T 3088/19 - Should have used the 45 min break

Key points

•  The Board finds that the proprietor should have filed the auxiliary request during the oral proceedings before the OD after the OD departed from the preliminary opinion.
• " Having requested a 45 minute interruption in oral proceedings, this having been granted and thereupon having filed replacement auxiliary requests, it seems that the proprietor had sufficient opportunity to fully consider its requests in reaction to the change of opinion of the opposition division. The Board thus sees this to have been the time when auxiliary requests 2 to 6, first filed on appeal, could and should have been filed. In this context, it should also be noted that parties must be prepared for the possibility that the Opposition Division may deviate from its preliminary opinion during the oral proceedings."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t193088eu1

2.5 The subject-matter of claim 1 of auxiliary request 1 thus fails to meet the requirement of Article 123(2) EPC. Auxiliary request 1 is hence not allowable.

3. Auxiliary requests 2 to 6

Admissibility

3.1 Article 12(6) RPBA 2020, second sentence, states that the Board shall not admit requests .... which should have been submitted .... in the proceedings leading to the decision under appeal. Auxiliary requests 2 to 6 were filed for the first time with the grounds of appeal i.e. on 30 January 2020. The question to be answered is whether these requests could reasonably have been filed by the appellant already before the opposition division.

3.2 In the preliminary opinion of the opposition division issued prior to oral proceedings before it, the added subject-matter objections to claim 1 of the patent as granted, which were raised under point 3 of the notice of opposition, were found to be unpersuasive. At the oral proceedings, that preliminary opinion was overturned and the opposition division found the ground for opposition under Article 100(c) EPC to be prejudicial to maintenance of the patent as granted. In reaction, the patentee requested a break of 45 minutes to consider its requests (see page 2 of the minutes of the oral proceedings before the opposition division) and, on oral proceedings being resumed, filed replacement auxiliary requests 1 to 3.

3.3 Having requested a 45 minute interruption in oral proceedings, this having been granted and thereupon having filed replacement auxiliary requests, it seems that the proprietor had sufficient opportunity to fully consider its requests in reaction to the change of opinion of the opposition division. The Board thus sees this to have been the time when auxiliary requests 2 to 6, first filed on appeal, could and should have been filed. In this context, it should also be noted that parties must be prepared for the possibility that the Opposition Division may deviate from its preliminary opinion during the oral proceedings.

3.4 To this opinion given at oral proceedings before the Board, and to the indication in the communication under Article 15(1) RPBA 2020 that auxiliary requests 2 to 6 may be held inadmissible, the appellant submitted no counter-arguments, neither in writing nor orally.

3.5 The Board thus decided not to admit auxiliary requests 2 to 6 (Article 12(6) RPBA 2020).