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Case law 2 Aug 2021

Admissibility of amendments after summons to oral proceedings

We highlight four recent decisions that discuss Art. 13(2) RPBA 2020 and the admissibility of late filed request under “exceptional circumstances”. In T 1707/17, the Board states that a reasoned explanation of the exceptional circumstance by the applicant is required. Exceptional circumstances that would allow for late admissibility include requests in response to grounds that were poorly substantiated in the preliminary opinion by the Board (T 1991/19), and requests that could have been foreseen by all parties (T 2475/16). Typically, a request filed at the very start of oral proceedings would not be allowable as it could have been filed in writing before the Oral Proceedings (T 0884/18).

In each of the following cases, the Board decided on the admissibility into the proceedings of a main or auxiliary request that was introduced only at the stage of Oral Proceedings. The admissibility of such late filed requests is at the discretion of the Board under Art. 13(2) RPBA 2020, which stipulates that an amendment to a party's appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

In T0884/18 and T1707/17 the Board did not admit the requests. In T2475/16 and T1991/19, the Board did admit the requests. 

T 0884/18: Not allowable – no special circumstances
In T0884/18, the Board communicated its preliminary opinion and did not invite the parties to submit a reply. Seven months after the summons and preliminary opinion had been communicated, the proprietor submitted a new main request at the start of Oral Proceedings. The Board decided not to admit the request into the proceedings because the novelty objections that the amendments intended to overcome had already been raised by the Opposition Division (and repeated by the appellant-opponent in their grounds of appeal). Moreover, the preliminary opinion of the Board was issued more than seven months in advance to the date of the oral proceedings and therefore the respondent-proprietor could have responded by way of amendment well in advance of the oral proceedings. The Board further suggested that a request filed at the start of oral proceedings would typically be unallowable, as it means it could have been filed earlier:

“The new main request was furthermore filed at the very beginning of the oral proceedings, so that it is clear that there can have been no new or special or unforeseen circumstances arising during the oral proceedings that might have justified filing such an amendment at this late stage of the proceedings in the sense of Article 13(2) RPBA 2020.” (reasons 3.3, emphasis added)

T 1707/17: Not allowable – explanation required
In T1707/17, the applicant appealed against a decision of the Examining Division to refuse the patent application on the grounds of inventive step (Art. 56 EPC) and clarity (Art. 84 EPC). In the appeal proceedings, the Board had set out in its provisional opinion that both the main request and the first auxiliary request appeared to lack inventive step (Art. 56 EPC) and would extend beyond the subject matter as originally filed (Art. 123(2) EPC). A clarity objection under Art. 84 EPC was also raised.

At the oral proceedings, the applicant filed a second auxiliary request to address the objections of the Board in relation to the Art. 123(2) EPC objection. The Board considered this late, and prompted the applicant with the question why this request had not been filed earlier. The applicant replied that it had thought that the arguments presented would overcome the Board's objections under Article 123(2) EPC. The Board considered that this does not represent a cogent reason why auxiliary request 2 could not have been filed, at least as a back-up, at an earlier stage. The request was therefore not admitted into the proceedings and the appeal was dismissed.

In its reasoning, the Board further added that:

“In the Board's view, Article 13(2) RPBA 2020 requires the party not only to explain why the case involves exceptional circumstances, but also to explain why its amendment, in terms of both content and timing, represents a justified response to these circumstances. In particular, where a party seeks to amend its case at a very late stage in the proceedings, the cogent reasons referred to in Article 13(2) RPBA 2020 should include reasons why it was not possible to file such an amendment earlier.”

Article 13(2) RPBA 2020 requires the party not only to explain why the case involves exceptional circumstances, but also to explain why its amendment, in terms of both content and timing, represents a justified response to these circumstances.

T 1991/19: Allowable – exceptional circumstances
In T1991/19, an applicant appealed a decision from the Examining Division to revoke the application based on EPC Art. 123(2), 84, 56. In their preliminary opinion, the Board expressed that no patent could be granted on the basis of the requests then on file, in particular because they did not meet the requirements of Art. 84 EPC. The Board further raised objections regarding Art. 123(2) EPC, but with respect to inventive step only remarked that “the patentability requirements pursuant to Article 52 EPC do not need to be discussed at this stage” for each of the Main Request and Auxiliary Requests 1 and 2.

The applicant submitted a new main request during oral proceedings before the Board. The Board admitted the request arguing that:

“In the present case such exceptional circumstances are acknowledged, since the request is considered to be a response to the clarity objections raised by the board for the first time in the communication pursuant to Article 15(1) RPBA and to objections that arose - in view of the somewhat poor reasoning on inventive step in the impugned decision - during the discussion during oral proceedings before the board.”

The decision under appeal was set aside and the case was remitted to the Examining Division with the order to grant a patent on the basis of the main request that was filed during the oral proceedings.

The deletion of all method claims in Auxiliary Request 1 undoubtedly addresses not only that novelty objection but all other objections raised against the method claims (clarity, added subject-matter and inventive step) by rendering them moot.

And finally,
T 2475/16
: Allowable – no new issues raised by introducing the new request

In T2475/16, the Opposition Division had maintained the patent in amended form as amended according to an Auxiliary Request 2b. The proprietor filed an appeal and requested that the decision under appeal be set aside and the patent be maintained in an amended form on the basis of Auxiliary Request 1 (AR1), filed during oral proceedings before the Board, or that the patent be maintained in amended form according to any of the other lower ranked Auxiliary Requests that had been filed with the statements setting out the grounds of appeal, or with a letter in response to the preliminary opinion of the Board.  

The new Auxiliary Request 1 was similar to a former Auxiliary Request 1, wherein all method claims had been deleted and the claim set was limited to the granted apparatus claims. The Board allowed this request into the proceedings and reasoned as follows:

“The deletion of all method claims in Auxiliary Request 1 undoubtedly addresses not only that novelty objection but all other objections raised against the method claims (clarity, added subject-matter and inventive step) by rendering them moot. Only those objections that the other parties had to date validly raised against the granted apparatus claims remain. Because they are the same issues previously raised they do not give rise to any new issues. Moreover, the other parties, having raised these issues previously, and the Board, who had mentioned them in their summons, could be expected to deal with these issues without adjournment of the oral proceedings. (reasons 3.2)

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