T 2036/22 - Please ignore that 'final' date for written submissions

Key points

• The OD revokes the patent. The proprietor appeals
•  "The appellant stated that the filing of A043 [an experimental report] represented a reaction to D41 [a report filed by the opponent]. However, even if this argument was accepted, it would not be convincing. D41 was filed on 25 April 2022, i.e. more than two months in advance of the oral proceedings before the opposition division. 
• "D41 is an experimental report filed by opponent 1 by letter dated [Monday] 25 April 2022, i.e. in advance of the final date (28 April 2022) for making written submissions before the oral proceedings set by the opposition division under Rule 116 EPC."
• The Board: "There is no reason apparent to the board to explain why a period of two months was not sufficient for submission of A043. In fact, as set out above, A043 does not contain new experimental data but merely specifies the experimental conditions under which the examples of the patent and the appellant's examples filed with the reply to the notice of opposition had been carried out. These experimental conditions must have been well-known to the appellant, meaning that A043 should have been filed before the opposition division, at the latest in the oral proceedings."
• Note, the Board does not say that the proprietor had an obligation to file A043 before the filing of A041 

EPO 

The link to the decision and an extract of it can be found after the jump.

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 1662/21 - On the meaning of Rule 116(2) in opposition

Key points

• The appellant/opponent complains that the OD had incorrectly admitted an auxiliary request that was filed by the proprietor by the deadline under Rule 116(2) EPC.
• "According to Rule 116(2) the patent proprietor (in opposition proceedings) may be invited to submit documents that meet the requirements of the Convention (i.e. amendment requests), by the date specified in Rule 116(1), second sentence. After that date the third and fourth paragraphs of Rule 116(1) EPC will apply mutatis mutandis : new requests filed after that date need not be considered unless admitted on the grounds that the subject of the proceedings has changed."
• " It is generally accepted that the purpose of Rule 116 is to prevent parties from seeking unjustified procedural advantages by abusive tactics in disregard of procedural economy and to the disadvantage of other parties, see CLBA, 10th edition 2022, III.C.6.3.1f. The rule is thus seen to serve fairness and transparency in the lead-up to the final deciding stage of the procedure." 
• "  One can debate whether a notification of the grounds prejudicing maintenance refers in opposition also (as it does in examination) to a summons or communication that notifies the division's provisional opinion; or that in the fourth sentence [of] Rule 116(1), which applies mutatis mutandis in opposition [*], a change of subject of the proceedings encompasses a subsequent reversal of a preliminary opinion that was notified in the summons or communication. "
• [*] - probably read: to auxiliary requests / claim amendments
• The fourth sentence of Rule 116(1) at issue: "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."
• "T0688/16, reasons 2.1, saw it this way, reading Rule 116(2) as requiring a notification that grounds prejudiced maintenance before a division could decide not to consider a request, finding that this corresponded to the guidance provided in the Guidelines for Examination, E-III, 8.6. Accordingly, the proprietor must always be given an opportunity to submit amendments intended to overcome objections raised by the division that depart from a previously notified opinion. The Board tends to agree, adding that this does not mean that any amendment then submitted must be admitted."
• " The division will first need to establish whether amendments are indeed intended to overcome the objections, and do so in a way that is appropriate and proportionate to the circumstances. They thus still have discretion, see also T0966/17, but should exercise it differently from when deciding admission of amendments filed after the Rule 116 date that are not justified by a change of the subject of the proceedings." 
• "  The Board does not agree that offering the proprietor an opportunity to amend when confronted with a reversal in a previously positive provision opinion would be inherently unfair to an opponent as argued by the [opponent] Appellant. Firstly, for the proprietor revocation of the patent, if confirmed on appeal, is the end of the road; for an opponent even after appeal the possibility of national invalidity proceedings remains. Secondly, this depends very much on how the discretion is exercised and what criteria are applied. In the Board's view the criteria set out in the Guidelines cited above appear to strike a fair balance between the opposing interests of the parties and the overall interest of procedural economy. Naturally, the opponent must also be heard before any decision on admission is taken." 
• As a comment, alternative case law could emphasize that the proprietor already has an opportunity to submit auxiliary requests with their first reply to the opposition. 

