T 1439/16 - Losing attack upon appeal

 Key points

• The patentee files an auxiliary request AR-6 after the summons but still six months before the oral proceedings. The request is admitted under Art.13(1) RPBA 2020 because it involves deleting independent claim 1 (and restricting to the second independent claim). " by deleting claim 1, the respondent has not introduced new subject-matter to be discussed but rather has reduced the disputed subject-matter, in particular resolving the issue of added subject-matter, so that the amendment is not at all detrimental to the procedural economy, but rather in its favour." 
• The Board does not admit the Art.123(2) attack against claim 7 of AR-6.
• " The Board does concur with the appellant [opponent] that, according to Article 12(2) [possibly Article 12(1) was intended] RPBA 2020, the appeal proceedings should be based on the appealed decision and that a decision was taken in opposition proceedings with respect to the objection of added subject-matter of the then claim 8, corresponding to present claim 7. However, as argued by the respondent [patentee], it is the appellant who defines the extent of the appeal and according to Article 12(3) RPBA 2020, which essentially corresponds to Article 12(2) RPBA 2007, the statement of grounds of appeal shall contain a party's complete case. It was the choice of the appellant to make an objection for added subject-matter only to claim 1 and not to claim 8 in the statement setting out the grounds of appeal []  while objecting to both claims for lack of inventive step [] thereof." 

EPO T 1439/16 - link

2. Admittance into the proceedings of auxiliary request 6

The appellant argues that auxiliary request 6 was filed after the summons to oral proceedings as a reaction to the communication of the Board and was thus filed late and should therefore not be admitted into the proceedings.

The Board concurs with the appellant that auxiliary request 6 has been filed late, since, according to Article 12(3) RPBA 2020, which essentially corresponds to Article 12(2) RPBA 2007, the respondent's complete case should have been submitted with the reply to the statement setting out the grounds of appeal.

However, amendments to a party's case filed after the summons to oral proceedings are not to be dismissed a priori, but their admittance is subject to the Board's discretion according to Article 13(1) RPBA 2020 and to the provisions of Article 13(3) RPBA 2007, in combination with Article 25(1) and (3) RPBA 2020.

In the present case, by deleting claim 1, the respondent has not introduced new subject-matter to be discussed but rather has reduced the disputed subject-matter, in particular resolving the issue of added subject-matter, so that the amendment is not at all detrimental to the procedural economy, but rather in its favour.

In view of the above the Board considers it appropriate to exercise its discretion by admitting auxiliary request 6 into the proceedings.

3. Admittance of the objection of added subject-matter, raised at the oral proceedings, for claim 7 of auxiliary request 6

The Board cannot follow the argument of the appellant that the objection of added subject-matter under Article 123(2) EPC against claim 7 should be admitted into the proceedings since claim 7 corresponds essentially to claim 1 of the patent as maintained in opposition proceedings, which was objected to on this ground with the statement setting out the grounds of appeal. The appellant also argues that claim 7 is identical to claim 8 of the patent as maintained, which was objected to for added subject-matter in opposition proceedings, so that this objection is also implicitly part of the appeal proceedings.

The Board does concur with the appellant that, according to Article 12(2) RPBA 2020, the appeal proceedings should be based on the appealed decision and that a decision was taken in opposition proceedings with respect to the objection of added subject-matter of the then claim 8, corresponding to present claim 7.

However, as argued by the respondent, it is the appellant who defines the extent of the appeal and according to Article 12(3) RPBA 2020, which essentially corresponds to Article 12(2) RPBA 2007, the statement of grounds of appeal shall contain a party's complete case. It was the choice of the appellant to make an objection for added subject-matter only to claim 1 and not to claim 8 in the statement setting out the grounds of appeal (see point 1. a) and 1.b) thereof), while objecting to both claims for lack of inventive step (see point 3. a) thereof).

Furthermore the Board notes that submitting this objection for the first time at the oral proceedings is detrimental to procedural economy, since the appellant was aware of auxiliary request 6 some six months before the oral proceedings and, thus, could have submitted the objection well before the oral proceedings to allow both the respondent and the Board to prepare for a substantial discussion. Furthermore, by waiting until the date of oral proceedings the appellant confronted the respondent with a surprising attack that, for reasons of procedural fairness and the respondent's right to be heard, would have necessitated giving the respondent an opportunity to react to the new objection, for example by filing additional (auxiliary) requests, which undoubtedly would delay the proceedings.

In view of the above the Board considers it appropriate to exercise its discretion pursuant to Article 13(1) RPBA 2020 and Article 13(3) RPBA 2007 and to not admit the objection of added subject-matter for claim 7 into the proceedings.