T 0128/14 - Respondent needs to respond

Key points

• If an opponent appeals, the patent proprietor needs to submit with its Statement of response any auxiliary requests that are responsive to opponent's arguments why the impugned decision is incorrect. The patent proprietor can not file such requests after the preliminary opinion of the Board, even if (as in the present decision), that is "the first time that an indication [comes] from an organ of the European Patent Office that there might be deficiencies with the patent". 
• The Board finds that argument of patentee for admissibility  not convincing, and comments that " it does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant [opponent] in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent [patentee] to formulate requests to address all the arguments put forward, in particular insofar as the appellant [opponent] considered the conclusions of the opposition division flawed.

6. Fourth to sixth auxiliary requests - admittance

These requests were filed after issue of the communication of the Board [annexed with the Summons]. The initially filed versions contained an error which was noted by the Board and resulted in a [second] communication, leading to corrected versions being submitted.

All of these requests present various combinations of subject matter resulting in part from restrictions of existing features (fourth and fifth auxiliary requests) or additionally specifying the nature of the contents of the packaged product (sixth auxiliary request) - see section VIII, above. This gives rise to questions concerning the basis for the amendments made (Article 123(2) EPC).

In the letter filing these requests explanations as to the rationale and the issues which these were intended to address were provided. These explanations however referred in a large part on the submissions made in the response to the statement of grounds of appeal and a subsequent letter, prior to issue of the summons by the Board. Crucially the respondent did not explain whether or in what manner the amendments resulting in the fourth to sixth auxiliary requests were directed to addressing the issues identified as significant by the Board in its communication [annexed with the Summons. This in turn leads to the conclusion that the amendments made could in fact have been filed earlier in the appeal proceedings.

The argument of the respondent that the communication of the Board was the first time that an indication came from an organ of the European Patent Office that there might be deficiencies with the patent is not convincing and does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent to formulate requests to address all the arguments put forward, in particular insofar as the appellant considered the conclusions of the opposition division flawed.

In addition it is not immediately apparent for the Board how these requests would address all the pending issues, in particular with respect to inventive step.

Under these circumstances the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA by not admitting the fourth to sixth auxiliary requests to the procedure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.