T2872/19 - Need to file and substantiate carry-over requests as respondent

Key points

•  The opponent appeals the decision to reject the opposition. The Board finds the main request not inventive.
• The Board turns to the auxiliary requests. "These auxiliary requests were introduced by reference to auxiliary requests and arguments provided in a letter filed in the first-instance proceedings, see the respondent's [proprietor's] reply to the appeal"
• This reference to a part of a letter in the first  instance proceedings is seen as insufficient substantiation.
• " The respondent [proprietor] argued that neither the decision under appeal nor the appellant's statement of grounds of appeal dealt with the first to sixth auxiliary requests. Therefore, the respondent concluded they could not be expected to provide any argument going beyond those contained in the letter referred to."
• The Board:  However, this is not correct. A discussion of the auxiliary requests in appeal necessarily implies that auxiliary requests are on file in the appeal proceedings, which was not the case at the time the statement of grounds of appeal was filed. 
• The auxiliary requests filed during first instance proceedings are not necessarily all maintained in appeal, so it cannot be expected of the opponent to address the auxiliary request filed in the first instance proceedings [in the Statement of grounds] without knowing whether they are maintained in appeal. 
• The respondent-patent proprietor is expected to present reasons in the reply to the appeal as to why the auxiliary requests (either maintained requests from the first instance or new requests) overcome the specific objections raised in the statement of grounds of appeal against the main request. When the patent has to be amended, there is no longer a presumption of validity. The respondent therefore has to demonstrate that the auxiliary requests overcome the objections on file at the appeal stage. These do not necessarily correspond to objections presented in the first instance. This is consistent with the view expressed in decision T 1041/21, reasons 5.1.4."
• A petition for review  is pending in T 1041/21.
• In the present decision, an objection under Rule 106 was raised on the matter of the admissibility of the auxiliary request. 

EPO 

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

T 2269/19 - No review admissibility under Art. 12(4) RPBA 2007

Key points

• "Both appellant [opponent] O3 and respondent [opponent]  O1 relied on document D41 in their respective replies to appellant P's grounds of appeal filed on 4 November 2019. Appellant [proprietor] P contested the admittance of D41 into the appeal proceedings. Following the transitional provisions set out in Article 25(2) RPBA 2020, Article 12(4) RPBA 2007 is applicable. Article 12(4) RPBA 2007 gives the Board discretion not to admit, on appeal, facts and evidence which could have been presented or were not admitted in the opposition proceedings" (and any such submissions not complying with Art. 12(2) RPBA 2007, it may be added). 
• " D41 had already been filed during the first instance proceedings. The opposition division did not take any decision not to admit this document. Hence, D41 is neither a document which could have been presented in the first instance proceedings (i.e. but was not), nor a document which was not admitted in the first instance proceedings. Thus the discretionary power not to admit evidence under Article 12(4) RPBA 2007 does not apply to D41. Accordingly, D41 was taken into account in the appeal proceedings."
• As a comment, this is of course a clear difference with Art. 12(4) RPBA 2020 where the Board would still have discretionary power if the request was filed during the first instance proceedings, but not admissibly filed, i.e. if D41 would have been filed late in the first instance proceedings. 
• As a further comment, this reasoning of the Board seems correct, though there seem to be not many decisions on this particular point. See e.g. T 0882/19 r. 3.4
• Note that the auxiliary request can still be held inadmissible if not substantiated in the initial appeal submissions of the patentee.

EPO 

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

T 2179/16 - Waiver of attack

Key points

•  The opponent argues that the claim at issue is not inventive over D10. The Board decides that the claim is inventive over D10.
• With the SoG, the opponent had also submitted an attack using D2 as the closest prior art.
• Admissibility of the attack is to be decided under Article 12(4) RPBA 2007.
• The attack "had initially been submitted with the notice of opposition at the outset of opposition proceedings. At that point in time, those objections were directed against the claims of the granted patent, which were the basis for the main request before the opposition division."
• According to Article 12(4) RPBA 2007, the board has the discretion to hold inadmissible inter alia facts which could have been presented in opposition proceedings. It is established case law that this provision also applies to facts (attacks) which were submitted and subsequently withdrawn during the first instance proceedings. Article 12(6)(s.2) RPBA 2020 uses "were no longer maintained".
• The AR was filed shortly before the hearing before the OD. The opponent did not comment in writing on it. 
• Inventive step was discussed during the oral proceedings before the OD. "Thus, at the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments."
• "There then ensued a discussion starting only from D10 as closest prior art."
  
• "Specifically, the minutes (page 11, "12:30") state the following: "The parties having indicated that they have nothing more to add, the Chairman announces a break of 15 minutes to deliberate on the question of inventive step". Hence, the chair of the opposition division, having opened the discussion in relation to inventive step and having heard arguments from the appellant only in relation to D10 as closest prior art, subsequently confirmed with the parties whether there was anything further to add to their submissions. In the absence of any further submissions, it can only have been concluded that the parties had nothing to add. This in turn can only mean that the further objections that had previously been raised against the then main request, were not pursued or raised against the then first auxiliary request."
• It seems that the Board here identifies a waiver of the attack. Note, this waiver is based on an action of the opponent, namely, indicating that they had nothing more to add, in combination with the attack being on file. However, if the auxiliary request had significant claim amendments (for inventive step) compared to the claims as granted, it may also be a case of forfeiture, in the sense that the opponent failed to present the attack, instead of presenting the attack and then abandoning it.
• After the break, "oral proceedings were resumed, and the chair announced the conclusion that the first auxiliary request met the requirements of Article 56 EPC. At this point in the oral proceedings, it would still not have been too late for the appellant to have raised the further objections had it so desired, or at the very least, to have enquired with the opposition division as to whether said further objections had been taken into account in reaching its conclusion. However, the appellant remained silent."
• Practice point: if a conclusion is announced, the debate can be reopened. If a decision is announced, not. 
• "In view of the above, there can be no doubt that the further objections were not pursued or raised against the then first auxiliary request during the opposition proceedings."
• "By not pursuing or raising these objections before the opposition division and introducing them for the first time before the board, the appellant effectively avoided a decision by the opposition division on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance."
• As a comment, Art. 12(4) RPBA  20007 speaks only of the power of the Board to hold such attacks inadmissible. Article 12(6)(s.2) RPBA 2020 likewise provides for an exception (i.e. admissibility) "unless the circumstances of the appeal case justify their admittance". For this exercise of discretion, it may matter whether the attack was waived or forfeited before the OD (cf. USA law, see here).
• The case is similar to T 1958/19, also in the outcome. 
• See, however, also R 5/19, r.3.6, in translation: "The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part." 

