A. Appeal procedure
1. RPBA 2020
1.1 Primary object of the appeal proceedings – Article 12(2) RPBA 2020
As set out in Art. 12(2) RPBA 2020, since the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner, a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. In the explanatory remarks to Art. 12(2) RPBA 2020 (Supplementary publication 2, OJ 2020) it is stated that this paragraph provides a general definition of the nature and scope of the appeal proceedings in accordance with the established case law. The boards of appeal constitute the first and final judicial instance in the procedures before the European Patent Office. In this capacity, they review appealed decisions on points of law and fact.
In T 1604/16 the board referred to the explanatory remarks to Art. 12(2) RPBA 2020 that the boards have competence to review appealed decisions in full, including points of law and fact. This was in accordance with Art. 6 ECHR, which stipulates that there must be at least one judicial instance that can review a case in full, i.e. the law and the facts, given that the boards of appeal are the only judicial body to review decisions by the departments of first instance of the European Patent Office. The board was well aware that there is case law on a restriction of the boards' competence when reviewing discretionary decisions taken by the departments of first instance in certain circumstances (G 7/93, OJ 1994, 775, and case law based on this decision). However, it did not consider the evaluation of evidence to be a discretionary decision. See also chapter III.C.1. "Evaluation of evidence by the department of first instance".
1.2 Reasons for decisions in abridged form
In T 1687/17 the board noted that all the relevant arguments raised by the parties during the appeal proceedings had already been put forward and considered in the first-instance proceedings. No new arguments had been presented on appeal, as acknowledged by the parties at the oral proceedings. On all issues, the board agreed with the opposition division's findings and the reasons given for the contested decision and so considered it expedient to put its decision in abridged form in respect of all those issues, as per Art. 15(8) RPBA 2020.
In T 2227/15 the board stated that in accordance with Art. 15(8) RPBA 2020, the reasons for its decision were given in abridged form for those issues in respect of which the board agreed with the findings of the opposition division. This clearly did not apply to the appellant's submissions which contained issues on which the impugned decision was not based within the meaning of Art. 12(2) RPBA 2020. Recourse to Art. 15(8) RPBA 2020 required that the board agreed with the findings and reasoning of the decision under appeal in respect of one or more issues. The board concluded from this precondition of concurrence with (parts of) the decision under appeal as well as from the legislator's intention (see explanatory notes to Art. 15(7) and (8) RPBA 2020) that in the reasons for the decision in hand it was possible for the board to refer to those parts of the findings and reasons in the decision under appeal with which it agreed. The board followed the similar approach in decision T 1687/17. The board considered that referring to parts of the publicly accessible decision under appeal, and making clear that it fully agreed with and adopted them as its own, was equivalent, but preferable for reasons of procedural economy, to a "copy and paste" or an unnecessary re-phrasing of such parts from the decision under appeal in the board's decision. See also chapter V.A.6.8.1 "Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020".
2. Party adversely affected (Article 107 EPC)
In T 265/20 the appellant was adversely affected by the decision to grant a patent, as all the drawing sheets as requested were missing from the text of the granted patent. The board acknowledged that the appellant was adversely affected by the discrepancy between the appellant's explicit request in the examination proceedings for the grant of a patent and the content of the B1 publication. The impugned decision did not include drawing sheets 1/4 to 4/4, and thus the B1 publication lacked these, and this was clearly less than what was requested by the appellant. The fact that all the drawing sheets were missing was sufficient for the conclusion that the appellant was adversely affected by the impugned decision, irrespective of why the sheets were missing or how the legal framework of R. 71 EPC had to be interpreted.
The board referred to T 2277/19, in which the facts were different from the outset. In that case, the original application contained the description pages, the claims and drawing sheets 1/18 to 18/18. During the examination proceedings, the applicant filed amended drawing sheets 1/7 to 7/7 to replace drawing sheets 1/18 to 18/18 of the application as filed. Drawing sheets 1/7 to 7/7 were included in the text communicated to the applicant under R. 71(3) EPC, but drawing sheets 8/18 to 18/18, which had in fact been previously withdrawn by the applicant, were also included. The applicant then approved the text intended for grant subject to minor amendments. The board held the appeal inadmissible on the ground that the appellant was not adversely affected.
The facts of the case in hand differed in that no drawings at all, i.e. neither the requested ones nor any others, were included in the text communicated to the applicant under R. 71(3) EPC and the Druckexemplar, and in that no explicit approval was given, but approval was rather deemed to have been given. Thus, the board concluded there was no diverging case law and consequently no need to refer the case to the Enlarged Board of Appeal. See also chapter IV.A.2. "Approval of the text by the applicant".
3. Reduced fee for appeal filed by a natural person or an entity
In the cases reported below, the appellants had paid only the reduced appeal fee within the time limit for appeal, despite the criteria for a reduction not being met or being disputed. The question was thus whether the appeals were to be deemed not to have been filed for failure to pay the required amount of the appeal fee (Art. 108, sentence 2, EPC; G 1/18, OJ 2020, A26).
Under Art. 1(4) of the decision of the Administrative Council of 13 December 2017 amending Articles 2 and 14 RFees (CA/D 17/17, OJ 2018, A4), Art. 2(1), item 11, RFees was reworded to provide that the persons and entities listed in R. 6(4) and (5) EPC (small and medium-sized enterprises, natural persons or non-profit organisations, universities or public research organisations) need only pay a reduced appeal fee (EUR 1 880) rather than the full fee. The notice from the EPO dated 18 December 2017 (OJ 2018, A5) contains further details on claiming entitlement to the reduced appeal fee. Its point 3 stipulates that appellants wishing to benefit from the reduced fee for appeal must expressly declare that they are a natural person or an entity covered by R. 6(4) EPC. Under point 4, the declaration must be filed at the latest by the time of payment of the reduced fee for appeal. Point 11 states that if the reduced fee is paid but no declaration is submitted, the notice of appeal may be deemed not to have been filed or the appeal may be considered inadmissible.
In T 1060/19 the board noted that Council Decision CA/D 17/17 did not require a declaration according to points 3 and 4 of the Notice. The board nevertheless assumed arguendo that the provisions of the Notice that were pertinent to the case in hand were binding. The board observed that points 3 and 4 of the Notice did not merely interpret decision CA/D 17/17 of the Administrative Council, but imposed additional duties, i.e. in particular an express declaration. The board specified that from point 11 of the Notice it followed that point 4 must be read as meaning that "it is strongly recommended that" the declaration be filed together with the payment. If not, there would be a deficiency which, however, would be amenable to being remedied by supplying the declaration by the end of the two-month appeal period.
The board stated that the declaration of entitlement to benefit from a reduced fee for appeal mentioned in the Notice from the EPO (OJ 2018, A5) could be filed until the end of the appeal period, despite the wording of point 4, last sentence, of the Notice, which must be reconciled with the meaning of point 11 of the Notice.
In T 225/19, the board followed decision T 1060/19, in which it was held that there was no legal basis for determining whether the fiction of non-filing applied to an appeal for which a reduced appeal fee had been paid according to whether or not a declaration complying with points 3 and 4 of the notice had been submitted. Council decision CA/D 17/17 and the resultant new version of Art. 2(1), item 11, RFees did not contain any legal foundation for the declaration required under points 3 and 4 of the Notice. The notice did not just interpret and elaborate on Council decision CA/D 17/17; it also established the additional requirement of a declaration to be submitted with the fee payment – a requirement devoid of any basis in law. An EPO notice at any rate was an administrative measure and as such could not constitute the requisite legal basis on its own. The boards were bound solely by the statutory provisions, not by EPO notices concerning the application or interpretation of those provisions (J 8/18, Art. 23(3) EPC).
This meant at the very least that a declaration under points 3 and 4 of the notice could not already be demanded on payment of the reduced appeal fee. The boards were anyway empowered and obliged to examine whether an appeal was admissible and had been duly filed throughout the appeal proceedings, and so even after the time limit for appeal had elapsed. This power also encompassed examining whether an appellant that had paid the reduced appeal fee pursuant to Art. 2(1), item 11, RFees satisfied the requirements under R. 6(4) EPC. The boards were especially called on to examine this when other parties to the proceedings disputed that those requirements were met. The boards' general practice in this respect was to accept a declaration and supporting evidence of compliance with the requirements under R. 6(4) EPC even after the time limit for appeal had elapsed and the appeal proceedings were under way (see T 3023/18).
In T 3023/18 notice of appeal was filed in the name of Borealis AG, and the reduced appeal fee paid, on the last day for doing so. In its first communication, the board invited the appellant to file the hitherto missing declaration necessary for the fee reduction. The appellant thereupon confirmed that it was not entitled to the reduced fee, stating that this was evident from the notice of appeal since it had not filed a declaration of entitlement, which according to paragraph 4 of the EPO Notice (OJ 2018, A5) should be filed at the same time. There was nothing in the file to indicate that it intended to take advantage of the reduced fee. In addition, Borealis AG was an appellant and patentee familiar to the EPO and a known large entity. Thus, it argued there was an obvious error and its intention to pay the full fee was clear. The EPO should have deducted the full amount.
The board pointed out that the non-filing of the required declaration was not evidence of a clear intention by the appellant to pay the full appeal fee: it could also be a mistake, as well as an indication that the appellant did not consider itself entitled to pay the reduced fee. The board also noted the practice of the boards of appeal of accepting such declarations at any time during the appeal proceedings (T 1222/19). R. 6(6) EPC made the appellant responsible for assessing whether it was eligible for the reduced fee. This assessment was not straightforward. It was carried out on the basis of Commission recommendation 2003/361/EC of 6 May 2003 concerning the definition of micro, small and medium-sized enterprises. The onus was thus clearly with the appellant to assess its own entitlement. The EPO has no duty to carry out any ex officio enquiry to determine entitlement. In the light of the above, the board did not accept that it was possible to establish that the appellant's intention was to pay the full appeal fee. The appeal was deemed not to have been filed and the board ordered reimbursement of both fee amounts (G 1/18, OJ 2020, A26).
In T 2620/18, the appellant relied on T 152/82 and the EPO practice of correcting underpayments in debit orders of its own motion and debiting the correct, full amount where the payer's payment intention is clear. It contended that, in line with this practice, the EPO should have debited the full appeal fee in time and, therefore, the fee should be deemed to have been paid by the deadline.
