T 1609/15 - We tried to settle with the opponent

Key points

• Patentee disputes the alleged public prior use for the first time during the oral proceedings before the Board. The Board does not admit the argument.
• The Board does not accept the submitted justification for the late filing of the arguments, that patentee had tried to settle with the opponent until the oral proceedings.
• The Board: “das entsprechende Verhalten bzw. Strategie der Beschwerdegegnerin der gebotenen Verfahrensökonomie widerspricht”.
• I wonder if denying factual assertions of the other party counts as a 'fact' under T1914/12.
  
• As a separate procedural issue: both opponents appealed, the patentee did not appeal. Opponent 2 withdraws the appeal. The Board states that therefore Opponent 2 is therefore ‘am Beschwerdeverfahren nicht mehr beteiligt’. I wonder if the opponent isn't party as of right under Article 107, second sentence ("Any other parties to the proceedings shall be parties to the appeal proceedings as of right."). 

EPO T 1609/15 - link

Sachverhalt und Anträge

I. Die Einsprechende 2 hat gegen die Entscheidung, mit der ihr Einspruch gegen das europäische Patent Nr. EP 2 114 815 zurückgewiesen wurde, form- und fristgerecht Beschwerde eingelegt. Eine gleichfalls von der Einsprechenden 1 (Krones AG) wirksam eingelegte Beschwerde wurde von dieser mit Schriftsatz vom 28. November 2019 zurückgenommen, mit der Folge, dass diese Einsprechende damit am Beschwerdeverfahren nicht mehr beteiligt ist.

Entscheidungsgründe

2. Zulassung der in der mündlichen Verhandlung vorgebrachten Änderungen des Vorbringens der Beschwerdegegnerin

In der mündlichen Verhandlung argumentierte die Beschwerdegegnerin [patentee], dass die offenkundige Vorbenutzung "Altmühltaler Mineralbrunnen" insgesamt zu bestreiten sei, weil diese auf widersprüchlichen Aussagen von unglaubwürdigen Zeugen basiere und dass nicht bewiesen worden sei, dass die Anlage der Vorbenutzung "Altmühltaler Mineralbrunnen" im Betrieb das beanspruchte Verfahren ausführte.

T 1280/14 - Irreversibly divergent auxiliary requests

Key points

• In this opposition appeal, the OD had allowed the Patentee's main request. The Board finds the main request not novel, the interesting point is the decision to not admit the auxiliary requests. 
• During the oral proceedings before the OD, 15 AR's of Patentee were pending. The Opponent challenges admissibility of these AR's with the Statement of grounds, the Patentee resubmits the 15AR's with its reply, arranged in six "lines of defence". With the preliminary opinion, the Board doubts admissibility of these request, citing T1903/13 which states that the Boards have the power to not admit divergent auxiliary requests. At the beginning of the oral proceedings, the Patentee gives ups 13 out of the 15 AR's such that only AR 8 and AR 15 remain (corresponding to 'lines of defence' number 3 and 6).
• The Board does not admit these twp request. The Patentee accepted/risked ('nahm damit billigend in Kauf') that the Board (and the Opponent) were unnecessarily preparing for auxiliary requests which were not relevant for the further proceedings. In this way, the Patentee caused the Opponent to incur high preparatory costs that could have been avoided. Hence, the Patentee has not acted in line with the prescribed procedural economy. 

EPO Headnote
Anwendung des Erfordernisses der Achtung der gebotenen Verfah­rens­ökonomie nach Artikel 13(1) VOBK wenn eine Patentinhaberin billigend in Kauf nimmt, dass sich die Beschwerdegegner und die Kammer unnöti­ger­weise auf Hilfsanträge vorbereiteten, auf die es im wei­teren Verfahren nicht ankommen kann, weil die Patent­inhaberin erst in der mündlichen Verhandlung eine Vielzahl von diver­gie­renden Verteidigungslinien, die von einer Hauptverteidigungs­linie abweichen und bereits in der vorläu­figen Stellungnahme der Kammer gerügt wurden, auf einige wenige der divergierenden Verteidigungslinien beschränkt.

EPO T 1280/14 -  link

Entscheidungsgründe

1. Zulässigkeit der Druckschrift D9

1.1 Es liegt gemäß Artikel 12(4) VOBK im Ermessen der Kammer, Beweismittel nicht zuzulassen, die bereits im erstinstanzlichen Verfahren hätten vorgebracht werden können. Unbeschadet dieser Befugnis, wird das gesamte Vorbringen der Beteiligten nach Absatz 1 von der Kammer berücksichtigt, wenn und soweit es sich auf die Be­schwerdesache bezieht und die Erfordernisse nach Absatz 2 erfüllt.

[...]

1.5 Die Druckschrift D9 ist deshalb im Verfahren (Artikel 12(4) VOBK).

2. Hauptantrag

2.4 Der Gegenstand des erteilten Anspruchs 1 (Hauptantrag) ist somit gegenüber dem in der Druckschrift D9 offen­barten Sicherheitsele­ment nicht neu (Artikel 100 a) und 54 EPÜ 1973).

3. Zulässigkeit des Hilfsantrags 1

3.1 Nach Artikel 13(1) VOBK steht es im Ermessen der Kam­mer, Änderungen des Vorbringens eines Beteiligten nach Einreichung seiner Beschwerdebegründung oder Erwiderung zuzulassen und zu berücksichtigen. Bei der Ausübung des Ermessens werden insbesondere die Komplexität des neuen Vorbringens, der Stand des Verfahrens und die gebotene Verfahrensökonomie berücksichtigt.

