T 0319/18 - Rejoinder in appeal

 Key points

• This is an opposition appeal.
• “The fifth auxiliary request, which had already been filed in opposition proceedings, was submitted with the rejoinder to the statement of grounds of appeal. Claim 1 of this request had been limited essentially by combining features of granted claims 2, 3 and 4. The only explanation provided in said rejoinder was an indication of the claims of the granted patent from which the features had been derived. However no reasons were provided explaining why the amendments had been made and how they were intended to overcome the objections raised by the appellant.”
• As a matter of terminology, in inter partes appeals we have the Statement of grounds, the written reply of the respondent under Art. 12(1)(c) RPBA 2020, and the further reply of the appellant indicated in Explanatory Note 13(2) to the RPBA 2020 (“The intention behind the two-month minimum waiting time is to give a party the opportunity to react to another party’s written reply with submissions falling under the less strict second level of the convergent approach, i.e. Art. 13(1)”). 
• I personally tend to use the terms ‘appeal reply brief’ of the respondent and the rejoinder (under Explanatory Note 13(2)) of the appellant. Both can be critical to the appeal procedure for parties to maintain their case.
• The Board: “Unless the purpose of the amendments in respect of overcoming the prevailing objections is self-explanatory, in the situation where reasons explaining why the new claims overcome the outstanding objections are filed after the statement of grounds of appeal or the reply, these reasons constitute an amendment to the party's appeal case, which may be admitted into the proceedings only at the discretion of the Board.”.
• “In the present case, the mere fact that the fifth auxiliary request was formally filed during the opposition procedure does not automatically render it part of the appeal case, since its admission had not been examined by the opposition division, due to the fact that the patent was maintained as granted.”
• “It is established jurisprudence of the Boards of Appeal that requests that are not self-explanatory become effective only at the date on which they are substantiated”
• “the Board in agreement with the case law cannot follow the respondent's [patentee's] argument that the amendment is as such admissible as it merely constitutes a combination of granted claims (see e.g. T 1752/09, reasons 3.3 and T 569/08, headnote). Therefore also a mere combination of granted claims, which, as in the present case in the light of the particular objections raised, is not self-explanatory, does not satisfy the requirements of Article 12(2) RPBA 2007.”
• The explanation/substantiation was submitted with a letter filed after notification of the summons.
• “ the new submissions provided [with said letter] constitute an amendment to the respondent's appeal case compared to that set out in the initial pleadings, the admission of which is subject to the discretion of the Board”. There were no exceptional circumstances and the 5th AR is not admitted. 

EPO T 0319/18

https://www.epo.org/law-practice/case-law-appeals/recent/t180319eu1.html

2. Fifth auxiliary request - admittance

The fifth auxiliary request, which had already been filed in opposition proceedings, was submitted with the rejoinder to the statement of grounds of appeal. Claim 1 of this request had been limited essentially by combining features of granted claims 2, 3 and 4.

The only explanation provided in said rejoinder was an indication of the claims of the granted patent from which the features had been derived. However no reasons were provided explaining why the amendments had been made and how they were intended to overcome the objections raised by the appellant.

An explanation was provided with the letter bearing the date 19 October 2020, received on 19 November 2020, after the Board had indicated in its preliminary opinion the lack of motivation with respect to the auxiliary requests.

2.1 Article 12(3) RPBA 2020 analogously to Article 12(2) RPBA 2007, which was the applicable provision at the time the rejoinder was filed, requires that the parties to appeal proceedings set out their complete case in their initial submissions (statement of grounds of appeal and reply thereto). With respect to the filing of a new set of claims it is necessary to explicitly state the extent to which the amendments overcome the objections on which the decision under appeal was based and/or were raised by the opponent (see e.g. T 933/09, reasons 7; T 1533/13, reasons 1.6.2).

Unless the purpose of the amendments in respect of overcoming the prevailing objections is self-explanatory, in the situation where reasons explaining why the new claims overcome the outstanding objections are filed after the statement of grounds of appeal or the reply, these reasons constitute an amendment to the party's appeal case, which may be admitted into the proceedings only at the discretion of the Board.

According to Article 13(2) RPBA 2020, which is applicable in the present case under Article 25(1) and (3) RPBA 2020, amendments to a party's case made after notification of oral proceedings are not to be taken into account unless exceptional circumstances, justified by cogent reasons exist.

2.2 In the present case, the mere fact that the fifth auxiliary request was formally filed during the opposition procedure does not automatically render it part of the appeal case, since its admission had not been examined by the opposition division, due to the fact that the patent was maintained as granted.

As acknowledged by the respondent at the oral proceedings, the substantiation requirement of Article 12(2) RPBA 2007 was not complied with in respect of any of the auxiliary requests at the time when the reply to the statement of grounds of appeal was filed.

2.3 The respondent submitted that the purpose and effect of the present amendment was self-explanatory in the light of the findings of the decision and/or the submissions made by the appellant, such that no further elucidation was required.

However the respondent was unable to demonstrate that this condition applied. The Board considers that the amendments made are not self-explanatory in the sense that it is immediately apparent how they are directed to overcoming the inventive step objection over document D1. On the contrary they do not prima facie change the relevance of the examples in the patent (with respect to the examples in D1), which were found not sufficient to acknowledge the presence of an effect and therefore an inventive step over document D1 for the main request, so that the same objections would appear to apply to the fifth auxiliary request. As submitted by the appellant, it is also not evident why claim 2 as granted had been incorporated in claim 1 of the fifth auxiliary request, nor whether this constitutes an actual limitation of the subject-matter versus the prior art, since D1 already mentions containers for food.

It is established jurisprudence of the Boards of Appeal that requests that are not self-explanatory become effective only at the date on which they are substantiated (see e.g. T 1732/10, point 1.5 of the reasons).

This conclusion is not changed by the fact that the amendments consisted in the combination of granted claims.

Indeed the Board in agreement with the case law cannot follow the respondent's argument that the amendment is as such admissible as it merely constitutes a combination of granted claims (see e.g. T 1752/09, reasons 3.3 and T 569/08, headnote). Therefore also a mere combination of granted claims, which, as in the present case in the light of the particular objections raised, is not self-explanatory, does not satisfy the requirements of Article 12(2) RPBA 2007.

2.4 Consequently, the new submissions provided on 19 November 2020 constitute an amendment to the respondent's appeal case compared to that set out in the initial pleadings, the admission of which is subject to the discretion of the Board (Article 13(2) RPBA 2020).

In this context the respondent has not argued that "exceptional circumstances, justified by cogent reasons" for the late filing existed, nor can the Board identify any such circumstances.

2.5 In particular the Board's preliminary opinion cannot be regarded as a justification for the late substantiation of the auxiliary request, since it merely indicated the Board's non-binding view on the objections of lack of inventive step over D1 raised by the appellant in the statement of grounds of appeal and did not raise any new issues (see in particular point 7.2 of the communication). Thus there had been no change in the subject of the proceedings after the filing of the statement of grounds of appeal and the replies thereto.

2.6 In view of all the preceding considerations, the Board exercises its discretion not to take the fifth auxiliary request into consideration.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.