4.3. First level of the convergent approach – submissions in the grounds of appeal and the reply – Article 12(3) to (6) RPBA 2020

Abstract

In T 1695/21 beantragte die Beschwerdegegnerin (Patentinhaberin), einen Einwand nach Art. 84 EPÜ gegen ihren Hauptantrag nicht in das Verfahren zuzulassen, da in der Beschwerdebegründung keine konkreten Passagen der Beschreibung angegeben worden seien, durch die dieser Einwand begründet sein könnte, und dieser daher nicht substantiiert sei (Art. 12 (3) und (5) VOBK).

Die Kammer rief in Erinnerung, dass gemäß Art. 12 (3) VOBK die Beschwerdebegründung und die Erwiderung das vollständige Beschwerdevorbringen der Beteiligten enthalten müssen. Dementsprechend müssen sie laut dieser Vorschrift deutlich und knapp angeben, aus welchen Gründen beantragt wird, die angefochtene Entscheidung aufzuheben, abzuändern oder zu bestätigen; sie sollen ausdrücklich alle geltend gemachten Anträge, Tatsachen, Einwände, Argumente und Beweismittel im Einzelnen anführen.

Die Kammer wies darauf hin, dass die Beschwerdeführerin im vorliegenden Fall in ihrer Beschwerdebegründung auf spezifische Punkte der Niederschrift über die mündliche Verhandlung vor der Einspruchsabteilung verweise. Dort seien die Absätze der Beschreibung konkret angegeben, auf welche sich die Beschwerdeführerin im Einspruchsverfahren hinsichtlich des Einwands nach Art. 84 EPÜ bezogen habe. Die Kammer merkte auch an, dass diese in identischer Weise auch in der angefochtenen Entscheidung wiedergegeben seien. Nach Ansicht der Kammer ist aufgrund dieses Verweises und der Erläuterung, worin die vermeintliche Inkonsistenz der Beschreibung bestehe, der Beschwerdebegründung zu entnehmen, welche Passagen der Beschreibung die Beschwerdeführerin als problematisch im Hinblick auf Art. 84 EPÜ ansah. Damit sei der Gegenstand des Einwands zumindest im Wesentlichen erkennbar. Die Kammer teilte daher die Schlussfolgerung der Beschwerdegegnerin, dass ein Verstoß gegen Art. 12 (3) VOBK vorliege, nicht, sondern sah den von der Beschwerdeführerin erhobenen Einwand nach Art. 84 EPÜ als ausreichend substantiiert an.

Die Kammer berücksichtigte den Einwand daher im Beschwerdeverfahren und gelangte zu dem Ergebnis, dass dieser Einwand dem Hauptantrag entgegenstehe, der somit zurückgewiesen wurde.

Abstract

In T 1820/22 the board decided not to admit auxiliary requests 1 to 8 filed with the statement of grounds of appeal, nor auxiliary requests auxiliary requests 1a, 1b, 1c, 2a, 2b, 3a, or 4a filed with further submissions after the summons to oral proceedings. All these requests were filed for the first time on appeal and were therefore subject to the discretion of the board under Art. 12(6) RPBA (together with Art. 13(1) RPBA for the later requests).

The appellant (patent proprietor) had argued that all auxiliary requests contained amendments which addressed the added subject-matter objection on which the decision was based. However, the board observed that the proprietor had not made any attempt to address the objection by amendment during the opposition proceedings, even though the objection was known to them from the outset (as it was set out in the notice of opposition), and from the annex to the summons, where the issue was again raised. The appellant proprietor had been given ample opportunity to address the issue by amendment and had indeed submitted various requests in the course of the opposition proceedings, none of which however dealt with the issue of added subject-matter. The board concluded that although they could have addressed the issue of added subject-matter, they chose not to do so.

The board was not convinced by the appellant's explanation that they had chosen not to address the issue by amendment in opposition proceedings because they had been persuaded that this was futile due to an Art. 123(3) EPC trap. According to the appellant this seemed to have also been the understanding of both parties and the opposition division. Only the mention of claim 18 as originally filed as possible basis in the decision offered an opening.