In the board's opinion, this EPO practice was not readily applicable to a differentiated fee structure like that of appeal fees. If the debit order explicitly stated the intention to pay the reduced appeal fee, the EPO could not reasonably assume of its own accord that the payer actually wanted to pay the full fee. Moreover, not filing a declaration under R. 6(6) EPC was not an unambiguous indication of an intention to pay the full fee: not doing so could be down to a simple oversight, or the intention might be to file one at a later date. The reference to "official appeal fee (EUR 1 880.00)" in the notice of appeal did not make any difference either; the very point was that the stated amount was one of the valid appeal fees and matched the one specified in the (electronic) debit order. The board thus held that the EPO had been right to debit only the reduced appeal fee.
The board interpreted the appellant's submissions in its statement of grounds of appeal as amounting in substance to a request for correction of the debit order and considered it credible that the appellant had indeed presumed it had paid the full appeal fee. However, it found that this request for correction had not been filed without delay (criterion (d) in the list in G 1/12, OJ 2014, A114, point 37 of the Reasons). Merely submitting another debit order did not, in its view, amount to an implied request for correction (R. 139 EPC). The request in the statement of grounds had not been filed until six weeks after the mistake had been discovered. The appellant argued that this had been down to the need for it and its representative to first clarify the situation but, according to the board, that did not justify such late filing. Nor could the appellant rely on the principle of the protection of legitimate expectations because, in the case in hand, the board had not been under any duty to warn the appellant of the risk of a loss of rights and such a warning – assuming the appellant would then have dealt with the situation in the same way – would ultimately not have led it to file its request any sooner.
In decisions T 2620/18 and T 3023/18, the difference between the amount paid and the full appeal fee was not considered to be small. It could reasonably be assumed that, in introducing the reduced appeal fee, the legislator had not been simply looking to provide a marginal, as it were symbolic fee reduction for natural persons and small and medium-sized enterprises.
4. Content of the statement of grounds of appeal
In T 2884/18, the appeal was rejected as inadmissible. The board considered the statement of grounds of appeal insufficient as it primarily discussed only the opposition division's finding in the contested decision that the asserted public prior use had not been adequately demonstrated, while failing to duly substantiate a lack of novelty in view of that public prior use.
The board explained that, for a case based on chains of reasoning to be complete, as Art. 108 EPC and Art. 12 RPBA 2020 required, it was necessary to set out all the facts that led to the asserted legal outcome only when considered cumulatively. The approach had to mirror that in proceedings against a decision listing various alternative reasons why a patent could not be granted or maintained. In this respect, the case law of the boards of appeal had it that an appeal could be deemed sufficiently substantiated only if it addressed all the grounds precluding patentability. Only then had a case for setting the decision aside been made (see T 922/05). The same had to apply in reverse if several grounds cast doubt on the patentability of a maintained patent only when considered cumulatively, as was the case here: prior use forming part of the prior art and prior use anticipating the invention. If out of a number of facts having to be considered cumulatively in order to alter the decision just one was sufficiently substantiated, the appeal was inadmissible.
5. Review of first-instance discretionary decisions
In T 2603/18, the board, in its communication in preparation for oral proceedings, discussed the extent to which the admission of D23 into the opposition proceedings could be reviewed. D23 had been submitted for the first time at the oral proceedings before the opposition division, i.e. after the date fixed in accordance with R. 116(1) EPC. Under R. 116(1), forth sentence, EPC, it had been at the opposition division's discretion whether or not to consider this late-filed evidence, but it had ultimately admitted it into the opposition proceedings. The board held that, since D23 had then been cited as a basis for the contested decision at issue on appeal, it had become part of it. That alone meant it had to be considered in the appeal proceedings; otherwise, a full review of the contested decision would not be possible (see also T 26/13 and T 1568/12). In the case in hand, therefore, a review of the opposition division's discretionary decision could not entail exclusion of D23, which consequently formed part of the proceedings. Art. 12(4) RPBA 2007 gave the board the power to hold inadmissible facts, evidence or requests which could have been presented or had not been admitted in the first-instance proceedings and thus did not cover evidence that had been presented and admitted in those proceedings. This being the case, the RPBA did not provide any legal basis for not admitting D23.
In T 467/15 too, the board held that if the opposition division had admitted a submission into the opposition proceedings within the bounds of its discretion, the board could not disregard it in the appeal proceedings. It appeared to be debatable whether, if one of the parties so requested, a decision admitting an auxiliary request should still be reviewed on appeal as to whether the discretion had been exercised appropriately (a review to this end was undertaken in relation to admitted documents in T 572/14, T 1227/14, T 2197/11, T 1652/08, T 1209/05, for example), or whether it was not open to such review (see T 26/13, referring to T 1852/11) because an admitted request forming the basis for the contested decision could no longer be excluded from the proceedings on appeal even if the opposition division had exceeded the proper limits of its discretion in admitting that request.
In T 487/16 the appellant (patent proprietor) requested that D7 be excluded from the appeal proceedings. D7 was filed after expiry of the opposition period. Despite the opposition division having discretion under Art. 114(2) EPC to "disregard" facts or evidence not submitted in due time, it decided not to disregard it. On the contrary, D7 was admitted into the proceedings and the opposition division based its decision regarding lack of inventive step on it. The board stated that since D7 was part of the opposition proceedings and the decision was based on D7, it was part of the appeal proceedings (see also Art. 12(2) RPBA 2020). Furthermore, considering that the aim of the appeal proceedings was to review the decision under appeal in a judicial manner and in view of the appellant's main request for maintenance of the patent as granted, which required a review of the decision with regard to the conclusion drawn inter alia on the basis of D7, the board saw no legal basis on which it could be excluded from the appeal proceedings. Thus, in this regard, the board confirmed the case law developed under RPBA 2007 (cf. T 26/13, T 1568/12, T 2603/18). For the sake of completeness, the board added that Art. 12(4) RPBA 2007 would not provide a basis for excluding D7 from the appeal proceedings either since the document was admitted into the proceedings by the opposition division.
In T 617/16 the board noted that the EPC did not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision was based on them (see e.g. T 1549/07, T 1852/11, T 1201/14). In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Art. 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings (T 487/16, T 2603/18). Accordingly, the board saw no reason to reverse the opposition division's decision to admit D13 into the opposition proceedings.
In T 2049/16 the opposition division admitted D20, which was filed by the opponent one month before oral proceedings, because it found it to be prima facie relevant. It was argued that the opposition division should not have admitted the document because its late filing constituted a tactical abuse of proceedings. The board, however, was not convinced that the opponent's behaviour could be deemed an abuse of proceedings. The board considered whether it was possible to reverse the admittance on appeal. The board was not aware of any explicit legal basis that would make it possible to retroactively exclude evidence that has been admitted into the proceedings and decided upon by the department of first instance. In this respect, the board shared the opinion expressed in T 617/16.
6. New submissions on appeal
6.1 Late submission of new arguments
In T 1875/15 the board followed the finding in T 1914/12 that a board has in principle no discretion not to admit late-filed arguments. However, it also noted that if a late-filed objection included new allegations of fact, the board had, under Art. 114(2) EPC, the discretion not to admit it into the proceedings. The board held that the respondent's objection under Art. 100(c) EPC, which had been raised for the first time during the oral proceedings before the board, included not only legal but also factual (and technical) considerations, namely what the term "poly"-olefin" in the passage concerned meant. The respondent's allegation that it had to be read as "poly-alphaolefin", such that the corresponding feature in claim 1 as granted was not based on the application as filed, was not an argument but rather an allegation of a fact, namely, the fact that the skilled person would have interpreted the term "poly"-olefin" in this passage of the application as filed as to directly and unambiguously mean "poly-alphaolefin". Therefore, the respondent's late-filed objection included a new allegation of fact. Thus, under Art. 114(2) EPC the board had the discretion not to admit the respondent's late-filed objection. The board held that this finding was in agreement with T 1914/12, according to which a "fact" had to be understood as a piece of (allegedly) factual information, on which a party based its case. The present case was also in line with decisions T 635/14 and T 1381/15, in which the entrusted boards also regarded late-filed objections as new allegations of fact.
6.2 Principles applying to late submissions – inter partes proceedings – RPBA 2007
In T 369/15 the board conceded that the appellant (opponent) had not been legally obliged to comment on any auxiliary requests filed, but observed that it was up to each party to the proceedings to submit all facts, evidence, arguments and requests relevant for its case as early and completely as possible. Since the appellant had waited until the oral proceedings to raise its inventive-step objections against auxiliary request 1, which, albeit not filed until after those oral proceedings had been scheduled, was essentially the same as auxiliary requests filed with the reply to the appeal, the board disregarded them when deciding to admit auxiliary request 1 under Art. 13 RPBA 2007. In the board's view, that an auxiliary request filed with the reply had possibly not been fully substantiated could not justify the appellant's failure to submit any written observations at all on auxiliary request 1.
6.3 Article 12(4) RPBA 2007
In T 101/17 Art. 12(4) RPBA 2007 still applied, as the statement of grounds of appeal had been filed before the entry into force of the RPBA 2020. The board recalled that this provision codified the principle that each party should submit all facts, evidence, arguments and requests that appear relevant as early as possible so as to ensure a fair, speedy and efficient procedure (e.g. T 162/09). With reference to T 1848/12 and the case law cited therein, the board emphasised that an appellant was not at liberty to bring about the shifting of its case to the appeal proceedings as it pleased, and so to compel the board either to give a first ruling on the critical issues or to remit the case to the opposition division. Conceding such freedom to an appellant would run counter to orderly and efficient opposition-appeal 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 unacceptable for procedural economy generally (G 9/91, OJ 1993, 408, T 1705/07, T 1067/08). The board then examined the case in hand in the light of the foregoing approach. The novelty objection to be overcome by the auxiliary requests had been in the proceedings already since the filing of the opposition; its framework of facts and arguments had remained unchanged throughout the opposition proceedings. Nonetheless the appellant had restricted its case to defending the patent as granted without providing any fallback positions by filing auxiliary requests. The board left open at which point it would have been incumbent on the appellant to file an auxiliary request to address the novelty objection (in response to the opposition, in response to the preliminary opinion of the opposition division, both raising the objection, or when invited to do so at the oral hearing). However, the board noted that the appellant had taken none of these opportunities and for reasons of equity in appeal was restricted to defending the patent in unamended form. For these reasons, the board decided not to admit any of the auxiliary requests filed at the appeal stage. See also chapter III.F. "Apportionment of costs" above.
