R 0007/16 04-04-2018

I. The petition for review concerns decision T 2171/14 of 31 May 2016 of Board of Appeal 3.2.06 (notified on 11 July 2016), revoking European patent no. 2 029 865 which was granted on 6 October 2010 to Inergy Automotive Systems Research SA. Said company, the petitioner in the present proceedings, was later renamed as “Plastic Omnium Advanced Innovation and Research”.

II. During examination proceedings, objections under Article 123(2) EPC were made and the feature “also incorporating at least one other active component of the storage system and/or of the injection system” in originally filed claim 1 was finally replaced by the feature “also incorporating at least one other active component (15, 11) which is active in storage and/or metering and which needs to be in contact with the liquid additive in, leaving or entering the additive tank”. Said feature, adding a definition of the “active component”, was later referred to as the “critical feature” by the Board of Appeal and the petitioner.

III. Oppositions were filed by three opponents: Delphi Diesel Systems Ltd (opponent 1), Kautex Textron GmbH & Co. KG (opponent 2) and Emitec Gesellschaft für Emissionstechnologie mbH, later renamed to Continental Emitec Verwaltungs GmbH (opponent 3). All opponents relied, inter alia, on the ground for opposition under Article 100(c) EPC and all opponents objected to the critical feature in this context. In its interlocutory decision of 21 October 2014, the opposition division concluded that the patent could be maintained on the basis of the then pending auxiliary request “V (new)” (later referred to as auxiliary request V). The opposition division did not address Article 100(c) EPC in the context of the main request and the higher-ranking auxiliary requests. For auxiliary request V, the section titled “Auxiliary Request V - disclosure” in the decision did not specifically address the question whether the critical feature and its combination with the other features of claim 1 were clearly and unambiguously disclosed in the original application.

IV. Appeals were filed by all parties (patent proprietor and opponents 1, 2 and 3). The patent proprietor (petitioner) requested in its grounds of appeal that the patent be maintained on the basis of the patent as granted (main request) or any of auxiliary requests I to IV as filed with the grounds of appeal. In their grounds of appeal, all opponents raised objections, inter alia, under Articles 100(c) / 123(2) EPC in connection with the critical feature. In its response to the appeals of the opponents dated 6 July 2015, the patent proprietor filed auxiliary requests VI to XIII. The set of claims found by the opposition division to meet the requirements of the EPC was maintained as auxiliary request V (letter of 6 November 2015, page 2).

V. After the summons to oral proceedings was issued, the Board of Appeal gave its preliminary view in a communication dated 30 March 2016. In point 1.1 (pages 2 to 5) of the communication the allowability of claim 1 as granted under Article 100(c) EPC was questioned in connection with the critical feature. A short remark was also made on page 10 of the communication with respect to remittal, which had been requested by the petitioner in case the Board of Appeal admitted into the proceedings certain late-filed documents (see its letters of 6 July 2015, page 14, and of 6 November 2015, page 13).

VI. In its letter of 29 April 2016, the petitioner withdrew auxiliary requests I to IV and filed new auxiliary requests “VII new” and “VIII new” intended to replace auxiliary requests VII to XIII on file and made the following request: “A remittal to first instance is requested to give a reasoned decision on article 100(c) EPC with respect to all requests (including the two new requests). If the Board were to decide not to remit the case to first instance, it is requested that the new requests are admitted into the appeal proceedings.”

VII. Oral proceedings before the Board of Appeal were held on 31 May 2016. During the oral proceedings, the petitioner re-stated its requests made in said letter, including the request for remittal in order to get a reasoned first instance decision on the ground for opposition under Article 100(c) EPC. The request for remittal was discussed and refused before the opponent’s objections under Article 100(c) EPC against granted claim 1 were discussed. After the Board of Appeal gave its conclusion that Article 100(c) EPC prejudiced the maintenance of the patent as granted, the petitioner withdrew its auxiliary requests V (claims as maintained by the opposition division) and VI (as filed with letter dated 6 July 2015). After auxiliary request “VII new” and “VIII new” were discussed (the former having been found to violate Article 123(3) EPC and the latter not admitted), the petitioner filed auxiliary requests “IX new” and “X new”, which were both admitted into the proceedings but found to violate, inter alia, Article 123(2) EPC.

VIII. In its written decision (decision under review), the Board of Appeal found that the decision of the opposition division presented a fundamental deficiency in that there was no reasoned decision in regard to the specific objections under Article 100(c) EPC made against auxiliary request V, which objections had been made originally against the main request and had been maintained against the subject-matter of claim 1 of auxiliary request V found allowable by the opposition division (Reasons, point 5).

