T 1768/17 - Held inadmissible and should have been filed

 Key points

• The Board has to decide on the admissibility of AR-4 which corresponds to AR-10 held inadmissible by the OD. There are small differences but the parties don't invoke these differences so the differences don't matter for admissibility.
• In AR-10, the method was amended with additional steps which could require additional prior art for novelty and inventive step.
• Moreover, “then pending auxiliary request 10 was one of 32 auxiliary requests submitted altogether only about 2 months before the oral proceedings before the opposition division (albeit within the deadline then set by the opposition division). In that respect, according to the case law, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of his rights as early and completely as possible, in particular in inter partes proceedings in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings. ”
• “By submitting such a high amount of auxiliary requests shortly before the oral proceedings, the appellant [patentee] let little time to the respondent [opponent] (and the opposition division) to react to each of the then-pending requests. In that respect, it is additionally noted that the opposition division indicated that said auxiliary request 10 was prima facie not supported by the application as filed (top of page 8 of the reasons). Therefore, its admission would have required that new issues be dealt with for the first time at the oral proceedings before the opposition division, which goes against the economy of the proceedings.”
• Therefore the OD was correct in not admitting AR-10. 
• “The Board further notes that, according to the case law, the fact that the opposition division did not admit a late-filed document and did not exceed the proper limits of its discretion by not admitting it does, in principle, not prevent the Board from admitting the document in particular if e.g. it considers it to be prima facie relevant [...] In particular, a submission which would have been admitted into appeal proceedings if it had been filed for the first time at the outset of those proceedings should not be held inadmissible pursuant to Article 12(4) RPBA, for the sole reason that it was already filed before the department of first instance and not admitted (T 971/11, section 1.3 of the reasons). Although the above principles are related to late-filed documents, the Board considers that the same principles equally apply to the admission of a non-admitted late-filed request.”
• “the question has to be answered whether there are objective reasons why the appellant could have been expected to present such a request in the first instance proceedings (see Case Law, supra, V.A.4.4.2.a and V.A.4.11.1), i.e. if that request should have been filed in the first instance proceedings.”
• This gives an interesting convolution of the test of Art.12(6) first sentence with that of Art. 12(6) second sentence RPBA 2020.
• “ the [patentee] has not shown, not even argued that there were any reasons (apart from the non-admittance of auxiliary request 10) which would justify the filing of new requests together with the statement of grounds of appeal. The Board also sees no compelling reasons in that respect, in particular because no new objection or document was filed by the opponents at a late stage of the opposition proceedings and/or it was not shown that the appellant was taken by surprise at or shortly before the oral proceedings before the opposition division. In that respect, the non-admission of an auxiliary request by the opposition division is not seen as a decision which may come as a surprise to the patent proprietor, in particular when a set of 32 auxiliary requests was submitted shortly before the oral proceedings in front of the opposition division.”

T 1768/17 -  link

7. Admittance of auxiliary request 4

7.1 The admittance of auxiliary request 4, which was filed together with the statement of grounds of appeal, is subject to the stipulations of Article 12(4) RPBA 2007 (see section 3.1 above).

7.2 Although the wording of claim 1 of auxiliary request 4 is not completely identical with the one of auxiliary request 10 defended in front of the opposition division, the arguments provided by both parties in respect of the admittance of auxiliary request 4 were not related to these difference in wording but only in respect of the high similarity between the subject-matter being defined in both auxiliary requests. Therefore, the issue in dispute between the parties was solely related to the question whether or not auxiliary request 4 should be held inadmissible pursuant to Article 12(4) RPBA 2007 because auxiliary request 10 was already not admitted into the proceedings by the opposition division (see section 3.1.1 of the reasons of the decision).

7.2.1 In that respect, the sole argument put forward by the appellant which is in line with the criteria identified in section 3.3.2 (first paragraph)above was submitted during the oral proceedings before the Board, whereby it was held that the opposition division exercised its discretion in an unreasonable way. In particular, it was in the appellant's view not logical for the opposition division to admit the then pending auxiliary request 6 but not the then pending auxiliary request 10, although both auxiliary requests were directed to similar amendments of the method defined in the then pending auxiliary request 2.

