T 0951/19 - The OD changes opinion, opponent should request postponement

Key points

• The Board, in translation: "During the oral proceedings before the opposition division, the opponent requested that the filed auxiliary request 1 not be admitted due to late submissions, since the changes made were taken from the description and their subject-matter was surprising .
• However, the opposition division admitted auxiliary request 1, filed during the oral proceedings, into the opposition proceedings. The requirements of Rule 80 EPC and Article 123 EPC are met and the changes are [...] not surprising for the opponent [according to the OD]."
• Acccording to the opponent, the auxiliary request at issue involved significant differences compared to an earlier auxiliary request and was hence surprising.
• "In the present case, the opposition division took the preliminary view in its summons that granted claim 1 was new compared to E1 and changed this view at the oral proceedings after extensive discussion with the parties. The admissibility of auxiliary request 1, which was then filed, was discussed during the oral proceedings and both parties were heard, see points 41 to 48 of the minutes. The opponent also does not deny having been heard by the opposition division on the admissibility. She has not argued that the opposition division had not given her sufficient time, nor has she requested that the oral proceedings before the opposition division be interrupted or adjourned. To that extent the present case is different from T 789/83
• In T 789/83, the OD proposed amended claims of own motion (as they did in those days) and "[a]fter submitting the proposed amended Claim 1, the Opposition Division gave the parties ten minutes for studying the suggested version of Claim 1". This was a substantial procedural violation.
• I assume that the  Board refers to the opponent not requesting a break or adjournment of the oral proceedings after the OD decided to admit the auxiliary requests in the procedure. 
• "The board is therefore of the opinion that there has been no violation of the right to be heard and that the opposition division exercised its discretion correctly and also justified it in the decision under appeal,"
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• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text in machine translation.

https://www.epo.org/law-practice/case-law-appeals/recent/t190951du1.html

machine translation

2. Alleged procedural error - Admission of auxiliary request 1 by the opposition division

2.1 During the oral proceedings before the opposition division, the opponent requested that the filed auxiliary request 1 not be admitted due to late submissions, since the changes made were taken from the description and their subject-matter was surprising.

However, the opposition division admitted auxiliary request 1, filed during the oral proceedings, into the opposition proceedings. The requirements of Rule 80 EPC and Article 123 EPC are met and the changes are in view of the previous, on

22 December 2017 not surprising for the opponent.

According to the opponent, the above reasoning of the opposition division is based on an erroneous assessment of the 4th auxiliary request filed on 22 December 2017, the subject-matter of which differs significantly from the subject-matter of auxiliary request 1 filed at the hearing. While, according to auxiliary request 4 mentioned at the time, a wavelength difference between the "predetermined wavelength" of the exciting reference light and a wavelength of the emitted light excited by the excitation light ("emission light") is used, according to auxiliary request 1, the emitted light excited by the reference light and excitation light is used used. Sections [0010] to [0012] of the patent in suit,

Furthermore, none of the auxiliary requests filed on December 22, 2017 contained a claim according to which "a temporal or spectral decay behavior of the respective wavelength spectrum" of the emitted light excited by the reference light and the emitted light excited by the excitation light was used for comparison.

The subject matter of auxiliary request 1 was a "completely different concrete embodiment" which had never been the subject of a claim request and was also not described in the patent specification as an essential aspect of the invention. It would have required an extensive examination and reassessment of the entire state of the art in the proceedings as well as additional research, which could no longer be carried out during the oral hearing. The opponent's ability to react in an appropriate manner was curtailed by the admission of auxiliary request 1. Their right to be heard was thus violated (see eg T 783/89).

Auxiliary request 1 should not have been allowed if the opposition division had correctly assessed the above circumstances.

Even in the event that the Board does not question the admission of auxiliary request 1, a refund of the appeal fee appears necessary for reasons of equity, since auxiliary request 1 does not represent a combination of granted claims, but rather features from the description included. In order to be able to react appropriately to auxiliary request 1 and to be able to examine it comprehensively, in particular after a supplementary search with regard to patentability, the opponent was forced to file an appeal, although such new questions of fact should have been clarified in the lower instance.

2.2 The patent proprietor argues that there is no violation of the right to be heard.

In the granted claims 1 and 6, in the claims according to the auxiliary requests 2 and 4 of 22 December 2017 and in the description, the aspect of a comparison between the emission and reference images is already described. A wavelength spectrum or reference wavelength spectrum of the light emitted in each case is assigned to both recordings (see paragraphs [0010] to [0012], [0018] and [0019] of the patent in suit). The amendments to auxiliary request 1 were therefore not "surprising" to the opponents. They also met the requirements of Rule 80 EPC and were made with regard to the novelty objection to E1.

The admissibility of auxiliary request 1 had been discussed during the oral proceedings and the opponent had commented on it, see points 43 and 45 of the minutes. There is no violation of their right to hear. Decision T 783/89 cited by the opponent was different. In addition, the Board of Appeal could not reopen the admissibility examination of the opposition division, but only check whether the opposition division had exercised its discretion correctly. The substantive reasons put forward by the opponent are therefore irrelevant.

2.3 The Board first notes that, as a general rule, a Board of Appeal should only overrule the manner in which the first instance has exercised its discretion in a decision on a particular matter if it concludes that the first instance instance has exercised its discretion according to the wrong criteria, disregarding the correct criteria or in an arbitrary manner, thereby exceeding the discretion granted to it, see Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, VA3.4.1 b).

In the present case, the opposition division took the preliminary view in its summons that granted claim 1 was new compared to E1 and changed this view at the oral proceedings after extensive discussion with the parties. The admissibility of auxiliary request 1, which was then filed, was discussed during the oral proceedings and both parties were heard, see points 41 to 48 of the minutes. The opponent also does not deny having been heard by the opposition division on the admissibility. She has not argued that the opposition division had not given her sufficient time, nor has she requested that the oral proceedings before the opposition division be adjourned or adjourned. To that extent the present case is different from T 789/83.

The board is therefore of the opinion that there has been no violation of the right to be heard and that the opposition division exercised its discretion correctly and also justified it in the decision under appeal, see point 4.1 of the reasons.

A possible misjudgment of the subject matter of auxiliary request 4 of December 22, 2017 and auxiliary request 1 filed in the oral hearing does not constitute a procedural violation and certainly not a significant procedural violation.

The board is also not of the opinion that reimbursement of the appeal fee is necessary "simply for reasons of fairness".

Therefore, the board does not grant the opponent's request for reimbursement of the appeal fee and does not question the admission of auxiliary request 1 (Rule 103(1)(a) EPC).