IX. Despite the fundamental deficiency, the Board of Appeal decided not to remit the case to the opposition division (Reasons, points 5.1 to 5.5, pages 21-28). It argued, inter alia, that the petitioner was not adversely affected by the lack of a reasoned first instance decision on the matter of Article 100(c) EPC since this was decided in the petitioner’s favour. The Board of Appeal did not accept the petitioner’s argument that the Board had made a fresh case by way of its preliminary opinion in the communication of 30 March 2016 since the relevant issues had been addressed from the beginning of the opposition proceedings. It pointed out that it had not been argued that the Board’s analysis in its communication had resulted in a specific need for remittal of the case or that there was not sufficient time to respond to the arguments in the communication. The Board of Appeal also considered the prolongation of the overall procedure which would have resulted from a remittal, mentioning specifically the ongoing infringement proceedings and the request of opponent 2 for accelerated proceedings.

X. The main request was considered under point 6 of the Reasons under Article 100(c) EPC (pages 28-36). The introduction of the critical feature was found to introduce added subject-matter. Auxiliary request V (even though withdrawn) was briefly addressed, it was found to be unallowable for the same reasons as the main request (Reasons, point 7). Auxiliary request “VII new”, in which the critical feature had been replaced by the feature “said baseplate also incorporating an additive heater”, was found to be unallowable under Article 123(3) EPC (Reasons, points 10 and 11). Auxiliary request “VIII new” was not admitted into the proceedings since it appeared to be unallowable under Article 123(3) EPC as well and since it gave rise at least prima facie to further objections under at least Article 123(2) and Rule 80 EPC (Reasons, points 12 and 13). The requests which had only been filed during the oral proceedings (auxiliary requests “IX new” and “X new”) and which essentially included the critical feature again, were admitted into the proceedings but found unallowable for similar reasons as the main request (auxiliary request “IX new”, see points 14 and 15) and under Article 84 EPC (auxiliary request “X new”, see points 16 and 17).

XI. The decision under review was sent to the parties on 11 July 2016. The petition for review was filed on 16 September 2016; the corresponding fee was paid on the same day. The petitioner requested that the decision of the Board of Appeal be set aside and the proceedings before the Board of Appeal 3.2.06 be reopened. The petitioner further requested oral proceedings in the event that the Enlarged Board was to consider not setting aside the decision under review.

XII. The petition was based, on the one hand, on Article 112a(2)(c) EPC (fundamental violation of Article 113 EPC), and, on the other hand, on Article 112a(2)(d) in connection with Rule 104(b) EPC (decision on the appeal without deciding on a request relevant to that decision). Both grounds concerned the Board of Appeal’s failure to remit the case to the opposition division for consideration of Article 100(c) / 123(2) EPC (particularly, in connection with the addition of the critical feature) and the Board of Appeal’s reasons for its decision under Article 100(c) EPC.

XIII. In its communication issued under Articles 13 and 14(2) Rules of Procedure of the Enlarged Board of Appeal, the Enlarged Board identified three objections made by the petitioner:

a) the failure to remit the case with respect to the requests that were pending during the opposition proceedings (main request, claims as granted);

b) the failure to remit the case with respect to the requests filed during appeal proceedings (auxiliary requests “VII new” and “VIII new”);

c) deficiencies in the Board of Appeal’s reasons for not allowing the main request.

The Enlarged Board gave its preliminary view that objection a) was clearly inadmissible and clearly unallowable and that objections b) and c) were clearly unallowable.

XIV. The petitioner did not respond to said communication which was sent together with the summons for oral proceedings. Oral proceedings before the Enlarged Board were held on 4 April 2018.

XV. During oral proceedings, the petitioner maintained the original objection referred to under c) (point XIII above). As far as objections a) and b) are concerned, the petitioner shifted its focus and argued that insufficient reasons were given in the written decision for the Board’s refusal to remit the case to the opposition division. The petitioner acknowledged that the request for remittal was discussed extensively during oral proceedings before the Board of Appeal and that the Board of Appeal made it clear during oral proceedings that the request for remittal was refused.

XVI. Taking into account the submissions made during the oral proceedings of 4 April 2018, the petitioner’s lines of argument concerning the alleged fundamental violation of Article 113 EPC can be summarised as follows:

- The objection to the critical feature under Article 100(c) EPC was raised by an instance of the EPO only in the communication of 30 March 2016 (two months before oral proceedings). This late objection amounted to a “fresh case” which was difficult to handle for the petitioner at such late stage of the proceedings.

- The Board of Appeal should have discussed the substance of the objections under Article 100(c) / 123(2) EPC before it decided on the remittal.

- The request for remittal did not concern specific requests, it was always meant and should have been understood as a request to remit the “case”, i.e. all pending requests.

- The reasoning for the refusal of the request for remittal was “high-level”, i.e. on a purely procedural level.

- The reasoning for the refusal of the remittal (point 5.4 of the decision under review) was inconsistent, partly incorrect and given only in the written decision.

- The reasoning for the refusal of the main request under Article 100(c) EPC (points 6.4.1 through 6.4.3 of the decision under review) was incorrect and insufficient, partially irrelevant.