T 1488/22 - Purpose-bound auxiliary request ?

Key points

• The claim is directed to a closure for a container comprising a tab and a popping score line. 
• "The patent proprietor contested the finding of the opposition division that the alleged public prior use according to the convolute of documents E3 (E3 together with E3.0, E3.1, E3.2 and E3.3) had not [?] been sufficiently proven and asserted that it had been assessed using the wrong standard of proof. E3 therefore should not be considered as prior art according to Article 54(2) EPC."
• "The patent proprietor acknowledged that twenty-two sweetcorn cans were publicly purchased in Oxfordshire on 31 July 2013, and that the reimbursement of that purchase was claimed by Mr Hall on 3 September 2023 under the project number Z1879 "
• The Board: "It is to be noted that the alleged public prior use does not concern the inter-office memorandum E3, but instead the closures that were allegedly purchased before the priority date at a supermarket as being part of sweet corn cans. The relevant fact to be assessed is whether the cans purchased were the ones on which the inter-office memorandum E3 is based."
• E3 is used as evidence that certain tested cans had all features of claim 1.
• "the board is not convinced that the opposition division failed to take into account material considerations, or that it included erroneous considerations or made errors of logic or contradictions in its reasoning, so that the fact-finding process followed by the opposition division did not contain any errors. In addition, the board is also satisfied with the opposition division's establishment of fact made in point 14.7 of the reasons for the decision under appeal that the cans purchased on 31 July 2013 (project number Z2189) were the ones referred to in memorandum E3"
• Note, the Board is not establishing facts themselves but is reviewing the findings of the OD about the facts and evidence for errors.
• "The board thus concludes that the subject-matter of claim 1 as granted is anticipated by the public prior use E3."
• The Board turns to the auxiliary requests: "all these requests [except auxiliary request V] were either filed for the first time in appeal proceedings or were no longer maintained in opposition proceedings."
• " The patent proprietor indicated that some of these requests were filed as a precautionary measure only, in the event that the board would decide that the objections of insufficiency of disclosure, added subject-matter and/or lack of novelty in view of E1 prejudiced the maintenance of the patent as granted. Since the opposition division expressed its preliminary opinion that none of these grounds would prejudice the maintenance of the patent as granted, there was no need to file those auxiliary requests directed to those objections during opposition proceedings. "
• "The board does not find the above arguments as amounting to justifying circumstances for the admittance of these requests into the appeal proceedings. Indeed, the objections on insufficiency, added subject-matter and lack of novelty in view of E1 were known to the patent proprietor from the outset of opposition proceedings. The board is therefore convinced that the patent proprietor would have been in a position to submit [...] the corresponding requests in oral proceedings, especially in the event that the opposition division's preliminary opinion changed during the oral proceedings in those matters."
• The OD found that claim 1 as granted is not novel over E1; AR-1 was not admitted, AR-2 was not novel over E3, AR-3 was unclear, and neither the OD nor the opponent had no objections to AR-4.
• Hence, even if those requests had been filed in the first instance proceedings, it would not have given the Board any additional reasoning of the OD on added subject-matter and insufficiency to review: the OD found those requirements to be met by the claims as granted. Hence, holding those requests inadmissible does not serve any interest of the Board to confine appeals to a review of first-instance decisions.
• On the other hand, if those auxiliary requests, even if legitimately addressing Art. 123(2), would require a completely new debate about novelty, it is not difficult to see why the Board does not wish to admit them. 
• The opponent's appeal against the patent as amended is also rejected, though not as inadmissible. This is remarkable because the opponent said it had no objections during the first instance proceedings against the auxiliary request at issue. However, the Board decided that the objections against the patent as granted clearly also applied to the patent as maintained by the OD. Therefore, these attacks are also admitted by the Board "exercising its discretion under Article 12(6) RPBA 2020".
• As a comment, Art. 12(6) RPBA is not exactly worded as giving the Board broad discretion.
• Possibly, the opponent's remark during the oral proceedings before the OD that it had no objections against the request can be understood as "no objections in addition to those already rejected by the OD for the patent as granted". 
• Alternatively, it may be concluded that the opponent had no obligation to expressly maintain the objections, as they were considered and rejected by the OD, so that it can be concluded that there is no "should have been filed" case in the sense of Art. 12(6) RPBA.
• "the opponent further argued that the content of the minutes of the oral proceedings before the opposition division was inaccurate since it states that "[t]he opponent does not present any objections to the claims of auxiliary request 4". Indeed, after the opposition division announced during the oral proceedings that none of the objections above prejudiced the maintenance of the patent as granted, these objections were obviously not discussed once more when dealing with the auxiliary requests, but were not withdrawn or abandoned. The minutes should have obviously reflected that the opponent did not have any further objections to the request." However, the opponent did not request correction of the minutes, so they must be considered correct.
• The opponent's objections are considered but are rejected.
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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/en/boards-of-appeal/decisions/t221488eu1

2. Auxiliary requests filed with the patent proprietor's statement setting out the grounds of appeal - admittance, Article 12(6) RPBA 2020

2.1 The patent proprietor filed with its statement setting out the grounds of appeal main request', main request'', main request''', auxiliary requests I to V, auxiliary requests I' to V', auxiliary requests I'' to IV'' and auxiliary requests I''' to IV'''.

2.2 The board notes that, with the exception of auxiliary request V, which corresponds to auxiliary request 1 filed during opposition proceedings, all these requests were either filed for the first time in appeal proceedings or were no longer maintained in opposition proceedings.

