T 0754/16 - Article 114(2) not for amended claims

Key points

• The OD did not admit AR's filed during the oral proceedings. The Board concludes that this is a procedural violation. 
• " The opposition division assumed that it had a discretion not to admit these requests on a prima facie basis and referred to Article 114(2) and Rule 116 EPC. This presupposes, in the first place, that the requests were late filed, which is however not the case." 
• " Under Rule 116(2) EPC, requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. This was clearly not the case. Neither does Article 114(2) EPC provide a basis for disregarding these requests, since, firstly, it does not apply to late filed requests in the form of amended claims, but only to late filed facts and arguments (see Bühler in Singer/Stauder, Europäisches Patentübereinkommen, 7. Auflage 2016, Artikel 114, point 52). Secondly, the auxiliary requests were filed in due time, as a direct and immediate response to the opposition division's changed opinion and since the proprietor had no earlier opportunity to react thereto." 
• As a comment, the Board refers to "only to late filed facts and arguments" but Art. 114(2) states that the EPO may disregards "facts or evidence".

EPO T 0754/16 -  link

Reasons for the Decision

1. Remittal of the case to the opposition division based on a substantial procedural violation

1.1 The appellant requested that the case be remitted to the opposition division because it had committed a substantial procedural violation by not not giving the opportunity to comment on the patentability of auxiliary requests 1 to 7 and not admitting auxiliary requests 8 and 9 into the proceedings based on a prima facie examination.

1.2 Right to be heard as regards auxiliary requests 1-7

1.2.1 The Board notes that the minutes of the oral proceedings before the opposition division mention the following:

"7.5. The proceedings were resumed at 18:00 and Ch announced the conclusion of OD that the MR does not meet the requirements of Article 56-100(a) EPC because the claims lack inventive step. A similar reasoning applies to AR1-AR7.
7.6. The partied had no further comments and P asked for a break to file a new AR."

The opposition division mentions further in its decision:

"3. Since Auxiliary Requests 1-7 have been limited by features already present in D1, they do not seem to provide the claims with inventive step for the same reasons as the Main Request. Therefore, it is considered that Auxiliary Requests 1-7 do not comply with the inventive step requirements of Article 56 EPC.".

It also mentions in the decision the following:

"1. P has not provided substantive arguments in the letter of 22 April 2014 with respect to the inventive step of auxiliary requests 1-7."

1.2.2 It appears therefore explicitly from the minutes that auxiliary requests 1-7 have not been discussed extensively but have indeed been examined as to inventive step during oral proceedings before the opposition division. The opposition division considered that the outcome of the discussion on inventive step for all auxiliary requests 1-7 was the same as for the main request.

More importantly, it is clear from the minutes of the oral proceedings that the appellant did not contest the conclusions of the opposition division as to inventive step of the auxiliary requests 1-7. After the opposition division announced its view, which was not final at this stage, the appellant had, at this moment, an opportunity to provide comments or additional arguments as to inventive step of the auxiliary requests, an opportunity he did not take advantage of. Instead, he only asked for a break in order to file new auxiliary requests.

It appears furthermore from the file hat the patentee did neither provide any comment as to novelty or inventive step regarding auxiliary requests 1-7 in the written opposition proceedings. Only a basis for the amendments brought to these requests was given in the letter accompanying the filing of said auxiliary requests 1-7.

1.2.3 Consequently, the Board is of the view that the appellant's right to be heard in this regard has been met.

1.3 Right to be heard as regards the admission of auxiliary requests 8 and 9 into the opposition proceedings

1.3.1 The appellant filed auxiliary requests 8 and 9 during the oral proceedings before the opposition division, after the opposition division had concluded to the absence of inventive step of the main request and auxiliary requests 1-7. Auxiliary requests 8 and 9 were not admitted in the proceedings by the opposition division because they were considered to be prima facie not allowable.

In its decision, the opposition division mentioned that "in the light of the substance of the new requests, the opposition division notices that indeed, potential issues of added subject-matter and clarity would have to be discussed before assessing inventive step and eventually, compliance with Article 100(b) EPC" and "that at first sight, none of the auxiliary requests appeared to overcome the inventive step objection raised against the previous requests".

The opposition division assumed that it had a discretion not to admit these requests on a prima facie basis and referred to Article 114(2) and Rule 116 EPC. This presupposes, in the first place, that the requests were late filed, which is however not the case.

1.3.2 The opposition division gave in its summons to oral proceedings a positive preliminary opinion as to the main request and auxiliary requests 1-7 as regards Articles 100(b), 54 and 56 EPC. It then reverted its opinion during oral proceedings and came to the conclusion that the main request, as well as auxiliary requests 1-7 lacked inventive step.

Thus, filing auxiliary requests 8 and 9 was a direct response to the opposition division's change of opinion. Under Rule 116(2) EPC, requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. This was clearly not the case. Neither does Article 114(2) EPC provide a basis for disregarding these requests, since, firstly, it does not apply to late filed requests in the form of amended claims, but only to late filed facts and arguments (see Bühler in Singer/Stauder, Europäisches Patentübereinkommen, 7. Auflage 2016, Artikel 114, point 52). Secondly, the auxiliary requests were filed in due time, as a direct and immediate response to the opposition division's changed opinion and since the proprietor had no earlier opportunity to react thereto.

The situation is comparable to the one underlying decision T 273/04. In this case, the opposition division came to a completely new conclusion during the oral proceedings. Hence, the patent proprietor was faced with a new situation to which he had the right to react, in particular by amending his requests. Such requests could not be considered to be late, since they were caused by the new and unexpected procedural development of the case to which the patent proprietor had no previous opportunity to react. According to T 273/04 a prima facie examination was only allowed if the requests are filed too late. Since this was not the case, a refusal based on a prima facie examination was not justified.

Consequently, by not admitting auxiliary requests 8 and 9, the opposition division committed a procedural violation.

1.3.3 However, this procedural violation cannot justify a remittal. According to Article 11 RPBA, the Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise. In the present case, the fundamental deficiencies only concern auxiliary requests 8 and 9, but not the higher ranking requests (including the the request for the patent as granted) which are still maintained by the appellant. A remittal based on the auxiliary requests, including auxiliary requests 1 to 7, is not justified because there is no link with the procedural violation.

The procedural violation does not justify the reimbursement of the appeal fee either. Under Rule 103(1)(a) EPC, the appeal fee shall be reimbursed if such reimbursement is equitable. For the reimbursement of the appeal fee to be equitable, there must be a causal link between the substantive procedural violation and the filing of the appeal (see Case Law of the Boards of Appeal, 8**(th) edition 2016, IV.E.8.6). Since the appellant still pursues his main request, as well as auxiliary request 1 to 7, the appellant would have had to file the appeal in any case and it was not the procedural violation which forced him to file the appeal. The appellant submitted that he might not have filed an appeal if the auxiliary requests had been admitted. However, in order to decide whether the reimbursement of the appeal fee is equitable, the procedural situation as it stands has to be looked at. The appellant requests that the decision on the main request as well as auxiliary requests 1 to 7 be reviewed by the Board of Appeal. For this, he had to file the appeal, irrespective of the decision on auxiliary requests 8 and 9.

1.3.4 In view of the above, the Board notes that the opposition division committed the procedural violation, but it does not justify a remittal to the opposition division or a refund of the appeal fee.