4. New submissions on appeal

Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments, and of course the evidence, submitted in a timely fashion in the written proceedings.

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.

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.

The board in T 1914/12 held (contrary to T 1621/09) that the boards did not have any discretion when it came to the admissibility of late-filed arguments based on facts already in the proceedings. Invoking Art. 114 EPC, which in English referred to arguments (as well as to facts and evidence) in paragraph 1, but not in paragraph 2, it concluded that the discretion conferred by paragraph 2 did not extend to late-filed arguments and observed that this was in line with the pre-2011 case law (e.g. T 92/92, T 861/93, T 131/01, T 704/06, T 926/07 and T 1553/07). It noted that two decisions had been taken in September 2011 – T 1069/08 and T 1621/09 – in which that case law had been questioned on the basis of Art. 13(1) in conjunction with Art. 12(2) RPBA 2007 and it had been concluded that the boards did have some discretion when it came to late-filed arguments. However, it was unconvinced by the reasoning underlying these decisions. Their interpretation ignored the fact that Art. 114(2) EPC provided no justification for such discretion, as the older case law had held many times. In English at least, the EPC, and in particular Art. 114 EPC, treated facts and arguments differently. More specifically, Art. 114(2) EPC explicitly conferred discretion for late-filed facts but not for late-filed arguments based on facts already in the proceedings. In the board's view the RPBA, although they could provide more detail on and help in interpreting the EPC, could not give the boards powers that the EPC did not.

In T 47/18 the statement of grounds of appeal contained neither an objection of lack of clarity of the claims nor an objection under Art. 123(2) EPC. It contained only submissions with respect to inventive step. It was only after the parties had been summoned to oral proceedings that the opponent raised such objections. The board referred to the established case law that new objections, which had not been raised in the statement of grounds of appeal, were considered an amendment to a party's case. Admission of such objections was at the discretion of the board pursuant to Art. 13(1) and/or 13(3) RPBA 2007 (T 996/15 for a new objection under Art. 84 EPC; T 682/11 for a new objection under Art. 123(3) EPC; T 1307/13 for a new objection regarding the validity of the priority claim). The board stated that, furthermore, the objections in question also did not merely constitute a new argument (T 1914/12, see above) because they went beyond submissions serving to underpin the facts, evidence and grounds filed in good time. Rather, they were based on new legal grounds (G 4/92, OJ EPO 1994,149 point 10 of the Reasons) that had not been addressed before in the appeal proceedings. The board pointed out that the appellant could have raised the objections in question at several instances in the proceedings before the opposition division. There was no sound reason to raise these objections at such a late stage of the proceedings, i.e. only about two months before the oral proceedings before the board.

In T 603/14 the board exercised its discretion not to consider the late-filed objection of lack of inventive step in view of D1 and D3. The appellant raised this objection for the first time in the oral proceedings before the board. The documents formed part of the appeal proceedings. The board stated that the objection represented an amendment to the appellant's case and might as such, pursuant to Art. 13(1) RPBA 2007, be admitted and considered at its discretion. Document D1 and D3 had up to that point only been used to support objections of lack of novelty of claim 1 and claim 25. At least the allegation that they led, in combination, to a lack of inventive step was to the board a new fact. The appellant did not present a convincing justification for the late submission of this alleged new fact. The board's preliminary opinion on the disclosure of D1 did not introduce any new aspects into the discussion. The annex to the summons stated clearly that any further comments, documents or requests should be at the disposal of the board and the other party one month before the oral proceedings at the latest and should not surprise the other party and the board. Admittance of the objection at this late stage would therefore not have respected the required procedural efficiency. Rather it might even have borne the risk of having to adjourn the oral proceedings. Even if one accepted that D1, having been cited to support an objection of lack of novelty, could have been expected to be used as a starting point for an objection of lack of inventive step, the other party could not be expected to anticipate any arbitrary combination of D1 with other documents on file, such as D3, to be introduced into the proceedings. Furthermore, a document useful for assessing novelty is not necessarily a legitimate choice as closest prior art; see also T 181/17.

