T 0921/21 - Two lines of case law about Rule 116

Key points

• The decision was issued on 16.08.2023 and is already discussed elsewhere. 
• The opponent filed new documents by the Rule 116 date before the OD. The proprietor filed new claim requests in reply before the oral proceedings. The OD did not admit them. The Board has to review under Art. 12(6) RPBA.
• The Board in adjusted machine translation: " In the jurisprudence of the Boards of Appeal, there are different approaches to assessing the admissibility of claim requests, filed under Rule 116(1), sentence 4, and  (2) EPC in response to a [case amendment of the opponent]."
• "According to one view, a new application prompted by new submissions is considered timely at least if it was submitted at the earliest possible point in the procedure (see ... T 754/16, reasons for the decision 1.3.1; T 487/13, reasons 6.2; see also T 688/16, Reasons 2, according to which the discretion is conditioned by a communication of the reasons opposing maintenance). This earliest possible point in time is determined based on evaluative criteria. According to this legal opinion, the opposition division would not have had any discretion not to admit the applications".
• "According to another view, it should always be possible to hold inadmissible any new submissions if a time limit has not been met (Article 114(2) EPC). This should apply, in particular, to sets of claims filed after the deadline set in Rule 116(1) EPC (T 1776/18, [from 2023] reasons 4.6). According to this view, the assessment is not limited to checking whether the submission was made at the earliest possible point in time, but criteria evaluating the content, such as prima facie allowability, can also be taken into account (T 966/17, reasons 2; T 1776/ 18, reasons for the decision 4.6)."
• However, in this case, the OD had based its decision on the argument that "there were reasons to assume that the patent owner did not only take note of the opponent's written submission when it was transmitted by the Office on January 20, 2021, but rather before Christmas. "
• The Board: "this consideration represents an inadmissible discretionary criterion because it is speculative and was disputed by the [appellant/proprietor]. Rather, what is relevant is when the written statement was served on the patent holder. However, notification [to the proprietor] was only arranged four weeks after documents D5 to D9 were received [by the EPO]. When it would have been possible to view this in the register* is irrelevant and also not proven. Thus, by taking into account an inadmissible criterion, the opposition division has (at least also) come to its conclusion that the applications were filed so exceptionally late that a departure from the normally applicable principle of admitting applications that were filed late by the opposing side was justified facts were submitted."
• * - as a comment, documents are visible in the online file, not in the Register.
• "the fact that the department partly based its discretion on the correct criteria does not change the fact that an inadmissible criterion was also taken into account"
• The request is admitted.
• The request is also held allowable.

EPO 

The link to the decision is provided after the jump.

T 1854/16 - (II) Should have been filed after R.116 date

Key points

• The proprietor files amended claims one month before the oral proceedings before the OD. When should the opponent file additional prior art in response to it?
• Not in appeal, according to the Board.
• The Board observed that the auxiliary request at issue is based on claim 2 as granted.
• "Since the subject-matter of independent claim 1 of auxiliary request I'' is identical to that of claim 2 of the patent, this subject-matter was relevant from the beginning of the opposition proceedings. Hence, documents against this combination should have been filed already during the opposition period. At the very latest prior to oral proceedings before the Opposition Division - when the proprietor filed this request one month in advance of the oral proceedings - should the opponent have filed any additional prior art, the admission of which would then have been at the discretion of the Opposition Division."
• As a comment, the opponent was hence expected to file the prior art after the date set under Rule 116(1) EPC.
• As a comment, it is unclear to me whether the Board's view is that holding the new prior art inadmissible would be permitted under Art. 113(1) EPC or not. 
• The additional prior art is not admitted under Art. 12(4)  RPBA 2007.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1599/18 (I) - Right to be heard

 Key points

Right to be heard

• Patentee argues that “Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard" 
• The Board, in the headnote: “ the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings.”
• The Board explains this as follows: “ The right to be heard does not entail the right to an amendment. Amendments are regulated by Article 123(1) EPC, the Implementing Regulations (e.g. Rule 80, Rule 116 EPC, Rule 137(3) EPC), and the RPBA during appeal. In this particular case, the Opposition Division had the discretion to admit, or not, the amendment, under Rule 116(2) EPC. That a new objection is raised, and that the amendment potentially responds to that objection, are factors to be considered in the exercise of this discretion, which the Opposition Division did; it does not give rise to a right to an amendment in response to that new objection emanating from the right to be heard.”
• And finally at r.29 “As noted above, in points 16 et seq., the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings. So the non-admittance of the requests as such cannot be a violation of the right to be heard.” emphasis added.
• As a comment, I strongly doubt that the headnote is correct where it implies that the right to be heard of Article 113(1) only entails the right to present comments on why a specific request should be admitted into the proceedings. If the OD does not admit a request only on the ground they want to finish oral proceedings early (the notorious alleged football match example can be found in Juve Rechtsmarkt 07/14, p.63), this is an abuse of discretion. However, it does not seem helpful on a theoretical level to analyse "abuse of discretion" without considering the party's rights involved. Infringement of a party's right and abuse of discretion seem two sides of the same coin. 
• Obviously, with the proposed reasoning non-admittance of requests by the Board will no longer be a ground for a petition for review under Article 112a(2)(c) if the Board gave you an opportunity to present arguments why the request should be admitted, even if the Board then holds the request inadmissible in an arbitrary, capricious, or unreasonable way. We will have to see what the Enlarged Board makes of Art.112a(2)(c).
• The Board's remarks seem obiter because they first find that  “the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.”
  
