T 0813/20 - A case amendment under Art.12(4) ?

Key points

• The OD maintains the patent in amended form based on AR-II (identical to AR-2 in appeal). Both parties appeal.
• "The statement of grounds of appeal of the opponent contains an objection of lack of inventive step based on D11 as closest prior art against claim 1 of auxiliary request II underlying the contested decision.
• That objection was maintained in the rejoinder of the opponent (section 4.4, item 42), as the present second auxiliary request corresponds to said auxiliary request II. An objection based on D11 as closest prior art was also raised in the rejoinder of the opponent against the main request, the first auxiliary request, and the third auxiliary request in appeal (rejoinder of the opponent, sections 4.3 and 4.5, item 53). 
• The objection against the main request [i.e. lack of inventive step over D11], which corresponds to the patent as granted, is to be regarded as an amendment to the opponent's case within the meaning of Article 12(4) RPBA 2020. Its admittance is at the discretion of the Board."
• The OD had held the claims as granted to lack basis in the application as filed, Art. 123(2).
• The OD also found that AR-2 was inventive over D11 as the closest prior art. As the Board notes: " It is also immediately apparent that the objection of lack of inventive step over D11 submitted against claim 1 of the second auxiliary request is also relevant for the main request whose claim 1 is more broadly defined"
• It is  not clear to me how the inventive step attack from D11 can then be a case amendment. More precisely, how it can be a "part of appeal case not meeting the requirements of Art.12(2)", i.e. not directed to the ... objections ... on which the impugned decision was based. If the inventive step attack against AR-2 is valid, then it must apply equally to the main request, which must be broader (claims as granted).
• At any rate, the Board considers the "unless clause" of Art. 12(4) to apply, such that following the wording of Art.12(4), the attack is "not to be regarded as an amendment".
• The unless clause applies because, even though the attack was "first raised towards the end of the oral proceedings before the opposition division", "it is however apparent from the minutes that the admittance of the objection was discussed between the parties at the oral proceedings proceedings, after which the opposition division admitted the objection into the proceedings. The parties provided their arguments relating to that objection and the impugned decision is based on that objection " (indeed in view of AR-II)
• " Under Article 12(1)(a) RPBA 2020, any such facts, having become part of the contested decision, are basically part of the appeal proceedings too"
• Under the one-way interpretation of G7/93, r.2.6, this is the case.
• "In addition, that amendment of the opponent's case does not add complexity or goes against procedural economy. "
• As the Board had already concluded that it had no discretion to hold the attack inadmissible under Art. 12(4) and established case law, this added remark is puzzling. 

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/en/boards-of-appeal/decisions/t200813eu1

2. Admittance of the objection of inventive step starting from document D11 (main request)

2.1 The statement of grounds of appeal of the opponent (section 4.4) contains an objection of lack of inventive step based on D11 as closest prior art against claim 1 of auxiliary request II underlying the contested decision. That objection was maintained in the rejoinder of the opponent (section 4.4, item 42), as the present second auxiliary request corresponds to said auxiliary request II. An objection based on D11 as closest prior art was also raised in the rejoinder of the opponent against the main request, the first auxiliary request, and the third auxiliary request in appeal (rejoinder of the opponent, sections 4.3 and 4.5, item 53). The objection against the main request, which corresponds to the patent as granted, is to be regarded as an amendment to the opponent's case within the meaning of Article 12(4) RPBA 2020. Its admittance is at the discretion of the Board.

2.2 The patent proprietor contested the admittance of the inventive step objection starting from D11 as closest prior art on the grounds that that objection had only been raised towards the end of the oral proceedings before the opposition division and therefore late into the opposition proceedings (statement setting out the grounds of appeal, sections 77-87).

2.3 It is apparent from the minutes of the oral proceedings (section 6.5) that the objection of lack of inventive step over D11 against auxiliary request II was indeed first raised towards the end of the oral proceedings before the opposition division. It is however apparent from the minutes that the admittance of the objection was discussed between the parties at the oral proceedings proceedings, after which the opposition division admitted the objection into the proceedings. The parties provided their arguments relating to that objection and the impugned decision is based on that objection (section 3.1.3).

2.4 Under Article 12(1)(a) RPBA 2020, any such facts, having become part of the contested decision, are basically part of the appeal proceedings too (see also Case Law of the Boards of Appeal, 10th Edition, 2022, in the following "Case Law", V.A.3.4.4). The Board concludes therefrom that the objection of lack of inventive step against auxiliary request II (corresponding to the second auxiliary request in appeal) over D11 is part of the appeal proceedings (Article 12(4) RPBA 2020) and there is no legal basis for retroactively rejecting it on appeal. Therefore, it has to be taken into account. It is also immediately apparent that the objection of lack of inventive step over D11 submitted against claim 1 of the second auxiliary request is also relevant for the main request whose claim 1 is more broadly defined, because it does not comprise any definition of the curing agent. In addition, that amendment of the opponent's case does not add complexity or goes against procedural economy. On that basis, the objection that claim 1 of the main request lacks an inventive step over D1 is admitted into the proceedings (Article 12(4) RPBA 2020).