T 0875/14 - Attacking all claims

Key points

• In this opposition case, the Patent proprietor restricted in the fifth auxiliary request to some of the granted claims. These had not been attacked in the Notice of opposition. A later attack against these claims is not admitted.
• " Therefore, the subject-matter of the operative set of claims corresponds to that of granted claims, which could and should have been objected to from the beginning of the first instance proceedings and during the written phase of the appeal proceedings, which was not done," 
• In particular, each of the three independent product claims as granted should have been attacked. " The fact that in the present case the granted patent contained a rather large number of independent claims cannot justify to offend the stipulations of Article 12(2) RPBA according to which the statement of grounds of appeal should contain the appellant's complete case." 

EPO T 0875/14 -  link

5.2 D4 as closest prior art - Admittance

5.2.1 The second line of argumentation starting from D4 as closest prior art was put forward by the appellant for the first time during the oral proceedings before the Board. Therefore, it represents an amendment to a party's case pursuant to Article 13(1) RPBA and its admission to the proceedings is subject to the Board's discretion (Article 13(1) RPBA) and underlies the additional stipulations of Article 13(3) RPBA.

5.2.2 It was not disputed by the appellant that operative claims 1-3 are identical to claims 17, 19 and 26 of the main request i.e. of the granted patent and that operative claims 4 to 9 correspond to granted claims 29 to 34 (with the corresponding dependency). Therefore, the subject-matter of the operative set of claims corresponds to that of granted claims, which could and should have been objected to from the beginning of the first instance proceedings and during the written phase of the appeal proceedings, which was not done, as explicitly agreed upon by the appellant during the oral proceedings before the Board.

5.2.3 It was also confirmed by the appellant during the oral proceedings before the Board that no inventive step objection starting from D4 as closest prior art had been made before the oral proceedings before the Board.

5.2.4 Therefore, the submission of the objection of lack of inventive starting from D4 as closest prior art put forward by the appellant during the oral proceedings before the Board not only contravenes the stipulations of Article 12(1)b) and 12(2) RPBA but also cannot be held to be justified by an unexpected development of the case. The fact that in the present case the granted patent contained a rather large number of independent claims cannot justify to offend the stipulations of Article 12(2) RPBA according to which the statement of grounds of appeal should contain the appellant's complete case. In addition, the respondent would be confronted with a new objection, which he could not reasonably be expected to deal with without adjournment of the oral proceedings.

5.2.5 In view of the above, the objection of lack of an inventive step starting from D4 as closest prior art is not admitted into the proceedings (Article 13(1) and (3) RPBA).

5.3 For those reasons, the appellant's objections pursuant to Article 56 EPC raised against operative claims 1-3 are not successful. The same is valid regarding operative claims 4-9, which are dependent on any of claims 1 to 3.

Order