T 1776/18 - (IV) Review of the OD's decision

Key points

• "The patent proprietor filed auxiliary request 4A at the oral proceedings before the Opposition Division, which decided not to admit the request. The patent proprietor requested that this decision be set aside."
• "the request had been filed in direct reaction to the Opposition Division's conclusion that the claim under scrutiny lacked novelty over Example 4 of D6. This objection had been raised for the first time in one of the opponents' submissions filed on the last day fixed under Rule 116(1) EPC. "
• The patentee argues that "[un]nder these circumstances, the Opposition Division had no discretion not to admit the request. The reasoning of T 754/16 was applicable by analogy. According to the cited decision, auxiliary requests filed during oral proceedings in direct response to a reversal of the Opposition Division's preliminary opinion had to be admitted."
• As a  comment, the patentee could also argue that filing the auxiliary request in response to the opponent's new objection (which objection was submitted with the opponent's written submissions before the oral proceedings) is a proper exercise of the patentee's right to be heard under Article 113(1) and that holding the request inadmissible was, therefore, a violation of Article 113(1).
•  "The amendment in claim 1 of auxiliary request 4A contains a feature taken from the description ("wherein said formulation is packaged and sealed in a single or multi-use container"). How the formulation is packaged or suitable containers for the composition were aspects that were never discussed in the opposition proceedings. They came up for the first time with the amendment. 
• "The opponents objected to the admittance of auxiliary request 4A, stating that they had been taken by surprise and that this amendment would require a new and time-consuming search which could only be undertaken if the oral proceedings were adjourned. The opponents further argued that auxiliary request 4A was prima facie not allowable and noted that document D6 had been in the opposition proceedings from the beginning."
• The Board approves of the OD's decision to hold the request inadmissible.
• " As to the patent proprietor's argument that it submitted auxiliary request 4A at the earliest opportunity, the Board notes that the patent proprietor could and should have submitted this claim request already in advance of the oral proceedings before the Opposition Division. Instead, it did so only during the oral proceedings, and even then only after the Opposition Division had found that none of the higher-ranking requests was allowable."
• According to the OD's decision, O1  (Fresenius) argued that claim 1 of then AR-4 lacked novelty over Example 4 of D6. The patentee argued that AR-4A was filed in response to the novelty objection based on D6 made by O5 on 22.01.2018. Although D6 had been filed with the Notice of opposition of O1, there was no novelty objection based on it before 22.01.2018. I understand that this letter of  O5 presents the attack on p.3 where it refers to para. [0304] of D6b which is part of Example 4. The letter was forwarded to the patentee with a communication dated 25.01.2018, deemed notification 04.02.2018. 
• The oral proceedings were held on 22.03.2018. 
• If the Board considers the delay (between 04.02.2018 and 22.03.2018) indeed to be an inexcusable delay, then the Board is of course right that the OD could properly decide to hold the auxiliary request inadmissible. 
• Apparently, the Board also takes issue with the patentee filing the request in the course of the oral proceedings when the higher-ranking requests were held unallowable and not at the beginning. I can imagine that the patentee was reluctant to disrupt the start of the oral proceedings by filing auxiliary requests which would have been superfluous if the OD had allowed a higher-ranking request. 
• The Board also notes that the Opposition Division admitted auxiliary request 4B. The patent proprietor filed this request right after the Opposition Division decided not to admit auxiliary request 4A. The Opposition Division reasoned its decision by explaining that the request was "done in response to the novelty objections based on D6 and that its claims 1 and 2, already present in Auxiliary Request 4 (as claims 5 and 6), do not create unexpected issues" (Reasons for the decision, section II.8).
• "  auxiliary request 4B, which had also been filed during the oral proceedings, was admitted and was found to be allowable." 
• I trust that the  Board and Opposition Divisions will always consider each request on its own merits and will not be tempted to go for an easily allowable lower-ranking request. 

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

4.8 Review of the Opposition Division's exercise of discretion

4.8.1 When exercising its discretionary power, a department of first instance has a certain margin of discretion. When reviewing a department of first instance's exercise of discretion, the Boards of Appeal therefore usually limit themselves to a review of whether the discretion was exercised according to the right principles, in a reasonable way and without exceeding the proper limits of discretion (see J 14/19, Reasons 8.3 and 10.2, with reference to G 7/93, Reasons 2.6).

4.8.2 The amendment in claim 1 of auxiliary request 4A contains a feature taken from the description ("wherein said formulation is packaged and sealed in a single or multi-use container"). How the formulation is packaged or suitable containers for the composition were aspects that were never discussed in the opposition proceedings. They came up for the first time with the amendment. The opponents objected to the admittance of auxiliary request 4A, stating that they had been taken by surprise and that this amendment would require a new and time-consuming search which could only be undertaken if the oral proceedings were adjourned. The opponents further argued that auxiliary request 4A was prima facie not allowable and noted that document D6 had been in the opposition proceedings from the beginning.

4.8.3 Against this background, the Opposition Division's conclusion that the very late filing of the amended claim request introducing features from the description gave rise to a number of new issues and surprised the opponents (Decision under appeal, Reasons for the decision, section II.7) does not indicate an exercise of discretion according to the wrong principles, in an unreasonable manner or in excess of the limits of discretion. As to the patent proprietor's argument that it submitted auxiliary request 4A at the earliest opportunity, the Board notes that the patent proprietor could and should have submitted this claim request already in advance of the oral proceedings before the Opposition Division. Instead, it did so only during the oral proceedings, and even then only after the Opposition Division had found that none of the higher-ranking requests was allowable.

4.8.4 The Board also notes that the Opposition Division admitted auxiliary request 4B. The patent proprietor filed this request right after the Opposition Division decided not to admit auxiliary request 4A. The Opposition Division reasoned its decision by explaining that the request was "done in response to the novelty objections based on D6 and that its claims 1 and 2, already present in Auxiliary Request 4 (as claims 5 and 6), do not create unexpected issues" (Reasons for the decision, section II.8).

4.8.5 The way the opposition division dealt with the two auxiliary requests, 4A and 4B, demonstrates that it duly assessed the case before it. It considered relevant aspects such as the point of time when the amendment was filed and the impact the amendment would have on the proceedings and on the parties, as well as whether the amendment gave rise to new issues. It concluded that auxiliary request 4B, which was not based on features taken from the description, was to be admitted, whereas auxiliary request 4A was not. This shows to the Board's satisfaction that the Opposition Division exercised its discretion in a reasonable way.

4.8.6 Therefore, the Board sees no reason to set aside the Opposition Division's discretionary decision.

4.9 In view of the fact that the Opposition Division exercised its discretion not to admit auxiliary request 4A correctly, the Board did not admit this request under Article 12(4) RPBA 2007 either. Under this provision, the Board is empowered to hold inadmissible requests filed on appeal which were not admitted in the first instance proceedings.

5. Admittance of auxiliary request 5

5.1 Auxiliary request 5 was filed after notification of the summons to oral proceedings and is therefore subject to Article 13(2) RPBA 2020. The request is based on auxiliary request 4A, with some claims having been deleted, but with the same wording of claim 1.

5.2 In view of the fact that auxiliary request 4A is not admitted into the appeal proceedings, there is no reason to admit auxiliary request 5, which was filed even later.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.