15 May 2019

T 0352/16 - Filing request one month before

Key points

  • In this appeal of the patentee in an opposition case, the Board reject the new main request as inadmissible. The request was filed one month before the oral proceedings.
  • " In addition, no valid reason was given by the appellant [patentee] why the operative main request was filed only one month prior to the oral proceedings, [while] the Board's communication had been sent about 5 months before the date of the oral proceedings. " 
  • A further issue is that the opponent had filed a response ("rejoinder") to the patentee's statement of grounds. The opponent had raised a new clarity objection in his response. The Board points out that this is not a reason to wait with filing a Main Request which addresses this clarity issue only shortly before the oral proceedings. 
  • " The appellant argued that the main request was also submitted as an attempt to overcome the objection pursuant to Article 84 EPC put forward by the respondent in its rejoinder to the statement of grounds of appeal" 
  • " However, the filing of a new request at such a late stage in a case where a relevant objection (here pursuant to clarity) was known from the beginning of the appeal proceedings does not satisfy the requirements of due process and the need for economy of the proceedings. In that respect, it makes no doubt that the appellant [patentee] could have replied to that objection earlier, e.g. in direct reply to the respondent's rejoinder to the statement of grounds of appeal, after having received the summons to oral proceedings or, at the latest, in direct reply to the Board's communication, which was sent about 5 months before the date of the oral proceedings." 


EPO T 0352/16 - link

Reasons for the Decision
1. Admittance of the main request
1.1 Since the main request was filed after the parties had been summoned to oral proceedings, its admittance into the proceedings is subject to the Board's discretion pursuant to Article 13(1) RPBA and underlies the additional stipulations of Article 13(3) RPBA.
[...]

In addition, no valid reason was given by the appellant [patentee] why the operative main request was filed only one month prior to the oral proceedings, whereby the Board's communication had been sent about 5 months before the date of the oral proceedings. In doing so, the appellant did not leave much time to the respondent to prepare properly its case, in particular in view of the issue indicated in section 1.2.2 above.

For these reasons, the appellant's argument according to which the operative main request constituted a direct reply to the Board's communication does not justify the filing of that request only one month before the date of the oral proceedings.
1.2.4 The appellant argued that the main request was also submitted as an attempt to overcome the objection pursuant to Article 84 EPC put forward by the respondent in its rejoinder to the statement of grounds of appeal and identified in the Board's communication as relevant for the main request filed with the statement of grounds of appeal.
However, the filing of a new request at such a late stage in a case where a relevant objection (here pursuant to clarity) was known from the beginning of the appeal proceedings does not satisfy the requirements of due process and the need for economy of the proceedings. In that respect, it makes no doubt that the appellant could have replied to that objection earlier, e.g. in direct reply to the respondent's rejoinder to the statement of grounds of appeal, after having received the summons to oral proceedings or, at the latest, in direct reply to the Board's communication, which was sent about 5 months before the date of the oral proceedings. Under such circumstances, also the objection pursuant to Article 84 EPC raised against the main request filed with the statement of grounds of appeal cannot justify the filing of the operative main request only one month before the oral proceedings before the Board.
1.3 In view of the above, the Board finds it appropriate, in the circumstances of the present case, to exercise its discretion under Article 13(1) RPBA and its power under Article 13(3) RPBA by not admitting into the proceedings the operative main request.

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