Key points
- Auxiliary request 2 (renumbered from AR-5) is a carry-over auxiliary request.
- The question is whether the unless-clause of Art. 12(4) RPBA applies, particularly whether it was admissibly filed before the OD.
- The Board, in translation: "Auxiliary request 5 was submitted in the opposition proceedings after the time specified in the summons to oral proceedings, up to which pleadings and/or documents can be filed under Rule 116 EPC, and was therefore filed late in the opposition proceedings (see, for example, the second guidance sentence in T 1776/18 and Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.4.3.2 and IV.C.5.1.4). Its admission and consideration was therefore at the discretion of the opposition division. For this reason alone, auxiliary request 5 cannot per se be viewed as being submitted in an admissible manner. The current auxiliary request 2 is therefore an amendment in accordance with Article 12(4) RPBA, the approval and consideration of which is now at the discretion of the Board."
- "The respondent's [proprietor's] opinion cannot be accepted in this respect, according to which auxiliary request [5] was a response to an objection raised by the [opponent] in the written statement filed [before the OD] under Rule 116 EPC [...]. It had already been argued in the notice of opposition that document D2 disclosed a liquid detergent which contained the R99E protease variant and the phosphonate HEDP, and that the claimed subject matter was not new via this disclosure or only differed from it [by an obvious feature] (see pages 3 and 4, the first two complete paragraphs on page 6 and the last paragraph on page 9 of the notice of opposition)."
- "Auxiliary request 2, which [specifies a difference with ] document D2, could therefore have already been filed in response to the notice of opposition in order to address the objections raised therein under novelty and inventive step ."
- It may be wise to take the first reply to the opposition seriously.
- The proprietor had, as respondent, not indicated the basis for the amendment in its appeal reply brief, such that Art. 12(4)(s.4) is not met and the request is not admissible on that ground - indicating the basis is, in translation, "further essential prerequisite".
- Some further requests are not admitted either and the patent is revoked.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2023/11/t-054320-ii-art-124s4-rpba-bites.html
