Key points
- The preliminary opinion of the OD was, cautiously, that Art. 123(2) was met. During the oral proceedings, the OD changes of opinion. Must the OD admit a new auxiliary request filed during the oral proceedings in response to this change of opinion?
- The present Board states that "under Rule 116(2) EPC, requests filed after the final date set for making written submissions in preparation for oral proceedings can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent."
- However, the Board still does not overrule the OD's decision to hold the request inadmissible.
- "the board found that under the circumstances in hand the opposition division was entitled to exercise its discretion accorded by Article 123(1) in conjunction with Rule 81(3) EPC to disregard the auxiliary request at issue (see R 6/19, Reasons 6 to 11; T 966/17, Reasons 2.2.1; T 1213/19, Reasons 19).
- "It further found that the opposition division had exercised its discretion in accordance with the right principles, primarily the clear allowability criterion. The opposition division could not have been deprived of that discretion merely because it expressed a different opinion at the oral proceedings from that provisionally set out in the communication accompanying the summons (see also T 966/17, Reasons 2.4).
- "The opposition division's preliminary opinion discussed the added-matter objections raised by the opponents and clearly indicated that those objections were to be the subject of further discussion at the oral proceedings: ""
- "The preliminary conclusion that claim 1 does not add subject-matter (see points 1.3 and 1.5) is expressed in a careful manner ("Currently the opposition division is of the opinion that ..." and "... the opposition division is of the preliminary opinion that ...") and cannot be understood as if the opposition division thereby gave up its discretionary power to disregard submissions filed later."
- I suppose the argument of the opponent is not that the OD gave up its discretionary power, but that Rule 116(2) EPC takes away / limits the discretionary power.
- The opponent points out that the GL state that: "The ... opposition division has the discretion to disregard amendments filed after the date set under Rule 116(1) as being late-filed unless they have to be admitted because the subject of the proceedings has changed" and that "The following are examples of what would normally constitute a change of subject of the proceedings: ... the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent. .... In these examples, a request from the applicant or proprietor for a corresponding amendment cannot be rejected as being late-filed even if submitted after the date set under Rule 116(1). "
- My quotes are from the GL 2023, the decision states that the GL 2022 is cited therein but the text seems to be that of the GL 2023.
- The Board notes in passing that "the Guidelines applicable at the time the opposition division took its decision (version in force in November 2018) did not contain this particular example"
- More importantly, the Board reasons as follows: "the question of whether a change of opinion represents a change of subject of the proceedings remains crucial in the matter in hand. The board agrees that, in principle, it does change the subject of the proceedings, especially where the opposition division introduces a new objection at a relatively late stage. However, the cited passage of the Guidelines refers to examples that would normally constitute a change of subject of the proceedings. It therefore does not exclude the possibility that, under particular circumstances, a change from the preliminary opinion does not necessarily involve a change of subject of the proceedings. The board finds that in the case in hand, the content of the preliminary opinion, taken as a whole, is articulate and cannot be read in a manner limited to the conclusion in point 1.5 (that claim 1 does not add subject-matter), as the appellant has done. On the contrary, it should also be read in consideration of the discussion under point 1.3 (both referred to in points 40. and 40.1 above). The objection that the single-molecule sequencing process had no basis in the parent application had been raised by both opponents at the outset of the opposition proceedings - it was not introduced into the proceedings by the opposition division. The issue had been discussed at length in preparation for the oral proceedings, it had been considered an issue by the opposition division in the preliminary opinion (see point 1.3) and it was also sufficiently clear that it was a crucial one. The appellant [patentee] therefore could not have been surprised by the decision taken at the oral proceedings. It appears that the appellant [patentee] had indeed been notified of the grounds prejudicing the maintenance of the patent."
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/2023/06/t-121919-patentee-was-notified-of.html