T 2187/14 - Barely understandable machine translations

Key points

• In this case, a machine translation E10* was filed with the Statement of grounds. The Board found this to be " a barely understandable machine translation".
• E10** is a second and allegedly improved machine translation submitted in response to the Board's criticism of E10*. 
• "The Board does not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case. A certified translation should have been filed at the earliest opportunity." 
• "Therefore, these documents will be considered only to the extent that they might help in understanding the figures of E10." 
• As said in the comments at DeltaPatents, requiring a certified translation without invitation seems to go against Rule 5 EPC.  Rule 3 is also quite clear that a translation is only required upon invitation, and this applies also to opposition proceedings (GL A-VII 3.4) and therefore also to opposition appeal. In my view, the right to be heard of the other party requires that it can comment on a translation of the document in an EPO official language, but legal basis for that requires further study. In this case, the first translation E10* should perhaps have been admitted, but it is not for the Board or the other parties to infer what the Japanese document E10 says from a "barely understandable machine translation". 
• In addition, the legal basis for considering documents " only to the extent that they might help in understanding the figures of E10" is also not clear - is the document partially admitted?

EPO T 2187/14 - link

Reasons for the Decision

1. Consideration of late-filed documents (Articles 12(4), 13 RPBA)

1.1 Documents E4* and E10 to E14* were filed for the first time with the opponent's grounds of appeal. Therefore, it is necessary to assess whether they should have been submitted earlier (Article 12(4) RPBA).

1.3 E10* is a barely understandable machine translation of E10. E10** is a second and allegedly improved machine translation submitted in response to the Board's criticism of E10*. However, the Board does not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case. A certified translation should have been filed at the earliest opportunity. Therefore, these documents will be considered only to the extent that they might help in understanding the figures of E10.

T 0888/14 - Combining dependent claims

Key points

• In this opposition appeal, claim 1 of auxiliary request 1 (filed after the Summons) results from the combination of claim 1 as granted with dependent claim 2 as granted. The Board has to decide on admissibility. 
• " During the oral proceedings the board noted that none of the features incorporated in claim 1 of each of these requests and based on dependent claims as granted had been addressed during the appeal proceedings, and that the letter accompanying the requests contained no substantive submission on the technical significance of these features, in particular on the possible relevance of the same for the issue of inventive step. The board considered that in these circumstances the admissibility of each of the requests depended on the question of whether the corresponding amendments would prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request. " 
• The Board then decides that they amended claims are not prima facie allowable and does not admit the requests. Hence, even combining claim 1 with claim 2 is not safe. 

EPO T 0888/14 - link

3.1 Auxiliary requests 1 to 5 - Admissibility

Claim 1 of auxiliary requests 1 to 5 results from the combination of claim 1 as granted with dependent claim 2 as granted, with dependent claim 3 as granted, with dependent claim 4 as granted, with dependent claims 3 and 4 as granted, and with dependent claims 2 to 4 as granted, respectively.

During the oral proceedings the board noted that none of the features incorporated in claim 1 of each of these requests and based on dependent claims as granted had been addressed during the appeal proceedings, and that the letter accompanying the requests contained no substantive submission on the technical significance of these features, in particular on the possible relevance of the same for the issue of inventive step. The board considered that in these circumstances the admissibility of each of the requests depended on the question of whether the corresponding amendments would prima facie overcome the objection of lack of inventive step of the subject-matter of claim 1 of the main request. As noted by the board during the oral proceedings, one of the relevant criteria for admitting amendments after arrangement of oral proceedings under Article 13 RPBA is that it must be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully address the issue raised without giving rise to new ones (see "Case Law of the Boards of Appeal" EPO, 8th edition 2016, section IV.E.4.2.5, and decisions cited therein).

T 2189/14 - Something you can do late

Key points

• " A party may, at any time, argue against the other party's case by engaging with that party's arguments, for example by finding flaws in the logic. In the present case however, the respondent's submissions go far beyond that. they constitute a fresh case, and are clearly late." (emphasis added).  

EPO T 2189/14 -  link

Reasons for the Decision

1. In the course of the oral proceedings, the respondent argued that feature A - one of the differentiating features between the invention and D2 - had the technical effect that the gears could be used as part of a modular system. The appellant submitted that this line of argument should not be admitted into the proceedings, as it amounted to a fresh case, was made far too late in the proceedings and the appellant did not have sufficient time to prepare a counter-argument.

The respondent did not make any written submissions in the appeal proceedings which had commenced in November 2014. This has the procedural consequence that the appeal proceedings are based only on the notice of appeal, the statement of grounds of appeal and the Board's communication (Art. 12(1) RPBA).

For the first time at the oral proceedings, the respondent presented a line of argument as to the technical effect of an alleged distinguishing feature between the invention and the prior art; by doing so they effectively presented their own case as an alternative to the appellant's. A party may, at any time, argue against the other party's case by engaging with that party's arguments, for example by finding flaws in the logic. In the present case however, the respondent's submissions go far beyond that. they constitute a fresh case, and are clearly late.

The Board sees no justification for admitting them into the proceedings. The respondent gave no reasons as to why it had presented its case only at the oral proceedings before the Board. The appellant had no time to consider the line of argument and considering it solely during an interruption of the oral proceedings appears in the circumstances insufficient. Therefore, the Board decided not to admit the respondent's line of argument into the proceedings.

T 0128/14 - Respondent needs to respond

Key points

• If an opponent appeals, the patent proprietor needs to submit with its Statement of response any auxiliary requests that are responsive to opponent's arguments why the impugned decision is incorrect. The patent proprietor can not file such requests after the preliminary opinion of the Board, even if (as in the present decision), that is "the first time that an indication [comes] from an organ of the European Patent Office that there might be deficiencies with the patent". 
• The Board finds that argument of patentee for admissibility  not convincing, and comments that " it does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant [opponent] in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent [patentee] to formulate requests to address all the arguments put forward, in particular insofar as the appellant [opponent] considered the conclusions of the opposition division flawed.

6. Fourth to sixth auxiliary requests - admittance

These requests were filed after issue of the communication of the Board [annexed with the Summons]. The initially filed versions contained an error which was noted by the Board and resulted in a [second] communication, leading to corrected versions being submitted.