  
• As to the admissibility of another request that was held inadmissible by the OD: “It also appears that the timing of the filing was very late (during the oral proceedings) and that the new claims were based not only on the granted claims but contained new matter from the description. ... The Opposition Division exercised its discretion on the basis of these facts, which hold true and are pertinent to the exercise of discretion. The Board finds that the Opposition Division exercised its discretion in accordance with the right principles and in a reasonable way. The Board therefore has no reason to overturn this decision (see G 7/93 2.6”

T 1599/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181599eu1.html

15. Hence claim 1 of this request lacks novelty over E2.

Auxiliary request 3

16. As with auxiliary request 1, the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.

17. The appellant argues that the objections under Article 123(2) EPC were only raised during oral proceedings before the Opposition Division, and that the proprietor should have had the opportunity to react by amendment. Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard" (letter of 21 April 2021, page 8).

T 2371/18 - No duty to monitor the online file

 Key points

• “For the purposes of Article 113(1) EPC, parties and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (cf. R 4/17, point 4 of the reasons)”
• “In the case at hand, auxiliary request I was filed before the expiry of the deadline the opposition division had set under Rule 116(1) EPC. It was therefore not filed late by the patent proprietor. Auxiliary request I also addressed deficiencies which had been identified by the opposition division, and the opposition division gave the opponent the opportunity to comment on the admittance of auxiliary request I (see point 7 of the minutes of the oral proceedings before the opposition division).”
• The Board does not comment on the Rule 79 response period.
• “The opposition division further stated in its written decision that three weeks [between receipt of the AR by the opponent and the oral proceedings] were sufficient for the opponent to analyse the new request. In this context, it referred to the extent of the amendments carried out and to the aid provided by the patent proprietor's comparison table (see points 15.1 and 16.1 of the decision under appeal), as well as to carrying out a search if deemed necessary by the opponent []. Thereby, the opposition division applied the correct principles and addressed the opponent's main arguments. The Board thus concludes that the opposition division exercised its discretion with regard to the request for postponement neither according to the wrong principles nor in an unreasonable way which would have exceeded the proper limits of its discretion. In this context, it is not for the Board to say whether a longer period of preparation - which could have been achieved by setting an earlier final date for making written submissions under Rule 116(1) EPC - may have been more appropriate in the given circumstances.”
• I note that it seems this Board assesses alleged substantial procedural violations by the OD in a deferential way. The Board does not examine whether the 3 weeks were actually sufficient to satisfy the opponent's right to be heard, only that the OD said so and gave reasons. 

T 2371/18
https://www.epo.org/law-practice/case-law-appeals/recent/t182371eu1.html

6. Right to be heard and reimbursement of the appeal fee

6.1 In essence, the opponent argued that three weeks between having been informed of the contents of auxiliary request I on 13 February 2018 and the oral proceedings on 7 March 2018 had not been a sufficient time to react to auxiliary request I, in particular in view of the complexity of the amendments contained therein. Therefore, the opposition division should have either not admitted auxiliary request I into the proceedings or postponed the oral proceedings. The failure to do neither constituted a violation of their right to be heard under Article 113(1) EPC.

T 0908/19 - Rule 79 vs Rule 116

Key points

• In this opposition appeal, the OD had admitted AR-1 because it was filed within the time limit set under Rule 116(1) EPC. Therefore, the requests were not considered to be late filed.
• The opponent points out that essentially that the relevant time limit is that of Rule 79 EPC.
• The Board confirms that AR-1 is admissible, but now on the ground that AR-1 filed with the written submissions under Rule 116 is identical "as regards its content" to a request filed with the Rule 79 EPC response.
• “Consequently this auxiliary request was filed in due time in accordance with Rule 79(1) EPC, even if refiled at a later date and complemented with an adapted description. As the request was filed in time the question whether it is "clearly allowable" is not relevant. The Board is therefore unable to see any error in law in the opposition division's consideration of this request (though it may have overlooked the date of first filing the request)”
• As a comment, I note that the Board here confirms that ‘filed in time’ means the Rule 79(1) date, i.e. the period of typically four months for Patentee to file the response, not the Rule 116 date for written submissions.
• Perhaps the OD had indeed “overlooked the date of first filing the request” as the Board suggests. In practice, many OD’s appear to treat Rule 116 EPC - incorrectly in my view - as giving Patentee's a right to auxiliary requests one/two months before the oral proceedings, such that any request filed by the Rule 116 deadline is admissible. 
• I note that although 5 requests had been filed with the Rule 116 date, only 1 request had been submitted with the Rule 79 response. Nevertheless, the OD decided to admit all five requests as not being late filed. However, the Board considers AR-1 to be allowable so that it does not have to deal with whether or not AR-2 to AR-5 were correctly admitted by the OD. 

