T 0500/23 - OD rejects oppo, auxiliary requests in appeal

Key points

• The OD maintained the patent as granted. The opponent appeals. The Board finds the main request and AR-1 to be unallowable.
•  "The appellant [opponent], in point 7.2 of its grounds of appeal, argued that inter alia auxiliary request 2 should not be admitted since this was filed late before the opposition division without any explanation or justification.
• I think that, strictly speaking, the opponent as the appellant must present attacks to the set of claims held allowable by the OD (the claims as granted) without a need to speculate on which auxiliary requests are presented by the proprietor in appeal. 
• The objection is under Art. 12(4) RPBA.
• The Board: In this regard, it should be noted that the opposition division had in its annex to the summons already outlined its preliminary view that the ground for opposition under Article 100(a) EPC, in conjunction with Articles 54 and 56 EPC, did not prejudice maintenance of the patent as granted. Nevertheless, the [proprietor] clarified its fall-back positions by filing auxiliary requests (shortly) before the oral proceedings before the opposition division. The fact that the auxiliary requests were filed shortly before the oral proceedings, although this was not strictly necessary due to the preliminary opinion of the opposition division, should not be unfavourable to the patent proprietor."
• The remark about "not strictly necessary" could also be relevant under Art. 12(6)(s.2) in cases where the proprietor does not present such auxiliary requests after the favorable preliminary opinion of the OD.
• " Furthermore the opposition division found the patent as granted to meet the requirements of the EPC such that it had no need to consider any further requests, including the auxiliary requests that were late filed. Therefore, with no need to consider any auxiliary requests in the impugned decision, it is clearly reasonable for the respondent to be able to pursue auxiliary requests filed in the opposition proceedings and/or to file other auxiliary requests on appeal as part of its complete appeal case (see Article 12(3) RPBA) in order to provide suitable fall-back positions should the patent as granted be found not to be allowable. This the respondent has done at the first opportunity on appeal i.e. in its reply to the grounds of appeal.
• As a comment, the auxiliary requesTt should then be fully substantiated in the reply to the statement of grounds.
• Furthermore, the auxiliary request should be suitable to address the attacks raised by the opponent/appellant in their SoG.
• Note, the "and/or" makes that the sentence is also relevant under Art. 12(6)(s.2).
• 5.3 Consequently, under the particular circumstances, the Board exercises its discretion to admit auxiliary request 2 into the proceedings."
• How to deal with AR-2 in the appeal? 
• The Board examines the novelty of the amended claim over two prior art documents and remits for inventive step, in a specifically reasoned part of the decision.
• "In the present case an important aspect is that the Board has, through its finding with respect to claim 1 of the main request, overturned the entire basis on which the opposition division had understood D1 to subsequently conclude that the claims before it met the requirements of the EPC. The Board would thus be considering the specific issues with respect to inventive step for the very first time on a totally different basis, which would deprive the parties of the opportunity of having an examination of the claimed subject-matter before two instances and moreover would go far beyond the purpose of the appeal proceedings as being primarily a review of the impugned decision. Not least due to this, special reasons (Article 11 RPBA) exist for remitting the case. Also, the parties had not developed their inventive step arguments with respect to the subject-matter of claim 1 of auxiliary request 2 in view of how this is differentiated over D1 and D2."

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t230500eu1