T 756/18 × View decision
La division d'opposition outrepasse les limites appropriées de son pouvoir d'appréciation lorsqu'elle déclare n'admettre qu'une seule requête subsidiaire et écarte d'emblée des requêtes supplémentaires sans raisons apparentes valables et sans même avoir examiné si les modifications auraient permis d'écarter toutes les objections valablement soulevées jusque là sans donner lieu à de nouvelles, les rendant ainsi potentiellement recevables (cf. point 4 des motifs).
T 966/17 × View decision
1. Das Ermessen der Einspruchsabteilung, geänderte Anträge zum Verfahren zuzulassen, ergibt sich grundsätzlich aus Artikel 123(1) EPÜ (erster Satz) in Verbindung mit Regeln 79(1) und 81(3) EPÜ (siehe Gründe, Punkt 2.2).
2. Eine Änderung der Auffassung der Einspruchsabteilung in der mündlichen Verhandlung in Bezug auf ihre mit der Ladung kommunizierte vorläufige Meinung kann alleine nicht dazu führen, dass in der mündlichen Verhandlung beliebige Anträge ohne ein Ermessen der Einspruchsabteilung zugelassen werden müssen (siehe Gründe, Punkt 2.4).
3. Soweit die Patentinhaberin mit neue Anträgen auf eine neue Angriffslinie der Einsprechenden und ein insoweit neu eingereichtes Dokument reagiert, kann bei der Entscheidung über die Zulassung berücksichtigt werden, ob die Anträge prima facie gewährbar erscheinen oder ohnehin aufgrund anderer schon länger im Verfahren befindlicher Einwände zurückzuweisen wären (siehe Gründe, Punkt 2.4).
4. Die Parteien haben in einem strittigen Verfahren kein Anrecht auf eine "detaillierte Anleitung" durch das entscheidende Organ zur Behebung des diskutierten Mangels. Stattdessen obliegt es jeder Partei, selbst auf den Vortrag des Verfahrensgegners adäquat zu reagieren (siehe Gründe, Punkt 2.5).
T 84/17 × View decision
If the arguments in the appealed decision show that for the discretionary decision taken in the first instance some criteria weighed so heavily that other criteria cannot outweigh them, it is not always necessary that all criteria that could theoretically influence a discretionary decision concerning the admittance of a late filed request are discussed in the appealed decision (point 2.2.3) If the need to file amended requests does not arise owing to the submission of additional documents that are merely confirming the arguments on file but had existed before, the filing of such additional documents cannot always justify the filing of new (belated) requests (point 2.3).
R 6/19 × View decision
The basis for a board's (and opposition division's) discretion to admit or not claim requests is Article 123(1)EPC, (see Reasons points 5 to 10).
In decision T 756/18 the board found that the opposition division had overstepped the limits of its discretion by stating that it would admit only one auxiliary request and rejecting all other auxiliary requests from the outset for no apparent reason; it did not even examine whether the amendments could have overcome all the objections validly raised up to that point without giving rise to any new ones – which might have rendered them admissible. No abuse of procedure or delaying tactic on the part of the appellant was apparent from the file.
In T 966/17, the appellant (patent proprietor) argued that the opposition division had infringed its right to be heard by refusing to admit the auxiliary requests it had filed at the oral proceedings. The board first of all observed that the opposition division's discretion in deciding whether to admit amended claims followed in essence from Art. 123(1) EPC (first sentence) in conjunction with R. 79(1) and 81(3) EPC and stated the following reasons. Art. 123(1) EPC provided that a European patent application or a European patent could be amended in proceedings before the EPO in accordance with the Implementing Regulations. In opposition proceedings, R. 79(1) EPC further allowed the patent proprietor to amend the description, claims and drawings within a period set by the opposition division. Later amendments, by contrast, were admissible only at the opposition division's discretion, as was clear from R. 81(3) EPC for instance ("shall, where necessary, be given the opportunity"). The board then considered that the opposition division's expression of a different opinion at the oral proceedings from the one provisionally set out in the communication accompanying the summons was not enough by itself to deprive it of that discretion and oblige it to admit whatever requests were filed at the oral proceedings. The appellant had invoked the decision in T 688/16, but the board found it irrelevant because, in contrast to the situation there, the auxiliary requests filed by the appellant in the case in hand would have needed to deal with an Art. 123(2) objection already raised during the written proceedings. It was permissible, the board held, for the decision on admitting new requests filed by the appellant in response to a new line of attack taken by the opponent on the basis of a newly filed document to take into consideration whether those requests were prima facie allowable or would anyway have to be refused owing to other objections already raised at a previous stage in the proceedings. The board went on to make it clear that parties to adversarial proceedings were not entitled to "detailed guidance" from the decision-making department on how to overcome a deficiency at issue. It was instead each party's own responsibility to come up with a suitable answer to the case made by the opposing party.
