4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA 2020
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
In several decisions, the boards decided not to admit submissions that addressed objections raised in the opposition proceedings, because the proprietor had had ample opportunities to address these objections (see T 825/20 and T 1326/21, summarised below, and T 847/20, summarised in chapter V.A.4.3.7d) above). However, see also the decisions in chapter V.A.4.3.7c) and in particular T 141/20, in which the board pointed out that there needed to be a reason to file auxiliary requests, not just the possibility of doing so. In this particular case, the board did not see any need for submitting the request in question since the opposition division had made it clear that it did not agree with the opponent's objection.
In T 825/20 the four auxiliary requests filed for the first time with the statement of grounds of appeal aimed at overcoming the opposition division’s inventive step objection to the main request. However, in its preliminary opinion the opposition division had already drawn the parties’ attention to this issue. The appellant was given the opportunity to react and did so by filing several new auxiliary requests, however not those filed in appeal. The board concluded that the latter could and should have been filed during the first-instance opposition proceedings. A counter-example where the board took the view that the patent proprietor had not been obliged to respond immediately during the oral proceedings, is T 487/20. In this case the opposition division had indicated in its preliminary opinion that the opponent’s objections under Art. 100(c) EPC were not convincing and the arguments addressed by auxiliary request II filed with the statement of grounds of appeal had been only briefly discussed during the oral proceedings.
In T 1326/21 the appellant (patent proprietor) explained that the main request in appeal which addressed only two out of three objections under Art. 100(c) EPC discussed during the first instance oral proceedings, could not have been submitted at that moment. This was because the opposition division had come to the conclusion that all three objections were justified; such a request would not have been admitted. The board however pointed out that the relevant objections had been raised and substantiated already in the notice of opposition and that the opposition division had given a preliminary opinion on all of them in the annex to the summons. Thus, the appellant had had ample opportunities to file requests addressing any of the above-mentioned objections. Accordingly, the appellant had deliberately chosen not to file in opposition proceedings any amendments aimed at overcoming the objections under Art. 100(c) EPC, but to respond solely with arguments.
- T 1820/22
Abstract
In T 1820/22 the board decided not to admit auxiliary requests 1 to 8 filed with the statement of grounds of appeal, nor auxiliary requests auxiliary requests 1a, 1b, 1c, 2a, 2b, 3a, or 4a filed with further submissions after the summons to oral proceedings. All these requests were filed for the first time on appeal and were therefore subject to the discretion of the board under Art. 12(6) RPBA (together with Art. 13(1) RPBA for the later requests).
The appellant (patent proprietor) had argued that all auxiliary requests contained amendments which addressed the added subject-matter objection on which the decision was based. However, the board observed that the proprietor had not made any attempt to address the objection by amendment during the opposition proceedings, even though the objection was known to them from the outset (as it was set out in the notice of opposition), and from the annex to the summons, where the issue was again raised. The appellant proprietor had been given ample opportunity to address the issue by amendment and had indeed submitted various requests in the course of the opposition proceedings, none of which however dealt with the issue of added subject-matter. The board concluded that although they could have addressed the issue of added subject-matter, they chose not to do so.
The board was not convinced by the appellant's explanation that they had chosen not to address the issue by amendment in opposition proceedings because they had been persuaded that this was futile due to an Art. 123(3) EPC trap. According to the appellant this seemed to have also been the understanding of both parties and the opposition division. Only the mention of claim 18 as originally filed as possible basis in the decision offered an opening.
However, the board pointed out that nothing had changed in the underlying facts. The issue of added subject-matter arising from a feature added before grant was still the very same as at the outset of the opposition proceedings. In the board's view the appellant proprietor should have known ab initio what the basis was in the original disclosure of their patent for the reading of a claim feature they were arguing. If they were unable to identify a basis or failed to do so earlier, they had to bear the consequences. Thus, the board was unable to see a justification for the late submission of amendments only in appeal as a result of a belated realisation on their part, however that realisation may have come about.
Moreover, the board held that the amendments of these requests did not appear suitable to overcome the added subject-matter objection on which the decision was based and some amendments were not occasioned by a ground of opposition in the sense of R. 80 EPC. Thus, additionally, the requirements of Art. 12(4) RPBA were not met.
Finally, the board pointed out that the nature of the requests was complex and considered the number of requests, 16 in all, most of which offered different attempts to resolve the issue of added subject-matter, to be disproportionate to that issue. This was all the more so in view of the argument that a single passage, original claim 18, would provide a basis for the amendment.
Therefore, the board concluded that the circumstances of the appeal case did not justify the admission of these auxiliary requests, which should have been filed during opposition proceedings, Art. 12(6) and Art. 13(1) RPBA.