T 2602/12 - Full case should be in notice of opposition

Key points

• The opponent raised a new inventive step attack during the oral proceedings against an embodiment previously not attacked for lack of inventive step. The Board does not admit this argument under Article 13(1) RPBA.
• The Board:" Article 99(1) and Rule 76(c) EPC require that as a general rule an opponent's case against an opposed patent should be set out fully and completely in the notice of opposition, and should not be presented and developed piecemeal. " 

EPO T 2602/12 -  link

5. Inventive step

5.1 In the oral proceedings before the Board, the Respondent [opponent] objected for the first time in opposition-appeal proceedings to the inventiveness of the subject-matter of the present main request, namely to the embodiment of the method comprising process step (i) according to granted claim 1. In the communication of the Board accompanying the summons to oral proceedings (see point VI above), the Board expressly indicated that the inventiveness of the method comprising process step (i) had not been contested.

5.2 Article 99(1) and Rule 76(c) EPC require that as a general rule an opponent's case against an opposed patent should be set out fully and completely in the notice of opposition, and should not be presented and developed piecemeal. In addition, according to Article 12(2) RPBA, the statement of grounds of appeal and reply shall contain a party's complete case and should specify expressly all the facts, arguments and evidence relied on. Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion (Article 13(1) RPBA).

5.3 In the present case, prior to the oral proceedings before the Board, the Respondent had never raised any objection under Article 56 EPC to the subject-matter of the present main request, either before the Opposition Division or before the Board, said subject-matter being an embodiment of granted claim 1 and being comprised in claim 1 of every request ever on file in this case. Allowing the Respondent to raise an inventive step argument against an embodiment of the method never previously attacked under Article 56 EPC at this late stage of the proceedings would raise issues which the Board and the Appellant could not reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA).

5.4 As reason for this late submission, the Respondent argued that until the oral proceedings before the Board, it had been sufficient to attack the methods comprising process steps (ii) or (iii) in order to destroy the patent.

However, together with its statement of grounds of appeal (see point V above), the Appellant filed inter alia auxiliary requests 4 to 7, wherein the subject-matter of claim 1 of each request was restricted to a method comprising process step (i) according to granted claim 1, such that at the latest at this stage of the proceedings, the Respondent could, and should have attacked this subject-matter under Article 56 EPC, had it so wished.

5.5 Thus, under the present circumstances, the Board exercises its discretion not to admit the late filed argument into the appeal proceedings.

5.6 In view of the prior art cited in these proceedings, the Board sees no reason to raise its own objections under Article 114(1) EPC against the inventive step of the claimed subject-matter, such that the patent may be maintained in this amended form.