Wednesday, 3 August 2016

T 1717/13 - How many tries should you get in OP?

How many tries should an opposition division allow a proprietor to rectify an added subject matter problem? After the opposition division had maintained its added subject matter objections during the oral proceedings, the proprietor filed three more auxiliary requests. The first two were admitted into the procedure but the third was not. The reasons given in the minutes are that the third request was late filed and did not resolve an earlier objection.

In appeal the proprietor alleged that procedural violations took place. In particular, he claims that:

(a) by not admitting further claim amendments to overcome newly raised objections by the opposition division during the oral proceedings; in this respect, the opposition division exercised its discretion to disregard amendments incorrectly;

(b) by causing the patent proprietor's representative to be taken by surprise during the oral proceedings by giving contradictory reasoning, which made it difficult to react to newly raised objections;

(c) by not giving sufficient time to take into account the newly raised objections during the oral proceedings and to consider a new version of a main claim in order to be able to appropriately react to the newly raised objections.

The board gives the opposition division a wide berth to make its own decisions with respect to admitting auxiliary request or not. Some doubts are expressed about the divisions refusal to allow all  further auxiliary requests, but in the end no substantial procedure is found. 

At the end of the cited part of this decision there is also an interesting analysis of intermediate generalizations.

Reasons for the Decision

1. Alleged procedural violation

1.1 From a general point of view, it is first noted that following European patent practice, the opposition division issues the summons together with an annex drawing attention to the points to be discussed (Rule 116(1) EPC) and normally containing the division's provisional opinion, as well as a final date for making written submissions. If it becomes apparent in the oral proceedings that the timely submitted amended claims in reaction to the division's preliminary opinion are not allowable under the EPC, the admission of further requests is at the discretion of the opposition division, which will take into account, inter alia, procedural expediency but also whether the new requests are reasonable in number, whether their subject-matter is based on dependent claims as granted or based on subject-matter not previously covered by the claims and whether they are prima facie appropriate for overcoming outstanding objections (cf. Guidelines for Examination in the European Patent Office, November 2015, part E-V, 2.2).

If the way in which a department of first instance has exercised its discretion on admitting requests filed during oral proceedings is challenged in appeal, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, and to decide whether or not it would have exercised such discretion in the same way as or different from the department of first instance. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes that it has done so according to the wrong principles, without taking into account the right principles, or in an unreasonable way (cf. G 7/93, OJ EPO 1994, 775).

1.2 The appellant argues that the opposition division committed serious procedural violations by not properly exercising its discretion. These allegations concern the circumstances under which the appellant had to prepare the auxiliary requests 1 to 3 (cf. above allegations (b) and (c)) as well as the non-admission of auxiliary request 3 and the possibility to file further auxiliary requests (cf. above allegation (a)).

1.3 Turning first to allegation (b), the appellant essentially argues that its representative was caught by surprise by the fact that the opposition division did not comprehensively indicate which of the objections raised by the opponent under Article 123(2) EPC it shared. In that respect, reference shall first be made to the course of the first instance proceedings. It is noted that the grounds for opposition under Article 100(a) EPC 1973 had been raised in the notice of opposition. The appellant reacted by filing a modified main request, wherein the amendments to the independent claim were largely based on the detailed description. In its annex to the summons, the opposition division expressed the preliminary opinion that the amendments were not in compliance with the provisions of Article 123(2) EPC. One month before the oral proceedings the appellant submitted a new main request in response, which was still largely based on the detailed description. In view of this, the appellant's representative could not be surprised that during the oral proceedings the claim amendments were scrutinised by the respondent and the opposition division in order to assess their compliance with Article 123(2) EPC, in particular since the issues raised at that stage did not concern the claims as granted but post-grant amendments of the claims. Moreover, following established case law of the Enlarged Board of Appeal, the EPC does not entitle a party to be provided with all foreseeable arguments in favour of or against it by the deciding body in advance, a principle which also applies to the decisive reasons (see R 16/10 of 20 December 2010, Reasons, point 2.2.4). Thus, the opposition division was not legally required to provide the appellant with a comprehensive list setting out which of the respondent's objections under Article 123(2) EPC against a specific set of claims it shared at the different stages of the oral proceedings. For these reasons, the board does not concur with the appellant's objection (b).