EPO 

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

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 0920/20 - Attacks are not personal

Key points

•  In my blog post about T1657/14 (06.05.2020) I wrote: "this suggests that for opponents, there is no amendment of a party's case if they adopt arguments or attacks of the other opponents. Indeed, Article 12(4)(§1)(s.1) does not require that the 'part' was (admissibly) raised and maintained by the opponent itself in the first instance proceedings." 
• The present Board in the headnote in translation: "Article 12(4) RPBA 2020 does not contain any restriction to the effect that each party in the appeal may only refer to those matters of the preliminary proceedings which they themselves "admissibly presented" there. It therefore seems legitimate to also refer to lines of attack that had been introduced into the opposition proceedings by other parties. If this happens, there is no change in the submission that requires admissibility ["keine zulassungsbedürftige Änderung des Vorbringens"] 
• I note that at least one tutor advocated the converse position in a course that I attended a few years ago.
• The Board, in translation, in the reason: " With regard to the other part of the line of attack, namely the impermissible generalization objected to by only picking out the "form teeth" and omitting all other teeth in claim 1, the opposition division had made no decision, so that Article 12(2) RPBA does not apply directly. However, there is also no change in the submission that requires admission, since the appellant (opponent 1) was able to show that this part of the line of attack from point 3.5 of its statement of grounds of appeal had already been "submitted in a permissible manner" in the opposition proceedings under Article 12(4) RPBA namely by Opponent 2 in its notice of opposition (see above). The Board cannot derive any restriction from Article 12(4) RPBA that each party may only refer to those matters of the preliminary proceedings in the appeal which it itself has introduced there in a permissible manner. It therefore seems legitimate for the appellant to also refer to lines of attack introduced by other opponents in the opposition proceedings." 

EPO 

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

T 2196/19 - Unsubstantiated requests not considered - for novelty

Key points

• "The board is convinced by the appellant's [opponent's] arguments and is therefore of the opinion that the subject-matter of claim 1 lacks novelty with respect to the disclosure of document D2." 
• The auxiliary requests are not admitted. "The respondent [patentee] had filed the First, Second and Third Auxiliary Requests during the first-instance opposition proceedings and upheld them in the appeal proceedings. As indicated above (see point [2]), the respondent referred only in general to its submissions made during the opposition proceedings with regard to these requests." 
• " In their submissions, both the appellant (see e.g. section VII) and the respondent (see pages 1 and 2) referred in general to their submissions made during the opposition proceedings.

  However, merely referring generally to submissions made during first-instance opposition proceedings cannot be seen as meeting the requirement of Article 12(2), second sentence, RPBA 2007 ... The board therefore does not take into account, pursuant to Article 12(4) RPBA 2007, the parties' submissions made during the opposition proceedings and referred to only in the appeal proceedings. As a consequence, this decision considers only the documents expressly referred to, the requests sufficiently substantiated, and the arguments expressly brought forward in the statement setting out the grounds of appeal or the reply thereto."  

• " In view of the above, the board is of the opinion that the First, Second and Third Auxiliary Request have not been properly substantiated in the reply to the statement setting out the grounds of appeal, contrary to the requirements of Article 12(2) RPBA 2007. As a consequence, the board does not take into account the First, Second and Third Auxiliary Requests according to Article 12(4) RPBA 2007 " 
• " Since none of the respondent's requests is allowable, the patent must be revoked (Article 101(2)and (3) EPC)." 
• As a comment, the Board does not comment on whether the novelty of e.g. AR-1 over D2 is self-evident (cf. T 0032/16 r.1.5.2).

EPO T 2196/19

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

T 2669/18 - Substantive assessment under admissibility

Key points

• The Examining Division holds a request inadmissible because it was prima facie not novel. It was also filed after the date set under R.116(2), but that was not invoked by the Ex. Div.
• The question is how the Board should review this decision under Art. 12(4) RPBA 2007.
• " Allerdings ist eine Kammer auch dann, wenn sich die Prüfungsabteilung an die anzulegenden Ermessenskriterien gehalten hat, nicht unabänderlich an diese Ermessensentscheidung der Prüfungsabteilung gebunden. Eine derartige Beschränkung der Überprüfung erstinstanzlicher Entscheidungen vermag die Kammer weder dem EPÜ noch der Entscheidung G7/93 zu entnehmen, und sieht sich dabei im Einklang mit gefestigter Rechtsprechung der Kammern"
• Art. 12(6)(s.1) RPBA 2020 provides an exception "unless the decision not to admit them suffered from an error in the use of discretion"
• "Insbesondere erscheint es interessenwidrig, wenn ein Antrag nur deswegen nicht inhaltlich von einer Kammer überprüft werden könnte, weil er von dem erstinstanzlichen Organ aufgrund von Ausführungen zur materiellen Rechtslage nicht zugelassen wurde, die die Kammer inhaltlich nicht teilt, wohingegen eine Überprüfung ohne weiteres möglich wäre, wenn der Antrag zugelassen worden und nur inhaltlich ohne Erfolg geblieben wäre. "
• The Board admits the request.
•  

