T 0938/20 - Making use of the 10d period to file 100+ AR's

Key points

• The summons for oral proceedings was dated 07.10.2021.
• On 12.10.2021,  the patentee filed auxiliary requests 25 to 139. The operative main request was filed as auxiliary request 105.
• The Board: " The present request was submitted on 12 October 2021, i.e. shortly before notification of the summons to oral proceedings was deemed to have been delivered (Rule 126 EPC). Therefore Article 13(1) RPBA 2020 applies." 
• " The request is a reply to an objection raised under Article 83 EPC by opponent 2 in their reply to the appeal concerning enablement over the whole scope. This objection was not part of the impugned decision, but was admissibly raised within the meaning of Article 12(4) RPBA 2020 in opponent 2's notice of opposition. 
• " However, it had apparently not been discussed during the oral proceedings before the opposition division, although said objection would equally apply to the then-auxiliary request 4. (...) Therefore in the case in hand it cannot be clearly established whether the objection was indeed maintained as required by Article 12(4) RPBA 2020. In view of this, the board considers that it can be accepted that the objection was re-introduced with opponent 2's reply to the appeal. Although it took some time for the appellant to react, the request is considered a fair reaction to opponent 2's objection independently of the fact that many other requests had been filed. The request could have been filed before the opposition division, but, taking into account the total number of objections raised by the opponents in opposition proceedings, it appears that there is no clear indication that it should have been filed in addition to the numerous requests filed before the opposition division, since the opposition division apparently did not consider this objection critical for the requirements of Article 83 EPC. Therefore there is no reason not to admit it when considering Article 12(6) RPBA 2020" [which also applies under Art. 13(1) RPBA 2020] 
• " The request is not detrimental to procedural economy, but to the contrary in the case at hand helped to streamline the proceedings and led to an allowable request as set out below. ' 
• "  the board notes that "giving rise to new objections" is understood to mean that the appellant has to show that prima facie no valid new objection is recognisable (see Supplementary publication 2, Official Journal 2020, RPBA 2020, Table setting out the amendments to the RPBA and the explanatory remarks). It is not understood to mean that any new objection raised by the opponents - whether justified or not - renders the request inadmissible. In the present case it means in particular with respect to Article 123(2) EPC that a basis for the amendment should be easily recognisable." 
• " As to the question of convergence of the (former) requests, the board accepts that in the case at issue, where an extremely large number of objections of different kinds were raised against all the requests on file, convergence was particularly difficult to achieve and under the given circumstances should not be used as the only criterion for denying admissibility of this request. It may be noted in this context that a series of requests that are drafted in defence against a single objection are expected to converge, but equality of arms would be infringed if the opponent was free to raise a multitude of diverging objections, whereas the patentee was restricted to only one line of defence against all of these. In view of all these considerations, the board exercises its discretion to admit the request into the proceedings.'
• Turning to sufficiency: "It is well-established case law that an objection of insufficient disclosure cannot legitimately be based on an argument that the patent does not enable a skilled person to achieve a technical effect which is not defined in the claim (see T 1311/15, Reasons 5.2). The effect is however of relevance to the question of inventive step (see point 7.5 below)."
• Turning to inventive step: " Therefore the board accepts that there is no convincing evidence from the opponents' side showing that a sheet obtained by the process of D9b has as good weldability as a sheet obtained according to the claimed process. In other words, due to the lack of evidence to the contrary it is accepted that the problem posed is solved. The problem does not need to be redefined in less-ambitious terms."
• In this case, the patent included an example showing certain good weldability values, and a comparative example. The burden of proof was on the opponent to show that the cited prior art D9 had already achieved the same weldability as the claimed invention. 
• " the specific combination of heating conditions and pre-coating for good weldability is not rendered obvious by the prior art. The subject-matter of claim 1 of the main request meets the requirements of Article 56 EPC."

