T 1848/12 - Should have presented earlier

Key points

• The Board notes, about Article 12(4) RPBA, that "could" have been presented earlier should be understood as "should have been presented" during the first instance proceedings.
• The Board also explains that Article 12(4) RPBA reflects that " appeal proceedings, which are largely determined by the factual and legal scope of the preceding proceedings, are not about bringing an entirely fresh case to the board. This means that an appellant is not at liberty to bring about the shifting of its case to the appeal proceedings as it pleases, and so compel the board either to give a first ruling on the critical issues or to remit the case to the opposition division."
• The Board raises an added subject-matter objection to an amendment in an Auxiliary Request that was not raised by the opponent, but noted by the OD. The patent proprietor protests, to no avail. The Board notes that " the board is required to review the impugned decision as a whole, i.e. including [the point about added subject-matter], and pursuant to Article 111(1) EPC may exercise the power of the opposition division. According to the established case law, the board has wide powers to consider all possible objections under the EPC against the first auxiliary request, since the amendments must be examined fully for compatibility with the EPC []." .

EPO T 1848/12 - link

1.2 Documents D17 to D28

1.2.1 Documents D17 to D28 were filed for the first time with appellant II's statement setting out the grounds of appeal.

1.2.2 The board considers that appeal proceedings, which are largely determined by the factual and legal scope of the preceding proceedings, are not about bringing an entirely fresh case to the board. This means that an appellant is not at liberty to bring about the shifting of its case to the appeal proceedings as it pleases, and so compel the board either to give a first ruling on the critical issues or to remit the case to the opposition division. Conceding such freedom to an appellant would run counter to orderly and efficient opposition-appeal proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be unacceptable for procedural economy generally (G 9/91, OJ EPO 1993, 408, Reasons 6; T 1705/07 of 10 June 2010, not published in OJ EPO, Reasons 8.4; T 1067/08 of 10 February 2011, not published in OJ EPO, Reasons 7.1 to 7.2).

1.2.3 This is reflected in Article 12(4) RPBA, which states that:

"Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2)" (emphasis added by the board).

1.2.4 The present board realises that everything "could" have been presented earlier and therefore applies the more lenient "should have been presented". Among the reasons for the admission of D17 to D28 given by appellant II in its statement setting out the grounds of appeal (see in particular pages 2 and 6 to 8), appellant II presented no argument as to the documents D17 to D28 had not been presented during the first-instance proceedings.

1.2.5 Contrary to appellant II's view, the cleaning of the lid, i.e. the interruptions of the cam provided on the lid, was already a focus point in the opposition proceedings, since these features had already been included in claim 1 of the fifth auxiliary request filed with letter dated 13 September 2011 (becoming the sixth auxiliary request with letter dated 20 April 2012 and the second auxiliary request during the oral proceedings). That was when any further documents relevant to this point could/should have been filed, as an appropriate response. It is also noted that these features were also present in dependent claims 4 and 5 of the patent as granted, and a clear indication concerning their technical effect was given in paragraphs 14 and 24 of the contested patent. Finally, the stacking of lids onto lids and containers onto lids was already disclosed in documents filed during the opposition proceedings, see for instance D4, figures 6a and 6b; so there was no need to give further evidence of the corresponding skilled person's common general knowledge.

1.2.6 For the above reasons documents D17 to D28 too are not admitted into the proceedings (Article 12(4) RPBA).

1.2.7 The above was the board's preliminary opinion provided to the appellants in the annex to the summons to oral proceedings, point 4.3. At the oral proceedings, appellant II argued only for the admission of D17, holding the view that D17 should be admitted in response to the amendments introduced in the set of claims of the fourth, fifth and sixth auxiliary requests which were filed late by appellant I only one month before the oral proceedings (see appellant I's letter dated 16 November 2016).

For appellant II, appellant I cannot claim that it would not be prepared to discuss D17, since the document was filed with appellant II's statement setting out the grounds and, until the oral proceedings, no final decision had been taken by the board on its admission. As it was still possible that D17 would be admitted, appellant I was required to be aware of its disclosure.

1.2.8 The board cannot share appellant II's view for the reason given by appellant I, i.e. that there appears to be no reason for singling out D17 with respect to the other documents D18-D28. The amendments introduced in the claims of the said late-filed fourth, fifth and sixth auxiliary requests do not justify the admission of D17, since they do not constitute a change in substance, but rather merely aim in essence at clarifying the meaning of the subject-matter of the sets of claims which had already been on file so far.

4.1 Amendments

4.1.1 With respect to claim 1 of the main request, claim 1 of the first auxiliary request further comprises the term "circumferential" for the connection portion (see point V above).