6.4 State of proceedings – procedural economy – RPBA 2007
In T 2734/16, the board had to decide (before the entry into force of the RPBA 2020) whether to admit documents that the appellant had submitted as part of the inventive-step discussion after filing its statement of grounds of appeal. The lack of relevance aside, the reason given for the late filing did not convince the board either. In its view, the late filing of citations coming to light by chance could not be regarded as admissible simply because they were in Japanese and might therefore have been difficult to find. But this applied all the more since the filing appellant had been aware of the importance of Japanese companies in the technical field in question and therefore had reason to carry out comprehensive searches in good time. See also chapter IV.B.2. "Late submissions – concept of 'in due time'" above.
6.5 Amendment to a party's case – RPBA 2020
In T 1480/16, appellant I (patent proprietor) submitted an auxiliary request (auxiliary request 5) at the oral proceedings. This request was based on auxiliary request 3, filed with the reply, with the only difference being the deletion of the method claims. First of all, the board held that the admission of auxiliary requests submitted by a party after the statement of grounds or the reply have been filed lies within the discretion of the board under Art. 13(1) RPBA 2020 (see Art. 24 RPBA 2020 and the transitional provisions under Art. 25(1) RPBA 2020). Art. 13(2) RPBA 2020 could not be applied in this instance (Art. 25(3) RPBA 2020), so Art. 13 RPBA 2007 remained applicable. In this case, however, the board could not identify any amendment to the appeal. It did not consider the deletion in auxiliary request 5 of the method claims in auxiliary request 3 (filed with the reply to the appeal) to be an amendment to the appeal case since it did not result in any change to the factual situation. In particular, it did not necessitate any new discussion on novelty or inventive step. As for the insertion of the term "gleichzeitig" [at the same time] into feature I') of claim 1, contested by appellant II, the board was of the opinion that this resulted in explicitly setting out what the opposition division had considered to be implicitly implemented in feature I) of claim 1 (which it had maintained) and therefore to justify a finding of inventive step. Appellant II had disputed this finding in its appeal. Appellant I had already responded to this by filing auxiliary request 3 as a precautionary measure with its reply to the appeal and adding the term "gleichzeitig" to claim 1. Similarly, it had already addressed appellant II's objections regarding clarity and inadmissible intermediate generalisation in its written reply, so there was no amended case in this respect either. Since, in this instance, the board could not identify any amendment to the case, it concluded that the conditions under which Art. 13(1) RPBA 2020 could be applied had not been satisfied. The board admitted auxiliary request 5 and went on to find it allowable.
In T 482/19 the auxiliary requests at issue were based on requests filed during first-instance opposition proceedings, except that the product claims had been deleted. Both requests were filed after the parties had been summoned to oral proceedings. The appellant 1 (patent proprietor) argued that these deletions were not an amendment to the case as they contained no new subject-matter. The board however distinguished its case from T 1480/16 (see above, decided by the same board). In the present case, the method claim was more limited than the product claim. These limiting features had not played any role in the appeal procedure, as the submissions of the parties were mainly related to the product claims that were present in all requests on file. However, if the board were to admit these features, they would need to be considered in particular in relation to the issue of inventive step and this would result in a substantial and unexpected change in the discussion at the oral proceedings. Therefore the filing of the auxiliary requests at issue constituted an amendment of the patentee's case according to Art. 13 RPBA 2020. Since the appellant did not provide any exceptional circumstances, the board did not admit the request pursuant to Art. 13(2) RPBA 2020.
In T 995/18, however, the same board again arrived at the same outcome as in T 1480/16. Auxiliary request 1 filed at the oral proceedings was based on the main request at issue in the contested decision, which had been filed with the reply to the appeal and so already formed part of the subject-matter at issue in the appeal proceedings; the only difference was that a dependent claim had been deleted. The board did not consider this deletion to amount to an amendment to the appeal case since it did not result in any change to the factual situation (see T 1480/16 above) of the kind arising where a deletion entailed thoroughly re-evaluating the matters at issue. Here, abandoning the dependent claim had merely eliminated one point of dispute from the proceedings; it did not put the other claims in a new light or otherwise affect the proprietor's appeal case. As the board explained, such abandoning of a claim was comparable to an opponent's abandoning individual objections or lines of attack, the admissibility of which was rightly not regarded as a matter for the board's discretion either.
In T 1217/17, the board decided to disregard several lines of argument merely mentioned but not adequately substantiated in the reply to the appeal. At the oral proceedings, the respondent (opponent) announced that it would be "expanding" on these arguments. It contended that this did not amount to amending its case within the meaning of Art. 13(1) RPBA 2020; it was instead elaborating on arguments already made in its reply and based on citations already produced, which was admissible at any stage of the appeal proceedings.
The board found that, for some of these lines of argument, no supporting case had been made in the reply, which merely referred to arguments put forward in the opposition proceedings, so any submissions at the oral proceedings would have to be regarded as forming an entirely new appeal case. As to the other lines of argument, the board observed that the respondent's reply did not set out a logical chain of arguments as regards lack of inventive step, so any submissions on this point too would amount to a change in the substance of its appeal case. The announced submissions were not merely new arguments but also new facts, e.g. the features analysis missing from the reply and the detailing of the specific passages in the adduced evidence that the respondent regarded as destroying the novelty of claim 1.
6.6 Submissions made in the statement of grounds or the reply – first stage of the appeal proceedings – Article 12(3) to (6) RPBA 2020
In J 12/18 the appellant (applicant) requested to designate all EPC Contracting States, including those withdrawn in the parent application, and appealed the decision of the Receiving Section to refuse the inclusion of the withdrawn designations. During the oral proceedings the appellant presented for the first time submissions concerning the protection of its legitimate expectations. Since, in the case in hand, the summons to oral proceedings had been notified before the RPBA 2020 came into force, the Legal Board concluded that Art. 13(2) RPBA 2020 did not apply (Art. 25(3) RPBA 2020). However, Art. 12(4) to (6) RPBA 2020 applied according to Art. 25(1) RPBA 2020 because the exception in Art. 25(2) RPBA 2020 only covered submissions in the statement of grounds of appeal, but not subsequent submissions in the appeal proceedings. Moreover, Art. 13(1) RPBA 2020, which referred to Art. 12(4) to (6) RPBA 2020, applied according to Art. 25(1) RPBA 2020.
The Legal Board exercised its discretion under Art. 12(4) and (6) and 13(1) RPBA 2020 not to admit the new submissions; the appellant could and should have presented the facts that formed the basis for the alleged protection of legitimate expectations earlier in the proceedings. The appellant argued that it had relied on an EPO communication of 10 August 2016 issued in the parallel case J 14/18. However, the Legal Board observed that if the appellant had really trusted the content of this communication, it would have been aware of this fact from the moment of taking note of that information. The Legal Board also considered that the new objection would require the assessment of several issues (causal link between the erroneous information in another case and the reaction of the appellant, requirement of proof thereof, reasonableness of the appellant's reaction) and that this would be detrimental to procedural economy. Moreover, the objection would introduce a completely new aspect on which the assessment and the reasoning in the appealed decision were not focused. The Legal Board further underlined that a party had to present the complete case already with the statement of grounds of appeal (Art. 12(3) RPBA 2020). The appeal was dismissed. See also chapter II.F.1. "Designation of contracting states in a divisional application" above.
6.7 Submissions made after filing of statement of grounds or reply – second stage of the appeal proceedings – Article 13(1) RPBA 2020
6.7.1 New lines of attack in respect of inventive step based on documents submitted during first-instance proceedings – not admitted
In T 256/17 the board had to decide whether to admit two new lines of attack based on lack of inventive step which the appellant (opponent) had filed in response to the respondent's reply to the statement of grounds of appeal. Both were based on documents submitted during the first-instance proceedings, but one of them combined for the first time two documents previously discussed as the closest prior art and the other, starting from a known combination, argued on the basis of a different technical problem. The appellant gave no reasons for submitting these objections for the first time after having filed the statement of grounds of appeal.
The board did not see any reason for the appellant not having submitted the newly filed lines of attack in the opposition proceedings. It pointed out that, by its course of action, the appellant had prevented the respondent from reacting to the attack during the opposition proceedings and the opposition division from deciding on the matter. With their late submission the appellant had confronted the board and the respondent with a fresh case, which was contrary to the very aim of appeal proceedings, which was to review the decision under appeal in a judicial manner (see Art. 12(2) RPBA 2020). The board thus decided to exercise its discretion not to admit the new lines of attack into the proceedings pursuant to Art. 12(4) RPBA 2007 in conjunction with Art. 12(2) RPBA 2007, which essentially corresponded to Art. 12(3) RPBA 2020, and Art. 25(2) RPBA 2020, as well as pursuant to Art. 13(1) RPBA 2020 in conjunction with Art. 25(1) RPBA 2020.
6.7.2 New documents in response to experimental data submitted by the patent proprietor – admitted
In T 23/17 the board exercised its discretion under Art. 13(1) RPBA 2020 and held plausible and understandable the argument made by the appellant (opponent) that the new documents (filed after the statement of grounds of appeal but before the notification of the summons to oral proceedings) had been filed in response to the experimental data presented by the respondent (patent proprietor) in its reply to the appeal and so, as Art. 13(1) RPBA 2020 put it, "to resolve the issues which were admissibly raised by another party in the appeal proceedings". The board could not see that there had been any reason to file these documents at an earlier stage of the proceedings. As to the additional requirement under Art. 13(1) RPBA 2020 that the appellant give reasons for not having submitted the amendment earlier, the board held that the reasons it had already stated were sufficient in this case and that there were no grounds for calling on it to provide any further justification of the kind stipulated there. Although, in accordance with Art. 25(1) RPBA 2020, the revised version of Art. 13(1) RPBA was applicable, it had to be borne in mind that this version had not yet entered into force or even been known when the documents in question had been filed and so could not have been observed by the appellant. Besides, since the respondent had first requested at the oral proceedings that these documents not be admitted, the appellant had had no reason to justify their late filing after submitting them.
