T 1332/21 - Agreeing with the OD, as appellant / review of decision to admit

Key points

• "The patent proprietor as well as the opponent appealed the Opposition Division's interlocutory decision that the disputed patent may be maintained in amended form based on the patent proprietor's second auxiliary request".
• The proprietor defended the claims as granted with the Statement of ground.
• "During oral proceedings [before the board] the patent proprietor defended, as its main request, the patent in the form of auxiliary request 2 as amended before the Opposition Division."
• "Thus, the final requests of the parties were the following:

  The patent proprietor requested the patent to be maintained on the basis of auxiliary request 2 underlying the impugned decision, i. e. in the form it was maintained by the Opposition Division, or on the basis of auxiliary request 3, filed on 21 March 2022 together with the reply to the opponent's grounds of appeal."

• As a question, is there still a valid appeal of the proprietor at this point in the procedure? Could an appeal become inadmissible in the course of the procedure?
  
  

• " The opponent argued that auxiliary request 2, filed during oral proceedings before the Opposition Division, should not have been admitted into opposition proceedings due to its late filing. "
• "There was thus no misuse of discretion by the Opposition Division. The Opposition Division decided to admit the request based on relevant criteria in a reasonable way.  The Board thus sees no reason to overrule the Opposition Division's decision to admit this request into the proceedings. In view of Article 12(1) RPBA this request is part of the appeal proceedings."
• The remarkable point is that the Board considers itself to be competent to review this decision of the OD to admit a request. For a different approach, see, e.g. T 0617/16 and T 1884/19. 
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EPO 

The link to the decision and the decision's text are given after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t211332eu1

3. Admission of auxiliary request 2 into opposition proceedings

3.1 The opponent argued that auxiliary request 2, filed during oral proceedings before the Opposition Division, should not have been admitted into opposition proceedings due to its late filing. The opponent's arguments with respect to inventive step had not changed and there was no reason to file this request only at the day of oral proceedings.

3.2 The admission of amended claims during oral proceedings is at the discretion of the Opposition Division. This is apparent from Rule 116(2) EPC referring to the last two sentences of Rule 116(1) EPC. This sentences state that such amendments "need not be considered". Some criteria for the use of this discretion by the Opposition Division are listed in the Guidelines for Examination, E-III, 8.6 (Version March 2021, in force at the time of the oral proceedings). These criteria include i. a. prima facie allowability and procedural expediency.

3.3 A board of appeal should only overrule the way in which a department of first instance has exercised its discretion when deciding on a particular case if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limits of its discretion, see G 7/93, OJ 1994, 775, point 2.6 of the Reasons.

3.4 The Opposition Division reasoned the admittance of this request in its decision, point II.5.4, arguing that the request appeared prima facie allowable. Moreover, the filing of the request, which replaced a previously present second auxiliary request, was a convergent limitation of claimed subject-matter and a reply to the events during oral proceedings.

There was thus no misuse of discretion by the Opposition Division. The Opposition Division decided to admit the request based on relevant criteria in a reasonable way.

3.5 The Board thus sees no reason to overrule the Opposition Division's decision to admit this request into the proceedings. In view of Article 12(1) RPBA this request is part of the appeal proceedings.