T 1109/18 - Auxiliary requests and SoG Patentee

Key points

• Both the opponent and the patentee appeal.
• The OD found the claims of an auxiliary request to be allowable. Some further, lower-ranking, auxiliary requests were pending before the OD, but the OD did not arrive at them.
• Should the patentee comment on those lower-ranking auxiliary requests in its Statement of grounds (and, for that matter, resubmit or present them in appeal in the SoG)?
• The Board in this case finds that this is not necessary. It is sufficient (and necessary) if the patentee introduces those auxiliary requests in its appeal reply brief as respondent.
• The Board: "Not filing the main request already with its own grounds of appeal, but only in reply to the opponents' grounds of appeal, cannot be considered as the abandonment of this claim request. The main request was filed with the reply to the opponents' grounds of appeal and thus in compliance with Article 12(3) RPBA 2020, which explicitly stipulate that the statement of grounds of appeal and the reply are to contain a party's complete appeal case. "
• Note that auxiliary requests that are higher-ranking than the claims held allowable by the OD must be presented in appeal by the patentee with its SoG.
• Note that the opponent accordingly should file a rejoinder to the patentee's appeal reply brief setting out all its objections to all auxiliary requests presented in the patentee's appeal reply brief.

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/t181109eu1.html

MAIN REQUEST

1. Admittance

1.1 The opponents submitted that the main request should not be admitted into the current, second appeal proceedings. This request corresponds to a request which was filed on 3 June 2016 in the first appeal proceedings as the then auxiliary request 2. However, it was not filed with the proprietor's grounds of appeal but, instead, only in reply to the opponents' grounds of appeal. In the opponents' view, this behaviour is to be considered as an abandonment of this request, which should not therefore be admitted into the current appeal proceedings. The opponents referred in this context to case T 446/00. Also, the request was not convergent with the higher-ranking requests filed with the reply.

1.2 For the following reasons, the main request is admitted into the current appeal proceedings.

1.2.1 The main request was filed on 3 June 2016 as auxiliary request 2 in the first appeal proceedings. The then competent board admitted a broader claim request (the main request of 3 June 2016) and remitted the case to the opposition division for further prosecution. The proprietor maintained and re-filed the current main request as auxiliary request 8 with its letter of 17 November 2017 in the proceedings before the opposition division (see also corrected minutes of 20 April 2018, points 2.2 and 6.5). This was also formally "admitted" into the proceedings by the opposition division (see point 3.5 of the minutes and point 3.7 of the decision under appeal: the then auxiliary requests 7 to 13 were eventually renumbered from 8 to 14, the current main request corresponding to auxiliary request 9 thereof). This request was not included in the proprietor's grounds of appeal, but was filed as the thirteenth auxiliary request with the proprietor's reply to the opponents' grounds of appeal.

1.2.2 Not filing the main request already with its own grounds of appeal, but only in reply to the opponents' grounds of appeal, cannot be considered as the abandonment of this claim request. The main request was filed with the reply to the opponents' grounds of appeal and thus in compliance with Article 12(3) RPBA 2020, which explicitly stipulate that the statement of grounds of appeal and the reply are to contain a party's complete appeal case. The situation is hence not comparable to that in case T 446/00, in which the patent proprietor was the sole appellant against a decision of the opposition division to revoke the patent.