Another decision for fans of Article 12(4) RPBA, translated for you from the French. It appears to confirm the impression that opponents invoke this provision more and more often, and that the Boards are reluctant to accept this objection when it is raised by opponents.
[2.1] The [opponents] have requested [the Board] not to admit the requests of the [patent proprietor], which had been filed for the first time during the appeal proceedings,. The [opponents] pointed out that the [patent proprietor] could have filed these new requests before the Opposition Division (OD). They explained that in the course of the oral proceedings (OPs) before the OD, held on July 7, 2009, the chairman, after having announced in a clear way the grounds for opposition leading to the dismissal of all the requests of the patent proprietor, had expressly asked the patent proprietor whether he had the intention of filing new requests. The [patent proprietor], who had not taken this opportunity of filing new requests in order to overcome the objections of the OD but had preferred to do so only during the appeal proceedings, had acted in an abusive way. Therefore, its requests should be considered to be inadmissible (see T 1067/08, T 144/09 and T 23/10).
[2.2] The admissibility of new requests in appeal proceedings is governed by Article 12(4) RPBA. This provision allows the Boards of appeal of the EPO acting as reviewing authority (instance de revision) to hold inadmissible any request filed in the course of the appeal proceedings if it could have been presented during the first instance proceedings. As a consequence, the Boards of appeal have a discretionary power and can dismiss such requests in order to ensure just and reliable proceedings. When the Boards exercise their power they base themselves on the relevant circumstances of the case in order to conclude if and why a specific request could have been presented during the first instance proceedings.
The Board notes that the decision of the OD on the first three requests of the patent proprietor […] (main request and auxiliary requests 1 and 2) did not concern the patentability of claim 1, which was the only independent claim, but claim 2 the subject-matter of which the Board considered not to comply with the requirements of A 123(2). However, the patent proprietor had filed two more requests (auxiliary requests 3 and 4) which did not contain the subject-matter of claim 2 of the preceding requests and which consequently did comply with the requirements of A 123(2). These requests have been dismissed based on another ground for opposition, in particular insufficiency of disclosure.
In view of Article 12(4) RPBA and the circumstances of the present case, the Board considers that the main request of the [patent proprietor] (the only request that is relevant for the present appeal) filed together with its written submissions of October 14, 2011, i.e. after the communication of the Board, is admissible because it attempts to overcome the deficiencies of the requests filed before the OD and dismissed by it, as well as the objections raised by the parties during the appeal proceedings.
The Board agrees with the [patent proprietor] that in view of the objections raised during the OPs before the OD, the drafting of new requests raised questions that were difficult to solve at once and that it was difficult to draft a request claiming a specific combination of features that could successfully overcome all the objections right away.
[2.2.1] The circumstances of the present case are different from the cases cited by the [opponents] (T 1067/08, T 144/09, T 23/10). In those cases the competent Boards have come to the opposite conclusion, i.e. that the requests filed during the appeal proceedings could have been filed in the course of the first instance proceedings. Based on the particular circumstances of these cases – which differ from those of the present case – the Boards have decided to make use of their discretional power conferred by Article 12(4) RPBA, first sentence, by not admitting the requests under consideration into the appeal proceedings.
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