T 2193/14 - Not attacking granted dependent claims

Key points

• The Board does not admit prior art documents submitted with the Statement of grounds of the opponent, because they could have been filed earlier. In particular, the patent was maintained by the OD on the basis of the third Auxiliary Request, which was based on dependent claims 2 and 4. The patent had been granted with only four claims, but  had attacked only claim 1. 
• "  Consequently, it was to be expected that any amendment by the Patentee to granted claim 1 would be based on these claims, as actually confirmed by the Patentee's auxiliary requests II and III filed one month before the date set for the oral proceedings before the Opposition Division" 
• " [C]onsidering that the Appellant's conduct amounts to substantiating in appeal proceedings an attack on inventive step in respect of the dependent claims which could have already been substantiated with the notice of opposition, and further considering that the appeal proceedings is by its very nature less investigative than the opposition procedure (see G 9/91, point 18 of the reasons), the Board takes the view that it is justified in holding inadmissible documents A6 to A10." 

EPO T 2193/14 - link

Reasons for the Decision

[...] 4. The Board decided to exercise its discretion pursuant to Article 12(4) RPBA (Rules of Procedure of the Boards of Appeal) not to admit to the appeal proceedings documents A6 to A10, submitted with the statement of grounds of appeal. As discussed at the oral proceedings, the Board considered that these documents should and could have been submitted already before the Opposition Division. The Appellant argued that these documents were filed in response to the findings of the Opposition Division that an inventive step was to be acknowledged in view of features of the dependent claims that were added to claim 1 as granted.

However, the Appellant-Opponent did not provide in its notice of opposition any line of argument on inventive step against the features in granted dependent claims 2 to 4, on which the present main request of the Patentee is based. Nor was another line of argument based on different legal grounds provided against these dependent claims in the notice of opposition. Again, in its response (dated 20 February 2014) to the preliminary opinion of the Opposition division (annexed to the summons to the oral proceedings), the Opponent failed to provide any arguments against said dependent claims, let alone on inventive step based on the skilled person's common general knowledge. Only during oral proceedings before the Opposition Division did the Opponent submit arguments against inventive step of claim 1 of auxiliary request III (identical to present main request), which was based on granted dependent claims 2 and 4. However, again no prior art documents proving its allegations concerning the skilled person's common general knowledge were submitted.

Failure to provide earlier any arguments (and evidence) on inventive step against granted dependent claims 2 to 4 is particularly significant in the present case, given that there were only three granted dependent claims in EP-B, each claim corresponding to a different major embodiment of the invention. Consequently, it was to be expected that any amendment by the Patentee to granted claim 1 would be based on these claims, as actually confirmed by the Patentee's auxiliary requests II and III filed one month before the date set for the oral proceedings before the Opposition Division (i.e. filed on 20 February 2014). Therefore, the Opponent could not be surprised by the Patentee's filing of a new auxiliary request III (wherein one alternative included in previous auxiliary request III was deleted) during oral proceedings before the Opposition Division, no new subject-matter having been added as compared to previous auxiliary request III.

Under these circumstances, considering that it is already questionable whether admitting A6 to A10 during opposition proceedings would be compatible with the legal and factual framework within which the substantive examination of the opposition in principle should be conducted (see G 9/91), as in the absence of any arguments in the notice of opposition it is doubtful whether the validity of the dependent claims was indeed questioned simply by ticking the box in EPO form 2300 that the patent was opposed as a whole, further considering that the Appellant's conduct amounts to substantiating in appeal proceedings an attack on inventive step in respect of the dependent claims which could have already been substantiated with the notice of opposition, and further considering that the appeal proceedings is by its very nature less investigative than the opposition procedure (see G 9/91, point 18 of the reasons), the Board takes the view that it is justified in holding inadmissible documents A6 to A10.

Order

For these reasons it is decided that:

The appeal is dismissed.