T 2179/16 - Waiver of attack

Key points

•  The opponent argues that the claim at issue is not inventive over D10. The Board decides that the claim is inventive over D10.
• With the SoG, the opponent had also submitted an attack using D2 as the closest prior art.
• Admissibility of the attack is to be decided under Article 12(4) RPBA 2007.
• The attack "had initially been submitted with the notice of opposition at the outset of opposition proceedings. At that point in time, those objections were directed against the claims of the granted patent, which were the basis for the main request before the opposition division."
• According to Article 12(4) RPBA 2007, the board has the discretion to hold inadmissible inter alia facts which could have been presented in opposition proceedings. It is established case law that this provision also applies to facts (attacks) which were submitted and subsequently withdrawn during the first instance proceedings. Article 12(6)(s.2) RPBA 2020 uses "were no longer maintained".
• The AR was filed shortly before the hearing before the OD. The opponent did not comment in writing on it. 
• Inventive step was discussed during the oral proceedings before the OD. "Thus, at the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments."
• "There then ensued a discussion starting only from D10 as closest prior art."
  
• "Specifically, the minutes (page 11, "12:30") state the following: "The parties having indicated that they have nothing more to add, the Chairman announces a break of 15 minutes to deliberate on the question of inventive step". Hence, the chair of the opposition division, having opened the discussion in relation to inventive step and having heard arguments from the appellant only in relation to D10 as closest prior art, subsequently confirmed with the parties whether there was anything further to add to their submissions. In the absence of any further submissions, it can only have been concluded that the parties had nothing to add. This in turn can only mean that the further objections that had previously been raised against the then main request, were not pursued or raised against the then first auxiliary request."
• It seems that the Board here identifies a waiver of the attack. Note, this waiver is based on an action of the opponent, namely, indicating that they had nothing more to add, in combination with the attack being on file. However, if the auxiliary request had significant claim amendments (for inventive step) compared to the claims as granted, it may also be a case of forfeiture, in the sense that the opponent failed to present the attack, instead of presenting the attack and then abandoning it.
• After the break, "oral proceedings were resumed, and the chair announced the conclusion that the first auxiliary request met the requirements of Article 56 EPC. At this point in the oral proceedings, it would still not have been too late for the appellant to have raised the further objections had it so desired, or at the very least, to have enquired with the opposition division as to whether said further objections had been taken into account in reaching its conclusion. However, the appellant remained silent."
• Practice point: if a conclusion is announced, the debate can be reopened. If a decision is announced, not. 
• "In view of the above, there can be no doubt that the further objections were not pursued or raised against the then first auxiliary request during the opposition proceedings."
• "By not pursuing or raising these objections before the opposition division and introducing them for the first time before the board, the appellant effectively avoided a decision by the opposition division on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance."
• As a comment, Art. 12(4) RPBA  20007 speaks only of the power of the Board to hold such attacks inadmissible. Article 12(6)(s.2) RPBA 2020 likewise provides for an exception (i.e. admissibility) "unless the circumstances of the appeal case justify their admittance". For this exercise of discretion, it may matter whether the attack was waived or forfeited before the OD (cf. USA law, see here).
• The case is similar to T 1958/19, also in the outcome. 
• See, however, also R 5/19, r.3.6, in translation: "The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part." 

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/t162179eu1.html

4.3 Inventive step - Admittance of further objections

4.3.1 With the statement of grounds of appeal, the appellant submitted further inventive step objections (hereinafter: "further objections") starting from:

- the common general knowledge referred to in the patent, paragraph [0005] as closest prior art;

- D2 as closest prior art;

- D6 to D8 as closest prior art; and

- D9 or D11 as closest prior art.

According to Article 12(4) RPBA 2007, the board has the discretion to hold inadmissible inter alia facts which could have been presented in opposition proceedings. As set out in e.g. T 0341/15 (point 2.1 of the Reasons), for claim requests filed in appeal, the purpose of Article 12(4) RPBA 2007 is inter alia to prevent a party from being able to act such that a decision on a certain subject-matter by the first instance department is avoided, and a board is forced to decide on said subject-matter for the first time in appeal. In the view of the present board view, the same rationale applies to facts and objections filed in appeal. As set out below, it is exactly this situation that occurred in the present appeal proceedings in the form of the appellant's further objections.

4.3.2 The further objections filed with the appellant's statement of grounds of appeal had initially been submitted with the notice of opposition at the outset of opposition proceedings. At that point in time, those objections were directed against the claims of the granted patent, which were the basis for the main request before the opposition division.

4.3.3 Subsequently, with the letter dated 15 April 2016, the respondent filed a first auxiliary request, corresponding to the present main request. Claim 1 of this request differed from claim 1 of the then main request (claims as granted) inter alia in the addition of the following text:

"where the concentration of the organic pesticide compound in the aqueous emulsion is from 10 to 50 % by weight,

and where the concentration of the organic pesticide compound in the aqueous suspension, which is added in step b), is from 1 to 60 % by weight"

Subsequent to the submission of this request, the appellant made no further written submissions in advance of oral proceedings before the opposition division. Hence, the first time that the then first auxiliary request (present main request) was addressed by the appellant was during the oral proceedings before the opposition division. Up to that point in time, no inventive step objections had been raised against the then first auxiliary request.

4.3.4 According to the minutes of oral proceedings before the opposition division, the accuracy of which was undisputed, the discussion in relation to inventive step of the first auxiliary request took place starting at 11:30 (page 8 of the minutes). Here it is stated that

"The Chairman announces ... that the first auxiliary request meets the requirements of Article 54 EPC. The next objection to be discussed should be with regard to Article 56 EPC. The Chairman invites the parties to provide their arguments using the problem solution approach".

