Key points
- "It is further noted that in the present case, the main request allowed by the opposition division contained several independent claims, namely claims 1, 2, 3, 4, 5, 6, 9 and 10. Under these circumstances, it would have been the duty of the appellant [opponent] to duly substantiate already in their statement of grounds of appeal why they considered that the decision of the opposition division was wrong that each of these independent claims met the requirements of the EPC. In that regard, admitting the appellant's objections of lack of inventive step raised against claims 1, 2 and 4 of auxiliary request 3 (which correspond to claims 1, 2 and 6 of the main request) would go against the stipulations of Article 12(3) RPBA that the appellant should present their complete case in the statement of grounds of appeal."
- The Board admits the auxiliary request limiting to three of the independent claims that was filed after the notification of the summons, i.e. under Art. 13(2) and does not admit the inventive step attacks presented in reply to it during the oral proceedings.
- The Board finds the auxiliary request to be allowable.
Auxiliary request 3
9. Admittance
9.1 Auxiliary request 3 was filed with the respondent's letter of 5 December 2023, i.e. after notification of the summons to oral proceedings. Therefore, without prejudice to the parties' arguments, its admittance is governed by Article 13(2) RPBA, according to which any amendment to a party's appeal case is, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
9.2 The Board concurs with the approach taken in several decisions (T 247/20, point 1.3 of the Reasons; T 2988/18, point 1.2 of the Reasons; T 2920/18, point 3.4 of the Reasons), according to which the examination under Article 13(2) RPBA is carried out in two steps. The first question to be answered is whether the submission objected to is an amendment to a party's appeal case (first step). If that question is answered in the negative, then the Board has no discretion not to take the submission into account. If, however, that question is answered in the affirmative, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons (second step).
First step
9.2.1 Auxiliary request 3 differs from the main request only in that claims 3 and 4 have been deleted, i.e. it comprises only subject-matter which was also part of the main request.
9.2.2 In the present case, it was not argued by any of the parties that auxiliary request 3 did not constitute an amendment to the respondent's case. In that regard, the Board endorses the line of case law set out e.g. in decisions T 713/14 (reasons: points 4.2 and 4.3), T 494/18 (reasons: point 1.4), T 2091/18 (reasons: points 4.1 and 4.2), T 2920/18 (reasons: point 3.6) or T 2295/19 (reasons: point 3.4) which likewise concerned deletions of claims or of alternatives embodiments within claims and regarded them as amendments.
Second step
9.2.3 Therefore it remains to be assessed if there are exceptional circumstances, supported by cogent reasons, which justify the admittance of auxiliary request 3 into the appeal proceedings.
a) In that regard, it was undisputed that the successful objection of lack of novelty against claim 3 was present from the outset of the appeal proceedings.
The same is valid for the objection of lack of novelty that was pursued by the appellant in the statement of grounds of appeal against claim 4 of the main request, which was also considered to lack novelty over D3a in the Board's preliminary opinion (communication: sections 6.1.8 to 6.1.10), although no decision on that claim was eventually needed in view of the negative decision on novelty reached for claim 3 of the main request. Therefore, the Board agrees with the appellant that the filing of a set of claims according to auxiliary request 3, i.e. corresponding to the one of the main request in which claims 3 and 4 were deleted, would already have been possible and reasonable with the rejoinder to the statement of grounds of appeal (appellant's letter of 28 November 2023: point I.3).
9.2.4 However, in similar cases, some Boards have acknowledged exceptional circumstances when the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA 2020, nor to the legitimate interests of a party to the proceedings. This specific procedural situation was considered an "exceptional circumstance" within the meaning of Article 13(2) RPBA, see e.g. T 1598/18 (reasons: point 25.1), T 1294/16 (reasons: points 18.3 and 19), T 339/19 (reasons: point 1.5), T 2920/18 (reasons: points 3.13 to 3.15), T 2295/19 (reasons: points 3.4.12 to 3.4.14), T 499/20 (reasons: point 7.3.3). The present Board agrees with this approach and finds it applicable to the present case for the following reasons:
a) By deleting any other pending auxiliary requests apart from auxiliary request 3 (section VIII above), whereby the latter only contained claims that were present in the main request allowed by the opposition division, the Board is satisfied that the convergent approach laid down in the RPBA 2020 (see explanatory remarks to Article 12 and 13 RPBA and e.g. T 1294/16, point 18.3 of the reasons) and the need for procedural economy are respected.
b) In addition, by maintaining only claims that were until then not attacked by the appellant in appeal proceedings, auxiliary request 3 is not detrimental to the legitimate interests of the appellant at that point of the proceedings (since no objections had been maintained/raised against these claims). In particular, the admittance of auxiliary request 3 would neither alter the factual or legal framework of the proceedings, nor compromise the procedural rights of the appellant.
c) Also, it is taken into account that the appellant's objections regarding an alleged lack of novelty over D6 that were raised against claim 4 of the main request or claim 4 of the then pending auxiliary request 2 filed with the rejoinder to the statement of grounds of appeal were no longer relevant (see statement of grounds of appeal: page 5, third to fifth paragraphs; appellant's letter of 7 February 2023: points II.3). Under these circumstances, the Board is satisfied that admitting auxiliary request 3 into the proceedings supports procedural economy.
9.2.5 For these reasons, which in the Board's view constitute exceptional circumstances within the meaning of Article 13(2) RPBA, the Board made use of its discretion pursuant to Article 13(2) RPBA by admitting auxiliary request 3 into the proceedings.
10. Objections of lack of inventive step - Admittance
10.1 At the oral proceedings before the Board, the appellant indicated that they intended to substantiate objections of lack of inventive step in view of either D3a or D6 as the closest prior art against claims 1, 2 and 4 of auxiliary request 3.
