Key points
- This decision touches on a rather subtle point of waiver though more precisely, perhaps, forfeiture of objections (in the sense of the RPBA 2020, i.e. of attacks).
- The opponent presented new inventive step attacks with the Statement of grounds against AR-2 filed during the oral proceedings before the OD. The Board does not admit these attacks under Art. 12(4) RPBA, under the prong that they should have been filed earlier, which in turn raises the question if the opponent was reasonably expected to submit the attacks during the first instance proceedings. The opponent submitted some other attacks against AR-2 before the OD; the Board considered the merits of these attacks and found them not prejudicial to the claims at issue.
- The Board, in machine translation: “The then opponent and current appellant expressly did not deny the admissibility of the then auxiliary request 2 and the current main request and did not criticize its late submission at the oral hearing, so that this request was not a surprise and consequently the new objections do not constitute an appropriate response to a surprising submitted request”
- “At the end of the inventive step discussion, the chairman [of the OD] made sure that no party would like to comment further on the subject”, i.e. the chair of the OD enquired if the opponent wished to present further inventive step attacks.
- The question here is: what exactly is the link between these observations of the Board, and the phrase “should have been submitted ... in the proceedings leading to the decision under appeal” in Art. 12(6)(s.2) RPBA 2020? Why exactly is it relevant that the opponent did not protest against the admissibility of AR-2?
- Possibly, by not protesting against the admissibility of AR-2, the opponent waived/forfeited the argument that it was not in a position to fully discuss inventive step of AR-2 during the oral proceedings before the OD. Possibly by indicating that it did not wish to present further attacks, when asked by the chair, the opponent waived/forfeited the argument that the course of the oral proceedings had prevented it from presenting the attacks during the oral proceedings.
- I use the terms ‘waiver’ and ‘forfeiture’ as in USA appellate procedure (link) "Forfeiture and waiver are two concepts that U.S. courts apply in determining whether reversible error has occurred. Waiver is the voluntary relinquishment, surrender or abandonment of some known right or privilege. Forfeiture is the act of losing or surrendering something as a penalty for a mistake or fault or failure to perform, etc.". Hence, forfeiture seems to apply to the present case.
EPO - T 2002/19
Link to the decision after the jump, as well as an extract of the decision text.
source http://justpatentlaw.blogspot.com/2022/01/t-200219-forfeiture-of-attacks.html