EPO T 2669/18 

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

T 0184/19 - Art. 12(4) RPBA 2007 vs. 2020

Key points

• The patentee files AR 3-6 with the statement of grounds on 22.03.2019. The opponent requests that they are held inadmissible.
• "Auxiliary requests 3,4,5 and 6 correspond to the like numbered auxiliary requests filed shortly before the oral proceedings in opposition but which were not examined."
• "The Board can see no reason why these requests that were re-filed in appeal should not be admitted under the applicable rules of procedure, Article 12(4) 2007."
• " the Board in exercising its discretion refrained from not admitting these requests into the proceedings, Article 12(4) RPBA 2007."
• The Board's reasoning is a bit remarkable because Article 12(4) RPBA 2007 states: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) [including the Statement of ground] shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in (2).". 
• There is no dispute that the requirements of Art. 12(2) RPBA 2007 were  met. 
• This means that only the  the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings" can be at play.
• However, the requests were actually submitted before the OD, and they were not held inadmissible by the OD (the OD did not arrive at them, finding AR-2 to be allowable).
• Clearly this is different under new Art. 12(4) RPBA 2020.

EPO T 0184/19

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

T 0319/19 - It would be inequitable

Key points

• “Article 12(4) RPBA 2007 applies [] when assessing whether the Board should exercise its discretion not to admit documents D13-D16.
• “According to established case law, documents filed with the statement of grounds of appeal should not be held inadmissible if they are an appropriate and immediate reaction to developments in the previous proceedings, for example where they give the losing party in the opposition proceedings an opportunity to fill in the gaps in its arguments by presenting further evidence on appeal.
• “In the case at hand, the filing of documents D13-D16 is a normal and legitimate reaction to the admission of the main request filed during oral proceedings in opposition. Indeed the main request [filed during the oral proceedings before the OD and] admitted by the opposition division comprises new features taken from the description which were not foreseeable by the appellant (opponent). The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division. It is therefore legitimate for the appellant to file documents D13-D16 at the earliest possible occasion that is with the statement of grounds of appeal. It would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents. Such a course of action would effectively tie the hands of the appellant in appeal to only base their arguments on previously cited documents, having first given the respondent a free hand to amend the claim based on the description at the last moment in opposition proceedings (see T 0113/12).
• A question is if this case law will also be applied under Art.12(4) RPBA 2020. On the one hand, Art.12(4) RPBA 2020 is intended to introduce a new first level of convergence. On the other hand, if “it would be inequitable not to allow the appellant to respond to such an unforeseeable new situation with new documents” under the RPBA 2007, this would be the same under the RPBA 2020, it seems.
• Some other Boards may consider as a factor whether the opponent requested a break during the oral proceedings before the OD after the new amended MR was admitted by the OD. It is not clear to me if the opponent could be expected by other Boards to request adjournment of the oral proceedings before the OD in order to have time to find and file D13-D16. The present Board implicitly seems to answer this question in the negative by finding that: “The appellant could not have been reasonably expected to have presented D13-D16 during oral proceedings before the Opposition Division.”

EPO - T 0319/19

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

T 0500/16 - Plausibility attack not admitted

Key points

•  Claim 1 is directed to the crystalline malate salt of the known pharmaceutical compound cabozantinib.
• As to novelty: “D29 [" EMEA; Committee for Orphan Medicinal Products; December 2008, Plenary Meeting Monthly Report"] (page 1) discloses cabozantinib (L)-malate for treatment of medullary thyroid carcinoma (a thyroid cancer). D29 only refers to the malate salt without stating whether it is crystalline. While D29 implicitly discloses that the salt is in a solid form, it cannot be deduced from D29 that the salt is crystalline. The subject-matter of claim 1 of the main request, referring to the crystalline form of a cabozantinib malate salt, is therefore not directly and unambiguously derivable from D29.”
• For inventive step: “The objective technical problem ... is the provision of a cabozantinib malate salt which, as a pharmaceutical formulation, has an improved dissolution profile under physiological conditions.”
• As to obviousness: “The above documents only show that crystalline forms of pharmaceutical solids are preferred. However, none of the above documents includes any teaching on how to improve the dissolution profile under physiological conditions of the cabozantinib malate salt. This is not disputed by the appellants. In the absence of such a teaching, the solution provided by claim 1 of the main request is thus not obvious.”
• This reasoning may be an illustrative example of the problem-solution approach being effect-centred. 
• “In the current case, it has been shown in annex 1 that the unexpected property of the claimed compound is an improved dissolution profile under physiological conditions. Thus, the case at hand does not correspond to the situation in case T 777/08 where no unexpected property was recognised.”
• The opponents argue that the found effect is a bonus effect (which hence does not provide for inventive step): “[The opponents] argued that the improved dissolution profile under physiological conditions of the crystalline form of cabozantinib (L)-malate was a mere bonus effect since the skilled person would have had ample motivation in view of the teachings of D3, D5, D7, D13, D14, D25, D26, A005 and A006 to select the crystalline form of cabozantinib (L)-malate, the compound disclosed in D29.”
• “The board does not agree. A "bonus effect" arises when the state of the art forces the skilled person to adopt a certain solution, the lack of alternatives leading to a "one-way street" situation. In such a situation, any additional effect does not necessarily contribute to inventive step (see e.g. T 405/17, reasons, 4.3.3). However, this situation does not apply in this case for the following reasons. [follows a detailed review of cited prior art] In view of the above disclosures and teachings, there is no indication in the prior art that in searching for an adequate solid form of the compound disclosed in the closest prior-art document D29, the skilled person would have been forced specifically to choose only the crystalline form of cabozantinib (L)-malate as required by claim 1 of the main request. Thus, the improved dissolution profile under physiological conditions of the crystalline form of cabozantinib (L)-malate, as shown in annex 1, cannot be considered a mere bonus effect.”
• The Board also rejects that the case at hand was an obvious-to-try situation.
  
