T 1219/19 - Patentee was notified of the objection

Key points

• The preliminary opinion of the OD was, cautiously, that Art. 123(2) was met. During the oral proceedings, the OD changes of opinion. Must the OD admit a new auxiliary request filed during the oral proceedings in response to this change of opinion?
• The present Board states that "under Rule 116(2) EPC, requests filed after the final date set for making written submissions in preparation for oral proceedings can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent."
• However, the Board still does not overrule the OD's decision to hold the request inadmissible.
• "the board found that under the circumstances in hand the opposition division was entitled to exercise its discretion accorded by Article 123(1) in conjunction with Rule 81(3) EPC to disregard the auxiliary request at issue (see R 6/19, Reasons 6 to 11; T 966/17, Reasons 2.2.1; T 1213/19, Reasons 19). 
• "It further found that the opposition division had exercised its discretion in accordance with the right principles, primarily the clear allowability criterion. The opposition division could not have been deprived of that discretion merely because it expressed a different opinion at the oral proceedings from that provisionally set out in the communication accompanying the summons (see also T 966/17, Reasons 2.4).
• "The opposition division's preliminary opinion discussed the added-matter objections raised by the opponents and clearly indicated that those objections were to be the subject of further discussion at the oral proceedings: ""
• "The preliminary conclusion that claim 1 does not add subject-matter (see points 1.3 and 1.5) is expressed in a careful manner ("Currently the opposition division is of the opinion that ..." and "... the opposition division is of the preliminary opinion that ...") and cannot be understood as if the opposition division thereby gave up its discretionary power to disregard submissions filed later."
• I suppose the argument of the opponent is not that the OD gave up its discretionary power, but that Rule 116(2) EPC takes away / limits the discretionary power.
• The opponent points out that the GL state that: "The ... opposition division has the discretion to disregard amendments filed after the date set under Rule 116(1) as being late-filed unless they have to be admitted because the subject of the proceedings has changed" and that "The following are examples of what would normally constitute a change of subject of the proceedings: ... the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent. .... In these examples, a request from the applicant or proprietor for a corresponding amendment cannot be rejected as being late-filed even if submitted after the date set under Rule 116(1). "
• My quotes are from the GL 2023, the decision states that the GL 2022 is cited therein but the text seems to be that of the GL 2023.
• The Board notes in passing that "the Guidelines applicable at the time the opposition division took its decision (version in force in November 2018) did not contain this particular example"
• More importantly, the Board reasons as follows: "the question of whether a change of opinion represents a change of subject of the proceedings remains crucial in the matter in hand. The board agrees that, in principle, it does change the subject of the proceedings, especially where the opposition division introduces a new objection at a relatively late stage. However, the cited passage of the Guidelines refers to examples that would normally constitute a change of subject of the proceedings. It therefore does not exclude the possibility that, under particular circumstances, a change from the preliminary opinion does not necessarily involve a change of subject of the proceedings. The board finds that in the case in hand, the content of the preliminary opinion, taken as a whole, is articulate and cannot be read in a manner limited to the conclusion in point 1.5 (that claim 1 does not add subject-matter), as the appellant has done. On the contrary, it should also be read in consideration of the discussion under point 1.3 (both referred to in points 40. and 40.1 above). The objection that the single-molecule sequencing process had no basis in the parent application had been raised by both opponents at the outset of the opposition proceedings - it was not introduced into the proceedings by the opposition division. The issue had been discussed at length in preparation for the oral proceedings, it had been considered an issue by the opposition division in the preliminary opinion (see point 1.3) and it was also sufficiently clear that it was a crucial one. The appellant [patentee] therefore could not have been surprised by the decision taken at the oral proceedings. It appears that the appellant [patentee] had indeed been notified of the grounds prejudicing the maintenance of the patent."

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/t191219eu1.html

Auxiliary request 6

Admittance and consideration (Article 12(4) RPBA 2007)

35. Auxiliary request 6 was filed during the oral proceedings before the opposition division. Claim 1 of this request differs from claim 1 of the main request in that it specifies that the single-molecule sequencing process is a "template-directed real-time" single-molecule sequencing process.

36. The opposition division did not admit auxiliary request 6 into the proceedings, on account of the criteria set out in the Guidelines for Examination with regard to the admissibility of late-filed requests

(see E-III, 8.6, in the version applicable from November 2018). It held that auxiliary request 6 had been filed late (after the time limit prescribed by Rule 116 EPC), was an attempt to address an issue already raised in the notices of opposition, was prima facie unsuitable to solve the issue of added subject-matter (Article 123(2) EPC) and appeared to lack clarity (Article 84 EPC).

