4.3.7 Submissions that should have been submitted or which were no longer maintained at first instance – Article 12(6), second sentence, RPBA 2020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). |
(i) Examples of new submissions admitted
In T 1734/20 the opposition division’s decision was based on a misconception of data in an experimental report submitted by the appellant (opponent). The appellant became aware of this only after the written decision had been issued and filed, with the statement of grounds of appeal, a new report which contained identical data apart from additional information aimed at preventing the misconception. The board considered that these circumstances justified the admittance under Art. 12(6) RPBA 2020.
In T 2043/20 the board, applying Art. 12(6), second sentence, RPBA 2020, considered that the third auxiliary request in appeal, which was based on the second auxiliary request filed before the examining division, but in which certain claims had been deleted, responded to an objection under R. 43(2) EPC. But it also held that this request could have been filed before the examining division, as the objection had already been present in the annex to the summons. However, since the new request overcame the R. 43(2) EPC objection and did not constitute a complex amendment, the board admitted it.
(ii) Counter-examples
In T 1522/21 claim 1 under consideration corresponded to claim 1 as granted. For this reason the board could not see any circumstances justifying admitting new, late-filed evidence (D1 and O9) against this claim. The board did not see prima facie relevance of the new evidence as an aspect to be taken into account.
In T 765/20, the board found that potential prima facie relevance was not critical and did not admit a document that had been submitted for the first time with the grounds of appeal. See however also T 1017/20 in which the board considered that, in the particular situation of the case, the prima facie compliance of the main request on appeal with the provisions of Art. 100 b) EPC formed part of the circumstances of the appeal case to be taken into account for the purpose of applying Art. 12(6) RPBA 2020.
For a further example decision in which the board did not accept that the circumstances in the appeal proceedings justified the admittance of the amendment of the appellant’s case, see T 608/20. See T 1094/22 for an example of a decision in which the board noted that the appellant had not submitted any justifying circumstances.
- 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.