T 0919/17 - No need to put attacks in Statement of grounds

Key points

• In this opposition appeal, the patentee filed 6 auxiliary requests 42 days before the oral proceedings before the OD [with a  letter explaining why the AR's are novel and inventive]. The OD considers the patent as granted to be allowable; the AR's are not discussed during the oral proceedings. The opponent appeals and does not comment on the AR's in the Statement of grounds. The opponent submits attacks against the AR's 1 month before the oral proceedings before the Board.
• The Board admits the attacks. The Board: “Hence, [in the first instance procedure] the opponent (now appellant) had only a short time to react to the newly filed requests and was under no obligation to file its objections in writing before the oral proceedings [before the OD]. Given that the auxiliary requests were not discussed during the oral proceedings before the opposition division, the opponent had no opportunity to raise the objections orally. 
• It is correct that the appellant [=opponent] did not file any objections against the auxiliary requests together with its grounds of appeal. However, it was under no obligation to do so. Since the opposition had been rejected, the appellant correctly argued in its grounds of appeal as to why the decision of the opposition division to reject the opposition was wrong. At that point in time the appellant could not have foreseen which lines of defence the patent proprietor would adopt during the appeal proceedings and there was no reason to assume that it would file the same auxiliary requests as during opposition proceedings.
• “In the present case the objections rely on a limited number of documents which had already been filed together with the grounds of appeal, and are based on lines of argument similar to those submitted together with the grounds of appeal. ”

T 0919/17 - link

Reasons for the Decision

1. Admittance of Late Filed Objections of the Appellant

The respondent requested that the appellant's objections against the auxiliary requests, which were submitted with letter dated 17**(th) January 2020, be not admitted into the proceedings. It argued that, since the requests were based on granted claims and since the same requests had already been filed during the opposition proceedings, the objections should have been raised already during those proceedings and at the latest together with the grounds of appeal.

The auxiliary requests were filed during the opposition proceedings on 26**(th) October 2016, and thus only 42 days before the oral proceedings which took place on 6**(th) December 2016. Hence, the opponent (now appellant) had only a short time to react to the newly filed requests and was under no obligation to file its objections in writing before the oral proceedings. Given that the auxiliary requests were not discussed during the oral proceedings before the opposition division, the opponent had no opportunity to raise the objections orally.

It is correct that the appellant did not file any objections against the auxiliary requests together with its grounds of appeal. However, it was under no obligation to do so. Since the opposition had been rejected, the appellant correctly argued in its grounds of appeal as to why the decision of the opposition division to reject the opposition was wrong. At that point in time the appellant could not have foreseen which lines of defence the patent proprietor would adopt during the appeal proceedings and there was no reason to assume that it would file the same auxiliary requests as during opposition proceedings.

Since these objections have been filed after the grounds of appeal, their admission into the proceedings has to be considered under Article 13 RPBA 2020. Since the parties were notified of the summons to oral proceedings before the entry into force of the RPBA 2020, the transitional provisions under Article 25(3) RPBA apply, according to which Article 13(2) RPBA 2020 shall not apply. Instead, Article 13 RPBA 2007 shall continue to apply.

Therefore, when deciding about the admittance of the objections against the auxiliary requests, the Board's discretion shall be exercised in view of the complexity of the new subject-matter and considering whether they raise issues which the Board and the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings.

In the present case the objections rely on a limited number of documents which had already been filed together with the grounds of appeal, and are based on lines of argument similar to those submitted together with the grounds of appeal. Therefore, it is not considered to be an undue burden for the respondent or for the Board to deal with them in the one month between their submission and the oral proceedings, i.e. without any adjournment of the oral proceedings.

Therefore, the objections against the auxiliary requests filed with letter dated 17**(th) January 2020 are admitted into the proceedings.