• The Board: " In view of the above, the opposition division possibly exceeded its scope of discretion by categorically stating that it would not accept further auxiliary requests without duly taking notice of their content. However, even in case this statement ultimately proves to be arbitrary and thus inappropriate, such erroneous application of the law does, under the present circumstances, not amount to a substantial procedural violation" (i.e. a procedural violation, but not substantial" .

T 1717/13 - link

Reasons for the Decision

1. Alleged procedural violation

1.1 From a general point of view, it is first noted that following European patent practice, the opposition division issues the summons together with an annex drawing attention to the points to be discussed (Rule 116(1) EPC) and normally containing the division's provisional opinion, as well as a final date for making written submissions. If it becomes apparent in the oral proceedings that the timely submitted amended claims in reaction to the division's preliminary opinion are not allowable under the EPC, the admission of further requests is at the discretion of the opposition division, which will take into account, inter alia, procedural expediency but also whether the new requests are reasonable in number, whether their subject-matter is based on dependent claims as granted or based on subject-matter not previously covered by the claims and whether they are prima facie appropriate for overcoming outstanding objections (cf. Guidelines for Examination in the European Patent Office, November 2015, part E-V, 2.2).

If the way in which a department of first instance has exercised its discretion on admitting requests filed during oral proceedings is challenged in appeal, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as or different from the department of first instance. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes that it has done so according to the wrong principles, without taking into account the right principles, or in an unreasonable way (cf. G 7/93, OJ EPO 1994, 775).

1.2 The appellant argues that the opposition division committed serious procedural violations by not properly exercising its discretion. These allegations concern the circumstances under which the appellant had to prepare the auxiliary requests 1 to 3 (cf. above allegations (b) and (c)) as well as the non-admission of auxiliary request 3 and the possibility to file further auxiliary requests (cf. above allegation (a)).

1.3 Turning first to allegation (b), the appellant essentially argues that its representative was caught by surprise by the fact that the opposition division did not comprehensively indicate which of the objections raised by the opponent under Article 123(2) EPC it shared. In that respect, reference shall first be made to the course of the first instance proceedings. It is noted that the grounds for opposition under Article 100(a) EPC 1973 had been raised in the notice of opposition. The appellant reacted by filing a modified main request, wherein the amendments to the independent claim were largely based on the detailed description. In its annex to the summons, the opposition division expressed the preliminary opinion that the amendments were not in compliance with the provisions of Article 123(2) EPC. One month before the oral proceedings the appellant submitted a new main request in response, which was still largely based on the detailed description. In view of this, the appellant's representative could not be surprised that during the oral proceedings the claim amendments were scrutinised by the respondent and the opposition division in order to assess their compliance with Article 123(2) EPC, in particular since the issues raised at that stage did not concern the claims as granted but post-grant amendments of the claims. Moreover, following established case law of the Enlarged Board of Appeal, the EPC does not entitle a party to be provided with all foreseeable arguments in favour of or against it by the deciding body in advance, a principle which also applies to the decisive reasons (see R 16/10 of 20 December 2010, Reasons, point 2.2.4). Thus, the opposition division was not legally required to provide the appellant with a comprehensive list setting out which of the respondent's objections under Article 123(2) EPC against a specific set of claims it shared at the different stages of the oral proceedings. For these reasons, the board does not concur with the appellant's objection (b).

1.4 Regarding the appellant's allegation (c), it is observed that during the opposition proceedings the appellant filed an amended main request and three auxiliary requests in reaction to the various objections of added subject-matter, all caused by the appellant's claim amendments. The opposition division admitted all of them, except for the third auxiliary request. Based on the minutes of the oral proceedings, it is further noted that the opposition division adjourned the oral proceedings at 11:23 hrs, after having announced that the main request did not meet the requirements of Article 123(2) EPC and again at 14:01 hrs, following the conclusion that the first auxiliary request did not overcome the objection under Article 123(2) EPC. After the first interruption, the appellant submitted a first auxiliary request; after the second break the second and third auxiliary requests were presented. Thus, during the oral proceedings the appellant was given two opportunities to react to the objections raised. Even if the oral proceedings were resumed after a first interruption of 26 minutes (instead of the 30 minutes the appellant had initially asked for), the time given was obviously sufficient to take into account the newly raised objections in the oral proceedings and to prepare an amended set of claims in response. Moreover, as admitted by the appellant, it is not apparent from the minutes that during any of the interruptions the appellant asked for more time for drafting amended requests.

In view of the above, the board does not share the appellant's view that it had insufficient possibility and time to consider the raised deficiencies when preparing the first to third auxiliary requests. Thus, the circumstances under which the appellant had to prepare these auxiliary requests do not amount to a serious procedural violation.

1.5 In the further objection (a), the appellant challenges the way in which a department of first instance has exercised its discretion by not admitting the third auxiliary request and by not accepting further auxiliary requests. In the impugned decision, the opposition division justifies the non-admission of the third auxiliary request by stating that its amendment could, at first sight, not overcome the non-compliance found with respect to the first auxiliary request (cf. Reasons, points 4 and 5). It is, hence, not apparent that the department of first instance exercised its discretion according to the wrong principles or in an unreasonable way. In view of the limited competence to review discretionary first-instance decisions (see point 1.1 above), the board does not see a reason for overruling the opposition division's judgement not to admit the third auxiliary request into the proceedings.

Regarding the possibility of filing further auxiliary requests, the board points to the fact that the second auxiliary request was refused because of a deficiency of added subject-matter regarding a feature ("[...] and the CPU obtains from the raster image processor, concurrently with the instruction to begin the unloading process for the first plate P(N-1) [...] control information associated with a third plate P(N+1) [...]"), which was in substance already present in claim 1 of the first auxiliary request, but was in this context, apparently not indicated by the division as being defective. According to the following statement in the minutes (cf. point 8), the appellant had no possibility to react to the refusal of the second auxiliary request by rectifying this newly established deficiency:

"8. Based on the above opinion the chairman announced that in the view of the opposition division the proprietor had already been given several opportunities to overcome the problems under Article 123(2) EPC and therefore at this late state of the proceedings further requests were not accepted.
8.1 The proprietor announced that by not allowing any more requests the opposition division has violated his right to be heard in accordance with Article 113(1) EPC."

On the other hand, it has to be taken into account that at that stage of the proceedings the opposition division had already accepted the filing of an amended main request and three auxiliary requests in reaction to the objections of added subject-matter. Except for the third auxiliary request, all of them were admitted into the proceedings. Moreover, the applicant's demand for filing further auxiliary requests did not arise from the introduction of new attacks against the patent in suit and/or the submission of additional prior art documents, but exclusively from the fact that the appellant's numerous attempts to rectify deficiencies under Article 123(2) EPC, on the basis of the detailed description of the embodiments, remained unsuccessful.

In view of the above, the opposition division possibly exceeded its scope of discretion by categorically stating that it would not accept further auxiliary requests without duly taking notice of their content. However, even in case this statement ultimately proves to be arbitrary and thus inappropriate, such erroneous application of the law does, under the present circumstances, not amount to a substantial procedural violation (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) Edition 2013, IV.E.8.3.5). The board judges that, having regard to the overall procedure, the opposition division did not breach the appellant's right to a fair trial. Consequently, the appellant's request for reimbursement of the appeal fee under Rule 67 EPC 1973 (applicable here) is refused.