All of these requests present various combinations of subject matter resulting in part from restrictions of existing features (fourth and fifth auxiliary requests) or additionally specifying the nature of the contents of the packaged product (sixth auxiliary request) - see section VIII, above. This gives rise to questions concerning the basis for the amendments made (Article 123(2) EPC).

In the letter filing these requests explanations as to the rationale and the issues which these were intended to address were provided. These explanations however referred in a large part on the submissions made in the response to the statement of grounds of appeal and a subsequent letter, prior to issue of the summons by the Board. Crucially the respondent did not explain whether or in what manner the amendments resulting in the fourth to sixth auxiliary requests were directed to addressing the issues identified as significant by the Board in its communication [annexed with the Summons. This in turn leads to the conclusion that the amendments made could in fact have been filed earlier in the appeal proceedings.

The argument of the respondent that the communication of the Board was the first time that an indication came from an organ of the European Patent Office that there might be deficiencies with the patent is not convincing and does not serve to justify the admissibility of these late filed requests. This is in particular because the Board did not take position on matters going beyond those set out in the submissions of the parties. The appellant in the statement of grounds of appeal explained why it considered the conclusions of the opposition division to be incorrect. It was incumbent on the respondent to formulate requests to address all the arguments put forward, in particular insofar as the appellant considered the conclusions of the opposition division flawed.

In addition it is not immediately apparent for the Board how these requests would address all the pending issues, in particular with respect to inventive step.

Under these circumstances the Board finds it appropriate to exercise its discretion under Article 13(1) RPBA by not admitting the fourth to sixth auxiliary requests to the procedure.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

T 1162/12 - Abuse of procedure

Key points

• With the summons, the Board expressed new concerns about the claims being possible not sufficiently disclosed over the whole scope of the claims of the main request, in addition to a preliminary opinion that the main request was not novel. The proprietor then filed a new main request, and argued that this request must be admitted by the Board. The Board does not agree, firstly because the new main request was filed before the Board had refused the earlier main request for insufficient disclosure. Moreover, the new main request also addressed - perhaps not coincidentally, and late - an objection of lack of novelty that was already made by the OD. 
• The Board does not like the new main request prevents the Board from deciding on the earlier main request, and considers the filing of the main request an abuse of procedure. " Damit hat sie [patentee] sich aber unter dem Vorwand der Verfahrensökonomie in unzulässiger Weise an die Stelle der Kammer gesetzt und die Kammer daran gehindert, tatsächlich selbst zu dieser Frage [about sufficiency of disclosure] Stellung zu nehmen. Dieses Vorgehen, gekoppelt mit der Darstellung der neuen Anträge als Reaktion auf die völlig hypothetische Zurückweisung des vorherigen Hauptantrags, führt dazu, dass der Kammer die Zulassung der neuen Anträge gewissermaßen aufgezwungen wird. Die Kammer erachtet dieses Vorgehen der Beschwerdeführerin als Verfahrensmissbrauch." 

 EPO T 1162/12

Entscheidungsgründe

1. Zulässigkeit der Anträge

Der Hauptantrag und die Hilfsanträge I bis V wurden nach der Ladung zur mündlichen Verhandlung vor der Kammer eingereicht. Ihre Zulassung liegt gemäß Artikel 13 (1) VOBK im Ermessen der Kammer.

Die Beschwerdeführerin hat dies mit dem Hinweis darauf bestritten, dass die Anträge eine Reaktion auf einen erstmals im Ladungsbescheid der Kammer erhobenen Einwand darstellen. Die Kammer müsse der Beschwerdeführerin Gelegenheit zur Reaktion geben und habe daher kein Ermessen, die Anträge nicht in das Verfahren zuzulassen.

T 0810/12 - Inventive step and novelty attack

Key points

• The opponent  raises an inventive step attack during the oral proceedings before the Board.
• " The [opponent] argued that it did not advance the objection earlier because this could have been considered by the board as an implicit concession by the [opponent] that the subject-matter of feature (A) was not disclosed in document E5 thereby weakening the objection of lack of novelty over E5." 
• The Board is not convinced and does not admit the new attack. " In any case, since the novelty objection was explicitly raised and argued by the appellant, it would have been manifestly unreasonable by the board to assume any hypothetical implicit concession as speculated by the appellant." 

EPO T 0810/12 - link

Reasons for the Decision

3. Main request - inventive step

3.1 Amendment to the appellant's case

3.1.1 The appellant stated for the first time at the oral proceedings before the board that it would prefer to argue inventive step on the basis of document E5 in combination with document E10. The latter document had already been admitted into the proceedings by the opposition division.

The respondent requested that this new line of attack not be admitted into the proceedings.

3.1.2 According to Article 12(2) RPBA, the statement of the grounds of appeal must contain a party's complete case.[] 

In the present case the objection of lack of inventive step on the basis of document E5 in combination with document E10 was submitted for the first time during the appeal proceedings at the oral proceedings before the board. Hence this objection was submitted after the statement of the grounds of appeal and is therefore an amendment to the appellant's case within the meaning of Article 13(1) and (3) RPBA. Consequently, the admission of this objection is at the board's discretion.

3.1.3 The appellant argued that it did not advance the objection earlier because this could have been considered by the board as an implicit concession by the appellant that the subject-matter of feature (A) was not disclosed in document E5 thereby weakening the objection of lack of novelty over E5.

The board does not find this argument convincing. The appellant did in fact argue in the statement of the grounds of appeal that the subject-matter of granted claim 1 lacked inventive step in relation to the combination of documents E5 and E3. Since the appellant evidently did not consider that the lack of novelty objection was weakened by the submission of this inventive step objection, the board does not see any reason why the other objection of lack of inventive step over documents E5 and E10 could not have been advanced at that stage as well.

In any case, since the novelty objection was explicitly raised and argued by the appellant, it would have been manifestly unreasonable by the board to assume any hypo­thetical implicit concession as speculated by the appellant.

[...] By contrast, if the new objection were admitted into the proceedings, complex discussions might well ensue, e. g. in relation to the above questions and the proprietor might find that it cannot properly argue its case within the limited time available at the oral proceedings. Hence, according to the board's assessment the proprietor cannot [reasonably] be expected to deal with the new objection during the scheduled oral proceedings.

