T 2138/21 - Requests that would not have been discussed

Key points

• The Board comes to the admissibility of requests that were filed by the proprietor/respondent with the reply to the appeal. The Board: "Nor is it of any relevance for the present appeal proceedings whether the patent proprietor had filed auxiliary request 1b (or 1b') in the proceedings before the opposition division. Since the opposition division found that higher ranking auxiliary request 1a fulfilled all requirements of the EPC, lower ranking auxiliary request 1b (or 1b') would not have been discussed, even if it had been filed already at the point in time [during the first instance proceedings] suggested by the opponent. In any case the Board would be confronted with a request which the opposition division had not considered."
• " It is clear that the objection that claim 1 of auxiliary request 1 contravenes Article 123(2) EPC, due to only a part of granted claim 5 having been incorporated, is rendered moot by the inclusion of all features of claim 5. The opponent argued however that procedural economy was impeded by the need to discuss auxiliary request 1b, if it was admitted into the appeal proceedings.
• This is not convincing as the need to discuss it would be the same if auxiliary request 1b had already been submitted in the proceedings before the opposition division. Filing the request only with the reply to the opponent's statement of grounds of appeal does thus not make any difference for the procedural economy of the present proceedings. The Board can thus see no reason why auxiliary request 1b would not have been admitted into the proceedings."
• The request is admitted (with minor further amendments) and is also held to be allowable.
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• I note that the request was clearly responsive to an objection against a higher-ranking request and substantiated (to the extent necessary) when filed in appeal. In such a case, following the present Board, it should not matter if the request was filed in the first instance proceedings or (as the Board held) should have been filed in the first instance proceedings. The latter point is quite a departure from Art. 12(6), second sentence, RPBA; though this depends on the interpretation of the term "should" in that sentence.
• The Board's reasoning makes sense.
• However, assuming that the request was newly filed with the reply to the appeal, the opponent/appellant would have to reply to it for the first time with the rejoinder. The RPBA then give the appellant only one month to file a rejoinder, with the possibility of requesting an extension.
• Indeed, in this case, the opponent presented a new inventive step attack during the oral proceedings before the Board, which attack was not admitted. However, it is unclear to me if that development was related to the amendments made in Auxiliary Request 1b. 
• T1220/21 : "In this respect, the Board notes that the first auxiliary request was not addressed at the oral proceedings before the opposition division, because the opposition division rejected the opposition. Thus, even if the objection had been raised in the first instance, the Board would not have before it a decision that could be reviewed. Under these circumstances, arguments based on Article 12(2) RPBA 2020 and the primary purpose of the appeal (review of the first instance proceedings), are not suitable for justifying not admitting the objection. Furthermore, D3 is prima facie relevant and not entirely new, as it was cited at least in combination with D2 during the opposition proceedings. The Board therefore exercises its discretion under Article 12(4) RPBA 2020 to admit the inventive step objection based on D3 as the closest prior art filed with the grounds of appeal, at least for the discussion of auxiliary request 1. "

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/t212138eu1 

1. Admittance of auxiliary request 1b'

Auxiliary request 1b' is admitted into the proceedings (Article 12(4) RPBA).

1.1 Auxiliary request 1b' was submitted with letter dated 5 April 2024. It differs from auxiliary request 1b submitted with the reply to the opponent's grounds of appeal (and meanwhile withdrawn) only in that some of its dependent claims have been deleted. Both auxiliary request 1b' and auxiliary request 1b differ from auxiliary request 1a (as found by the opposition division to fulfil all requirements of the EPC and meanwhile also withdrawn) in that claim 1 includes, additionally to feature F15, also feature F16. Thus, in claim 1 of auxiliary requests 1b and 1b', all the features of claim 5 as granted are incorporated into claim 1 (and not just one of the features of claim 5, namely feature F15).

The opponent's objections that claim 1 of auxiliary request 1a introduced subject-matter extending beyond the content of the application as filed, either taken alone or in combination with the dependent claims, are thus rendered moot by auxiliary request 1b'. This was not contested by the opponent.

1.2 However, the opponent objected that the patent proprietor did not submit auxiliary requests 1b and 1b' already in the proceedings before the opposition division despite an objection of extended subject-matter already having been made early in those proceedings.

