4.3.7 Moyens qui auraient dû être invoqués ou qui n'ont pas été maintenus dans la procédure de première instance – article 12(6), deuxième phrase, RPCR 2020

Résumé

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.

Résumé

In T 1311/21 the first auxiliary request, which had been first filed as auxiliary request IV with the patentee's statement of grounds of appeal, differed from claim 1 as granted by the addition of two features and the replacement of one feature. These amendments were also present in claim 1 of auxiliary requests 1 to 3 underlying the appealed decision, which however additionally contained further amendments as compared to claim 1 as granted in order to overcome all the objections raised during the opposition proceedings. These additional features had been omitted in claim 1 of the first auxiliary request.

The board observed that the discussion on whether the amendments in the first auxiliary request (compared to claim 1 as granted) extended its subject-matter beyond the content of the application as filed had already taken place in the first-instance proceedings. Moreover, it was not under dispute that the omitted features were not relevant for the question of novelty and inventive step. Therefore, the amendments of claim 1 of the first auxiliary request did not introduce new issues and did not increase the complexity of the examination of the patent. The board further noted that they were not only suitable to address, but actually overcame the objections of added matter. The board concluded that there was no reason not to admit the amendments of claim 1 into the appeal proceedings under Art. 12(4) RPBA.

Regarding Art. 12(6), second sentence, RPBA, the board explained that claim 1 at issue comprised all the amendments required by the opposition division to overcome its objection of added subject-matter against a certain feature of the main request then on file, but omitted all the amendments required by the opposition division to overcome its objection of added subject-matter against two other features. The patentee had argued that the opposition division had decided on all objections of added subject-matter at once and that this would have made the filing of requests that were already decided not to comply with Art. 123(2) EPC a violation of the rules of procedural efficiency. The board pointed out that it followed from this that the patentee could have filed claim 1 during the first-instance proceedings, but not that it should have done so. Indeed, such a filing would have been pointless in view of the fact that the opposition division had already decided that such claim 1 infringed the requirements of Art. 123(2) EPC. The board held that, in the absence of a compelling reason for the patentee to file present claim 1 during the first-instance proceedings, there was no reason for it not to admit the amendments of present claim 1 into the proceedings under Art. 12(6), second sentence, RPBA.

In the end, however, the board did not allow the first auxiliary request as it contained subject-matter which extended beyond the content of the application as filed.