4.5. Amendments after arrangement of the oral proceedings
Overview
4.5. Amendments after arrangement of the oral proceedings
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Strict criteria are applied to amendments sought to be made after oral proceedings have been arranged. According to Art. 13(3) RPBA 2007 these amendments "shall not be admitted if they raise issues which the board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings." Thus, the parties' right to be heard and/or procedural economy take precedence over other considerations (T 232/08). This provision therefore leaves the decision‑making board no room for discretion (T 253/10).
- T 1857/19
Regarding the question under which circumstances the mere deletion of a category of claims is not to be considered an amendment of a party's appeal case or could - at least - be seen as exceptional circumstances under Article 13(2) RPBA 2020, see reasons 1.1
- T 2271/18
A clear and detailed preliminary opinion provided by a board - rather than merely "drawing attention to matters that seem to be of particular significance for the decision to be taken" (cf. Article 15(1), fourth sentence, RPBA 2020) - is predominantly intended to give the party(ies) an opportunity to thoroughly prepare their arguments in response to it but not to file new submissions, such as new sets of claims, and to thereby arguably shift the focus regarding the issues on file to be decided in appeal proceedings. In particular, amendments submitted in response to such a preliminary opinion cannot give rise to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see point 3.3 of the Reasons).
- T 2091/18
Das Streichen eines oder mehrerer unabhängiger Ansprüche stellt eine Änderung des Beschwerdevorbringens im Sinne von Artikel 13 (2) VOBK 2020 dar (siehe Punkte 3 und 4 der Entscheidungsgründe).
- T 884/18
Reasons 3, application of Art 13(2) RPBA 2020
- T 1790/17
The purpose of the oral proceedings for the appellant is to better explain his case and for the Board to understand and clarify points which, perhaps, up to that point were not sufficiently clear. This is particularly relevant in ex parte cases where besides the applicant/appellant no other party is involved. If amendments resulting from such discussions were not possible, oral proceedings would be pointless. The new [substantially amended] auxiliary request was filed as a direct reaction following the exchange of arguments in the oral proceedings and addressing the objections and concerns the Board had. Furthermore, this request overcame the grounds on which the appealed decision was based. The Board considers the filing of such a request is justified by exceptional circumstances and therefore admits it into the proceedings. (See point 7 of the reasons)
- T 1707/17
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 (Reasons, point 2.4).
- T 1569/17
Zur Frage, ob das Streichen von Produktansprüchen keine Änderung des Beschwerdevorbringens im Sinne von Artikel 13(2) VOBK 2020 darstellt (siehe Punkt 4.3 der Entscheidungsgründe).
- T 2486/16
1. In applying Article 13(2) RPBA 2020 the Board may also rely on the criteria set out in Article 13(1) RPBA 2020 ... . The criteria of Article 13(1) RPBA 2020 may therefore supplement, but do not supplant, the separate requirements of Article 13(2) RPBA 2020 (Reasons, point 6.4.1).
2. When filing requests within the period mentioned in Article 13(2) RPBA 2020, the party, in providing its "cogent reasons", should not only identify the circumstances invoked and explain why they are to be regarded as "exceptional", it should also explain why these circumstances had the direct result of preventing the party from filing its requests at an earlier stage. (Reasons, point 6.5.6). 3. The mere fact that, in a communication under Article 15(1) RPBA 2020, the Board departs in some respects from the reasoning of the Examining Division on inventive step (while reaching the same conclusion) does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, nor does it open the door to the filing of new requests as a response (Reasons, point 6.6.3).
- T 1480/16
Die Streichung der Verfahrensansprüche in Hilfsantrag 5 gegenüber dem mit der Beschwerdeerwiderung eingereichten Hilfsantrag 3 wird nicht als Änderung des Beschwerdevorbringens gesehen, da sich dadurch keine geänderte Sachlage ergibt (siehe Punkte 2.3 der Gründe).
- T 950/16
see reasons 3.2
- T 752/16
Eine Änderung der vorläufigen Meinung der Kammer zu einem bestimmten Einspruchsgrund stellt keinen "außergewöhnlichen Umstand" im Sinne von Artikel 13(2) VOBK 2020 dar (siehe Punkt 3 der Entscheidungsgründe).
- T 656/16
Gründe 6.3
- T 2214/15
If amendments intended to overcome objections of lack of support and lack of clarity raised in the summons give rise to further objections concerning clarity or added subject-matter, pointing out these further objections does not represent exceptional circumstances within the meaning of Article 13(2) RPBA 2020, but rather an ordinary development of the discussion which does not go beyond the framework of the initial objection. See reasons 5.3 and 5.4.
- Case law 2019
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In T 156/15 the appellant filed auxiliary request 19 after the chairman had announced the results of the board's deliberation on the main request and auxiliary requests 1 to 18, and filed auxiliary request 20 after the chairman had announced the result of the board's deliberation on auxiliary request 19. By its behaviour, the appellant (patent proprietor) was, as a matter of fact, adjusting its strategy to the results of the board's deliberation, which put the appellant (opponent) in a position where it was difficult to react. In deciding on the admission of such late-filed requests, respect for the principle of fairness of the procedure might make it immediately apparent that these requests should not be admitted, even without also considering specific criteria for the exercise of the board's discretion such as prima facie allowability.
In T 656/16, auxiliary requests 8A and 8B were not filed until the oral proceedings before the board. The boards frequently take the approach of admitting requests not filed until after oral proceedings have been arranged only if, in particular, they are clearly or manifestly allowable, which means that it must be immediately apparent to the board, with little investigative effort on its part, that the amendments made successfully deal with the issues raised without giving rise to new ones. As auxiliary requests 8A and 8B did not meet that requirement, the board, exercising its discretion under Art. 13(3) RPBA 2007, decided at the oral proceedings not to admit them. The respondent (patent proprietor) then filed another auxiliary request (8C). However, the board considered that the respondent had already had an opportunity on filing auxiliary requests 8A and 8B to overcome the reservations it had expressed before their filing about the then pending requests. The respondent had consciously declined that opportunity, preferring instead to deal with the board's reservations only bit by bit. For reasons of fairness, in particular procedural fairness, and of procedural economy, neither the board nor the other parties to the proceedings could reasonably be expected to accept that. The board therefore exercised its discretion to refuse to admit auxiliary request 8C too. The patent was revoked.