T 0526/21 - Agreeing with choice CPA is abandoning other attacks

Key points

•  " The Board observes that the [inventive step] attacks based on D24 and D34 were raised in writing during the opposition proceedings in reply to the preliminary opinion of the opposition division []. However, the minutes of the opposition oral proceedings (see point 19.) indicate that "The three opponents agreed that D9 was the closest prior art. The proprietor argued that example 2 of D2 would be a better closest prior art [...]". According to the minutes, the choice between D2 and D9 as closest prior art was then discussed but no other document was considered by any opponent. None of the appellants requested a correction of the minutes. In line with T 2730/16, the Board considers that the attacks starting from D24 and D34 were not actively maintained."
• "It follows that these attacks do not form part of the appeal proceedings according to Article 12(2) RPBA 2020. Their admittance into the appeal proceedings is thus at the discretion of the Board according to Article 12(4) RPBA 2020."
• "The implicit abandonment of the attacks based on D24 and D34 by appellant 1 prevented the decision from being based thereupon. A re-introduction of these attacks would be against the purpose of the appeal proceedings to constitute a judicial review of the appealed decision and against procedural economy."
• Note, the Board here seems to apply Art. 12(6).
• 
  

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/t210526eu1.html

3. Inventive step

3.1 Admittance of attacks

3.1.1 The respondent requested the inventive step attacks raised by appellant 1 in its statement setting out the grounds of appeal based on D24 and D34 not be admitted into the appeal proceedings.

3.1.2 The Board observes that the attacks based on D24 and D34 were raised in writing during the opposition proceedings in reply to the preliminary opinion of the opposition division (see submission of appellant 1 of 11 December 2020). However, the minutes of the opposition oral proceedings (see point 19.) indicate that "The three opponents agreed that D9 was the closest prior art. The proprietor argued that example 2 of D2 would be a better closest prior art [...]". According to the minutes, the choice between D2 and D9 as closest prior art was then discussed but no other document was considered by any opponent. None of the appellants requested a correction of the minutes. In line with T 2730/16, the Board considers that the attacks starting from D24 and D34 were not actively maintained.

3.1.3 The conclusion that the attacks based on D24 and D34 were implicitly abandoned or not raised in opposition proceedings is in line with the absence of mention thereof in the impugned decision.

3.1.4 It follows that these attacks do not form part of the appeal proceedings according to Article 12(2) RPBA 2020. Their admittance into the appeal proceedings is thus at the discretion of the Board according to Article 12(4) RPBA 2020.

3.1.5 The implicit abandonment of the attacks based on D24 and D34 by appellant 1 prevented the decision from being based thereupon. A re-introduction of these attacks would be against the purpose of the appeal proceedings to constitute a judicial review of the appealed decision and against procedural economy.

3.1.6 Accordingly, these attacks are not admitted into the appeal proceedings (Article 12(4) RPBA 2020).