 3.1.5 In view of the above considerations, exercising its discretion under Article 13(1) and (3) RPBA, the board did not admit the new objection of lack of inventive step on the basis of document E5 in combination with document E10 into the proceedings.

T 0988/14 - Not waiting for the Board

Key points

• In this case, the opponents requested to present their arguments for inventive step during the oral proceedings before the Board, after a finding would have been announced on novelty of the claim over D5, the document also to be used as closest prior art. The proprietor had already defended  novelty of the claim over D5 with its Statement of response.
• The Board does not admit the inventive step attack, as being late filed. The Board does not assess prima facie relevance of the new argument.
• The Board: " The request of submitting a line of attack on inventive step starting from D5 and combining it with D6, not only constitutes a substantial amendment to the Opponent's case, which accordingly is only admissible at the Board's discretion pursuant to Article 13(1) RPBA, but also constitutes an unjustified belated response to the Patentee's arguments on novelty in respect of D5. In particular, it is not justified to wait for the Board to come to a conclusion on novelty, [] for amending the Opponent's case." 

T 0988/14 - link

Reasons for the Decision

8.1 The Opponent then requested that a new line of attack on inventive step be discussed, based on the combination of documents D5 and D6.

The Board, after having heard the respective arguments of the parties, in particular after discussion of the patent proprietor's objection not to admit the new line of attack because filed late, decided to exercise its discretionary power according to Article 13(1) RPBA (Rules of Procedure of the Boards of Appeal) not to admit the Opponent's new line of attack on inventive step against claim 1 of auxiliary request 5 based on D5 and D6.

8.2 It is firstly noted that auxiliary requests 4 and 5 were already submitted during opposition proceedings and D5 was already submitted with the notice of opposition. In opposition proceedings, however, the Opponent never relied on D5 to attack novelty of the claimed subject-matter, or as the starting point for an attack on inventive step. In fact, the objection of lack of novelty of claim 1 of auxiliary request 4 (this claim being, as stated above, identical to claim 1 of auxiliary request 5) over D5 was only submitted with the Opponent's statement of grounds of appeal. In its reply thereto, the Patentee submitted related arguments on novelty over D5. The Opponent, however, did not submit in response any arguments in writing, in case D5 would not be prejudicial to the novelty of the subject-matter of claim 1, but requested to submit its case on inventive step starting from D5, and combining it with D6, only during the oral proceedings, after the Chairman had ascertained that everything in respect of novelty and inventive step of claim 1 had been said and after the Board had come to a conclusion on novelty over D5. 

Under these circumstances, the request of submitting a line of attack on inventive step starting from D5 and combining it with D6, not only constitutes a substantial amendment to the Opponent's case, which accordingly is only admissible at the Board's discretion pursuant to Article 13(1) RPBA, but also constitutes an unjustified belated response to the Patentee's arguments on novelty in respect of D5. In particular, it is not justified to wait for the Board to come to a conclusion on novelty, based exclusively on the Patentee's arguments that were already presented in writing and thoroughly discussed, for amending the Opponent's case. This rather amounts in finding a belated way of tackling with the conclusion of the Board.

T 2077/13 - Late unsubstantiated request

Key points

• The proprietor filed a new request in the written submission, together with an indication of the basis. The request correspondend to an auxiliary request already filed in the opposition proceedings and dealt with in the contested decision. The proprietor did not give any reasoning as to why the respective findings in the decision under appeal should be reversed or amended.
• The Board considers the request to be not substantiated. The argument that the opponent could not be surprised by the request, because it had been filed before, was not accepted.
• " However, filing this request that was previously known to the parties at a late stage of the appeal proceedings does not exempt the appellant from its obligation to provide at least some substantiation with regard to the allowability of this request, in particular since this request was found not allowable by the opposition division. "

EP T 2077/13 -  link

Reasons for the Decision

2.1 Auxiliary request 1

2.1.1 Auxiliary request 1 was filed as auxiliary request 2 with the appellant's letter dated 14 February 2017, in response to the summons to oral proceedings pursuant to Rule 115(1) EPC. It corresponds to auxiliary request 2 already filed in opposition proceedings and dealt with in the contested decision. According to the contested decision, the subject-matter of this request was still lacking an inventive step, since all the parameters of the polymers (A) and (B) according to claim 1 remained within the generic teaching of D3 so that the skilled person would be prompted to choose them.

In its letter dated 14 February 2017, the applicant only stated that claim 1 of auxiliary request 2 was a combination of claims 1 to 3 as granted. The letter contained neither a justification for the late filing of this request more than three years after the statement of grounds of appeal received on 28 September 2013, nor any reasoning as to why the respective findings in the decision under appeal should be reversed or amended.

The present auxiliary request 1 is therefore to be regarded as belated and as not being substantiated.

T 2602/12 - Full case should be in notice of opposition

Key points

• The opponent raised a new inventive step attack during the oral proceedings against an embodiment previously not attacked for lack of inventive step. The Board does not admit this argument under Article 13(1) RPBA.
• The Board:" Article 99(1) and Rule 76(c) EPC require that as a general rule an opponent's case against an opposed patent should be set out fully and completely in the notice of opposition, and should not be presented and developed piecemeal. " 

EPO T 2602/12 -  link

5. Inventive step

5.1 In the oral proceedings before the Board, the Respondent [opponent] objected for the first time in opposition-appeal proceedings to the inventiveness of the subject-matter of the present main request, namely to the embodiment of the method comprising process step (i) according to granted claim 1. In the communication of the Board accompanying the summons to oral proceedings (see point VI above), the Board expressly indicated that the inventiveness of the method comprising process step (i) had not been contested.

