T 1741/20 - Filing 106 ARs with the appeal

Key points

• The OD had revoked the patent.
• " It was undisputed that among the requests filed by the appellant [proprietor] with the statement of grounds of appeal, only auxiliary requests 2A, 3A and 10D had been requests before the opposition division."
• "The appellant thus filed in appeal 106 requests which had not been pending before the opposition division."

• "The board does not agree with the respondent's argument that the sheer number of fresh requests rendered all the appellant's requests or those not filed before the opposition division inadmissible. A large number of requests is not a sufficient reason to deny admission into the proceedings."

• "It is, however, incumbent on the appellant to guide the board and the respondents through its requests, all the more if the number of requests is large. This includes identifying in every detail the amendments made, explaining the link between the amendments and the outstanding objections against the patent, and providing reasons for filing some of its requests only in appeal (Article 12(4) RPBA 2020). The appellant has failed to fulfil these requirements."

• Follows a consideration of auxiliary request 1A regarding a lack of consistency.

• "The reasoning for auxiliary request 1A applies equally to all fresh requests in appeal. The appellant has not provided a comprehensive and complete summary of the amendments made, has not explained the relevance of all the amendments for the outstanding issues and has not provided reasons why the amendments could not have been carried out earlier."

• All the auxiliary requests which had not been pending before the opposition division are thus not admitted into the proceedings.

• "The appellant argued at the oral proceedings before the board that it was caught by surprise by the opposition division's decision as its preliminary opinion had been positive. The board is not convinced by this argument. An opposition division may change its view at oral proceedings and accept another party's arguments. This is, in fact, the whole purpose of the hearing. Such an outcome cannot thus be surprising."

• "Claim 1 of auxiliary request 2A [which was admitted] thus extends the scope of protection conferred by the patent as granted (Article 123(3) EPC)."

• " The board concludes that all the appellant's requests are either not admissible or not allowable. The appeal is thus dismissed."" 

• The patent remains revoked.

• Respondent IV requested a different apportionment of costs in view of the large number of requests and the appellant putting forward a fresh case in appeal. As a rule, each party should bear its own costs. The board sees no reason to depart from this principle in the current case. Neither the large number of the requests nor a different interpretation of the claimed subject-matter is in itself an abuse of procedure. The request for a different apportionment of costs is thus refused.

• EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t201741eu1