T 1776/18 - (III) A close reading of Rule 116(2)

Key points

•  Rule 116(2) specifies that: "If the applicant or patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, he may be invited to submit, by the date specified in paragraph 1, second sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis." That fourth sentence is: "New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."
• A possible reading of this provision is that the OD must admit auxiliary requests filed during the oral proceedings, unless the preliminary opinion was negative for the patentee. 
• For instance, T 0754/16 held that: "Under Rule 116(2) EPC, requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. "
• The implication is that the patentee does not need to file any auxiliary requests in its response to the opposition but can await the preliminary opinion of the OD.
• Rule 116 was introduced as Rule 71a in  1995. The background can be found in the Notice in  OJ 1995 p.409 which reads in the relevant part (for opposition):  "If the [] patent proprietor has been told beforehand that [] revocation is likely (and why), then he can reasonably be expected to react if given adequate time to do so." 
• See also GL E-VI 2.2.2 "Amendments filed in preparation for or during oral proceedings": "if the opposition division departs from its provisional opinion set out in the annex to the summons and – contrary to that opinion – concludes during oral proceedings that an objection prejudices the maintenance of the patent, a request of the proprietor for (further) amendment will normally be admitted into the proceedings." (note, this instruction seems to assume that the objection was raised by the opponent before the summons and considered by the OD in the preliminary opinion and that the OD expressed a view in favour of the patentee on the objection in the preliminary opinion).
• The present Board "does not share the views expressed in T 754/16. Rule 116(2) EPC concerns a very specific situation, as is made clear in the first sentence of the provision, namely a situation where the Opposition Division decides to notify the patent proprietor of grounds prejudicing the maintenance of the patent. "
• The Board takes Rule 116(2) first sentence to mean that: "only if the patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, [the OD may invite the proprietor] to submit [amended claims]".
•  "The first subclause in the first sentence of Rule 116(2) EPC thus expresses nothing other than that the Opposition Division should only invite the patent proprietor to present amended claim requests if it has notified it of grounds of opposition which may, in its view, prejudice the patent's maintenance. In other situations, no such invitation should be made."
• " the second sentence of Rule 116(2) EPC, according to which the third and fourth sentences of Rule 116(1) EPC apply mutatis mutandis to the situation described in the first sentence of Rule 116(2) EPC, does not support the view that claim requests do not fall under Rule 116(1) EPC. This statement rather clarifies that even amended claim requests which are submitted in reply to an invitation of the Opposition Division under Rule 116(2) EPC are subject to the Opposition Division's discretion under Rule 116(1) EPC. The Board understands the term "mutatis mutandis" to primarily take account of the possibility that if the Opposition Division invites the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complies with this invitation by filing the required amendments by the date set under Rule 116(1) EPC, its discretion not to admit that claim request may effectively be reduced to zero."
• "The Board further notes that if, as opined in Reasons 1.3.2 of T 754/16, an Opposition Division had no discretion not to admit an amended claim request whenever it had not notified the patent proprietor "of the grounds prejudicing the maintenance of the patent", this would mean that any such claim request - regardless of its contents and regardless of when it was made - would automatically be admitted into the opposition proceedings. A certain development in the opposition proceedings does not, however, justify the submission of any kind of claim request - possibly including claim requests which are not even related to the specific procedural development in question - at any point in time. Such a result must be avoided, which speaks additionally against this approach."
• "As an interim conclusion, Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 114(2) EPC and Rule 116(1) EPC. In particular, the existence of this discretionary power does not depend on the contents of the Opposition Division's communication under Rule 116(1) EPC. "
• I note that this conclusion may still be correct even when reading it as: "Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 123(1) EPC and Rules 76 and 81 EPC."
• " Applying the principles set out above, the Opposition Division had discretionary power not to admit auxiliary request 4A, even though it had not included in its communication under Rule 116(1) EPC the novelty objection based on Example 4 of D6."

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/t181776eu1.html

4.7 Rule 116(2) EPC - notification of the grounds prejudicing the grant or maintenance of the patent

4.7.1 Rule 116(2) EPC is applicable in both examination and opposition proceedings. As to opposition proceedings, the Board has the following observations.

4.7.2 In the first subclause of Rule 116(2) EPC, reference is made to the patent proprietor having "been notified of the grounds prejudicing the [...] maintenance of the patent". The appellant referred in this regard to decision T 754/16, Reasons 1.3.2, in which it is stated that "requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent". In T 754/16 this was not considered to have been the case because the Opposition Division had changed its previously positive written preliminary opinion on certain claim requests during the oral proceedings. In T 754/16, the Board was of the view that amended claim requests which were filed during the oral proceedings in response to such a change of the Opposition Division's opinion were not late-filed as a matter of principle. Accordingly, the Board in T 754/16 opined that the Opposition Division, which had considered the amended claim requests to not be prima facie allowable under Articles 56, 84 and 123(2) EPC, did not have any discretion whatsoever not to admit these requests.

