T 1120/12 - In time but not enough explanations

Key points

• In this opposition appeal case, the Board has to decide on admissibility of a request filed with the Statement of response in appeal (under Article 12(4) RPBA). 
• The Board considers a clear case wherein the request did not need to be filed before the OD. "Following a preliminary opinion of the opposition division that the patent as granted fulfilled the requirements of the EPC, the opposition had been rejected during the oral proceedings before the opposition division without any new aspects arising. Therefore, the board cannot identify a situation during the opposition proceedings in which the filing of an auxiliary request by the respondent was procedurally required to such extent that this omission should be detrimental to the respondent at the appeal stage." 
• However, the request is not admitted because it was filed without sufficient substantiation. In particular, basis was indicated A83 was discussed, but inventive step not. Therefore, the request is not admitted.

EPO T 1120/12 -  link 

Reasons for the Decision
[...] 29. The subject-matter of claim 1 of auxiliary requests 1 and 2 thus lacks an inventive step.

Auxiliary request 4 - admission into the proceedings (Article 12(2), (4) RPBA)

30. According to Article 12(4) RPBA, everything presented by the parties under Article 12(1) RPBA, in particular in the reply to the grounds of appeal (cf. Article 12(1)(b) RPBA), shall be taken into account by the board if and to the extent it relates to the case under appeal and meets the requirements of Article 12(2) RPBA, the board having the power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings. Article 12(2) RPBA inter alia provides that the reply to the statement of grounds of appeal shall contain a party's complete case, set out clearly and concisely why it is requested that the decision under appeal be upheld and should specify expressly all the facts, arguments and evidence relied on.

31. Claim 1 of auxiliary request is for a pharmaceutical composition comprising the Abeta1-7 fragment conjugate and an adjuvant. The request, in relation to which the appellant had requested that it not be admitted into the proceedings, was filed with the reply to the appellant's statement of grounds of appeal.

32. The board considers the appellant's argument that no reasons were given why this claim request was only filed in appeal, which alludes to the aspect that this auxiliary request not only could, but also should have already been filed during opposition proceedings, of little weight in the circumstances of the present case. Following a preliminary opinion of the opposition division that the patent as granted fulfilled the requirements of the EPC, the opposition had been rejected during the oral proceedings before the opposition division without any new aspects arising. Therefore, the board cannot identify a situation during the opposition proceedings in which the filing of an auxiliary request by the respondent was procedurally required to such extent that this omission should be detrimental to the respondent at the appeal stage. The respondent's presentation of this auxiliary request at the appeal stage only is therefore not procedurally objectionable.

33. However, when filing this claim request together with the reply to the statement of grounds of appeal, the respondent has not explained how this request would remedy all issues addressed by the appellant in relation to the patent as granted. In particular, claim 1 of auxiliary request 4 is based on granted claims 13 and 15 and the latter claims had been objected to by the appellant in the notice of opposition for lack of inventive step. In such a situation, the mere information in the respondent's reply to the statement of grounds of appeal as to where in the application as filed the basis for the claimed subject-matter can be found, and addressing the topic of sufficiency of disclosure, but omitting any explanation as to why the claimed subject-matter of this auxiliary claim request involved an inventive step did not, in the board's view, represent a sufficient substantiation of this claim request within the meaning of Article 12(2) RPBA.

34. In view of these considerations the board did not admit auxiliary request 4 into the proceedings in accordance with Article 12(4) RPBA.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.