• Turing to the case at hand: "As can be inferred from the minutes, see the section bridging pages 4 and 5, it must have become clear to the proprietor in the discussion of the previous (withdrawn) auxiliary request, how to fix the problem, namely by combining granted claims 1 and 9 as suggested by the opponent. They then did so in the next (present) auxiliary request that replaced the previous request which was not admitted. In the Board's view it would have been unreasonable and unequitable to then block them from such an attempt, which the division - in the light of the previous discussion - would have considered likely to succeed, at least at first glance, merely because they should not be allowed to row back from a previous attempt. That the division then did consider a criterion it needn't have makes no difference for the appellant, as the outcome would have been the same (admission) if they had not considered it. Had the outcome been different (non-admission), the proprietor might have had reason to argue improper exercise of discretion as based on the wrong criteria."
• 
  
• EPO 

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

T 1219/19 - Patentee was notified of the objection

Key points

• The preliminary opinion of the OD was, cautiously, that Art. 123(2) was met. During the oral proceedings, the OD changes of opinion. Must the OD admit a new auxiliary request filed during the oral proceedings in response to this change of opinion?
• The present Board states that "under Rule 116(2) EPC, requests filed after the final date set for making written submissions in preparation for oral proceedings can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent."
• However, the Board still does not overrule the OD's decision to hold the request inadmissible.
• "the board found that under the circumstances in hand the opposition division was entitled to exercise its discretion accorded by Article 123(1) in conjunction with Rule 81(3) EPC to disregard the auxiliary request at issue (see R 6/19, Reasons 6 to 11; T 966/17, Reasons 2.2.1; T 1213/19, Reasons 19). 
• "It further found that the opposition division had exercised its discretion in accordance with the right principles, primarily the clear allowability criterion. The opposition division could not have been deprived of that discretion merely because it expressed a different opinion at the oral proceedings from that provisionally set out in the communication accompanying the summons (see also T 966/17, Reasons 2.4).
• "The opposition division's preliminary opinion discussed the added-matter objections raised by the opponents and clearly indicated that those objections were to be the subject of further discussion at the oral proceedings: ""
• "The preliminary conclusion that claim 1 does not add subject-matter (see points 1.3 and 1.5) is expressed in a careful manner ("Currently the opposition division is of the opinion that ..." and "... the opposition division is of the preliminary opinion that ...") and cannot be understood as if the opposition division thereby gave up its discretionary power to disregard submissions filed later."
• I suppose the argument of the opponent is not that the OD gave up its discretionary power, but that Rule 116(2) EPC takes away / limits the discretionary power.
• The opponent points out that the GL state that: "The ... opposition division has the discretion to disregard amendments filed after the date set under Rule 116(1) as being late-filed unless they have to be admitted because the subject of the proceedings has changed" and that "The following are examples of what would normally constitute a change of subject of the proceedings: ... the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent. .... In these examples, a request from the applicant or proprietor for a corresponding amendment cannot be rejected as being late-filed even if submitted after the date set under Rule 116(1). "
• My quotes are from the GL 2023, the decision states that the GL 2022 is cited therein but the text seems to be that of the GL 2023.
• The Board notes in passing that "the Guidelines applicable at the time the opposition division took its decision (version in force in November 2018) did not contain this particular example"
• More importantly, the Board reasons as follows: "the question of whether a change of opinion represents a change of subject of the proceedings remains crucial in the matter in hand. The board agrees that, in principle, it does change the subject of the proceedings, especially where the opposition division introduces a new objection at a relatively late stage. However, the cited passage of the Guidelines refers to examples that would normally constitute a change of subject of the proceedings. It therefore does not exclude the possibility that, under particular circumstances, a change from the preliminary opinion does not necessarily involve a change of subject of the proceedings. The board finds that in the case in hand, the content of the preliminary opinion, taken as a whole, is articulate and cannot be read in a manner limited to the conclusion in point 1.5 (that claim 1 does not add subject-matter), as the appellant has done. On the contrary, it should also be read in consideration of the discussion under point 1.3 (both referred to in points 40. and 40.1 above). The objection that the single-molecule sequencing process had no basis in the parent application had been raised by both opponents at the outset of the opposition proceedings - it was not introduced into the proceedings by the opposition division. The issue had been discussed at length in preparation for the oral proceedings, it had been considered an issue by the opposition division in the preliminary opinion (see point 1.3) and it was also sufficiently clear that it was a crucial one. The appellant [patentee] therefore could not have been surprised by the decision taken at the oral proceedings. It appears that the appellant [patentee] had indeed been notified of the grounds prejudicing the maintenance of the patent."

