T 0354/20 - Both parties' failure to properly present in writing their case

Key points

•  The Board remits a case, adding that  "The Board notes that the reasons for this situation are mainly due to both parties' failure to properly present in writing their case in respect of the auxiliary requests." 
• Taking a step back: The OD maintained the patent as granted. The opponent appeals. The Board  finds the main request to be not novel. "From the above it follows that the respondent's main request to maintain the patent as granted fails and that the decision under appeal is to be set aside. The respondent (patent proprietor) filed 19 auxiliary requests with the reply to the statement of grounds of appeal. Auxiliary requests 1 to 12 and 14 to 19 were already filed during opposition proceedings. As the opposition was rejected, none of the issues concerning the auxiliary requests were part of the impugned decision."
• " With the reply to the statement of grounds of appeal, filed on 22 October 2020, the respondent [patentee] explained what were the amendments made in accordance with the auxiliary requests and stated in very general terms that the auxiliary requests were submitted in response "to the opponent's objection concerning an alleged lack of novelty and inventive step of the main request"." 
• " The appellant [opponent] filed comments on the auxiliary requests with letter dated 24 March 2021, i.e. about three months after the summons to oral proceedings, which was issued on 18 December 2020, i.e. about 2 months after the reply to the statement of grounds of appeal was filed, and in which it was pointed out (point 5) that the appellant did not file observations in respect of the auxiliary requests." 
• " the situation that arose at the oral proceedings when the Board announced after deliberation that it considered that the main request was not allowable for lack of novelty, was that - possibly apart for auxiliary requests 1 to 6 - there was no case made by the parties in advance of the oral proceedings as to why the auxiliary requests would or would not overcome the lack of novelty." 
• " Consequently, assuming that some of the requests would be admitted into the proceedings, the Board was put in the position to either allow the parties to present their arguments on novelty and/or inventive step for the first time at the oral proceedings or else not admit any argument not presented in writing. In the former case, this might have led to a new discussion at the oral proceedings, possibly with unexpected twists. In the latter case, this might have led to the maintenance of the patent on pure formal reasons." 
• Or not admitting the requests and revoking the patent?
  
  
• As a comment, the unresolved key question is: should the opponent appealing against rejection of the opposition, address auxiliary requests pending before the OD in the SoG? Or can the opponent first wait whether the patentee maintains those auxiliary requests in appeal? In the former case, the failure was on the side of the opponent. In the latter case, the failure was on the side of the patentee who as respondent perhaps formally maintained the AR's in appeal, but without proper substantiation and hence not validly. This is, in my view, frankly not clear enough in the current RPBA. The Board does not provide clarity on this point but remits.

EPO T 0354/20 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t200354eu1.html

3. Article 11 RPBA 2020

3.1 From the above it follows that the respondent's main request to maintain the patent as granted fails and that the decision under appeal is to be set aside.

3.2 The respondent (patent proprietor) filed 19 auxiliary requests with the reply to the statement of grounds of appeal. Auxiliary requests 1 to 12 and 14 to 19 were already filed during opposition proceedings.

3.3 As the opposition was rejected, none of the issues concerning the auxiliary requests were part of the impugned decision.

3.4 With the reply to the statement of grounds of appeal, filed on 22 October 2020, the respondent explained what were the amendments made in accordance with the auxiliary requests and stated in very general terms that the auxiliary requests were submitted in response "to the opponent's objection concerning an alleged lack of novelty and inventive step of the main request".

3.5 The appellant filed comments on the auxiliary requests with letter dated 24 March 2021, i.e. about three months after the summons to oral proceedings, which was issued on 18 December 2020, i.e. about 2 months after the reply to the statement of grounds of appeal was filed, and in which it was pointed out (point 5) that the appellant did not file observations in respect of the auxiliary requests.

The appellant objected the admissibility of all the auxiliary requests in particular for lack of convergency, argued that some of the requests were not allowable for lack of compliance with Rule 80, Article 84 and/or 123(2) EPC, that auxiliary requests 1 to 6 lacked novelty and inventive step for the same reasons as the main request, and proposed to discuss the novelty and inventive step of any auxiliary request which are admitted into the proceedings at the oral proceedings.

3.6 Hence the situation that arose at the oral proceedings when the Board announced after deliberation that it considered that the main request was not allowable for lack of novelty, was that - possibly apart for auxiliary requests 1 to 6 - there was no case made by the parties in advance of the oral proceedings as to why the auxiliary requests would or would not overcome the lack of novelty. Consequently, assuming that some of the requests would be admitted into the proceedings, the Board was put in the position to either allow the parties to present their arguments on novelty and/or inventive step for the first time at the oral proceedings or else not admit any argument not presented in writing.

In the former case, this might have led to a new discussion at the oral proceedings, possibly with unexpected twists. In the latter case, this might have led to the maintenance of the patent on pure formal reasons.

The Board notes that the reasons for this situation are mainly due to both parties' failure to properly present in writing their case in respect of the auxiliary requests. The Board further notes that the appellant's statement that a remittal was not appropriate as the objections that would be raised were not complex such that they could not be dealt with at the oral proceedings, is, in the absence of written submissions, of speculative nature.

3.7 Under these circumstances, the Board considers that special reasons in the sense of Article 11 RPBA present themselves for remitting the case to the opposition division for dealing with all relevant issues concerning the auxiliary requests.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.