T2964/18

03.10.2022


Opposition division maintained European patent No. 2 785 807 ("the patent") in its form modified on the basis of the auxiliary request 1. Opponent 2 ("appellant") appealed this decision.
The appellant requested that document D25, which was not admitted by the opposition division into the opposition proceedings, be admitted into the appeal proceedings. The appellant stated that D25 was prima facie relevant and that for this reason it should have been admitted into the proceedings.
When revising a non-admittance decision of the opposition division, the board should only assess whether the opposition division correctly exercised its discretion. In the current case, the opposition division decided not to admit into the proceedings document D25, filed after the expiry of the opposition period, because it considered it not to be prima facie relevant. No valid reasons for filing this document late had been presented. The board is satisfied that the opposition division exercised its discretion in not admitting D25 according to the right principles and in a reasonable way. Thus, document D25, and any objection based on it, was not admitted into the proceedings.
Document A027 was filed by the appellant with its statement of grounds of appeal. The time limit for an opponent to file all relevant facts and evidence is the nine-month opposition period. At the oral proceedings before the board, the appellant stated that the search for the terms mentioned in claim 1 of the main request proved to be extremely difficult because said terms were not frequently used in the art. This was why A027 had been found only at a later stage and was then promptly filed.
The board finds the appellant's arguments unconvincing. The difficulties that a party may encounter in finding documents cannot justify the filing of a document only in appeal proceedings.
Document A027 could and should have been filed before the opposition division. The board thus decided not to admit into the proceedings document A027.
The set of claims according to auxiliary request 1 was filed by the respondent with its reply to the statement of grounds of appeal. The appellant submitted that the amendment to claim 1 had not been substantiated and requested that auxiliary request 1 not be admitted into the proceedings.
The respondent argued that auxiliary request 1 had been filed as auxiliary request 3 before the opposition division.
The board notes that the fact that auxiliary request 1 was formally filed during the opposition proceedings does not render it automatically part of the appeal case since its admittance had not been examined by the opposition division.
Neither the board nor the appellant are put in a position to understand why the feature added to claim 1 would overcome the objections raised against claim 1 of the main request. Thus, auxiliary request 1 has not been substantiated.
A substantiation why amendments are filed may exceptionally not be needed if the amendments are self-explanatory in the sense that the board and the other party are put in a position to understand, without any further explanation, which outstanding objections are meant to be overcome.
However, this condition is not met for auxiliary request 1. Indeed, it is not immediately apparent which technical contribution the feature added to claim 1 of auxiliary request 1 would have brought.
Therefore, auxiliary request 1 was not validly filed and was not part of the appeal proceedings.
Auxiliary request 2a and 2b differ from the main request in that several claims have been deleted. The respondent filed these auxiliary requests after notification of the summons to oral proceedings.
Under Article 13(2) RPBA 2020, amendments to a party's case made after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances justified with cogent reasons by the party concerned.
The board is of the view that the deletion of claims inevitably results in an amendment of the respondent's case. This deletion implies that it is requested that the patent be maintained in a form different than previously requested, with legal consequences for the patent's validity and scope.
For these reasons, the deletions carried out in auxiliary requests 2a and 2b do represent an amendment of the respondent's case filed after the summons to oral proceedings. Further, the board has determined that no exceptional circumstances exist justifying the filing only shortly before the oral proceedings. The board thus decided not to admit auxiliary requests 2a and 2b.
The set of claims according to auxiliary request 4 was filed by the respondent with its reply to the statement of grounds of appeal.
A substantiation why claim amendments are filed may not be needed if the amendments are self-explanatory in the sense that they put the board and the other party in a position to understand - without any further explanation - which outstanding objections are meant to be overcome.
The board holds that the amendments were meant to overcome the objections raised by the appellant in its statement of grounds of appeal. As such, the amendments carried out in auxiliary request 4 are considered to be self-explanatory and do not need any explicit substantiation.
For these reasons, the board decides that auxiliary request 4 was validly filed with the respondent's reply to the statement of grounds of appeal, and thus it forms part of the proceedings.
At the oral proceedings, the appellant also objected to inventive step of the subject-matter of claim 11 of auxiliary request 4. The above inventive-step objections had been raised at the oral proceedings before the board for the first time. As such, these objections represent an amendment of the appellant's case filed at the latest possible stage of the appeal proceedings.
The appellant stated that the above-stated objections should be admitted in view of the high number of auxiliary requests.
This argument is not convincing. Auxiliary request 4 was filed with the reply to the statement of grounds of appeal. Therefore, the appellant could have raised the above-mentioned inventive-step objections much earlier in the appeal proceedings.
The case is remitted to the opposition division with the order to maintain the patent on the basis of the claims of auxiliary request 4 and a description possibly to be adapted thereto.