T 0342/22 - Unable to present its complete case

Key points

• The OD decided to maintain the patent in amended form on the basis of an auxiliary request filed late during the oral proceedings. The appellant/opponent presents new attacks in appeal. 
•  "The board is of the view that the appellant [opponent] could and should have raised all its objections before the opposition division. The auxiliary request, although late-filed, was a combination of the granted independent claim together with only complete dependent claims from the limited number of granted claims, and the appellant [opponent] did not request that the proceedings be postponed nor indicate in any way that it was unable to present its complete case at the oral proceedings before the opposition division."
• A possible procedural obligation to request postponement of the oral proceedings is a bit doubtful. The now-mentioned alternative course of action, indicating that you are unable to present a complete case, is, however, interesting. The question is, however, how can the OD properly respond to such a remark?

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220342eu1

11. Main request - further objections

11.1 In the appeal proceedings, the appellant raised the following further objections to the claims of auxiliary request I-B1a:

- lack of sufficiency (Article 83 EPC) of claims 2 and 3;

- lack of novelty of claim 1 with respect to E7 or E11;

- lack of inventive step of claim 1 in view of the combination of document E1 with any one of E5, E7 or E8;

- lack of inventive step of claim 1 in view of document E7 and common general knowledge of the skilled person or documents E3, E4, E5, E6 and E8;

- lack of inventive step of claim 1 starting from E2 or E4 with common general knowledge or in combination with any one of E3 to E8;

- lack of inventive step of claim 1 starting from E3 or E6 with common general knowledge or in combination with any one of E1, E4 or E7;

- lack of inventive step starting from E11.

11.2 The board notes that these objections were raised for the first time in the appeal proceedings.

11.3 According to Article 12(6), second sentence, RPBA, a board shall not admit objections which should have been submitted during the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.

11.4 The appellant argued that the set of claims of auxiliary request I-B1a had been filed at such a very late stage of the oral proceedings before the opposition division that it had not been possible to react fully to the new request. According to the appellant, even if the request contained only a combination of features of the claims as granted it was not possible to prepare for all combinations of granted claims in advance.

11.5 The board notes that although the auxiliary request was indeed filed at a late stage of the the oral proceedings (see minutes of the oral proceedings before the opposition division, points 15.3 and 15.4), it consisted only of a combination of granted claims and, as argued by the respondent, the set of claims as granted consisted of a total of six claims. It therefore could reasonably be expected that the appellant was already familiar with the subject-matter and able to react to the new request.

In addition, as also argued by the respondent, the appellant did not request a postponement of the oral proceedings nor indicate that it was unable to respond fully to the new request. Therefore, it appeared that the appellant had been able to present its complete case to the opposition division.

11.6 Claim 1 of auxiliary request I-B1a consists of the features of claims 1, 3, 4 and 5 as granted, whereby feature F15, found by the opposition division to be the single distinguishing feature with respect to E1, corresponds to granted claim 5.

In its notice of opposition, the appellant argued only that the subject-matter of claim 5 as granted was obvious for the skilled person using their common general knowledge, In its submissions of 14 January 2021 the appellant merely referred to its arguments set out in the notice of opposition for the dependent claims.

The appellant only raised specific objections under Article 100(b) EPC to claims 1 and 5 as granted, but not to the features of claims 2 and 6 as granted, which correspond to claims 2 and 3 of the current main request (see notice of opposition, pages 5 and 6; submissions of 14 January 2021, pages 2 to 5).

At the oral proceedings before the opposition division, the appellant raised objections of lack of novelty with respect to documents E1, E2, E3, E4 and E6 (see minutes of the oral proceedings, points 16.5, 16.11, 16.15 and 16.19) as well as lack of inventive step starting from E1 in combination with common general knowledge, E3, E4 or E6 (see minutes of the oral proceedings before the opposition division, point 17.8). The appellant then confirmed that it had no further novelty and inventive step objections (minutes, points 16.22 and 17.13).

11.7 The board is of the view that the appellant could and should have raised all its objections before the opposition division. The auxiliary request, although late-filed, was a combination of the granted independent claim together with only complete dependent claims from the limited number of granted claims, and the appellant did not request that the proceedings be postponed nor indicate in any way that it was unable to present its complete case at the oral proceedings before the opposition division.

In addition, even though the request itself was late-filed, as the appellant had requested revocation of the patent in its entirety, it had also had the opportunity to put forward objections to the dependent claims with its notice of opposition and submissions of 14 January 2021, not only during the oral proceedings before the opposition division.

11.8 There are therefore no circumstances in the present case justifying the admittance of the further objections.

Accordingly, the board did not admit the appellant's further objections into the appeal proceedings (Article 12(6), second sentence, RPBA).

12. In conclusion, as the admissibly raised objections do not prejudice the maintenance of the patent in the amended form found by the opposition division to meet the requirements of the EPC, the appeal is to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.