37. The appellant disputed the correctness of the opposition division's decision not to admit auxiliary request 6, both as to whether the opposition division had indeed had discretion not to admit this request and, in the event that it had, whether it had exercised its discretion in accordance with the proper criteria.

37.1 The appellant invoked Rule 116(2) EPC to argue that the opposition division had no discretion to disregard this auxiliary request or to apply the criterion of prima facie allowability. Since at oral proceedings the opposition division changed its view, expressed in the preliminary opinion sent with the summons, that omitting the feature "template-directed" did not result in added subject-matter, auxiliary request 6, although filed after the time limit under Rule 116 EPC, could not be regarded as late-filed and should have been admitted.

37.2 Under Rule 116(2) EPC, requests filed after the final date set for making written submissions in preparation for oral proceedings can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent.

38. In this respect the board concurs with the established jurisprudence, which was also cited by respondent I in the reply to the statement of grounds of appeal and which states that when the exercise of discretion of a first-instance department is disputed, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the first-instance department, in order to decide whether or not it would have exercised such discretion in the same way. A board of appeal in principle only overrules the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way and has thus exceeded the proper limits of its discretion (see G 7/93, OJ EPO 1994, 775, Reasons 2.6).

39. For the following reasons, the board found that under the circumstances in hand the opposition division was entitled to exercise its discretion accorded by

Article 123(1) in conjunction with Rule 81(3) EPC to disregard the auxiliary request at issue (see R 6/19, Reasons 6 to 11; T 966/17, Reasons 2.2.1; T 1213/19, Reasons 19). It further found that the opposition division had exercised its discretion in accordance with the right principles, primarily the clear allowability criterion. The opposition division could not have been deprived of that discretion merely because it expressed a different opinion at the oral proceedings from that provisionally set out in the communication accompanying the summons (see also T 966/17, Reasons 2.4).

40. The opposition division's preliminary opinion discussed the added-matter objections raised by the opponents and clearly indicated that those objections were to be the subject of further discussion at the oral proceedings: "It will have to be discussed in oral proceedings whether a 'single molecule sequencing process' can also be non-template directed. It further will have to be discussed whether the original disclosure of single molecule sequencing is limited to 'real-time' processes" (point 1.3 of the annex to the summons). In doing so, the opposition division set the boundaries of the discussion expected at the oral proceedings on added subject-matter concerning the feature "single molecule sequencing process".

40.1 The preliminary conclusion that claim 1 does not add subject-matter (see points 1.3 and 1.5) is expressed in a careful manner ("Currently the opposition division is of the opinion that ..." and "... the opposition division is of the preliminary opinion that ...") and cannot be understood as if the opposition division thereby gave up its discretionary power to disregard submissions filed later.

40.2 A different conclusion would penalise the useful practice by opposition divisions of providing a detailed discussion of the relevant issues in preparation for oral proceedings, versus preliminary opinions with barely any content, which is not in the interest of any of the parties involved.

41. At the oral proceedings before the board, the appellant referred to the Guidelines for Examination (E-VI, 2.2.2 and 2.2.3, in the version of March 2022) to argue that the opposition division's change of opinion at the oral proceedings constituted a change of subject of the proceedings, justifying the later filing of auxiliary request. That passage of the Guidelines reads:

"The following are examples of what would normally constitute a change of subject of the proceedings: (...)

- the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent."

41.1 Irrespective of the fact that the Guidelines applicable at the time the opposition division took its decision (version in force in November 2018) did not contain this particular example, the question of whether a change of opinion represents a change of subject of the proceedings remains crucial in the matter in hand. The board agrees that, in principle, it does change the subject of the proceedings, especially where the opposition division introduces a new objection at a relatively late stage. However, the cited passage of the Guidelines refers to examples that would normally constitute a change of subject of the proceedings. It therefore does not exclude the possibility that, under particular circumstances, a change from the preliminary opinion does not necessarily involve a change of subject of the proceedings.

