T 1214/21 - Only one further request

Key points

•  "it is evident from the minutes of the oral proceedings before the opposition division (point 26) that the chair had indicated that, after having discussed three main requests in the proceedings, only one further request would be allowed without any consideration being given to (the) others, which is a further substantial procedural violation (see also T 756/18, Reasons 3)."
• The headnote of T 756/18 in translation: "The Opposition Division exceeds the appropriate limits of its discretion when it declares that it admits only one auxiliary request and immediately rejects additional requests without apparent valid reasons and without even having examined whether the amendments would have made it possible to set aside all the objections validly raised until then without giving rise to new ones, thus making them potentially admissible."

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/t211214eu1.html

9. Article 113(1) EPC

The decision was only reasoned for the then main request, which was considered not to fulfill the requirements of Rule 80 EPC (point 4, last sentence), and Article 123(2) EPC (point 5.3, last sentence). The decision also contains a section on Article 113 EPC and states that "all auxiliary requests 1-17 contained as wording either "to" or "toward" which presumably would have led to their non-allowability for the same reasons as the previously discussed requests". This sentence is understood to relate to auxiliary requests 1 to 17 which had been filed on 25 January 2021 and 22 March 2021, as indicated in points 8 and 9 of the Summary of Facts and Submissions of the impugned decision. These requests were still on file when the decision was taken. The "previously discussed requests" is understood to mean the requests discussed during oral proceedings, since the decision itself only deals with one request. Consequently "the same reasons" also refers to reasons dealt with during oral proceedings, in particular Article 123(3) EPC, but not dealt with in the decision itself (see minutes of the oral proceedings, point 10).

Overall, the decision does not contain any reasoning as to why auxiliary requests 1 to 17 then still on file were not considered admissible and/or allowable, which amounts to a substantial procedural violation.

In addition, it is evident from the minutes of the oral proceedings before the opposition division (point 26) that the chair had indicated that, after having discussed three main requests in the proceedings, only one further request would be allowed without any consideration being given to (the) others, which is a further substantial procedural violation (see also T 756/18, Reasons 3).

Since the only way of addressing these deficiencies was to file an appeal, a reimbursement of the appeal fee is equitable.

10. Article 111 EPC

In view of the substantial procedural violation and the fact that the opposition division has not dealt with sufficiency, novelty and inventive step, special reasons within the meaning of Article 11 RPBA 2020 exist for remitting the case to the opposition division for further prosecution.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

3. The appeal fee is reimbursed.