5.5.2 Late-filed requests
Under Art. 15(6) RPBA 2007, the case was to be ready for decision at the conclusion of the oral proceedings before the board, unless there were special reasons to prevent this. An amendment at a late stage (and especially one made at the oral proceedings) was justifiable if it was an appropriate reaction to unforeseeable developments in the proceedings, for example if it addressed comments or objections first raised in those proceedings (T 391/11 and T 2385/11, both ex parte cases in which the matter was remitted to the department of first instance for further prosecution after admission of the requests; see also the inter partes case T 1869/10, in which, however, the board found there had been no unexpected development). On the current legal situation pursuant to the RPBA 2020, see chapter V.A.4.5. "Third level of the convergent approach – submissions filed after notification of summons or after expiry of period specified in Rule 100(2) EPC communication – Article 13(2) RPBA 2020".
The response to any such unexpected development had to come as early as possible (T 1990/07, T 1354/11, T 2072/16). In T 2072/16 the board held that the fact that it had confirmed its preliminary opinion after having heard the parties at the oral proceedings could not be considered a surprise or unforeseeable event (see e.g. T 2219/12, T 1033/10).
The general principle is that in order to be admissible, an amended claim belatedly filed in oral proceedings must be clearly allowable by virtue of a clearly permissible amendment (T 1273/04, T 1311/05, T 2238/09, T 1714/14). It must be immediately apparent to the board, with little or no investigative effort on its part, that amendments successfully address the issues raised without giving rise to new ones (T 5/10, T 1912/09, T 2219/12). According to T 1315/08 (ex parte) an especially strict standard should be applied to new requests not filed until the oral proceedings. As a rule, they could only be admitted if they eliminated minor objections to an otherwise allowable claim or if they were a reaction to debate in the oral proceedings, especially where this reaction was to limit the claim even further.
In T 183/09 the board, ruling on a number of auxiliary requests not filed until the oral proceedings, explained that, unless they were justified by developments in the appeal proceedings, they would be admitted only if they did not extend the scope or framework of discussion determined by the decision under appeal and the statement of the grounds of appeal, and were also clearly allowable. From this, the board inferred that procedural economy, that is, the need to conclude proceedings swiftly and so create legal certainty, played an increasingly dominant role as appeal proceedings progressed towards their end. In the final stages of appeal proceedings, it might in fact come to outweigh all other factors in the balance of interests that the board had to strike when deciding on the admissibility of new requests or of new facts and evidence (T 1993/07, T 532/08, T 562/09, T 1227/10, T 1354/11).
R. 116 EPC (R. 71a(2) EPC 1973) and Art. 13(3) RPBA 2007 considerably restricted the scope for admitting in opposition appeal proceedings new requests first filed by the patentee in oral proceedings despite specification of a deadline for filing such requests in the summons notice. Such auxiliary requests could be refused as belated under R. 116 EPC, unless they had to be admitted on the grounds that the subject of the proceedings has changed (T 1105/98, T 913/03, T 494/04).
In T 1617/08 the board stated that the purpose of an oral hearing in appeal proceedings is to give the parties an opportunity to argue their case but not to give an appellant (patentee) the opportunity to repeatedly modify its requests until an acceptable set of claims is found. It therefore refused to admit the auxiliary requests filed at the oral proceedings (Art. 13(1) RPBA 2007).
In T 1790/06, in exercising its discretion the board also took account of the conduct of the respondent (patentee) during the oral proceedings. A party's obligations included taking care not to act in a manner detrimental to the efficient conduct of oral proceedings. At such proceedings, it should not for example submit requests willy-nilly, withdraw them and then resubmit them later. That was unacceptable, for both the board and other parties. Similarly, in T 2540/12 the respondent's behaviour impaired the efficient conduct of the oral proceedings and the board stated that this in itself was sufficient reason not to admit the new auxiliary request.
