T 0222/16 - Incorrect application Rule 116 by OD

 Key points

• The Board admits a request filed initial appeal submissions into the proceedings under Article 12(4) RPBA 2007 in this opposition appeal even though the claims are in substance the same as a request held inadmissible by the OD.
• The OD had not admitted the request AR-3 filed during the oral proceedings “on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.”
• “In the present case it is the board's conviction that the opposition division exercised its discretion in an unreasonable way for the following reasons”
• “A new objection under Article 123(3) EPC was raised by the opponent for the first time on the final date for making submissions set under Rule 116 EPC, namely on 7 September 2015. As the requests then pending could not have taken into account this new objection, the proprietor should have been given at least one opportunity to file a new request, which was not the case.”
• “the board notes that Rule 116(2) EPC states that new documents filed by the proprietor after the final date for making submissions need not be considered unless admitted on the grounds that the subject of the proceedings has changed. In the present case, the new objection under Article 123(3) EPC represented a change of the subject of the proceedings and, given the very late timing of the objection, it was evidently impossible for the proprietor to file a response before the final date set under Rule 116 EPC.”
• “the Board notes that according to the established jurisprudence, the relevant criterion for deciding on the admissibility of late filed requests is their prima-facie allowability in view of the objection under discussion. This criterion is fulfilled in the present case since the amendment in claim 1 is clearly suitable to overcome the objection under Article 123(3) EPC, ” (italics added)
• “For the board, the convergence criterion relied upon by the division is of secondary importance in the context of objections under Article 123(3) EPC, because while a novelty objection can be overcome by limiting a claimed subject-matter even further in a convergent way, this is not necessarily the case for an objection under Article 123(3) EPC.”
• “It goes without saying that the non-validity of the priority claim is an unsuitable criterion”

T 0222/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160222eu1.html

4. Third auxiliary request

Vis-à-vis claim 1 as granted, in claim 1 of this request the upper limit of the PIB molecular weight has been amended in to 1500.

4.1 Admissibility

The Board exercised its discretion under Article 12(4) RPBA 2007 not to hold inadmissible this request, because apart from the deleted dependency of claim 5 to claim 2, the claims of this request are identical to those of the third auxiliary request filed during the first instance oral proceedings but not admitted by the opposition division, on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.

4.1.1 According to established case law, a board of appeal should overrule a discretionary decision of the opposition division only if said decision was taken based on the wrong principles, without taking into account the right principles, or in an unreasonable way (Case Law of the Boards of Appeal, 9th edition, V.A.3.5.1 b)).

4.1.2 In the present case it is the board's conviction that the opposition division exercised its discretion in an unreasonable way for the following reasons:

4.1.3 A new objection under Article 123(3) EPC was raised by the opponent for the first time on the final date for making submissions set under Rule 116 EPC, namely on 7 September 2015. As the requests then pending could not have taken into account this new objection, the proprietor should have been given at least one opportunity to file a new request, which was not the case.

4.1.4 Furthermore, after the opposition division found that the first auxiliary request then on file infringed Article 123(3) EPC, the proprietor withdrew the then pending auxiliary requests 1a and 2-6 but maintained auxiliary request 7 (found by the opposition division not to meet the requirements of Article 123(2), (3) and 84 EPC) which then became the new second auxiliary request.

4.1.5 The board notes that this second auxiliary request was nevertheless NOT a new request per se, let alone a request drafted in the knowledge of the new objection and in order to overcome it. Furthermore, by withdrawing auxiliary requests 1a and 2 to 6 the proprietor acted in the interest of procedural economy and the fact that it maintained the second auxiliary request could not be held against it, since as laid out above, it should have been given at least one opportunity to file a new request in response to the new objection. In denying the proprietor this opportunity, the division exercised its discretion in an unreasonable way.

4.1.6 In the decision under appeal, the opposition division refers to its discretion under Rule 116 EPC.

4.1.7 However, the board notes that Rule 116(2) EPC states that new documents filed by the proprietor after the final date for making submissions need not be considered unless admitted on the grounds that the subject of the proceedings has changed. In the present case, the new objection under Article 123(3) EPC represented a change of the subject of the proceedings and, given the very late timing of the objection, it was evidently impossible for the proprietor to file a response before the final date set under Rule 116 EPC.

4.1.8 It can further be noted that the passage of the EPO Guidelines (version of November 2015; H-II, 2.7) relied upon by the division also emphasises that requests filed in response to a change of the subject of the proceedings have to be admitted.

4.1.9 Finally the Board notes that according to the established jurisprudence, the relevant criterion for deciding on the admissibility of late filed requests is their prima-facie allowability in view of the objection under discussion. This criterion is fulfilled in the present case since the amendment in claim 1 is clearly suitable to overcome the objection under Article 123(3) EPC, because the limitation to an absolute molecular weight is re-instated. The amendment also overcomes the objection under Article 123(2) EPC which the division found pertinent (point 2 of the decision), because the new range for the molecular weight has a clear basis in the application as filed (page 10, line 6-7). Hence the request should have been admitted.

4.1.10 For the board, the convergence criterion relied upon by the division is of secondary importance in the context of objections under Article 123(3) EPC, because while a novelty objection can be overcome by limiting a claimed subject-matter even further in a convergent way, this is not necessarily the case for an objection under Article 123(3) EPC.

4.1.11 It goes without saying that the non-validity of the priority claim is an unsuitable criterion. In a hypothetical case, the non-validity of the priority might lead to a request being prima-facie not novel but even in such a case, it would not be the non-validity of the priority claim as such that would potentially lead to the request not being admissible but its prima-facie lack of novelty. Hence, simply pointing out that the priority claim is not valid for a newly filed request is not a reason for not admitting it.

4.1.12 In view of the above considerations the board exercised its discretion and decided not to exclude the third auxiliary request from the appeal proceedings.