T 1017/20 - Prima facie

Key points

• 'Prima facie' - the Boards (and opposition division) use the term often when deciding on the admissibility of submissions, but what does it mean exactly?
• " The appellant [patentee] submitted that the opposition division erred when deciding on the prima facie allowability of amended claim 1. It submitted extensive substantive arguments." 
• " The board holds that the appellant's objections do not relate to any incorrect exercise of discretion by the opposition division in its prima facie assessment of the allowability of claim 1 but to the complete substantive analysis of compliance with Articles 84 and 123(3) EPC." 
• " As regards the prima facie assessment, it is not unreasonable to come to the conclusion that the amendment to claim 1 leads to issues with Articles 84 and 123(3) EPC. In particular, the amended wording of claim 1 can, prima facie, reasonably be interpreted according to the two interpretations a) and b) mentioned in the minutes of the first-instance oral proceedings and in the decision under appeal. The fact that a complete examination, taking into consideration the teaching of the description and the common general knowledge of the skilled person, might lead to a different outcome does not make the prima facie analysis unreasonable. Consequently, the decision of the opposition division not to admit the main request was not affected by an error in the use of discretion." 
  
  
• The Board is considering whether to admit the request under Art. 12(6) RPBA, first sentence. The Board has determined that the OD's decision to not admit the request did not suffer from an error. The other exception is that requests can be admitted if "the circumstances of the appeal case justify their admittance".
• " According to the minutes, sections 4.1 to 4.5, 5 and 6, the compliance of the then main request with the requirements of Article 100 b) EPC was discussed. Subsequently, the opposition division formed the opinion that these requirements were not met. Thereupon, the appellant submitted an amended main request, which essentially corresponds to the current main request."
• "In this particular situation, the board holds that the prima facie compliance of the main request with the provisions of Article 100 b) EPC forms part of the circumstances of the appeal case that are to be considered for the purpose of applying Article 12(6) RPBA."
• The Board examines the appellant's arguments.
• "For these reasons, the invention as set out in claim 1 does not, prima facie, meet the requirements of Article 100 b) EPC."
• As a comment, I am not sure if this approach of bringing developments before the OD (discussion regarding Art.83) under the term "circumstances of the appeal case" will become common. 
• "the mere fact that the parties submitted in writing substantive arguments regarding the requirements of Article 100 b) EPC does not justify the admittance of the main request. Otherwise, a party could force a board to admit a request not admitted by the department of first instance by submitting substantive arguments on appeal. This would not be in accordance with the main provision of Article 12(6), first sentence, RPBA - namely that a board is not to admit requests which were not admitted in the proceedings that led to the decision under appeal."
• "To sum up, the main request in the appeal was not admitted by the opposition division and, prima facie, does not resolve [i.e. fails to address] an issue which was raised in the notice of opposition and on which the opposition division presented a negative opinion before and during the first-instance oral proceedings. In this situation the board holds that the circumstances of the appeal case do not justify the admittance of the main 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/t201017eu1.html

4.9 The appellant submitted that the opposition division erred when deciding on the prima facie allowability of amended claim 1. It submitted extensive substantive arguments.

The board holds that the appellant's objections do not relate to any incorrect exercise of discretion by the opposition division in its prima facie assessment of the allowability of claim 1 but to the complete substantive analysis of compliance with Articles 84 and 123(3) EPC.

As regards the prima facie assessment, it is not unreasonable to come to the conclusion that the amendment to claim 1 leads to issues with Articles 84 and 123(3) EPC. In particular, the amended wording of claim 1 can, prima facie, reasonably be interpreted according to the two interpretations a) and b) mentioned in the minutes of the first-instance oral proceedings and in the decision under appeal. The fact that a complete examination, taking into consideration the teaching of the description and the common general knowledge of the skilled person, might lead to a different outcome does not make the prima facie analysis unreasonable.

4.10 Consequently, the decision of the opposition division not to admit the main request was not affected by an error in the use of discretion.