6.8 Submissions made after notification of summons – third stage of the appeal proceedings – transitional cases
6.8.1 Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020
In T 634/16, the auxiliary requests at issue had been filed, in response to the board's communication setting out its preliminary opinion, before the entry into force of the RPBA 2020, whereas the board took its decision at the oral proceedings, which were held after their entry into force. To determine which provisions were applicable, the board noted that under the transitional provisions the revised version of the rules generally applied, bar only certain provisions in revised Art. 12 and 13 that were not immediately applicable. Art. 25(2) RPBA 2020 concerned particular provisions of Art. 12 RPBA 2020 governing the basis of the appeal proceedings but not amendments made at a late stage in the proceedings, while Art. 25(3) RPBA 2020 excluded application of Art. 13(2) RPBA 2020, which governed the admission of submissions made, for example, after notification of the summons to oral proceedings. In the case in hand, the parties had been sent the summons before the RPBA 2020 came into force. The board thus decided that Art. 13 RPBA 2007 still applied as regards the admission of the requests in question, rather than Art. 13(2) RPBA 2020. With reference to the preparatory work on the revised rules (BOAC/5/19, p. 51; CA/3/19, p. 13, point 65), the board also concluded that under the transitional provisions in Art. 25(3) RPBA 2020, Art. 13(1) RPBA 2020 was applicable generally to pending appeals, including the one now before it, in addition to Art. 13 RPBA 2007.
The board also noted that, compared with its 2007 version, Art. 13(1) RPBA 2020 provided more detail on the conditions for admitting amendments to an appeal case. However, the board did not see any contradiction or incompatibility between the two provisions. On the contrary, in view also of the case law developed on the applicable criteria under Art. 13(1) RPBA 2007, the board held that the revised version codified and consolidated established practice in this area. Exercising its discretion under Art. 13(1) RPBA 2020, the board refused to admit the requests in question into the proceedings.
In T 32/16 the same board reiterated in respect of a similar procedural situation that both Art. 13 RPBA 2007 – including its version of Art. 13(1) – and Art. 13(1) RPBA 2020 were applicable at the same time. No contradiction could be found between the wording of Art. 13(1) RPBA 2020 and that of Art. 13 RPBA 2007. The revised wording was more detailed in listing the requirements on the party making an amendment to its appeal case and the criteria to be used by the board when exercising its discretion; this difference, however, merely reflected much of the case law developed under Art. 13(1) RPBA 2007. See also chapters V.A.6.8.3 "New request in response to preliminary opinion of the board clarifying its objections – admitted" and V.A.7.3 "Remittal for adaptation of the description" below.
In T 2227/15 the board noted that the appeal proceedings in hand, in which oral proceedings were held on 29 January 2020, were governed by the RPBA 2020 (Art. 24 and 25(1) RPBA 2020), except for Art. 12(4) to (6) and 13(2) RPBA 2020, instead of which Art. 12(4) and 13 RPBA 2007 remained applicable (Art. 25(2) and (3) RPBA 2020). The general applicability of the RPBA 2020 to the proceedings in hand included Art. 13(1) RPBA 2020. The board noted that Art. 25 RPBA 2020 systematically reflected the structure relating to the admissibility of parties' submissions during appeal proceedings, which, according to the RPBA 2020, was characterised by a convergent approach, divided into three different stages. Art. 25(2) and (3) RPBA 2020 was clearly directed to and limited to two narrow exceptions, i.e. to provisions governing the parties' submissions made either at the outset of the appeal proceedings, which marked the first level of the convergent approach (initial stage), or at an advanced stage of the appeal proceedings, which corresponded to the third level of the convergent approach (ultimate stage). Only those provisions which specifically governed the initial stage and the ultimate stage were excluded from an immediate application of the RPBA 2020, leaving the intermediate stage, i.e. the second level of the convergent approach (Art. 13(1) RPBA 2020), to be governed by the general rule set out in Art. 25(1) RPBA 2020. Thus, where the summons to oral proceedings or a R. 100(2) EPC communication was notified before 1 January 2020, Art. 13(1) RPBA 2020 applied simultaneously with Art. 13(1) and (3) RPBA 2007. See also chapters V.A.1.2 "Reasons for decisions in abridged form" and V.A.6.8.5 "Inventive step attack substantiated for the first time at oral proceedings – not admitted".
In T 1597/16, the RPBA 2020 had not yet entered into force when the summons to attend oral proceedings on 14 January 2020 was notified or when the (new) main request was filed. As the board observed, Art. 13(1) and (3) RPBA 2020 thus applied to amendments to a party's appeal case; Art. 13(2) RPBA 2020, however, did not and Art. 13 RPBA 2007 continued to apply instead (see Art. 25(3), sentence 2, RPBA 2020). The board further held that Art. 13(1) RBPA 2020 was applicable generally to amendments made to a party's appeal case after the filing of the statement of grounds or reply, regardless of whether these amendments were filed before or after the expiry of a period specified in a communication under R. 100(2) EPC, or before or after the notification of a summons to oral proceedings. See also chapter V.A.6.8.6 "Limitation not leading to any new disputed points of fact or patent law and prima facie allowable – requests admitted".
In T 584/17 the appellant decided at the oral proceedings to withdraw its request for admission of a document, which prompted the respondent to request its admission for the first time. In the board's view, this was an amendment to the respondent's case within the meaning of Art. 13(1) and (3) RPBA 2007, which still applied in this case rather than Art. 13(2) RPBA 2020 (see Art. 25(3) RPBA 2020).
In this case, the board did not deem it necessary to also consider the criteria stated in Art. 13(1) RPBA 2020. Citing the explanatory remarks in document CA/3/19, it nonetheless took the view that it was at liberty, in the third level of the convergent approach applicable under the RPBA 2020, to use the criteria in Art. 13(1) RPBA 2020 when deciding whether to admit an amended case pursuant to Art. 13(2) RPBA 2020. It considered that it was also free to do so where Art. 13 RPBA 2007 continued to apply instead of Art. 13(2) RPBA 2020. It noted, however, that the criteria for exercising discretion in Art. 13(1) RPBA 2020 were in essence the same as those developed by the case law surrounding Art. 13(1) RPBA 2007 (see also T 634/16 and T 32/16). It considered it possible to additionally use the criteria stated in Art. 13(1) RPBA 2020 to decide on admission of the auxiliary request submitted at the oral proceedings in this case too, but did not see any reason to do so.
6.8.2 Applicability of Article 13(2) RPBA 2020 in cases of postponement of oral proceedings
In T 950/16 a first summons to oral proceedings had been notified before entry into force of the RPBA 2020. However, following a request for postponement, the oral proceedings were cancelled, and a new summons was issued on 7 February 2020. About one month before the oral proceedings new documents were submitted. In order to establish the applicable provision of the RPBA, the board considered which of the summonses qualified as "the summons" in Art. 25(3) RPBA 2020. The board made reference to the "Explanatory remarks" on Art. 25(1) RPBA 2020 (Supplementary Publication 2, OJ 2020), according to which the transitional provisions of Art. 25 RPBA 2020 were intended to protect the "legitimate expectations which parties may have had at the time of filing" their submissions. As noted by the board, the reasons for a further summons were diverse and not in every case caused by the parties. It would thus be undue to make the applicability of the law dependent on the date of a later summons. Hence, the admittance of the new documents was governed by Art. 13 RPBA 2007 in the case in hand.
6.8.3 New request in response to preliminary opinion of the board clarifying a party's objections – admitted
In T 32/16, with regard to the respondent's reasons for submitting the request in issue only in response to the board's preliminary opinion (Art. 13(1), third sentence, RPBA 2020) and its justification for this amendment to its appeal case (Art. 13(1), first sentence, RPBA 2020), the board highlighted the special circumstances of the case in hand, where the board's communication had crystallised for the first time what the board itself had deduced to be the relevant elements of the appellant's lengthy arguments concerning its objections under Art. 100(c) EPC. Although the appellant had stated that its set of arguments was always supposed to have been understood in the way the board had deduced, the board took the view that its statement could be understood as having identified the salient argument for the first time. In the context of the very special circumstances of the case, the board accepted the respondent's reasons for submitting the (now) main request at such a late stage. The board also noted that the respondent's amended request had been submitted on the day it received the board's preliminary opinion. It had thus responded without delay to the objections once these had been identified. Regarding the criterion stated in Art. 13(1), last sentence, RPBA 2020 as to whether the respondent had demonstrated that the amendment prima facie overcame the issues raised by the appellant or by the board and did not give rise to new objections, the board noted that the main request directly addressed the objections of added subject-matter. In its written response, the respondent had also stated from where the amendment was taken (Art. 12(4) RPBA 2020). The board noted that the introduced terminology was an explicit recitation of the language used in the application as filed. Demonstration of how these amendments overcame the objection in this particular case, where the lacking features as such had at least already been identified by the appellant, was thus self-evident in the amendments made. The amendments were furthermore not complex (Art. 13(1) RPBA 2007; Art. 13(1), second sentence, RPBA 2020 with reference to Art. 12(4) RPBA 2020) in any sense, nor had this been argued to be the case. See also chapters V.A.6.8.1 "Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020" and V.A.7.3 "Remittal for adaptation of the description".
6.8.4 New auxiliary requests in response to the board's preliminary opinion – fundamental importance of the point at issue already clear beforehand – not admitted
In T 136/16, the board considered the criteria under Art. 13(1) RPBA 2020 and exercised its discretion not to admit the two auxiliary requests filed after the summons to oral proceedings. It found, first, that the amendment made in auxiliary request 1 prima facie led to a new objection under Art. 84 EPC and, second, that this amendment could and should have been made at an earlier stage in the appeal proceedings. Indeed, in the contested decision the opposition division had already pointed out the fundamental importance of the interpretation of a disputed term in the claim. The opposition division had construed this term narrowly in the light of paragraph 7 of the description, but in its statement of grounds the appellant (opponent) had submitted detailed arguments contradicting this narrow interpretation on the basis of other passages of the description. Since the amendment had been made in view of an issue of fact that had already been discussed extensively, the respondent (patent proprietor) had already had cause to make it together with its reply. It had had no reason to assume that the board of appeal would automatically share the opposition division's opinion. Its argument that the large number of attacks put forward prevented it from formulating meaningful auxiliary requests until it had the board's preliminary opinion did not convince the board either, given the fundamental importance of the interpretation of the term at issue in almost all the objections raised. In addition, given the circumstances of the case, the board deemed it detrimental to procedural economy to wait until that stage of the appeal proceedings to file auxiliary requests containing such an amendment.
