T 1662/21 - On the meaning of Rule 116(2) in opposition

Key points

• The appellant/opponent complains that the OD had incorrectly admitted an auxiliary request that was filed by the proprietor by the deadline under Rule 116(2) EPC.
• "According to Rule 116(2) the patent proprietor (in opposition proceedings) may be invited to submit documents that meet the requirements of the Convention (i.e. amendment requests), by the date specified in Rule 116(1), second sentence. After that date the third and fourth paragraphs of Rule 116(1) EPC will apply mutatis mutandis : new requests filed after that date need not be considered unless admitted on the grounds that the subject of the proceedings has changed."
• " It is generally accepted that the purpose of Rule 116 is to prevent parties from seeking unjustified procedural advantages by abusive tactics in disregard of procedural economy and to the disadvantage of other parties, see CLBA, 10th edition 2022, III.C.6.3.1f. The rule is thus seen to serve fairness and transparency in the lead-up to the final deciding stage of the procedure." 
• "  One can debate whether a notification of the grounds prejudicing maintenance refers in opposition also (as it does in examination) to a summons or communication that notifies the division's provisional opinion; or that in the fourth sentence [of] Rule 116(1), which applies mutatis mutandis in opposition [*], a change of subject of the proceedings encompasses a subsequent reversal of a preliminary opinion that was notified in the summons or communication. "
• [*] - probably read: to auxiliary requests / claim amendments
• The fourth sentence of Rule 116(1) at issue: "New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."
• "T0688/16, reasons 2.1, saw it this way, reading Rule 116(2) as requiring a notification that grounds prejudiced maintenance before a division could decide not to consider a request, finding that this corresponded to the guidance provided in the Guidelines for Examination, E-III, 8.6. Accordingly, the proprietor must always be given an opportunity to submit amendments intended to overcome objections raised by the division that depart from a previously notified opinion. The Board tends to agree, adding that this does not mean that any amendment then submitted must be admitted."
• " The division will first need to establish whether amendments are indeed intended to overcome the objections, and do so in a way that is appropriate and proportionate to the circumstances. They thus still have discretion, see also T0966/17, but should exercise it differently from when deciding admission of amendments filed after the Rule 116 date that are not justified by a change of the subject of the proceedings." 
• "  The Board does not agree that offering the proprietor an opportunity to amend when confronted with a reversal in a previously positive provision opinion would be inherently unfair to an opponent as argued by the [opponent] Appellant. Firstly, for the proprietor revocation of the patent, if confirmed on appeal, is the end of the road; for an opponent even after appeal the possibility of national invalidity proceedings remains. Secondly, this depends very much on how the discretion is exercised and what criteria are applied. In the Board's view the criteria set out in the Guidelines cited above appear to strike a fair balance between the opposing interests of the parties and the overall interest of procedural economy. Naturally, the opponent must also be heard before any decision on admission is taken." 
• As a comment, alternative case law could emphasize that the proprietor already has an opportunity to submit auxiliary requests with their first reply to the opposition. 

• Turing to the case at hand: "As can be inferred from the minutes, see the section bridging pages 4 and 5, it must have become clear to the proprietor in the discussion of the previous (withdrawn) auxiliary request, how to fix the problem, namely by combining granted claims 1 and 9 as suggested by the opponent. They then did so in the next (present) auxiliary request that replaced the previous request which was not admitted. In the Board's view it would have been unreasonable and unequitable to then block them from such an attempt, which the division - in the light of the previous discussion - would have considered likely to succeed, at least at first glance, merely because they should not be allowed to row back from a previous attempt. That the division then did consider a criterion it needn't have makes no difference for the appellant, as the outcome would have been the same (admission) if they had not considered it. Had the outcome been different (non-admission), the proprietor might have had reason to argue improper exercise of discretion as based on the wrong criteria."
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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.