  
• Then,  to plausibility: “With the statement of grounds of appeal, [opponent] submitted that it was not made plausible on the basis of the content of the application as filed that the claimed compounds achieved the effect shown in annex 1, namely the improved dissolution profile. Therefore, the post-published data of annex 1 were not to be taken into consideration in the formulation of the objective technical problem. This objection is referred to below as the "plausibility objection".”
• The patentee requested that this objection be not admitted. The opponents in turn “requested that the respondent's request for non-admittance of appellant 2's submissions on a lack of plausibility not be admitted into the proceedings.”
• “The board decided to admit the respondent's request [i.e. admissibility objection] into the proceedings [under Art. 13 RPBA 2007] for the following reasons [follows a consideration of factors such as procedural economy].
• The “plausibility objection” is not admitted under Art. 12(4) RPBA 2007. “In the proceedings before the opposition division, the parties had discussed the data presented in annex 1 as to their merits, i.e. the parties had proceeded on the basis that the data could be taken into account and the decision under appeal is based thereupon. ”
• The Board: “Admitting the objection into the proceedings would have given appellant 2 a new chance, after opposition proceedings which had been instituted by it and having been terminated, to object to inventive step based on an entirely new submission. The admittance of the plausibility objection would have led to an entirely fresh case regarding inventive step. More specifically, had the plausibility objection been admitted and found convincing, the post-published data in annex 1 would have had to be disregarded, and the effect relied upon by the respondent could not have been taken into account. The objective technical problem would thus have changed, and the obviousness as regards a different objective technical problem would have had to be considered for the first time during the appeal proceedings.”
• “[The opponent] argued that the submissions on plausibility did not constitute an allegation of fact but rather an argument and that the board did not have any discretion not to admit an argument.”
• “The board does not agree. The appellant's allegation was that the application as filed did not make it plausible that the claimed subject-matter resulted in an improved dissolution profile. Whether, on the basis of the application as filed, it can be concluded that a certain effect, here an improved dissolution profile, is plausible or not is based on a factual consideration rather than a mere argument. More specifically, numerous facts play a role in making this consideration, such as what is actually disclosed in the application as filed as regards the effect and what the technical relationship between the claimed compound and the effect is. Therefore, appellant 2's submissions on plausibility included an allegation of fact (see also T 1875/15, reasons, 2.3 to 2.4), and the board had under Article 114(2) EPC the discretion not to admit appellant 2's late-filed submissions.”
• The opponent further argues that plausibility was a new issue in the case law. The Board seem to accept that new case law can be a valid reason for admitting a submission, but finds that the issue of plausibility was in fact not new in 2013-2015 (proceedings before the OD) in view of T 415/11 (reasons, 50, 12 January 2012), T 1329/04 (reasons, 12, 28 June 2005). 

EPO - T 0500/16 

Link to the decision after the jump, as well as an extract of the decision text.

T 0878/16 - Resubmitting claims

 Key points

•  This is an appeal against a refusal. The applicant files amended claims with the SoG and tries hard to get them admitted. The case is a bit unusual in that the applicant tries to revert to the penultimate version of the claims pending before the ED.
• “The appellant justified the filing of the new main request as follows ... : "During prosecution of the present application, the Examining Division allowed only the bare minimum of procedural space, comprising the EESR, a single examination report and summons to Oral Proceedings. The decision to refuse the present application is based on several alleged deficiencies. In view of the quite considerable changes in the claims of September 15, 2015 that were discussed at the Oral Proceedings, relative to the version of October 16, 2012. However, that previous version of October 16, 2012, is now used as a basis for the present appeal. To address objections in the Preliminary Opinion with the summons to appear before the Examining Division and in the decision to refuse the application, further amendments are introduced therein."”
• The Board: “the appellant chose not to continue to use these claims as a basis for further amendments that took into account the objections of the examining division. However, in the board's view, such claims should have been prosecuted in the examination proceedings at least as an auxiliary request, so that they would have been subject to an appealable decision. The appellant has thus effectively prevented the department of first instance from giving a reasoned decision on amendments inserted into the claims of the request filed by letter dated 16 October 2012 in response to the department's previously raised objections. The appellant has thereby compelled the board of appeal either to give a first ruling on those amendments or to remit the case to the department of first instance.”
• “ if the amended claims in question had been presented in the proceedings before the examining division. The appellant should have allowed the examining division to exhaustively assess and then decide on all subject-matter for which it intended to seek protection, even if only on a subsidiary basis, if it wished the board to rule on it. This approach is also in line with established case law (see Case Law, V.A.4.11.4b)).”
• The Board uses Art. 12(4) RPBA 2007 as the legal basis. It may be observed that strictly speaking the request at issue was presented before the department of first instance and not held inadmissible; that such requests are covered by the rule appears to be  clarified in Art.12(6)(s.2)(ii) RPBA 2020. 
• Under the RPBA 2020, an interesting point is that such requests appear to be also covered, expressly, by the more liberal provision of Art.12(4) RPBA 2020.

T 0878/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160878eu1.html

Reasons for the Decision

1. The appeal is admissible.

Main request - discretionary power under Article 12(4) RPBA 2007

2. In the present case, the statement of grounds of appeal was filed before the date on which the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020) entered into force, i.e. 1 January 2020 (see OJ EPO 2019, A63). Thus, in accordance with Article 25(2) RPBA 2020, Article 12(4) to (6) RPBA 2020 does not apply. Instead, Article 12(4) of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007 - see OJ EPO 2007, 536) continues to apply.

