T 1801/17 - No obligation to attend

 Key points

• The opponent-respondent disputes the admissibility of a request filed with the Statement of grounds. 
• Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation [...]. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent [...] The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response. The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. ”
• “The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.”
• For a Board finding an (equitable?) obligation to attend oral proceedings before the examining division, see T1500/10.
• The request filed with the SoG was resubmitted as AR-4a with a small amendment and was subsequently made the main request.
• The Board: “As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after the arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.”
• The admissibility of the request is examined cumulatively under said provisions.
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EPO T 1801/17 -  link

3. Main request - Admissibility

The respondent-opponent objects to the admissibility of the main request. This issue hinges also on the admissibility of other previously filed requests as follows.

3.1 The appellant-proprietor filed an auxiliary request with the statement of grounds. The later filed auxiliary request 4a on 24 May 2019 was based on that auxiliary request, and was amended only to adapt one term of claim 1 to a corrected translation. With letter of 17 April 2020, the appellant-proprietor made that auxiliary request 4a its main request.

As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.

3.2 Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation in the omission of the feature of original description paragraph [0033] that the guide wall has the shape of a plate curved in the shape of a circular arc, see section 2.3. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent, see written decision sections 2.3 and AUXILIARY REQUESTS I-VI. The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response.

The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.

Under the above circumstances the Board considers the auxiliary request filed with the statement of grounds to be a normal and legitimate reaction of the losing patent proprietor at their first available opportunity, see CLBA V.A.4.11.3.g), and thus admissible under Article 12(4) RPBA 2007.