41.2 The board finds that in the case in hand, the content of the preliminary opinion, taken as a whole, is articulate and cannot be read in a manner limited to the conclusion in point 1.5 (that claim 1 does not add subject-matter), as the appellant has done. On the contrary, it should also be read in consideration of the discussion under point 1.3 (both referred to in points 40. and 40.1 above). The objection that the single-molecule sequencing process had no basis in the parent application had been raised by both opponents at the outset of the opposition proceedings - it was not introduced into the proceedings by the opposition division. The issue had been discussed at length in preparation for the oral proceedings, it had been considered an issue by the opposition division in the preliminary opinion (see point 1.3) and it was also sufficiently clear that it was a crucial one. The appellant therefore could not have been surprised by the decision taken at the oral proceedings. It appears that the appellant had indeed been notified of the grounds prejudicing the maintenance of the patent.

41.3 Under the circumstances of this particular case, the different conclusion reached at the oral proceedings by the opposition division with regard to the feature "single-molecule sequencing process" cannot be regarded as a change of subject of the proceedings.

41.4 As a consequence, auxiliary request 6 was not submitted in due time and the opposition division had discretion to disregard it, pursuant to the correct criterion of prima facie allowability (or non-allowability). The fact that auxiliary request 6 raised clarity issues was an additional criterion for non-admittance.

42. The board therefore saw no reason to revise the opposition division's decision.

43. As there were no additional circumstances in the appeal, and absent any submissions by the appellant, the board also saw no reason to exercise its own discretion in favour of admitting auxiliary request 6 into the appeal proceedings (Article 12(4) RPBA 2007) and decided to hold auxiliary request 6 inadmissible.

Auxiliary request 7

Admittance and consideration (Article 12(3) RPBA 2020 and Article 12(4) RPBA 2007)

44. Auxiliary request 7 was filed with the statement of grounds of appeal. Claim 1 of auxiliary request 7 differs from claim 1 of the main request in that it specifies that the single-molecule sequencing process is a "real-time" single-molecule sequencing process.

45. Admittance of this request is subject to the provisions of Article 12(3) RPBA 2020 (see Article 25(1) RPBA 2020), under which claim requests submitted in the appeal proceedings must be justified by reasons as to the extent to which the amendments made overcome the objections raised in the decision under appeal, unless this is self-explanatory (see CLBA, V.A.4.3.5(b)(i)).

46. Pursuant to Article 12(4) RPBA 2007, which applies in the case in hand (see Article 25(2) RPBA 2020), the board does not consider claim requests filed with the statement of grounds of appeal that do not meet the substantiation requirement of Article 12(2) RPBA 2007 (the wording of which has remained substantially unamended in Article 12(3) RPBA 2020). Any such requests, unless self-explanatory, are not considered submitted until the date they are substantiated.

47. The appellant submitted that the basis for the amendment was found in paragraph [0048] of the application as filed and that deleting the expression "template-directed" addressed the clarity concerns regarding that term raised by the opposition division in relation to auxiliary request 6. In the appellant's view, the arguments provided with regard to auxiliary request 6 could serve as justification for the auxiliary request at issue.

48. However, no explanation was ever provided, either in the statement of grounds of appeal or during the oral proceedings, as to how the amendment overcame the objections under Articles 123(2) and 76(1) EPC raised in the decision under appeal against claim 1 of the main request (see point 3. above). Moreover, it was not self-explanatory that this amendment would address the opposition division's finding that the application only disclosed sequencing-by-synthesis processes, nor has the appellant submitted that it was. It was therefore not immediately apparent to the board that the objection raised in the decision under appeal no longer applied to claim 1 of auxiliary request 7.

49. The board therefore decided not to admit auxiliary request 7 into the proceedings (Article 12(3) RPBA 2020 and Article 12(4) RPBA 2007).

Auxiliary requests 8, 9 and 10

Admittance and consideration (Article 13(2) RPBA 2020)

50. Auxiliary requests 8, 9 and 10 were submitted after notification of the summons to oral proceedings (see section IX. above). When submitting these claim requests, the appellant indicated that the amendments made addressed objections raised by respondent I in its reply to the appeal. However, the appellant did not provide any justification for not filing these claim requests until this late stage in the appeal proceedings.

51. Under Article 13(2) RPBA 2020, which applies in the case in hand (see Article 25(1) RPBA 2020), any amendment to a party's appeal case after notification of a summons to oral proceedings is, in principle, not to be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

52. When asked at the oral proceedings, the appellant stated that it had no cogent reasons as per

Article 13(2) RPBA 2020 to submit. The board therefore decided not to admit auxiliary requests 8, 9 and 10 into the appeal proceedings.

Order

For these reasons it is decided that:

The appeal is dismissed.