Thus, at the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments.

4.3.5 There then ensued a discussion starting only from D10 as closest prior art. Even if one were to assume, in favour of the appellant, that at that point in time there remained some doubt as to whether the further objections raised in the notice of opposition against the then main request were pursued by the appellant also in relation to the claim set of the then first auxiliary request, this doubt, if present at all, would have been dispelled in the further course of the oral proceedings before the opposition division. Specifically, the minutes (page 11, "12:30") state the following:

"The parties having indicated that they have nothing more to add, the Chairman announces a break of 15 minutes to deliberate on the question of inventive step"

Hence, the chair of the opposition division, having opened the discussion in relation to inventive step and having heard arguments from the appellant only in relation to D10 as closest prior art, subsequently confirmed with the parties whether there was anything further to add to their submissions. In the absence of any further submissions, it can only have been concluded that the parties had nothing to add. This in turn can only mean that the further objections that had previously been raised against the then main request, were not pursued or raised against the then first auxiliary request.

4.3.6 At 12:45 (minutes, page 11), oral proceedings were resumed, and the chair announced the conclusion that the first auxiliary request met the requirements of Article 56 EPC.

At this point in the oral proceedings, it would still not have been too late for the appellant to have raised the further objections had it so desired, or at the very least, to have enquired with the opposition division as to whether said further objections had been taken into account in reaching its conclusion. However, the appellant remained silent.

4.3.7 In view of the above, there can be no doubt that the further objections were not pursued or raised against the then first auxiliary request during the opposition proceedings.

4.3.8 The further objections, submitted with the statement of grounds of appeal, thus clearly deviate from the appellant's position during opposition proceedings. By not pursuing or raising these objections before the opposition division and introducing them for the first time before the board, the appellant effectively avoided a decision by the opposition division on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance.

4.3.9 Appeal proceedings are not intended to represent a second chance for filing an opposition based on objections not previously pursued or raised during opposition proceedings. On the contrary, the main purpose of appeal proceedings is to obtain a judicial ruling on the correctness of the first-instance decision.

4.3.10 The appellant's further arguments failed to convince the board.

During oral proceedings before the board, the appellant confirmed that the further objections raised previously against the then main request had not been verbally reiterated during oral proceedings before the opposition division when dealing with the then first auxiliary request. However, this did not mean that they had been abandoned. Rather, it was standard procedure at the outset of oral proceedings for the chair of the opposition division to request that the parties not repeat their written submissions. Abandonment of the further objections would have required an express statement to that effect from the appellant. Hence, it should have been clear to the opposition division that the further objections were maintained.

The board does not find this argument convincing. It does not appear from the minutes that, albeit possibly being standard practice, in the specific case the opposition division indeed requested that the parties not repeat their written submissions. On the contrary, as set out above, at the outset of the discussion on inventive step of the then first auxiliary request, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments. That the oral proceedings before the opposition division followed this course was not disputed by the appellant during oral proceedings before the board.

4.3.11 It was furthermore argued by the appellant that the amendments to the then first auxiliary request (present main request) compared to the then main request had been intended to overcome objections concerning sufficiency of disclosure, not inventive step. It would therefore have been clear to the opposition division, in the absence of an express statement of abandonment, that the further objections in relation to inventive step applied also to this request.

The board disagrees. Even if the amendments in claim 1 (compared to claim 1 of the then main request) were not intended to overcome inventive step objections as stated by the appellant, the fact remains that they resulted in a limitation of the scope of the claim. It cannot be said to be immediately apparent that said limitations were irrelevant to inventive step, because reaching that conclusion would first require, in respect of each further objection, an examination as to whether said amendments resulted in a claim comprising further distinguishing features over the respective starting point. For this reason, after the parties at oral proceedings had confirmed that they had nothing to add in relation to inventive step (supra), it was reasonable for the opposition division to consider that the further objections were no longer pursued and therefore either had been abandoned, or were no longer considered relevant to the new set of claims under discussion.

4.3.12 The appellant also argued that at the outset of oral proceedings before the opposition division, it had maintained its request that the patent be revoked, and that that request was never abandoned. Thus, it should have been clear to the opposition division that the further objections had also not been abandoned.

A request to revoke the patent is however different from the objections and evidence upon which that request is based. In the present case, the request to revoke is thus not incompatible with the apparent conclusion of the opposition division, based on the discussion that took place during oral proceedings according to the minutes, that the further objections were not raised by the appellant against the then first auxiliary request, as set out above. Specifically, despite the request to revoke the patent, there was no reason for the opposition division to understand that the appellant raised said further objections previously made in relation to the then main request also against the then first auxiliary request.

4.3.13 Finally, the appellant argued that it would be unjust and unfair if the objections were not admitted for the sole reason that they had not been addressed in the decision under appeal. The RPBA 2007, in force at the of filing of the appeal, were more lenient than RPBA 2020 on the issue of admittance.

The board fails to see the relevance of this argument. Albeit potentially being more lenient than the RPBA 2020, as set out above, Article 12(4) RPBA 2007 still leads to the conclusion that the further objections cannot be admitted.

4.3.14 Consequently, the board decided not to admit the appellant's further inventive step objections and the facts and evidence on which they are based starting from common general knowledge as set out in the patent specification or starting from any of documents D2, D6 to D8, D9 or D11 into the proceedings pursuant to Article 12(4) RPBA 2007 (see also T 87/15 (point 2 of the Reasons) and T 2730/16 (point 4.2 of the Reasons)).

5. Since there were no further objections in relation to the claims of the main request, this request is allowable.

Order

For these reasons it is decided that:

The appeal is dismissed.