According to Article 12(4) RPBA 2007, the board has the discretionary power to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings. Since, in fact, almost every claim request could have been presented before the department of first instance,the question within that context is whether the situation was such that the filing of this request should already have taken place at that stage (see Case Law of the Boards of Appeal of the EPO, 9th edition, July 2019, hereinafter "Case Law", V.A.4.11.1). The board exercises its discretion under Article 12(4) RPBA 2007 having regard to the particular circumstances of the individual case (see e.g. decision T 1178/08, point 2.3). However, as was held in G 10/93 (OJ EPO 1995, 17, point 4 of the Reasons), "[p]roceedings before the boards of appeal in ex-parte cases are primarily concerned with examining the contested decision". Appeal proceedings are not a continuation of examination at first instance or a second, parallel procedure for the substantive examination otherwise to be carried out by the examining division which applicants could freely opt to launch depending on the circumstances (see Case Law, V.A.4.11.4b), in particular the cited decisions T 1108/10 and T 1212/08).

3. The amended claims according to the present main request were filed for the first time with the statement of grounds of appeal. The appellant justified the filing of the new main request as follows (see statement of grounds, page 5, fourth and fifth paragraphs):

T 0725/18 - Should file fallback positions before OD

 Key points

• The Board applies Art.12(4) RPBA 2007.
• “In the present case the appellant (patent proprietor) justified the filing of these auxiliary requests at the appeal stage [with the statement of grounds] in view of the fact that, at the oral proceedings, the Opposition Division changed its preliminary view on lack of novelty over D2, and therefore the amendments had become necessary in order to better distinguish the subject-matter of claim 1 from D2. ”
• “The Board, however, sees no reasons in the course of the opposition proceedings that justify the filing of these requests in appeal proceedings. The arguments of the opponent as regards lack of novelty in view of D2 were already present in its notice of opposition and the appellant should have from the outset of the opposition proceedings reacted with its requests accordingly. As regards the change of view of the Opposition Division during the oral proceedings with respect to novelty in view of D2, it is the nature of a preliminary opinion that it is not binding of the final decision and the [patent proprietor] should have expected that the lines of argument of the opponent could persuade the Opposition Division and should have filed auxiliary requests as fall-back positions accordingly ”
• “Hence, the appellant should have filed in the course of the opposition proceedings - preferably with the reply to the notice of opposition, but at the latest before the oral proceedings within the given time limits [note i.e. the last day for written submissions under Rule 116] - the requests it deems necessary to overcome the objections that in its view are validly raised [note: by the opponent in the Notice of opposition] in order to maintain its patent in a form that it approves including the relevant fallback positions.”

T 0725/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180725eu1.html

Reasons for the Decision

1. Main request and first auxiliary request - Novelty

[...]

Lastly, that the structure and functionality of the anti slip device of D2 differs from the one shown in the specification of the patent is not relevant when assessing novelty of the subject-matter of claim 1. What matters is whether the anti slip device disclosed in D2 falls under that subject-matter claimed. This is indeed the case.

2. Second and third auxiliary requests - admissibility

2.1 The second and third auxiliary requests were submitted by the appellant (patent proprietor) for the first time with the statement of grounds of appeal.

2.2 Article 12(4) RPBA 2007 (Rules of Procedure of the Boards of Appeal OJ EPO 2007, 536) applies to the current appeal (see Article 25(2) RPBA 2020; Rules of Procedure of the Boards of Appeal OJ EPO 2019, A63). Under this provision the Board has the power to hold inadmissible requests which could have been presented in the first instance proceedings.

T 0998/17 - It raised to prominence, for the first time

Key points

• This is an opposition appeal.  The Board has to decide on the admissibility of a document filed by the opponent with its Statement of grounds.
• “just 1 month before the opposition oral proceedings [i.e. before the opposition division], the proprietor withdrew all its previous auxiliary requests and filed 12 new auxiliary requests. During the oral proceedings, auxiliary request 12 was made the first auxiliary request and is the current main request. 3.3 This request combines granted claims 7 and 10. In so doing, it raised to prominence, for the first time, the feature [X] as an indispensable feature of the invention.”
• The Board: “there are no provisions in the EPC which oblige the opponent to provide evidence against every possible fallback position defined in dependent claims.” [citing T1830/11 hn.]
• “in the Board's view, just as an opponent cannot be expected to know which claim of a set of granted dependent claims might be used to uphold a patent, so too could the opponent in the present case not have known which of the 12 auxiliary requests on file at the start of the opposition oral proceedings might eventually be used to uphold the patent. This only became clear at the oral proceedings. Under these circumstances, the Board considers that filing E11 at the earliest opportunity in appeal was a timely reaction to the impugned decision. In other words, the Board considers E11 to have been filed in due time in the sense of Article 114(2) EPC.
• As a comment, the Board considers document E11 to have been filed "in due time in the sense of Article 114(2) EPC". Still it would have been a case amendment under Art. 12(4) RPBA 2020 (based on the text of Art.12(4)(s.1) RPBA 2020 and therefore a submission that “may be admitted only at the discretion of the Board” (Art. 12(4)(s.2) RPBA 2020). The question may be raised whether Art. 12(4) RPBA 2020 here confers powers on the Boards that the EPC does not give them. 

T 0998/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t170998eu1.html

3. Admission of document E11

3.1 E11 was filed with the grounds of appeal. It is thus late filed and its admittance is subject to the discretion afforded by Article 12(4) RPBA (2007) with Article 114(2) EPC. E11 is said to have been filed as a response to the amended claims of the main request.

3.2 The Board notes (see impugned decision, facts and submissions, points 6 and 9) that just 1 month before the opposition oral proceedings, the proprietor withdrew all its previous auxiliary requests and filed 12 new auxiliary requests. During the oral proceedings, auxiliary request 12 was made the first auxiliary request and is the current main request.

3.3 This request combines granted claims 7 and 10. In so doing, it raised to prominence, for the first time, the feature of the front metal layer and adhesive layers covering only a part of the scratch-off layer as an indispensable feature of the invention.

