4.5.4 Cogent reasons put forward by party to demonstrate exceptional circumstances
Art. 13(2) RPBA 2020 provides that, for new submissions at the third level of the convergent approach to be taken into account, the party concerned must justify with cogent reasons that there are exceptional circumstances (see e.g. T 1107/16, T 2486/16, T 482/19). In T 552/16, for instance, the board did not admit a late filed document, because exceptional circumstances for its late filing within the meaning of Art. 13(2) RPBA 2020 had neither been presented nor were they evident from the case (see also T 48/17). The board in T 1294/16, however, found that there was no need for a party to put forward cogent reasons where the circumstances were beyond that party's control and the board itself, bearing in mind the purpose of the convergent approach, considered ex officio the circumstances to be exceptional (see also T 1790/17).
Exceptional circumstances within the meaning of Art. 13(2) RPBA 2020 generally concern new or unforeseen developments in the appeal proceedings themselves, such as new objections raised by the board or another party (T 2329/15, see also T 1702/18), whereas the normal course of events does not justify late submissions (see e.g. T 1870/15, T 2214/15, T 2539/16).
Exceptional circumstances have been acknowledged where, for instance, the filing of new requests constituted a legitimate and timely response to a new objection raised by the board (in its communication under Art. 15(1) RPBA 2020, see e.g. T 1255/18, or at the oral proceedings, see e.g. T 1561/15). In this context, a "new objection" means one not covered by those previously raised by the board or a party (T 2610/16, T 42/17).
In contrast, where an objection had already been raised by the first-instance division or a party, the board's raising of these objections (e.g. T 1187/16; even where this involved a change in the board's opinion, e.g. T 752/16, T 995/18), or objections merely developing the objections originally raised or stating them more precisely (e.g. T 2539/16, T 1080/15) or objections to unsuccessful attempts at overcoming previously identified issues (T 2214/15) been seen as an ordinary development in the appeal proceedings which could not justify the filing of new requests.
Documents and new lines of attack filed in reply to a preliminary opinion of the board which was based exclusively on earlier submissions made by the parties have likewise not been admitted (T 908/19).
Several decisions deal with the question of whether there has to be a causal link between the exceptional circumstances and the late filing of the new submissions (see chapter V.A.4.5.4b)). In T 2486/16, for instance, the board required that the party should explain why the circumstances had the direct result of preventing it from filing its requests at an earlier stage.
In some decisions, the boards have read "exceptional circumstances" more broadly. In T 713/14, for instance, the board, when assessing whether there were exceptional circumstances, took the entire background to the case into account (including the fact that the clarity objection had been held to be unjustified by the opposition division, that the case had been pending since long before entry into force of the RPBA 2020, and the disruptive consequences of the COVID-19 pandemic), as well as the fact that the amendments limited the case to embodiments that were explicitly present in the claims as granted and that the appellant had had ample opportunity to object to all embodiments claimed. In T 545/18 the board acknowledged that there were exceptional circumstances within the meaning of Art. 13(2) RPBA 2020 in the case in hand, considering the great importance of the right invoked by the appellant (right to be heard) and the facts that no other party was affected by the late filing and that the board was in a position to take a decision without needing to postpone oral proceedings.
In T 1294/16 the board noted that the example of exceptional circumstances provided in the explanatory remarks in CA/3/19 (namely a new objection raised by the board) suggested that exceptionality was not necessarily linked to events being exceptional in the sense of deviating from the expected, but could also be caused by considerations related to the legal framework, notably the principles underlying the Rules of Procedure. Art. 12 and 13 RPBA 2020 implemented the "convergent approach", the major motivation for which was the procedural economy of the appeal proceedings. The board deduced from this that if admittance of a (late-filed) submission was not detrimental to procedural economy, it was appropriate to accept that there were "exceptional circumstances" within the meaning of Art. 13(2) RPBA 2020, provided that this did not adversely affect the other party. In the case in hand, the board admitted the three late-filed auxiliary requests, since they were filed in ex parte proceedings and the board was able to deal with the amendment without undue delay during the oral proceedings. See also e.g. T 195/20 and T 1598/18 (by the same board), as well as T 1857/19 (considering that the fact that an amendment significantly enhanced procedural economy by clearly overcoming existing objections without giving rise to any new issues could be seen as an exceptional circumstance).