3. Auxiliary request 1 - review of decision to admit

3.1 This request corresponds to the first auxiliary request on which the impugned decision is based and thus forms the basis of the appeal proceedings pursuant Article 12(1) and (2) RPBA. This request was filed at the oral proceedings before the division and admitted into the proceedings in application of Rules 80 and 116 EPC, decision, reasons 4.3.

3.2 The Appellant Opponent argues that the opposition division incorrectly applied its discretionary powers under Art 114(2) EPC and that moreover Rule 116(2) would be "insufficient" in governing new requests filed in opposition proceedings, grounds 2.2.a) and (3)(i) (page 4). In particular its application here would not strike a fair balance between the interests of the parties. Furthermore, relevant criteria had been applied incorrectly.

3.2.1 As evident from the decision the division based its decision to admit the auxiliary request on Rules 80 and 116(2) EPC.

3.2.2 In what regard Rule 116(2) EPC would be "insufficient" where it governs admission of late filed requests is not apparent to the Board from the Appellant's arguments.

According to Rule 116(2) the patent proprietor (in opposition proceedings) may be invited to submit documents that meet the requirements of the Convention (i.e. amendment requests), by the date specified in Rule 116(1), second sentence. After that date the third and fourth paragraphs of Rule 116(1) EPC will apply mutatis mutandis : new requests filed after that date need not be considered unless admitted on the grounds that the subject of the proceedings has changed.

3.2.3 It is generally accepted that the purpose of Rule 116 is to prevent parties from seeking unjustified procedural advantages by abusive tactics in disregard of procedural economy and to the disadvantage of other parties, see CLBA, 10th edition 2022, III.C.6.3.1f. The rule is thus seen to serve fairness and transparency in the lead-up to the final deciding stage of the procedure. One can debate whether a notification of the grounds prejudicing maintenance refers in opposition also (as it does in examination) to a summons or communication that notifies the division's provisional opinion; or that in the fourth sentence Rule 116(1), which applies mutatis mutandis in opposition, a change of subject of the proceedings encompasses a subsequent reversal of a preliminary opinion that was notified in the summons or communication. T0688/16, reasons 2.1, saw it this way, reading Rule 116(2) as requiring a notification that grounds prejudiced maintenance before a division could decide not to consider a request, finding that this corresponded to the guidance provided in the Guidelines for Examination, E-III, 8.6. Accordingly, the proprietor must always be given an opportunity to submit amendments intended to overcome objections raised by the division that depart from a previously notified opinion. The Board tends to agree, adding that this does not mean that any amendment then submitted must be admitted. The division will first need to establish whether amendments are indeed intended to overcome the objections, and do so in a way that is appropriate and proportionate to the circumstances. They thus still have discretion, see also T0966/17, but should exercise it differently from when deciding admission of amendments filed after the Rule 116 date that are not justified by a change of the subject of the proceedings.

3.2.4 The Board does not agree that offering the proprietor an opportunity to amend when confronted with a reversal in a previously positive provision opinion would be inherently unfair to an opponent as argued by the Appellant. Firstly, for the proprietor revocation of the patent, if confirmed on appeal, is the end of the road; for an opponent even after appeal the possibility of national invalidity proceedings remains. Secondly, this depends very much on how the discretion is exercised and what criteria are applied. In the Board's view the criteria set out in the Guidelines cited above appear to strike a fair balance between the opposing interests of the parties and the overall interest of procedural economy. Naturally, the opponent must also be heard before any decision on admission is taken.

3.3 The only question can therefore be, whether the division in admitting the request applied its discretion under Article 114(2) EPC and Rule 116 in the correct manner, in accordance with the relevant guidelines, and followed due process. In this context the Board refers to established case law, see CLBA, 10th edition, 2022, V.A.3.4.1 b) and the decisions cited therein, according to which a board should overrule the way in which a department of first instance exercised its discretion in a particular case only if they conclude that it did so in accordance with the wrong principles, without taking the right principles into account or in an arbitrary or unreasonable way, thereby exceeding the proper limits of its discretion. The Guidelines E-III, 8.6 and E-VI,2.2 provide the division with specific guidance in this regard.

