5.11.1 General principles – substantiation requirement – duty to facilitate the first-instance proceedings

Art. 12(2) RPBA 2007 required (as does Art. 12(3) RPBA 2020 now) that the statement of grounds of appeal contain a party's complete case. In accordance with Art. 12(4) RPBA 2007, the boards as a rule took into account everything presented by the parties under Art. 12(1) RPBA 2007 if and to the extent that it related to the case under appeal (condition not met in e.g. T 2182/17) and met the requirements in Art. 12(2) RPBA 2007. Requests which had not been adequately substantiated in the statement of grounds of appeal or the reply were refused under Art. 12(2) and (4) RPBA 2007 in e.g. T 1855/16, T 2682/16 and T 716/17. On the substantiation requirement, see also chapter V.A.5.12.6 "Unsubstantiated requests").

However, according to Art. 12(4) RPBA 2007 (which remains applicable in some transitional cases; see chapter V.A.4.3.2), the boards had the discretionary power to hold inadmissible facts, evidence and requests which could have been presented or were not admitted in the first instance proceedings. Art. 12(6) RPBA 2020 takes up these aspects of Art. 12(4) RPBA 2007 and the established case law under this provision (see CA/3/19, explanatory notes to Art. 12(6) RPBA 2020; see also chapter V.A.4.3.6 and V.A.4.3.7 on the case law under new Art. 12(6) RPBA 2020.

In several decisions, the boards cited the principles developed by the Enlarged Board of Appeal in G 9/91 and G 10/91 (OJ 1993, 408, 420) for the inter partes appeal procedure provided for in the EPC. Art. 12(4) RPBA 2007 is consistent with the principles developed by the Enlarged Board in relation to the application of Art. 113 and 114 EPC in opposition-appeal procedures (T 2102/08). The boards of appeal thus retain, as a review instance, discretion to refuse new material, including requests (claim sets) not submitted during opposition proceedings (T 240/04, T 1705/07, T 23/10, T 1525/10). This ensures the fair and reliable conduct of the judicial appeal proceedings (T 23/10, T 1165/10, T 301/11). This has also been confirmed by the Enlarged Board of Appeal (R 10/09, R 11/11).

Given that the aim of opposition-appeal proceedings is to obtain judicial review of the administrative opposition decision, it follows that the board must as a rule take their decision on the basis of the issues in dispute before the opposition division. It can be directly inferred from the above that the parties have only limited scope to amend the subject of the dispute in second-instance proceedings, and this principle is reflected in Art. 12(4) RPBA 2007. The appeal proceedings are not about bringing an entirely fresh case (T 1705/07, T 356/08, T 1067/08, T 2102/08, T 144/09, T 881/09, T 936/09, T 23/10, T 935/12, T 101/17). In T 2135/13 the board understood the expression "fresh case" as referring to a substantial change in the subject of the proceedings.

Art. 12(4) RPBA 2007 enables the boards to penalise an infringement of the duty to facilitate the first-instance proceedings, i.e. a failure to display due co-operation through the submission of facts, evidence and requests in the manner required up to a certain point in the proceedings, and so serves to ensure compliance with the requirement of a fair procedure and to expedite processing of the case (see also e.g. T 724/08, T 162/09, T 1953/16, T 101/17, T 2696/16). Moreover, it does not entail any arbitrary different treatment of similar cases of belated submissions which is incompatible with the procedural scheme. The duty to facilitate proceedings applies equally to opponents (with respect to the submission of their objections) and patentees (with respect to their means of defence) (T 2102/08, T 28/10, T 2117/17).

Art. 12(4) RPBA 2007 instructs us that consideration is unlikely to be given to new submissions that should have been presented in the first-instance proceedings (T 339/06, T 416/07).

In T 301/11 the board observed that requiring all parties to complete their relevant submissions during opposition proceedings meant that the moment in time when their case had to be complete was not determined by the procedural strategy chosen by them. According to Art. 12(4) RPBA 2007, admission of auxiliary requests into proceedings hinged on the question whether a party to appeal proceedings was in a position to make its submission earlier, and whether it could have been expected to do so under the circumstances (see also T 23/10, T 969/14).

As explained in T 1953/16, it was the established case law of the boards of appeal that the filing of new documents for the first time in the appeal proceedings required a sound and plausible reason relating to the specific case, in particular exceptional circumstances justifying the late filing of the documents in question. It followed that, in principle, documents could be admitted in the case of e.g. a normal reaction to a late turn of events in the (oral) opposition proceedings, an exceptional interpretation by the opposition division at a late stage or in the decision or evident non-allowability in view of the newly cited documents and/or objections. See also T 2696/16.

In T 1067/08 the board stated that appeal proceedings were not just an alternative way of dealing with and deciding upon an opposition and that parties to first-instance proceedings were not at liberty to bring about the shifting of their case to the second instance as they pleased, and so compel the board of appeal either to give a first ruling on the critical issues or to remit the case to the department of first instance. Conceding such freedom to a party (and/or to the department of first instance) would run counter to orderly and efficient proceedings. In effect, it would allow a kind of "forum shopping" which would jeopardise the proper distribution of functions between the departments of first instance and the boards of appeal and would be absolutely unacceptable for procedural economy generally. The board decided not to admit the main request into the appeal proceedings and stated that the exercise of the powers under Art. 12(4) RPBA 2007 might also be justified where a party's conduct had in effect prevented the department of first instance from giving a reasoned decision on the critical issues (see also T 936/09, T 495/10, T 2017/14, T 101/17).

In T 1873/11 the board rejected the appellant's contention that the use of "power" in Art. 12(4) RPBA 2007 (as opposed to "discretion" in Art. 13(1) RPBA 2007) prevented it from taking a decision at its discretion. Rather, "power" implied the very ability to decide not to admit requests, etc. in certain circumstances specified in the RPBA 2007.

Since, in fact, almost every claim request could have been presented before the department of first instance, the question within that context is whether the situation was such that the filing of this request should already have taken place at that stage (T 273/11, see also T 1162/11 and T 101/17). See also T 419/12, T 1848/12, T 569/14, T 1855/16.

In both R 11/11 and R 13/11 the Enlarged Board held that its case-law clearly showed that petition proceedings may not be used to review the exercise by a board of appeal of a discretionary power if that would involve an impermissible consideration of substantive issues. This has also been confirmed in the specific context of the discretion in Art. 12(4) RPBA 2007. See also R 4/13.