Key points
- The opponent argues that the claim at issue is not inventive over D10. The Board decides that the claim is inventive over D10.
- With the SoG, the opponent had also submitted an attack using D2 as the closest prior art.
- Admissibility of the attack is to be decided under Article 12(4) RPBA 2007.
- The attack "had initially been submitted with the notice of opposition at the outset of opposition proceedings. At that point in time, those objections were directed against the claims of the granted patent, which were the basis for the main request before the opposition division."
- According to Article 12(4) RPBA 2007, the board has the discretion to hold inadmissible inter alia facts which could have been presented in opposition proceedings. It is established case law that this provision also applies to facts (attacks) which were submitted and subsequently withdrawn during the first instance proceedings. Article 12(6)(s.2) RPBA 2020 uses "were no longer maintained".
- The AR was filed shortly before the hearing before the OD. The opponent did not comment in writing on it.
- Inventive step was discussed during the oral proceedings before the OD. "Thus, at the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments."
- "There then ensued a discussion starting only from D10 as closest prior art."
- "Specifically, the minutes (page 11, "12:30") state the following: "The parties having indicated that they have nothing more to add, the Chairman announces a break of 15 minutes to deliberate on the question of inventive step". Hence, the chair of the opposition division, having opened the discussion in relation to inventive step and having heard arguments from the appellant only in relation to D10 as closest prior art, subsequently confirmed with the parties whether there was anything further to add to their submissions. In the absence of any further submissions, it can only have been concluded that the parties had nothing to add. This in turn can only mean that the further objections that had previously been raised against the then main request, were not pursued or raised against the then first auxiliary request."
- It seems that the Board here identifies a waiver of the attack. Note, this waiver is based on an action of the opponent, namely, indicating that they had nothing more to add, in combination with the attack being on file. However, if the auxiliary request had significant claim amendments (for inventive step) compared to the claims as granted, it may also be a case of forfeiture, in the sense that the opponent failed to present the attack, instead of presenting the attack and then abandoning it.
- After the break, "oral proceedings were resumed, and the chair announced the conclusion that the first auxiliary request met the requirements of Article 56 EPC. At this point in the oral proceedings, it would still not have been too late for the appellant to have raised the further objections had it so desired, or at the very least, to have enquired with the opposition division as to whether said further objections had been taken into account in reaching its conclusion. However, the appellant remained silent."
- Practice point: if a conclusion is announced, the debate can be reopened. If a decision is announced, not.
- "In view of the above, there can be no doubt that the further objections were not pursued or raised against the then first auxiliary request during the opposition proceedings."
- "By not pursuing or raising these objections before the opposition division and introducing them for the first time before the board, the appellant effectively avoided a decision by the opposition division on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance."
- As a comment, Art. 12(4) RPBA 20007 speaks only of the power of the Board to hold such attacks inadmissible. Article 12(6)(s.2) RPBA 2020 likewise provides for an exception (i.e. admissibility) "unless the circumstances of the appeal case justify their admittance". For this exercise of discretion, it may matter whether the attack was waived or forfeited before the OD (cf. USA law, see here).
- The case is similar to T 1958/19, also in the outcome.
- See, however, also R 5/19, r.3.6, in translation: "The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part."
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/2022/11/t-217916-waiver-of-attack.html
