T 0115/13 - Review of first instance

Key points

• The Board does  not admit AR-2 which was filed with the Statement of grounds in this opposition appeal. Patentee submitted that the request was in response to document that opponent had filed very late during the first instance proceedings.
• The Board: "opponent 1's very late-filed documents had in fact not been used at all in the reasoning for the opposition division's decision. The board fails to see how a request which is filed by the appellant with the statement of grounds of appeal as a reaction to documents filed by the other party but which were not found relevant for the appealed decision can serve as a means to redress the appealed decision. Hence, the board makes use of its discretionary power under Article 12(4) RPBA and decides not to admit the second auxiliary request into the proceedings." 
• Hence, the Board does not at all consider whether the features added in AR-2 would perhaps also be prima facie successful in overcoming the inventive step objection against the Main Request.
• The Board also points out that: "Appeal proceedings are intended to review the correctness of first-instance decisions, not to continue examination by other means." 
• Of course, this point will be emphasized in the upcoming new RPBA (based on the consultation about the draft). But how strictly can this be applied to a Statement of grounds filed in 2013 (and hence to first instance proceedings even earlier)?

EPO T 0115/13 - link

7. Second auxiliary request - admissibility

7.1 Appeal proceedings are intended to review the correctness of first-instance decisions, not to continue examination by other means. Thus, pursuant to Article 12(4) RPBA, it is at the discretion of the boards of appeal to admit requests which could have been presented in the proceedings before the examining or opposition division, account being taken of the circumstances of the particular case and of the parties' arguments.

7.2 The second auxiliary request was filed as the first auxiliary request with the statement of grounds of appeal. In this request, claim 1 contains amendments that had not been submitted in any of the requests filed during the first-instance proceedings.

7.3 According to the appellant, the amendments in the first auxiliary request were made as a response to opponent 1's very late-filed documents D26 to D30. The opponents objected to this request's admission on the ground that it introduced subject-matter which had never been examined by the opposition division and its admission might therefore require remittal of the case to the department of first instance.

7.4 The board notes that opponent 1's very late-filed documents had in fact not been used at all in the reasoning for the opposition division's decision. The board fails to see how a request which is filed by the appellant with the statement of grounds of appeal as a reaction to documents filed by the other party but which were not found relevant for the appealed decision can serve as a means to redress the appealed decision. Hence, the board makes use of its discretionary power under Article 12(4) RPBA and decides not to admit the second auxiliary request into the proceedings.