1.4 Regarding the appellant's allegation (c), it is observed that during the opposition proceedings the appellant filed an amended main request and three auxiliary requests in reaction to the various objections of added subject-matter, all caused by the appellant's claim amendments. The opposition division admitted all of them, except for the third auxiliary request. Based on the minutes of the oral proceedings, it is further noted that the opposition division adjourned the oral proceedings at 11:23 hrs, after having announced that the main request did not meet the requirements of Article 123(2) EPC and again at 14:01 hrs, following the conclusion that the first auxiliary request did not overcome the objection under Article 123(2) EPC. After the first interruption, the appellant submitted a first auxiliary request; after the second break the second and third auxiliary requests were presented. Thus, during the oral proceedings the appellant was given two opportunities to react to the objections raised. Even if the oral proceedings were resumed after a first interruption of 26 minutes (instead of the 30 minutes the appellant had initially asked for), the time given was obviously sufficient to take into account the newly raised objections in the oral proceedings and to prepare an amended set of claims in response. Moreover, as admitted by the appellant, it is not apparent from the minutes that during any of the interruptions the appellant asked for more time for drafting amended requests.
In view of the above, the board does not share the appellant's view that it had insufficient possibility and time to consider the raised deficiencies when preparing the first to third auxiliary requests. Thus, the circumstances under which the appellant had to prepare these auxiliary requests do not amount to a serious procedural violation.

1.5 In the further objection (a), the appellant challenges the way in which a department of first instance has exercised its discretion by not admitting the third auxiliary request and by not accepting further auxiliary requests. In the impugned decision, the opposition division justifies the non-admission of the third auxiliary request by stating that its amendment could, at first sight, not overcome the non-compliance found with respect to the first auxiliary request (cf. Reasons, points 4 and 5). It is, hence, not apparent that the department of first instance exercised its discretion according to the wrong principles or in an unreasonable way. In view of the limited competence to review discretionary first-instance decisions (see point 1.1 above), the board does not see a reason for overruling the opposition division's judgement not to admit the third auxiliary request into the proceedings.

Regarding the possibility of filing further auxiliary requests, the board points to the fact that the second auxiliary request was refused because of a deficiency of added subject-matter regarding a feature ("[...] and the CPU obtains from the raster image processor, concurrently with the instruction to begin the unloading process for the first plate P(N-1) [...] control information associated with a third plate P(N+1) [...]"), which was in substance already present in claim 1 of the first auxiliary request, but was in this context, apparently not indicated by the division as being defective. According to the following statement in the minutes (cf. point 8), the appellant had no possibility to react to the refusal of the second auxiliary request by rectifying this newly established deficiency:

"8. Based on the above opinion the chairman announced that in the view of the opposition division the proprietor had already been given several opportunities to overcome the problems under Article 123(2) EPC and therefore at this late state of the proceedings further requests were not accepted.

8.1 The proprietor announced that by not allowing any more requests the opposition division has violated his right to be heard in accordance with Article 113(1) EPC."

On the other hand, it has to be taken into account that at that stage of the proceedings the opposition division had already accepted the filing of an amended main request and three auxiliary requests in reaction to the objections of added subject-matter. Except for the third auxiliary request, all of them were admitted into the proceedings. Moreover, the applicant's demand for filing further auxiliary requests did not arise from the introduction of new attacks against the patent in suit and/or the submission of additional prior art documents, but exclusively from the fact that the appellant's numerous attempts to rectify deficiencies under Article 123(2) EPC, on the basis of the detailed description of the embodiments, remained unsuccessful.

In view of the above, the opposition division possibly exceeded its scope of discretion by categorically stating that it would not accept further auxiliary requests without duly taking notice of their content. However, even in case this statement ultimately proves to be arbitrary and thus inappropriate, such erroneous application of the law does, under the present circumstances, not amount to a substantial procedural violation (cf. Case Law of the Boards of Appeal of the European Patent Office, 7**(th) Edition 2013, IV.E.8.3.5). The board judges that, having regard to the overall procedure, the opposition division did not breach the appellant's right to a fair trial. Consequently, the appellant's request for reimbursement of the appeal fee under Rule 67 EPC 1973 (applicable here) is refused.

2. Main request - added subject-matter

2.1 The subject-matter of claim 1 of the main request is based on original claim 1 and restricted further with features extracted from the detailed description of the embodiment. The case law typically refers to this type of amendment as an "intermediate generalisation". The parties' views essentially differ on whether or not it was unambiguously clear to a skilled person that all restricting features could be isolated from their originally disclosed context. In particular, the following claim features are objected to by the respondent:

(i) "moving the selected cassette (31) to a plate assembly",
(ii) "and feeding the plate (P) to an image recording assembly (16) such that the pate is halted at a plate pre-loading position",
(iii) "unloading process of removing, from the recording drum (36), the plate (P)",
(iv) "a control assembly (11) for controlling the cassette selection assembly (14), the plate feeding assembly (15), the exposure section (18), the loading section (17) and the unloading section (19)".

