T 0449/23 - (IV) On the need to actively maintain carry-over requests in appeal

Key points

• The OD maintained the patent in amended form based on AR-1. The opponent and the proprietor appeal.
• Are AR-2 to 8 part of the appeal procedure?
• I think the Board applies existing case law, yet it's good to see it explained in all details.
• "With the letter dated 10 December 2024, with which the above auxiliary requests were submitted, the patent proprietor noted that the communication of the board pursuant to Article 15(1) RPBA had not mentioned auxiliary requests 2 to 8 filed before the opposition division. In the proprietor's view, these requests were however to be considered as part of the appeal proceedings from the outset within the meaning of Article 12 RPBA."
• "The board disagrees. Rather, as argued by the opponent, and indeed as understood by the board in drafting the communication pursuant to Article 15(1) RPBA, prior to the letter dated 10 December 2024, there was nothing in the patent proprietor's submissions in appeal indicating that as an alternative to its main request or auxiliary request 1, it requested maintenance of the patent on the basis of auxiliary requests 2 to 8."
• The proprietor refers to some remark in its Notice of appeal. The Board finds this remark to be insufficient.
• I note taht at any rate, the proprietor should logically maintain AR-2 to 8 in its reply to the appeal of the opponent, as lower ranking requests.
•  "the patent proprietor's grounds of appeal and reply collectively defined its requests as the main request and auxiliary request 1. Hence, even if the notice of appeal were to have referred to auxiliary requests 2 to 8, this would have been superseded by the grounds of appeal and reply which were absent any reference thereto. In this regard, Article 12(3) RPBA stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and inter alia should specify expressly all the requests relied on."
• "The patent proprietor also argued that auxiliary requests 2 to 8 had been set out in its reply to the notice of opposition dated 1 October 2021 (pages 22 to 25). Since this document was submitted as an annex to the patent proprietor's statement of grounds of appeal, auxiliary requests 2 to 8 were part of the appeal proceedings."
• "it is for the appellant, in the present case the patent proprietor, to define the extent of the appeal and as set out above, in accordance with Article 12(3) RPBA, set out its complete case in the statement of grounds of appeal or the reply thereto.  The submission of the reply to the notice of opposition as an annex to the grounds of appeal does not fulfil this requirement. Specifically, it does not change the fact that the patent proprietor's express requests in appeal did not include auxiliary request 2 to 8. Indeed, the board notes that in its grounds of appeal, the patent proprietor only referred to its reply to the notice of opposition in the context of inventive step starting from D3 (grounds of appeal, page 7, point 2.2, first paragraph). Hence, the patent proprietor's argument in this regard also fails."
• "To support the argument that auxiliary requests 2 to 8 were part of the appeal proceedings, the patent proprietor also referred to the opponent's grounds of appeal, in which said requests were addressed. Specifically, the opponent's grounds of appeal comprised a table on page 15 referring to auxiliary requests 1 to 8 submitted by the proprietor in opposition proceedings, as well as providing some comments on the allowability of said requests."
• " The board disagrees. As stated by the opponent, its submissions related to auxiliary requests 2 to 8 were filed merely "as a precautionary measure" (grounds of appeal page 15, paragraph below the table), i.e. in anticipation of the possibility that the patent proprietor might request maintenance of the patent on the basis of these requests. However, the patent proprietor did not request maintenance of the patent on the basis of auxiliary requests 2 to 8, neither with its statement of grounds of appeal nor with its reply to the opponent's appeal. Indeed, given the fact that auxiliary requests 2 to 8 were addressed in the opponent's grounds of appeal, the lack of any reference to those requests in the patent proprietor's reply to the opponent's grounds of appeal served to confirm that auxiliary requests 2 to 8 did not form part of its requests in appeal."
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• " The patent proprietor argued that having been filed during opposition proceedings, auxiliary requests 2 to 8 were "carry-over" requests. Therefore, to determine whether such requests represented an amendment to its appeal case in the sense of Article 13(2) RPBA, the criteria set out in Article 12(4) RPBA were to be applied."

• The Board: " the amendment referred to in Article 12(4) RPBA is an amendment of the party's case relative to its requests, facts, evidence, arguments and objections on which the decision under appeal is based, which is distinct from "amendments to a party's appeal case" in Article 13(2) RPBA, carried out at a later stage of the appeal proceedings relative to earlier submissions in appeal."

• "the patent proprietor's interpretation would have as a consequence that any submission or request admissibly raised and maintained in opposition proceedings could be reintroduced without impediment at any stage of the appeal proceedings, since following said interpretation, such a request would never be an amendment of the party's appeal case under Article 13(1) and (2) RPBA, with the consequence that the board would not have the discretion to exclude it. This would in turn run contrary to the legislator's intent underlying Article 13(2) RPBA"

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EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t230449eu1