In T 52/15 the proprietor (appellant) filed a new "main request" every time the opposition division announced its opinion that the previous main request did not comply with the requirements of the EPC. Since the opposition division was of the opinion that the last main request did not comply with Art. 56 EPC, it revoked the patent. The appealed decision dealt only with this last main request. The proprietor requested that the decision be set aside and that the patent be maintained as granted or, alternatively, on the basis of one of auxiliary requests 1 to 4, which differed substantially from the request which was decided upon in the appealed decision. The proprietor argued that the previously filed main requests had not been withdrawn. Each new request was meant to supersede the previous one for the purpose of discussion only, but not to replace it. The board noted that the opposition division did not err when considering that each newly filed "main request" was clearly meant to replace the previously filed one/s. The board emphasised that the withdrawal of a request was a serious procedural step which was usually announced explicitly by a party via a corresponding statement and that any such statement must be mentioned in the minutes (see T 361/08). However, an explicit withdrawal was not required if a party's behaviour or procedural steps it took during the proceedings made its intention unequivocal (see T 388/12). The board also highlighted the fact that, according to established EPO practice, parties filing more than one request must specify which request is the main request, which is/are the auxiliary request(s), and, if there are several auxiliary requests, their ranking (see e.g. R 14/10). The board concluded that the written decision of the opposition division was based on the only request that was pending when the decision to revoke the patent was orally announced. The main request and auxiliary requests 1 and 2 were filed with the statement setting out the grounds of appeal and corresponded to the proprietor's initial request and two auxiliary requests filed during the oral proceedings before the opposition division. These requests differed substantially from the request which was decided upon in the appealed decision. The board stated that the reintroduction of previously withdrawn requests on appeal ran counter to the main purpose of inter partes appeal proceedings, namely to give the losing party the possibility of challenging the decision of the opposition division on its merits. The board also noted that although there have been decisions where the boards have allowed patent proprietors to reinstate broader requests which had been withdrawn or not maintained during the opposition proceedings, numerous decisions have also been issued in which the board's discretion has been applied in a strict manner and such requests have not been admitted into the appeal proceedings (see T 390/07, T 361/08, T 671/08, T 922/08, T 1525/10, T 140/12, T 1697/12, T 143/14). This appeared to be the current predominant approach applied by the boards. The requests were not admitted into the appeal proceedings (Art. 12(4) RPBA 2007).

In T 1695/14 the auxiliary request in question, which the patent proprietor had filed during the oral proceedings, was the same as one of the auxiliary requests it had filed with its grounds of appeal. But the proprietor had not then pursued that original auxiliary request in the written proceedings, instead filing new auxiliary requests with a written submission stating that it wanted them to replace its previous ones. The board interpreted this statement as an implicit withdrawal of the auxiliary request; requests could be withdrawn either explicitly or implicitly, the latter being when the circumstances left no doubt that a party no longer wished to pursue them (see T 388/12, T 52/15). Requests not later pursued as the main or an auxiliary request, but (implicitly) withdrawn, did not remain in the proceedings; procedural law provided for current and withdrawn requests, but not for ones on hold. The board then considered the relevant criteria for admitting a resubmitted request. Since a withdrawn request no longer formed part of the proceedings (see T 1732/10, T 143/14), its admission on resubmission later in them was subject to the same procedural standards as applied to an entirely new one (see T 1732/10, T 122/10); this was the boards' settled case law. Hence a request initially filed on appeal but implicitly or explicitly withdrawn later on in the proceedings had to be considered a new request when subsequently refiled. Its admission was then governed in particular by Art. 13 RPBA 2007 and the criteria for exercising discretion under it developed by the case law.

In T 1280/14 the respondent (patent proprietor) did not make clear until the oral hearing that it now still intended to pursue only its third and sixth lines of defence. It had refiled with its reply 15 auxiliary requests that the opposition division had not examined because it had granted the main request. Although the board had already found fault in its preliminary opinion with the various alternative lines of defence formed by these requests, the respondent did not reveal until the oral proceedings that it from then on intended to pursue only two of them. Holding that the respondent should have communicated this change to its requests in due time, i.e. no later than one month before the oral proceedings, and that its conduct had therefore been at odds with the need for procedural economy, the board refused to admit its two remaining auxiliary requests and revoked the patent.

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