EPO T 0908/19 -  link


Decision OD

Reasons for the Decision

1. The appeal is admissible.

2. Background

The invention concerns a method of transporting compost inoculated with mycelium of mushrooms for human consumption. In order to transport the compost at a temperature of less than 20°C, a mass of compost is subjected to subatmospheric pressure and water vapour is removed from the mass of compost resulting in a cooled mass of compost. The mass of compost is subjected to said subatmospheric pressure and for a time that results in a temperature of the mass of compost of less than 15°C before said cooled mass of compost is transported. By evaporating water in the compost and substantially eliminating that evaporated water from the compost, the temperature of the compost can be lowered effectively and quickly (paragraph 6 of the published patent specification).

3. Admissibility of auxiliary request 1

The appellant contests admission of the auxiliary requests by the opposition division as it should have exercised discretion by applying the criterion of "clear allowability".

The Board disagrees. The present auxiliary request 1 is identical with auxiliary request 1 underlying the impugned decision. It is undisputed that an auxiliary request was filed on 30 October 2017 within the Rule 79(1) EPC time limit with the proprietor's timely reply to the opposition, and that an identical request, as regards its content, was filed as auxiliary request 1 with their submission of 23 August 2018. Thus the then opponents were aware of the subject of this request in due time at the earlier date of filing of this request. They can therefore not reasonably argue that they did not have sufficient opportunity to respond thereto e.g. by providing new facts and evidence. The situation described in the Guidelines E-V,2.1 and H-II, 2.7.1 therefore does not apply. This is not changed by the fact that the request was formally refiled at a later date (together with an adapted description). Consequently this auxiliary request was filed in due time in accordance with Rule 79(1) EPC, even if refiled at a later date and complemented with an adapted description. As the request was filed in time the question whether it is "clearly allowable" is not relevant. The Board is therefore unable to see any error in law in the opposition division's consideration of this request (though it may have overlooked the date of first filing the request), let alone a serious error that might, for example, have justified an immediate cancellation of the decision under appeal.

Auxiliary request 1 was therefore validly admitted into the opposition proceedings by the opposition division.

T 0043/16 - OD should have admitted requests

Key points

• The OD had not admitted Auxiliary Request 1. The Board considers that the OD did so according to the wrong principles (G7/93). Oral proceedings before the OD were held on 13.10.2015. The Board notes that AR-1 was filed with letter of 18.12.2014. This letter was after the expiry of the period of Rule 79(1) EPC (The Rule 79(1) Communication was dated 21.02.2014. A first extension with 2 months was granted, i.e. until 21.08.2014. A second extension was denied. The Patentee's response was filed only in December 2014. 
• The Board: "Auch wenn sie [Auxiliary Request 1] formal nach Ablauf der nach Regel 79 (1) EPÜ gesetzten Frist eingegangen sind, sind sie Gegenstand sowohl der in der Ladung zur mündlichen Verhandlung geäußerten vorläufigen Meinung der Einspruchsabteilung, als auch der Eingabe der Einsprechenden vom 23. Juli 2015. Daher mussten sie als faktisch in das Einspruchsverfahren zugelassen gelten."
• As a first comment, I note that the Board appears to acknowledge that auxiliary requests filed after the expiry of the Rule 79(1) period are in principle late-filed. However, I find it rather weird that a late-filed request becomes admissible because the opponent comments in substance on it. The opponent can hardly be expected to restrict itself to only contesting admissibility, in view of the risk that the OD could admit the request. If I understand the present Board, if you wile a substantive rebuttal as an opponent, patentee's late-filed auxiliary requests automatically become admissible. What is the opponent supposed to do, then? Has the Rule 79(1) period any meaning, except for being a delay until the OD can issue summons?
• The OD had also decided to not admit Auxiliary Requests 3 to 6, filed after the Rule 116(2) date. The Board: Die Kammer stellt fest, dass die Nichtzulassung der Hilfsanträge 3 bis 6 lediglich damit begründet wurde, dass der Antrag nach Regel 116(2) EPÜ verspätet eingereicht worden war. [in particular: “Durch die Eingabe der Einsprechenden vom 23. Juli 2015 habe sich der Sachverhalt geändert, da die Einsprechende neue Einwände, zusätzliche Argumente und weitere Druckschriften eingereicht habe.”] Die Einspruchsabteilung berücksichtigte nicht, dass der Antrag durch eine Änderung des Streitstoffs veranlasst war, [...] . Hinsichtlich der Hilfsanträge 4 bis 6 setzte sie sich inhaltlich nicht erkennbar mit den geänderten Ansprüchen auseinander, bevor sie die Hilfsanträge 3 bis 6 als nicht zulässig verwarf. Die Einspruchsabteilung hat ihr Ermessen daher rein formalistisch ausgeübt.
• As a comment, I tend to agree that if the opponent submits new attacks and documents shortly before the Rule 116(2) date (and these are admitted), then the patentee must be given an opportunity to reply, with auxiliary requests if desired, under Article 113. Rule 116(2) indeed only applies if the proprietor “has been notified” of the grounds prejudicing the maintenance of the patent and invitation to submit amended claims has accordingly been issued. The Rule 116(2) date applies only for amended claims that are responsive to those objections notified in that invitation. 
• The OD had also decided to not admit the new Main Request, filed two weeks before the oral proceedings, which were the claims as granted (with the reply of 18.12.2014, the Main Request was amended claims). According to the Board, two weeks was sufficient for the opponent to consider this new request, because the claims as granted were already the subject of the Notice of opposition. "Somit war der Einsprechenden durchaus zuzumuten, sich etwa zwei Wochen vor dem Termin der mündlichen Verhandlung erneut mit den erteilten Ansprüchen und mit ihrer eigenen Argumentation auseinanderzusetzen, an der sich angesichts der erteilten Ansprüche nichts geändert haben sollte." 

