4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA 2020
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
In several decisions, the boards decided not to admit submissions that addressed objections raised in the opposition proceedings, because the proprietor had had ample opportunities to address these objections (see T 825/20 and T 1326/21, summarised below, and T 847/20, summarised in chapter V.A.4.3.7d) above). However, see also the decisions in chapter V.A.4.3.7c) and in particular T 141/20, in which the board pointed out that there needed to be a reason to file auxiliary requests, not just the possibility of doing so. In this particular case, the board did not see any need for submitting the request in question since the opposition division had made it clear that it did not agree with the opponent's objection.
In T 825/20 the four auxiliary requests filed for the first time with the statement of grounds of appeal aimed at overcoming the opposition division’s inventive step objection to the main request. However, in its preliminary opinion the opposition division had already drawn the parties’ attention to this issue. The appellant was given the opportunity to react and did so by filing several new auxiliary requests, however not those filed in appeal. The board concluded that the latter could and should have been filed during the first-instance opposition proceedings. A counter-example where the board took the view that the patent proprietor had not been obliged to respond immediately during the oral proceedings, is T 487/20. In this case the opposition division had indicated in its preliminary opinion that the opponent’s objections under Art. 100(c) EPC were not convincing and the arguments addressed by auxiliary request II filed with the statement of grounds of appeal had been only briefly discussed during the oral proceedings.
In T 1326/21 the appellant (patent proprietor) explained that the main request in appeal which addressed only two out of three objections under Art. 100(c) EPC discussed during the first instance oral proceedings, could not have been submitted at that moment. This was because the opposition division had come to the conclusion that all three objections were justified; such a request would not have been admitted. The board however pointed out that the relevant objections had been raised and substantiated already in the notice of opposition and that the opposition division had given a preliminary opinion on all of them in the annex to the summons. Thus, the appellant had had ample opportunities to file requests addressing any of the above-mentioned objections. Accordingly, the appellant had deliberately chosen not to file in opposition proceedings any amendments aimed at overcoming the objections under Art. 100(c) EPC, but to respond solely with arguments.