T 0195/12 - New requests in appeal

Key points

• In this opposition appeal, the Board turns to what "could have been filed earlier"  means, for requests filed for the first time with the Statement of grounds and to be admitted (or not) under Article 12(4) RPBA, and discusses some of the important earlier decisions (and distinguishes the case over them).
• In the cases underlying decisions T 23/10 and T 301/11, the patentee had to deal with an objection of added subject-matter during oral proceedings before the opposition division. The objection, however, was directed to a dependent claim, so that a way of overcoming it without affecting the independent claims, namely by deleting the dependent claim, was straightforward and did not require much further consideration. For this reason, withholding such an amended claim request in the proceedings before the opposition division precluded the patentee from having such a request subsequently considered by the board" 
•  "In the case underlying decision T 1165/10 (see reasons 1.2), the patentee was informed by the opposition division with its summons to oral proceedings that the requests on file lacked novelty or added subject-matter. The patentee, however, neither reacted in writing nor attended oral proceedings. " 

EPO T 0195/12 -  link


Reasons for the Decision

[] 2. Admission of the main request (i.e. auxiliary request 1 filed with the statement of grounds of appeal) and of auxiliary request 2 - Article 12(4) RPBA

2.1 Under Article 12(4) RPBA, the board has the power to hold inadmissible facts, evidence or requests that could have been presented in the opposition proceedings.

2.2 The claim requests under consideration were filed by the appellant with the statement of grounds of appeal and in the board's view they constitute a proper reaction to the opposition division's decision, which considered the subject-matter of the granted independent claims to lack novelty, following the conclusion that the feature "cardio-selective" was not limiting.

[] 2.3 The respondent argued against the admission of these requests on the basis that, in accordance with decisions T 23/10, T 872/09, T 1165/10 and T 301/11, they could and should have been filed during the opposition proceedings. As to this argument, the board notes that the circumstances that led to those decisions differ substantially from those of the present case, and that their conclusions cannot be extended to the appeal at issue.

In the cases underlying decisions T 23/10 and T 301/11, the patentee had to deal with an objection of added subject-matter during oral proceedings before the opposition division. The objection, however, was directed to a dependent claim, so that a way of overcoming it without affecting the independent claims, namely by deleting the dependent claim, was straightforward and did not require much further consideration. For this reason, withholding such an amended claim request in the proceedings before the opposition division precluded the patentee from having such a request subsequently considered by the board (see T 23/10, reasons 2.1 and 2.6, last paragraph; and T 301/11, reasons 2.2 and 2.5.1). By contrast, in the present case, the appellant had to overcome an objection of lack of novelty directed to the subject-matter of the independent claims, based on the question of how the feature "cardio-selective" was to be interpreted. Hence, an amendment to this objection in opposition proceedings was not straightforward and required careful consideration by the appellant.

In the case underlying decision T 872/09 (see reasons 2.1), the patentee withdrew an auxiliary request in opposition which undisputedly overcame the novelty objection of the opposition division that had led to the revocation of the patent, but filed the request once again in the appeal proceedings. This course of action prevented the opposition division from taking a reasoned and sufficiently comprehensive decision on the further objections concerning novelty and inventive step. In the case underlying decision T 1165/10 (see reasons 1.2), the patentee was informed by the opposition division with its summons to oral proceedings that the requests on file lacked novelty or added subject-matter. The patentee, however, neither reacted in writing nor attended oral proceedings. In the subsequent appeal proceedings, the patentee then filed amended requests which had no clear relationship with the requests in opposition proceedings and failed once more to attend oral proceedings, this time before the board of appeal. In the present case, the main request and auxiliary request 2 were not presented and withdrawn in opposition and subsequently re-filed in appeal, nor had the opposition division given a preliminary opinion on the issue of novelty of the patent as granted (i.e. the then main request) in advance of the oral proceedings.

The board therefore cannot conclude that the present case is similar to any of the situations underlying decisions T 23/10, T 301/11, T 872/09 or T 1165/10.

2.4 In view of the above considerations, the board decided not to hold the main request and auxiliary request 2 inadmissible and so decided to take them into account in these appeal proceedings.