Zusammenfassung von Art 13(2) RPBA 2020 für die Entscheidung T2352/19 vom 11.07.2023

In T 2352/19 the respondent (patent proprietor) had filed auxiliary request 2 only after the board's summons to oral proceedings, in reaction to the board's communication under Art. 15(1) RPBA 2020. In this communication the board had indicated its preliminary opinion that the subject-matter of the requests then on file was not novel over O2 and had pointed in this context to two aspects concerning feature 8 of claim 1. The respondent argued that the board's preliminary opinion contained a new interpretation of the feature "operating member" in feature 8 that led to a new objection regarding lack of novelty. Auxiliary request 2, based on previous claim 1 but with an amended feature 8, was thus an attempt to overcome this new objection at the earliest possible stage and should therefore be taken into account. The board did not find this argument convincing. While it acknowledged that raising an objection for the first time in a board's communication may result in acknowledging exceptional circumstances, it also clarified that the mere fact that the board had raised a new aspect in the preliminary opinion was not sufficient by itself to acknowledge exceptional circumstances if this aspect was ultimately not relevant for the board's conclusion. The board had stated in its preliminary opinion that it might require discussion whether a certain feature mentioned in O2 (levers 43 and 44) corresponded to an "operating member" as defined in feature 8 of claim 1 and that this did not seem to be excluded from the wording of claim 1. It was correct that this specific feature's interpretation had not been discussed before. However, in its communication, the board had also considered the appellant's objection made in its statement of grounds of appeal, namely that an alternative embodiment of O2 also appeared to disclose feature 8 such that all the features of claim 1 appeared to be disclosed in O2. Indeed, the board's final conclusion in the oral proceedings as regards the objection of novelty in the light of O2 was solely based on the appellant's objection which had already been assessed in the impugned decision and which was part of the appellant's appeal case from the beginning. Thus, the other aspect, the new possible interpretation of "operating member" in claim 1 as presented by the board in its preliminary opinion never became decisive for the board's final conclusion and decision. According to the board, the term "exceptional circumstances" needed to be interpreted in the light of and in application of the principles underlying the EPC and the rules of procedure. It stated that Art. 13(2) RPBA 2020 provided a fair balance between the need for procedural economy on the one hand, and the right to be heard, guaranteed by Art. 113 EPC, on the other, in order to ensure fair proceedings. Exceptional circumstances could justify the admittance of a new request if a causal link existed between the new aspect raised by the board and the board's final conclusion. The right to be heard required the possibility of providing a defence against it. If the board's conclusion was not based on the newly raised aspect, the parties' right to be heard was thus not affected and there would be no reason for exceptions to be applied. The mere fact that the filing of the respondent's request was triggered by the board's preliminary opinion did not necessarily result in this request being taken into account. The respondent contested the necessity for this causal link and argued that, if this were the case, the question as to whether the request would be admitted would depend on the order chosen by the board for the assessment of the objections and aspects during the oral proceedings. The board disagreed. It noted that the order of assessment lay within the discretion of the board. If the board chose an assessment that was based on those aspects that had been on file since the beginning of the proceedings and thus served to preserve the parties' interests and procedural economy, the parties did not suffer any disadvantage. Moreover, the decision as to whether a request was to be admitted was advantageously only taken at the stage when the request became relevant and not in advance. Assessing admittance at this stage ensured that the entire preceding circumstances were considered when balancing e.g. the conflicting interests of procedural economy and the right to be heard. The board therefore exercised its discretion and did not take auxiliary request 2 into account (Art. 13(2) RPBA 2020). In the absence of any set of claims complying with the requirements of the EPC, the patent had to be revoked.