(i) Amended claims not admitted – examples
In T 162/12 the board refused to admit auxiliary request 1 filed at the oral proceedings, on the basis that the discussion during the oral proceedings had been essentially limited to the objection raised in the board's annex to the summons, without any new issues coming up which could have left the appellant facing a new situation. In acting as it did, the appellant had kept all its cards to itself whereas the board with its annex to the summons had laid its cards on the table. That could not be considered conducive to efficient proceedings.
In T 831/92, the board held that, as a matter of principle, it was contrary to procedural fairness to file an auxiliary request during oral proceedings before a board of appeal, because it was difficult for an opponent to deal with a request not submitted in good time before the oral proceedings. In T 667/04 the board stated that no exceptional circumstances had been put forward excusing the late filing of the request. To have admitted it would have run counter to the principle of procedural fairness (see also T 233/05 and T 1333/05).
In T 156/15 the appellant (patent proprietor) had repeatedly adjusted its strategy, in the form of its additional auxiliary requests, to the results of the board's deliberations, which made it difficult for the appellant (opponent) to react. In deciding on the admission of such late-filed requests, respect for the principle of fairness of the procedure might already dictate that the board should not admit them, even without also considering specific criteria for the exercise of its discretion, such as prima facie allowability.
During the oral proceedings in T 14/02, the respondent (patentee) requested the board's leave to file additional requests in order to limit the claimed subject-matter. The board refused the request on two grounds: firstly, the need for a new request had already been apparent before the oral proceedings from the board's preliminary opinion; secondly, the subject-matter of the new requests would have required the other party to perform another search and might have resulted in a remittal.
In T 236/11 the board found the claiming of a combination of features that had not been claimed in the proceedings before that surprising, with the result that neither the board nor the appellant was in a position to deal with the claim without postponing the oral proceedings or remitting the case to the department of first instance.
In T 732/11 (ex parte) the appellant's sole request was filed during the oral proceedings before the board, after the board had given its opinion that the previous request contravened Art. 123(2) EPC. The reasons for that opinion had already been presented to the appellant in the board's communication. The board found that the appellant had delayed filing the request for tactical reasons and that it would have been possible for (and indeed incumbent on) it to have prepared the request in advance of the oral proceedings, rather than obliging the board to interrupt the oral proceedings for this.
In T 656/16, auxiliary requests 8A and 8B were not filed until the oral proceedings before the board. The board refused to admit these two requests, in particular because they were not clearly allowable. 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. See also T 2046/14.
(ii) Amended claims admitted – examples
In T 1067/03 (inter partes), the board regarded the clarifications in the auxiliary request as a response to the preceding discussion in the oral proceedings. Moreover, the amendment was not so complex that it would have made it impossible to reach a definitive decision in the oral proceedings.
In T 1045/08 the board considered that the auxiliary requests filed in the oral proceedings responded to objections to the earlier filed requests in particular in view of the newly introduced documents. In filing a relevant document shortly before oral proceedings a party must accept that the other party may file appropriate new requests also during the oral proceedings, which may raise issues not previously addressed in the proceedings.
In T 2097/10, the amendment entailed deletion of claim 1 and so eliminated the objections raised. Moreover, the then remaining independent claim, which was already in auxiliary request 1, was prima facie allowable. Since the amendment was restricted to deletion of a claim, it would not unnecessarily delay the proceedings.
In T 1589/11 the board raised no objection to the introduction by the opponent of new arguments not contained in the statement of grounds of appeal. That the board found these new arguments convincing only became apparent to the proprietor during the oral proceedings. Under these circumstances the board considered it equitable to allow the proprietor to formulate a response to this finding, especially as the new request could not be seen as adding greatly to the complexity of the case.
In T 2284/12 (ex parte) the board accepted that the auxiliary requests were filed in reaction to detailed comments and objections of the board that were debated in the course of the oral proceedings. The amendments made could be considered as an attempt by the appellant to overcome all pending objections. They did not raise new issues of particular complexity and contributed to the convergence of the debate. See also similar cases T 2485/10, T 391/11, T 1306/11 and T 1995/12.