T 2002/19 - Forfeiture of attacks

Key points

•  This decision touches on a rather subtle point of waiver though more precisely, perhaps, forfeiture of objections (in the sense of the RPBA 2020, i.e. of attacks).
• The opponent presented new inventive step attacks with the Statement of grounds against AR-2 filed during the oral proceedings before the OD. The Board does not admit these attacks under Art. 12(4) RPBA, under the prong that they should have been filed earlier, which in turn raises the question if the opponent was reasonably expected to submit the attacks during the first instance proceedings. The opponent submitted some other attacks against AR-2 before the OD; the Board considered the merits of these attacks and found them not prejudicial to the claims at issue. 
• The Board, in machine translation: “The then opponent and current appellant expressly did not deny the admissibility of the then auxiliary request 2 and the current main request and did not criticize its late submission at the oral hearing, so that this request was not a surprise and consequently the new objections do not constitute an appropriate response to a surprising submitted request”
• “At the end of the inventive step discussion, the chairman [of the OD] made sure that no party would like to comment further on the subject”, i.e. the chair of the OD enquired if the opponent wished to present further inventive step attacks.
• The question here is: what exactly is the link between these observations of the  Board, and the phrase “should have been submitted ... in the proceedings leading to the decision under appeal” in Art. 12(6)(s.2) RPBA 2020? Why exactly is it relevant that the opponent did not protest against the admissibility of AR-2?
• Possibly, by not protesting against the admissibility of AR-2, the opponent waived/forfeited the argument that it was not in a position to fully discuss inventive step of AR-2 during the oral proceedings before the OD. Possibly by indicating that it did not wish to present further attacks, when asked by the chair, the opponent waived/forfeited the argument that the course of the oral proceedings had prevented it from presenting the attacks during the oral proceedings. 
• I use the terms ‘waiver’ and ‘forfeiture’ as in USA appellate procedure (link) "Forfeiture and waiver are two concepts that U.S. courts apply in determining whether reversible error has occurred. Waiver is the voluntary relinquishment, surrender or abandonment of some known right or privilege. Forfeiture is the act of losing or surrendering something as a penalty for a mistake or fault or failure to perform, etc.". Hence, forfeiture seems to apply to the present case. 

EPO - T 2002/19

Link to the decision after the jump, as well as an extract of the decision text.

https://www.epo.org/law-practice/case-law-appeals/recent/t192002du1.html

8.3.6 However, it is not clear why the appellant would have been prevented from submitting the objections concerned in the opposition proceedings.

8.3.7 The then opponent and current appellant expressly did not deny the admissibility of the then auxiliary request 2 and the current main request and did not criticize its late submission at the oral hearing, so that this request was not a surprise and consequently the new objections do not constitute an appropriate response to a surprising submitted request (see minutes of the oral proceedings before the opposition division, point 11.).

8.3.8 According to point 13 of the minutes of the oral proceedings, only the question of inventive step based on document D0 was discussed before the opposition division. At the end of the inventive step discussion, the chairman made sure that no party would like to comment further on the subject (see minutes of the oral proceedings before the opposition division, point 13.3).

8.3.9 Apparently, thanks to the reassurance of the chairman of the opposition division, the appellant had the opportunity to submit further attacks before the end of the debate. Therefore, the appellant's argument that the relevance of the further line of attack only became clear in the course of the oral proceedings before the opposition division is not convincing.

8.3.10 By submitting the further objections to the lack of inventive step in the appeal proceedings for the first time, the appellant ultimately prevented the opposition division and the respondent from being able to comment on this in the opposition proceedings. This approach contradicts the primary aim of the appeal procedure to review the contested decision in a judicial manner (see Article 12 (2) RPBA 2020).

8.3.11 In view of the considerations presented, the board makes use of its power under Article 12 (4) RPBA 2007 and does not admit the further objections under Article 56 EPC in appeal proceedings.