2.2.1 According to Article 12(6), second sentence, RPBA 2020, the board shall not admit requests which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.

2.2.2 The patent proprietor indicated that some of these requests were filed as a precautionary measure only, in the event that the board would decide that the objections of insufficiency of disclosure, added subject-matter and/or lack of novelty in view of E1 prejudiced the maintenance of the patent as granted. Since the opposition division expressed its preliminary opinion that none of these grounds would prejudice the maintenance of the patent as granted, there was no need to file those auxiliary requests directed to those objections during opposition proceedings. Other requests such as main request', auxiliary request I and auxiliary request I' were mentioned in the reply to the notice of opposition and could not be considered surprising.

2.2.3 The board does not find the above arguments as amounting to justifying circumstances for the admittance of these requests into the appeal proceedings. Indeed, the objections on insufficiency, added subject-matter and lack of novelty in view of E1 were known to the patent proprietor from the outset of opposition proceedings. The board is therefore convinced that the patent proprietor would have been in a position to submit or at least maintain the corresponding requests in oral proceedings, especially in the event that the opposition division's preliminary opinion changed during the oral proceedings in those matters.

2.2.4 A favourable preliminary non-binding opinion of any deciding organ of the EPO, in this case the opposition division, cannot generally justify that a patent proprietor is relieved from its duty to address the still pending objections raised by the opponent in a timely manner.

2.2.5 With respect to main request', auxiliary request I and auxiliary request I', the board notes that the mere reference to the subject-matter of the independent claims of these requests (see proprietor's letters dated 24 March 2021 and 24 February 2022) cannot be accepted as a proper filing of requests, even if they have been substantiated. In the case at hand, the chair of the opposition division indicated at the outset of the oral proceedings that these requests were not deemed to have been filed. At that stage the patent proprietor did not request to file the missing requests.

The patent proprietor argued before the board that after the discussion of the main request, it refrained from filing these requests for the sake of procedural economy, since the foreseeable outcome would have been that the opposition division would have found these requests inadmissible and/or not allowable. Therefore, the due time for filing these requests was with the statement setting out the grounds of appeal.

2.2.6 These arguments can also not be followed. Indeed, the board is convinced that the patent proprietor, after the indication of the opposition division that these requests had not been duly filed, had an opportunity to submit them at that point of time at the oral proceedings. However, it refrained motu proprio from doing so and due to this course of action, the opposition division could not decide on any of these requests.

In this respect, the board notes that it is the duty of the opposition division to clarify the requests which are on file at the very beginning of the oral proceedings. By the same token, it is the duty of the parties' representatives to state whether the requests are correct, and where applicable add further requests and/or indicate which requests are no longer maintained. In the present case the patent proprietor did not react, despite having been informed that the requests were not on file (see minutes, first page, third paragraph). Hence, the requests are considered as having not been filed in the opposition proceedings.

It is also noted that the opposition division does not bear the burden to check all parties' written submissions in order to detect and inform the parties of any possible missing supporting evidence or annexes. The parties bear the full responsibility of their own submissions and are expected to react and provide a remedy as soon as they become aware of such missing supporting evidence or annexes, i.e. in the present case at the beginning of the oral proceedings before the opposition division.

2.2.7 Consequently, in the absence of any justifying circumstances submitted by the patent proprietor, main request', main request'', main request''', auxiliary requests I to IV, auxiliary requests I' to V', auxiliary requests I'' to IV'' and auxiliary requests I''' to IV''' are not admitted into the appeal proceedings under to Article 12(6), second sentence, RPBA 2020.

2.3 With regard to auxiliary request V, which corresponds to auxiliary request 1 decided upon in opposition proceedings, the board notes that this request was not admitted by the opposition division (see point 13 of the reasons for the decision under appeal).

2.3.1 According to Article 12(6), first sentence, RPBA 2020, the board shall not admit requests which were not admitted in the proceedings leading to the decision under appeal, unless the decision not to admit them suffered from an error in the exercise of discretion or unless the circumstances of the appeal case justify their admittance.

2.3.2 As correctly indicated by the opponent, there is no apparent objection made by the patent proprietor that the discretion applied by the opposition division was not based on the correct principles; the patent proprietor's arguments differ in opinion regarding the compliance in view of Articles 84 and 123(2) EPC with the consequence that the discretion was exercised "unreasonably".

2.3.3 The board notes that according to established case law, which is now incorporated in Article 12(6), first sentence, RPBA 2020, an exercise of discretion should only be overruled in the event that it suffered from an error, i.e. if the opposition division exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.1.b)) or unless the circumstances of the appeal case justify their admittance. It is not the duty of the board to review all the facts and circumstances of the case as if it were in the opposition division's place and decide whether or not it would have exercised discretion in the same way.

2.3.4 Auxiliary request 1 was late-filed, namely after the time limit set by Rule 116(2) EPC and the principle of "clear allowability" of this request was correctly applied and assessed with reasons, so that no error in the use of the discretion is apparent to the board (see also minutes of the oral proceedings before the opposition division, page 4).

2.3.5 Therefore, in the absence of any apparent error in the use of the opposition division's discretion and in the absence of any justifying circumstances, the board does not overrule the opposition division's exercise of discretion and does not admit auxiliary request V into the proceedings under to Article 12(6), first sentence, RPBA 2020.