According to established jurisprudence (see Case Law of the Boards of Appeal, 9th edition, 2019 (CLBA) V.A.4.11.3.c, in particular T1830/11, headnote and reasons, part 1) there are no provisions in the EPC which oblige the opponent to provide evidence against every possible fallback position defined in dependent claims.

In the present case, it is true that the proprietor filed auxiliary requests 1 to 12 in opposition just within the 1 month time limit defined by Article 116 EPC. The circumstances of the present case are therefore different from T1830/11 where a new request combining dependent claims was filed at oral proceedings.

Nevertheless, in the Board's view, just as an opponent cannot be expected to know which claim of a set of granted dependent claims might be used to uphold a patent, so too could the opponent in the present case not have known which of the 12 auxiliary requests on file at the start of the opposition oral proceedings might eventually be used to uphold the patent. This only became clear at the oral proceedings. Under these circumstances, the Board considers that filing E11 at the earliest opportunity in appeal was a timely reaction to the impugned decision. In other words, the Board considers E11 to have been filed in due time in the sense of Article 114(2) EPC.

3.4 Moreover, the Board considers E11 (see for example abstract, column 4, lines 22 to 26 and figure 5a) to be prima facie relevant to claim 1, since it discloses scratch-off labels where a front security element 6 is adhesively attached to the scratch off layer 5 and extends only partly over the scratch off layer.

3.5 For these reasons, the Board decided to exercise its discretion under Article 12(4) RPBA with Article 114(2) EPC by admitting document E11 into the proceedings.

4. Main request, claim 6, inventive step starting from E1 with E

T 2061/19 - Old arguments inadmissible, new arguments as well

 Key points

• The opponent appealed against the decision to maintain the patent in amended form. 
• “The Board notes that the statement of grounds of appeal, specially with respect to the alleged lack of inventive step of the main request, consists exclusively of three types of arguments, namely: (a) arguments which correspond verbatim to those of the notice of opposition [] (b) arguments which correspond verbatim to passages [the written submissions before the OD] [and] (c) arguments made for the first time in appeal proceedings”.
• The Board does not admit arguments A and B: “ These arguments thus do not meet the requirements of Rule 99(2) EPC, and the Board therefore does not to admit them in exercising its discretion under Article 12(4) and (2) RPBA 2007”
• I note that Article 12(4) RPBA 2007 does not refer to 'arguments'.
• I note that appellants are required to set out their complete case (e.g. in my view, discuss all claim features in an inventive step attack, not only those in dispute before the OD).
• The Board does not admit arguments C either: “Regarding arguments (c) the Board shares the view of the [patentee] that the [opponent] could have presented these arguments during the opposition proceedings, namely at least at the oral proceedings before the opposition division. Instead, the [opponent] chose not to attend the oral proceedings. The non-attendance of the appellant/opponent at the oral proceedings cannot justify the submission of new arguments as a reaction to the reasons of the decision []. The Board, considering that the main aim of appeal proceedings is that of reviewing the decisions of the administrative departments of the EPO (cf. Article 12(2) RPBA 2020) does not consider it appropriate that the appellant [opponent] starts a complete fresh case in appeal, without even providing a justification for this course of action. Therefore, the Board, exercising its discretion pursuant to Article 12(4) RPBA 2007, does not admit these arguments into the proceedings.”
• The Chair of the Board was Mr. Beckedorf. 

T 2061/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t192061eu1.html

Reasons for the Decision

1. Transitional provisions - Revised Rules of Procedure of the Boards of Appeal (RPBA 2020)

The appeal proceedings are governed by the revised version of the Rules of Procedure which came into force on 1 January 2020 (Articles 24 and 25(1) RPBA 2020), with the exception of Article 12(4) to (6) RPBA 2020 instead of which Article 12(4) RPBA 2007 remains applicable (Article 25(2) RPBA 2020).

2. Procedural matters

2.1 The case is ready for decision which is taken in written proceedings without holding oral proceedings in accordance with Article 12(8) RPBA 2020 and with Articles 113 and 116 EPC.

2.2 Both parties, after having received the Board's communication pursuant to Article 15(1) RPBA 2020 and the communication dated 8 March 2021, withdrew their respective requests for oral proceedings (Article 116(1) EPC). Hence, the parties chose to rely on their written submissions only. The principle of the right to be heard pursuant to Article 113(1) EPC is observed since that provision only affords the opportunity to be heard and the parties' submissions are fully taken into account (see Case Law of the Boards of Appeal, 9th edition 2019, III.B.2.7.3 and V.A.4.5.3).

2.3 As a consequence, the Board is in a position to take the final decision on the basis of the contested decision to be reviewed and the extensive written submissions of the parties (Article 15(3) RPBA 2020), while preserving their rights under Articles 113 and 116 EPC, so that the oral proceedings scheduled for 11 March 2021 were cancelled.

