T 0823/23 - Admissibly raised and the Guidelines

Key points

• For the 'admissibly raised' prong of Art. 12(4) RPBA, should the Board consider the GL like the OD would have done, should the OD have arrived at the request or attack?
•  In point 6.1 of its communication dated 6 July 2022, the opposition division stated that this fresh ground of opposition could have already been raised against the patent as granted with the notice of opposition. The division indicated its intention not to admit the ground into the opposition proceedings due to a lack of prima facie relevance, referring to Article 114(2) EPC. However, this was only a preliminary opinion, and the opposition division did not take a final decision on this issue."
• Not sure how this happened, by the way: "the opposition division stated in its written preliminary opinion that it did not intend to admit a new ground of opposition under Article 100(b) EPC concerning auxiliary requests 3 and 4 (see point 6.1 of the communication dated 6 July 2022) and decided that the patent as amended on the basis of the main request (filed as auxiliary request 1 during the preceding appeal proceedings with the letter dated 15 September 2017) met the requirements of the EPC."
• Not deciding on an attack is a substantial procedural violation, isn't it?
• " In other words, the objection under Article 100(b)/83 EPC is a "carry-over objection", i.e. an objection which was raised and maintained in the opposition proceedings but which was not decided upon in those proceedings, neither with regard to its admittance nor in substance, due to the allowability of a claim request that ranked higher than the claim request against which the objection under Article 100(b)/83 EPC had been raised."
• "The RPBA do not define what is meant by a submission being admissibly raised in the proceedings leading to the decision under appeal. Having said this, the ordinary meaning of the term "admissibly" indicates a reference to admittance, and the reference to the "proceedings leading to the decision under appeal" makes it clear that the circumstances of the proceedings leading to the decision under appeal are decisive, as opposed to the circumstances of the appeal proceedings in which the notion of "admissibly raised" as per Article 12(4) RPBA is assessed."
• "When assessing how a department of first instance would have exercised its discretion (assuming legally correct and reasonable conduct), the Board uses the criteria which the department of first instance would have had to apply. The case law of the Boards of Appeal on reviewing the exercise of discretion in examination proceedings (see for example T 937/09, Reasons 3.4 and 3.5, and T 573/12, Reasons 3.3 and 3.4) and opposition proceedings (see for example T 1930/14, Reasons 22, and T 84/17, Reasons 2.2) can provide guidance for assessing how a department of first instance would have exercised its discretion."
• Compare T 0246/22: " In that regard, one viable approach could be that a Board decides whether the opposition division should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required (see e.g. T 364/20, Reasons 7). This would in turn mean that a Board - at least in part - should slip into the shoes of the opposition division. It would then have to infer, from the Board's perspective, how the opposition division should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA (see T 364/20, Reasons 7.2.10, last sentence). However, one of the possible consequences of that approach could arguably be that the boards would have to closely monitor the currently applicable Guidelines to derive guidance as to how the respective opposition division should have exercised discretion generally conferred by Article 123(1) EPC in conjunction with Rule 81(3) EPC in inter partes proceedings (cf. R 6/19, Reasons 6 and 7). For the boards, the subject of such an approach could virtually correspond to a "moving target", possibly leading to similar cases being treated differently, depending on the amendments made to the Guidelines over the years. This approach also fails to convince this board since the Guidelines are not binding on the Boards and since the RPBA are approved and adopted specifically to govern the proceedings before the Boards."
• I see the point of T 0246/22, but still the approach of T 0823/23 seems more practical for the procedure as a whole. 
• " A board may also take account of the Guidelines for Examination in the European Patent Office ("the Guidelines") when assessing how a department of first instance would have exercised its discretion. This, in principle, is no different from a board taking account of the Guidelines when reviewing the actual exercise of discretion by a department of first instance in the context of Article 12(6), first sentence (see T 435/21, Reasons 3.1, fifth sentence, and T 1088/20, Reasons 4.3.3) or second sentence (see T 1990/20, Reasons 4.2), RPBA. While the Guidelines are not binding on the Boards of Appeal in view of Article 23(3) EPC, they are - as general instructions pursuant to Article 10(2)(a) EPC - to be taken into account by the departments of first instance. However, the Guidelines do state that they do not constitute legal provisions and that, for the ultimate authority on practice in the EPO, it is necessary to refer firstly to the EPC itself and secondly to the interpretation of the EPC by the Boards of Appeal and the Enlarged Board of Appeal (General Part, section 3, General remarks). Against this background, a board's consideration of the Guidelines when assessing whether a submission was admissibly raised within the meaning of Article 12(4) RPBA does not appear to cause any issues."
  
  
• "Taking these criteria into account, the Board concludes that the objection under Article 100(b)/83 EPC - and fresh ground of opposition - was not admissibly raised in the opposition proceedings, for the following reasons. Since the case had already been remitted to the opposition division once, the procedure was at a very advanced stage when the objection was raised for the first time. There was no good reason for the belated submission either. The subject-matter of claim 1 of auxiliary request 3 corresponds to the subject-matter of claim 5 as granted. Hence, any lack of sufficiency of disclosure would have also been present for the claims as granted and therefore could and should have already been addressed within the opposition period."
•  Furthermore, ... . Hence, the objection was prima facie not relevant in the opposition proceedings."" 
• " Exercising its discretion under Article 12(4) RPBA, the Board thus decided not to admit the objection under Article 100(b)/83 EPC into the appeal proceedings."
• "  in the case in hand the applicability of G 10/91 to raising the objection under Article 100(b)/83 EPC in the appeal proceedings can ultimately be left open. Restrictions on new submissions by an opponent pursuant to G 10/91 and a board's discretionary power not to admit late-filed party submissions under Article 114(2) EPC in conjunction with Articles 12 and 13 RPBA are separate from each other and must be applied in a cumulative manner (see T 1042/18, Reasons 4.5). "

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t230823eu1