5.2 Article 99(1) and Rule 76(c) EPC require that as a general rule an opponent's case against an opposed patent should be set out fully and completely in the notice of opposition, and should not be presented and developed piecemeal. In addition, according to Article 12(2) RPBA, the statement of grounds of appeal and reply shall contain a party's complete case and should specify expressly all the facts, arguments and evidence relied on. Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion (Article 13(1) RPBA).

5.3 In the present case, prior to the oral proceedings before the Board, the Respondent had never raised any objection under Article 56 EPC to the subject-matter of the present main request, either before the Opposition Division or before the Board, said subject-matter being an embodiment of granted claim 1 and being comprised in claim 1 of every request ever on file in this case. Allowing the Respondent to raise an inventive step argument against an embodiment of the method never previously attacked under Article 56 EPC at this late stage of the proceedings would raise issues which the Board and the Appellant could not reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA).

5.4 As reason for this late submission, the Respondent argued that until the oral proceedings before the Board, it had been sufficient to attack the methods comprising process steps (ii) or (iii) in order to destroy the patent.

However, together with its statement of grounds of appeal (see point V above), the Appellant filed inter alia auxiliary requests 4 to 7, wherein the subject-matter of claim 1 of each request was restricted to a method comprising process step (i) according to granted claim 1, such that at the latest at this stage of the proceedings, the Respondent could, and should have attacked this subject-matter under Article 56 EPC, had it so wished.

5.5 Thus, under the present circumstances, the Board exercises its discretion not to admit the late filed argument into the appeal proceedings.

5.6 In view of the prior art cited in these proceedings, the Board sees no reason to raise its own objections under Article 114(1) EPC against the inventive step of the claimed subject-matter, such that the patent may be maintained in this amended form.

T 2091/12 - Fresh grounds: novelty

Key points

• The opponent-appellant had raised a lack of novelty objection based on prior use for the first time in appeal. This is a fresh ground and is not admitted under G 7/95. Lack of inventive step based on the same prior use is not admitted, under article 13(3) RPBA, because opponent had argued it for the first time in his written submissions after the summons.

T 2091/12 - link

Reasons for the Decision

1. Fresh ground for opposition (lack of novelty)

1.1 According to the headnote of G 7/95, OJ EPO 1996, 649, "In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1), 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee".

1.2 In its statement of grounds of appeal the appellant raised for the first time in the present opposition-appeal proceedings a lack of novelty objection based on alleged prior uses and filed evidence therefor.

1.3 The respondent explicitly requested that the above-mentioned fresh ground for opposition not be introduced into the appeal proceedings.

1.4 Given that according to G 7/95, supra, the board has no power to examine the above-mentioned fresh ground for opposition without the patent proprietor's agreement, the board does not admit the appellant's lack of novelty objection into the appeal proceedings.

T 1890/13 - In time but not admitted

Key points

• D28 was filed with the Notice of opposition, but is not admitted into the appeal proceedings.
• In response to the summons before the Board, the appellant had based a new line of argument on D28. "Hence, this new line of argument based on D28 was submitted after the appellant had filed its statement setting out the grounds of appeal and after the board had arranged oral proceedings, i.e. at a very late stage in the overall proceedings. Therefore, the question of admitting the substantiated document D28 into the appeal proceedings is subject to Article 13(1) and (3) RPBA in the present case." 

T 1890/13 - link

4. Novelty and inventive step (Articles 54 and 56 EPC)

At the oral proceedings before the board, the appellant did not challenge the novelty of the opposed patent's independent claims (Article 54 EPC). For the purpose of attacking inventive step, the appellant relied essentially on three prior-art documents, namely D28, D19 and D29. Since the appellant first requested that D28 be introduced into the appeal proceedings, this issue was discussed and decided first.

4.1 Admission of D28 as substantiated into the appeal proceedings

4.1.1 Document D28 was initially filed with the notice of opposition. Thus, it was filed in due time within the meaning of Article 114(2) EPC. However, it was discussed neither during the oral proceedings before the opposition division nor in the impugned decision.

4.1.2 As regards appeal proceedings, Article 12(2) RPBA clearly states that the statement setting out the grounds of appeal or the corresponding reply shall contain a party's complete case, and in particular should specify expressly all the facts, arguments and evidence relied on.

4.1.3 Concerning substantiation of the filing of D28, the statement setting out the grounds of opposition made the following reference to it (cf. page 11, second paragraph, third sentence; emphasis added by the board):

"Documents D27, D28 and D29 provide specific proposals for consideration. D27 and D28 develop the D23 and D24 approaches respectively ...",

while the statement setting out the grounds of appeal (cf. page 6, last paragraph, third sentence; emphasis added by the board) includes the following statement:

"D19 provides a worked-out scheme for managing key refresh in transitions ... and discusses a number of alternative approaches for providing nonce or counter (as noted in D28, a counter is merely a specific example of a nonce) data to achieve key refresh."

The board concurs with the respondent that this kind of incidental citation of D28 within a line of argument in support of lack of patentability amounts to mentioning a prior-art document merely as background information for standardisation developments, but fails to deliver any information as to whether it is intended to be used, for example, as a starting point for attacking inventive step or as evidence of common general knowledge or anything else. Moreover, no specific passage of D28 had been cited in the written procedure. Thus, D28 remained unsubstantiated throughout the entire written proceedings.

It was only at the oral proceedings before the board that the appellant argued for the very first time that D28 [] was extremely relevant for the assessment of inventive step, since it demonstrated on page 2, first paragraph, that a number used only once, i.e. "NonceUE", could indeed be derived from a counter, i.e. "CountNASint" here. Hence, this new line of argument based on D28 was submitted after the appellant had filed its statement setting out the grounds of appeal and after the board had arranged oral proceedings, i.e. at a very late stage in the overall proceedings. Therefore, the question of admitting the substantiated document D28 into the appeal proceedings is subject to Article 13(1) and (3) RPBA in the present case.

