T 0049/21 - Obiter remarks will be held against you

Key points

•  This is an appeal against a refusal decision.
• " the minutes of the consultation on 10 June 2020 (dispatched on 17 June 2020) show (point 3.2) that the point [concerning] the alleged effect of saving resources not being derivable from the claim wording, had already been communicated to the appellants before the oral proceedings. "
• The application was refused in oral proceedings on 16.06.2020. The applicant attended, and the auxiliary request at issue (AR-2) was discussed. The point was briefly discussed, according to the minutes, other objections to AR-2 were discussed more extensively.
• In appeal, "Auxiliary request 6 filed with the statement setting out the grounds of appeal"
• "it is an amendment within the meaning of Article 12(4) RPBA, which can only be admitted at the discretion of the board. As for reasons for submitting this new request in the appeal proceedings, the appellants argued that it could not have been filed earlier because they had not been aware of the objection to auxiliary request 4 under point 16.5 of the contested decision before they received the written decision. This objection had not been raised at the oral proceedings before the examining division, as could also be seen from the minutes. This request was to address that specific objection."
• These arguments did not convince the board. In point 16.5 of the contested decision, the examining division merely added an "additional remark" to its objections, which are under points 16.1 to 16.4 on which the decision is based. The fact that the written decision has an additional remark does not give the applicant the right to continue examination in appeal proceedings.
• "Furthermore, the minutes of the consultation on 10 June 2020 (dispatched on 17 June 2020) show (point 3.2) that the point raised in this additional remark, namely the alleged effect of saving resources not being derivable from the claim wording, had already been communicated to the appellants before the oral proceedings. Therefore, this request should have been filed in the examination proceedings. Therefore, the board did not admit this request (Article 12(4) RPBA)."
• Note, in connection with a different auxiliary request.
• As a practice point, if there is an unfavourable obiter remark in a decision which is a surprise, argue in an appeal that it violates your right to be heard to include it in the decision, in addition to addressing it on the merits.  In this way, the Board must expressly decide if your right to be heard was violated, which will at least be the case if you were not sufficiently notified by the Examining Division of the obiter issue before the decision. Additionally, object to any new objections that the ED may raise shortly before or during the oral proceedings and always request more time to consider the strategy because any objections or issue that the ED may inform you about can be a bar to addressing it in appeal, as the present decision shows. If the ED denies your request for a break, postponement, or adjournment of the oral proceedings, appeal on that point as well. 
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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/t210049eu1.html

5. Auxiliary request 6 filed with the statement setting out the grounds of appeal

5.1 This request was not made and maintained in the examination proceedings. Therefore, it is an amendment within the meaning of Article 12(4) RPBA, which can only be admitted at the discretion of the board. As for reasons for submitting this new request in the appeal proceedings, the appellants argued that it could not have been filed earlier because they had not been aware of the objection to auxiliary request 4 under point 16.5 of the contested decision before they received the written decision. This objection had not been raised at the oral proceedings before the examining division, as could also be seen from the minutes. This request was to address that specific objection.

These arguments did not convince the board. In point 16.5 of the contested decision, the examining division merely added an "additional remark" to its objections, which are under points 16.1 to 16.4 on which the decision is based. The fact that the written decision has an additional remark does not give the applicant the right to continue examination in appeal proceedings. Furthermore, the minutes of the consultation on 10 June 2020 (dispatched on 17 June 2020) show (point 3.2) that the point raised in this additional remark, namely the alleged effect of saving resources not being derivable from the claim wording, had already been communicated to the appellants before the oral proceedings. Therefore, this request should have been filed in the examination proceedings.