T 2605/18 - All aimed at illustrating, refining or further developing the arguments

Key points

•  The opponent presents inventive step arguments during the oral proceedings. The patentee contests the admissibility.
• The Board: "the submissions presented by the respondent [opponent] during the oral proceedings to which the appellant objected were all aimed at illustrating, refining or further developing the arguments of the decision under appeal and countering the arguments of the appellant made in the appeal proceedings. Any additional passages or figures referred to merely served this purpose. The board notes that no additional pieces of evidence were submitted. The board therefore takes the view that the respondent's submissions objected to by the appellant do not amount to an amendment of the respondent's appeal case. Therefore, the board has no discretion under Article 13(2) RPBA 2020 not to admit them into the proceedings."
• The Board 3.2.05 recalls that: " the fact that oral proceedings form an important part of proceedings before the boards. Their prominence is underlined by the absolute right of a party to oral proceedings under Article 116 EPC. They serve to discuss matters pertinent to the decision of the board. Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments and of course the evidence, submitted in a timely fashion in the written proceedings (see decision T 247/20, Reasons, point 1.3 [of Board 3.2.08])."

EPO T 2605/18 

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/t182605eu1.html

3. Auxiliary request 2

3.1 Admittance of the respondent's submissions concerning auxiliary request 2 in view of documents D1 and D7

3.1.1 In accordance with Article 13(2) RPBA 2020, which applies by virtue of Article 25(1) RPBA 2020, any amendment to a party's appeal case made after the expiry of a period specified by the board in a communication under Rule 100(2) EPC or, where such a communication is not issued, after notification of a summons to oral proceedings is, in principle, not to be taken into account unless there are exceptional circumstances which have been justified with cogent reasons by the party concerned.

When applying Article 13(2) RPBA 2020, the first question is whether the submission objected to is an amendment to a party's appeal case. If that question is answered in the negative, the board has no discretion under Article 13(2) RPBA 2020 not to admit the submission.

3.1.2 In the case at hand, the respondent stated the following on page 1 of its reply to the statement of grounds of appeal with respect to auxiliary request 2:

"The reasoning of the opposition division with regard to the previous nine auxiliary requests is equally correct and even to the extent that these requests satisfy the requirements of Articles 123(2) and 84 EPC (which is not the case for at least some of the requests), each of these requests at least lacks inventive step in view of D1 when combined with D7. For instance, D7 precisely discloses at paragraph [0134] products containing outer TAD plies in combination with plies (plural) produced using a wet-pressed technique (see also paragraph [0128]). This teaching is evidently highly compatible with D1 and the proprietor's arguments in that respect should not be followed."

In view of this general reference to the findings in the decision under appeal, the appellant requested that any oral submission which went beyond the opposition division's arguments and were related to newly cited passages in document D7 not be admitted.

In the judgment of the board, the submissions presented by the respondent during the oral proceedings to which the appellant objected were all aimed at illustrating, refining or further developing the arguments of the decision under appeal and countering the arguments of the appellant made in the appeal proceedings. Any additional passages or figures referred to merely served this purpose. The board notes that no additional pieces of evidence were submitted. The board therefore takes the view that the respondent's submissions objected to by the appellant do not amount to an amendment of the respondent's appeal case. Therefore, the board has no discretion under Article 13(2) RPBA 2020 not to admit them into the proceedings.

The above approach takes account of the fact that oral proceedings form an important part of proceedings before the boards. Their prominence is underlined by the absolute right of a party to oral proceedings under Article 116 EPC. They serve to discuss matters pertinent to the decision of the board. Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments and of course the evidence, submitted in a timely fashion in the written proceedings (see decision T 247/20, Reasons, point 1.3).

3.2 Conclusion on admittance

The respondent's submissions concerning auxiliary request 2 in view of documents D1 and D7 do not constitute an amendment of the respondent's appeal case and thus form part of the proceedings.

[...]

3.3.4 Conclusion on inventive step of the subject-matter of claim 1 of auxiliary request 2

The above findings confirm the opposition division's conclusion that the subject-matter of claim 1 is rendered obvious by document D1 in combination with document D7. The requirements of Article 56 EPC are therefore not met.