Key points
- The appellant/opponent complains that the OD had incorrectly admitted an auxiliary request that was filed by the proprietor by the deadline under Rule 116(2) EPC.
- "According to Rule 116(2) the patent proprietor (in opposition proceedings) may be invited to submit documents that meet the requirements of the Convention (i.e. amendment requests), by the date specified in Rule 116(1), second sentence. After that date the third and fourth paragraphs of Rule 116(1) EPC will apply mutatis mutandis : new requests filed after that date need not be considered unless admitted on the grounds that the subject of the proceedings has changed."
- " It is generally accepted that the purpose of Rule 116 is to prevent parties from seeking unjustified procedural advantages by abusive tactics in disregard of procedural economy and to the disadvantage of other parties, see CLBA, 10th edition 2022, III.C.6.3.1f. The rule is thus seen to serve fairness and transparency in the lead-up to the final deciding stage of the procedure."
- " One can debate whether a notification of the grounds prejudicing maintenance refers in opposition also (as it does in examination) to a summons or communication that notifies the division's provisional opinion; or that in the fourth sentence [of] Rule 116(1), which applies mutatis mutandis in opposition [*], a change of subject of the proceedings encompasses a subsequent reversal of a preliminary opinion that was notified in the summons or communication. "
- [*] - probably read: to auxiliary requests / claim amendments
- The fourth sentence of Rule 116(1) at issue: "New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."
- "T0688/16, reasons 2.1, saw it this way, reading Rule 116(2) as requiring a notification that grounds prejudiced maintenance before a division could decide not to consider a request, finding that this corresponded to the guidance provided in the Guidelines for Examination, E-III, 8.6. Accordingly, the proprietor must always be given an opportunity to submit amendments intended to overcome objections raised by the division that depart from a previously notified opinion. The Board tends to agree, adding that this does not mean that any amendment then submitted must be admitted."
- " The division will first need to establish whether amendments are indeed intended to overcome the objections, and do so in a way that is appropriate and proportionate to the circumstances. They thus still have discretion, see also T0966/17, but should exercise it differently from when deciding admission of amendments filed after the Rule 116 date that are not justified by a change of the subject of the proceedings."
- " The Board does not agree that offering the proprietor an opportunity to amend when confronted with a reversal in a previously positive provision opinion would be inherently unfair to an opponent as argued by the [opponent] Appellant. Firstly, for the proprietor revocation of the patent, if confirmed on appeal, is the end of the road; for an opponent even after appeal the possibility of national invalidity proceedings remains. Secondly, this depends very much on how the discretion is exercised and what criteria are applied. In the Board's view the criteria set out in the Guidelines cited above appear to strike a fair balance between the opposing interests of the parties and the overall interest of procedural economy. Naturally, the opponent must also be heard before any decision on admission is taken."
- As a comment, alternative case law could emphasize that the proprietor already has an opportunity to submit auxiliary requests with their first reply to the opposition.
- Turing to the case at hand: "As can be inferred from the minutes, see the section bridging pages 4 and 5, it must have become clear to the proprietor in the discussion of the previous (withdrawn) auxiliary request, how to fix the problem, namely by combining granted claims 1 and 9 as suggested by the opponent. They then did so in the next (present) auxiliary request that replaced the previous request which was not admitted. In the Board's view it would have been unreasonable and unequitable to then block them from such an attempt, which the division - in the light of the previous discussion - would have considered likely to succeed, at least at first glance, merely because they should not be allowed to row back from a previous attempt. That the division then did consider a criterion it needn't have makes no difference for the appellant, as the outcome would have been the same (admission) if they had not considered it. Had the outcome been different (non-admission), the proprietor might have had reason to argue improper exercise of discretion as based on the wrong criteria."
- 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/2023/10/t-166221-on-meaning-of-rule-1162-in.html