EPO 

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

T 1776/18 - (III) A close reading of Rule 116(2)

Key points

•  Rule 116(2) specifies that: "If the applicant or patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, 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." That fourth sentence is: "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."
• A possible reading of this provision is that the OD must admit auxiliary requests filed during the oral proceedings, unless the preliminary opinion was negative for the patentee. 
• For instance, T 0754/16 held that: "Under Rule 116(2) EPC, requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. "
• The implication is that the patentee does not need to file any auxiliary requests in its response to the opposition but can await the preliminary opinion of the OD.
• Rule 116 was introduced as Rule 71a in  1995. The background can be found in the Notice in  OJ 1995 p.409 which reads in the relevant part (for opposition):  "If the [] patent proprietor has been told beforehand that [] revocation is likely (and why), then he can reasonably be expected to react if given adequate time to do so." 
• See also GL E-VI 2.2.2 "Amendments filed in preparation for or during oral proceedings": "if the opposition division departs from its provisional opinion set out in the annex to the summons and – contrary to that opinion – concludes during oral proceedings that an objection prejudices the maintenance of the patent, a request of the proprietor for (further) amendment will normally be admitted into the proceedings." (note, this instruction seems to assume that the objection was raised by the opponent before the summons and considered by the OD in the preliminary opinion and that the OD expressed a view in favour of the patentee on the objection in the preliminary opinion).
• The present Board "does not share the views expressed in T 754/16. Rule 116(2) EPC concerns a very specific situation, as is made clear in the first sentence of the provision, namely a situation where the Opposition Division decides to notify the patent proprietor of grounds prejudicing the maintenance of the patent. "
• The Board takes Rule 116(2) first sentence to mean that: "only if the patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, [the OD may invite the proprietor] to submit [amended claims]".
•  "The first subclause in the first sentence of Rule 116(2) EPC thus expresses nothing other than that the Opposition Division should only invite the patent proprietor to present amended claim requests if it has notified it of grounds of opposition which may, in its view, prejudice the patent's maintenance. In other situations, no such invitation should be made."
• " the second sentence of Rule 116(2) EPC, according to which the third and fourth sentences of Rule 116(1) EPC apply mutatis mutandis to the situation described in the first sentence of Rule 116(2) EPC, does not support the view that claim requests do not fall under Rule 116(1) EPC. This statement rather clarifies that even amended claim requests which are submitted in reply to an invitation of the Opposition Division under Rule 116(2) EPC are subject to the Opposition Division's discretion under Rule 116(1) EPC. The Board understands the term "mutatis mutandis" to primarily take account of the possibility that if the Opposition Division invites the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complies with this invitation by filing the required amendments by the date set under Rule 116(1) EPC, its discretion not to admit that claim request may effectively be reduced to zero."
• "The Board further notes that if, as opined in Reasons 1.3.2 of T 754/16, an Opposition Division had no discretion not to admit an amended claim request whenever it had not notified the patent proprietor "of the grounds prejudicing the maintenance of the patent", this would mean that any such claim request - regardless of its contents and regardless of when it was made - would automatically be admitted into the opposition proceedings. A certain development in the opposition proceedings does not, however, justify the submission of any kind of claim request - possibly including claim requests which are not even related to the specific procedural development in question - at any point in time. Such a result must be avoided, which speaks additionally against this approach."
• "As an interim conclusion, Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 114(2) EPC and Rule 116(1) EPC. In particular, the existence of this discretionary power does not depend on the contents of the Opposition Division's communication under Rule 116(1) EPC. "
• I note that this conclusion may still be correct even when reading it as: "Rule 116(2) EPC does not limit the Opposition Division's discretionary power under Article 123(1) EPC and Rules 76 and 81 EPC."
• " Applying the principles set out above, the Opposition Division had discretionary power not to admit auxiliary request 4A, even though it had not included in its communication under Rule 116(1) EPC the novelty objection based on Example 4 of D6."