10.2 However, it had already pointed out by the respondent in their rejoinder to the statement of grounds of appeal that the appellant had only very briefly asserted in their statement of grounds of appeal that claims 3 and 4 of the main request lacked inventive step, albeit without providing a proper reasoning.
In particular, it was not explained why the decision of the opposition division in that respect would be wrong (rejoinder: points 3.1 and 3.2). Also, as indicated in the Board's communication (section 5), only claims 3 and 4 of the main request were objected to in the statement of grounds of appeal. It was further not disputed by the appellant, in particular at the oral proceedings before the Board, that also no objection of lack of inventive step was duly substantiated against any of claims 1, 2 or 4 of the main request in their submission of 7 February 2023, which was filed in reaction to the respondent's rejoinder to the statement of grounds of appeal, or in their last written submission of 28 November 2023 (see in particular section III.1.a). Therefore, the appellant's objections of lack of inventive step against claims 1, 2 and 4 of auxiliary request 3 in view of either D3a or D6 put forward at the oral proceedings constitute an amendment to the appellant's case pursuant to Article 13(2) RPBA. As outlined above (section 9.1), such and amendment to a party's appeal case is, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
10.3 In the present case, considering that claims 1, 2 and 4 of auxiliary request 3 are identical to claims 1, 2 and 6 of the main request dealt with in the decision under appeal and allowed by the opposition division the Board cannot identify any exceptional circumstances which may justify the submission of these objections at such a late stage of the proceedings.
10.3.1 This in particularly true for the objection starting from D3a as the document constituting the closest prior art, which is in disagreement with the opposition division's finding (reasons: section 2.3.7). However, it was not explained in the statement of grounds of appeal or in any other written submissions why the opposition division would not be correct, i.e. that finding was not disputed before the oral proceedings in front of the Board were held.
10.3.2 Regarding the objection of lack of inventive step based on D6 as the closest prior art, it is further to be considered that such an objection was neither dealt with, nor even put forward by the appellant (then opponent) during the opposition proceedings and the appellant has not shown that the circumstances of the case may justify the admittance of that objection at such a late stage of the proceeding. In particular no arguments in that sense were put forward either in writing or at the oral proceedings before the Board, in reaction to the Board's communication in which said concerns were indicated (section 13.2.5). In the circumstances of the present case, the Board further cannot recognise any reasons why such an objection could not have been submitted already during the opposition proceedings.
10.4 It is further noted that in the present case, the main request allowed by the opposition division contained several independent claims, namely claims 1, 2, 3, 4, 5, 6, 9 and 10. Under these circumstances, it would have been the duty of the appellant to duly substantiate already in their statement of grounds of appeal why they considered that the decision of the opposition division was wrong that each of these independent claims met the requirements of the EPC. In that regard, admitting the appellant's objections of lack of inventive step raised against claims 1, 2 and 4 of auxiliary request 3 (which correspond to claims 1, 2 and 6 of the main request) would go against the stipulations of Article 12(3) RPBA that the appellant should present their complete case in the statement of grounds of appeal.
10.5 At the oral proceedings before the Board, the appellant argued that it was stated in the statement of grounds of appeal that they requested the revocation of the patent in suit, which implicitly meant that all the claims of the main request were then objected to.
However, such an implicit objection is not in line with the stipulations of Article 12(3) RPBA that the appellant shall set out clearly and concisely in their statement of grounds of appeal the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on. For that reason, the appellant's argument did not convince.
10.6 At the oral proceedings before the Board, the appellant further justified the late filing of the objections of lack of inventive step by the fact that the appellant was convinced that claims 3 and 4 of the main request were not allowable because they lacked novelty. Therefore, it was not unnecessary for them to file any further objections against other claims since the main request as a whole was not allowable for other reasons.
However, an opponent/appellant should not rely on their conviction that the Board will agree with their objection and should take into account that the Board might disagree with their view and rather accept the reasoning of the opposition division or of the other party. By not substantiating all their - possibly relevant - objections at the outset of the appeal proceedings, a party must accept the risk that such an objection might be not admitted into the proceedings if it is only raised at a later stage. For that reason, the appellant's argument is rejected.
10.7 At the oral proceedings before the Board, the appellant also considered that the inventive step objections should be admitted as a matter of fairness because auxiliary request 3 was admitted at a very late stage of the proceedings.
However, the question of fairness was already taken into account in the analysis provided above: in the present case, one of the reason for admitting auxiliary request 3 is that it only contains claims that were already present in the main request allowed by the opposition division and which were not attacked in appeal. Under these circumstances, the appellant was given the opportunity to attack any of the claims of auxiliary request 3 already when filing their appeal, i.e. auxiliary request 3 was admitted taking into account, among others, that it did not compromise the procedural rights of the appellant.
10.8 In view of the above, there are neither exceptional circumstances justifying the admittance into the proceedings of the appellant's objections of lack of inventive step in view of D3a or D6 as the closest prior art which were raised against claims 1, 2 and 4 of auxiliary request 3, nor do the appellant's arguments constitute cogent reasons in the sense of Article 13(2) RPBA which would have justified the admittance into the proceedings of these objections at such a late stage of proceedings.
10.9 For these reasons, the Board found it justified not to take into account these inventive step objections (Article 13(2) RPBA).
10.10 For the sake of completeness, it is pointed out that the above conclusion on the non-admittance of the appellant's objections of lack of inventive step in view of D3a or D6 put forward against claims 1, 2 and 4 of auxiliary request 3 was reached independently of the the fact that the respondent was not present at the oral proceedings before the Board. In other words, the fact that the respondent did not attend the oral proceedings did not have any influence on that decision and was irrelevant for reaching that decision. Therefore, the appellant's concerns in that regard, which were put forward at the oral proceedings before the Board, are rejected.
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