T 2077/13 - Late unsubstantiated request

Key points

• The proprietor filed a new request in the written submission, together with an indication of the basis. The request correspondend to an auxiliary request already filed in the opposition proceedings and dealt with in the contested decision. The proprietor did not give any reasoning as to why the respective findings in the decision under appeal should be reversed or amended.
• The Board considers the request to be not substantiated. The argument that the opponent could not be surprised by the request, because it had been filed before, was not accepted.
• " However, filing this request that was previously known to the parties at a late stage of the appeal proceedings does not exempt the appellant from its obligation to provide at least some substantiation with regard to the allowability of this request, in particular since this request was found not allowable by the opposition division. "

EP T 2077/13 -  link

Reasons for the Decision

2.1 Auxiliary request 1

2.1.1 Auxiliary request 1 was filed as auxiliary request 2 with the appellant's letter dated 14 February 2017, in response to the summons to oral proceedings pursuant to Rule 115(1) EPC. It corresponds to auxiliary request 2 already filed in opposition proceedings and dealt with in the contested decision. According to the contested decision, the subject-matter of this request was still lacking an inventive step, since all the parameters of the polymers (A) and (B) according to claim 1 remained within the generic teaching of D3 so that the skilled person would be prompted to choose them.

In its letter dated 14 February 2017, the applicant only stated that claim 1 of auxiliary request 2 was a combination of claims 1 to 3 as granted. The letter contained neither a justification for the late filing of this request more than three years after the statement of grounds of appeal received on 28 September 2013, nor any reasoning as to why the respective findings in the decision under appeal should be reversed or amended.

The present auxiliary request 1 is therefore to be regarded as belated and as not being substantiated.

2.1.2 Under Article 13(1) RPBA, the boards have discretion to admit and consider any amendment to a party's case after it has filed its grounds of appeal or reply. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy. In order to be admitted, amended claims filed only shortly before or during the oral proceedings must in general be prima facie allowable in the sense that it is immediately apparent to the board that they overcome all outstanding issues without raising new ones (see Case Law of the Boards of Appeal (CL), 8th edition, IV.E.4.1.3, 4.2.2). Furthermore, it should be considered whether there is a proper justification for its late filing so as to forestall procedural abuse.| |

2.1.3 Present auxiliary request 1 has been filed without any substantiation at a rather late stage of the appeal proceedings, in particular without justifying its late filing and without any reasoning as to why the contested decision was wrong in denying an inventive step. Such behaviour of the appellant does not serve the purpose of procedural economy and is at odds with the requirements of Article 12(2) RPBA, according to which the statement of grounds of appeal and the reply shall contain a party's complete case, setting out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld. In case of a patent proprietor appealing against a decision of the department of first instance, the statement of grounds of appeal should also include all requests (see CL, IV.E.4.2.1).

2.1.4 The appellant argued that auxiliary request 1 had already been filed as auxiliary request 2 in opposition proceedings and was no surprise. However, filing this request that was previously known to the parties at a late stage of the appeal proceedings does not exempt the appellant from its obligation to provide at least some substantiation with regard to the allowability of this request, in particular since this request was found not allowable by the opposition division. 

Also the appellant's assertion that the technical discussion remained the same as for the main request does not relieve the appellant patentee from its obligation to provide a complete case with its grounds of appeal by filing and substantiating at least those requests for which the contested decision allegedly was wrong, as intended by the provisions of Article 12(2) RPBA.

2.1.5 Thus, in the absence of any justification for the filing of present auxiliary request 1 at such a late stage of the appeal proceedings, and also in view of the fact that the request was neither substantiated nor - for lack of reasoned arguments as to why the contested decision was wrong in respect of this request - prima facie allowable, the board exercised its discretion under Article 13(1) RPBA not to admit auxiliary request 1 into the appeal proceedings.| |