Zusammenfassung von Art 13(2) RPBA 2020 für die Entscheidung T0574/17 vom 16.09.2022

In T 574/17 the board had to decide, among other things, on the admittance under Art. 12(4) RPBA 2007 of evidence (for a public prior use) submitted for the first time on appeal and on the admittance under Art. 13(2) RPBA 2020 of objections based on Art. 123(2) and 54 EPC against auxiliary request 14. Regarding the admittance of A32a under Art. 12(4) RPBA 2007, the board was not persuaded by the appellant's (opponent's) argument that filing A32a with its statement of grounds of appeal was a legitimate response to the contested decision. The board pointed out that public prior use allegations had to be sufficiently substantiated during the opposition proceedings. The appellant had had several opportunities to complete its case during opposition proceedings. Moreover, the existence of the feature to be proven was at the heart of the substantive discussion in the opposition proceedings and A32a, which was intended to overcome a time gap in the evidence, could and should have been filed during the opposition proceedings. The board also dealt with the admittance under Art. 13(2) RPBA 2020 of new objections based on Art. 123(2) and 54 EPC raised for the first time during oral proceedings against auxiliary request 14, which had been filed by the respondent (proprietor) with its reply to the statement of grounds of appeal. The board confirmed that when applying Art. 13(2) RPBA 2020, a board may also rely on the criteria referred to in Art. 13(1) RPBA 2020 (T 2117/18; see also the explanatory remarks in document CA/3/19, page 43). In the board's view, relying on these criteria was part of the board's exercise of discretion under Art. 13(2) RPBA 2020. This discretion was inherent to the assessment of whether there were "exceptional circumstances" and was furthermore expressed by the phrase "in principle" (T 172/17). The board noted that the criteria referred to in Art. 13(1) RPBA 2020 included the suitability of the amendment to resolve the issues raised. In the case in hand, this translated into whether the newly raised objections against auxiliary request 14, namely under Art. 54 and 123(2) EPC, would prima facie be successful. The board pointed out however that it was not necessary to assess the prima facie relevance of an objection in order to conclude that there were no exceptional circumstances under Art. 13(2) RPBA 2020 (see T 2787/17). Whether it was appropriate to conduct this kind of prima facie assessment depended on the specific circumstances of the case. The board noted that the case at issue was characterised by the fact that the opposition division had maintained the patent as granted whereas the board concluded that the patent as granted was not allowable. Auxiliary request 14 had never before been examined or objected to. In this specific procedural situation, the board found it appropriate to consider the prima facie relevance of the two objections raised for the first time in the oral proceedings before the board. The board rejected the appellant's argument that both objections had to be admitted and examined because a board always had to fully examine claim amendments for compliance with Art. 123(2) EPC, even of the board's own motion. The board explained in this context that the obiter dictum in G 10/91, Reasons 19, could not be construed as an obligation for the boards of appeal to fully examine any claim amendments made in the appeal proceedings in the same way an examining division would. According to the board, this would be at odds with Art. 114(2) EPC (see T 1767/18) and the settled case law under which appeal proceedings were never intended to be the mere continuation of first-instance proceedings (CLB, 10th ed., V.A.1.1). Furthermore, the Enlarged Board's statement had to be interpreted in the context of the current legal framework, which had changed significantly since that statement was made. The board concluded that, taking into account Art. 114(2) EPC and the RPBA 2020, the Enlarged Board's obiter dictum in G 10/91, Reasons 19, was fully respected when the prima facie relevance of an objection was considered in the context of assessing whether there were exceptional circumstances justifying its admittance pursuant to Art. 13(2) RPBA 2020. Since neither of the two objections were prima facie persuasive, no exceptional circumstances could be ascertained.