However, the board pointed out that nothing had changed in the underlying facts. The issue of added subject-matter arising from a feature added before grant was still the very same as at the outset of the opposition proceedings. In the board's view the appellant proprietor should have known ab initio what the basis was in the original disclosure of their patent for the reading of a claim feature they were arguing. If they were unable to identify a basis or failed to do so earlier, they had to bear the consequences. Thus, the board was unable to see a justification for the late submission of amendments only in appeal as a result of a belated realisation on their part, however that realisation may have come about.

Moreover, the board held that the amendments of these requests did not appear suitable to overcome the added subject-matter objection on which the decision was based and some amendments were not occasioned by a ground of opposition in the sense of R. 80 EPC. Thus, additionally, the requirements of Art. 12(4) RPBA were not met.

Finally, the board pointed out that the nature of the requests was complex and considered the number of requests, 16 in all, most of which offered different attempts to resolve the issue of added subject-matter, to be disproportionate to that issue. This was all the more so in view of the argument that a single passage, original claim 18, would provide a basis for the amendment.

Therefore, the board concluded that the circumstances of the appeal case did not justify the admission of these auxiliary requests, which should have been filed during opposition proceedings, Art. 12(6) and Art. 13(1) RPBA.

Abstract

In T 559/20 ließ die Kammer die Hilfsanträge 1 bis 3 gemäß Art. 12 (5) i. V. m. Art. 12 (3) VOBK nicht zu, da sie nach ihrer Auflassung ohne erkennbare inhaltliche Begründung gestellt worden waren.

Die Beschwerdeführerin (Patentinhaberin) hatte lediglich argumentiert, die Hilfsanträge schränkten den Schutzumfang des Gegenstands des Hauptantrags weiter ein, so dass sie ebenso wie der Hauptantrag neu und erfinderisch seien.

Da diese Hilfsanträge aber bereits Gegenstand der angefochtenen Entscheidung waren, wäre nach Ansicht der Kammer zu erwarten gewesen, dass sich die Beschwerdeführerin mit den Entscheidungsgründen zu den Hilfsanträgen auseinandersetzt.

Zudem sei die von der Beschwerdeführerin vorgebrachte pauschale Begründung, die Hilfsanträge seien eingeschränkter und daher aus demselben Grund wie der Hauptantrag neu und erfinderisch, ersichtlich nicht geeignet, ihre Gewährbarkeit für den Fall zu begründen, dass die Kammer den Hauptantrag für nicht gewährbar hält. Daher komme diese Begründung dem völligen Fehlen einer Begründung gleich.

Abstract

In T 1445/22 the appellant requested the admittance into the appeal proceedings of late-filed documents D10 to D12, D14, D15 and D20, which had not been admitted into the opposition proceedings for being prima facie not relevant with respect to the sufficiency of disclosure objection, as well as D26 and D27 filed with the statement of grounds of appeal.

The board first examined Art. 12(6), first sentence, RPBA and noted that evidence submitted by an opponent after the expiry of the nine-month period according to Art. 99(1) EPC was generally to be regarded as late-filed. Exceptions to this rule were where such evidence could not have been filed earlier, for example where the subject of the proceedings had changed. This was typically the case where new claim requests were filed such that there was no reason to file the evidence in response thereto any earlier or where the opposition division had raised a new issue.

In the case in hand the opposition division had not raised any new aspects in its preliminary opinion, but rather reiterated the position, given by the respondent (patent proprietor) in its reply to the notice of opposition. The board found therefore that there had been no change in the subject of the proceedings before the opposition division which would have led to new evidence being considered to be timely filed.

The board also did not consider the circumstances leading to the obtainment of the evidence by the party filing it as relevant for the issue of whether a document was filed in due time. These circumstances were external to the proceedings and it would run counter to the concept of discretionary power if that discretion were denied to a deciding body by circumstances external to the proceedings. Were such discretion to be denied, then all documents created or coming to light at any stage of the proceedings that were filed by a party would automatically be part of the proceedings. However, this would undermine the nine-month period under Art. 99(1) EPC which aims to establish the factual and legal framework within which the substantive examination of the opposition is, in principle, conducted, allowing the patent proprietor a fair chance to consider its position at an early stage of the proceedings (see G 10/91, point 6 of the Reasons, and T 1002/92). Therefore, documents D10 to D12, D14, D15 and D20 had not been filed in due time and the opposition division had the discretion, under Art. 114(2) EPC, not to admit them.

