T 0464/18 - The Board examines of own motion in opposition

Key points

•  In this opposition appeal, the  Board finds the main request to be not novel.
• Turning to AR-1, " During the oral proceedings, the appellant stated that they intended to raise objections under Article 123(2) EPC and objections of lack of novelty against the auxiliary requests 1 and 2, and the respondent objected that these objections should be disregarded by the Board pursuant to Article 13(2) RPBA 2020.

  Irrespective of the admissibility of the appellant's objections, at the oral proceedings the Board examined of its own motion (Article 114(1) EPC) whether claims 1 of auxiliary requests 1 and 2 complied with the requirements of Article 123(2) EPC and came to the conclusion that they introduce added subject-matter for the following reasons." 

• The respondent/patentee objects under R.106: " During the oral proceedings, the respondent submitted that, since no objections were raised against the auxiliary requests 1 and 2 by the appellant in the written proceedings, the Board should allow at least the auxiliary request 1. As regards an examination of the requirements of Article 123(2) EPC by the Board of its own motion, the respondent submitted that since the Board did not raise any objections in the communication in preparation to oral proceedings, the respondent was not in a position to properly react to such an examination, and therefore a decision of the Board not allowing these requests for lack of compliance under Article 123(2) EPC constituted a violation of the right to be heard, in respect of which an objection under Rule 106 EPC was raised." 

• " During the oral proceedings, the respondent was given the opportunity to explain orally why the introduction of features in claim 1 of auxiliary request 1 and 2, respectively, did not result in an intermediate generalisation, even though the added features were disclosed in the description in combination with other features. Since the arguments of the respondent were not convincing, for the reasons given above, the Board concluded that it was justified to decide that the auxiliary requests were not allowable. The respondent's argument that they were taken by surprise by the Board's examination of the requirements of Article 123(2) EPC of its own motion is not convincing. The respondent should have expected the issue of amendments to be discussed at the oral proceedings, in particular in view of the fact that the independent claims of the auxiliary requests were amended by introduction of features taken from the description (see also G10/91, points 19 of the reasons). Furthermore, although the Board did not raise objections in the communication pursuant to Article 15(1) RPBA, it drew the parties's attention (see point 7) to the fact that "depending on the outcome of the discussion regarding the main request, the first and the second auxiliary requests will be discussed during oral proceedings". Hence, a discussion of the auxiliary requests was to be expected.
  Finally, the issue of intermediate generalisation was thoroughly discussed at the oral proceedings and it is not apparent why this discussion would have required an adjournment of the oral proceedings, or even a remittal, for the respondent to properly prepare to it. Accordingly, the Board takes the view that no violation of the respondent's right to be heard (Article 113(1) EPC) has taken place when coming to the conclusion that auxiliary requests 1 and 2 are not allowable under Article 123(2) EPC. As a consequence, the objection under Rule 106 EPC is dismissed." 

• Comes the surprise at the end - the  Board remits the case: " However, the fact that the respondent was only made aware for the first time during oral proceedings that the auxiliary requests were not allowable under Article 123(2) EPC justifies that the respondent be given a proper opportunity to prepare and file amended requests. In view thereof, and of the fact that the respondent requested remittal of the case to the opposition division and the appellant did not object, the Board takes the view that there are special reasons in the sense of Article 11 RPBA justifying remittal of the case to the department of first instance." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

2. Auxiliary requests 1 and 2

During the oral proceedings, the appellant stated that they intended to raise objections under Article 123(2) EPC and objections of lack of novelty against the auxiliary requests 1 and 2, and the respondent objected that these objections should be disregarded by the Board pursuant to Article 13(2) RPBA 2020.

Irrespective of the admissibility of the appellant's objections, at the oral proceedings the Board examined of its own motion (Article 114(1) EPC) whether claims 1 of auxiliary requests 1 and 2 complied with the requirements of Article 123(2) EPC and came to the conclusion that they introduce added subject-matter for the following reasons.

...

3. Objection under Rule 106 EPC and remittal to the first instance.

3.1 During the oral proceedings, the respondent submitted that, since no objections were raised against the auxiliary requests 1 and 2 by the appellant in the written proceedings, the Board should allow at least the auxiliary request 1. As regards an examination of the requirements of Article 123(2) EPC by the Board of its own motion, the respondent submitted that since the Board did not raise any objections in the communication in preparation to oral proceedings, the respondent was not in a position to properly react to such an examination, and therefore a decision of the Board not allowing these requests for lack of compliance under Article 123(2) EPC constituted a violation of the right to be heard, in respect of which an objection under Rule 106 EPC was raised.

3.2 The Board agrees with the respondent that the appellant should have raised objections against the auxiliary requests well in advance of the oral proceedings. Indeed the appellant had sufficient time to raise objections at their disposal, considering that these requests were filed with the reply to the statement of grounds of appeal, dated 13 September 2018, and that the Board's communication pursuant to Article 15(1) RPBA was issued on 20 February 2020. In fact, at the oral proceedings the Board did not admit the objections of lack of novelty against the auxiliary requests, as the respondent did not provide cogent reasons for raising these objections only at such a late stage (Article 13(2) RPBA). However, the Board takes the view that under the circumstances of this case:

- in which the appealed decision did not deal with the auxiliary requests (the opposition was rejected), and

- in which claim 1 of the the auxiliary requests is amended by introducing features taken from the description,

the mere fact that the respondent did not raise any objections in advance of the oral proceedings does not justify allowing these requests without the Board carrying out an examination of its own motion (Article 114(1) EPC) in respect of the requirements of Article 123(2) EPC.

During the oral proceedings, the respondent was given the opportunity to explain orally why the introduction of features in claim 1 of auxiliary request 1 and 2, respectively, did not result in an intermediate generalisation, even though the added features were disclosed in the description in combination with other features. Since the arguments of the respondent were not convincing, for the reasons given above, the Board concluded that it was justified to decide that the auxiliary requests were not allowable.

The respondent's argument that they were taken by surprise by the Board's examination of the requirements of Article 123(2) EPC of its own motion is not convincing. The respondent should have expected the issue of amendments to be discussed at the oral proceedings, in particular in view of the fact that the independent claims of the auxiliary requests were amended by introduction of features taken from the description (see also G10/91, points 19 of the reasons). Furthermore, although the Board did not raise objections in the communication pursuant to Article 15(1) RPBA, it drew the parties's attention (see point 7) to the fact that "depending on the outcome of the discussion regarding the main request, the first and the second auxiliary requests will be discussed during oral proceedings". Hence, a discussion of the auxiliary requests was to be expected. Finally, the issue of intermediate generalisation was thoroughly discussed at the oral proceedings and it is not apparent why this discussion would have required an adjournment of the oral proceedings, or even a remittal, for the respondent to properly prepare to it.

Accordingly, the Board takes the view that no violation of the respondent's right to be heard (Article 113(1) EPC) has taken place when coming to the conclusion that auxiliary requests 1 and 2 are not allowable under Article 123(2) EPC. As a consequence, the objection under Rule 106 EPC is dismissed.

3.3 However, the fact that the respondent was only made aware for the first time during oral proceedings that the auxiliary requests were not allowable under Article 123(2) EPC justifies that the respondent be given a proper opportunity to prepare and file amended requests. In view thereof, and of the fact that the respondent requested remittal of the case to the opposition division and the appellant did not object, the Board takes the view that there are special reasons in the sense of Article 11 RPBA justifying remittal of the case to the department of first instance.

Order

For these reasons it is decided that:

The decision under appeal is set aside.

The case is remitted to the opposition division for further prosecution