EPO T 0043/16 -  link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Die Beschwerdeführerin reichte zusammen mit ihrer Beschwerdebegründung erneut ihren Hauptantrag betreffend die erteilten Ansprüche, sowie die Hilfsanträge 1 bis 6 ein, die von der Einspruchsabteilung unter Verweis auf Regel 116 (2) EPÜ in das Einspruchsverfahren nicht zugelassen worden waren.

2.1 Daher hat die Kammer zu überprüfen, ob einzelne oder alle diese Anträge in das Beschwerdeverfahren zuzulassen sind. Gemäß Artikel 12(4) der Verfahrensordnung der Beschwerdekammern (VOBK) kann eine Kammer das Vorbringen eines Beteiligten in das Beschwerdeverfahren zulassen, auch wenn es von der ersten Instanz als verspätet nicht zugelassen wurde. Soweit nach Artikel 12 (4) VOBK im Beschwerdeverfahren über die Zulassung von Vorbringen zu entscheiden ist, das bereits im erstinstanzlichen Verfahren nicht zu gelassen wurde, entspricht dies einer Überprüfung der auf Regel 116 EPÜ gestützten Ermessensentscheidung der Einspruchsabteilung.

2.2 Nach ständiger Rechtsprechung der Beschwerdekammern ist bei der Überprüfung einer Ermessensentscheidung des erstinstanzlichen Organs zu beurteilen, ob es sein Ermessen nach Maßgabe der falschen Kriterien, unter Nichtbeachtung der richtigen Kriterien oder in willkürlicher Weise ausgeübt hat (siehe G 7/93, ABl. EPA 1994, 775, Entscheidungsgründe Punkt 2.6; T 640/91, ABl. EPA 1994, 918, Entscheidungsgründe Punkt 6.3; T 109/08, Entscheidungsgründe Punkt 4.1).

2.3 Daher wird die Kammer im Folgenden untersuchen, ob die Nichtzulassung der erneut im Beschwerdeverfahren vorgelegten Anträge von der Einspruchsabteilung nach Ausübung pflichtgemäßen Ermessens erfolgte, oder ob die Einspruchsabteilung ihr Ermessen fehlerhaft ausgeübt hat.

3. Hauptantrag

3.1 Die Beschwerdeführerin hat mit ihrer ersten Eingabe im Einspruchsverfahren geänderte Ansprüche eingereicht. Erst mit ihrer zweiten Eingabe im Einspruchsverfahren, mit dem Schriftsatz vom 28. September 2015, legte sie als Hauptantrag die erteilten Ansprüche vor, die sie auch im Beschwerdeverfahren als Hauptantrag weiterverfolgt.

T 0688/16 - Rule 116 in opposition

Key points

• In this opposition appeal, the OD had decided to not admit AR-3 into the proceedings.
• The Board first notes that the impugned decision cites Article 114(2) as the legal basis. The Board notes that Article 114(2) refers to late-filed "Tatsachen und Beweismittel" (the language of proceedings is German) and not to late-filed requests. 
• The Board notes that Rule 116(2) gives a discretion to hold late-filed requests inadmissible. Rule 116(2) is however only applicable "wenn der Patentinhaberin die Gründe mitgeteilt worden sind, die der Aufrechterhaltung des Patents entgegenstehen und sie aufgefordert worden ist, bis zu einer in Regel 116(1) EPÜ genannten Frist, neue Unterlagen einzureichen". Requests filed after the period of Rule 116 can he beld inadmissible. Hence, the discretion is restricted by the notification that grounds are prejudical to maintenance of the patent as granted. 
• In this case, the preliminary opinion of the OD was favorable for patentee. Hence, without a negative notificaiton, Rule 116(2) does not apply. 
• "Im Gegenteil, wegen der Änderung der vorläufigen Sichtweise der Abteilung erst in der mündlichen Verhandlung hätte der Patentinhaberin die Möglichkeit geboten werden müssen, durch Einreichung eines neuen Antrags darauf entsprechend zu reagieren".
• The Board decides to admit AR-3 and examines whether the claims are novel over D10 (a prior right document). The Board concludes that the claims are novel and remits the case. 
• I note that the novelty attack based on D10 was in the Notice of opposition.
• I think that the Board's decision is possibly incorrect in that Rule 79 is also relevant. However, this may require a more detailed analysis at my end. Preliminary I note that it is not so clear if the competence of first instance departments to hold amended claims inadmissible can be based on a Rule only.  A reference to Article 123(1) EPC, first sentence would have been useful ("The [...] European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations").  

