Zusammenfassung von Article 12(4) RPBA für die Entscheidung T1913/21 vom 17.10.2024

See also abstract under Article 54 EPC. In T 1913/21 auxiliary requests 4 and 5 were filed during the proceedings before the opposition division, but not dealt with because a higher-ranking request was held allowable, and later re-filed with the statement of grounds of appeal. The respondent (patent proprietor) referred to different approaches outlined in the jurisprudence of the boards of appeal with regard to the interpretation of the requirement "admissibly raised and maintained" (inter alia T 364/20, T 1800/20 and T 246/22). The board considered that it was not necessary to go into the details of the different approaches because auxiliary requests 4 and 5 did not meet a common requirement in these decisions, namely that an explanation needed to be given as to why the amendments have been made and how they are intended to overcome the objections raised. In the board's view, the wording of Art. 12(4) RPBA by reference to "the proceedings leading to the decision under appeal" should be construed in the present case with regard to the opposition proceedings and the criteria applicable to them. This required an assessment of whether the opposition division had discretion not to admit a request, and how that discretion should have been exercised in the circumstances if a decision on admittance had been required. This approach had also been adopted in other decisions (explicitly e.g. in T 364/20, T 2395/22, implicitly in T 446/22, T 731/22). The board considered it inappropriate to apply the criteria in Art. 12(4), third sentence, RPBA, as they were specific to the appeal proceedings and could not have been considered by the patent proprietor at the time of filing the auxiliary requests. For this reason, a reference to the relevant EPC provisions and the Guidelines applicable at the time when the auxiliary requests were filed was appropriate, since they contained the criteria that an opposition division would apply. In addition, the Guidelines reflected the consolidated jurisprudence of the boards of appeal on the criteria for admittance of requests to be applied in opposition proceedings. The board observed that a principle consolidated in the jurisprudence of the boards of appeal (e.g. T 95/83), adopted in the first instance and consistently reflected in the Guidelines (H-II, 2.7 and E-III, 8.6 – March 2021 version) was that auxiliary requests were not inadmissibly filed simply because they were filed after a period or date specified, but only if in addition they were filed without proper justification. A proper justification was normally considered to be present when the subject of the proceedings had changed, e.g. because of a changed opinion of the opposition division (see also E-III, 8.6), or due to a new document or a new objection submitted/raised by the opponent(s)/the opposition division. Auxiliary requests filed after the period or date specified and absent a proper justification were considered "late" and their admittance was subject to the discretion of the opposition division (Guidelines H-II, 2.7.1 – March 2021 version). In the case in hand, auxiliary request 4 was timely filed (before the date specified under R. 116(2) EPC) and auxiliary request 5 was a legitimate reaction to a change in the subject of the proceedings. The board then pointed out that the Guidelines contained a substantiation requirement similar to the one in Art. 12(3) and 12(4), fourth sentence, RPBA, namely that an explanation must be provided as to why the amendments have been made and how they are intended to overcome the objections raised (Guidelines H-II, 2.7.1 – March 2021 version). When filing auxiliary requests 4 and 5 in opposition proceedings, as auxiliary requests 14 and 15, the respondent merely submitted that the amendments further limited the scope of the granted claims and therefore further distinguished the claimed subject-matter from the prior art. No reason was submitted as to why the new features introduced in claim 1 would overcome the objections raised. In the board's view, this was sufficient to conclude that auxiliary requests 4 and 5 would not have been admitted in the opposition proceedings. They were thus not admissibly raised in the proceedings leading to the decision under appeal and did constitute an amendment within the meaning of Art. 12(4) RPBA, the admittance of which was subject to the board's discretion. The board decided not to admit the claim requests into the proceedings, due to the lack of any substantiation of these auxiliary requests in appeal and particularly the fact that it was not straightforward how the amendments could overcome the objections raised.