T 2240/22 - Auxiliary requests of the proprietor/respondent

Key points

• The OD maintains the patent on the basis of AR 5bis. The Board finds those claims to be obvious. The board turns to the lower-ranking requests.
• " These auxiliary requests were filed for the first time in appeal with the respondent-proprietor's reply to the opponent's appeal. "
• "The Board is unconvinced that these requests could and should have been filed already in the opposition proceedings (so that Article 12(6) RPBA would come into play), because there was no reason for the proprietor to file further auxiliary requests in the opposition proceedings after auxiliary request 5bis was held to be allowable."
• " However, these requests are amendments of the respondent proprietor's appeal case in the sense of Article 12(4) RPBA. ... these requests, ... are undoubtedly newly filed in appeal and indisputably have not been raised and maintained in the preceding opposition proceedings, are amendments."
• "As they are amendments to the respondent proprietor's appeal case their admission is at the discretion of the Board, Article 12(4) RPBA, 1st paragraph, 2nd sentence. The Board exercises its discretion according to the following two paragraphs of Article 12(4) RPBA, that amendments should be identified as such, reasons for their filing and (for claim requests) a basis given; they bring in no additional complexity, are suitable to address the relevant issues, and they meet the need for procedural economy. The latter criteria are similar though not identical to those that the opposition division would have applied if these requests had been filed at the oral proceedings before the division: clear allowability (clearly resolve all relevant issue), convergence and procedural expediency, cf. E-VI.2.2.3. "
• Art. 12(4), fifth sentence, specifies factors, not cumulative criteria. 
• Turning again to auxiliary requests 6bis, 7bis, 6tris, 7tris, these are not simple combinations of granted claims (as admitted auxiliary request 5bis is). Rather, they combine granted claims with subject-matter taken from the description and figures of the alternative embodiments of figures 2 and 4 []
• "In the Board's view, such amendments are complex and not suitable for addressing the lack of inventive step, as taking features from specific embodiments of the description raises questions of added subject-matter and would have required additional examination, especially considering that such subject-matter may not have been searched. It is unlikely, that the opposition division would have admitted such requests filed at the very last moment in opposition oral proceedings, as they would have failed the criterion of clear allowability for the same reasons."
• Comparing the filing of an auxiliary request with the reply to the appeal to the filing an auxiliary request at the end of the oral proceedings before the OD is interesting. The reply in appeal is filed months, if not years, before the Board holds oral proceedings.
• "This approach is also confirmed by jurisprudence of the Boards of appeal, see for example T 0288/16, reasons 8, in which the Board confirmed that the opposition division had exercised its discretion in a reasonable manner and in accordance with the right principles when deciding not to admit requests incorporating a feature from the description."
• "For these reasons, the Board decided not to admit auxiliary requests 6bis, 7bis, 6tris, 7tris into the appeal proceedings, Article 12(4) RPBA with Article 114(2) EPC. The question as to whether the requests had been adequately substantiated can be left undecided."
• It stands to reason that the non-appealing proprietor should have a fair chance to respond to an appeal against an amended patent that may be successful, but they should also not gain any advantage by waiting to file auxiliary requests in the appeal rather than during the opposition oral proceedings. In other words, it should not have a better chance of having auxiliary requests admitted in appeal than in the proceedings leading to the appealed decision.
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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/t222240eu1