T 0394/15 - Combining claims as granted

Key points

• If patentee combines  two claims as granted one month before oral proceedings before the OD, do new documents filed by opponent with its statement of grounds in response to the claim amendment fall under the 'should have been filed' rule of Art.12(4) RPBA 2007 / Art.12(6)(s.2)(i) RPBA 2020?
• The Board: “The filing of D12 to D19 [with the Statement of grounds] to support objections against this request is considered to be a justified and timely reaction to the proprietor's filing of the request at that late stage of the first instance proceedings, even if claim 1 is a combination of granted claims 1 and 7, as the proprietor argued.”

EPO T 0394/15 -  link


3. Admission of documents D12 to D19

Since 1 January 2020 the revised RPBA ("RPBA 2020") apply (OJ 2019, A63). By virtue of the transitional provisions of Article 25(2) RPBA 2020, for the present case Article 12(4) RPBA 2007 applies.

D12 to D19 were submitted by the opponent in relation to the case under appeal at the earliest possible stage of the appeal proceedings, i.e. with the statement of grounds, in compliance with Article 12(3) RPBA 2020. Under Article 12(4) RPBA 2007 these documents are to be taken into account, although the Board retains the power to hold them inadmissible if they could have been presented in the first instance proceedings.

The Board notes that the request allowed by the Opposition Division was filed for the first time one month before the oral proceedings at first instance. The filing of D12 to D19 to support objections against this request is considered to be a justified and timely reaction to the proprietor's filing of the request at that late stage of the first instance proceedings, even if claim 1 is a combination of granted claims 1 and 7, as the proprietor argued . Under these circumstances the Board, in exercising its discretion under Article 12(4) RPBA 2007, sees no need to consider the prima facie relevance of D12 to D19 and admits these documents into the appeal proceedings.