T 0693/17 - No attacks admitted

 Key points

• The opponent appeals. Board 3.2.07 decides not to admit any of the objections based on Art.12(4) RPBA 2007.
• As a comment, Art. 12(4) RPBA 2007 refers to  "the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings" and does not refer to 'objections'.
• The opponent raises an Art. 123(2) objection in the Statement of grounds. The Board: “This objection is not dealt with in the appealed decision ... The appellant [opponent]  acknowledged at the appeal oral proceedings that the above objection was not explicitly raised at the oral proceedings in opposition. ... The Board notes that it is the party's responsibility to present their case and to submit promptly all their objections. ”
• “The Board concludes therefore that the above objection of added subject-matter could and should have been maintained during the oral proceedings in opposition and therefore exercises its discretion pursuant to Article 12(4) RPBA 2007 by not admitting this objection into the appeal proceedings.”
• The Board also does not admit the novelty attack based on D1. The opponent had only contested novelty over D3 for the request at issue during the oral proceedings before the OD. The Board: “The Board cannot follow the argument of the appellant, that the present objection should be admitted into the proceedings because the lack of novelty in view of D1 was not pursued at the oral proceedings in opposition only for reasons of procedural economy, since the opposition division considered D1 not to deprive novelty of the subject-matter of claim 1 according to the initial main request. ... The Board notes that the fact that the decision does not deal with D1 is solely the consequence of the appellant's own procedural strategy. Had the appellant raised the objection at the oral proceedings, the opposition division would necessarily have dealt with it in the decision under appeal.
• The Board also does not admit the inventive step attack because: “The Board notes that the technical problem identified by the appellant in opposition proceedings was a different one, ” So the same combination of documents (D1+D3) was used for the inventive step attack before the OD.
• “The inventive step attacks starting from D3 submitted in the appeal proceedings differ therefore substantially from the inventive step argumentation brought forward in opposition proceedings. No reason why these new lines of argument are presented for the first time in appeal proceedings has been indicated by the appellant, nor is it apparent to the Board.”
• So even 'new lines of arguments' in the Statement of ground can be held inadmissible under Art. 12(4) RPBA 2007, according to this Board.

 
• Finally, “the Board notes that, since none of the objections and lines of argument of the appellant are admitted into the proceedings, as also acknowledged by the appellant at the oral proceedings before the Board, there are no admissible reasons for allowing the appeal or for remitting the case to the opposition division.”

EPO T 0693/17  - https://www.epo.org/law-practice/case-law-appeals/recent/t170693eu1.html

(decision text omitted)

T 2155/17 - Fresh ground and claim amendment

Key points

•  In the course of the first instance opposition proceedings, a feature is added to claim 1. The opponent raises an objection of added subject-matter only in its Statement of grounds. The patentee objects that this is a fresh ground in appeal in the sense of G 9/91.
• The Board notes that the objection pertains to the amended part of claim 1, and that the amendment does not consist of combining granted claims, such that r.19 of G9/91 applies: “it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)” 
• The Board: “Since the objection would not have arisen in respect of the granted patent it does not constitute the raising of a fresh ground of opposition, contrary to the submissions of the respondent.” 
• The Board considers that the new objection is subject to the discretion under Art. 12(40 RPBA 2007 but does not hold the objection inadmissible. “No arguments were provided by the respondent why the Board should make use of this power and no reason can be found by the Board to hold this objection as inadmissible.”

EPO T 2155/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t172155eu1.html

1. Main request

1.1 Added subject-matter (I) raised in the statement of grounds of appeal

This objection related to the definition of the skin layer as including LLDPE and the absence of the expressions "multilayer film", "printable" and "adjoined to the core layer".

1.1.1 Admittance

The set of claims in question, which was submitted with the response to the notice of opposition as auxiliary request 5 and renumbered as auxiliary request 3 during the oral proceedings, is a set of claims amended in opposition by introducing an additional feature in claim 1 (that the skin layer includes LLDPE) which was not present in the granted claims, but allegedly can be found in the original description as submitted by the respondent.

The objection of added subject-matter relates to this amendment and not to the combination of features in the claims as granted. Since the objection would not have arisen in respect of the granted patent it does not constitute the raising of a fresh ground of opposition, contrary to the submissions of the respondent.

T 0403/14 - Should have been filed before the Examining Division

Key points

• A case of a Board holding a request inadmissible which was filed in an appeal against a refusal with the Statement of grounds, under the 'should have been filed' prong of Article 12(4) RPBA 2007.
• “If the board were to admit the first auxiliary request into the proceedings, it would be forced either (1) to examine and decide on subject-matter which has probably not been searched or (2) to remit the case to the examining division in order to enable a search to be performed. The board concurs with the view []  that neither of these procedural options is appropriate and acceptable. If the appellant intended to seek protection for the subject-matter of claim 1 of the present first auxiliary request, it should have presented this request before the examining division, for instance as a further auxiliary request. The appellant had several opportunities to do so because the subject-matter of claim 1 was already objected to - for lack of novelty or lack of inventive step over D1 - in several communications of the examining division.”

EPO T 0403/14 - link

6. Conclusion on the main request

Since claim 1 of the main request does not meet the requirement of clarity of Article 84 EPC 1973, the main request is not allowable.

First auxiliary request - admittance (Article 12(4) RPBA)

7. Pursuant to Article 12(4) RPBA (Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536), the board has the power to hold inadmissible a request which could have been presented in the first-instance proceedings but was not (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016, IV.E.4.3.1 in general and IV.E.4.3.3 b) for ex parte appeal proceedings).

8. Claim 1 according to the first auxiliary request has been amended with respect to claim 1 of the main request by adding several features taken from the description and specific to the fourth embodiment shown in figures 13 to 15.

T 1801/17 - No obligation to attend

 Key points

• The opponent-respondent disputes the admissibility of a request filed with the Statement of grounds. 
• Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation [...]. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent [...] The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response. The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. ”
• “The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.”
• For a Board finding an (equitable?) obligation to attend oral proceedings before the examining division, see T1500/10.
• The request filed with the SoG was resubmitted as AR-4a with a small amendment and was subsequently made the main request.
• The Board: “As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after the arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.”
• The admissibility of the request is examined cumulatively under said provisions.
• 
  

EPO T 1801/17 -  link

3. Main request - Admissibility

The respondent-opponent objects to the admissibility of the main request. This issue hinges also on the admissibility of other previously filed requests as follows.

3.1 The appellant-proprietor filed an auxiliary request with the statement of grounds. The later filed auxiliary request 4a on 24 May 2019 was based on that auxiliary request, and was amended only to adapt one term of claim 1 to a corrected translation. With letter of 17 April 2020, the appellant-proprietor made that auxiliary request 4a its main request.

As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.