4.1.4 In the light of the above and in accordance with the respondent's request, the board decided to exercise its discretionary power to refuse the appellant's request that D28 be introduced into the appeal proceedings under Article 13(1) RPBA, for the following reasons:

- the late substantiation of D28 was not an appropriate and immediate reaction to unforeseeable developments in the proceedings which did not lie in the responsibility of the appellant, rather it was submitted by the appellant entirely of its own volition;

- the teaching of D28 was not prima facie more relevant than the other prior-art documents on file or highly likely to prejudice the maintenance of the opposed patent, since the use of a counter for NAS integrity protection, i.e. CountNASint, in no way corresponds to a sequence number associated with uplink transmissions of NAS service request messages as claimed;

- admitting into the appeal proceedings such a new line of argument based on D28 would run counter to the principle of procedural economy and fairness.

T 0416/12 - Don't wait for the Board

Key points

• The Board does not admit auxiliary requests filed one month before the oral proceedings and after receipt of the preliminary opinion. 
• The Board summarizes established case law: "  unless good reasons exist for filing amendments so far into the procedure - this may be the case when amendments are occasioned by developments during the proceedings - [such requests] are only admitted at such a late stage if they are clearly or obviously allowable []. This means that it must be immediately apparent to the Board, with little or no investigative effort on its part, that amendments successfully address the issues raised without giving rise to new ones [].
• "  Finally, the Board is unconvinced that the overall duration of the opposition proceedings (currently 10 years) would justify the late submission of requests by the respondent in appeal, and that not admitting them would therefore represent a violation of their right to be heard. To the contrary, as apparent from the preceding section, the respondent has had almost 4 years to submit these requests and supporting arguments but chose not do so." 

T 0416/12 - link

Reasons for the Decision

3. Auxiliary requests - admissibility

3.1 According to Article 12 (2) of the Rules of Procedure of the Boards of Appeal (RPBA) "the statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on."

Thus, in accordance with the need for procedural economy and a fair proceedings, the underlying principle is one of early and complete presentation of the parties' case, as opposed to the piecemeal and tardy introduction of, amongst others, the arguments relied on, see Case Law of the Boards of Appeal, 7th edition 2013 (CLBA) IV.C.1.4.1 c), in particular T0951/91, reasons point 5.4.

3.2 In the present case, the first and second auxiliary requests were filed with letter of 16 March [read: May] 2016. They were thus filed after filing the reply to the grounds of appeal and after oral proceedings had been arranged [and after the preliminary opinion of the Board of 22 March, the oral proceedings were held on 14 June 2016]. Consequently, they constitute amendments to the respondent's case in the sense of Article 13 of the Rules of Procedure of the Boards of Appeal (RPBA). Under paragraph (1) of that article the Board has discretion in admitting such amendments. It shall exercise that discretion "in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy". Furthermore, under paragraph (3) of the article, "amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

T 1613/13 - Reintroducing requests

Key points

• " The request of the appellant during the oral proceedings to reinstate one of the requests filed with the statement of grounds of appeal, after these had been replaced by the new requests [] amounts, in terms of procedure, to the very late filing of a new request. 

• "There is no legal basis which would justify the non-admissibility of a request merely because it has been replaced by another. The board has a discretion to assess whether or not the withdrawal should be considered definitive, and whether the attempt to reintroduce the withdrawn request was justified or a misuse of proceedings." 

T 1613/13 - link

Reasons for the Decision

1. Admissibility of the request

1.1 The request of the appellant during the oral proceedings to reinstate one of the requests filed with the statement of grounds of appeal, after these had been replaced by the new requests (filed with letter of 11 February 2016) amounts, in terms of procedure, to the very late filing of a new request. The respondent contended that the appeal proceedings should be closed immediately and that the appeal be dismissed, since the board had not admitted the requests replacing those filed with the statement of grounds. According to the respondent there were no more requests on file, and no possibility for the board to allow the appellant to revert to a withdrawn request.

T 0732/11 - Tactical considerations

Key points

• In this examination appeal, a new sole request was filed during the oral proceedings (after the Board had indicated its opinion about the main request). The Board does not admit it into the proceedings.
" The only reason indicated by the appellant's representative as to why this new request was nonetheless only filed during the oral proceedings was that the appellant had considered that they would be able to convince the board that the previous request met the requirements of Article 123(2) EPC, and on this basis had decided not to file any amendments before hearing the board's opinion on this point. Such tactical considerations cannot however justify ignoring the explicit instructions of the board [] "

T 0732/11 - link

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of request filed during oral proceedings

2.1 The appellant's sole request was filed during the oral proceedings before the board, after the board had given its opinion that the previous request contravened Article 123(2) EPC. The reasons for that opinion had already been presented to the appellant in the board's communication of 15 January 2016. The final paragraph of that communication stated that "the board should not be taken by surprise by ... new requests at the oral proceedings", and that the appellant "may file written submissions in preparation for the oral proceedings up to one month before the date scheduled for the oral proceedings" (emphasis in original).

2.2 The only reason indicated by the appellant's representative as to why this new request was nonetheless only filed during the oral proceedings was that the appellant had considered that they would be able to convince the board that the previous request met the requirements of Article 123(2) EPC, and on this basis had decided not to file any amendments before hearing the board's opinion on this point. Such tactical considerations cannot however justify ignoring the explicit instructions of the board, which instructions reflect the provisions of Article 13(1) and (3) of the Rules of Procedure of the Boards of Appeal (RPBA). Moreover, even if it were considered acceptable to defer filing such requests in this manner, it would nonetheless have been possible (and indeed incumbent on the appellant) to have prepared them in advance of the oral proceedings, rather than obliging the board to interrupt the oral proceedings so that this could be done. Thus, this reason alone cannot justify the admission of this request into the proceedings at such a late stage.

2.3 Two further factors speak against the admissibility of the request, namely:

- Claim 1 of the request differs from that of the previous request (that filed with letter of 12 August 2010) by the deletion of the features corresponding to the original dependent claim 24. Those features had been introduced into the independent claims already with the then applicant's reply of 13 January 2009 to the first communication under Article 94(3) EPC, and had been maintained in the claims since then. Their deletion thus represents a significant change in direction of the appellant's case.

