T 1241/18 - (II) The patentee as respondent and auxiliary requests

Key points

•  The OD maintains the patent as granted and does not discuss the auxiliary requests filed by patentee in the first instance proceedings. The opponent appeals and logically only discusses the claims as granted. What should the patentee as respondent do in connection with the auxiliary requests, if they were filed without substantiation before the OD?
• The Board " In the present case, the opposition division's finding in the decision under appeal that the patent under appeal was to be maintained does not release the patent proprietor (respondent) from their obligation to also substantiate further requests. With the auxiliary requests, the respondent requests the maintenance of the patent in amended form, which is expressly covered by the wording of Article 12(2) RPBA 2007, according to which it must be explained on what grounds the patent is to be maintained in amended form. The respondent's "complete case" in the sense of Article 12(2) RPBA 2007, therefore, is to be considered to also refer to the auxiliary requests." [slight edits in quote]
• " As set out before, however, the respondent [patentee] has neither in the first instance proceedings nor in the reply to the appeal in any way argued on what grounds the auxiliary requests were deemed to overcome the appellant's objections." 
• " It is further to be noted that the appellant [opponent] in the statement of grounds of appeal not only objected to claim 1 of the main request but also presented arguments as to why the subject-matter of the dependent claims of the patent as granted was not patentable, and that at least some of the auxiliary requests were based on those claims. The board therefore does not agree with the respondent that neither the decision under appeal nor the statement of grounds of appeal gave rise to a detailed argument as regards the patentability of the auxiliary requests."
• The auxiliary requests are not admitted.
• The case is not remitted: " However, in the case at hand, the respondent's main request was not allowable and the first to fifth auxiliary requests were not admitted into the appeal procedure. There is thus no factual basis for a remittal of the case to the opposition division and the board consequently has decided to reject the respondent's request to remit the case to the department of first instance." 
• The patent is revoked.

EPO T 1241/18

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/t181241eu1.html

3. First to fifth auxiliary requests - Admissibility

3.1 The first to fifth auxiliary requests filed with the respondent's reply to the appeal are not admitted into the appeal procedure, because they do not meet the requirements of Article 12(2) RPBA 2007, applicable under Article 25(1) RPBA 2020.

3.2 In the reply to the appeal, the respondent requested that the patent be maintained according to one of the first to fifth auxiliary request (see page 1 of the reply). The only further mentioning of the auxiliary requests in the reply to the appeal is on page 14, where it is stated that

"...Proprietor has - despite the positive findings in the Opposition Division's preliminary opinion - prepared and filed a first, second, third, fourth or fifth auxiliary request in line with the time-limit according to Rule 116 EPC. We maintain these auxiliary requests and resubmit the respective sets of claims as part of the present response."

3.3 While it is true that the respondent had already filed the first to fifth auxiliary requests with letter of 6 December 2017 before the opposition division and provided arguments with regard to Article 123(2) EPC in this context, the board observes that neither in the first instance proceedings nor in the reply to the appeal, did the respondent provide any arguments as regards the question of how the appellant's objections might be overcome by these requests.

3.4 Article 12(2) RPBA 2007 requires that the statement of grounds of appeal and the reply shall contain a party's complete case and that they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. Article 12(4) RPBA 2007 further indicates that the parties submissions under paragraph (1) of that article shall be taken into account by the board only if and to the extent that they meet the requirements of paragraph (2).

In the present case, the opposition division's finding in the decision under appeal that the patent under appeal was to be maintained does not release the patent proprietor (respondent) from their obligation to also substantiate further requests. With the auxiliary requests, the respondent requests the maintenance of the patent in amended form, which is expressly covered by the wording of Article 12(2) RPBA 2007, according to which it must be explained on what grounds the patent is to be maintained in amended form. The respondent's "complete case" in the sense of Article 12(2) RPBA 2007 therefore is to be considered to also refer to the auxiliary requests.

3.5 The board notes that the primary object of the appeal is to review the decision under appeal (Article 12(2) RPBA 2020) and the respondent therefore had to take into account that the board might accede to the appellant's request to set the decision under appeal aside. As set out before, however, the respondent has neither in the first instance proceedings nor in the reply to the appeal in any way argued on what grounds the auxiliary requests were deemed to overcome the appellant's objections.

3.6 It is further to be noted that the appellant in the statement of grounds of appeal not only objected to claim 1 of the main request but also presented arguments as to why the subject-matter of the dependent claims of the patent as granted was not patentable, and that at least some of the auxiliary requests were based on those claims.

The board therefore does not agree with the respondent that neither the decision under appeal nor the statement of grounds of appeal gave rise to a detailed argument as regards the patentability of the auxiliary requests.

3.7 In light of the above considerations, the board has decided to exercise its discretion under Article 12(4) RPBA 2007 not to admit the first to fifth auxiliary requests into the appeal proceedings.

4. Request for remittal

The respondent requested remittal of the case to the department of first instance if the board were to come to the conclusion that the main request was not allowable.

According to Article 111(1) EPC, a board may remit the case to the department of first instance for further prosecution.

However, in the case at hand, the respondent's main request was not allowable and the first to fifth auxiliary requests were not admitted into the appeal procedure. There is thus no factual basis for a remittal of the case to the opposition division and the board consequently has decided to reject the respondent's request to remit the case to the department of first instance.

5. Result

Given that the appeal was found to be admissible and that the ground for opposition under Article 100(a) EPC in combination with Article 56 EPC prejudices the maintenance of the patent as granted, and further considering that the first to fifth auxiliary requests were not admitted into the appeal procedure, the board had to accede to the appellant's request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.