T 0661/14 - Former Examiner speaks

Key points

• " Since three authorised professional representatives were present at appellant 2's [opponent's]  side during the oral proceedings, the Board decided to authorise the [additional] accompanying person [for the opponent] to address the Board under their supervision." 
• From the file, the person was a former patent examiner with EPO and joined the patent attorney firm in July 2017 (straight from the EPO, it seems). The oral proceeding were held on 13 October 2017. 
• The Board disagrees with opponents arguments, considers the Main Requests allowable and remits the case with an order to maintain the patent in amended form accordingly.  

EPO T 0661/14 -  link

Reasons for the Decision

1. Accompanying person - right to speak on legal issues

Appellant 1 [proprietor] holds the view that accompanying persons at oral proceedings who are not qualified patent attorneys can only be allowed by the Board to speak on technical issues, and not to make submissions on legal issues. Hence, for appellant 1 the person accompanying appellant 2's [opponent's] authorised representative(s) at the oral proceedings should not be allowed to make submissions on legal issues.

The Board disagrees.

There is no reason, when dealing with the question whether an accompanying person may make oral submissions before the the Board, to make a distinction between legal and technical issues, provided that these submissions are made under the control and supervision of an authorised professional representative. In this respect the Board refers to the Case Law of the Boards of Appeal, 8th Edition 2016, III.R.5.1. Since three authorised professional representatives were present at appellant 2's side during the oral proceedings, the Board decided to authorise the accompanying person to address the Board under their supervision.

2. Main request - admissibility

2.1 Appellant 2 argues that the main request should not be admitted in application of Article 12(4) RPBA because the issue of the lack of compliance of granted claim 9 with the requirements of Article 123(2) EPC was raised during opposition, and as a consequence appellant 1 should have deleted this claim earlier, and not shortly before oral proceedings before the Board.

The Board disagrees. The fact that this objection was raised during opposition is not a reason for concluding that the present main request should have been filed earlier. This is particularly true because the opposition division decided on this particular issue (see point 1.3 of the grounds of the appealed decision) in favour of appellant 1, such that no need to remove claim 9 became apparent.

2.2 Appellant 2 also argues that, as only one of the objections raised to the main request has been dealt with by this amendment, the request is not clearly allowable, and should therefore not be admitted in application of Article 13(3) RPBA.

The Board disagrees again. Clear allowability is only one of the possible criteria to be used when deciding on the admissibility of claims submitted after a summons to oral proceedings has been issued.

In the present case the Board notes that the amendment made to the main request decreases the complexity of the discussion, as it clearly overcomes one of the objections raised to the previous main request, without introducing new issues, and therefore decides to admit it pursuant to Article 13(3) RPBA.

[...]

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain the patent in amended form in the following version:

claims 1 to 18 according to the main request filed by letter dated 13 September 2017,