T 0614/21 - Could have presented in first instance proceedings (?)

Key points

• The OD maintained the patent as granted.
• The Board finds the claims as granted to be not new.
• The auxiliary requests were filed with the Statement of grounds and were substantiated.
• The Board does not admit them.
• "The board notes that the novelty analysis of claim 1 of the main request already required  a discussion during the oral proceedings before the board on how to interpret - the verb "to accept" in accordance with feature (d) and - the expressions "on behalf of" and "whilst identifying as" according to features (e) and (g). The amendments underlying claim 1 of auxiliary requests 1 to 7 would further necessitate an interpretation of several new expressions for the first time. The board refers in particular to - the expressions like "intercept", "masquerade" and "terminates" as per features (i), (k) and (l), or, similarly, "intercepting", "masquerading" and "terminating" as per features (j) and (m) and to - the term "believes" in accordance with features (l) and (m)."
• As a comment, it seems to me that any added feature may involve new expressions and hence claim interpretation. I do not see how a need for claim interpretation could be a reason for holding the amended claims inadmissible, in particular if there are no clarity objections.
• I am also not sure if the Board here is perhaps holding the fact that the proprietor made use of its right under Article 116 EPC to defend the main request in oral proceedings against the proprietor.
• "It is also worth noting that the appellant [opponent] indicated already in its statement setting out the grounds of appeal that the term "masquerading" did not have "a well recognised meaning in the field". It raised an objection as to insufficiency of disclosure under Article 100(b) in combination with Article 83 EPC in this respect. The board therefore considers that admitting auxiliary requests 1 to 7 into the proceedings would be detrimental to procedural economy."
• The Board does not indicate if the opponent's objections made sense prima facie. The mere fact that the opponent had objections is stated as ground.
• The patent is revoked.
• The Board does not explicitly consider the two other factors of Art. 12(4) besides procedural economy. 
• The issues about new allegations under Art. 83 seem to pertain to Art. 13(1)(s.4) (and, for completeness' sake,  the phrase "does not give rise to new objections" in Art. 13(1) logically means (in my opinion) (prima facie) valid objections, not the mere fact that an opponent comes up with some allegations.

• The Board, "The respondent [proprietor] explained that there was no need to file any auxiliary requests during the opposition proceedings because the opposition division rejected the opposition. The board, however, considers that a party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings. Indeed, each party should take into account that either the opposition division or the board of appeal may depart from the preliminary view expressed by the opposition division and adopt an opposing view. The patent proprietor should prepare the relevant "fallback positions" for that eventuality. There is however no right to present on appeal "fallback positions" that could have been presented already in the first-instance proceedings. Anything else would be contrary to the primary purpose of the appeal proceedings as laid down in Article 12(2) RPBA 2020, i.e. the judicial review of the decision under appeal."
• As a comment, the Board does not invoke Article 12(6) RPBA. The status of the remark is, therefore, unclear to me.  Moreover, the Board uses "could" have been presented already in the first-instance proceedings" but Article 12(6) uses "should". 
• As a further comment, the filing of the auxiliary requests already before the OD would not have assisted the Board with the judicial review because the OD would not have decided on them.

 

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/t210614eu1

3. Auxiliary requests 1 to 7: admittance

3.1 The appealed decision was not "based on" auxiliary requests 1 to 7 within the meaning of Article 12(1)(a) RPBA 2020. Indeed, the opposition division rejected the opposition. In such a case, the patent proprietor has to demonstrate that these requests were admissibly filed and maintained in the proceedings before the opposition division (cf. Article 12(4), first sentence, RPBA 2020). If this is done, the auxiliary requests form part of the appeal proceedings. In the case in hand, the respondent has not made submissions to that effect. Therefore, the auxiliary requests on file are to be regarded as an "amendment" within the meaning of Article 12(4) RPBA 2020, and may be admitted only at the discretion of the board (ibid., also the second sentence).

3.2 The respondent explained that there was no need to file any auxiliary requests during the opposition proceedings because the opposition division rejected the opposition.

The board, however, considers that a party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings. Indeed, each party should take into account that either the opposition division or the board of appeal may depart from the preliminary view expressed by the opposition division and adopt an opposing view. The patent proprietor should prepare the relevant "fallback positions" for that eventuality. There is however no right to present on appeal "fallback positions" that could have been presented already in the first-instance proceedings. Anything else would be contrary to the primary purpose of the appeal proceedings as laid down in Article 12(2) RPBA 2020, i.e. the judicial review of the decision under appeal.

3.3 Admittedly, the respondent argued in this respect that auxiliary requests 1 to 7 were submitted in order to respond to the appellant's argument that D5 anticipated feature (g) as set out in point 38 of the statement of grounds of appeal.

The appellant, however, convincingly drew the attention to page 13 of the appealed decision in this respect. The third paragraph of that page 13 contains the phrase referred to in item 38 of the statement setting out the grounds of appeal, namely that "the argument on the fact that the public address is allegedly not that of the WWAN client - because for O this would render the tunneling useless - seems artificial". Moreover, in the board's opinion, the argument mentioned in item 38 corresponds to the opponent's argument summarised in the second paragraph of page 13 of the appealed decision.

3.4 The board notes that the novelty analysis of claim 1 of the main request already required (cf. points 2.1.2 and 2.2.2 above) a discussion during the oral proceedings before the board on how to interpret

- the verb "to accept" in accordance with feature (d)

and

- the expressions "on behalf of" and "whilst identifying as" according to features (e) and (g).

The amendments underlying claim 1 of auxiliary requests 1 to 7 would further necessitate an interpretation of several new expressions for the first time. The board refers in particular to

- the expressions like "intercept", "masquerade" and "terminates" as per features (i), (k) and (l), or, similarly, "intercepting", "masquerading" and "terminating" as per features (j) and (m)

and to

- the term "believes" in accordance with features (l) and (m).

It is also worth noting that the appellant indicated already in its statement setting out the grounds of appeal that the term "masquerading" did not have "a well recognised meaning in the field". It raised an objection as to insufficiency of disclosure under Article 100(b) in combination with Article 83 EPC in this respect. The board therefore considers that admitting auxiliary requests 1 to 7 into the proceedings would be detrimental to procedural economy.

3.5 Hence, auxiliary requests 1 to 7 are not admitted into the proceedings (Article 12(4) RPBA 2020).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.