- T 2295/19
Catchword:
Änderung eines Anspruchssatzes durch Streichung von Ansprüchen. Zur Frage seiner Zulassung unter Artikel 13 (2) RPBA 2020 siehe Entscheidungsgründe Nr. 3.4.1 bis 3.4.14
- T 339/19
Catchword:
"Exceptional circumstances" in Rule 13(2) RPBA interpreted as those that compromise neither the procedural rights of the other party, nor procedural economy.
- T 2920/18
Catchword:
Amendment of a set of claims by deletion of claims. Admittance of said amended set of claims pursuant to Article 13(2) RPBA 2020: see points 3.1 to 3.16 of the Reasons for the Decision.
- T 2632/18
Catchword:
That a "new" objection was raised by a board in appeal proceedings cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see point 4.3 of the Reasons).
- T 988/17
Catchword:
Weder Artikel 13(2) VOBK 2020 noch die erläuternden Bemerkungen dazu in CA/3/19 enthalten eine Erklärung, wie allgemein zu bestimmen ist, ob die Umstände "außergewöhnlich" sind. Die Erläuterungen der VOBK 2020 nennen als Beispiel für solche "außergewöhnlichen" Umstände allerdings den Fall, dass die Kammer einen Einwand erstmals in einer Mitteilung erhoben hat. In diesem Fall rechtfertige die veränderte Grundlage des Beschwerdeverfahrens ein verändertes Vorbringen. Die Frage, ob umgekehrt durch geändertes Vorbringen auch die Grundlage des Beschwerdeverfahrens verändert wird, stellt somit ein mögliches Kriterium dar, das für die Beurteilung der Außergewöhnlichkeit der Umstände heranzuziehen ist (Punkt 6.3 der Entscheidungsgründe).- T 2482/22
Abstract
In T 2482/22 the appellant (opponent) raised for the first time during the oral proceedings before the board an objection of lack of novelty over D1. The appellant's representative justified the late submission by arguing that he took over the case from a colleague, who had overlooked the novelty objection when he drafted the grounds of appeal. The appellant also argued that, because this concerned a European patent, it was of utmost importance that there be no doubts concerning validity. None of these arguments convinced the board of the existence of exceptional circumstances under Art. 13(2) RPBA.
As regards the meaning of the term "exceptional circumstances", according to the board it was established jurisprudence of the boards that such circumstances concerned new or unforeseen developments in the appeal proceedings, such as new objections raised by the board or another party.
In the present case, the appellant had already overlooked that objection when they drafted the notice of opposition, which was signed by the appellant's present representative. Thus, the fact that another representative of the appellant overlooked the novelty objection when drafting the grounds of appeal was not a development of the appeal proceedings, let alone a new or unforeseen one. The appellant alone had to bear the responsibility for any such errors and mistakes.
The board understood the appellant's further argument as implying that the legitimacy of the European patent system depended on the strength of validity of patents issued by it, and that therefore any concerns of validity had to trump any other considerations, e.g. those of procedural economy and transparency or the nature of appeal proceedings as a judicial review. The board pointed out that the legislator had seen this differently, as was evident from Art. 12(2) RPBA as adopted by Decision of the Administrative Council of 26 June 2019, according to which the primary object of the appeal proceedings is to review the decision under appeal and a party should direct their appeal case at the requests, facts, objections, arguments and evidence on which the decision under appeal is based. As a consequence, the possibility of a party to change its case or add to it was very limited, increasingly so as the appeal procedure progressed (see document CA/3/19, points 47 and 48, explaining the convergent approach underlying Art. 12 and 13 RPBA, as well as the explanatory remarks to these articles, reproduced in OJ 2020, Supplementary publication 2).
The board further explained that Art. 12 and 13 RPBA lay out the criteria by which the boards have to exercise their discretion when considering amendments to a party's appeal case. Art. 12(4) and 13(1) RPBA do still include criteria that could be seen as reflecting on the merits or relevance of new submissions (e.g. suitability to address issues), albeit subject to justifying reasons. Indeed, and following established case law (G 7/95, OJ 1996, 626), at an early appeal stage it might still be possible to consider novelty, even if not raised before, vis-a-vis a closest prior art already cited against inventive step, but only in the context of assessing inventive step. The board pointed out, however, that such criteria are entirely absent from the wording Art. 13(2) RPBA which was purposely chosen to express the much more stringent criterion applicable at this last stage of the appeal proceedings. The board rejected the approach according to which merit or relevance were somehow subsumed in the sole criterion of "exceptional circumstances". As was clear from the examples, these only concerned circumstances that arose from the way the proceedings had developed, i.e. from the procedure itself and not its subject.
- 2023 compilation “Abstracts of decisions”