T 0184/19 - Art. 12(4) RPBA 2007 vs. 2020

Key points

• The patentee files AR 3-6 with the statement of grounds on 22.03.2019. The opponent requests that they are held inadmissible.
• "Auxiliary requests 3,4,5 and 6 correspond to the like numbered auxiliary requests filed shortly before the oral proceedings in opposition but which were not examined."
• "The Board can see no reason why these requests that were re-filed in appeal should not be admitted under the applicable rules of procedure, Article 12(4) 2007."
• " the Board in exercising its discretion refrained from not admitting these requests into the proceedings, Article 12(4) RPBA 2007."
• The Board's reasoning is a bit remarkable because Article 12(4) RPBA 2007 states: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) [including the Statement of ground] shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2).". 
• There is no dispute that the requirements of Art. 12(2) RPBA 2007 were  met. 
• This means that only the  the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings" can be at play.
• However, the requests were actually submitted before the OD, and they were not held inadmissible by the OD (the OD did not arrive at them, finding AR-2 to be allowable).
• Clearly this is different under new Art. 12(4) RPBA 2020.

EPO T 0184/19

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/t190184eu1.html

6. Auxiliary requests 3, 4 to 6

6.1 Admissibility of these requests is contested by appellant opponent 2 with the argument that they were not discussed in the impugned decision and are not convergent with the auxiliary request 2A upheld, as they do not include all of the features added to claim 1 of that request. These requests were filed with the proprietor's statement of grounds of 22 March 2019.

Auxiliary requests 3,4,5 and 6 correspond to the like numbered auxiliary requests filed shortly before the oral proceedings in opposition but which were not examined. The Board can see no reason why these requests that were re-filed in appeal should not be admitted under the applicable rules of procedure, Article 12(4) 2007. They appear to be fair and appropriate alternative attempts at overcoming novelty objections raised in opposition. That they might not converge is immaterial for requests filed with the grounds of appeal; that criterion normally applies only in the later stages of an appeal when considering complexity and the need for procedural economy in application of Article 13(1) RPBA 2007.

Therefore the Board in exercising its discretion refrained from not admitting these requests into the proceedings, Article 12(4) RPBA 2007.

6.2 Opponent 1 requests remittal, should these requests be admitted, as they could not have been prepared to discuss these requests.

6.3 Firstly, the Board notes that the appellant proprietor and opponent 1 have both in fact made substantive submissions for these requests, and that in principle they could be discussed within that framework. The fact that a party, as in this case the appellant opponent 2, has refrained from commenting on the substance of requests, though they had ample opportunity, carries little weight in deciding to remit or not. Indeed, in the present case where the version as upheld by the opposition division fails, it can be expected that undecided lower ranking requests that are clearly not inadmissible, for example because they were duly filed in opposition, will most likely need to be examined by the Board for the first time. These circumstances do not constitute special reasons for remittal.

The Board further decided to exercise its discretion under Article 111(1) EPC together with Article 11 RPCR 2020 not to remit the case, and instead to discuss these requests within the facts that were presented in the parties' written submissions.

6.4 As noted the opponent 1 as party as of right has made submissions on the substance of the auxiliary requests 3 to 6 that follow the version upheld. These arguments were presented with their reply dated 24 July 2019 to the statement of grounds of the proprietor. The appellant proprietor has argued that the principle of prohibition of reformatio in peius bars opponent 1 as non appealing party from doing so.

The Board is unconvinced. The principle of prohibition of reformatio in peius acts to protect a party from a worse outcome than that of the decision they are appealing if they are sole appellant. That is not the case here as opponent 2 also appealed the interlocutory decision. It may be that opponent 1 as non-appealing party cannot formally request a decision which would put the proprietor in a worse position, but it is not formally precluded from bringing arguments in support of an admissible request of another party to the proceedings. Moreover, in the present case it is more than questionable if the reformatio in peius principle is applicable at all. These auxiliary requests are not narrower than the auxiliary request 2A upheld as their claim 1 does not include the critical features added to claim 1 of that request. As correctly stated by the respondent opponent 1, for the purposes of the reformatio in peius principle, the requests must be judged on their substance, and not according to their procedural ranking after the upheld request.

As moreover the opponent 1 filed their arguments in due time as part of their complete case 1, the Board sees no reason for not admitting these arguments pursuant to Articles 12(2) and (4) RPBA 2007.