EPO T 0688/16 -  link

2. Hauptantrag - Zulassung zum Beschwerdeverfahren

Die Kammer ist außerdem zu der Auffassung gelangt, dass die (Nicht-)Zulassung des Hilfsantrags 3 überhaupt nicht im Ermessen der Einspruchsabteilung stand.

2.1 Die Entscheidung führt Artikel 114(2) EPÜ als Rechtsgrundlage an, siehe Punkt 7.6 der Begründung. Aus diesem Artikel lässt sich nur ein Ermessen, Tatsachen und Beweismittel zuzulassen oder nicht, ableiten. Ein Ermessen, verspätet eingereichte Anträge nicht zuzulassen, basiert dagegen auf Regel 116(2) EPÜ, ist aber demzufolge nur dann anzuwenden, wenn der Patentinhaberin die Gründe mitgeteilt worden sind, die der Aufrechterhaltung des Patents entgegenstehen und sie aufgefordert worden ist, bis zu einer in Regel 116(1) EPÜ genannten Frist, neue Unterlagen einzureichen. Dabei ist dann Regel 116(1) EPÜ, Sätze 3 und 4, entsprechend anzuwenden, d.h. solche Anträge, die dann nach einer solchen negativen Mitteilung nach der Regel 116(1) Frist eingereicht werden, brauchen nicht berücksichtigt werden, soweit sie nicht wegen einer Änderung des dem Verfahren zugrundeliegenden Sachverhalts zuzulassen sind. Somit ist das Ermessen durch eine Mitteilung, dass Gründe der Aufrecht-erhaltung des Patents entgegenstehen, bedingt. Dies geht auch aus den damalig geltenden Prüfungsrichtlinien (2015) E-V.2.2 b) hervor.

T 1777/15 - Apportionment of costs

Key points

• In this opposition appeal, the case is remitted based on an auxiliary request. The opponent (respondent) had requested that in the case of a remittal, "the costs it would incur in connection with the further prosecution before the first instance and any subsequent appeal proceedings be paid by the appellant".
• The Board refuses this request.
• "From the wording of Article 104(1) EPC ("costs [a party] has incurred" (underlining by the board)), Rule 88(2) EPC, which relates to a bill of costs, and Article 16(1) RPBA, it follows that a decision on an apportionment of costs cannot be made in respect of future costs"
• As a first comment, Rule 88(2) is completely irrelevant here because it is about the procedure for the fixing of the costs, which is a distinct and separate procedure from the decision to give a different apportionment of the costs. The bill of costs (invoices and the like) can indeed by submitted for costs already incurred, but that is precisely why the fixing of the costs is in a separate procedure. I find it somewhat concerning that this Board confuses these two procedures.
• Furthermore, there is an established line of case law (though a bit older) that in case of a remittal (for a newly filed document), the  "costs between the parties should be apportioned under Article 104 [...], in such a way that the late-filing party should normally bear all the additional costs caused by his tardiness" (T 326/87, hn, OJ 1992, 522, CLBA IV.C.6.3.3). As an example of a cost order for future costs after remittal: see T622/89: "The Opponent shall bear all the costs of the Patentee reasonably incurred in the course of the further prosecution of the opposition before the Opposition Division, and of any appeal therefrom." (which is cited in Singer/Stauder, 5th edition, Art.104 nr.32. 
• As the Board does not engage with existing case law, I don't find the Board's reasoning convincing. In addition, for interpreting a legal provision, one can often not restrict oneself to the plain text, but needs to take into account the case law, purpose and system, and the travaux as well, unlike the Board in this case. 
• The Board also appears to indicate that for the OD to hold inadmissible a request filed after the date for written submissions under Rule 116, the OD must give more reasons than the observation that the request is filed after that date. However, the Board states that "In the present case, no reasoning was given" and also that "Without any reasoning" , while at the same time acknowledging that the written decision of the OD includes the statement that the  opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC". The Board may find it grossly insufficient reasoning, I don't think the OD gave "no reasoning". 

EPO T 1777/15 - link

5. Auxiliary request 4: admissibility (Article 12(4) RPBA)

5.1 Claim 1 of auxiliary request 4 corresponds to claim 1 of auxiliary request 3, except that the first alternative referred to in point 4 above has been deleted.

5.2 The claims of auxiliary request 4 are identical to the claims of auxiliary request 6 filed before the opposition division at the oral proceedings. The opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC" (see points 1.17.18 and 2.8.1 of the decision under appeal and point 16.9 of the minutes). No further reasoning was given.

5.3 Article 12(4) RPBA gives the board the discretion to hold inadmissible requests which could have been presented or were not admitted in the first instance proceedings.

T 1750/14 - Requesting postponement date written submissions

Key points

• The applicant requested the Examining Division to defer the deadline for written submissions for the oral proceedings (under Rule 116(1) EPC). The Examining Division refused this.
• Of course, Rule 116(1) EPC states that Rule 132(2) EPC about time limits does not apply. The Board notes that according to a literal reading of the rules, the final date may not be extended. 
• " However, the admissibility of claim amendments filed after the final date specified in Rule 116(1) EPC is subject to the examining division's discretion. The examining division may not refuse to consider new claims on the sole ground that they had not been filed prior to the final date stated in a summons to oral proceedings".
• The Board notes that the decision to not postpone the final date, was not reasoned. This violates Rule 111(2) EPC.
• However, the reimbursement of the appeal fee is refused, because the applicant had not filed amended claims before the ED after the final date for written submissions. That is an omission from which the applicant should not profit. (added 15.04.2017).
• The Board remits the case, despite the application having a filing date in 1999 and being filed as divisional application in 2003. The refusal was announced in 2014.

