T 2626/17 - Party as of right vs respondent

Key points

• " The present appeal by opponent 1 (Siemens AG) lies from the interlocutory decision of the opposition division [concerning the maintenance of the patent in amended form].
• " The respondents are the patent proprietors 1 and 2"
• Multiple patentees are joint proprietors, Art. 118 EPC, and must have a common representative (R.151 EPC) (subject to Art. 99(4) of course).
• " Opponent 3 (3M Innovative Properties Company) did not file an appeal against the decision of the opposition division and is therefore a party as of right to the appeal proceedings pursuant to Article 107 EPC."
• It is indeed useful to have a different term for the respondent and the non-appealing party that is on the same side as the appellant in the appeal.
  
  
• As to novelty over D4, slides from a conference presentation: " The talk finishes with the statement that fluoroketones might be a viable substitute for [the compound] SF6 and that the employer of the author of D4, the company manufacturing the fluoroketone, is looking for partners for further development of their applications in dielectric applications." 
• " The oral and written description of an idea is appropriate as a novelty-destroying disclosure, as long as the teaching it describes is enabling and not manifestly erroneous. In contrast, an attempt to put the idea into practice is clearly not a prerequisite for making that idea available to the public or to serve as a novelty-destroying disclosure." 
• This may be different for medical use claims.
• Further as to novelty: "The board does not doubt that carbon may form under arcing [as was identified as a risk in D4] and that this is an issue that has to be dealt with in order for fluoroketones to be economically useful as a replacement for SF6. However, the board observes that it would be a highly surprising stance to imply that the disclosure of D4 was not enabling given that claim 1 of the main request does not contain any feature which could be considered to mitigate the problem of carbon formation. If the respondents were of the opinion that the disclosure of D4 was not enabling, the same would logically apply a fortiori also to the subject-matter of claim 1 of the main request." 
• Note, failure to recite essential features is usually raised under Article 84 EPC which is however not a ground of opposition. 
• The opponent's attacks on AR-2 are not admitted. AR-2 was filed by the patentee with the reply to the appeal. The opponent did not timely file a rejoinder. Moreover, the opponent waited for 11 months after receiving the Board's preliminary opinion pointing out the lack of attacks, namely until one month prior to the oral proceedings.
• " Finally, the board is not persuaded by the appellant's argument that even if regarded as amendments, these submissions were filed in a timely manner, since they were submitted one month before the oral proceedings, as required by the board in the communication under Article 15 RPBA 2020. The board notes that the cited passage of this communication explicitly indicated that admittance of any further submissions is governed inter alia by the provisions of Article 13 RPBA 2020 and that, in addition to these requirements, any further submission should be at the disposal of the other party and the board at least one month before the oral proceedings (last paragraph of the communication). Thus the indication of this date cannot be considered as an additional time limit, superseding the framework for admittance established by Articles 12 and 13(1) and(2) RPBA 2020." 

EPO T 2626/17 - 

The link to the decision is provided after the jump, 

https://www.epo.org/law-practice/case-law-appeals/recent/t172626eu1.html