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EPO 

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/t200938eu1.html

Reasons for the Decision

1. Article 117 EPC: witness

Opponent 5 had requested in their reply to the appeal that Mr Tenié be heard as witness. In the communication pursuant to Article 15(1) RPBA 2020, the board had indicated that it could not see why such a request should be granted. The indication that Mr Tenié should be heard to confirm the technical content of certain documents in the context of novelty was considered rather to concern submissions as a technical expert than the hearing of a witness to corroborate certain facts previously substantiated by the party (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, III G 2.2.1 und 2.2.2).

It was explained that opponent 5 still had the option of announcing Mr Tenié as an accompanying person for the scheduled oral proceedings, which it finally did, and Mr Tenié did attend the oral proceedings. The request that the witness be heard was therefore irrelevant.

2. Article 111(1) EPC: remittal

Opponent 3 in their reply to the appeal had requested remittal to the opposition division in the event that D9b was found not to anticipate novelty of claim 1 of the granted patent. Since the granted patent was ultimately not discussed any further during oral proceedings, this request did not take effect.

3. Article 13(1) RPBA 2020

The present request was submitted on 12 October 2021, i.e. shortly before notification of the summons to oral proceedings was deemed to have been delivered (Rule 126 EPC). Therefore Article 13(1) RPBA 2020 applies.

According to said article, any amendment to a party's appeal case after it has filed its grounds of appeal or reply is subject to the party's justification for its amendment and may be admitted only at the discretion of the board. Article 12, paragraphs 4 to 6 shall apply mutatis mutandis. The party shall provide reasons for submitting the amendment at this stage of the appeal proceedings. The board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were admissibly raised by another party in the appeal proceedings or which were raised by the board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by another party in the appeal proceedings or by the board and does not give rise to new objections.

The request is a reply to an objection raised under Article 83 EPC by opponent 2 in their reply to the appeal concerning enablement over the whole scope. This objection was not part of the impugned decision, but was admissibly raised within the meaning of Article 12(4) RPBA 2020 in opponent 2's notice of opposition. However, it had apparently not been discussed during the oral proceedings before the opposition division, although said objection would equally apply to the then-auxiliary request 4 (see point 9 of the minutes of the oral proceedings before the opposition division). Therefore in the case in hand it cannot be clearly established whether the objection was indeed maintained as required by Article 12(4) RPBA 2020. In view of this, the board considers that it can be accepted that the objection was re-introduced with opponent 2's reply to the appeal. Although it took some time for the appellant to react, the request is considered a fair reaction to opponent 2's objection independently of the fact that many other requests had been filed. The request could have been filed before the opposition division, but, taking into account the total number of objections raised by the opponents in opposition proceedings, it appears that there is no clear indication that it should have been filed in addition to the numerous requests filed before the opposition division, since the opposition division apparently did not consider this objection critical for the requirements of Article 83 EPC. Therefore there is no reason not to admit it when considering Article 12(6) RPBA 2020.

The request is not detrimental to procedural economy, but to the contrary in the case at hand helped to streamline the proceedings and led to an allowable request as set out below. In that respect the board notes that "giving rise to new objections" is understood to mean that the appellant has to show that prima facie no valid new objection is recognisable (see Supplementary publication 2, Official Journal 2020, RPBA 2020, Table setting out the amendments to the RPBA and the explanatory remarks). It is not understood to mean that any new objection raised by the opponents - whether justified or not - renders the request inadmissible. In the present case it means in particular with respect to Article 123(2) EPC that a basis for the amendment should be easily recognisable.

As to the question of convergence of the (former) requests, the board accepts that in the case at issue, where an extremely large number of objections of different kinds were raised against all the requests on file, convergence was particularly difficult to achieve and under the given circumstances should not be used as the only criterion for denying admissibility of this request. It may be noted in this context that a series of requests that are drafted in defence against a single objection are expected to converge, but equality of arms would be infringed if the opponent was free to raise a multitude of diverging objections, whereas the patentee was restricted to only one line of defence against all of these.

In view of all these considerations, the board exercises its discretion to admit the request into the proceedings.