EPO T 1750/14 -  link

Reasons for the Decision

1. MAIN REQUEST

This procedural request is directed to setting aside the decision under appeal, to remitting the case to the examining division for further prosecution and to reimbursing the appeal fee (cf. point XIII above).

1.1 Alleged substantial procedural violation as regards refusal of the request to postpone the date for oral proceedings

1.1.1 The appellant argued that the refusal of its request for postponing the date for oral proceedings before the examining division was tainted with a violation of its right to be heard under Article 113(1) EPC, and was not sufficiently substantiated within the meaning of Rule 111(2) EPC.

1.1.2 As to the exercise of the examining division's discretion in not allowing the postponement of the date for oral proceedings before it, it is true that a change of both the applicant and the representative after having been summoned to those oral proceedings is not expressly mentioned in the list of examples of serious reasons within the meaning of the "Notice from the European Patent Office dated 18 December 2008 concerning oral proceedings before the EPO", OJ EPO 1/2009, 68, point 2.3. The board takes note of the examining division's arguments (cf. appealed decision, Reasons 1.2.3 and 1.2.4) that the new applicant could have instructed, already before the assignment regarding the transfer of the present application was signed, a patent attorney to prepare for the oral proceedings, and that the newly appointed professional representative could be expected, before taking on the mandate, to make sure that he was indeed able to prepare for such oral proceedings within a one-month period (cf. T 37/97, Reasons 2.2; J 4/03, Reasons 5). The examining division also took into account, inter alia, the complexity of the case.

1.1.3 In that regard, the board considers that, under the hypothetical assumption that there had been no request for postponement of the final date for making submissions in preparation for the oral proceedings (henceforth "final date") or that such request had no relation whatsoever to the request for postponement of the date for oral proceedings, it would appear that all the arguments presented by the then applicant as regards the postponement of the date for oral proceedings were properly addressed and treated in the appealed decision (see point 10 of the Summary of Facts and Submission and point 1 of the Reasons).

1.1.4 However, the appellant repeatedly requested that the final date of 6 January 2014 be postponed, arguing that the new applicant, represented by the newly appointed representative, could not reasonably be expected to file amendments less than one week after the change of applicant and representative. These arguments were not addressed in the entire decision under appeal (see point 1.2.5 below). It is not clear whether the examining division in fact saw any relationship between the request for postponement of the final date and the request for postponement of the date for oral proceedings. If the examining division did see any such relationship (such as a strict link between the two dates), the request for postponement of the final date and the supporting arguments should have been addressed, at least, in the context of the refused request for postponement of the date for oral proceedings (see point 1.2.6 below).

1.2 Alleged substantial procedural violation as regards refusal of the request to postpone the final date

1.2.1 The appellant submitted that the time available between the conclusion of the application-transfer agreement and the final date set by the examining division was too short for studying the case and for preparing reasoned written submissions (cf. points III and V above).

1.2.2 The final date for making written submissions in preparation for the oral proceedings is codified in Rule 116 EPC as follows (emphasis added by the board):

"(1) When issuing the summons, the European Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.

(2) If the applicant ... has been notified of the grounds prejudicing the grant ..., he may be invited to submit, by the date specified in paragraph 1, second sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis."

Rule 116(1) EPC hence stipulates that Rule 132 EPC shall not apply. In particular, Rule 132(2) EPC reads as follows:

"Unless otherwise provided, a period specified by the European Patent Office shall be neither less than two months nor more than four months; in certain circumstances it may be up to six months. In special cases, the period may be extended upon request, presented before the expiry of such period."

Thus, Rule 132(2) EPC, on the one hand, establishes that, in the absence of specific provisions, periods specified by the EPO normally shall be between two and four months (first sentence). On the other hand, it stipulates that, in special cases, such periods may be extended upon request (second sentence). From that wording alone it is not clear to the board whether the non-applicability of Rule 132(2) EPC to Rule 116(1) EPC relates only to the above limitations for periods specified by the EPO (allowing e.g. that a final date less than two months ahead of the date for oral proceedings be set) or whether it should also preclude the possibility of extending specified periods implying that the final date set under Rule 116(1) EPC could not be changed. In fact, according to a literal reading of the provisions of Rule 116(1) EPC in conjunction with Rule 132(2) EPC as done in the Guidelines for Examination in the EPO (see D-VI, 3.2, last sentence e.g. in the applicable version of September 2013), said final date may not be extended.

