T 2204/18 - Was given the opportunity to comment on their admittance

Key points

•  The opponent argued that this request was filed during first instance opposition proceedings one day after the expiry of the time limit laid down in Rule 116(1) EPC. Therefore this request was late filed and should be "treated as such" 
• "The board is of the opinion that [the reasons given below] show that the opposition division properly exercised its discretion "
• As the opposition division confirmed that this request was filed after the time limit laid down in Rule 116(1) EPC (see decision, point 3.1, first sentence), the board is of the opinion that the opposition division was aware that this request was filed late. According to the decision [...] , the opposition division exercised its discretion in admitting this request to the opposition proceedings because the substance of the amendments was prima facie relevant and a fair response to the opponent's arguments and the division's opinion in the summons.
• Apart from that, a request that was admitted in the first instance opposition proceedings is part of the appeal proceedings (see Case Law, V.A.3.4.4).
• Note, this may not exclude the possibility that taking a decision on the request without giving the other party a sufficient opportunity to reply, is a substantial procedural violation such that the appealed decision is to be set aside and the case is to be remitted.
  
  
• " The board is of the opinion that the opposition division properly exercised its discretion in deciding not to consider, i.e. not to admit, the auxiliary requests. Not admitting requests submitted by the proprietor does not constitute a breach of the proprietor's right to be heard, provided that the proprietor has been given the opportunity to comment on their admittance (cf. Case Law of the Boards of Appeal of the EPO, 10th ed. 2022, section V.A.5.6, in particular R 9/11). As explained above, this was the case. Whether this was done in a perfunctory manner cannot be confirmed by the facts available from the minutes or the decision."
• This holding could be seen as implying that the OD can hold requests inadmissible in an arbitrary and capricious way, provided they first listen to the patentee's arguments in favor of admissibility. I'm not sure if that is the correct approach, but the Board refers to a decision of the Enlarged Board. 
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•  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/t182204eu1.html

4.2 The board is not convinced by the proprietor's arguments for the following reasons.

The minutes of the oral proceedings before the opposition division (see point 2) show that the proprietor was given the opportunity to present arguments as to whether the non-admitted requests should be considered.

Moreover, the arguments put forward by the proprietor in favour of considering those requests were also dealt with in contested decision (see point 2).

Similarly, the proprietor was given the opportunity to present arguments as to whether the current third auxiliary request should be considered (see minutes, point 4.1) and these arguments were also discussed in the decision (see point 4).

The board is therefore of the opinion that the proprietor's right to be heard has not been violated.

In addition, as discussed above, the board is of the opinion that the opposition division properly exercised its discretion in deciding not to consider, i.e. not to admit, the auxiliary requests. Not admitting requests submitted by the proprietor does not constitute a breach of the proprietor's right to be heard, provided that the proprietor has been given the opportunity to comment on their admittance (cf. Case Law of the Boards of Appeal of the EPO, 10th ed. 2022, section V.A.5.6, in particular R 9/11). As explained above, this was the case. Whether this was done in a perfunctory manner cannot be confirmed by the facts available from the minutes or the decision.

Order

For these reasons it is decided that:

The appeal is dismissed.