EPO 

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

T 2442/17 - If you need more time, you have to ask for it

Key points

• The O/D decided to admit an auxiliary request filed during the oral proceedings. The opponent asks the Board to reverse this. The Board reviews whether the OD has not misused its discretion (that the Board is willing to consider the possibility of reversing a decision to admit a request is interesting of its own).
• "The opponent also argued that the patent proprietor should have reacted before the oral proceedings since a lack of novelty objection in view of document D3 (DE 695 28 476 T2) had already been raised with the grounds of opposition."
• "According to Rule 116(2) EPC the opposition division has the discretion to admit new documents, i.e. new amendments to the description, claims and drawings, filed after the final date for making written submissions fixed by the opposition division in the annex to the summons to oral proceedings."
• Rule 116(2) in fact begins with a statement about the patentee being notified of the objections and being invited to submit amended claims. The Board, however, does not discuss that aspect of the provision.
• The Board applies the deferential review of discretionary decisions as specified in G 7/93.
• "The Board is of the opinion that the opposition division took into account the right criteria, since it considered the amendment to the claim to be suitable to overcome the objection of lack of novelty and also that the subject-matter of the claim was more restricted than that of claim 1 as granted"
• "The opposition division also considered the amendment to be a reaction to the course of the proceedings, since in the annex to the summons to oral proceedings it had referred to the possible relevance of D3 without elaborating on the matter."
  
• "The Board agrees with the opponent [] that an objection of lack of novelty had been raised with the notice of opposition with respect to D3. However, as argued by the patent proprietor, that objection was not fully substantiated, since it was not indicated why the load bearing assembly of D3 should be considered to be suitable for use in an elevator system []. The Board thus does not find fault in the opposition division's finding that the filing of auxiliary request 1 at the oral proceedings is to be seen as a reaction to the course of those proceedings.
• "According to the minutes of the oral proceedings, see point 5 thereof, the opponent did not request an adjournment of the oral proceedings nor did it request additional time to prepare a new line of argumentation. It therefore appears that at that time the opponent considered itself able to deal with the amended situation without delay."

EPO 

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

T 0222/16 - Incorrect application Rule 116 by OD

 Key points

• The Board admits a request filed initial appeal submissions into the proceedings under Article 12(4) RPBA 2007 in this opposition appeal even though the claims are in substance the same as a request held inadmissible by the OD.
• The OD had not admitted the request AR-3 filed during the oral proceedings “on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.”
• “In the present case it is the board's conviction that the opposition division exercised its discretion in an unreasonable way for the following reasons”
• “A new objection under Article 123(3) EPC was raised by the opponent for the first time on the final date for making submissions set under Rule 116 EPC, namely on 7 September 2015. As the requests then pending could not have taken into account this new objection, the proprietor should have been given at least one opportunity to file a new request, which was not the case.”
• “the board notes that Rule 116(2) EPC states that new documents filed by the proprietor after the final date for making submissions need not be considered unless admitted on the grounds that the subject of the proceedings has changed. In the present case, the new objection under Article 123(3) EPC represented a change of the subject of the proceedings and, given the very late timing of the objection, it was evidently impossible for the proprietor to file a response before the final date set under Rule 116 EPC.”
• “the Board notes that according to the established jurisprudence, the relevant criterion for deciding on the admissibility of late filed requests is their prima-facie allowability in view of the objection under discussion. This criterion is fulfilled in the present case since the amendment in claim 1 is clearly suitable to overcome the objection under Article 123(3) EPC, ” (italics added)
• “For the board, the convergence criterion relied upon by the division is of secondary importance in the context of objections under Article 123(3) EPC, because while a novelty objection can be overcome by limiting a claimed subject-matter even further in a convergent way, this is not necessarily the case for an objection under Article 123(3) EPC.”
• “It goes without saying that the non-validity of the priority claim is an unsuitable criterion”

T 0222/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160222eu1.html

4. Third auxiliary request

Vis-à-vis claim 1 as granted, in claim 1 of this request the upper limit of the PIB molecular weight has been amended in to 1500.

4.1 Admissibility

The Board exercised its discretion under Article 12(4) RPBA 2007 not to hold inadmissible this request, because apart from the deleted dependency of claim 5 to claim 2, the claims of this request are identical to those of the third auxiliary request filed during the first instance oral proceedings but not admitted by the opposition division, on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.

