Key points
- This is a rather straightforward opposition appeal case, except that it is (still) one of the first published decisions to apply the new 'first level of convergence' of the RPBA 2020.
- The statement of grounds of the opponent contained new objections. The statement of grounds was filed 26.02.2020 so Art. 12 RPBA 2020 applies in its entirety.
- " The objections raised in items 4, 5.3 to 5.7, 6.1 and 6.2 in the statement setting out the grounds of appeal are not directed to facts, objections, arguments and evidence on which the decision under appeal was based, as required by Article Article 12(2) RPBA 2020. Moreover, it has neither been submitted nor demonstrated that these objections were admissibly raised and maintained in the proceedings before the opposition division. The new objections in appeal thus constitute amendments of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, which may be admitted only at the discretion of the Board, whereby reasons should be provided for submitting the amendments in appeal (Article 12(4) 2020, second paragraph)."
- " The appellant [opponent] argued in the statement setting out the grounds of appeal (section 1) that it had been impossible for them to react appropriately to the filing of the first auxiliary request in opposition (now the main request) since that request had not been filed until the day before the date set under Rule 116(1) EPC."
- " The Board observes that the request was filed on 18 July 2019 and thus two months in advance of the oral proceedings, which took place before the opposition division on 19 September 2019."
- As a comment, it is not clear to me if this means that the opponent should have filed a letter after the Rule 116 date before the OD. Point 1.4.3. of the decision suggest that the attacks should have been presented during the oral proceedings.
- " Further, as indicated below, the amendments were either taken from granted claims, rather than from the description (see point 1.4.1), or the possibility of raising the objections newly raised in appeal was apparently specifically addressed already during the oral proceedings before the opposition division (see point 1.4.2). Thus, the Board finds that the appellant had reasons to raise those objections already during opposition proceedings."
- " It is apparent that the objections of lack of sufficiency of disclosure raised by the appellant [] concern features and combination of features that were already present in the granted claims."
- " Under these circumstances the new objections of lack of sufficiency of disclosure raised in appeal could have been raised before the opposition division in view of the corresponding granted claims. In view of that[,] the date at which the first auxiliary request was filed in the first instance proceedings does not justify the filing of these objections for the first time in the appeal procedure."
- So it is important to attack all claims as granted and perhaps their combinations as well, already before the OD.
- " As to the other objections raised in appeal[] it is apparent that at the oral proceedings before the opposition division the opponent did not object to the then first auxiliary request (present main request) under Rule 80 or Article 84 EPC [] and did not maintain their novelty objection against claim 1 of the first auxiliary request over document D10 [] while having the possibility to do so."
- "The Board therefore does not see any reason why it was not possible for the appellant to raise the objections at the beginning of the opposition proceedings or at the latest at the oral proceedings before the opposition division."
- As a comment, the new objections could also have been held inadmissible under Art.12(6)(s.2), as it seems that the Board in effect concludes that the new objections should have been filed before the OD (though the Board does not say so). As a further comment, I'm surprised that the Board does not expressly apply the factors specified in the Art.12(4)(s.5): " The Board shall exercise its discretion in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (iii) and the need for procedural economy." [roman numerals added]. The fifth sentence uses "shall", not "may" .
- " In view of the above, the Board finds it appropriate to make use of its discretion pursuant to Article 12(4), first paragraph, second sentence, RPBA 2020 by not admitting into the proceedings the objections"
EPO
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/2022/09/t-302419-new-attacks-in-appeal.html