6.8.5 Inventive step attack substantiated for the first time at oral proceedings – not admitted
In T 2227/15, applying Art. 13(1) RPBA 2020 as well as Art. 13 RPBA 2007, in particular Art. 13(1) and (3) RPBA 2007, the board did not admit the appellant's inventive step attack based on D1 in combination with common general knowledge. The board considered that this attack had been substantiated for the first time at the oral proceedings before it; the appellant's earlier general submissions on inventive step were regarded as unsubstantiated and were not taken into consideration, since they did not constitute the party's complete case within the meaning of Art. 12(2) RPBA 2007, corresponding to Art. 12(3) RPBA 2020. In reply to the board's communication, the appellant had provided neither substantiated arguments nor comments on the preliminary opinion of the board in this regard. Thus, in the board's view, the respondent had every reason to believe that a lack of inventive step objection was no longer being pursued. Considering all the circumstances of the case, the board concluded that admitting this attack into the proceedings would not only substantially add to and considerably change the complexity of the matter to be discussed, but would also be contrary to the need for procedural economy and would take the respondent by surprise. See also chapters V.A.1.2 "Reasons for decisions in abridged form" and V.A.6.8.1 "Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020".
6.8.6 Limitation not leading to any new disputed points of fact or patent law and prima facie allowable – requests admitted
In T 1597/16, the admission of the new main request, which had been filed before the entry into force of the RPBA 2020, was at the board's discretion under Art. 13(1) RPBA 2020 and Art. 13(1) RPBA 2007. In the board's view, the respondent had not given any cogent reasons for waiting until the final stage of the appeal proceedings to file the amendment to the claim. It had merely asserted that the new request had first been prompted by the board's preliminary opinion in the communication under Art. 15(1) RPBA 2007. However, this did not convince the board because the communication had not raised any brand new issues. On the contrary, the objections it mentioned had been part of the appeal proceedings from the outset. Nonetheless, the board decided to admit the new main request into the proceedings for the following reasons. Limiting the claimed subject-matter to two out of the three alternatives in claim 1 as granted did not lead to any other disputed points of fact or patent law. The appellant (opponent) had been able to formulate an objection for lack of inventive step straight away and could otherwise refer to its written case, which matched that from the first-instance proceedings. Moreover, the board considered the new request to be prima facie allowable since it appeared to overcome all remaining objections without creating any new issues. See also chapter V.A.6.8.1 "Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020".
6.8.7 Request does not prima facie overcome objection – not admitted
In T 1187/15 the appellant (applicant) filed auxiliary request XI during the oral proceedings before the board. It was filed as a response to the board's conclusion, reached during the oral proceedings, that claim 1 of the requests on file did not comply with the requirements of Art. 123(2) EPC. In the exercise of its discretion under Art. 13(1) RPBA 2020 the board took into account, inter alia, whether the party had demonstrated that the amendments, prima facie, overcame the issues raised by the board and did not give rise to new objections. The board noted that this criterion was also a key one developed in the case law of the boards of appeal on a board's exercise of its discretion under Art. 13(1) RPBA 2007. Art. 13 RPBA 2007 also applied in the case in hand as the summons to oral proceedings had been notified prior to 1 January 2020 (Art. 25(3) RPBA 2020). The board found that auxiliary request XI, prima facie, did not overcome the objections under Art. 123(2) EPC since the omission of certain features constituted an unallowable intermediate generalisation. In view of this and the fact that the appellant had had an opportunity to respond to the points raised by the board of its own motion, the board exercised its discretion not to admit auxiliary request XI into the proceedings.
Moreover, the board rejected the appellant's request for another interruption to prepare a further request which would replace auxiliary request XI. The board emphasised that if a party decided to file requests before the oral proceedings which overcame only some of the board's objections in the hope that they could convince the board not to maintain its other objections, then they ran the risk that additional requests filed during the oral proceedings would not be admitted into the proceedings. It was not compatible with the principle of procedural economy that oral proceedings were conducted in such a way that the appellant was given the opportunity to repeatedly file new requests until a version of the claims was found that was acceptable to the board.
6.9 Submissions made after notification of summons – third stage of appeal proceedings – Article 13(2) RPBA 2020
6.9.1 Oral proceedings cancelled after notification of summons – Article 13(2) RPBA 2020 still applies
In T 2279/16 the appellant (applicant), replying to the summons to oral proceedings issued after the entry into force of the RPBA 2020, informed the board that they would not attend the oral proceedings. After the board cancelled these, the appellant filed new auxiliary requests.
The board observed that it was not explicitly stated in Art. 13(2) RPBA 2020 whether this provision still applied if, after notification of a summons to oral proceedings, they were subsequently cancelled. In the board's opinion, Art. 13(2) RPBA 2020 was applicable at least in the case where this cancellation was occasioned by a statement from an/the appellant that it would not be represented at the oral proceedings. The board explained that the provisions of Art. 13(2) RPBA 2020 applied either after the expiry of a period specified in a communication under R. 100(2) EPC or "after notification of a summons to oral proceedings", and that there was nothing in the wording of the article to indicate any exceptions to this, or that the effects of Art. 13(2) RPBA 2020 were dependent on the subsequent procedural history. Where an appellant decided that it would not be represented at oral proceedings, a board could decide to cancel the oral proceedings. To conclude that such a decision should have the effect of returning the appellant to a more favourable position regarding the admission of new requests would be inconsistent with the aim and purpose of Art. 13 RPBA 2020, which was to provide a convergent approach to limiting the possibilities for a party to amend its appeal case.
The combination of documents on which the board based its inventive step objection in its preliminary opinion was exactly the same as the one which led to the refusal of the application, and hence this was not a new objection from the board (even if the board's reasoning differed in certain details). The board emphasised that the fact that the board in this case had issued a preliminary opinion in which it came to the same conclusion as the examining division did not constitute "exceptional circumstances" within the meaning of Art. 13(2) RPBA 2020. Moreover, the appellant's submission did not contain "cogent reasons" (or indeed any reasons) why the auxiliary requests should be admitted. The new auxiliary requests were therefore not admitted.
6.9.2 New request based on request filed with statement of grounds and overcoming new objections raised in board's communication – admitted
In T 1278/18 the board exercised its discretion pursuant to Art. 13(2) RPBA 2020 to admit the new request (filed after oral proceedings had been arranged), for the following reasons: The claims of the new request differed from those of the first auxiliary request (filed with the statement of grounds of appeal) in so far as they comprised amendments made in response to objections under Art. 84 and R. 29(7) EPC 1973 and Art. 123(2) EPC raised for the first time in the board's communication pursuant to Art. 15(1) RPBA 2020. Moreover, the independent claims of the new request differed from the independent claims of the main request, on which the appealed decision was based, essentially by the added limitations which had already been introduced in the first auxiliary request filed with the statement of grounds of appeal with the aim of overcoming all objections of lack of novelty raised in the appealed decision. The board considered that they could be regarded as an appropriate reaction to the appealed decision (Art. 12(4) RPBA 2007). The board was also satisfied that the amendments to the claims were supported by the information in the application documents as originally filed, as indicated by the appellant, and concluded that the amendments to the claims clearly overcame all outstanding objections without introducing new issues.
6.9.3 New request based on request filed in response to reply of the respondent and containing editorial amendments to remove inconsistencies – admitted
In T 131/18, the main request at issue (filed as auxiliary request 6 after notification of the summons to oral proceedings) was, save for two amendments, identical in wording and content to auxiliary request 3, which had already been filed in response to the reply and which (although dropped during the oral proceedings) the board considered to meet the conditions for admission under Art. 13(1) RPBA 2020. The two amendments in the main request related to inconsistencies remaining in auxiliary request 3, namely wording regarded as incompatible with Art. 123(2) EPC the appellant (patent proprietor) had removed from claim 1 but left in dependent claim 2, and a somewhat unclear expression it had replaced in claim 1 but not in method claim 6. These inconsistencies had been cleared up in the main request. The board concurred with the appellant that the amendments were merely editorial changes occasioned chiefly by its communication under Art. 15(1) RPBA, and classed this as an exceptional circumstance within the meaning of Art. 13(2) RPBA 2020. It rejected the respondent's objection that admitting them would run counter to the legislator's manifest intention of preventing procedural delays caused by repeated attempts at improvement. Art. 13(2) RPBA 2020 had not been intended to rule out entirely the possibility of making minor amendments such as ones correcting obvious discrepancies or grammatical errors, which were admissible under R. 139 EPC for instance, once the summons to oral proceedings had been issued.
6.9.4 New request in response to board's preliminary opinion based on earlier objections – not admitted
In T 1187/16 the board held that, where all objections addressed in a board's communication had already been raised earlier on in the proceedings, the communication could not be regarded as creating exceptional circumstances within the meaning of Art. 13(2) RPBA 2020.
In the case in hand, the appellant (patent proprietor) had filed a new auxiliary request in response to the board's communication under Art. 15(1) RPBA 2020 although, as the board observed, the objections under Art. 123(2) addressed there had already been dealt with in detail in the reply filed by the respondent (opponent). The appellant was, the board found, wrong in arguing that the communication had introduced a new aspect (whether a feature was essential for carrying out the invention) because the point of the communication in question dealt with Art. 123(2) EPC. The board thus concluded that the appellant had already had ample opportunity before notification of the summons to oral proceedings to respond to the existing objections by filing precautionary auxiliary requests. Considerations of procedural economy and the fact that the appellant had filed the auxiliary request more than one month before the oral proceedings were irrelevant in such circumstances.
Nor, the board held, was it an exceptional circumstance within the meaning of Art. 13(2) RPBA 2020 that its preliminary opinion in the communication differed from the position taken by the opposition division in the decision under appeal. The purpose of appeal proceedings was to review the decision under appeal so the appellant could and should have contemplated the possibility that the board would take a different view from the opposition division. Exercising its discretion under Art. 13(2) RPBA 2020, the board refused to admit the new auxiliary request into the appeal proceedings.
