T 2383/15 - Correct minor issues before OD

Key points

• In this opposition appeal, the Board does not admit AR4. AR4 corresponds to AR4 before the OD with a further amendment.
• " The amendment was made in order to overcome the objection of lack of clarity" as maintained by the OD. Hence, the OD had rejected AR4 as being unclear.
• " The [patentee] argued that the objection of lack of clarity against auxiliary request 4 defended during the opposition proceedings was first submitted at the oral proceedings before the opposition division, so that they could only overcome the objection after having contacted the client. However, it is evident, in the Board's view, that the wording of the claims defended in opposition was unclear and the amendment proposed now is self-evident as well, [...]. Therefore, the appellant's argument is rejected." 
• " It is further noted that the argumentation of the appellant in respect of inventive step contemplated in respect of auxiliary request 4 is directed to an issue which was not dealt with in the contested decision (nature of the iron cation), in respect of any of the then pending requests. Therefore, admitting auxiliary request 4 into the proceedings may have required that the case be remitted to the first instance for further prosecution, which could have been avoided if operative auxiliary request 4 had been filed in the first instance proceedings. It was indeed the deliberate choice of the appellant which prevented the opposition division from deciding on inventive step on a properly formulated request."
• I think I can see what the patentee was trying to do here, and on the face of it, it sounds plausible that minor issues can be corrected in appeal. I think it is good that the Board calls out this tactic (though of course, I don't know for sure the patentee's strategy).

EPO T 2383/15 - link

Auxiliary requests 4 and 5

4. Admittance

4.1 The respondent requested that auxiliary requests 4 and 5 be not admitted into the proceedings pursuant to Article 12(4) RPBA.

4.2 Operative auxiliary request 4 is based on auxiliary request 4 dealt with in the contested decision, whereby the feature related to the iron content was amended in order to indicate that it is directed to trivalent iron. The appellant argued that said amendment was based on page 26, lines 18-20 of the application as filed.

4.2.1 The amendment was made in order to overcome the objection of lack of clarity of that feature retained by the opposition division (section 10 of the contested decision). However, the amendment made in operative auxiliary request 4 is based on the passage of the description of the application as filed corresponding to the support already relied upon by the appellant during the opposition proceedings (see section 10.6 of the minutes of the oral proceedings before the opposition division: paragraph 55 of the patent in suit corresponds to page 26, lines 6-21 of the application as filed). Therefore, should the appellant have desired to defend claims corresponding to operative auxiliary request 4, he could, and actually he should, have done so during the oral proceedings before the opposition division. In the present case, there is no evidence on file justifying such a late filing of auxiliary request 4.

4.2.2 The appellant argued that the objection of lack of clarity against auxiliary request 4 defended during the opposition proceedings was first submitted at the oral proceedings before the opposition division, so that they could only overcome the objection after having contacted the client. However, it is evident, in the Board's view, that the wording of the claims defended in opposition was unclear and the amendment proposed now is self-evident as well, in particular in view of the corresponding passage of the application as filed relied upon by the appellant itself. It was not shown that there was any need to have the client's opinion in that respect. Therefore, the appellant's argument is rejected.

4.2.3 It is further noted that the argumentation of the appellant in respect of inventive step contemplated in respect of auxiliary request 4 is directed to an issue which was not dealt with in the contested decision (nature of the iron cation), in respect of any of the then pending requests. Therefore, admitting auxiliary request 4 into the proceedings may have required that the case be remitted to the first instance for further prosecution, which could have been avoided if operative auxiliary request 4 had been filed in the first instance proceedings. It was indeed the deliberate choice of the appellant which prevented the opposition division from deciding on inventive step on a properly formulated request.

4.2.4 For those reasons, the Board makes use of its power pursuant to Article 12(4) RPBA to hold auxiliary request 4 inadmissible.

4.3 Operative auxiliary request 5 is based on auxiliary request 5 dealt with in the contested decision, whereby, among others, the feature in brackets "(Fe2O3)" related to the iron content, which had been objected to for lack of clarity and under Article 123(3) EPC in the contested decision, was deleted (section 11).

4.3.1 By carrying out that straightforward amendment at the appeal stage only (according to section 10.10 of the minutes of the oral proceedings before the opposition division, the appellant refrained from making any comments to those objections), the appellant de facto prevented the opposition division to take any decision related on substantive issues in respect of auxiliary request 5. Under such circumstances, it is the Board view that the appellant could and in fact should have submitted present auxiliary request 5 already during the first instance proceedings, if he wanted to defend the patent with such a limitation.

4.3.2 In addition, for the same reasons as indicated in section 4.2.3 above, admitting auxiliary request 5 into the proceedings may have required that the case be remitted to the first instance for further prosecution e.g. to assess the inventive step in view of an issue which was not dealt with in the contested decision (nature of the iron cation) in view of a deliberate choice of the appellant.

4.3.3 For those reasons, the Board makes use of its power pursuant to Article 12(4) RPBA to hold auxiliary request 5 inadmissible.