Wednesday, November 01, 2017 T 514/14 - Respondent could have reacted to the raised objections well in advance to the oral proceedings

In this opposition appeal, the parties were summoned to oral proceedings. In a communication issued in preparation therefor, the Board drew the parties' attention to some issues likely to be addressed at the oral proceedings. The Board inter alia expressed concerns regarding the clarity of claim 1 held allowable by the Opposition Division and pointed out that compliance with Article 84 EPC might also become an issue with regard to the auxiliary requests. Concerning the issue of compliance with Article 123(3) EPC, the Board drew the parties' attention to a specific paragraph of the Case Law Book. The Respondent/proprietor commented on the points addressed in the Board's communication, and defended inter alia its position submitting that the amended claims of all the already pending requests were clear (Article 84 EPC) and complied with Article 123(3) EPC. It nevertheless filed three additional sets of amended claims as auxiliary requests 4 to 7. Oral proceedings before the Board were held. The debate focused on the compliance of the pending claims with Articles 84 EPC and 123(3) EPC. During the oral proceedings, the Respondent filed a further amended set of claims as auxiliary request 1bis, to be intercalated between auxiliary requests 1 and 2. The Appellant/opponent asked not to admit auxiliary request 1bis due to its late-filing. 

Tuesday, March 07, 2017 T 1768/11 - Almost destroyed the chance to present new requests with the statement of grounds

In the Annex to the summons for oral proceedings, the Examining Division raised objections under Art. 84, 123(2) and 56 EPC.  The applicant responded by requesting "that instead of Oral Proceedings an appealable decision be issued based on the state of the file". The applicant neither commented on the substance of the communication nor submitted amended claims. After the Examining Division had issued the requested decision, the applicant filed the present appeal and, with its statement of grounds of appeal, replaced its sole substantive request with a new main request and first and second auxiliary request. The applicant hereby took a major risk: when wanting to file new requests, the proper reaction would have been to comment on the objections and file amended claims in first instance proceedings, as Art. 12(4) Rule of Procedure of the Board of Appeal allows the Board to held requests inadmissible that could -and should- have been presented in first instance. Luckily, the Board decided to exercise this discretionary power in the appellant's favour and to admit them into the proceedings (... but they failed on Art.123(2) and 84).