Key points
- The Board arrives at auxiliary requests 1 to 16, which are carry-over requests.
- "To examine whether auxiliary requests 1 to 16 were admissibly raised before the opposition division, it is necessary to consider the file history."
- The requests were filed by the Rule 116 EPC date.
- The opponent: " It submitted that claim 1 as granted had been amended in at least seven different diverging directions in auxiliary requests 1 to 16 and referred to the table bridging pages 5 and 6 of its letter dated 3 November 2020. Moreover, claim 1 of several auxiliary requests contained various combinations of the granted dependent claims which were not disclosed as such in the claims as granted. Features from the description had also been included. "
- The Board considers that auxiliary requests filed with the reply under Rule 79(1) EPC can be held inadmissible in exceptional cases only. "The board bases this view on decision R 6/19 of the Enlarged Board of Appeal, according to which (catchword) the basis for an opposition division's discretion to admit or not claim requests is Article 123(1) EPC. The Enlarged Board held (reasons, points 7 to 9) that under Article 123(1) EPC, a patent proprietor does not always have the right to amend its patent and that "amendments and their admission into the proceedings shall be in accordance with the provisions of the implementing regulations". The Enlarged Board referred to Rule 81(3) EPC, which gives the opposition division the discretion not to admit claim requests. The Enlarged Board derived this discretion especially from the rule's provision that an opportunity to amend the patent must be given only "where necessary". The current board observes that in a similar way, Rule 79(1) EPC stipulates that a patent proprietor must be given the opportunity to amend its patent in reply to the notice of opposition only "where appropriate"."
- "The existence of a truly exceptional situation leading to the consideration of claim requests filed within the time limit set under Rule 79(1) EPC to not have been admissibly raised should be decided on a case-by-case basis. Such a situation might occur where an abuse of the proceedings occurred, e.g. when an unreasonably high number of diverging auxiliary requests were filed without proper justification. The number of grounds for opposition or different objections raised by an opponent as well as the number of opponents may represent, inter alia, criteria to be considered."
- The relation of this holding to Rule 80 EPC could be considered.
- "Decision T 221/20 (points 2.1 to 2.4) considered auxiliary requests filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit under Rule 116(1) EPC set by the opposition division in its summons to attend oral proceedings to have been admissibly raised. In fact, the current version of the Guidelines for Examination in the EPO (March 2023 Edition), in Section E-VI.2.2.2, states that "[a]mendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed".
- "However, in the board's view, it cannot be held that any claim request submitted after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is automatically filed in due time and thus was admissibly raised."
- This could be an important point for the practice of the OD if the first instance departments were to follow the present decision and/or other Boards were to follow the present decision.
- The point also raises the interesting question of how free the Boards are to depart from the GL under the "admissibly raised" exception. And, if the Boards apply different rules for the "unless clause" that the OD's, how would such a double set of rules work in practice.
- "The board holds that whether or not a claim request filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is to be considered to have been filed in due time depends on whether it was submitted as a direct and timely response to a change of the subject of the proceedings introduced by the opponent or the opposition division."
- The requests are admitted, are each considered on the merits, 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/2024/01/t-036420-admissibly-raised-exception.html
