T 1750/16 - Admissibility appeal

Key points

• In this opposition appeal, the patentee as appellant files a new main request and auxiliary request with the Statement of grounds. The appeal is admissible because the patentee discussed in the Statement of grounds why the new requests overcome the objections of the OD.
• However, the requests are not admitted because they should have been filed during the first instance proceedings. The patentee made the choice to not file requests responsive to the Article 84 and 123(2) objections of the opponents and the preliminary opinion of the opposition division. The  Board notes that the preliminary opinion was issued 8 months before the oral proceedings. Therefore, the requests can not be filed only in appeal. The new claims also constitute a fresh case

EPO T 1750/16 - link



Machine translation from the French original

Reasons for the decision

1. Admissibility of the appeal

1.1 The board is of the view that the appeal is admissible for the reasons set out below.

1.2 In the present case, the admissibility of the appeal depends on the conformity of the appeal brief with Article 108, third sentence, EPC, combined with Rule 99 (2) EPC. According to these provisions, in the statement of grounds of appeal, the applicant must indicate "the grounds on which the contested decision must be annulled or the extent to which it must be amended, as well as the facts and evidence on which the appeal is well-founded ".

The question whether the conditions of Article 108, third sentence, EPC and Rule 99 (2) EPC are satisfied must be decided on the basis of the statement of grounds of appeal and the grounds of the contested decision, in taking into account the amendments to the claims (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, IV.E.2.6.3a) with reference, inter alia, to decisions T 162/97 and T 2001 / 14).

1.3 The appellant filed a new main request and a new auxiliary request with her appeal brief. These are the only request presented. The appellant explained in point 1.4 of the statement of appeal that the new main request had been lodged in response to the objections of novelty raised in points 3.1 to 3.8 of the contested decision against the main request submitted in the course of proceedings before the Opposition Division. It then explains why the new main request addressed these novelty objections and refers in this regard to each of the prior art documents and to each of the relevant examples that were mentioned in the impugned decision. The applicant thus explained how it had remedied the reasons for the refusal of the decision of the Opposition Division. In these circumstances, the Board considers that the conditions of Article 108, third sentence, and Rule 99 (2) EPC have been fulfilled.

1.3.1 The facts of this case differ from those underlying T 2532/11. In the latter, the grounds of appeal contained no reference to the impugned decision, let alone an explanation as to why the impugned decision was wrong and should be set aside. In Case T 2532/11, the Board of Appeal thus found no direct link between the contested decision and the appeal notice (grounds 2.3.1 and 2.6.2). For the reasons set out in the previous paragraph, the Chamber finds in this case that a direct link has been established between the impugned decision and the grounds for the appeal.

1.3.2 The facts of this case also differ from those underlying decision T 1575/12 to which Respondent 02 also referred. In the latter, the only relevant application by the proprietor of the patent was that the contested decision be annulled and the patent be maintained as granted. The Opposition Division found that the subject-matter of claim 1 of the patent as granted did not comply with the requirements of Article 54 EPC. However, in the grounds of the appeal, the applicant had made no comment as to the novelty of the subject-matter of claim 1 of the patent as granted and the appeal was therefore declared inadmissible. The case differs significantly from the present case, in which the applications forming the basis of the contested decision are no longer maintained and a link has been established between the contested decision and the grounds of appeal.

2. Referral to the Enlarged Board of Appeal

2.1 The referral of a question by a Board to the Enlarged Board of Appeal is only admissible if a decision of the Enlarged Board is required to ensure the uniform application of the law or if a question of law of fundamental importance arises or both (Article 112 (1) EPC). In addition, the Enlarged Board of Appeal must answer the question asked in order to allow the Chamber to rule on its case; the Board must show that the question submitted is not only of theoretical importance for the oral proceedings (G 3/98, reasons 1.2.3 with reference to the Rules of Procedure of the Boards of Appeal).

2.2 The Respondent 02 asks that questions as to the admissibility of the appeal be submitted to the Enlarged Board of Appeal in order to obtain a uniform application of the law. In her written submissions, respondent 02 referred to decisions T 2532/11 and T 1575/12 as decisions in which, in her view, the board had decided, on facts similar to the facts of this case, that the appeal was inadmissible. During the oral proceedings, respondent 02 indicated that she had a whole list of cases that were the subject of a similar decision, but without giving specific details of the facts of these cases.

