Key points
- "The respondent [opponent] argued that the opposition division correctly exercised its discretion in not admitting auxiliary request 2 (i.e. the current main request). The respondent submitted that the appellant had already filed 12 auxiliary requests prior to the oral proceedings before the opposition division. At the oral proceedings, two further auxiliary requests were filed, including auxiliary request 2, which corresponds to the present main request. No reasons were apparent as to why this auxiliary request could not have been filed earlier, especially since an objection made under Article 123(2) EPC to the term "stereochemical" in claim 1 as granted had already been raised in the notice of opposition. The appellant could and should have reacted to this objection by filing the current main request in a timely manner. When filing a request late, especially at the oral proceedings, only the prima facie allowability of the claims should be examined. The opposition division acted correctly in this regard, when it found that claim 1 did not comply with Article 123(2) EPC."
- "The board disagrees."
- "In order to decide whether the opposition division's discretionary decision not to admit into the proceedings what was then auxiliary request 2 (i.e. the current main request) suffered from an error, i.e. was based on a wrong principle, or was taken by applying the right principle in an unreasonable way, the file history of the present case needs to be considered. "
- "In applying this different criterion of prima facie allowability under Article 123(2) EPC, the opposition division reasoned that the feature of claim 1 expressing the ratio [aliphatic to aromatic compounds] was not prima facie allowable under Article 123(2) EPC."
- " However, this feature was already present in claim 1 as granted [] and in claim 1 of auxiliary request 1 as filed during the oral proceedings and admitted by the opposition division. More importantly, this feature had never been objected to before under Article 123(2) EPC, either by the respondent or by the opposition division. The respondent confirmed at the oral proceedings before the board that it had not objected to this feature prior to the oral proceedings before the opposition division, and then only when auxiliary request 2 (the current main request) was being considered"
- "the board acknowledges that prima facie allowability under Article 123(2) EPC of a late-filed amended claim request may be a valid criterion to be used by the opposition division when deciding on the admittance of this claim request []. However, using this criterion, to object for the first time at oral proceedings to a feature of the late-filed claim request that was already present in higher-ranking claim requests and had never been objected to before, not even when deciding on the allowability or admittance of those higher-ranking claim requests, goes against the principles of fairness and good faith."
- "the board has concluded that the opposition division, when deciding not to admit the current main request, used the available criteria in an unreasonable way. The opposition division's decision thus suffered from an error in the use of its discretion."
- It is not clear to me if the OD should have held the new attack inadmissible, according to the Board.
- " For these reasons, the board has decided to overturn the opposition division's decision on the non-admittance of what was then auxiliary request 2, and to admit the present main request into the appeal proceedings pursuant to Article 12(6) RPBA 2020."
- " the board has concluded that the respondent's sole objection under Article 123(2) EPC is not convincing. Therefore, the main request fulfils the requirements of Article 123(2) EPC. "
- "essential questions concerning the patentability of the claimed subject-matter have not yet been examined or decided upon by the opposition division. Hence, the board finds it appropriate to make use of its discretion under Article 111(1) EPC and to remit the case to the opposition division for further prosecution,"
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/2023/05/t-161720-fairness-trumps-prima-facie.html