In T 84/17 the appellant (patent proprietor) requested that the decision of the opposition division not to admit its auxiliary requests, submitted during first-instance oral proceedings, be overturned for improper exercise of discretion. It argued that the opposition division had not exercised its discretion in accordance with the right principles, as it had only considered the timeliness of the filing without also considering the prima facie allowability of these requests. The board, however, concluded that the opposition division had in fact exercised its discretion in a reasonable way and had used the correct principles as set out in G 7/93 (OJ 1994, 775, referred to in T 129/12, T 2415/13). The opposition division had correctly stressed that the auxiliary requests had been filed very late without appropriate justification, the underlying objections having been on file since the notice of opposition and their pertinence commented on in the annex to the summons. In the board's view, the admittance of certain documents, which had been filed by the respondents in response to the opposition division's communication, did not result in the introduction of new arguments that could have justified the filing of the auxiliary requests. Moreover, the opposition division's decision not to admit the requests was not exclusively based on the unjustified lateness but also on the finding that the opponents could not be expected to deal with the specific restrictions of subject-matter introduced with these requests, i.e. the opposition division also considered the substance of the amendments. In the board's opinion, in the given circumstances, there was no need to discuss all criteria that could theoretically influence the discretionary decision. Rather, if the arguments in the particular case showed that some criteria weighed so heavily that other criteria could not outweigh them, it was not necessary to discuss all criteria. None of the decisions cited by the appellant (T 463/95, T 1485/08, T 544/12) contradicted this finding, as none stated or implied that the right principles for exercising discretion required that the opposition division must always assess the prima facie allowability of a new request.
In T 802/17 the opposition division had given the patent proprietor an opportunity to draft one additional request during the oral proceedings. However, as it had then filed only an amended main request, its later request for permission to file amended auxiliary requests too was refused. In the board's view, the presumably underlying considerations of procedural economy (which the opposition division had anyway merely hinted at) had been insufficient to justify this refusal in the circumstances, as the proprietor had been reacting to a new objection under Art. 123(2) EPC, which had been a surprising turn taken in the proceedings and which its amendment had overcome.
In T 368/16 the opposition division allowed the proprietor to file various auxiliary requests in the course of the oral proceedings. Request IIIb was admitted and found to comply with the requirements of Art. 83 and Art. 123(2) EPC. Its process claim 1 was held to be novel but not its product claim 23. The proprietor then filed a further request consisting only of process claims 1 – 22 of request IIIb. This request IVa was not admitted by the opposition division. Based on the following considerations the board held that the opposition division had exercised its power of discretion under R. 116(2) EPC in an unreasonable way and by not applying the proper principles: The request per se was apt to overcome all the objections discussed so far during oral proceedings. Even if inventive step had still to be discussed, its filing could not be considered as an attempt to prolong unnecessarily the proceedings; on the contrary, since request IVa was based on a convergent limitation with respect to request IIIb and on a combination of features derived from the granted claims, it clearly restricted the issues remaining to be discussed.
In T 688/16 the opposition division had revoked the patent after refusing under Art. 114(2) EPC to admit auxiliary requests 2 and 3 filed during the oral proceedings on the ground that they clearly lacked novelty. The appellant (patent proprietor) requested on appeal that this decision be set aside and that the patent be maintained in amended form on the basis of its main request, which corresponded to the auxiliary request 3 it had filed during the opposition proceedings. The board held that the opposition division had lacked discretion to decide whether (or not) to admit auxiliary request 3. It had cited Art. 114(2) EPC but it served as a basis only for discretion to admit or refuse facts or evidence. Discretion not to admit late-filed requests was instead conferred by R. 116(2) EPC, but it could be exercised only if the patent proprietor had been notified of the grounds prejudicing the maintenance of its patent and invited to submit new documents by the date fixed under R. 116(1) EPC, in which case sentences 3 and 4 of R. 116(1) EPC applied mutatis mutandis. That discretion was thus conditional on a communication stating that grounds prejudiced the maintenance of the patent. In the case at issue, however, the opposition division had not issued any such negative communication but only one stating its provisional opinion that none of the grounds for opposition prejudiced maintenance of the patent as granted. The board found that R. 116(2) EPC had thus not been applicable. On the contrary, since the opposition division had not changed its provisional view until the oral proceedings, it ought to have given the patent proprietor an opportunity to respond accordingly by submitting a new request. The board could see no grounds for refusing to admit the main request on appeal, which had already been filed with the statement of grounds of appeal and so, exercising its discretion, decided to admit it in accordance with Art. 12(4) RPBA 2007.