4.1.2 Appellant II has not raised in appeal any objection based on Article 123(2) EPC against this request (see impugned decision, point II.5.1).

4.1.3 The board, however, considers that the term "circumferential" introduces new embodiments not originally envisaged and not derivable from the application as originally filed, contrary to the requirements of Article 123(2) EPC.

4.1.4 Appellant I has contested the power of the board to introduce ex officio an objection which had not been raised by appellant II, arguing that:

- a "new ground" is not allowed in appeal, except with the approval of the patentee, which is not the case here (G 10/91, OJ EPO, 1993, 420; T 520/01 of 29 October 2003, not published in OJ EPO); and

- the board is required to be strictly impartial (T 1676/08 of 9 March 2012; T 1799/08 of 18 June 2013; T 253/95 of 17 December 1997, none of them published in OJ EPO).

4.1.5 The board notes that the claims were amended during the opposition proceedings and hence are open to examination pursuant to Article 123(2) EPC. Further, the impugned decision explicitly deals under point II.5.1 with this issue for the very same request, so that it belongs to the legal framework of the appeal.

4.1.6 An objection based on Article 123(2) EPC cannot be considered as being a new ground as alleged by appellant I in the sense of G 10/91. Further, in T 520/01 (supra), cited by appellant I, the ground at stake (Article 100(b) EPC) was not maintained by the opponent in opposition proceedings and not discussed in the impugned decision. As this is not the case here, this decision does not apply.

4.1.7 Regarding the decisions cited by appellant I with respect to the need for strict neutrality, the board notes the following:

4.1.8 T 1676/08 (supra), Reasons 11, concerns the neutrality of the board during the oral proceedings.

4.1.9 In T 1799/08 (supra), Reasons 10 and 11, the opponent was passive, not even attending the oral proceedings, after the board had raised an issue in writing. The board concluded that it could not perform the job in place of the opponent.

4.1.10 In T 253/95 (supra), Reasons 3, the board stated that a new argument could not have been sent in writing before the oral proceedings for partiality reasons since doing so would unduly provide the party having the burden of proof with time to prepare an answer. The board did, however, admit a new objection pursuant to Article 123(2) EPC raised ex officio at the oral proceedings (Reasons 2).

4.1.11 Consequently, none of the above-mentioned decisions reflects the present case, and therefore they do not have to be taken into consideration by the board.

4.1.12 In fact, the board is required to review the impugned decision as a whole, i.e. including point II.5.1, and pursuant to Article 111(1) EPC may exercise the power of the opposition division.

4.1.13 According to the established case law, the board has wide powers to consider all possible objections under the EPC against the first auxiliary request, since the amendments must be examined fully for compatibility with the EPC, see Case Law of the Boards of Appeal, 8th Edition, 2016, IV.D.3.4.3.

4.1.14 Therefore, the board has the power to examine in the present case whether the first auxiliary request fulfils the requirements of Article 123(2) EPC. This applies de facto to the other auxiliary requests discussed in the present decision.

4.1.15 At the oral proceedings, appellant I explicitly withdrew its request for referral to the Enlarged Board of Appeal filed with its letter dated 16 November 2016, page 2, "First auxiliary request", concerning the above (a "new ground" not allowed in appeal and the need for strict impartiality of the board).

4.1.16 As put forward in the annex to the summons to oral proceedings and discussed during said oral proceedings, the board considers that the term "circumferential" introduced in claim 1 teaches new embodiments not originally envisaged and not derivable from the application as originally filed. This contravenes the requirements of Article 123(2) EPC.

4.1.17 The adjective "circumferential" in fact also encompasses the meaning that the connection portion, as a whole, is located at or near a circumference of a part, be it the lid or the container or another undefined part of the assembly.

4.1.18 The definition given in the impugned decision (extending around the whole periphery), point II.3, is considered by the board to be too restrictive, since it does not encompass other possible interpretations. For instance, a connection part as in D3, see edge 38 in figures 2 and 7, can also be considered as being circumferential, i.e. located at the circumference of the container or the lid.

4.1.19 According to appellant I, the interpretation that in claim 1 the connection portion is located "at or near a circumference" is incorrect since the term "circumferential" should be interpreted in the light of the whole contested patent. The term has been used consistently (twenty times) to mean an annular connection portion such as in paragraph 42 and in claim 6 of the application as originally filed. This also fits in with the specific type of container assembly the contested patent is concerned with, as described in D13, said document being cited in paragraph 2 of the application as originally filed.

4.1.20 The board cannot share this view for the reasons given under points 4.1.16 to 4.1.17 above. As also put forward by appellant II, there appears to be no reason why the term "circumferential" used in claim 1 should be limited to only the meaning given in the description, as long as other possible meanings are not excluded and are considered by the skilled person to be technically feasible.