7.2.2 However, the Board concurs with the respondent that, contrary to the amendments carried out in the then pending auxiliary request 6, the amendments made in the then pending auxiliary request 10 were mostly directed to a method of isolation of the diphenyl sulfone (as defined in step i) of claim 1), which effectively imposed some additional limitations in terms of specific process steps for isolating the diphenyl sulfone. Therefore, the Board does not see that there is a contradiction in the contested decision to admit auxiliary request 6 but not auxiliary request 10. In addition, the Board concurs with the opinion of the opposition division that additional prior art documents could have been necessary to assess the allowability of the then pending auxiliary request 10 (as compared to the then pending auxiliary request 6). In that respect, the fact that said additional steps may be usual in the art, as argued by the appellant, does not play a role, since it does not change the conclusion that additional documents could have been required to attack the novelty or the inventive step (as compared to the then pending auxiliary request 2).

7.2.3 The above conclusion is reinforced by the fact that the then pending auxiliary request 10 was one of 32 auxiliary requests submitted altogether only about 2 months before the oral proceedings before the opposition division (albeit within the deadline then set by the opposition division). In that respect, according to the case law, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of his rights as early and completely as possible, in particular in inter partes proceedings in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings. By submitting such a high amount of auxiliary requests shortly before the oral proceedings, the appellant let little time to the respondent (and the opposition division) to react to each of the then pending requests. In that respect, it is additionally noted that the opposition division indicated that said auxiliary request 10 was prima facie not supported by the application as filed (top of page 8 of the reasons). Therefore, its admission would have required that new issues be dealt with for the first time at the oral proceedings before the opposition division, which goes against the economy of the proceedings.

7.2.4 Under these circumstances, the Board is satisfied that the opposition division has not exceeded its discretionary power when deciding not to admit the then pending auxiliary request 10. Therefore, it is not justified to overturn the opposition division not to admit the then valid auxiliary request 10.

7.3 The Board further notes that, according to the case law, the fact that the opposition division did not admit a late-filed document and did not exceed the proper limits of its discretion by not admitting it does, in principle, not prevent the Board from admitting the document in particular if e.g. it considers it to be prima facie relevant (T 971/11, sections 1.1 to 1.3 of the reasons; Case Law, supra, V.A.3.5.2.b and V.A.3.5.3.a). In particular, a submission which would have been admitted into appeal proceedings if it had been filed for the first time at the outset of those proceedings should not be held inadmissible pursuant to Article 12(4) RPBA, for the sole reason that it was already filed before the department of first instance and not admitted (T 971/11, section 1.3 of the reasons).

Although the above principles are related to late-filed documents, the Board considers that the same principles equally apply to the admission of a non-admitted late-filed request.

7.3.1 Therefore, the question arises if the circumstances of the present case may justify the filing of auxiliary request 4 for the first time with the statement of grounds of appeal. In that respect, the question has to be answered whether there are objective reasons why the appellant could have been expected to present such a request in the first instance proceedings (see Case Law, supra, V.A.4.4.2.a and V.A.4.11.1), i.e. if that request should have been filed in the first instance proceedings.

However, the appellant has not shown, not even argued that there were any reasons (apart from the non-admittance of auxiliary request 10) which would justify the filing of new requests together with the statement of grounds of appeal. The Board also sees no compelling reasons in that respect, in particular because no new objection or document was filed by the opponents at a late stage of the opposition proceedings and/or it was not shown that the appellant was taken by surprise at or shortly before the oral proceedings before the opposition division. In that respect, the non-admission of an auxiliary request by the opposition division is not seen as a decision which may come as a surprise to the patent proprietor, in particular when a set of 32 auxiliary requests was submitted shortly before the oral proceedings in front of the opposition division. In particular, it is concurred with the opposition division that, although the subject-matter now being claimed is encompassed by the granted claims, as argued by the appellant (statement of grounds of appeal: bottom of page 24), the admission into the proceedings of auxiliary request 4 submitted with the statement of grounds of appeal may have required that additional documents to the ones relevant for the operative higher ranking requests be taken into account and/or may have changed the focus of the discussion, in particular in respect of the inventive step, from the question of using a diphenyl sulfone having a specific purity to the question of using a specific isolation process of diphenyl sulfone, which is not even mentioned as such in the granted patent (it was deleted from the description before grant).

7.3.2 In view of the above, there is no justification for filing auxiliary request 4 only at the appeal stage.

7.4 For these reasons, the Board finds it appropriate to make use of its power pursuant to Article 12(4) RPBA 2007 to hold auxiliary request 4 inadmissible.