T 0411/17 - Dependent claims

Key points

• The OD held a request inadmissible. The Board admits it under Art. 12(4) RPBA 2007.
• “It is apparent from the file that the opposition division exercised its discretion not to admit the request into the proceedings on the grounds that, in view of feature g), claim 1 of the second auxiliary request did not find a correspondence in a dependent claim of the patent as granted. ”
• The Board admits the request.
• “It is also apparent to the board that the subject-matter of claim 1 of the second auxiliary request corresponds to a combination of claims 1, 8 and 9 of the then first auxiliary request. The board therefore considers that there was sufficient time for the opponent to prepare for the subject-matter of the second auxiliary request, the more so since the opponent could have foreseen that auxiliary requests were to follow given the preliminary opinion of the opposition division as set out in the annex to its summons to oral proceedings. The board notes also that, apart from feature g), claim 1 of the second auxiliary request corresponds to a combination of claims 1, 8 and 9 as granted. At no point in time did the opponent raise objections against the subject-matter of such a combination, although this could have been done as early as with the notice of opposition.”

EPO T 0411/17 -   link

4.2 Admission into the appeal proceedings (Article 12(4) RPBA 2007)

4.2.1 The second auxiliary request is identical to the second auxiliary request underlying the decision under appeal. The opposition division did not admit that request into the opposition proceedings on the grounds that it was late-filed (filed during the first-instance oral proceedings) and that claim 1 of the request was not based on the claims as granted.

4.2.2 Article 12(4) RPBA 2007 conveys the board the discretionary power to hold inadmissible facts, evidence or requests which were not admitted in the first-instance proceedings.

4.2.3 The respondent requested to confirm the opposition division's assessment and not to admit the second auxiliary request into the appeal proceedings. The respondent emphasised that the patent proprietor could have foreseen from the annex to the summons of the opposition division that the opposition division would raise an objection under Article 54(3) EPC against the main request in view of D3 and an objection under Article 54(2) EPC against the auxiliary request in view of D9 as set out in the decision under appeal. In the respondent's view, the patent proprietor deliberately chose not to file the second auxiliary request before expiry of the time limit pursuant to Rule 116(2) EPC.

4.2.4 The board holds that the opposition division had a discretion not to admit the second auxiliary request into the proceedings. Moreover, a board may overrule the way in which the department of first instance had exercised its discretion if it came to the conclusion either that it had not done so in accordance with the proper principles or had done so in an unreasonable way, and had thus exceeded the proper limits of its discretion. It is apparent from the file that the opposition division exercised its discretion not to admit the request into the proceedings on the grounds that, in view of feature g), claim 1 of the second auxiliary request did not find a correspondence in a dependent claim of the patent as granted. It considered the subject-matter of the amendments to be technically complex, such that the parties could not be expected to deal with it at oral proceedings (see appealed decision, Reasons, point 3).

4.2.5 The board agrees with the appellant that feature g) had been introduced into the independent claims with the first auxiliary request filed with a telefax of 25 September 2015, i.e. more than a year ahead of the oral proceedings of 30 November 2016 before the opposition division. It is also apparent to the board that the subject-matter of claim 1 of the second auxiliary request corresponds to a combination of claims 1, 8 and 9 of the then first auxiliary request. The board therefore considers that there was sufficient time for the opponent to prepare for the subject-matter of the second auxiliary request, the more so since the opponent could have foreseen that auxiliary requests were to follow given the preliminary opinion of the opposition division as set out in the annex to its summons to oral proceedings. The board notes also that, apart from feature g), claim 1 of the second auxiliary request corresponds to a combination of claims 1, 8 and 9 as granted. At no point in time did the opponent raise objections against the subject-matter of such a combination, although this could have been done as early as with the notice of opposition.

4.2.6 In view of the above, the board, exercising its own discretion under Article 12(4) RPBA 2007, decided to admit the second auxiliary request into the appeal proceedings.