T 2442/17 - If you need more time, you have to ask for it

Key points

• The O/D decided to admit an auxiliary request filed during the oral proceedings. The opponent asks the Board to reverse this. The Board reviews whether the OD has not misused its discretion (that the Board is willing to consider the possibility of reversing a decision to admit a request is interesting of its own).
• "The opponent also argued that the patent proprietor should have reacted before the oral proceedings since a lack of novelty objection in view of document D3 (DE 695 28 476 T2) had already been raised with the grounds of opposition."
• "According to Rule 116(2) EPC the opposition division has the discretion to admit new documents, i.e. new amendments to the description, claims and drawings, filed after the final date for making written submissions fixed by the opposition division in the annex to the summons to oral proceedings."
• Rule 116(2) in fact begins with a statement about the patentee being notified of the objections and being invited to submit amended claims. The Board, however, does not discuss that aspect of the provision.
• The Board applies the deferential review of discretionary decisions as specified in G 7/93.
• "The Board is of the opinion that the opposition division took into account the right criteria, since it considered the amendment to the claim to be suitable to overcome the objection of lack of novelty and also that the subject-matter of the claim was more restricted than that of claim 1 as granted"
• "The opposition division also considered the amendment to be a reaction to the course of the proceedings, since in the annex to the summons to oral proceedings it had referred to the possible relevance of D3 without elaborating on the matter."
  
• "The Board agrees with the opponent [] that an objection of lack of novelty had been raised with the notice of opposition with respect to D3. However, as argued by the patent proprietor, that objection was not fully substantiated, since it was not indicated why the load bearing assembly of D3 should be considered to be suitable for use in an elevator system []. The Board thus does not find fault in the opposition division's finding that the filing of auxiliary request 1 at the oral proceedings is to be seen as a reaction to the course of those proceedings.
• "According to the minutes of the oral proceedings, see point 5 thereof, the opponent did not request an adjournment of the oral proceedings nor did it request additional time to prepare a new line of argumentation. It therefore appears that at that time the opponent considered itself able to deal with the amended situation without delay."

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/t172442eu1.html

2. Exercise of discretion of the opposition division in admitting the main request (auxiliary request 1 in opposition proceedings) into the proceedings

2.1 The opponent requests the reversal of the exercise of discretion by the opposition division, i.e. to consider auxiliary request 1 in opposition proceedings as being not admitted, due to it being late-filed (see point 3 of the statement setting out the grounds of appeal).

The opponent argued that it was taken by surprise by the change of claim category and that it could not have prepared for this new situation before the oral proceedings.

The opponent also argued that the patent proprietor should have reacted before the oral proceedings since a lack of novelty objection in view of document D3 (DE 695 28 476 T2) had already been raised with the grounds of opposition.

2.2 The Board cannot follow the line of argument of the opponent for the following reasons.

According to Rule 116(2) EPC the opposition division has the discretion to admit new documents, i.e. new amendments to the description, claims and drawings, filed after the final date for making written submissions fixed by the opposition division in the annex to the summons to oral proceedings.

The discretionary power conferred by Rule 116 EPC necessarily implies that the opposition division must have a certain degree of freedom in exercising its power. A Board of Appeal should only overrule the way in which the opposition division has exercised its discretion when deciding on a particular case if it concludes that it has done so according to the wrong principle, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limit of its discretion (see Case Law of the Boards of Appeal, 10th edition, 2022, V.A.3.4.1 b) and G 7/93).

The Board is of the opinion that the opposition division took into account the right criteria, since it considered the amendment to the claim to be suitable to overcome the objection of lack of novelty and also that the subject-matter of the claim was more restricted than that of claim 1 as granted, due to the change of claim category (see point 7.3 of the reasons for the decision).

The opposition division also considered the amendment to be a reaction to the course of the proceedings, since in the annex to the summons to oral proceedings it had referred to the possible relevance of D3 without elaborating on the matter.

The Board agrees with the opponent (see page 14, third paragraph of the statement setting out the opponent's grounds of appeal) that an objection of lack of novelty had been raised with the notice of opposition with respect to D3. However, as argued by the patent proprietor, that objection was not fully substantiated, since it was not indicated why the load bearing assembly of D3 should be considered to be suitable for use in an elevator system (see the fifth complete paragraph, last sentence, on page 5 of the reply to the opponent's statement setting out the grounds of appeal and page 8, last sentence, of the notice of opposition).

The Board thus does not find fault in the opposition division's finding that the filing of auxiliary request 1 at the oral proceedings is to be seen as a reaction to the course of those proceedings.

The Board cannot share the opinion of the opponent (see point 3, page 14, of the statement setting out the grounds of appeal and point 3, page 12, of the submissions dated 4 August 2020) that it was disadvantaged since, due to the amendments made, a different line of argumentation was required and that it was unable to prepare accordingly before the oral proceedings.

According to the minutes of the oral proceedings, see point 5 thereof, the opponent did not request an adjournment of the oral proceedings nor did it request additional time to prepare a new line of argumentation.

It therefore appears that at that time the opponent considered itself able to deal with the amended situation without delay.