6.9.5 New request in response to objections which do not go beyond the framework of the board's initial objection – not admitted
In T 2214/15, the amendments contained in auxiliary request 2, which were to overcome the board's objections of lack of support and lack of clarity raised in its preliminary opinion, gave rise to further objections concerning clarity and added subject-matter. This request was therefore not allowed. In reaction, the appellant (applicant) filed auxiliary request 3 during the oral proceedings before the board. Applying Art. 13(2) RPBA 2020, the board did not admit this amendment to the appellant's case into the proceedings because there were no exceptional circumstances in the present case.
The board pointed out that the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons. The amendments were unsuccessful attempts at overcoming previously identified issues of clarity and lack of support already raised in the summons. The further objections concerning clarity raised by the board during the oral proceedings did not go beyond the framework of the previous discussions, which were defined by the underlying claim deficiencies. The board noted that if the appellant's argument that identifying newly introduced problems represented exceptional circumstances were correct, this would mean that the appellant would have to be given repeated opportunities to file amended claims until no new problems were introduced, which would be at odds with the primary object of the appeal proceedings of a judicial review of the impugned decision (Art. 12(2) RPBA 2020).
Concerning its objection under Art. 123(2) EPC raised during oral proceedings against one of the amendments in auxiliary request 2, the board observed that, given the strict third level of the convergent approach implemented by Art. 13(2) RPBA 2020, identifying an amendment aimed at overcoming an objection raised in the summons as being non-compliant with Art. 123(2) EPC could not be considered to be an exceptional circumstance. An appellant had to be aware that every amendment would have to be examined for compliance with Art. 123(2) EPC and that the earliest possible moment for this was during the oral proceedings if said amendment was filed in reaction to the summons. This was the ordinary development of the appeal proceedings, and it also did not go beyond the framework of the underlying claim deficiency.
In the present case, there were thus no exceptional circumstances justifying taking into account a further amended claim request. The identification of problems newly introduced when the appellant attempted to solve issues discussed in the proceedings up to that point was rather to be seen as the ordinary development of the discussion. Contrary to the appellant's submission, in the board's opinion the present case was a typical one, where a central objection (that of lack of support) had been among the grounds for refusal, was identified and agreed with by the board and was the central topic throughout the appeal proceedings, thus typically not warranting the opportunity to file a further auxiliary request.
6.9.6 New request in response to change in the board's opinion – not admitted as objection and arguments already known
The board in T 752/16 took the view that a change in the board's preliminary opinion on a particular ground for opposition was not an "exceptional circumstance" within the meaning of Art. 13(2) RPBA 2020. In the case at issue, the board had issued a second communication under Art. 15(1) RPBA 2020 revising the preliminary opinion on inventive step set out in its first one. Its new opinion had been formed, however, in the light of objections and lines of argument already put forward by the appellant in its statement of grounds of appeal. The board considered that it was irrelevant for the purposes of Art. 13(2) RPBA 2020 whether the preliminary opinion in its communication under Art. 15(1) RPBA 2020 diverged from a previous position or differed from the contested decision. Parties to proceedings before the boards always had to reckon with an unfavourable preliminary opinion at any time up to announcement of the decision. The board observed in this connection that the main purpose of communicating a preliminary opinion under Art. 15(1) RPBA 2020 was to define the scope of the oral proceedings and that it was a procedural measure designed to make it easier for the parties to prepare for them efficiently, not an "invitation" to make further amendments (see e.g. T 1459/11). Patent proprietors were not entitled to hold back on making amendments in response to an opponent's objections until being confronted with an unfavourable preliminary opinion of the board or realising that the board was not going to endorse their position and arguments (see e.g. T 136/16, T 2072/16). The board also regarded the new auxiliary requests as detrimental to procedural economy because they gave rise to new objections, and therefore refused to admit them under Art. 13(1) and (2) RPBA 2020.
6.9.7 Amendment not adding anything of substance to the discussion of the objection raised – not admitted
In T 953/16 the appellant (applicant) submitted that the new auxiliary requests at issue were filed in response to a clarity objection raised by the board in its communication under Art. 15(1) RPBA 2020, that its response was the first opportunity to respond to such an objection, and that therefore these requests were a legitimate response to the objections raised in the board's communication. The board noted, however, that although the amendments made to claim 1 in these requests constituted an attempt to clarify the claims, the inventive-step objections raised by the board in its communication already took those features into account in its interpretation of claim 1. It was therefore apparent to the board that the amendments did not add anything of substance to the discussion of inventive step and, therefore, they did not address all of the outstanding issues raised by the board. In view of the board's negative conclusions on inventive step for the higher-ranking requests, the board saw no exceptional circumstance that could justify the admission of the new auxiliary requests into the appeal proceedings. Hence, the board decided not to take them into account (Art. 13(2) RPBA 2020).
6.9.8 New document and new lines of attack in response to board's preliminary opinion which was exclusively based on earlier submissions – not admitted
In T 908/19 a further document and new lines of attack were filed in reply to the preliminary opinion accompanying the summons from the board (issued after the entry into force of the RPBA 2020). The appellant justified the late submission of this amendment to its case only at the oral proceedings by arguing that neither the document nor the objections could have been raised earlier since they were filed in response to the board's preliminary opinion expressed in the annex to the summons. The board could not accept this argument, as its preliminary opinion was based exclusively on the submissions made by the parties in their grounds or reply. Nor did the appellant identify any particular aspect that would be new or surprising to it, but rather appeared motivated by the fact that the board had expressed itself provisionally in favour of the respondent. Thus, the board saw no exceptional circumstances, let alone ones that had been reasoned, that could justify the late filing of these submissions; the late-filed submissions were therefore not admitted into the proceedings (Art. 13(2) RPBA 2020).
7. Remittal to the department of first instance
7.1 Article 11 RPBA 2020 – special reasons
Under Art. 11 RPBA 2020 the board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.
In T 731/17, in view of the application's filing date, the appellant requested the board to exercise its discretion under Art. 111(1) EPC to decide that the subject-matter claimed was patentable. Under Art. 11 RPBA 2020, a case is not to be remitted to the department whose decision was appealed unless special reasons present themselves for doing so. The board noted that this provision has to be read in conjunction with Art. 12(2) RPBA 2020, which provides that it is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner. The board stated that inventive step over documents D1 to D4 had not yet been assessed in detail. Moreover, it might need to be investigated whether document D2 belonged to the state of the art under Art. 54(2) EPC at all. Not remitting the case to the examining division would require the board to perform these tasks in both first- and last-instance proceedings and to effectively replace the examining division rather than review the contested decision in a judicial manner.
In T 1966/16 the board stated that the sole ground for the refusal set out in the decision under appeal, namely a lack of inventive step, was not justified. The board, however, identified several potential deficiencies in claims 1-7 with respect to Art. 83, 84 and 123(2) EPC. The decision under appeal did not address these issues. The board held that special reasons were apparent in the case in hand because the examining division had not taken an appealable decision on essential outstanding issues with respect to Art. 83, 84 and 123(2) EPC. As set out in Art. 12(2) RPBA 2020, the primary object of the appeal proceedings was to review the decision under appeal in a judicial manner. This principle would not be respected if the board were to conduct a complete examination of the application. Consequently, Art. 11 RPBA 2020 did not entail the board carrying out a full examination of the application for compliance with the requirements of Art. 83, 84 and 123(2) EPC, for which no decision at first instance existed yet.
In T 1531/16, the board held that, in view of the legislative intent reflected in the revised version of Art. 11, first sentence, RPBA 2020, a case should be remitted only if special reasons presented themselves for doing so, i.e. in exceptional cases. Under the legal definition in Art. 11, second sentence, RPBA 2020, fundamental deficiencies in the initial proceedings before the department of first instance that led to the contested decision were, as a rule, to be taken as constituting such special reasons. Moreover, according to the explanatory remarks on Art. 11 RPBA 2020 (Supplementary publication 2, OJ 2020), it was to be decided on a case-by-case basis whether there any special reasons and the board was not to remit the case if all the relevant issues could be decided on without undue burden. With that in mind, the board considered all the relevant circumstances in the case in hand and concluded that the key patentability issues could not be decided on in the appeal proceedings without undue burden. The basis required to do so could instead be established only in further examination proceedings.
In T 3247/19 insufficiency of disclosure was the sole ground for refusal mentioned in the contested decision. The appellant requested that the case be remitted to the examining division. The board noted that no further requirements for patentability were mentioned or examined in the contested decision; that the appellant had not presented any arguments relating to the further requirements for patentability; and that the appellant explicitly requested that the case be remitted to the examining division.
As there were no substantive arguments present in the appeal proceedings relating to any patentability issues other than Art. 83 EPC, the board could not come to a decision regarding further patentability requirements on the basis of the current appeal case alone. The board was aware that, according to Art. 11, first sentence, RPBA 2020, a remittal for further prosecution should only be undertaken exceptionally, when special reasons apply. After considering all the relevant circumstances of the case at hand, the board came to the conclusion that the issues relevant to patentability in the case in hand, including but not limited to the examination of novelty, inventive step and clarity, could not be decided upon without undue burden (cf. explanatory notes to Art. 11 RPBA 2020, Supplementary publication 2, OJ 2020).
In T 350/17 the board noted that while an opposition division has the discretion not to admit late-filed requests, there is no discretion, regardless of how late a request is filed, to deny the patentee's right to discuss the admittance of a request. The board decided to remit the case to the opposition division. The respondents argued that remitting the case would unnecessarily delay the proceedings and that, since the issue of admittance of auxiliary request 2 had already been decided upon by the board, there was no special reason under Art. 11 RPBA 2020 to justify the remittal.
The board did not accept this argument because the non-admittance of auxiliary request 2 by the opposition division not only concerned the question of admissibility as such but also precluded a discussion on inventive step. Thus, the consequences of the substantial procedural violation by the opposition division went beyond the mere question of admissibility, essentially depriving the parties and the board of a basis for a discussion on inventive step. Furthermore the board considered that, in the case in hand, the patentee's request to have the question of inventive step examined at two different levels of jurisdiction took precedence over procedural economy, because the patentee was deprived of a decision at first instance on this matter as a result of the substantial procedural violation. For the sake of completeness, the board also noted that the concept of "special reasons" in Art. 11 RPBA 2020 should not be narrowly interpreted in a way which unduly restricts the discretion of the board to remit a case enshrined in Art. 111(1) EPC, as this would be contrary to the spirit of the Convention, which, in case of conflict, takes precedence (see Art. 23 RPBA 2020).