5.1.3 Time frame for filing amendments
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R. 80 EPC (R. 57a EPC 1973) does not specify the point in time up to which amendment is allowed; here the practice in existence prior to the introduction of R. 57a EPC 1973 remains unchanged. This restriction of the right to amend is in line with the object and purpose of opposition proceedings, and does away with the need for a discretionary provision like R. 137(3) EPC (R. 86(3) EPC 1973) (see notes on introduction of R. 57a EPC 1973 in Notice dated 01.06.1995, OJ 1995, 409).
The boards of appeal have derived, in particular from R. 79(1) EPC (R. 57(1) EPC 1973), the principle that the proprietor has no right to have amendments admitted at any stage of opposition proceedings. At the discretion of the opposition division or the board of appeal, amendments can be refused if they are neither appropriate nor necessary. In particular, late-filed amendments can be refused if they are not a fair attempt to overcome an objection made. In general, the question whether an amendment is appropriate can only be answered on the basis of its content, i.e. after it has actually been submitted. To refuse any further amendment is only appropriate if it is evident after various unsuccessful amendments that the proprietor is not seriously trying to overcome the objections but is only delaying the proceedings (T 132/92; see also T 1758/15). In T 802/17, the opposition division had given the patent proprietor an opportunity to draft an additional request (German: "einen zusätzlichen Antrag zu formulieren") during the oral proceedings. However, as it had then filed only an amended main request, its later request for permission to file amended auxiliary requests too was refused. In the board's view, the presumably underlying considerations of procedural economy (which the opposition division had anyway merely hinted at) had been insufficient to justify this refusal in the circumstances, as the proprietor had been reacting to a new objection under Art. 123(2) EPC, which had been a surprising turn taken in the proceedings and which its amendment had overcome.
In T 463/95 the board highlighted that according to T 153/85 the opposition division exercises a discretionary power in relation to requests for amendment. Consideration of a new or amended independent claim could reasonably be expected when such a new or amended claim results from a combination of features taken from granted claims which has been specifically opposed, since the opponents should already be familiar with the subject‑matter.
In T 648/96 the amendments requested during the oral proceedings before the opposition division were simply a response to arguments put forward. The board said EPO deciding instances have a discretion to consider documents (including claims) filed in particular during oral proceedings, if they respond to the instance's or the opponent's objections, or are clearly grantable. Undesirable delays in the proceedings should, however, be avoided.
In T 382/97 the appellant (patentee) had submitted three auxiliary requests only at the beginning of oral proceedings. It tried to justify disregarding the time limit set by the opposition division under R. 71a EPC 1973 (R. 116 EPC) by citing R. 57a EPC 1973 (R. 80 EPC) which, it asserted, "was created as a lex specialis for amendments during opposition proceedings". The board could not accept the argument that the absence of a time limit in R. 57a EPC 1973 entitled a patent proprietor to submit amendments to its patent at any time, i.e. also during oral proceedings, without good reason. In the board's judgment, R. 57a EPC 1973 and R. 71a EPC 1973 together governed the procedural preconditions for amendments to a patent by its proprietor before the opposition division, which amendments of course had to comply with Art. 123(2) and (3) EPC 1973: R. 57a EPC 1973 created the legal basis for amendment, and R. 71a EPC 1973 governed the deadline for doing so. The board emphasised that amendments not complying with a time limit set under R. 71a EPC 1973 might nevertheless be admissible if there were good reasons for their late submission. Finally, the board noted that the patent owner's right to amend its patent under R. 57a EPC 1973 did not equate to an automatic right to file additional auxiliary requests. Any amendment had to be carried out in the most expedient manner, which had to be established by the opposition division, taking into due account the interests of all parties.
In T 2415/13 the opposition division had admitted an auxiliary request filed only at the oral proceedings since, as stated in its decision, the amendment made in it was "neither unforeseeable nor difficult to grasp". In the board's view, this implied that, according to the opposition division, the opponent could be expected to deal with the amendment during the oral proceedings. This was an appropriate criterion to apply when deciding on the admissibility of late-filed requests and the board has no reason to assume that the opposition division applied it in an unreasonable way.
In T 754/16 the opposition division had not admitted auxiliary requests 8 and 9, filed during oral proceedings, on a prima facie basis (referring to Art. 114(2) and R. 116 EPC). The board noted that this presupposed, in the first place, that the requests were late (confirming T 273/04). This was however not the case since filing the auxiliary requests was a direct response to the opposition division's change of opinion in the oral proceedings. Under R. 116(2) EPC, requests filed after the final date set for making written submissions can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent, which was not the case here. Neither did Art. 114(2) EPC provide a basis for disregarding these requests since it applied only to late filed facts and arguments.
Concerning the time frame for filing amendments, see also in this chapter IV.C.6. "Right to be heard in opposition proceedings".
- T 879/18
- T 756/18
- T 966/17
- T 84/17
- T 688/16
- R 6/19
- Case law 2021
- Case law 2020
- Case law 2019