T 1563/22 - The prevailing proprietor

Key points

• The Board, in translation: "6. Auxiliary request 4 - Admission
• "6.1 Auxiliary request 4 was filed for the first time with the reply to the appeal and thus represents a change in the respondent's case, the admissibility of which is subject to the discretion of the Board, Article 12(2), (4) RPBA."
• "6.2 Since the opposition division found the existence of novelty and inventive step in its summons supplement and confirmed this in the decision, the patent proprietor had no reason to file auxiliary requests restricted in this regard in the opposition proceedings, contrary to the appellant's view. Therefore, auxiliary request 4 cannot be refused as inadmissible under Article 12(6) RPBA."
• " In this context, the appellant [opponent] cited three decisions (T847/20, T825/20, T1326/21) in the oral proceedings, which it found in chapters VA4.3.7.d) and VA4.3.7.f) of the case law of the boards of appeal. It did not provide any substantive arguments on the relevance of these decisions (in fact, the opposition division appears to have affirmed the existence of a ground for opposition in each case, unlike in the present case), and the board does not consider itself obliged to carry out an independent examination of their relevance. On the contrary, this would be a violation of the principle of impartiality."
• "6.3 Since the Board considers the filing of auxiliary request 4 together with the reply to the appeal to be a timely and appropriate response by the patent proprietor to the opponent's appeal, it has admitted it into the proceedings in the exercise of its discretion under Article 12(4) RPBA.
• AR-4 contains additionally the feature of original claim 2. The opponent/appellant commented on that feature in the Statement of grounds.
• "the process of claim 1 according to auxiliary request 4 involves an inventive step within the meaning of Article 56 EPC in the light of the prior art cited."

EPO 

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

https://www.epo.org/de/boards-of-appeal/decisions/t221563du1