The appellant (opponent) argued that it had not been given the opportunity to present detailed arguments based on documents D10 to D12, D14, D15 and D20, as only prima facie relevance had been discussed before the opposition division. The board found, however, that the appellant had in fact had the opportunity to present its arguments relating to the admittance and prima facie relevance of those documents during the opposition proceedings. It also noted it was established case law that a board of appeal should only overrule the way an opposition division exercised its discretion if it did so according to the wrong principles, not taking into account the right principles or in an unreasonable way. It was, therefore, not the function of a board of appeal to review all the facts and circumstances of the case to decide whether it would have exercised its discretion in the same way or not. In the case in hand the opposition division had regarded D10 to D12 as representing common general knowledge which did not need to be supported, and it could not see the relevance of D14, D15 or D20 for supporting the objection to insufficiency of disclosure. Thus, the opposition division had considered these documents as prima facie not relevant and had exercised its discretion reasonably, according to the right principles, after hearing both parties.

In its statement of grounds of appeal, the appellant had further requested that documents D10 to D12, D14, D15 and D20 be admitted into the appeal proceedings with respect to the appellant's lack of inventive step objections. The board decided to exercise its discretion under Art. 114(2) EPC and Art. 12(4) RPBA and not admit these documents into the appeal proceedings as none of the documents were suitable to address the issues which led to the decision under appeal.

In addition, the board found that there was no change in the opposition proceedings or particular circumstances in the present case which necessitated the filing of documents D26 and D27 for the first time in the appeal proceedings. D26 and D27 could and should have been filed during the opposition period. Therefore, the board did not admit them into the appeal proceedings (Art. 12(6), second sentence, RPBA and Art. 12(4) RPBA).

Abstract

In T 1311/21 the first auxiliary request, which had been first filed as auxiliary request IV with the patentee's statement of grounds of appeal, differed from claim 1 as granted by the addition of two features and the replacement of one feature. These amendments were also present in claim 1 of auxiliary requests 1 to 3 underlying the appealed decision, which however additionally contained further amendments as compared to claim 1 as granted in order to overcome all the objections raised during the opposition proceedings. These additional features had been omitted in claim 1 of the first auxiliary request.

The board observed that the discussion on whether the amendments in the first auxiliary request (compared to claim 1 as granted) extended its subject-matter beyond the content of the application as filed had already taken place in the first-instance proceedings. Moreover, it was not under dispute that the omitted features were not relevant for the question of novelty and inventive step. Therefore, the amendments of claim 1 of the first auxiliary request did not introduce new issues and did not increase the complexity of the examination of the patent. The board further noted that they were not only suitable to address, but actually overcame the objections of added matter. The board concluded that there was no reason not to admit the amendments of claim 1 into the appeal proceedings under Art. 12(4) RPBA.

Regarding Art. 12(6), second sentence, RPBA, the board explained that claim 1 at issue comprised all the amendments required by the opposition division to overcome its objection of added subject-matter against a certain feature of the main request then on file, but omitted all the amendments required by the opposition division to overcome its objection of added subject-matter against two other features. The patentee had argued that the opposition division had decided on all objections of added subject-matter at once and that this would have made the filing of requests that were already decided not to comply with Art. 123(2) EPC a violation of the rules of procedural efficiency. The board pointed out that it followed from this that the patentee could have filed claim 1 during the first-instance proceedings, but not that it should have done so. Indeed, such a filing would have been pointless in view of the fact that the opposition division had already decided that such claim 1 infringed the requirements of Art. 123(2) EPC. The board held that, in the absence of a compelling reason for the patentee to file present claim 1 during the first-instance proceedings, there was no reason for it not to admit the amendments of present claim 1 into the proceedings under Art. 12(6), second sentence, RPBA.

In the end, however, the board did not allow the first auxiliary request as it contained subject-matter which extended beyond the content of the application as filed.