CLR IV E 4.1.4 applicable to amended claims on appeal

In the context of the late filing of amended claims, several decisions refer to the principles developed by the Enlarged Board of Appeal in relation to the inter partes appeal procedure provided for in the EPC, according to which such an appeal primarily serves the parties' right to a review of the first-instance decision in proceedings of a judicial nature. In G 9/91 and G 10/91 (OJ 1993, 408, 420) in particular, it was held that the main purpose of the inter partes appeal procedure is to conduct a final review of the decision given at the previous instance and thereby provide the losing party with an opportunity to challenge the decision against it and obtain a judicial ruling on whether it is correct. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings.

It is settled case law that an appellant patentee who has lost before the opposition division thus has the right to have the rejected requests reconsidered by the appeal board or to file new requests at a timely stage of the appeal proceedings, in particular together with the statement of grounds of appeal or the reply. However, if the patentee wants other (further) requests to be considered, the admission of these requests is a matter for the board's discretion, and not a matter of right (T 840/93, OJ 1996, 335; T 427/99, T 50/02, T 455/03, T 651/03, T 240/04, T 339/06).

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. 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).

The parties are subject to certain restrictions on their procedural conduct, given, in particular, the need in inter partes proceedings to act fairly towards the other party and, more generally, the requirements of due process. The parties to inter partes proceedings are subject to a particular duty to facilitate due and swift conduct of the proceedings, which includes submitting all relevant facts, evidence, arguments and requests as early and completely as possible (T 1685/07, T 2102/08, T 253/10, T 1364/12). Admitting subsequent amendments to a party's case must not adversely affect the counterparty's right to submit observations on them (Art. 13(2) RPBA), for example because it cannot duly exercise that right in the time then left (T 253/10, T 1466/12).

In ex parte cases it is established case law that proceedings before the boards of appeal are primarily concerned with examining the contested decision (G 10/93, OJ 1995, 172). Since the judicial examination in ex parte proceedings concerns the stage prior to grant and lacks a contentious nature, the boards are restricted, in their review of the decision under appeal, neither to an examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based. In T 980/08 the board stated that this absence of restriction does not amount to a positive obligation for the boards to consider any request filed in appeal especially when the requests bring about a new case. The appeal proceedings are intended to review the correctness of the decision of the first instance rather than to continue examination by other means (see also T 65/11).

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Case Law Book

Case Law Book: IV Divisional Applications

Case Law of the Enlarged Board

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