T 2442/17 - If you need more time, you have to ask for it

Key points

The O/D decided to admit an auxiliary request filed during the oral proceedings. The opponent asks the Board to reverse this. The Board reviews whether the OD has not misused its discretion (that the Board is willing to consider the possibility of reversing a decision to admit a request is interesting of its own).
"The opponent also argued that the patent proprietor should have reacted before the oral proceedings since a lack of novelty objection in view of document D3 (DE 695 28 476 T2) had already been raised with the grounds of opposition."
"According to Rule 116(2) EPC the opposition division has the discretion to admit new documents, i.e. new amendments to the description, claims and drawings, filed after the final date for making written submissions fixed by the opposition division in the annex to the summons to oral proceedings."

Rule 116(2) in fact begins with a statement about the patentee being notified of the objections and being invited to submit amended claims. The Board, however, does not discuss that aspect of the provision.

The Board applies the deferential review of discretionary decisions as specified in G 7/93.
"The Board is of the opinion that the opposition division took into account the right criteria, since it considered the amendment to the claim to be suitable to overcome the objection of lack of novelty and also that the subject-matter of the claim was more restricted than that of claim 1 as granted"
"The opposition division also considered the amendment to be a reaction to the course of the proceedings, since in the annex to the summons to oral proceedings it had referred to the possible relevance of D3 without elaborating on the matter."
"The Board agrees with the opponent [] that an objection of lack of novelty had been raised with the notice of opposition with respect to D3. However, as argued by the patent proprietor, that objection was not fully substantiated, since it was not indicated why the load bearing assembly of D3 should be considered to be suitable for use in an elevator system []. The Board thus does not find fault in the opposition division's finding that the filing of auxiliary request 1 at the oral proceedings is to be seen as a reaction to the course of those proceedings.
"According to the minutes of the oral proceedings, see point 5 thereof, the opponent did not request an adjournment of the oral proceedings nor did it request additional time to prepare a new line of argumentation. It therefore appears that at that time the opponent considered itself able to deal with the amended situation without delay."