4. New submissions on appeal
4.7. Communication of a board of appeal
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The purpose of a communication of a board of appeal pursuant to Art. 15(1) RPBA 2007 is to prepare the oral proceedings; it is not an invitation to the parties to make further submissions or to file further requests (T 1459/11 and T 1862/12).
In T 1168/08, the board stated that the appellants' justification for the late filing of the new requests, namely that they had been filed in reaction to the board's communication, was not acceptable here, because the argumentation in support of the board's preliminary opinion that the claimed subject-matter had no basis in the application as originally filed and lacked novelty corresponded in substance to the reasoning of the respondent in reply to the grounds of appeal. A board communication under Art. 15(1) RPBA 2007 is intended as guidance for the oral proceedings. It helps the parties to focus their argumentation on issues that the board considers crucial for reaching its decision. Where the board's communication contains a preliminary opinion based solely on the issues raised by the parties and their arguments, that communication cannot be taken as a justification for submitting new requests that the parties could have filed earlier (see also T 253/10, T 582/12).
In T 30/15 the appellant argued that the board's preliminary opinion had raised a new objection to the sufficiency of the description. That was why it had filed a new document, doing so as soon as possible. The board disagreed: the cited passage of its preliminary opinion did not contain any new objection but merely summarised those already set out in the decision under appeal. Filing the new document in response was therefore not justified.
- 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 2072/16
See point 4.1.7 of the Reasons.
- T 1756/16
Neuer Einwand nach Zustellung der Ladung zur mündlichen Verhandlung. Entscheidungsgründe,Punkte 3.5-3.10, insbesondere Punkt 3.9.
- T 1187/16
Falls sämtliche in einer Mitteilung der Kammer behandelten Einwände bereits Gegenstand des bisherigen Verfahrens waren, kann diese Mitteilung das Vorliegen außergewöhnlicher Umstände im Sinne von Art. 13 (2) VOBK 2020 nicht begründen (Punkt 3. der Entscheidungsgründe).
- Case law 2019
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In T 2072/16 the claim set of auxiliary request 15 was submitted for the first time at a late stage of the oral proceedings before the board. The appellant argued that the filing of that claim set was an appropriate reaction to the board's claim interpretation and novelty objection under Art. 54(3) EPC. It only now understood the interpretation, in particular of features (c), (d) and (f) of claim 1, as given in the board's preliminary opinion and thus had to be given an opportunity to react properly. As regards the issue of whether filing the new auxiliary request was indeed an "appropriate reaction" to any unforeseeable development or objection becoming apparent during the oral proceedings, the board had to establish whether a development was unforeseeable and whether the reaction was indeed filed at the earliest point in time, i.e. whether it was an immediate reaction to an objection (see e.g. T 1990/07, T 1354/11) and whether it attempted to at least address – if not resolve – the outstanding objections, i.e. whether it was causally linked to the features objected to. In the case in hand, the board's communication clearly indicated the board's interpretation of claim 1 and its provisional opinion that features (a) to (f) and (i) did not appear to establish novelty over document A2. The earliest point in time at which a party should make new submissions (such as an amended claim set) must be the time at which – on an objective basis – an unforeseeable event (such as a fresh objection) becomes apparent during the proceedings. Accordingly, the earliest point in time for filing the amendment according to feature (c') could have been, for example, upon submitting the appellant's response to the board's communication under Art. 15(1) RPBA 2007. The board decided not to admit the auxiliary request 15 into the appeal proceedings under Art. 13(1) RPBA 2007.