7.2 Incomplete search
In T 547/14, no search had been carried out because the subject-matter of the application had not been considered technical, yet a conclusive examination was not possible without a search. Since the primary object of appeal proceedings was to review the decision of the department of first instance (Art. 12(2) RPBA 2020) but the invention had not yet been searched on the basis of the features since found to be technical, and novelty and inventive step had not been examined either, special reasons presented themselves in this case to remit the matter to the department of first instance for a search and further examination, as per the appellant's request.
In T 97/14 the board found that the decision under appeal was not sufficiently reasoned. Furthermore, the appellant's arguments had not been properly taken into account. In the board's judgment, these substantial procedural violations were a fundamental deficiency and consequently a special reason for remitting the case (Art. 11 RPBA 2020). In the grounds of appeal, the appellant had requested that the board settle the case in appeal proceedings rather than remit it for further prosecution. The board noted that, although the request had since then been withdrawn, the appellant had certainly had a valid point. The application had been pending for 18 years, and in those circumstances, it would be preferable if the case could be finally settled without further delay. The appellant had consistently argued that, since the claimed invention related to web services, the closest prior art for the purpose of assessing inventive step should be in that field. Consequently, the documents cited in the supplementary European search report and during examination (D1 and D2), relating to remote procedure calls, were argued to be unsuitable as a starting point for inventive step. The board agreed with the appellant that the closest prior art should be in the field of web services. The board furthermore found it inconceivable that "synchronous web services" constituted a complete representation of the state of the art in that field. The examining division's choice of the closest prior art seemed rather to have been based on what was available at the oral proceedings when the examining division decided to discard D2. The board remitted the case for further prosecution because the search was not complete.
7.3 Remittal for adaptation of the description
In T 32/16 the board stated that, regarding adaptation of the description to the new claims, the respondent's (patent proprietor's) preference to perform this at the oral proceedings was not followed. The required amendments to the description were seen to be of not inconsiderable scope, and the appellant indicated its need to fully consider any amendments made without being under time pressure. Under these circumstances, the board thus decided to remit the case to the opposition division under Art. 111(1) EPC for the description to be adapted to the claims found allowable. With regard to Art. 11 RPBA 2020, the board noted that remittal of a case for adaptation of the description was not a remittal for "further prosecution" (see explanatory remarks to Art. 11 RPBA 2020, Supplementary publication 2, OJ 2020), such that no "special reasons" needed to be present. See also chapters V.A.6.8.1 "Simultaneous application of Article 13 RPBA 2007 and Article 13(1) RPBA 2020" and V.A.6.8.3 "New request in response to preliminary opinion of the board clarifying its objections – admitted".
7.4 Ordering a different composition of the department of first instance
In T 2475/17, the board dealt with the issue of a board's power to order a different composition of a department of first instance when remitting a case to it. See chapter III.D.1.1 "Remittal and rehearing of a case".
8. Reimbursement of appeal fees
8.1 Substantial procedural violation
In T 74/17 the board found that the contested procedural steps taken by the opposition division did not amount to substantial procedural violations and therefore that the appeal fee did not have to be reimbursed under R. 103(1)(a) EPC.
The board explained that an alleged procedural violation could be taken into account on appeal only if it had had an impact on the appealable parts of a decision, i.e. if it had adversely affected the party. Procedural violations that related only to non-appealable aspects of a decision were not relevant for the decision on the appeal, and for this reason the board did not need to establish whether or not they were substantial. Conversely, this showed that there was no causal link between such procedural violations and the outcome of the contested decision.
8.2 Excessive length of proceedings
In T 1243/17 the board was not convinced that it could be concluded from the case law of the European Court of Human Rights (ECtHR) that the duration of examination proceedings before the EPO had to be systematically taken into account when assessing whether the reasonable time requirement under Art. 6(1) ECHR, first sentence, had been met (see, in this respect, the analysis in decision T 1824/15 of the ECtHR's judgment of 2 May 2013 in Kristiansen and Tyvik AS v. Norway, relating to the progress of proceedings before the Norwegian Industrial Property Office). The board observed that, while the ECtHR had established a violation of the right of access to a court under Art. 6(1) ECHR, it had not ruled on whether there had been any violation of the right to be heard within a reasonable time. Moreover, and contrary to the facts of the case before the ECtHR – in which a "dispute" had already been brought before the Norwegian Office's (non-judicial) boards of appeal as part of the administrative proceedings – the examination proceedings at issue in this case had been purely non-adversarial, ex parte proceedings, and therefore preceded any "dispute" to which Art. 6(1) ECHR could be applied. The board nevertheless considered that the principles developed by the ECtHR on the duration of proceedings provided a useful framework for assessing the length of the proceedings in the case in hand. It observed that the contested decision in this case had been issued just over 17 years after the filing date of the application, and that the examination proceedings, at least between the search report and the first communication, had "stagnated without explanation" for more than eight years, which was normally unacceptable (see T 315/03, T 1824/15, and T 2707/16). However, the appellant had not complained about this stagnation, even though, according to the case law of the ECtHR, it was expected to do what it could to shorten the proceedings. It had also failed in its duty – which the board considered incumbent on all applicants – to co-operate with the examining division. Observing lastly that the appellant had not filed any specific request in connection with the alleged violation of Art. 6(1) ECHR, in particular none for reimbursement of the appeal fee (R. 103 EPC), the board therefore decided not to order reimbursement.
8.3 Withdrawal of appeal or withdrawal of request for oral proceedings under Rule 103(4) EPC (25%)
provides that: [t]he appeal fee shall be reimbursed at 25%
(a) if the appeal is withdrawn after expiry of the period under paragraph 3(a) [i.e. where a date has been set for oral proceedings, later than a month after a communication in preparation for oral proceedings] but before the decision is announced at oral proceedings;
(b) if the appeal is withdrawn after expiry of the period under paragraph 3(b) [i.e. in the absence of a set date for oral proceedings, after expiry of the period for the appellant to file observations on a communication from the Board] but before the decision is issued;
(c) if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings, and no oral proceedings take place.
In T 1610/15, the board ordered that 25% of the appeal fee be reimbursed to the appellant under R. 103(4)(c) EPC. In the case in hand, the appellant had withdrawn its request for oral proceedings within one month of notification of the board's first communication under Art. 15(1) RPBA 2020, as had respondent I. Respondent II, on the other hand, had not withdrawn its request for oral proceedings until after expiry of the one-month period set in R. 103(4)(c) EPC. The appellant's request for oral proceedings had been withdrawn in time. The board held that respondent II's belated withdrawal of its request had no adverse effect in this regard. The wording of R. 103(4)(c) EPC did not require that all requests for oral proceedings filed in a case had to be withdrawn within a month of notification of the communication issued by the board in preparation for those proceedings. For the first condition for partial reimbursement under R. 103(4)(c) EPC to be met, it was instead enough that a request for oral proceedings had been withdrawn in time. The second condition in R. 103(4)(c) EPC – i.e. that no oral proceedings took place – was met too in this case.
In T 777/15 the board construed R. 103(4)(c) EPC to provide an incentive to a party that had initially requested oral proceedings before the board to reconsider any such request at a later stage of the appeal proceedings and, if the party abandoned this request, to provide a reward by way of a partial reimbursement of this party's appeal fee. Accordingly, the appellant not having requested oral proceedings did not benefit from another party's withdrawal of the request for oral proceedings. This was so because, for the appellant not having requested oral proceedings, the condition in R. 103(4)(c) EPC that "any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings" was not fulfilled merely because another party had requested oral proceedings and withdrawn their request within the time specified in R. 103(4)(c) EPC.
In T 1730/16 the board held that the conditions for partial reimbursement of the appeal fee (25%) in accordance with R. 103(4)(c) EPC were met. In line with the appellant's request, the board had scheduled oral proceedings and given its preliminary opinion in a communication pursuant to Art. 15(1) RPBA 2007 annexed to the summons to oral proceedings. In accordance with the restrictions that had been imposed owing to the spread of coronavirus (COVID-19), the board had postponed the date of the oral proceedings. In preparation for the (postponed) oral proceedings, the board had then sent a communication drawing attention to the COVID-19 constraints for oral proceedings. Within a month of this communication the appellant had withdrawn its request for oral proceedings.
The board decided that R. 103(4)(c) EPC did not specify particular criteria with which a communication had to comply for it to qualify for a possible reimbursement other than that it must have been issued by the board "in preparation for the oral proceedings". The board's latest communication concerned technical and organisational aspects of the scheduled oral proceedings and was thus a communication issued in preparation for the oral proceedings. A first communication pursuant to Art. 15(1) RPBA 2007 having been issued by the board at a previous stage of the appeal proceedings was therefore not prejudicial to a reimbursement of the appeal fee under R. 103(4)(c) EPC.
In T 73/17 the board ruled that the requirements of R. 103(4)(c) EPC were not met. It held that the legislator drew a clear-cut distinction between a party's simply announcing that it would not be attending oral proceedings and its express withdrawal of its request for them. R. 103(4)(c) EPC explicitly required that the request for oral proceedings be withdrawn for a partial reimbursement of the appeal fee to be granted; it was insufficient for oral proceedings simply not to be held. In the case in hand, only the reimbursement condition under R. 103(4)(a) EPC was satisfied.
The opponent in this case had withdrawn its appeal by letter of 25 May 2020, more than one month after notification of the communication issued by the board under Art. 15(1) RPBA 2020 in preparation for the oral proceedings, which had originally been scheduled for 6 July 2020. The board found that R. 103(4)(a) EPC remained applicable despite the fact that those oral proceedings had no longer been required and so had been cancelled once the opponent had withdrawn its appeal. In keeping with the board's understanding of the legislative intent, the condition under R. 103(3)(c) EPC, which provided for reimbursement of half the appeal fee, was not met even though the decision in this case had been handed down in the written proceedings. The opponent had withdrawn its appeal during the decision phase of the appeal proceedings, not during the examination phase, so the withdrawal had to be considered to fall under the scope of the reimbursement scenario envisaged in R. 103(4) EPC, the requirements of which were clearly met. Since, in its letter dated 25 May 2020, the opponent had also stated that it would not be attending the scheduled oral proceedings, this raised the question whether reimbursement under R. 103(4)(c) EPC might come into play too. The board held that, besides the fact that the opponent had not submitted this letter within one month of notification of the communication under Art. 15(1) RPBA 2020, its stated intention not to attend the oral proceedings could not be deemed a withdrawal, within the meaning of R. 103(4)(c) EPC, of the request for oral proceedings it had previously made as an auxiliary measure in its notice of appeal. Established case law had it that a party could only withdraw its request for oral proceedings by making an unambiguous written statement to that effect. As a rule, the case law did not consider this requirement to be met by a party merely announcing that it would not be attending the oral proceedings. The board highlighted that the withdrawal statement was of decisive importance and so, if only to ensure legal certainty, in particular for the parties to the proceedings, an explicit, unambiguous written statement withdrawing the request was mandatory for a partial reimbursement of the appeal fee to be granted.
