Key points
Right to be heard
- Patentee argues that “Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard"
- The Board, in the headnote: “ the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings.”
- The Board explains this as follows: “ The right to be heard does not entail the right to an amendment. Amendments are regulated by Article 123(1) EPC, the Implementing Regulations (e.g. Rule 80, Rule 116 EPC, Rule 137(3) EPC), and the RPBA during appeal. In this particular case, the Opposition Division had the discretion to admit, or not, the amendment, under Rule 116(2) EPC. That a new objection is raised, and that the amendment potentially responds to that objection, are factors to be considered in the exercise of this discretion, which the Opposition Division did; it does not give rise to a right to an amendment in response to that new objection emanating from the right to be heard.”
- And finally at r.29 “As noted above, in points 16 et seq., the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings. So the non-admittance of the requests as such cannot be a violation of the right to be heard.” emphasis added.
- As a comment, I strongly doubt that the headnote is correct where it implies that the right to be heard of Article 113(1) only entails the right to present comments on why a specific request should be admitted into the proceedings. If the OD does not admit a request only on the ground they want to finish oral proceedings early (the notorious alleged football match example can be found in Juve Rechtsmarkt 07/14, p.63), this is an abuse of discretion. However, it does not seem helpful on a theoretical level to analyse "abuse of discretion" without considering the party's rights involved. Infringement of a party's right and abuse of discretion seem two sides of the same coin.
- Obviously, with the proposed reasoning non-admittance of requests by the Board will no longer be a ground for a petition for review under Article 112a(2)(c) if the Board gave you an opportunity to present arguments why the request should be admitted, even if the Board then holds the request inadmissible in an arbitrary, capricious, or unreasonable way. We will have to see what the Enlarged Board makes of Art.112a(2)(c).
- The Board's remarks seem obiter because they first find that “the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.”
- As to admissibility of another request that was held inadmissible by the OD: “It also appears that the timing of the filing was very late (during the oral proceedings) and that the new claims were based not only on the granted claims, but contained new matter from the description. ... The Opposition Division exercised its discretion on the basis of these facts, which hold true and are pertinent to the exercise of discretion. The Board finds that the Opposition Division exercised its discretion in accordance with the right principles and in a reasonable way. The Board therefore has no reason to overturn this decision (see G 7/93 2.6”
T 1599/18 -
https://www.epo.org/law-practice/case-law-appeals/recent/t181599eu1.html
15. Hence claim 1 of this request lacks novelty over E2.
Auxiliary request 3
16. As with auxiliary request 1, the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.
17. The appellant argues that the objections under Article 123(2) EPC were only raised during oral proceedings before the Opposition Division, and that the proprietor should have had the opportunity to react by amendment. Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard" (letter of 21 April 2021, page 8).
source http://justpatentlaw.blogspot.com/2021/10/t-159918-i-right-to-be-heard.html
