T 2051/16 - Late filed late-filed-objections

Key points

• I discuss this opposition appeal case mostly for the procedural issue. But let's start first with the Board's very useful summary of sufficiency of disclosure.
• The Board: "sufficiency of disclosure must be assessed on the basis of the application as a whole, including the description and claims, and not on the claims alone. The skilled person may [...] use his common general knowledge to supplement the information contained in the application or correct errors. If at least one way to carry out the invention is clearly indicated, the non-availability of some particular variants of a functionally defined component feature of the invention is immaterial to sufficiency as long as there are suitable variants known to the skilled person through the disclosure or common general knowledge providing the same effect for the invention."
  
• The procedural issue is the admissibility of AR-1 filed by the patentee (respondent) in its initial appeal submission (response under Art.12 RPBA). The opponent objected that AR-1 was filed late during the oral proceedings. 
• "The board observes that this objection has been made at a very late stage, in particular when taking into account that the board in its preliminary opinion [] already acknowledged that the [AR-1 was likely admissible]. However, irrespective of whether the [opponent]'s late-filed objection might be admitted and considered only at the board's discretion (under Article 13(1) RPBA), the board cannot see, and the [opponent] has not argued, why this filing should not be considered as a direct response to the [opponent]'s appeal, as brought forward by the [patentee]." 
• Hence, the Board leaves open whether a late-filed-objection can be late-filed itself. 
• As a comment, I expect that late-filed-objections will be considered as liable to be late-filed by Boards in the future, especially if the objection is submitted only after the (future) case management conference. The Boards may very well require that parties make objections timely and sufficiently specifically during or before the case management conference, however probably without restricting the Board's power to hold submissions inadmissible ex officio. 

EPO T 2051/16 -  link

Reasons for the Decision

Patent as granted

1. Sufficiency of disclosure (Article 100(b) EPC)

1.1 The appellant's challenge of the sufficiency of disclosure of the patent in suit under Article 100(b) EPC is rejected.

According to the established case law, sufficiency of disclosure must be assessed on the basis of the application as a whole, including the description and claims, and not on the claims alone. The skilled person may even use his common general knowledge to supplement the information contained in the application or correct errors. If at least one way to carry out the invention is clearly indicated, the non-availability of some particular variants of a functionally defined component feature of the invention is immaterial to sufficiency as long as there are suitable variants known to the skilled person through the disclosure or common general knowledge providing the same effect for the invention.

[...]

First auxiliary request

4. Admissibility of the first auxiliary request

4.1 The respondent filed its first auxiliary request on 21 March 2017 with its reply to the grounds of appeal, thereby addressing the appellant's objection under Article 100(c) EPC with regard to claim 8 as granted.

4.2 The appellant objected for the first time during the oral proceedings to the admissibility of the first auxiliary request as being late filed. The board observes that this objection has been made at a very late stage, in particular when taking into account that the board in its preliminary opinion (see communication of the board dated 11 July 2019) already acknowledged that the respondent's first auxiliary request was apparently filed to meet the appellant's objection under Article 100(c) EPC against granted claim 8. However, irrespective of whether the appellant's late-filed objection might be admitted and considered only at the board's discretion (under Article 13(1) RPBA; Rules of Procedure of the EPO, OJ EPO 2007, 536), the board cannot see, and the appellant has not argued, why this filing should not be considered as a direct response to the appellant's appeal, as brought forward by the respondent.

Moreover, according to the preliminary opinion of the opposition division concerning the objection under Article 100(c) EPC raised in the notice of opposition (see annex to the summons to oral proceedings of 3 November 2015, page 3, point 2.), independent claim 8 of the opposed patent did not extend beyond the content of the application as filed. Thus, the board cannot recognise that the patent proprietor could have been expected to file an auxiliary request earlier to address the objection under Article 100(c) EPC.

Therefore, the first auxiliary request filed with the respondent's reply to the grounds of appeal is admitted into the appeal proceedings, as the board sees no reason why it should exercise its discretion under Article 12(4) RPBA to hold inadmissible this request.

Note: In view of a single remaining auxiliary request, the issue of convergency of requests raised by the appellant does not apply and needs not to be addressed.