T 0862/16 - Secondary legislation

 Key points

• This decision was published already in March 2021.
• In an opposition appeal, "the board raised, ex officio, a further objection under Article 76(1) EPC (to be referred as objection (vii)), namely that claim 1 uses the formulation "means for performing an RRC Reconfiguration procedure to resume a data radio bearer other than a signaling radio bearer 1  when an RRC connection is re-established", whereas the parent application as filed uses the formulation "all radio bearers other than a signaling radio bearer 1" (cf. claim 1 and paragraph [0003], line 10 of the parent application as published). Thus, claim 1 now embraces the possibility that not all other radio bearers will be resumed, as opposed to the teaching of the parent application as filed." 
• " The appellant [patentee] objected to the board's raising new issues in the appeal proceedings, arguing that new Article 12(2) RPBA 2020 establishes the character of the appeal proceedings as a judicial review in which the parties have only very limited room for amending their case with respect to the first-instance proceedings. The board therefore should be similarly constrained from introducing new objections of its own motion. This is not persuasive, as will be discussed later when dealing with the request for referral to the Enlarged Board of Appeal (cf. point 8 below)." 
• The Board admits an auxiliary request. " In the present case, the board, exceptionally, raised a new objection ex officio. Consequently, the requirement for there to be "exceptional circumstances" is met." 
• Turning again to the issue of the Board raising a new objection: " The board sees here no provision, or any other provision of the Rules of Procedure, which could and would restrict its power conferred by Articles 111(1) and 114(1) EPC to raise new objections of its own motion. This would, moreover, be "incompatible with the spirit and purpose of the Convention" (cf. Article 23 RPBA 2020). Thus, provisions of the RPBA as "secondary legislation" according to Article 23(4) and Rule 12c EPC could never take precedence over the provisions of the EPC itself (cf. Article 23(3) EPC)." 
• " Although G 10/91, OJ 1993, 420, imposes a limitation on the scope of examination, in inter partes appeal proceedings, that fresh grounds for opposition can only be introduced with the proprietor's consent, by "ground for opposition" is here meant one of the legal bases set out in Article 100 EPC. This is consistent with a "ground" being considered as the legal basis (cf. G 1/95, OJ 1996, 615, point 5.4 of the reasons), and not the factual basis, which concerns the facts, arguments and evidence relied on ([G 1/95] cf. point 3.1 of the reasons). The board is not aware of any case law which would regard two objections having the same legal basis, e.g. Article 76(1) EPC, which concerns the ground for opposition pursuant to Article 100(c) EPC, as being separate grounds for opposition within the meaning of G 10/91." 
• " Moreover, in case of amendments of the claims in the course of inter partes appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (see G 10/91, point 19 of the reasons). The board notes in passing that in ex parte appeal proceedings any new ground, i.e. not examined by the first-instance department, can be invoked by a Board of Appeal under Article 114(1) EPC during the appeal proceedings (cf. G 10/93, OJ 1995, 172, Headnote)." 
•  " That the board may raise new objections, such as even a new inventive-step objection, is furthermore confirmed by the Enlarged Board of Appeal (see e.g. R 16/13, points 5.1 and 5.2 of the reasons). This is also consistent with Article 13(1) RPBA 2020, which mentions "the issues which were admissibly raised by another party in the appeal proceedings or which were raised by the Board". 
• " It goes without saying that, when a new objection is raised, the proprietor's right to be heard must be respected (Article 113(1) EPC), but that is a separate issue (see also explanatory remarks to Article 13(1) RPBA 2020, penultimate paragraph, last sentence: "Where the Board raises an issue of its own motion under Article 114(1) EPC, the party's right to be heard under Article 113(1) EPC must be respected")." 

T 0862/16

decision text omitted.

https://www.epo.org/law-practice/case-law-appeals/recent/t160862eu1.html