Even though the modified request addresses the objection under Article 123(2) EPC as raised in section 1.1 of the board's communication, it makes no attempt to address the objections of lack of clarity raised in section 2.2, second sentence of that communication. Moreover, since the amendment consists in the deletion of features from the claim, it also could not contribute to addressing the objection of lack of inventive step which was the basis of the decision under appeal. Indeed, the resultant broadening of the scope of the claim might even result in further prior art becoming relevant for the assessment of inventive step. Thus this request prima facie does not meet the requirement established in the case law of the Boards of Appeal that a request filed only at such a late stage of the procedure should be clearly allowable.

2.4 The board therefore, exercising its discretion under Article 13(1) and (3) RPBA, decided to not admit this request into the proceedings.

3. Request for remittal

The appellant requested that if the (main) request were not allowed, the case should be remitted to the department of first instance for further prosecution, in particular to give the examining division the opportunity to decide on the objections under Articles 123(2) and 84 EPC raised by the board. The board however sees itself as being fully in a position to exercise its discretion under Article 111(1) EPC in such a way as to decide on the formal matters discussed during the oral proceedings. The appellant's comment concerning reformatio in peius is not relevant in this context, since the decision under appeal was to refuse the application, so that a decision not to remit the case would not result in any worsening of the position of the appellant, merely a confirmation of that position. The board therefore decided not to remit the case to the department of first instance.

4. Since the appellant's sole request was not admitted into the proceedings, and since the case is not to be remitted to the department of first instance, the appeal has to be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 0412/12 - Inserting an auxiliary request

Key points

• After Auxiliary Request 4 had been deemed allowable by the Board, the Patentee submitted an " Auxiliary Request 0" (ranked between the rejected Main Request and the rejected first Auxiliary Request). The Board is not amused and does not admit the request into the proceedings. 

T 0412/12 - link

Entscheidungsgründe

1. Die Beschwerde ist zulässig.

2. Hauptantrag: Änderungen

2.11 Die in Anspruch 1 des Hauptantrags durchgeführte Änderung von ursprünglich "wenigstens einer" in "wenigstens zwei" weitere (größere) Öffnungen geht daher über den Inhalt der Anmeldung in der ursprünglich eingereichten Fassung hinaus, entgegen den Erfordernissen des Artikels 123(2) EPÜ.

3. Hilfsanträge 1 bis 3: Änderungen

Auch der Gegenstand des Anspruchs 1 der Hilfsanträge 1 bis 3 schreibt "wenigstens zwei" weitere (größere) Öffnungen im Stellelement vor. Da in Anspruch 1 der Hilfsanträge 1 bis 3 zumindest das Merkmal, wonach zwei Öffnungen des Stellelements gegenüberliegend angeordnet sind, nicht enthalten ist, können auch die Hilfsanträge 1 bis 3 nicht die Erfordernisse des Artikels 123(2) EPÜ erfüllen, siehe oben zum Hauptantrag.

4. Hilfsantrag 4: Änderungen

4.1 Hilfsantrag 4 entspricht der von der Einspruchsabteilung aufrechterhaltenen Fassung. Anspruch 1 des Hilfsantrags 4 beruht auf den ursprünglichen Ansprüchen 1 bis 6 und 8. Die Beschreibung wurde entsprechend angepasst.

[...]

Der Gegenstand des Anspruchs 1 des Hilfsantrags 4 erfüllt daher die Erfordernisse des Artikels 123(2) EPÜ.

9. Hilfsantrag 0: Zulässigkeit

9.1 Die nach Auffassung der Kammer unzulässige Erweiterung in Hinblick auf die Mengenangabe "wenigstens zweier weiterer" in Anspruch 1 der Haupt- und Hilfsanträge 1 bis 3 sei nach Ansicht der Patentinhaberin Beschwerdeführerin für sie überraschend gewesen. Als Reaktion habe sie deshalb nach abgeschlossener Diskussion der geltenden Haupt- und Hilfsanträge 1 bis 3 angekündigt, einen neuen Hilfsantrag einreichen zu wollen. Der nach Diskussion und Beratung zu Hilfsantrag 4 schließlich als Hilfsantrag 0 neu vorgelegte Hilfsantrag solle rangmäßig zwischen Haupt- und Hilfsantrag 1 berücksichtigt werden. Im Hilfsantrag 0 sei im Kennzeichen des Anspruchs 1 des bisherigen Hauptantrags die Formulierung "wenigstens zweier weiterer Öffnungen" durch "weiterer Öffnungen" ersetzt worden. Das übrige Kennzeichen sei entsprechend angepasst worden. Dadurch werde die untere Grenze, also genau "zwei weitere Öffnungen", nicht mehr beansprucht.

T 0112/13 - New arguments

T 0112/13 - link

Key points

• The Board expressly decides that a more detailed and expanded line of argument presented during the oral proceedings is admitted under Article 13(1) RPBA, because it is an objection of lack of inventive step based on the same documents as presented b the opponent in the statement of grounds. 
• This confirms that even new arguments can be held inadmissible. 

Reasons for the Decision

1. Admissibility of the line of argument starting from D4 and applying the teaching of D2 in respect of inventive step, as presented during the oral proceedings - Article 13(1) and (3) RPBA

1.1 In the sixth and seventh paragraphs of page 6 of its statement setting out the grounds of appeal the appellant, in support of its objection as to lack of inventive step, presented a (short) line of argument starting from D4 and applying the teaching of D2.

1.2 The respondent commented on this line of argument in its reply to the statement of grounds of appeal, see page 4, last paragraph, to page 5, second paragraph.

1.3 Furthermore, the board in point 4.2.4 of its communication pursuant to Article 15(1) RPBA gave a provisional opinion on the inventive step of claim 1, starting from D4 and applying the teaching of D2.

1.4 During the oral proceedings the appellant submitted a detailed and expanded line of argument starting from D4 and applying the teaching of D2.

