CABINET CHAILLOT

T 0602/21 - late submissions during appeal

Late submissions, Article 13(2) RPBA, Article 12(3) RPBA

T0602/21
The appeal of the opponent lies from the interlocutory decision of the opposition division concerning maintenance of European patent No. 2 192 155 in amended form.
The Board considered claims 3 and 4 of main request and auxiliary requests 1 and 2 as not novel.
Auxiliary request 3 corresponded to the main request in which claims 3 and 4 were deleted.
Auxiliary request 3 was filed after notification of the summons to oral proceedings. Therefore, its admittance is governed by Article 13(2) RPBA, according to which any amendment to a party's appeal case is, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
The successful objection of lack of novelty against claims 3 and 4 was present from the outset of the appeal proceedings. Therefore, the filing of a set of claims according to auxiliary request 3 would already have been possible and reasonable with the rejoinder to the statement of grounds of appeal.
However, in similar cases, some Boards have acknowledged exceptional circumstances when the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA 2020, nor to the legitimate interests of a party to the proceedings. This specific procedural situation was considered an "exceptional circumstance" within the meaning of Article 13(2) RPBA. The present Board agrees with this approach and finds it applicable to the present case for the following reasons:
a) By deleting any other pending auxiliary requests apart from auxiliary request 3, whereby the latter only contained claims that were present in the main request allowed by the opposition division, the Board is satisfied that the need for procedural economy is respected.
b) In addition, by maintaining only claims that were until then not attacked by the appellant in appeal proceedings, auxiliary request 3 is not detrimental to the legitimate interests of the appellant at that point of the proceedings (since no objections had been maintained/raised against these claims). In particular, the admittance of auxiliary request 3 would neither alter the factual or legal framework of the proceedings, nor compromise the procedural rights of the appellant.
For these reasons, which in the Board's view constitute exceptional circumstances, the Board admitted auxiliary request 3 into the proceedings.
At the oral proceedings, the appellant indicated that they intended to substantiate objections of lack of inventive step against claims 1, 2 and 4 of auxiliary request 3.
Only claims 3 and 4 of the main request were objected to in the statement of grounds of appeal. Therefore, the appellant's objections of lack of inventive step against claims 1, 2 and 4 of auxiliary request 3 put forward at the oral proceedings constitute an amendment to the appellant's case. Such an amendment to a party's appeal case is, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
In the present case, considering that claims 1, 2 and 4 of auxiliary request 3 are identical to claims 1, 2 and 6 of the main request, the Board cannot identify any exceptional circumstances which may justify the submission of these objections at such a late stage of the proceedings.
It is further noted that in the present case, the main request allowed by the opposition division contained independent claims 1 to 6, 9 and 10. Under these circumstances, it would have been the duty of the appellant to duly substantiate already in their statement of grounds of appeal why they considered that the decision of the opposition division was wrong that each of these independent claims met the requirements of the EPC. According to the provisions of Article 12(3) RPBA, the appellant should present their complete case in the statement of grounds of appeal.
At the oral proceedings, the appellant argued that it was stated in the statement of grounds of appeal that they requested the revocation of the patent in suit, which implicitly meant that all the claims of the main request were then objected to.
However, such an implicit objection is not in line with the stipulations of Article 12(3) RPBA that the appellant shall set out clearly and concisely in their statement of grounds of appeal the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on.
At the oral proceedings, the appellant further justified the late filing of the objections of lack of inventive step by the fact that the appellant was convinced that claims 3 and 4 of the main request were not allowable. Therefore, it was not unnecessary for them to file any further objections against other claims since the main request as a whole was not allowable.
However, an opponent/appellant should not rely on their conviction that the Board will agree with their objection and should take into account that the Board might disagree with their view and rather accept the reasoning of the opposition division or of the other party. By not substantiating all their - possibly relevant - objections at the outset of the appeal proceedings, a party must accept the risk that such an objection might be not admitted into the proceedings if it is only raised at a later stage.
At the oral proceedings, the appellant also considered that the inventive step objections should be admitted as a matter of fairness because auxiliary request 3 was admitted at a very late stage of the proceedings.
However, the question of fairness was already taken into account in the analysis provided above: in the present case, one of the reason for admitting auxiliary request 3 is that it only contains claims that were already present in the main request allowed by the opposition division and which were not attacked in appeal. Under these circumstances, the appellant was given the opportunity to attack any of the claims of auxiliary request 3 already when filing their appeal, i.e. auxiliary request 3 was admitted taking into account, among others, that it did not compromise the procedural rights of the appellant.
For these reasons, the Board found it justified not to take into account these inventive step objections (Article 13(2) RPBA).
The case is remitted to the opposition division with the order to maintain the patent in amended form on the basis of the claims of auxiliary request 3.

 

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