4.7.3 The present Board does not share the views expressed in T 754/16. Rule 116(2) EPC concerns a very specific situation, as is made clear in the first sentence of the provision, namely a situation where the Opposition Division decides to notify the patent proprietor of grounds prejudicing the maintenance of the patent. The first subclause of Rule 116(2) EPC ("if the applicant or patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent") is not a condition for the Opposition Division having discretionary power not to admit amended claim requests. Rather, the condition in the first subclause is linked to whether the Opposition Division may invite the patent proprietor to present amended claims ("he may be invited to submit [...] documents"). The first subclause in the first sentence of Rule 116(2) EPC thus expresses nothing other than that the Opposition Division should only invite the patent proprietor to present amended claim requests if it has notified it of grounds of opposition which may, in its view, prejudice the patent's maintenance. In other situations, no such invitation should be made.

4.7.4 The primary purpose of inviting the patent proprietor to file amended claim requests under Rule 116(2) EPC is to expedite the opposition proceedings, and to prevent the patent proprietor from filing such requests after the date specified in Rule 116(1) EPC. This is also confirmed by the travaux préparatoires (CA/12/94, pages 11 and 12), according to which Rule 116(2) EPC (i.e. former Rule 71a(2) EPC) is "also designed to speed up the procedure, and to prevent parties being unfairly confronted with new facts in oral proceedings." As the term "facts" in this sentence refers to amended claim requests, the Board notes that also the legislator apparently understood this term to include amended claim requests when introducing former Rule 71a EPC. This confirms the conclusion reached in section 4.5.11 above that Article 114(2) EPC provides a legal basis for disregarding claim requests which are not submitted in due time.

4.7.5 In view of its wording and purpose, Rule 116(2) EPC does therefore not limit the Opposition Division's discretionary power under Article 114(2) EPC and Rule 116(1) EPC. The travaux préparatoires also confirm that "Rule 71a does not restrict EPO discretion under Article 114" (CA/12/94, page 11).

4.7.6 Furthermore, the second sentence of Rule 116(2) EPC, according to which the third and fourth sentences of Rule 116(1) EPC apply mutatis mutandis to the situation described in the first sentence of Rule 116(2) EPC, does not support the view that claim requests do not fall under Rule 116(1) EPC. This statement rather clarifies that even amended claim requests which are submitted in reply to an invitation of the Opposition Division under Rule 116(2) EPC are subject to the Opposition Division's discretion under Rule 116(1) EPC. The Board understands the term "mutatis mutandis" to primarily take account of the possibility that if the Opposition Division invites the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complies with this invitation by filing the required amendments by the date set under Rule 116(1) EPC, its discretion not to admit that claim request may effectively be reduced to zero. The travaux préparatoires on Rule 116 EPC, according to which amended claim requests are to be understood as facts (see section 4.7.4 above), also confirm that Rule 116(2) EPC is not to be understood as an indication that claim requests would not fall under Rule 116(1) EPC. The above also speaks against considering Rule 116(2) EPC to be a self-standing legal basis for an Opposition Division's discretion not to admit claim requests (see section 4.5.3 above), which would also be at odds with the need to root the Opposition Division's power of discretion in an article of the EPC instead of only in an implementing rule.

4.7.7 The Board further notes that if, as opined in Reasons 1.3.2 of T 754/16, an Opposition Division had no discretion not to admit an amended claim request whenever it had not notified the patent proprietor "of the grounds prejudicing the maintenance of the patent", this would mean that any such claim request - regardless of its contents and regardless of when it was made - would automatically be admitted into the opposition proceedings. A certain development in the opposition proceedings does not, however, justify the submission of any kind of claim request - possibly including claim requests which are not even related to the specific procedural development in question - at any point in time. Such a result must be avoided, which speaks additionally against this approach.

4.7.8 As an interim conclusion, Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 114(2) EPC and Rule 116(1) EPC. In particular, the existence of this discretionary power does not depend on the contents of the Opposition Division's communication under Rule 116(1) EPC. In the present case, auxiliary request 4A was filed during the oral proceedings before the Opposition Division in response to the novelty objection based on Example 4 of D6, which was submitted by one of the opponents before the final date indicated in the Opposition Division's communication under Rule 116(1) EPC. Applying the principles set out above, the Opposition Division had discretionary power not to admit auxiliary request 4A, even though it had not included in its communication under Rule 116(1) EPC the novelty objection based on Example 4 of D6.