T 1524/23 - Should have been filed before OD

Key points

• The OD revokes the patent for insufficiency. The Board considers the claimed invention to be sufficiently disclosed but obvious.
• When should the proprietor file the auxiliary request dealing with the inventive step objections? Assume the inventive step attacks do not pertain to different technical issues than the sufficiency objection.
• Board 3.3.04 concludes that they should have been filed before the OD.
• "In the board's view, the claim requests should have been submitted in the proceedings before the opposition division as the amendments aim to overcome objections raised in the opposition proceedings which the appellant had opportunity to address before the opposition division."
• "In the board's view, the claim requests should have been submitted in the proceedings before the opposition division as the amendments aim to overcome objections raised in the opposition proceedings which the appellant had opportunity to address before the opposition division.
• [B]oth the claim construction adopted by [the] board and the related objection of lack of inventive step based on document D9 had been made by both respondents already in their notices of opposition (...). The appellant [proprietor] could [...] have reasonably been expected to submit appropriately amended claim requests and arguments in their favour [in response to these submissions and in the proceedings before the opposition division]."
• " The admittance of the auxiliary requests would have required consideration of new issues on appeal. Specifically, the amendment to include a dosage feature would change the focus of the considerations of inventive step and the admittance of the requests would have resulted in the board having to consider issues that played no role in the proceedings before the opposition division, i.e there would be a fresh case on appeal."
• Note, even if the auxiliary requests had been filed before the OD, the OD would not have considered inventive step of those requests (as I understand it, they would suffer from the same deficiency under sufficiency of disclosure as the claims as granted). Hence, it makes no difference in terms of "consideration of new issues on appeal" when compared to the decision of the OD. Had the auxiliary request been filed before the OD, the opponents could have commented on lack of inventive step in writing before the OD, but inventive step would still have played no role in the decision of the OD and in that sense, there would still have been a fresh case on appeal. 
• Whether the Board found the ARs promising in terms of inventive step, we don't know.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231524eu1