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Case Law of the Boards of Appeal

 
 
4.2.1 General

It is the established case law of the boards of appeal that the appeal procedure is designed to ensure that the proceedings are as brief and concentrated as possible and ready for decision at the conclusion of oral proceedings, if scheduled. An important aim of Art. 12 and 13 RPBA is that the parties' submissions are concentrated at as early a stage as possible so that the case is as complete as possible when it comes to processing it (T 1315/08). Therefore, amendments to the claims are to be filed at the earliest possible moment (T 214/05, T 382/05).

Under Art. 12(2) RPBA, the statement of grounds of appeal and the reply must contain the party's complete case. In addition to all facts, arguments and evidence, they should include all requests (T 764/03). Art. 13 RPBA leaves it to the board's discretion to consider amendments made to a party's case after filing of the statement of grounds of appeal. In particular, new submissions will not be considered if this would require an adjournment of already scheduled oral proceedings (Art. 13(3) RPBA). The subject­matter to be examined on appeal is thus determined by the statement of grounds for appeal and the reply. It also follows from the inter-relationship between Art. 12 and 13 RPBA that amendments made to a party's case after filing of the grounds of appeal do not form part of the subject of the appeal and so must be admitted in order to be considered (T 253/10).

Under Art. 13(1) RPBA, the board must exercise its discretion in view of the need for procedural economy, that is, the need to conclude proceedings swiftly and to create legal certainty. Requests filed very late (i.e. shortly before or during the oral proceedings) will therefore be admitted only if they are prima facie allowable. The admission of new requests at a very late procedural stage (shortly before the oral proceedings) is only in keeping with the principle of procedural economy if the requests are not unsuitable from the outset to overcome the doubts as to the allowability of the claims (T 978/05, T 1731/06, T 33/07, T 321/07, T 1650/08). As far as procedural economy is concerned, an amendment at a late stage in the proceedings is justifiable if it is an appropriate and immediate reaction to unforeseeable developments in the previous proceedings which do not lie in the responsibility of the party submitting the amendment (T 1990/07).

The amended claims must not give rise to circumstances relevant for the assessment of patentability which are so new that the other party cannot reasonably be expected to address them without the proceedings being unduly prolonged (T 651/03).

Both the timing of the filing of amended claims or auxiliary requests and the difficulty entailed in examining them are important criteria for deciding whether they can be admitted to the proceedings (T 397/01): the later the requests are filed, the less likely they are to be held admissible (T 942/05); and the more complex the issues raised by amendments and the later those amendments are filed, the greater the risk that the remaining time is insufficient to consider them properly (T 81/03).

In T 1449/05 the board stated that the discretion to permit amendment of a party's case may be exercised against a proprietor who seeks to resile at a late stage in the opposition appeal procedure from a previous long-standing acknowledgement or persistent tacit admission of prior art. Admitting this resilement would require in all fairness the adjournment of the oral proceedings to allow the appellant opponent to search for adequate evidence. This could have been done at an earlier stage of the proceedings.