2.2 As a preliminary remark, the board notes that the respondent's objections primarily point to differences in the wording between the application as filed and the claim amendments. It is, however, generally accepted that for the purposes of Article 123(2) EPC an explicit basis for an amendment in the original application documents is not required as long as the amendment is clearly and unambiguously derivable, using common general knowledge, from the application as filed.

Turning to the respondent's first specific objection (i), it is observed that according to the original disclosure (cf. page 9, lines 11 to 23), a cassette is horizontally moved from the multi-cassette section (or cassette selection assembly) to the autoloading section (or plate feeding assembly); the autoloading section (or plate feeding assembly) then moves up and down the cassette to a predetermined plate feeding position. The present wording of claim 1 generally reflects the function of the multi-cassette section and the autoloading section, in particular the movements of the cassette, without however, indicating their respective directions. In the judgement of the board, it is unambiguously clear to a skilled reader of the original disclosure that the functions of the above sections are independent from the specific cassette movement directions. Therefore, their omission does not constitute an unallowable generalisation. Consequently, the provisions of Article 123(2) EPC are met in that respect.

Concerning the respondent's second objection (ii), it is implicitly clear that the preloading position of the plate has to be on the feed path. It is equally implicit that the plate movement from the plate feeding position to the pre-loading position (referred to as "step S114" in the detailed description) is completed when the plate is halted at the pre-loading position. Hence, objection (ii) equally does not constitute a violation of Article 123(2) EPC.

The same is true for objection (iii) concerning the allegedly omitted aspect of unloading the plate by moving it in an i-turn fashion. In fact, the statement on page 6, lines 19 to 22, does not refer to an i-turn movement of the plate when unloading it and provides an unambiguous basis for a more general wording of the feature in question.

Finally regarding objection (iv), the amended version of claim 1 defines that the control assembly is suitable for controlling the cassette selection assembly, the plate feeding assembly, the exposure section, the loading and the unloading section. The feature in question makes clear that all claimed machine sections of the apparatus are controlled by the control assembly. The board does not concur with the respondent's objection that the claim erroneously omitted the further aspect of controlling a line buffer 13, which is mentioned in the detailed embodiment on original page 12, lines 15 to 18, for the reason that the line buffer 13 does not, as such, form part of the subject-matter claimed.
In view of the above, the board is satisfied that the wording of claim 1, according to the main request, does not go beyond the content of the application as filed, Article 123(2) EPC.

This decision T 1717/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:T171713.20160614. The file wrapper can be found here. Photo by Ajale obtained via Pixabay under a CC0 license (no changes made).


  1. In find the decision interesting in that the OD "nearly" committed a substantial procedural violation in not admitting AR3 after having admitted AR 1 and AR2.

    The wording "Inappropriate statement of the opposition division not to accept further auxiliary requests" says a lot. I am not sure that another BA would have been so kind with the OD.

    In a similar situation AR 1 and 2 admitted, but not AR3 , the BA concluded to a SPV, cf. T 1788/06, albeit in examination.

    Considering that in not admitting AR3, the OD "possibly exceeded its scope of discretion" was very generous of the Board.

    May be OD chairperson should be a bit more careful when announcing loudly that no further requests will be admitted.

    At least the BA made it clear that a proprietor is entitled to defend himself against new attacks raised during the OP (as far as those are not too late either), but that there are limits as to the number of requests he might file lately when the situation has not changed. A better way to refuse late requests without looking arbitrary?

    With their rules of procedure the BA can bar any late filings, either because they should have been carried out in first instance, Art 12(4)RPBA, are an amendment to a party's case, Art 13(1) RPBA or OP should be postponed, Art 13(3) RPBA.

    For proprietors, cf. T 1617/08, never forget that "The purpose of an oral hearing in appeal proceedings is to give the parties an opportunity to argue their case but not to give an appellant patentee the opportunity to repeatedly modify its requests until an acceptable set of claims is found".
    Whilst this statement is primarily valid in appeal, it should also be applied in first instance, especially since in opposition there is no rule like R 137(3) in examination.

  2. It is to be noted that "Inappropriate statement of the opposition division not to accept further auxiliary requests" is only a catchword to this case. Point 1.5 notes: "However, even in case this statement ultimately proves to be arbitrary and thus inappropriate, ..." Proceeding only to conclude that under the present circumstances it would not have mattered.