T 0350/19 - OD refuses to adjourn

Key points

• On this blog, I sometimes say that if you need more time during the oral proceedings, you need to request a break or adjournment. The proprietor in this case did, and the adjournment was refused by the OD. The proprietor presents the issue in appeal, with the purpose of getting an auxiliary request admitted. The Board does not evade passing judgment on the conduct of the OD, seeing no error in it. 
• The Board summarizes the precise conduct of the oral proceedings and gives a quite detailed analysis, to conclude that "At the oral proceedings before the opposition division, the appellant was given the opportunity to substantiate its request for an adjournment of the oral proceedings. In the board's view, the rejection of this request in the decision under appeal is justified by the fact that the appellant had been given sufficient opportunities to overcome the objections raised in the oral proceedings before the opposition division. The appellant was also given sufficient time to formulate a new request each time. Therefore, the board cannot see any violation of the appellant's right to be heard in the refusal of the request for an adjournment."
• The OD did not admit auxiliary requests 4-13 after having rejected auxiliary request 3B.
• "If the opposition division did indeed indicate to the appellant that it did not intend to admit any further requests after auxiliary request 3B-O, as argued by the appellant and possibly implied by the sentence "The proprietor was given one more opportunity to file patentable claims" in point 9.3 of the minutes, such a statement would indeed be inappropriate. However, in view of the fact that, as stated above, the appellant was given sufficient opportunities to overcome the existing objections, the board cannot see this as a violation of the appellant's right to be heard. If the appellant's argument were to be accepted, this would ultimately mean that the patent proprietor could prevent the opposition division from taking a decision by filing a series of new requests. Not only is there no legal basis for this in the EPC, it would also clearly run counter to procedural economy."
• This decision illustrates the importance of correctly "preserving the error" both before the OD and in the initial appeal submissions, to borrow USA civil procedure terminology, to ensure that the Board reviews whether the conduct of the oral proceedings involved a violation of Article 113(1) EPC or not, as is now necessary to get a decision on the merits of the request or attack affected by the (perceived) procedural irregularity in the first instance procedure. 
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• EPO  T 0350/19

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/t190350eu1.html

24. As regards parts (1) and (2) of the appellant's request, the board's considerations are as follows.

24.1 These two parts of the request are irrelevant to the appeal proceedings since none of the auxiliary requests before the opposition division, to which the two parts of the request refer, is part of the appeal proceedings.

24.2 Irrespective of this, it is true that the opposition division changed its opinion on the relevance of E1 for the novelty of granted claim 1 at the oral proceedings compared to the written preliminary opinion. However, a written preliminary opinion is, as its name suggests, not unalterable. A party must not rely on a preliminary written opinion favourable to it and be aware that a departure from this opinion at the oral proceedings cannot be excluded. This applies all the more to the current case because between this written opinion and the oral proceedings, a further submission was made by the respondent elaborating on the objections on which the opposition division had given a preliminary opinion favourable to the appellant and which even addressed this preliminary opinion.

24.3 If the appellant only files auxiliary requests very late in the proceedings, namely, in this case, on the last day for filing amendments specified in the summons, it must accept the resulting consequences, such as objections filed even later. This late submission of the auxiliary requests cannot be excused in the current case by the third-party observation submitted shortly before since the auxiliary requests, as can be derived from the appellant's submission dated 11 July 2018, do not - at least not exclusively - take into account the objections raised in the third-party observation but primarily address the objections based on E1 and D1.

24.4 The granted patent already failed due to the non-allowability of granted claim 1. In view of this, the board considers the objections to granted claims 12 and 15, which the opposition division allegedly raised on its own initiative during the discussion of the granted patent, to be conducive to procedural economy. According to the appellant's own submission, these objections would have been relevant to the pending auxiliary requests anyway. In the board's view, these objections to granted claims 12 and 15 were not of such a nature that the appellant could not be expected to address them at the oral proceedings. Finally, the fact that these objections did not cause any problem for the appellant is also clear from auxiliary request 1A-O, which renders these objections moot in a straightforward manner.

24.5 Claim 1 of auxiliary requests 1B-O and 3A-O contains the feature "wherein the used oil consists of used system oil" (emphasis added). This feature was not included in any of the requests filed up to the oral proceedings. The fact that objections relating to this feature - such as those pointed out by the appellant - were only raised at the oral proceedings could hardly have come as a surprise to the appellant.

24.6 The opposition division's new objection to claim 1 of auxiliary request 1A-O relates to a feature which originates from granted dependent claim 5 and was already included in auxiliary request 1-O. The fact that this objection was not raised until the oral proceedings is also not objectionable as auxiliary request 1-O was only filed on the last day for filing amendments specified in the summons and, in the current case, this was only two months before the oral proceedings. The remaining time until the oral proceedings is generally too short for an opposition division to provide further comments on the merits of the case. The board also sees no reason why the opposition division should have had to deal with granted dependent claim 5 in its written preliminary opinion because it is usually the independent claims which are the focus of the parties, and it would not be appropriate to require an opposition division to comment on each and every dependent claim at such an early stage of the proceedings.

24.7 At the oral proceedings before the opposition division, the appellant was given the opportunity to substantiate its request for an adjournment of the oral proceedings. In the board's view, the rejection of this request in the decision under appeal is justified by the fact that the appellant had been given sufficient opportunities to overcome the objections raised in the oral proceedings before the opposition division. The appellant was also given sufficient time to formulate a new request each time. Therefore, the board cannot see any violation of the appellant's right to be heard in the refusal of the request for an adjournment.

24.8 If the opposition division did indeed indicate to the appellant that it did not intend to admit any further requests after auxiliary request 3B-O, as argued by the appellant and possibly implied by the sentence "The proprietor was given one more opportunity to file patentable claims" in point 9.3 of the minutes, such a statement would indeed be inappropriate. However, in view of the fact that, as stated above, the appellant was given sufficient opportunities to overcome the existing objections, the board cannot see this as a violation of the appellant's right to be heard. If the appellant's argument were to be accepted, this would ultimately mean that the patent proprietor could prevent the opposition division from taking a decision by filing a series of new requests. Not only is there no legal basis for this in the EPC, it would also clearly run counter to procedural economy.

24.9 The appellant was also heard at the oral proceedings on the admittance of auxiliary requests 4-O to 13-O. For this reason alone, the board cannot see any violation of the appellant's right to be heard in this respect.

24.10 Thus, contrary to the appellant's submission, the board is convinced that the opposition division exercised its discretion correctly when it did not admit auxiliary requests 4-O to 13-O, implying that the board does not agree with the appellant that auxiliary requests 4-O to 13-O should have been admitted into the proceedings by the opposition division.