1.5 Said submissions have been contested by the respondent as being inadmissible under Article 13(1) RPBA, since they were presented only during the oral proceedings.

1.6 In the view of the board these submissions do not alter the legal and factual framework of the proceedings, given that said detailed and expanded line of argument is essentially based on the combination of documents D4 and D2, as is the line of argument which was already presented in the statement setting out the grounds of appeal, see point 1.1 above, and does not include any freshly filed evidence. Thus, by submitting the detailed and expanded line of argument at the oral proceedings the appellant did not substantially amend its case as set out in its statement setting out the grounds of appeal.

1.7 For the above-mentioned reasons, the Board decided under its discretionary power (Article 13(1) RPBA) to admit into the proceedings the appellant's detailed and expanded line of argument presented during the oral proceedings. The board further saw no reason to apply Article 13(3) RPBA.

T 1952/10 - Non-searched feature in aux. req.

T 1952/10
For the decision, click here. [C]

Key points

• In auxiliary requests 2 and 3, which were filed after oral proceedings were arranged, independent claim 1 has been amended by introducing a feature from the description.
• Board: "This feature was not present in the claims as originally filed [...] and there is nothing to suggest that the European search would have covered this feature. Consequently, the Board could not consider this amendment in substance for novelty and inventive step without postponing/adjourning the oral proceedings to allow for a further search to be carried out. According to Article 13(3) RPBA an amendment to a party's case shall not be admitted if that is the case. Hence, the Board decided not to admit the amendments according to auxiliary requests 2 and 3."

Reasons for the Decision

1. Alleged procedural violation (right to be heard)

1.1 In the first instance proceedings, the examining division set out in the annex to the summons to oral proceedings (communication dated 19 January 2010), that in claim 1 filed with the letter dated 21 May 2009, the feature according to which the light source was attached to the box via an inductive connection added fresh subject-matter (see point 2) and that all of the other features of claim 1 were known from each of the documents D1, D2 and D3 (see point 3).

1.2 One month before the date scheduled for oral proceedings (see letter dated 15 March 2010) the applicants filed amended claims, with claim 1 comprising the sole characterising feature that "the electricity is obtainable via an inductive connection".

1.3 In a communication dated 31 March 2010, which according to the appellants was received on 1 April 2010, i.e. more than 2 weeks before the oral proceedings, the examining division set out the grounds which would later come to be used in the contested decision. The only points that the examining division raised for the first time in that communication concerned the feature that "the electricity is obtainable via an inductive connection". In particular, the examining division set out that this feature:

- was disclosed in document D2 by the passage of column 4, lines 2 to 5, according to which electricity may be provided by "electrical transformers", in other words via inductive connection; and

- "does not involve an inventive step since the skilled person will realise that whenever wired connections are referred to they may where appropriate, be replaced by wire free connections such as induction connection".

1.4 These two points were raised in response to amendments filed by the applicants only one month before the proceedings and were based entirely on documents that were already on the file. The Board considers that they are of such limited complexity that it should have presented no difficulty to react to them in the two weeks remaining before the scheduled oral proceedings, or indeed at the oral proceedings. The Board concludes that the opportunity to address the objections was sufficient and that in basing the refusal on these objections the examining division did not commit a procedural violation. Hence, the appellants' arguments on this point cannot provide a reason for remitting the case to the department of first instance for further prosecution.

[...]

4. Auxiliary Requests 2 and 3

4.1 According to Article 13(3) of the Rules of Procedure of the Boards of Appeal (RPBA), "Amendments [to a party's case] sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

4.2 In auxiliary requests 2 and 3, which were filed after oral proceedings were arranged, independent claim 1 has been amended by introducing the feature that "the light source (20) automatically disconnects from the electricity connection on separation of the lid (14') from the electrical junction box (12')".

4.3 This feature was not present in the claims as originally filed (see EP 1 909 367 A2) and there is nothing to suggest that the European search would have covered this feature. Consequently, the Board could not consider this amendment in substance for novelty and inventive step without postponing/adjourning the oral proceedings to allow for a further search to be carried out. According to Article 13(3) RPBA an amendment to a party's case shall not be admitted if that is the case. Hence, the Board decided not to admit the amendments according to auxiliary requests 2 and 3.

5. Conclusion

In the absence of any allowable request the Board had to dismiss the appeal.

T 1459/11 - Written submissions

T 1459/11
For the decision, click here. [C] (online  19.10.2015) 

Headnote

The purpose of the communication of a board of appeal pursuant to Art. 15(1) RPBA is to prepare the oral proceedings; it is not an invitation to the parties to make further submissions or to file further requests (See Reasons 3.1-3.3)

Reasons for the Decision

3. First auxiliary request

3.1 Admissibility

According to the appellant this request should be admitted to the proceedings because it had been filed "in response" to the communication pursuant to Art. 15 RPBA issued by the Board in preparation of the oral proceedings.

3.2 According to Art. 15(1) RPBA the purpose of the communication is to draw attention to matters "which seem to be of special significance....or containing other observations that may help concentration on essentials during the oral proceedings" (emphasis of the Board).

The purpose of the communication is thus - explicitly -to establish the framework of the oral proceedings. The communication does not - explicitly or implicitly - represent an invitation or opportunity to file further written submissions or to shift the focus of the case to be heard at oral proceedings, it being recalled that the terms of the appeal are determined by the statement of grounds of the appeal and the reply thereto (Art. 12(2) RPBA).

3.3 Consequently there is no legal basis in either the EPC or the RPBA for the filing of a "response" to a communication pursuant to Art. 15 RPBA. This means that a Board is under no obligation to take such a "response" into account. Furthermore in view of the purpose of the communication pursuant to Art. 15 RPBA the argument that a "response" to the communication cannot be regarded as late filed, is moot. Any submissions - either arguments or requests - contained in such a "response" that go beyond those contained in the statement of grounds of appeal or the reply thereto may constitute an amendment to the case presented, and it is a matter for the discretion of the Board whether such submissions are to be taken into account (Art. 13(1) RPBA).