T2872/19 - Need to file and substantiate carry-over requests as respondent

Key points

•  The opponent appeals the decision to reject the opposition. The Board finds the main request not inventive.
• The Board turns to the auxiliary requests. "These auxiliary requests were introduced by reference to auxiliary requests and arguments provided in a letter filed in the first-instance proceedings, see the respondent's [proprietor's] reply to the appeal"
• This reference to a part of a letter in the first  instance proceedings is seen as insufficient substantiation.
• " The respondent [proprietor] argued that neither the decision under appeal nor the appellant's statement of grounds of appeal dealt with the first to sixth auxiliary requests. Therefore, the respondent concluded they could not be expected to provide any argument going beyond those contained in the letter referred to."
• The Board:  However, this is not correct. A discussion of the auxiliary requests in appeal necessarily implies that auxiliary requests are on file in the appeal proceedings, which was not the case at the time the statement of grounds of appeal was filed. 
• The auxiliary requests filed during first instance proceedings are not necessarily all maintained in appeal, so it cannot be expected of the opponent to address the auxiliary request filed in the first instance proceedings [in the Statement of grounds] without knowing whether they are maintained in appeal. 
• The respondent-patent proprietor is expected to present reasons in the reply to the appeal as to why the auxiliary requests (either maintained requests from the first instance or new requests) overcome the specific objections raised in the statement of grounds of appeal against the main request. When the patent has to be amended, there is no longer a presumption of validity. The respondent therefore has to demonstrate that the auxiliary requests overcome the objections on file at the appeal stage. These do not necessarily correspond to objections presented in the first instance. This is consistent with the view expressed in decision T 1041/21, reasons 5.1.4."
• A petition for review  is pending in T 1041/21.
• In the present decision, an objection under Rule 106 was raised on the matter of the admissibility of the auxiliary request. 

EPO 

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

4.4 The respondent argued that neither the decision under appeal nor the appellant's statement of grounds of appeal dealt with the first to sixth auxiliary requests. Therefore, the respondent concluded they could not be expected to provide any argument going beyond those contained in the letter referred to.

However, this is not correct. A discussion of the auxiliary requests in appeal necessarily implies that auxiliary requests are on file in the appeal proceedings, which was not the case at the time the statement of grounds of appeal was filed. The auxiliary requests filed during first instance proceedings are not necessarily all maintained in appeal, so it cannot be expected of the opponent to address the auxiliary request filed in the first instance proceedings without knowing whether they are maintained in appeal. The respondent-patent proprietor is expected to present reasons in the reply to the appeal as to why the auxiliary requests (either maintained requests from the first instance or new requests) overcome the specific objections raised in the statement of grounds of appeal against the main request. When the patent has to be amended, there is no longer a presumption of validity. The respondent therefore has to demonstrate that the auxiliary requests overcome the objections on file at the appeal stage. These do not necessarily correspond to objections presented in the first instance. This is consistent with the view expressed in decision T 1041/21, reasons 5.1.4.