In opposition appeal, following the decision of the Opposition Division to revoke the patent since none of the request on file met the requirements of Art. 123(2) EPC, the appellant patentee presented, about 1 month before the oral proceedings before the Board, a new main request wherein claim 1 was identical to claim 1 of the former main request and claim 2 was deleted. Together with the new main request the appellant filed two arguments setting out claim 1 of the main request met the requirements of Art. 123(2) EPC.
The first argument was that the amendment did not add technical teaching since the application as filed provided an indication that percent values were to be calculated on volume basis, the feature ‘’by volume’’ therefore would not add matter. Secondly, if the feature would be considered not derivable from the application as filed it would still comply with the requirements of Art. 123(2) EPC in view of G1/93 since it did not provide a technical contribution to the claimed subject-matter.
During oral proceedings the appellant requested to set aside the decision under appeal and maintain the patent as granted or on the basis of the request filed 26 March 2021. Remittal to the opposition division was requested if the Board found one of the requests in compliance with Art. 123(2) EPC. The respondents requested to dismiss the appeal and not to admit the request filed on 26 March 2021 into the proceedings.
Respondent 01 further requested the second argument not to be admitted into the proceedings for allegedly being late filed. The argument based on G 1/93 was not limited to a reference to the case law, but a new argument had been developed on the basis of this case law, forming a new line of argument which amounted to an amendment to the appellant's appeal case. Art 13(2) RPBA 2020 applied and there were no exceptional circumstances presented by the appellant.
In the present case the Board issued the summons to oral proceedings in July 2020. Notification of the summons occurred before the appellant filed its argument based on G 1/93. This means that Article 13(2) RPBA 2020 is relevant (Article 25(3) RPBA 2020). That provision sets out that:
"Any amendment to a party's appeal case made...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."
The Board made reference to T247/20 and set out the test under Art. 13(2) RPBA 2020 is two-fold: ‘’The first question is whether the submission objected to (i.e. the argument based on G 1/93) is an amendment to a party's appeal case. If that question is answered in the negative, then the Board has no discretion not to admit the submission. If, however, that question is answered in the positive, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons, why the submission is to be taken into account.’’
An amendment to a party's appeal case is a submission which goes beyond the requests, facts, objections, arguments and evidence relied on by the party in its statement of grounds of appeal. As there was no argument based on G 1/93 in the grounds of appeal the question was whether this argument would be considered an amendment to the appellant's appeal case. The Board considers that it is not the case as explained here below.
In view of G4/92 arguments are considered ‘reasons based on facts and evidence which have already been put forward’. The Board further set out that arguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings as also recognized in the explanatory remarks to the RPBA 2020.
Respondent 01 countered that the argument based on G 1/93 was not limited to a reference to the case law, but that a new argument had been developed on the basis thereof forming a new line of argument and an amendment to the appellant's appeal case.
In reaction thereto the Board set out that the appellant's argument is essentially that G 1/93 permits an undisclosed feature to be added to a claim in certain limited circumstances, and that these circumstances existed in the present case. In short :’’**()the principle set out in headnote 2 of G 1/93 applied to the present case. The Board is of the opinion that this argument is precisely what was meant by the passage of the explanatory remarks to the RPBA 2020 referred to above, because an argument about the interpretation of law will naturally concern how that interpretation applies to the facts of the case before the Board.’ [emphasis added]. The Board concurred therewith.
The appellant’s argumentation based on G1/93 was admitted into the procedure. The Board then decided that the first line of arguments do not hold since there is no disclosure in the application as filed that may be considered to support the term ‘’by volume’’. Also the Board could not follow the appellant's argument that if the wording "by volume" would not be derivable from the application as filed, the main request would nevertheless comply with Article 123(2) EPC in view of the findings in G 1/93: the addition to a claim of an undisclosed limiting feature cannot apply to the present case, since the feature "by volume" here provides a technical contribution to the subject-matter of the claimed invention.
The Board came to the conclusion that the requests on file did not meet the requirements of Art. 123(2) EPC and dismissed the appeal.