In T 517/17 the board considered that the conditions for partial reimbursement of the appeal fee, as set out in R. 103(4)(c) EPC, were fulfilled. In particular, the appellant's unqualified indication that it would not attend the scheduled oral proceedings satisfied the requirement in R. 103(4)(c) EPC that the request for oral proceedings be withdrawn. This was the case even though the appellant did not expressly withdraw the request for oral proceedings.
The board explained that it was aware that, in drawing the above conclusion, it departed from the extensive obiter dictum set out in decision T 73/17 (see above). It stated that, if it was true that the express announcement of not attending arranged oral proceedings before the board was equivalent to a withdrawal of the request for them, this had to be true and valid for all effects that the EPC and the case law attach to a withdrawal. It did not appear to be justified to qualify the express announcement as equivalent to a withdrawal for the purposes of the question of whether appointed oral proceedings shall take place, but as not equivalent for the purposes of the question of whether fees shall be refunded. Such a conclusion was supported neither by the wording of R. 103(4)(c) EPC nor by the preparatory document CA/80/19, which does not comment on the wording of the withdrawal, but only on its timing: "the appeal fee is reimbursed at a rate of 25% if ... the decision is eventually issued without the oral proceedings taking place" (see CA/80/19 of 4 October 2019, point 85). Against this background, it was not necessary to assess whether CA/80/19 could constitute evidence for the intentions of the legislator. Nor did the board have to decide whether it was possible or necessary to resort to the preparatory work associated with new R. 103 EPC for the specific issue discussed here, considering the requirements laid down in Art. 32 of the Vienna Convention on the Law of Treaties.
In T 2044/16 the board found that, even though it had already issued a detailed substantive communication under Art. 15(1) RPBA 2020 in preparation for oral proceedings, the wording of R. 103(4)(c) EPC did not preclude it from granting a reimbursement on the basis of an additional communication, issued by it at a later date, that led to withdrawal of the request for oral proceedings within one month. According to the board, R. 103(4)(c) did not impose any requirement as regards the content of the preparatory communication and thus covered purely administrative ones too. The deliberations in T 265/14 regarding reimbursement under R. 103(2)(b) EPC (R. 103(3)(b) EPC since 1 April 2020) also applied to the situation in this case. The decisive factor was the reason for introducing (along with others) the new reimbursement possibility under R. 103(4)(b) EPC, i.e. to provide an incentive to prevent unnecessary work steps (in this case the preparation for and holding of oral proceedings) and so allow working hours to be used as efficiently as possible. By withdrawing its request, the appellant had enabled the proceedings to be brought efficiently to a close at the written stage, so the fact that the second preparatory communication had been issued just one month before the oral proceedings in view of the prevailing situation (precautionary measures against the COVID-19 pandemic) could not be allowed to act to its detriment. Even though these circumstances meant the scheduled date could not be used for oral proceedings in a different case (as envisaged in CA/80/19, point 82), the time that would otherwise have been spent on this case had still been freed up for the board and the other parties. Most of all, the timing in this case could not result in giving R. 103(4)(c) EPC a narrower interpretation than its very clear wording allowed ("within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings"). Ultimately, the board concluded, the deadline under R. 103(4)(c) EPC was triggered anew by each preparatory communication issued. The board ordered reimbursement of 25% of the appeal fee.
In T 110/18 the appellant had withdrawn its request for oral proceedings within one month of notification of the second communication pursuant to Art. 15(1) RPBA 2020, which was exceptionally issued in view of the COVID-19 outbreak. The board followed the rationale of T 265/14 (of the same board in a different composition) and concluded that the requirements for a 25% reimbursement of the appeal fee according to R. 103(4)(c) EPC had been met. The board explained that its decision was also in accordance with the explanations given in the explanatory document to the R. 103 EPC change (see CA/80/19, point 82) since in the case in hand the oral proceedings cancelled due to the COVID-19 outbreak did not have to be rescheduled.
In T 1678/17 the appellant withdrew its request for oral proceedings and requested a partial refund of the appeal fee. The request for oral proceedings was not in fact withdrawn within one month of notification of the communication issued by the board of appeal in preparation for the oral proceedings. However, in view of the Notice from the EPO dated 1 May 2020 concerning the disruptions due to the COVID-19 outbreak (OJ 2020, A60) and R. 134(2) and (4) EPC, the board held that the conditions for reimbursement of 25% of the appeal fee, stipulated in R. 103(4)(c) EPC, were fulfilled.
B. Proceedings before the Enlarged Board of Appeal
1. Referral by the President of the EPO
In G 3/19 (OJ 2020, A119) the Enlarged Board rephrased the two questions set out in the referral of the EPO President into a single question that articulated the real issue at stake:
"Taking into account developments that occurred after a decision by the Enlarged Board of Appeal giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Art. 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature[s] define an essentially biological process?"
It considered that the issues underlying the referral concerned a point of law of fundamental importance within the meaning of Art. 112(1) EPC which required a uniform application of the law.
Concerning the second admissibility point under Art. 112(1)(b) EPC ("different decisions" of "two Boards of Appeal"), the Enlarged Board considered the term "different" had to be interpreted in the light of the provision's object and purpose according to Art. 31 Vienna Convention (G 3/08, OJ 2011, 10, point 7 of the Reasons et seq.; G 3/95, OJ 1996, 169, point 8 of the Reasons). The purpose of the EPO President's power to refer points of law to the Enlarged Board was to establish uniformity of law within the European patent system. Having regard to this purpose, the term "different decisions" had to be understood restrictively in the sense of "conflicting decisions". Legal development could not on its own form the basis for a referral, because case law did not always develop in a linear fashion, and earlier approaches may be abandoned or modified.
The EPO President argued that the approach adopted in T 1063/18, according to which the interpretation of Art. 53(b) EPC given in decisions G 2/12 (OJ 2016, A27) and G 2/13 (OJ 2016, A28) (hereinafter G 2/12) would exclude any subsequent clarification in the Implementing Regulations which deviated from that interpretation, differed from other decisions relating to the EU Biotech Directive (e.g. T 272/95, OJ 1999, 590; T 315/03, T 666/05 and T 1213/05). The Enlarged Board found the aforementioned decisions could be read as acknowledging that a subordinate but later provision of the Implementing Regulations could have an impact on the interpretation of a higher-ranking and previously enacted provision of the Convention, irrespective of a particular interpretation given to the latter in an earlier decision by a board of appeal. In T 1063/18, the board of appeal did not examine whether the interpretation of Art. 53(b) EPC could be affected by R. 28(2) EPC on the basis of Art. 31(3) Vienna Convention. Rather, it established that R. 28(2) EPC was in contradiction to the particular interpretation of Art. 53(b) EPC given in decision G 2/12 before the Rule was adopted (points 24 to 26 and 46 of the Reasons) and that the Administrative Council was not competent to amend Art. 53(b) EPC by means of R. 28(2) EPC (points 31 to 36 of the Reasons). As a consequence, the board disregarded R. 28(2) EPC pursuant to Art. 164(2) EPC because it considered the Rule to deviate from the interpretation given in an earlier decision of the Enlarged Board. The Enlarged Board found that this aspect constituted the difference from other aforementioned board of appeal decisions, which evaluated the impact of a later-adopted provision of the Implementing Regulations on the construction of a provision of the Convention. Hence, the Enlarged Board considered that there were different decisions of two boards of appeal on the question whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC. As a consequence, the EPO President's referral complied with the requirements of Art. 112(1)(b) EPC and was admissible within the terms of the question as rephrased by the Enlarged Board. See also chapter I.A.1. "Product claims for plants or plant material".
2. Grounds for petition for review
2.1 Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC
In R 10/18 the Enlarged Board held that the petition was clearly unallowable. The petitioner (patent proprietor) had asserted that its right to be heard had been violated, arguing that the board had failed to consider the petitioner's argument that filing the opposition using a straw man amounted to a circumvention of the law by abuse of process and that the opposition therefore should have been deemed inadmissible. The Enlarged Board acknowledged that previous cases (e.g. R 2/14) held that Art. 113(1) EPC required that a party had to be able to understand, on an objective basis, the reasons for a board's decision. However, the Enlarged Board explained that the current law (see R 8/15, catchwords 1 and 2) provides that one aspect of the right to be heard as covered by Art. 113(1) EPC requires a board to consider a party's submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness. Art. 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions. The Enlarged Board added that a board is presumed to have taken into account a party's submissions that it did not address in the reasons for its decision, meaning that it, first, took note of them and, second, considered them, i.e. assessed whether they were relevant and, if so, whether they were correct. An exception may apply if there are indications to the contrary, e.g. if a board does not address in the reasons for its decision submissions by a party that, on an objective basis, are decisive for the outcome of the case, or dismisses such submissions without first assessing them as to their correctness.
In the underlying appeal, the board had stated that it was satisfied that the two interveners had not been involved when opponent 1 filed the opposition. The Enlarged Board agreed with the petitioner that the board, although considering the petitioner's argument alleging an abuse of process, did not expressly deal with it or enable the petitioner to understand the reasons for this decision on admissibility of the opposition. However, the Enlarged Board found that not answering the main point the petitioner had made in relation to the admissibility of the opposition, did not amount to a violation of the right to be heard because it was possible to understand, on an objective basis, from section 1 of the decision under review, in which the board set out and discussed the facts and arguments submitted by the petitioner on the issue of inadmissibility of the opposition (and the interventions) for abuse of process, that the board had substantively considered those submissions. The exception to the principle embodied in catchword 1 of decision R 8/15 therefore did not apply.
Date retrieved: 19 May 2021