Key points
- Both the opponent and the patentee appeal.
- The OD found the claims of an auxiliary request to be allowable. Some further, lower-ranking, auxiliary requests were pending before the OD, but the OD did not arrive at them.
- Should the patentee comment on those lower-ranking auxiliary requests in its Statement of grounds (and, for that matter, resubmit or present them in appeal in the SoG)?
- The Board in this case finds that this is not necessary. It is sufficient (and necessary) if the patentee introduces those auxiliary requests in its appeal reply brief as respondent.
- The Board: "Not filing the main request already with its own grounds of appeal, but only in reply to the opponents' grounds of appeal, cannot be considered as the abandonment of this claim request. The main request was filed with the reply to the opponents' grounds of appeal and thus in compliance with Article 12(3) RPBA 2020, which explicitly stipulate that the statement of grounds of appeal and the reply are to contain a party's complete appeal case. "
- Note that auxiliary requests that are higher-ranking than the claims held allowable by the OD must be presented in appeal by the patentee with its SoG.
- Note that the opponent accordingly should file a rejoinder to the patentee's appeal reply brief setting out all its objections to all auxiliary requests presented in the patentee's appeal reply brief.
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/2023/01/t-110918-auxiliary-requests-and-sog.html