2.3 The Board considers that the facts of this case differ from those of the aforementioned decisions T 2532/11 and T 1575/12 for the reasons given in paragraphs 1.3.1 and 1.3.2 above. The Board applied the same legal principles, but the specific facts of the case before it resulted in a different result. This in no way constitutes a non-uniform application of the law.

Moreover, even if the Board had applied the law differently to a Board in a previous decision, that would not in itself constitute a non-uniform application of the law. The Rules of Procedure of the Boards of Appeal provide for a mechanism to prevent such a situation from being referred to the Enlarged Board of Appeal, namely that the Board of Appeal sets out in its decision the reasons for which it has departed from an earlier decision (Article 20 of the RPBA, see also T 154/04, reasons 2)).

In view of the foregoing, it is not necessary to take a decision of the Enlarged Board to ensure uniform application of the law.

Moreover, it is likely that a referral would be considered inadmissible because the Enlarged Board is not required to answer in order to reach a decision. Apart from the fact that the Board has no difficulty in applying the relevant provisions of the Convention, the question of the admissibility of the appeal could have been left unanswered in view of the fact that the appeal is dismissed (see CLB on this point). , IV.E.2.8).

3. Admissibility of the main request and the auxiliary request

3.1 The main request and the auxiliary request were lodged by the complainant with the appeal brief; these contain a set of amended claims, different from the claims as granted, which were the subject of the decision of the Opposition Division.

The applicant also filed a new experimental report in support of the discussion as to the inventive step of the new principal and subsidiary requests.

3.2 The admissibility of motions in the proceedings is subject to the discretion of the Board under Rule 12 (4) RPCR, which is to "consider as irreceivable the facts, evidence and requests that may have been produced or were not admitted during the proceedings at first instance ". This discretion is intended to ensure fair and reliable conduct of judicial proceedings (T 23/10, Reasons 2.4, and T 936/09, Reasons 4).

This discretionary power of the Board must be exercised equitably, namely that all the relevant factors that arise in the particular circumstances of the case must be examined (Case Law of the European Patent Office's Boards of Appeal, 8th edition, IV.C.1.3.3). The question whether the applicant's applications filed with the appeal brief are admitted in the appeal proceedings is to determine whether the applicant was in a position to file those applications earlier and whether the applicant could be expected to in the circumstances of cash.

3.3 The impugned decision was based on a main request, the patent as granted, and a subsidiary request filed on 18 March 2016 which added in claim 1 characteristics (i), (ii) and (iii) to less a non-volatile, non-amino silicone ". In the contested decision, the Opposition Division considered that the subject-matter of claim 1 of the main request was not new in relation to D1-D3, D17 and D18, and that the new elements added to claim 1 of the auxiliary request were unclear under Article 84 EPC and did not meet the requirements of Article 123 (2) EPC.

The requests lodged with the appeal brief sought to overcome those objections.In Claim 1, features (i) through (iii) of the main request and the auxiliary request filed in the opposition phase were deleted in order to overcome the objections which had been mentioned in the Opposition Division's Articles 84 and 123 (2) EPC. Further, in claim 1 of the main request, the characteristic "selected from C8-C20 alkyl betaines" has been added to the "at least one amphoteric or zwitterionic surfactant" feature to establish novelty. In the auxiliary request, a further amendment was introduced in claim 1 whereby in the feature "at least a first cationic polymer selected from cationic polysaccharides", the term "cationic polysaccharides" was replaced by "cationic guar gums". ".

3.4 The question arises as to whether the appellant could and should have made those amendments earlier. It is therefore important to consider the sequence of events in the proceedings before the Opposition Division.

3.4.1 The objection as to the novelty of the patent as granted was first raised in the opposition notices. The three opponents argued that the subject matter of claim 1 of the patent as granted lacked novelty with respect to D1 and D2. Opponent 01 also argued lack of novelty over D3 and opponent 02 over D4-D7.

3.4.2 The patentee filed a subsidiary request on 14 October 2014. In the said auxiliary request, characteristics (i), (ii) and (iii) were added to the characteristic "at least one non-volatile non-volatile silicone". ".

