T 0707/17 - Should have filed that request with its reply to the notice of opposition

Key points

•  "At the end of the oral proceedings, the proprietor withdrew its main request and auxiliary requests 1 to 4, and requested that the appealed decision be set aside and that the patent be maintained on the basis of one of auxiliary requests 5 to 8."
• "The novelty attacks based on E6 and on E11 were raised for the first time in the statement of grounds of appeal. Nothing of significance follows from the fact that E6 was filed with the notice of opposition, whereas E11 was only filed with the statement of grounds of appeal; because lack of novelty in view of E6 was first invoked in the statement of grounds of appeal."
• "Given that the auxiliary request found allowable by the Opposition Division resulted from a combination of granted claims, both attacks could and should have been presented in the notice of opposition, or, at the latest, when the proprietor submitted the relevant request. However, the Board also considers that the proprietor should have filed that request with its reply to the notice of opposition, rather than only shortly before the oral proceedings before the Opposition Division."  
• As a comment, this may not be evident when reading the Guidelines and Rule 116.
• "The Board further acknowledges that, in view of the timing of the request and of the preliminary opinion of the Opposition Division, it was only during the oral proceedings before the Opposition Division that developments led to the conclusion that the evidence provided by E1 and E2 was not sufficient to demonstrate it not to be allowable."
• " It was thus the procedural behaviour of both parties that led to the Board being confronted with facts and evidence brought forward for the first time with the statement of grounds of appeal.  In view of the above, and the fact that the maintenance of invalid patents is not generally in the public interest, the Board considers the prima facie relevance of the new facts and evidence to be the decisive criterion in this case".
• "the novelty attack based on E6 lacks prima facie relevance"
• "There are, to the contrary, serious reasons to suspect that E11 might be prejudicial to novelty of claim 1 of the patent as maintained."
• "Having taken the decision to consider novelty in the light of E11, the proprietor can expect an opportunity to overcome the new issue." Auxiliary request 5 was filed with the reply to the appeal and addresses the novelty objection. 
• "auxiliary request 5 and the inventive step attacks against it based on E11 are to also be considered."
• "Given that none of the attacks brought forward against auxiliary request 5 is successful, the patent can be maintained on basis of it."

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/law-practice/case-law-appeals/recent/t170707eu1.html