T 0103/15 - Anonymous experimental report

 Key points

• In this opposition appeal, the opponent is a straw man (admitted). 
• “The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable”
• The Board considers that the OD was right in doing so.
• “with respect to the probative value of test evidence, it is important not only to indicate the conditions under which these tests have been conducted, but also to specify the name of the testers and their employers so that the relationship between the testers and the party can be established if necessary. This also applies in cases where the opponent is acting as a straw man on behalf of a company, because then the relationship between that company and the testers could be a factor in the decision on the probative value of the test evidence filed by the straw man.”
• “Generally, a straw man acting as opponent cannot derive any advantage from their position with regard to the evaluation of the evidence they have submitted. In the present case a neutral institute could have been assigned to perform the tests of document D9. This would have allowed the opponent to provide all necessary information for assessing the probative value of the test results without disclosing the identity of the client on behalf of which the opposition was filed.”
  
  
• Regarding Art.117 in general: “he Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see [G1/12]). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.”
  
  
• Regarding the admissibility of documents filed with the Statement of grounds under Art. 12(4) RPBA 2007:
• “In its communication annexed to the summons to oral proceedings, the opposition division did not give a preliminary opinion on novelty or inventive step. Therefore, there was no specific reason apparent for the appellant to present these documents already during the first-instance opposition proceedings. Moreover, the documents represent the common general knowledge relating to thermosets, gelation and curing ...  Generally, the skilled person's common general knowledge has to be considered when assessing inventive step.”
• Hence the documents are admitted.

T 0103/15 

https://www.epo.org/law-practice/case-law-appeals/recent/t150103eu1.html

Reasons for the Decision

1. Non-consideration of document D9 by the opposition division - right to be heard (Article 113(1) EPC 1973)

1.1 The opposition division decided not to take the test report D9 ("Rapport d'essais") into account, which the opponent (now appellant) had filed in order to demonstrate that the disclosure of the claimed invention in the patent was insufficient and that the subject-matter of claim 1 was not based on an inventive step. Since the name and qualification of the author of the test report were unknown, the test report was not considered to be sufficiently reliable (see contested decision, point 3 of the Reasons).

1.2 Neither in the EPC nor in the case law of the boards of appeal are formal rules laid down for the evaluation of evidence. The Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of free evaluation of evidence (see G 1/12, OJ EPO 2014, A114). Thus, the departments of the EPO have the power to assess whether the alleged facts are sufficiently established on a case-by-case basis. Under the principle of free evaluation of evidence, each piece of evidence is given an appropriate weighting according to its probative value. The deciding body takes its decision on the basis of all evidence available in the proceedings and in the light of its conviction arrived at freely on the evaluation of the submitted evidence.

T 0834/14 - Requests not admitted by OD

Key points

• The OD considers claim 1 of the main request to include a feature that lacks basis in the application as filed, as submitted by the opponent in the Notice of opposition. The OD had refused to admit auxiliary requests filed during the oral proceedings. The Board does not consider this to form a substantial procedural violation.
• "As mentioned by the Opposition Division in its decision (point 11.2), the opponent had already objected to the feature [x] in the notice of opposition (point II), and the [proprietor] had not reacted by amending claim 1 to overcome that objection [prior to the oral proceedings]. In the Board's opinion, the [proprietor] could have filed an amended version of the claims to address this objection together with its reply to the notice of opposition, or at the latest before the oral proceedings. Therefore, for that reason alone, the Board does not see any substantial procedural violation in forbidding the appellant to file additional requests during the oral proceedings. "
• For not admitting the new requests, it does not matter that the OD had also raised new objections during the oral proceedings.
• "the fact that there was one objection which had been in the file right from the start of the opposition proceedings and which could and should have been addressed earlier seems enough to justify the refusal to file new requests. Such a decision by the Opposition Division might be considered severe, but in the present situation it does not constitute a substantial procedural violation."

EPO T 0834/14 - link

6. Substantial procedural violation

In its statement of grounds, the appellant considered that given the objections raised for the first time during the oral proceedings and introduced into the proceedings by the Opposition Division, the appellant should have been given an opportunity to file amended requests. Moreover, since in the annex to the summons to the oral proceedings the Opposition Division did not comment on the feature "valve actuation flow path", the appellant considered that the Opposition Division did not see any problem with it, which was an additional reason to allow the filing of auxiliary requests. It also requested that in case of a remittal the composition of the Opposition Division be changed for reasons of equity.

