T 1118/22 - The opponent's reply

Key points

• An important lesson today for any opponent as a respondent: don't forget to broaden the appeal in your appeal reply brief by raising all possible objections and completely substantiating these objections by writing them out in full in the reply itself.
• The OD found the claims to be not novel over D9. The proprietor appeals, arguing that the claims are novel (and inventive, presumably) over D9. The opponent files a reply.
• The Board considers the claims to be novel and inventive over D9.
• In translation: " In its response to the appeal, opponent 1 referred to a lack of novelty of the subject matter of claim 1 compared to the respective teaching of documents E18, E19, E12, E15, E4, E5, E7, E10 and E16 and a lack of inventive step based on the teaching of documents E12, E19, E8, E11, E13 and E17 as set out in the written submissions of both opponents in the opposition proceedings. It justified the mere reference to the arguments in the opposition proceedings by saying that the contested decision of the opposition division did not contain any findings on these objections raised in the opposition proceedings and that the patent proprietor itself addressed these objections in the statement of grounds of appeal and in doing so merely repeated its arguments from the opposition proceedings and consequently bring forward nothing substantially new. Furthermore, opponent 1 reserved the right to supplement its submissions as necessary and/or requested."
• The full attacks were submitted with a letter of 29.07.2023, i.e. after the summons. The attacks are not admitted under Art. 12(3) RPBA 2020.
• The Board in translation "mere reference to the objection submissions cannot therefore replace appropriate reasons in the appeal proceedings. Rather, the completeness of the appeal submissions, which is still required by Article 12(3), sentence 1 and sentence 2, second half, RPBA, is necessary because it cannot be the board's task to investigate which of the arguments from the opposition proceedings remain relevant."

EPO 

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

https://www.epo.org/de/boards-of-appeal/decisions/t221118du1

2.6 As a result, the subject matter of claim 1 relies on an inventive step compared to the teaching of document E9 and general technical knowledge.

3. Further objections to the main application - admission

3.1 In its response to the appeal, opponent 1 referred to a lack of novelty of the subject matter of claim 1 compared to the respective teaching of documents E18, E19, E12, E15, E4, E5, E7, E10 and E16 and a lack of inventive step based on the Teaching documents E12, E19, E8, E11, E13 and E17 on the written submissions of both opponents in the opposition proceedings. It justified the mere reference to the arguments in the opposition proceedings by saying that the contested decision of the opposition division did not contain any findings on these objections raised in the opposition proceedings and that the patent proprietor itself addressed these objections in the statement of grounds of appeal and in doing so merely repeated its arguments from the opposition proceedings and consequently bring forward nothing substantially new. Furthermore, opponent 1 reserved the right to supplement its submissions as necessary and/or requested.

3.2 However, the general reference to a series of first-instance pleadings or generally to the first-instance submissions does not make the objections cited therein part of opponent 1's appeal. Opponent 1's argument with the patent proprietor's arguments cited in the grounds of appeal is neither apparent nor established The merely general reference to the objection procedure is obvious and readily understandable. This applies regardless of whether the patent owner's arguments themselves are merely a literal repetition of their arguments from the opposition proceedings.

3.3 The opposition procedure necessarily consisted of a mutual presentation of arguments at different stages of the procedure and it remained unclear due to the blanket reference whether the exchange of arguments was complete or whether individual arguments were pursued further in view of counter-arguments that may have been put forward, so that the matter was subject to review by the board The situation to be drawn is not clearly defined by a reference to the submissions made in the first instance.

3.4 As stated in T 503/20 (point 3.7.4 of the reasons for the decision), mere reference to the objection submissions cannot therefore replace appropriate reasons in the appeal proceedings; Rather, the completeness of the appeal submissions, which is still required by the Rules of Procedure in Article 12(3), sentence 1 and sentence 2, second half of the RPBA, is necessary because it cannot be the board's task to investigate which of the arguments from the opposition proceedings remain relevant could.

3.5 This does not change because opponent 1 made extensive presentations on these objections in her written submission of July 28, 2023.

3.6 The provision of Article 12 (3) RPBA concerns the time at which the grounds of appeal or the response to the complaint are submitted in the appeal procedure. It is followed by provisions on the further procedure, in particular Article 13 (2) RPBA, according to which changes to the complaint after service of the summons to the oral hearing are generally not taken into account unless the party concerned has shown valid reasons for the existence of exceptional circumstances. However, no corresponding justifying reasons were put forward nor are they obvious given the lack of a substantiated argument in the grounds of appeal. When assessing the question of whether there is a sufficiently complete statement of facts within the meaning of Article 12 (3) RPBA, all that matters is the content of the grounds for the complaint and the response to the complaint. However, a later procedural act or additional submissions made by a party involved are not capable of curing a violation of the requirements of Article 12 (3) RPBA to a certain extent.

3.7 Consequently, the further objections of lack of novelty of the subject matter of claim 1 according to the main request are based on the respective teaching of documents E18, E19, E12, E15, E4, E5, E7, E10 and E16 and lack of inventive step of the subject matter of claim 1 according to the main request from the respective teachings of documents E12, E19, E8, E11, E13 and E17 in accordance with Articles 12 (5) and 13 (2) RPBA are not to be admitted into the proceedings.