In this case the patent proprietor filed an appeal against the revocation of its patent. It complained that the Opposition Division (OD) had not admitted certain auxiliary requests filed during the oral proceedings (OPs).
The patent proprietor requested the appeal fee to be reimbursed; it explained that the two auxiliary requests filed at the OPs before had been filed in reaction to the main request surprisingly being considered to contravene A 123(2). It had been expected that the OD, after its deliberation concerning said auxiliary requests, at least would have asked the patent proprietor whether or not it would like to make further comments but this was not the case. In case the OD had done so, the patent proprietor would have deleted the second independent process claim comprised in these auxiliary requests. It was its intention to explain to the OD the reasons for filing two independent claims, but the OD did not give the patent proprietor a chance to do so.
In response to the Board’s remark that no correction of the minutes had been requested, the patent proprietor made the following statement:
The Board decided to remit the case to the OD for further processing but refused the reimbursement of the appeal fee:
[5] The [patent proprietor’s] request for reimbursement of the appeal fee is considered not to be equitable for the following reasons (see also Case Law, 6th edition 2010, section VII.E.17.3.2):
[5.1] The [patent proprietor] does not argue that the minutes or the decision do not reflect what actually was the course of events at the OPs. To the contrary, on the remark of the Board in its preliminary opinion that it had not requested correction of the minutes, it stated expressly that it did not need to as the minutes correctly reflected what happened.
From these reactions the Board can establish that the admissibility of the two auxiliary requests, filed at the OPs, was at that point challenged by the [opponent] […] on the basis of their late filing as well as for their compliance with R 80 (the decision mentions erroneously A 80).
The minutes do not mention any arguments by the [patent proprietor] on this point, only its explanation of what was the content of the requests, after which follows the statement of the [opponent] that it considered their filing late. After that the minutes state that the proceedings were adjourned for deliberation and resulted in the OD’s statement after the reopening of the proceedings that the requests were not admitted for their (i) lateness, (ii) not being occasioned by a ground of opposition (R 80) and (iii) not fulfilling A 84.
[5.2] The above leads the Board to the conclusion that the [patent proprietor] did have the opportunity to react to the question of admissibility of these requests, but did not use it.
This is confirmed by the statement of the [patent proprietor] that it had expected the OD, after its deliberation, to ask the [patent proprietor] to explain the claim structure, in particular the necessity to file an extra independent claim. It was under the impression that the deliberation served only the purpose of allowing the OD and the other party to study the claims […]. It was then surprised that the deliberation resulted immediately in the requests not being admitted.
[5.3] However, if the [opponent] raises in the discussion the issue of admissibility of requests filed at the OPs, more in particular the issue whether they are related to grounds of opposition (R 80), it is up to the [patent proprietor] to bring forward its arguments in favour of admissibility, including reasons why they do comply with Rule 80 EPC. It cannot expect the OD, which has to stay neutral in such inter partes proceedings, to prompt the [patent proprietor] to make further submissions or to ask – as the [patent proprietor] stated – for further explanations. The OD was therefore not at fault in deciding to deliberate on the admissibility of these requests and pronouncing its conclusion after the deliberation.
[5.4] Moreover, if there is a doubt or a certain expectation on what will be the subject of a deliberation, it is up to the parties to verify this before the OPs are interrupted for deliberation. It can be expected of the parties to actively participate, in particular at the OPs, and to actively safeguard their interests.
In this respect the Board concurs with R 17/11 [19] in which the Enlarged Board of Appeal made it clear that in appeal proceedings it is upon a party to make sure that the points it wishes to raise are actually raised in the proceedings. If it considers something is going to be overlooked, it should raise the issue, if necessary with a formal request, which should then be minuted.
The present Board considers these principles to apply also in proceedings before an OD.
[5.5] In that sense, the [patent proprietor] had the opportunity to raise the necessary points before the OD interrupted the proceedings for deliberation. Contrary to its statement that it did not “have the slightest chance to explain to the OD the motivation to file two independent claims of its own accord”, it did have that chance, but did not use it.
The Board therefore cannot find fault in the manner in which the OD handled the issue of admissibility of the requests in question; the right to be heard has been observed (A 113(1)).
[5.6] In the notice of appeal the [patent proprietor] simply requests “reimbursement of the appeal fee” but does not give any reasoning in support. In the statement of grounds the request is not repeated, nor is a substantiation of that request to be found expressis verbis. However, in point 3.a) of the latter it is argued against the manner in which the discussion was held at the OPs and against the reasoning in the impugned decision that the requests were not occasioned by grounds of opposition. If this is to be considered the substantiation of the request for reimbursement of the appeal fee, in the sense that the [patent proprietor] was not able to react to such reasoning, the Board establishes the following:
[5.7] The decision states with respect to the two auxiliary requests in question that they were late filed and were not based on granted claims. Further, the auxiliary requests introduced a new independent claim in the same category (emphasis added by the Board).
The [patent proprietor] is partly right in that where it concerns claim 1 of these requests, they could not be filed earlier, as the OD had given a positive opinion on the main request, which it only changed as late as at the OPs. The amendment of claim 1, by reintroducing the passage deleted in examination, therefore was clearly occasioned by the ground of opposition of A 100(c), raised by the [opponent] and was – as such – not late filed.
[5.8] However, the requests with this claim 1 also comprised a further independent claim (5, respectively 3) resulting from only the features of claim 9 of the patent as granted, which was dependent on claim 1, but without taking up the features of claim 1 itself.
The conclusion of the OD that this concerned a new independent claim was therefore not without merit.
The case law on introduction of new independent claims in opposition and its compliance with R 80 is quite clear in that this is not necessarily seen as occasioned by grounds of opposition (see Case Law of the Boards of Appeal of the European Patent Office , 6th edition 2010, section VII.D.4.1.3 b)). The non-admittance of the auxiliary requests on this basis is therefore also defendable.
[5.9] As the [patent proprietor] has not furnished any arguments regarding the admissibility of these requests, let alone on the question of R 80, introduced by the [opponent] in the OPs (see above), the impugned decision could be based on merely establishing that fact, without infringing the [patent proprietor’s] right to be heard.
[5.10] In view of the above, the Board concludes that a reimbursement of the appeal fee would not be equitable, the request for reimbursement is therefore refused.
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