T 0183/17 - Rule 116(2) EPC and absence at oral proceedings

Key points

• In this examination appeal, the applicant had filed a new Main Request one day before oral proceedings before the ED. The ED did not admit the request as not clearly allowable. The Board reviews this decision (as part of their discretionary decision under Article 12(4) RPBA to (not) admit the request in appeal). 
• The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. "These arguments [are] not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. "
• As a comment, it does not seem very elegant to make the later absence at the oral proceedings a factor for admissibility of requests. In my opinion, admissibility of request must be decided on the basis of the state of the file at the date they are filed. Either the request is not admitted as not "clearly allowable", or the request is admitted and not allowed because of the minor issues. 
• Moreover, the Guidelines H-II 2.7.1. state that "clear allowability" means that "it must be immediately apparent to the examining division that the amendments successfully address the issues raised without giving rise to new ones". 

EPO T 0183/17 -  link

Reasons for the Decision

1. According to Article 114(2) EPC the EPO may disregard facts or evidence not filed in due time and according to Rule 116(2) EPC taken together with the third and fourth sentences of Rule 116(1) EPC to which it refers, new application documents (i.e. in the present case new sets of claims) which are presented after the final date fixed for making written submissions in preparation for oral proceedings need not be considered, unless they are admitted on the grounds that the subject of the proceedings has changed.

2. In the present case, the new main and three auxiliary requests were filed before the examining division on 27 June 2016 [one day before the oral proceedings of 28 June 2016 that the applicant did not attend], which was after the final date that had been fixed for making written submissions in preparation for oral proceedings. In considering whether the amendments were admissible under Rule 116(1) [and (2)] and Article 114(2) EPC, the examining division referred to Guidelines H-II, 2.7.1 and applied the principle that they should first consider whether the late-filed requests were allowable on a prima facie basis (see reasons for the decision, section I). The examining division applied this principle to each of the new requests and found that in each case the amendment was "clearly not allowable under Article 123(2) EPC" (see the conclusions reached at the end of each of the sub-sections A to D of section I of the reasons for the decision). In view of these findings the examining division exercised their discretion regarding these late-filed submissions and did not admit the main and three auxiliary requests filed on 27 June 2016.

3. On appeal the appellant has re-submitted the main and three auxiliary requests which were not admitted by the examining division.

4. According to Article 12(4) RPBA, the Board has the power to hold inadmissible requests which were not admitted in the first instance proceedings.

5. The case law regarding late submissions in general, independent of the preparation of oral proceedings governed by Rule 116 EPC, is summarised in the Case Law of the Boards of Appeal, Eighth Edition, section IV.E.4.3.3(a) under the headings "Filing of amended claims in appeal proceedings", "Ex parte appeal procedure", "Admission of requests already refused by the examining division".

There it is stated that it is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under Rule 137(3) EPC is a discretionary power. According to G 7/93 (OJ 1994, 775) the way in which the examining division should exercise its discretion to allow an amendment of an application must depend upon the circumstances of each individual case, and must also depend upon the stage of the pre-grant procedure which the application has reached. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if it comes to the conclusion either that the department of first instance, in its decision, has not exercised its discretion in accordance with the right principles or that it has exercised its discretion in an unreasonable way. The exercise of a discretionary power has to strike a balance between, in particular, the applicant's interest in obtaining adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary (T 246/08).

These considerations apply also when a board of appeal has to review the way in which an examining division has exercised its discretion under Rule 116(1) and (2) EPC in respect of the admission of amendments filed after the final date fixed for making written submissions in preparation for oral proceedings (see the last paragraph of the Case Law, section III.C.4.4).

6. In the present case the examining division applied the criterion of "clear allowability" set out in the Guidelines for Examination, H-II, 2.7.1, which is undoubtedly the right principle to have applied. Furthermore, when applying that criterion they gave an appropriate level of reasoning for the conclusion they reached, even if the conclusion under the "clear allowability" criterion should perhaps have been that the amendments were "not clearly allowable", rather than that they were "clearly not allowable".