3.4.3 In its Preliminary Opinion of 10 August 2015, the Opposition Division found that the subject matter of claim 1 of the patent as granted was not new in relation to D1-D3 and added D17 and D18 as new destructive novelty documents. In addition, it considered that the subject-matter of claim 1 of the auxiliary request was new, but that the features added (i) to (iii) were not in conformity with Article 84 EPC and resulted in the object of claim 1 was contrary to Article 123 (2) EPC.

3.4.4 On March 18, 2016, the patentee filed a new auxiliary request in which it had modified only feature (iii), this amendment specifically responding to an objection of the Opposition Division under Article 123 (2) EPC. The amended application did not, however, provide any answer to the objections raised by the Opposition Division under Articles 84 and 123 (2) EPC with regard to (i) which remained unchanged. In the latter case, the objection to Article 84 EPC related to the fact that the viscosity parameter of characteristic (i) was unclear because of the lack of data on the viscosity measurement method and the objection to Article 123 (2) EPC concerned the generalization of a feature specifically related only to a non-volatile, non-volatile silicone.

3.4.5 During the oral proceedings, the Opposition Division concluded that the subject-matter of claim 1 of the patent as granted was not new and that the subject-matter of claim 1 of the auxiliary request did not comply with the requirements of Articles 84 and 123 (2) EPC because of characteristics (i) and (iii). According to the minutes of the oral proceedings, the owner did not wish to file additional applications.

3.4.6 Thus, all the grounds on which the Opposition Division's decision was based had all already been raised, either in the notices of opposition or in particular in the preliminary opinion of the Opposition Division. The latter had been issued more than eight months before the oral proceedings were held. However, the first time that the applicant addressed these issues exhaustively with new amended claims was when the appeal was lodged. In these circumstances, it is clear to the Board that the appellant could and should have presented the new motions, which were only presented with the appeal brief, during the proceedings before the Opposition Division.

This conclusion is further supported by the fact that new applications filed during the appeal phase constitute a new case. The features that have been added to claim 1 of the main and subsidiary claims to establish novelty have been taken from dependent claims 4 and 6 respectively. However, rather than combining independent claim 1 with all of these dependent claims, only certain The characteristics of claims 4 and 6 were selected and combined with claim 1. Respondent 01 pointed out that the issues relating to the patentability of the dependent claims that had been examined during the opposition proceedings did not include those currently relevant in view of the new applications filed on appeal.The Chamber notes that the applicant has not made any contrary observations on this point.

The new experimental report filed by the applicant with the appeal brief is a comparative test to demonstrate that the characteristic "selected from C8-C20 alkyl betaines" which has been added in claim 1 to the "at least one" characteristic. amphoteric or zwitterionic surfactant "was at the origin of a technical effect. This report is different and does not relate to the experimental reports that were previously filed in the opposition phase. The tabling of this new experimental report is further evidence that the House is now seized of a new case. Admitting newly filed motions in the appeal proceedings would be contrary to the purpose of the inter partes appeal procedure which is to make a final review of the impugned decision (G 9/91 and G 10/91).

3.4.7 The applicant's argument that the case should in any case be referred to the Opposition Division, since the latter has in any event not examined the question of inventive step, is not otherwise not convincing. If the Opposition Division did not consider the inventive step, it was only because the applicant did not give it the opportunity, since it did not submit a request to overcome the objections of the Opposition Division, in this case concerning the novelty or Articles 84 and 123 (2) EPC of the applications discussed by the Opposition Division. The Board of Appeal is of the opinion that the applicant can not benefit from such an attitude.

3.4.8 The applicant also pointed out that it had effectively defended its position during the proceedings before the Opposition Division. In addition, it has undertaken considerable work to obtain additional experimental reports and, in these circumstances, the filing of new applications with grounds for appeal should be considered admissible. The Board notes in this respect that a party may choose how it defends its case before the Opposition Division, but that these choices also have an impact on the proceedings before the Boards of Appeal. Thus, where the patentee chooses not to file amended claims to circumvent the objections of the opponents and the Opposition Division, and files them only in the course of the appeal proceedings, he runs the risk that requests are not allowed.

3.5 In view of the foregoing, the Board decides to consider the main request and the auxiliary request as inadmissible in the appeal proceedings. As there are no requests in the file, the appeal must be dismissed.

Device

For these reasons, it is decided as follows

1. The appeal is dismissed.

2. The request for referral to the Enlarged Board of Appeal is rejected.