During the proceedings before the opposition division and with letter dated 30 January 2020, the patent proprietor had submitted auxiliary request 1. In response thereto, the opponent argued in its letter of 27 November 2020 that claim 1 of auxiliary request 1 did not fulfil the requirement of Article 123(2) EPC because only a part of claim 5 as granted (namely feature F15 but not feature F16) had been incorporated into claim 1 of this request. In its submission dated 15 March 2021, the patent proprietor refuted the opponent's attack under Article 123(2) EPC against claim 1 of auxiliary request 1 but did not file an amended request.

During the oral proceedings before the Board, the opponent argued that it was when submitting that letter when the patent proprietor should have filed an auxiliary request with a claim 1 including both features F15 and F16, thereby overcoming the objection in view of Article 123(2) EPC. Auxiliary request 1b was therefore already late filed and should not be admitted into the proceedings. Likewise auxiliary request 1b' should not be admitted as it was based on that inadmissible request.

1.3 The Board does not accept this. Nor is it of any relevance for the present appeal proceedings whether the patent proprietor had filed auxiliary request 1b (or 1b') in the proceedings before the opposition division. Since the opposition division found that higher ranking auxiliary request 1a fulfilled all requirements of the EPC, lower ranking auxiliary request 1b (or 1b') would not have been discussed, even if it had been filed already at the point in time suggested by the opponent. In any case the Board would be confronted with a request which the opposition division had not considered.

With its statement of grounds of appeal, the opponent reiterated its objections against claim 1 and the dependent claims of auxiliary request 1. In response thereto, the patent proprietor submitted several new auxiliary requests, amongst which was auxiliary request 1b. As it was filed together with the reply to the opponent's appeal, auxiliary request 1b forms part of the patent proprietor's complete appeal case (Article 12(3) RPBA).

The Board, however, has discretion under Article 12(4) RPBA not to admit auxiliary request 1b into the proceedings because it was not admissibly raised and maintained in the proceedings leading to the decision under appeal. It is thus regarded as an amendment.

Article 12(4) RPBA sets out that the Board shall exercise its discretion in view of, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal, and the need for procedural economy. It is clear that the objection that claim 1 of auxiliary request 1 contravenes Article 123(2) EPC, due to only a part of granted claim 5 having been incorporated, is rendered moot by the inclusion of all features of claim 5. The opponent argued however that procedural economy was impeded by the need to discuss auxiliary request 1b, if it was admitted into the appeal proceedings.

This is not convincing as the need to discuss it would be the same if auxiliary request 1b had already been submitted in the proceedings before the opposition division. Filing the request only with the reply to the opponent's statement of grounds of appeal does thus not make any difference for the procedural economy of the present proceedings.

The Board can thus see no reason why auxiliary request 1b would not have been admitted into the proceedings. It was of course ultimately not necessary to decide this issue conclusively since this request was withdrawn and replaced by auxiliary request 1b'. Nevertheless, since claim 1 of each of these requests is identical, the aforementioned issues surrounding auxiliary request 1b are relevant to the admittance of auxiliary request 1b'.

1.4 Auxiliary request 1b' is based on auxiliary request 1b and differs therefrom merely in that two dependent claims are deleted. The opponent did not separately object against the admittance of this request, other than that it was inadmissible because it was based on the allegedly inadmissible auxiliary request 1b. Since the Board found the opponent's arguments with respect to the alleged late filing of auxiliary request 1b unconvincing, they are not a reason to find otherwise for auxiliary request 1b'.

However, the patent proprietor submitted auxiliary request 1b' with its amendments only after the Board had issued its communication under Article 15(1) RPBA. The Board has thus, in principle, discretion not to take it into account under Article 13(2) RPBA if these amendments were considered to be an amendment to the patent proprietor's appeal case if no exceptional circumstances apply.

The question of whether the deletion of the two dependent claims constitutes an amendment of the party's appeal case can however be left unanswered in the present case, because the Board anyway admits auxiliary request 1b' into the proceedings due to the presence of exceptional circumstances. The deletion of two dependent claims was done to overcome an objection under Article 123(2) EPC. Although this objection was raised by the opponent in its statement of grounds of appeal (see the paragraph bridging pages 4 and 5), the Board can accept that this was only fully recognised as being a separate objection to that made against claim 1 after the Board had mentioned the dependent claims separately in its communication. This was due to the opponent having only made the objection in a very cursory manner at the end of its objection to claim 1. These constitute exceptional circumstances in the present case. Further, the most straightforward possibility to overcome the objection, namely to delete the objected dependent claims, is justified, even if this was done only after receipt of the Board's communication, such that the requirements of Article 13(1) RPBA are also met.

1.5 Auxiliary request 1b' was thus admitted into the appeal proceedings.