T 1686/21 23-01-2024

Admissibility

1. The main request is admitted into the appeal proceedings under Article 13(2) RPBA.

1.1 It was filed as auxiliary request 1f" during the oral proceedings before the board in reaction to the board's finding that the omission, in claim 1 of the patent as maintained, of the feature that the supports were configured in the shape of a paddle resulted - contrary to the assessment of the opposition division - in an unallowable intermediate generalisation of a specific embodiment disclosed in the originally filed international parent application WO 2005/046528. This therefore infringed Article 76(1) EPC.

1.2 The appellant (opponent) contested the admissibility of this late-filed request. Contrary to the opinion of the respondent (patent proprietor), the appellant (opponent) put forward that the submission of this request for the first time in the oral proceedings amounted to an amendment to the patent proprietor's appeal case, the admissibility of which would be subject to the strict conditions set out in Article 13(2) RPBA. The appellant (opponent) thereby argued that, as the omission of the feature in question had been the subject of an objection both during the opposition proceedings and in its statement of grounds of appeal, the respondent (patent proprietor) could and should have filed this request already during the first-instance proceedings or, at the latest, with its statement of grounds of appeal. Furthermore, it was argued by the appellant (opponent) that the facts as alleged by the respondent (patent proprietor) in order to justify the amendment of its case at such a late stage of the appeal proceedings did not amount to "exceptional circumstances justified by cogent reasons" within the meaning of Article 13(2) RPBA. Furthermore it was alleged by the appellant (opponent) that the main request was not duly substantiated.

1.3 Contrary to the respondent's (patent proprietor's) assertions, the board takes the view that the submission of the new request at issue, which contains further limitations inserted into independent claim 1 of the patent as maintained, represents an amendment of the respondent's (patent proprietor's) appeal case within the meaning of Article 13(2) RPBA. The board agrees with the respondent (patent proprietor) that the feature added to claim 1 of the patent as maintained - namely that the support posts are configured in the shape of a paddle - had already been added to claim 1 of several of the auxiliary requests submitted by the respondent (patent proprietor) in order to overcome the same added subject-matter objection. However, the specific combination of features now recited in claim 1 was never claimed as such in any of the requests filed by the respondent (patent proprietor). Since an amendment to a claim must be considered in the context of the whole claim rather than in isolation, the main request at issue represents an amendment of the respondent's case in appeal.

1.4 It is uncontested that the "paddle shape" of the supports (22) now recited in claim 1 of the main request is directly and unambiguously derivable from the description of the international parent application, page 12, line 34, to page 13, line 10, in association with Figure 5.

1.5 That said, the board observes:

that, as stated above, the amendment under discussion is already present in several auxiliary requests filed during the first-instance proceedings and re-submitted by the respondent (patent proprietor) on appeal in order to address the objection raised by the appellant (opponent) concerning omission of the "paddle shape" feature;

that, in view of the above, the objection of lack of substantiation is not justified;

that this amendment explicitly defines the feature that the supports (22) are "configured in the shape of a paddle", which the opposition division implicitly read - albeit erroneously in the board's view - into the wording of independent claim 1 of the patent as maintained taken as a whole;

that this amendment clearly addresses and solves the issue under Article 76(1) EPC raised by the appellant (opponent) against the patent as maintained in relation to the omission of the paddle shape of the supports,

that, in view of all the above, the amendment cannot be considered surprising for the appellant (opponent) in such a way as to negatively affect its position in the appeal proceedings, thereby giving an advantage to the other party, in particular given that the opposition division understood the feature in question to be implied in claim 1 as maintained;

that the amendment at issue does not give rise to new objections and is not detrimental to procedural economy,

and, last but not least, that - as convincingly argued by the respondent (patent proprietor) - in view of the large number of different objections raised under Article 76(1) EPC, the number of requests to be filed at the very beginning of the appeal proceedings in order to provide appropriate fall-back positions for every possible outcome of the assessment of compliance with Article 76(1) EPC would have been extremely high and, as therefore not compliant with procedural efficiency.

1.6 The board considers that the above circumstances represent exceptional circumstances within the meaning of Article 13(2) RPBA justifying the admittance of the main request under consideration.

2. The appellant (opponent) confirmed during the oral proceedings that the remaining issues among those previously raised under Article 76(1) EPC against the patent as maintained by the opposition division and which could, in principle, affect the main request were not to be maintained, and that it did not have any further substantial objections. As the board likewise see no reason for further objections, the contested patent can be maintained according to the main request.