Résumé de EPC2000 R 116 pour la décision T1219/19 du 18.01.2023

In the decision at issue in T 1219/19, the opposition division had decided not to admit auxiliary request 6, which was filed by the appellant during the oral proceedings. According to the opposition division, it had been filed late, was an attempt to address an issue already raised in the notices of opposition, was prima facie unsuitable to solve the issue of added subject-matter (Art. 123(2) EPC), and appeared to lack clarity (Art. 84 EPC). The appellant disputed whether the opposition division had indeed had discretion not to admit this request and, in the event that it did, whether it had exercised its discretion in accordance with the proper criteria. The appellant invoked R. 116(2) EPC to argue that the opposition division did not have discretion to disregard this auxiliary request or to apply the criterion of prima facie allowability. It argued that since the opposition division had changed its view in oral proceedings, expressed in the preliminary opinion sent with the summons, that omitting the feature "template-directed" did not result in added subject-matter, auxiliary request 6, although filed after the time limit under R. 116 EPC, could not be regarded as late-filed and should have been admitted. Under R. 116(2) EPC, requests filed after the final date set for making written submissions in preparation for oral proceedings could only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. The board found that under the circumstances in hand the opposition division was entitled to exercise its discretion accorded by Art. 123(1) in conjunction with R. 81(3) EPC (see R 6/19, T 966/17, T 1213/19), and that it had exercised it in accordance with the right principles. The opposition division could not be deprived of that discretion merely because it had expressed a different opinion at the oral proceedings from that provisionally set out in the communication accompanying the summons. Moreover, the opposition division's preliminary opinion had discussed the added-matter objections raised by the opponents and had clearly indicated that those objections were to be the subject of further discussion at the oral proceedings. In the board's view, the preliminary conclusion that claim 1 did not add subject-matter was expressed in a careful manner and could not be understood to mean that the opposition division thereby gave up its discretionary power to disregard submissions filed later. A different conclusion would penalise the useful practice of providing a detailed discussion of the relevant issues in preparation for oral proceedings. The appellant also referred to the Guidelines for Examination to argue that the opposition division's change of opinion at the oral proceedings constituted a change of subject of the proceedings, justifying the later filing of auxiliary request. The board agreed that, in principle, it did change the subject of the proceedings, especially where the opposition division had introduced a new objection at a relatively late stage. However, the Guidelines did not exclude the possibility that, under particular circumstances, a change from the preliminary opinion would not necessarily involve a change of subject of the proceedings. In this regard, the board found that the content of the preliminary opinion, taken as a whole, was articulate and could not be read in a manner limited to the conclusion that claim 1 did not add subject-matter. The objection that the single-molecule sequencing process had no basis in the parent application had been raised by both opponents at the outset of the opposition proceedings and was not introduced into the proceedings by the opposition division. The issue had been discussed at length in preparation for the oral proceedings, it had been considered an issue by the opposition division in the preliminary opinion, and it was also sufficiently clear that it was a crucial one. Thus the appellant had indeed been notified of the grounds prejudicing the maintenance of the patent. The board therefore found that the different conclusion reached at the oral proceedings by the opposition division could not be regarded as a change of subject of the proceedings. Auxiliary request 6 had thus not been submitted in due time and the opposition division had had discretion to disregard it, pursuant to the correct criterion of prima facie allowability (or non-allowability). That auxiliary request 6 raised clarity issues was an additional criterion for non-admittance. The board therefore saw no reason to revise the opposition division's decision or to exercise its own discretion in favour of admitting auxiliary request 6 into the appeal proceedings (Art. 12(4) RPBA 2007).