T 1239/24 - No need for pre-emptive attacks on carry-over requests

Key points

• The OD rejected the opposition. The opponent appeals.
• "Any consideration of auxiliary requests in the appeal necessarily presupposes that such claims have become the subject of the appeal proceedings in a permissible manner. However, this could not have been the case at the time the grounds of appeal were filed. The auxiliary requests at issue were not part of the decision under appeal. It is not incumbent upon the appellant-opponent to address, in its grounds of appeal, the auxiliary requests submitted in the opposition proceedings, without knowing whether they will be maintained in the appeal proceedings. 
• The patent proprietor responding to the appeal, on the other hand, is expected to set out ("clearly and concisely", see Article 12(3) RPBA) in its response to the appeal the reasons why the subsidiary claims overcome the objections raised in the grounds of appeal against the main request (see Case Law Book of the Boards of Appeal, 11th edition, V.A.4.3.5.b) and, for example, T 1041/21, Reasons 5.1.4; and T 1690/22, Reasons 2.12). 
• It is in response to a well-substantiated submission of auxiliary requests by the respondent that an appellant is obliged to submit a substantiated response with respect to the issue of inventive step."
• This refers to the rejoinder to be filed by the appellant. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t241239eu1