1.2.3 However, the admissibility of claim amendments filed after the final date specified in Rule 116(1) EPC is subject to the examining division's discretion. The examining division may not refuse to consider new claims on the sole ground that they had not been filed prior to the final date stated in a summons to oral proceedings (see e.g. T 755/96, OJ EPO 2000, 174, Reasons 4.1; T 798/05, Reasons 7, last two paragraphs). When Rule 71a(1) EPC 1973, the predecessor of Rule 116(1) EPC, was introduced, that rule was not intended to restrict the discretion conferred on EPO departments under Article 114(2) EPC (see Explanatory Memorandum CA/12/94 rev. 1, point 7.4, as quoted in T 755/96, Reasons 2.2). In this context, it may at least be questioned whether the non-applicability of Rule 132(2) EPC in Rule 116(1) EPC has necessarily to be understood as an exclusion of any discretionary power exercised by the examining division to postpone the final date.

1.2.4 Should the postponement of the final date under Rule 116(1) EPC indeed be excluded by the negative reference to Rule 132(2) EPC, the question arises whether the final date may be changed if the scheduled oral proceedings are cancelled and a new date for them is set by the first-instance department. While there may be situations where it is appropriate to change the date for oral proceedings while maintaining the final date, the board considers that a change of the final date should normally be allowable when the date for oral proceedings is postponed. At least in cases where a final date is specified relative to the date for oral proceedings (usually one month before the scheduled oral proceedings), it could even be argued that the final date is postponed automatically when the oral proceedings are postponed.

1.2.5 In the present case, the final date had been set to 6 January 2014. The appellant's representatives requested a postponement of this date repeatedly and separately from their request to postpone the date for oral proceedings (cf. points III and VIII above). It is apparent to the board that the statements made by the first examiner of the examining division (cf. points IV and VII above) seem to imply that the examining division in fact took a final and binding decision within the meaning of J 8/81 (OJ EPO 1982, 10, Headnote I) on the request for postponement of the final date, on which the then applicant apparently had no opportunity to comment, rather than having merely expressed its preliminary opinion thereon. It is also evident that the specific reasons for not allowing any postponement of the final date - regardless of the refusal of the request for postponement of the date for oral proceedings - are not addressed in the decision under appeal. It is only mentioned that the question of filing amendments of the application after expiry of the final date did not arise (cf. point IX above). This remark cannot, however, be considered to be a reasoning for the refusal of the request for postponement of that final date. The fact that no submissions other than procedural requests were filed after the final date does not mean that the request for postponement of the final date has become pointless. The request for postponement of the final date was never withdrawn and the appellant's desire to file amended claims was made clear even during oral proceedings before the examining division when it requested that the examination proceedings be continued in writing.

Hence, the examining division's decision to refuse the appellant's request for postponement of the final date lacks a reasoning required under Rule 111(2) EPC.

1.2.6 The board can only surmise that the examining division may have assumed that the final date is only to be postponed together with the date for the oral proceedings and that, as a consequence, the request for postponement of the final date and the request for postponement of the date for oral proceedings could not be separated from each other and could only be decided together. However, in this case or if the examining division indeed considered those two requests to be linked in any other way, the appellant's arguments presented concerning the request for postponement of the final date should have been considered at least in the context of the request for postponement of the date for oral proceedings (see point 1.1.4 above).

1.3 In view of the above, the board concludes that, due to a lack of substantiation within the meaning of Rule 111(2) EPC with regard to the request concerning the final date and/or to the request concerning the date for oral proceedings, the examining division indeed committed a substantial procedural violation which justifies the impugned decision being overturned.

At the same time, this amounts to a fundamental deficiency apparent in the first-instance proceedings within the meaning of Article 11 RPBA (see e.g. T 309/09, Reasons 8). It is also worth noting that the board does not take any position as to whether the right to be heard under Article 113(1) EPC was violated in any other way than by lack of substantiation in the decision under appeal. However, such a lack of substantiation under Rule 111(2) EPC is in itself sufficient reason to set aside the decision under appeal. Moreover, said lack of substantiation, in particular with respect to the request for postponement of the final date, prevents the board from a comprehensive assessment of the examination proceedings in view of Article 113(1) EPC.

1.4 Remittal for further prosecution (Article 11 RPBA)

1.4.1 Pursuant to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, "unless special reasons present themselves for doing otherwise". In this regard, it has to be established in the present case whether special reasons are discernible against such remittal.

1.4.2 Despite the fact that the filing date accorded to the present application is 31 March 1999 (i.e. eighteen years ago) and that substantive issues of the case have already been touched upon in these appeal proceedings (cf. board's communication under Article 15(1) RPBA, points 3.1 to 3.3), the board does not see any "special reason" justifying a deviation from the general rule prescribed by Article 11 RPBA. In fact, the appellant was only partially responsible for the delays in the first-instance proceedings. The present application was actually filed in April 2003 as a divisional application. After issuance of a first communication in July 2004 there was no office action until the appellant had a telephone conversation with the first examiner in September 2011. The appellant requested remittal of the case for further prosecution, and filed amended sets of claims in the appeal proceedings. Under these circumstances, the appellant's interest in having the case examined in two instances prevails over the general interest of bringing proceedings to a close within an appropriate period of time.

1.4.3 In conclusion, the present case is to be remitted to the examining division for further prosecution under Article 111(1) EPC in conjunction with Article 11 RPBA.