3.2 Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation in the omission of the feature of original description paragraph [0033] that the guide wall has the shape of a plate curved in the shape of a circular arc, see section 2.3. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent, see written decision sections 2.3 and AUXILIARY REQUESTS I-VI. The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response.

The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.

Under the above circumstances the Board considers the auxiliary request filed with the statement of grounds to be a normal and legitimate reaction of the losing patent proprietor at their first available opportunity, see CLBA V.A.4.11.3.g), and thus admissible under Article 12(4) RPBA 2007.

T 0978/17 - Combining claims 1, 2 and 3

 Key points

• The opponent filed a new document D85 with its Statement of grounds. The Board decides to admit the document under Art. 12(4) RPBA 2007. The question was whether the document should have been filed earlier.
• The patentee had filed 15 auxiliary requests during the first instance proceedings and then a further auxiliary request 17 during the oral proceedings adding a feature not present in the higher-ranking requests.
• According to the Board, the opponent was not obliged to prepare for the case that the patentee added the feature, even though AR-17 is merely a combination of claims 1, 2 and 3 as granted.
• “jedoch sind die Einsprechenden nicht verpflichtet, innerhalb der Einspruchsfrist alle möglichen Anspruchskombinationen mit ihren Entgegenhaltungen abzudecken. Die Patentschrift hat 13 abhängige Ansprüche, wobei nicht alle auf einen einzigen Anspruch rückbezogen sind. Es ergibt sich somit eine Vielzahl von Anspruchskombinationen, die von den Einsprechenden im Vorfeld nicht zumutbar abgedeckt werden konnten.”
• Therefore, D85 is admtited. The patent is revoked inter alia based on lack of inventive step over D3 in combination with D85.

T 0978/17
https://www.epo.org/law-practice/case-law-appeals/recent/t170978du1.html

5. Zulassung von D85

5.1 Die Einsprechende 3 hat das Dokument D85 erstmals mit ihrer Beschwerdebegründung eingereicht, sodass sich die Frage stellt, ob dieses gemäß Artikel 12 (4) RPBA 2007 vom Verfahren auszuschließen sei.

5.2 In Reaktion auf die Einspruchsschrift und den Prioritätseinwand hat die Patentinhaberin im Einspruchsverfahren fünfzehn Hilfsanträge eingereicht, von denen keiner die mit dem Hilfsantrag XVII vorgenommene Änderung enthielt. Erst während der mündlichen Verhandlung im Einspruchsverfahren hat die Patentinhaberin in Reaktion auf einen Klarheitseinwand das Merkmal "parallel" zum Anspruch 1 eines weiteren Hilfsantrags hinzugefügt.

T 1953/16 - Reviewing the first instance procedure

 Key points

• The opponent files new documents with its Statement of grounds. The Board applies the 'should have been filed' rule of Art. 12(4) RPBA 2007 and reviews the first instance procedure in some detail.
• I think we will see this more often in the future.
• “The opponent's main justification for filing documents D15, D16 and D17 was that the patent proprietor with letter of 14 April 2016, of which the opponent was notified only on 3 May 2016, had introduced a new argument shortly before the oral proceedings before the opposition division which took place on 24 May 2016. According to the opponent, the new argument concerned the structure of the compressor as a whole of D1 and not the rotor in an isolated manner, as had previously been argued by the patent proprietor [].”
• The Board: “Irrespective of the question whether the available period before oral proceedings (21 days) could be regarded as sufficient for carrying out an additional search, the board does not agree with the opponent that the patent proprietor with letter of 14 April 2016 introduced a new argument, which justified the filing of documents D15, D16 and D17 for the first time in the appeal procedure. ”
• The Board cites the Rule 79 response "on page 3 in the fifth paragraph" and analyzes this in detail: "The mention of the compressor contained in the reply [of Patentee] is brief and the specific problems involved in implementing the invention in the compressor of D1 are indeed not further explained. Nevertheless, contrary to the opponent's allegation, the patent proprietor's argument was directed to the structure of the compressor as a whole, not only to the rotor, and the above statement was sufficient for the opponent to realise at the very beginning of opposition proceedings that the patent proprietor was thereby casting doubt on the suitability of document D1 in the assessment of an inventive step"
• It does not help that the OD's preliminary opinion was favorable for opponent.
• The Board leaves open whether the documents at issue are admissible in reply to AR-1 filed shortly before the oral proceedings before the OD, because the Main Request is considered to be inventive (disregarding D15, D16 and D17)
• This indicates that it does not make sense to decide on the admissibility of documents in advance. In other words, a document can be admissible only in connection with some but not all of the claim requests.

EPO T 1953/16 -  link

3. Admittance of documents D15, D16 and D17 into the appeal procedure (Article 12(4) RPBA 2007)

3.1 Documents D15, D16 and D17 were filed for the first time with the opponent's statement setting out the grounds of appeal on 27 October 2016. The patent proprietor has requested that the new documents under Article 12(4) RPBA 2007 not be admitted into the proceedings.

3.2 According to Article 12(4) RPBA 2007 the board has the discretionary power to hold inadmissible evidence which could (and should) have been presented or was not admitted in the first instance proceedings. The provision expresses the principle that each party should submit all facts, evidence, arguments and requests that appear relevant as early as possible so as to ensure a fair, speedy and efficient procedure (e.g. T 162/09, point 7 of the reasons and T 724/08, point 3.4 of the reasons). According to the established case law of the Boards of Appeal, the filing of new documents for the first time in the appeal proceedings requires a sound and plausible reason in the specific case, in particular exceptional circumstances that justify the late filing of the respective documents. It follows that, in principle, documents could be admitted in the case of e.g. a normal reaction to a late turn of events in the opposition (oral) proceedings, an exceptional interpretation by the opposition division at a late stage or in the decision, or evident non-allowability in view of the newly cited documents and/or objections (see the Case Law of the Boards of Appeal, 9th edition 2019, V.A.4.11.3).