7. The appellant argued that in coming to their conclusion the examining division had exercised their discretion unjustly because they had not taken into account that the expression "cable connection" in claim 1 was broad and could be construed either as being the "docking contact point" of the adaptor, as in claim 14, or as being some other unspecified connection. The Board considered these arguments to be of no relevance to the question at issue of whether the examining division had exercised their discretion in accordance with the right principles or had exercised their discretion in an unreasonable way.

8. The appellant also argued that when considering whether or not the amendments to the claims were "clearly allowable", it was not necessary for the amendments to resolve all minor issues. In the appellant's view it was sufficient that the main claims as amended provided a promising starting point and small issues of added subject-matter in a dependent claim, for example, could have been resolved after agreement had been reached on the main claims. These arguments were not persuasive because even if the examining division had been able to recognise the defects as being "minor", which is questionable, the fact that the applicant had chosen not to attend the oral proceedings meant that it would have involved a substantial procedural delay had the examining division postponed the oral proceedings to give the applicant an opportunity to remedy them. This would not have been in accordance with the need for procedural economy.

9. Taking all of these considerations into account the Board of Appeal came to the conclusion that they should not overrule the way in which the examining division exercised its discretion in this case and held the main and the three auxiliary requests that were re-filed on appeal to be inadmissible using the discretionary power afforded by Article 12(4) RPBA.

10. In the absence of an admissible request the appeal had to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 1758/15 - Not a second medical use

Key points

• Claim 1 is directed to "a biocompatible, biodegradable filler material for injection and for use in radiation treatment [wherein the filler is injected between a first and a second tissue and] educes passage of radiation into the second tissue" . The composition is not further defined and e.g. collagen can be used. The Board finds that the claim is not novel, because it is not a proper second medical use claim. The Board notes that the effect is by the filler spacing the second tissue apart from the radiation source, e.g. by its 3D shape. Therefore "the accumulated mass of the filler material does not, however, qualify as a chemical entity or composition of chemical entities in the sense of G 5/83."
• For Auxiliary Request 1,  claim 1 "defines a method of injecting a biocompatible, biodegradable filler material into a space between the prostate and the rectum. " This is considered a method of treatment by surgery. 
It is noted that [claim 1 of a further request"  additionally comprise a disclaimer "excluding methods according to Article 53(c) EPC". In view of the above analysis, the disclaimer essentially deprives the claim of any content. In addition to not being allowable under Article 53(c) EPC, these claims are thus internally contradictory and hence not clear (Article 84 EPC).
• The Board also sees a substantial procedural violation because the OD announced that it would not accept further auxiliary requests during the oral proceedings, after the patentee requested to file an additional auxiliary request. The OD indicated that "the opposition division considered four attempts (Auxiliary requests 1-4) to overcome a single issue sufficient and will not admit an additional Auxiliary Request into the proceedings"
• " Therefore, - the [patentee]'s explicit request to be allowed to file a further request having been refused upfront - the opposition division was not in a position to consider and weigh up in this respect the relevant facts of the particular case. Without knowing the content of the request, it was impossible e.g. to assess whether the amendments were appropriate, i.e. a fair attempt to overcome the objections, and whether or not the request was prima facie allowable.
The opposition division thus concluded, in an unjustified manner, that four auxiliary requests (of which only three had been filed during the oral proceedings) were enough. It thus did not exercise its discretion pursuant to Rule 116(2) and Article 114(2) EPC in a reasonable way, which constitutes a substantial procedural violation."

EPO T 1758/15 -  link

V. Claim 1 of the main request reads as follows:

"A biocompatible, biodegradable filler material for injection and for use in radiation treatment whereby the filler is injected into a space between a first tissue of a body and a second tissue, and whereby the first tissue is treated by radiation whereby the filler within the space reduces passage of radiation into the second tissue."

Reasons for the Decision

1. Procedural violation

1.1 Denial of the opportunity to file an additional request

1.1.1 The appellant essentially complains that although the objection under Article 54(5) EPC had only been introduced by the respondent with submission dated 15 May 2015, the opposition division - after accepting two genuine and bona fide requests into the proceedings - arbitrarily refused to admit a further request, before even seeing it. The respondent, on the other hand, essentially argues that the opposition division never refused to entertain further requests because none had actually been filed, the extremely late filing of several auxiliary requests being in any case an abuse of procedure.