1.5 Request for reimbursement of appeal fee

1.5.1 At the oral proceedings before the board, the appellant maintained its request for reimbursement of the appeal fee on the grounds that a substantial procedural violation had occurred in the examination proceedings, without providing further comments supporting this request. Given that the impugned decision is to be set aside and that the appeal is therefore allowable, the board has next to establish whether such reimbursement appears to be equitable under Rule 103(1)(a) EPC.

1.5.2 The board holds that the applicant - and in particular its professional representative - must or should have known, in view of Rule 116(1), last sentence, EPC that it is generally not guaranteed that any written submission is automatically admitted into the proceedings before the EPO for the sole reason that it is filed prior to the final date, nor is it entirely unlikely that a submission may be admitted under the department's discretion when filed after that date. Rather, the then applicant could have followed the invitation from the examining division (cf. point II above) and attempted to file, for example, amended sets of claims with the aim of overcoming the objections raised in the summons to the first-instance oral proceedings after 6 January 2014, the final date set in the summons.

This was, however, not done by the applicant of its own volition. In the board's view, such procedural behaviour speaks against regarding the reimbursement of the appeal fee as equitable within the meaning of Rule 103(1)(a) EPC. A party cannot gain a procedural advantage from an omission of its own, pursuant to the legal principle "nemo auditur propriam turpitudinem allegans" (cf. T 1705/07, Reasons 8.7). The appellant should have known - in view of the rather negative opinion of the examining division set out in its communication accompanying the summons - that filing no amended claims would in all likelihood lead to a refusal of the application based on its merits, and that amendments filed at any time before oral proceedings were not a priori inadmissible. In other words, the substantial procedural violation alone was not causal for the need to lodge an appeal against the eventual refusal of the application. Reimbursement of the appeal fee is therefore refused.

2. FIRST AND SECOND AUXILIARY REQUESTS

Since the appellant's main request is found to be allowable, it is not necessary to consider its first and second auxiliary requests any further.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The request for reimbursement of the appeal fee is refused.

T 0628/14 - Rule 116 is no invitation

Key points

• The Board confirms, as established case law, that Rule 116 EPC " should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds [] as established with the notice of opposition" 

Reasons for the Decision

1. Non-admitting documents D9 and D10

1.1 Documents D9 and D10 had not been admitted into the proceedings because (see contested decision, point 11) there were no reasons to suspect that, prima facie, these late-filed documents prejudiced the maintenance of the opposed patent. The opposition division found that D9 and D10 were not prima facie relevant, in particular not more relevant than the closest prior art already on file, since D9 related to a different method of supplying the sealant without the use of a compressor and D10 did not show a separate procedure for inflating tyres.

1.2 Appellant II argues that D9 and D10 had been filed in time within the time limit under Rule 116 EPC and should have been admitted. However, according to the established case law, Rule 116(1) EPC (former Rule 71a EPC 1973) should not be construed as an invitation to file new evidence or other material departing from the legal and factual framework of issues and grounds pleaded (see T 39/93, headnote) as established with the notice of opposition according to Rule 76(c) EPC (former Rule 55(c) 1973, see G 9/91, point 6 of the Reasons). Also, the fact that the opposition division expressed a preliminary opinion in its communication annexed to the summons of oral proceedings does not necessarily justify the filing of new evidence, unless this is in reaction to new aspects raised in the communication. Such new aspects have not been substantiated by the appellant II, so the board confirms the view taken by the opposition decision that D9 and D10 have been filed late.

T 0167/11 - Documents filed with Notice of Opposition but not relied on

Key point

• Prior art documents which are submitted with the Notice of Opposition, but which are not used to substantiate any argument, can not be declared "inadmissible". Rather the OD can not consider them.

This post has been kept in stock for some time.

T 0167/11 - 27.02.2015

Dated 22.01.2015 - Board 3.2.07 - publication C - for the decision, click here

Reasons for the Decision

3. Remarks on the procedure before the Opposition Division

The Opposition Division concluded in its communication of 8 February 2010 annexed to the summons to oral proceedings that all the further documents "are not admissible under Article 99(1) and Rule 76(2)(c) EPC since no case to answer was based upon those documents" (see point 2.1.3 above). The same occurred in its communication of 3 November 2010 confirming the date of the oral proceedings.

It appears that the Opposition Division adheres to the concept that an opposition may have a "partial admissibility" in the sense that documents filed with the opposition, but which are not "in support of these grounds" (i.e. the grounds mentioned in the opposition) as mentioned in Rule 76(2)c) EPC, are also not complying with Article 99(1) EPC and can therefore be found "inadmissible". This appears to be an analogous application of Rule 77(1) EPC, which applies, however, to the opposition as a whole.

The Board cannot agree with this approach. What an Opposition Division can do, however, is to indicate that it sees no need at that point in time to consider the evidence for which no substantiation has been submitted. This has the same result, but is not formulated as a procedural decision taken by the Opposition Division in the early stages of the proceedings.

"Admission into opposition proceedings" only appears to apply when Rule 116(2) EPC is to be considered, i.e. facts and evidence filed after the final date for making written submissions.

As a consequence, the evidence filed with the opposition is not "outside" of the proceedings, but is "in" the proceedings. Of these, the Board only deems D1 sufficiently relevant, so as to be discussed for inventive step.