3.3.1 In the present case, the division in the annex to the summons of 6 October 2020 gave an initial opinion that was favourable to the respondent proprietor, see point 4.4 of the annex. At the oral proceedings the division then reversed that opinion when it held that the claim 1 of the main request had been unallowably amended, page 2 (announcement after first interruption). Therefore, under the second half of the last sentence of Rule 116(1) ("unless ..."), and as indicated above the division was obliged to offer an opportunity to amend, though still afforded some discretion to admit what might be then submitted. After a new first auxiliary request was filed and then not admitted, page 5, bottom, the current auxiliary request 1 was filed, the parties heard and admissibility discussed (middle of page 6) and then decided (page 6, bottom).

3.3.2 The appellant refers to item 4.2 on page 8 of the decision, and submits that the opposition division applied the criteria of convergence in an erroneous manner. Furthermore, the prima facie assessment of added subject-matter was obviously wrong as the combination of granted claims (claims 1 and 9) has obviously no relevance for that question.

3.3.3 The Board disagrees. Firstly, in the Board's view the division needn't have considered whether the new auxiliary request converged with the one it replaced. The only reason they did so was because the opponent raised the issue. Convergence can be a useful admission criterion to ensure procedural efficiency when a division (or a board) is faced with a scattergun approach, where a proprietor or applicant files multiple requests that pursue disparate lines of defence following different inventive ideas usually in response to attacks against novelty or inventive step, see the decisions cited in CLBA, 10th edition 2022, V.A.5.12.5. However, convergence is by no means a necessary criterion that fits all situations.

This is a situation where the Board believes it does not. In the present case the new request was only the proprietor's second attempt to address the finding of an unallowable intermediate generalization for the main request, the first attempt having failed and then being withdrawn (the Board holds that requests that were withdrawn before consideration are not relevant). As can be inferred from the minutes, see the section bridging pages 4 and 5, it must have become clear to the proprietor in the discussion of the previous (withdrawn) auxiliary request, how to fix the problem, namely by combining granted claims 1 and 9 as suggested by the opponent. They then did so in the next (present) auxiliary request that replaced the previous request which was not admitted. In the Board's view it would have been unreasonable and unequitable to then block them from such an attempt, which the division - in the light of the previous discussion - would have considered likely to succeed, at least at first glance, merely because they should not be allowed to row back from a previous attempt. That the division then did consider a criterion it needn't have makes no difference for the appellant, as the outcome would have been the same (admission) if they had not considered it. Had the outcome been different (non-admission), the proprietor might have had reason to argue improper exercise of discretion as based on the wrong criteria.

3.3.4 For the Board the only decisive point for determining whether the division exercised its discretion properly is their prima facie analysis. Was that analysis reasonable? Though section 4.2 of the decision is poorly worded, and does not seem to reflect completely the considerations of the division, the Board is able to infer from the context and by consulting the minutes what those considerations were. The earlier discussion of added subject-matter (section 2) concluded that the feature M1.5 (the only feature challenged for added subject-matter) was taken out of context from the description without the further features identified in section 2.5 resulting in an unallowable intermediate generalization. Those missing features, as can be easily ascertained, are also the subject of granted claim 9 (which was not challenged in opposition). Apart from the specification of the side of the driving plate (feature M1.5) claim 1 then simply combined granted claims 1 and 9 corresponding to originally filed claims 1,2,4,5,6 and 14, see minutes, page 6, 4th statement by the proprietor. It can be inferred that this is why the division held that simple combination of granted claims 1 and 9 prima facie overcame the previous objection without introducing a further unallowable generalization. For the Board these considerations seem reasonable and based on the right principles.

3.4 Therefore the Board concludes that the opposition division did not exercise its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and thus did not exceed the proper limits of its discretion afforded by Art. 114(2) EPC. The questions, what might be the consequence of overturning a decision to admit a request on which the appealed decision is based, or whether there is even a legal basis for doing so, can therefore be left unanswered.