Key points
- The Board in the translated headnote: “Neither Article 13(2) RPBA 2020 nor the explanatory notes thereto in CA/3/19 explain how to generally determine whether the circumstances are "extraordinary". However, the explanations of the RPBA 2020 cite as an example of such "extraordinary" circumstances the case where the Boad raised an objection for the first time in a notification. In this case, the changed basis of the appeal procedure justifies a changed submission. The question of whether, conversely, the basis of the appeal proceedings is also changed by changed submissions is therefore a possible criterion that can be used to assess the exceptional nature of the circumstances (point 6.3 of the reasons for the decision).”
- The point of contention is the admissibility of the patentee's response to an inventive step attack based of D1, the response being submitted after the summons for oral proceedings.
- The Board in translation: " In the present case, the Respondent's further submissions in its brief of October 26, 2021 refer to facts and evidence already in the proceedings and merely explain why, from the Respondent's point of view, the Appellant's objection raised in the statement of grounds of appeal was unconvincing."
- "In the event of an appeal by the opponents, it is up to the board to examine whether the appellant's objections are convincing, even if the patent proprietor has not submitted a corresponding argument. "
- This may be an important point.
- " In fact, in the present case, the board had explicitly stated in its communication pursuant to Article 15(1) RPBA 2020 (item 7.) that it would have to be discussed whether, starting from D1, the person skilled in the art would have arrived at the subject-matter of claim 1 without any inventive step.
- The amended submissions of the Respondent therefore do not lead to a change in the basis of the appeal proceedings.
- Furthermore, the Respondent's submissions help resolve the issue raised by the Board and are therefore not detrimental to procedural economy.
- In these circumstances, the Board exercised the discretion conferred by Article 13(2) RPBA to admit the Respondent's submission in the October 26, 2021 brief into the proceedings."
EPO T 0988/17 -
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/04/t-098817-exceptional-circumstances.html
