Zusammenfassung von Art 12(3) RPBA 2020 für die Entscheidung T1220/21 vom 14.11.2023

In T 1220/21 auxiliary requests 2 and 3, filed by the respondent with its reply to the appeal, corresponded to two auxiliary requests, which, in the board's view, had been admissibly raised and maintained in the opposition proceedings. They were thus not regarded as an amendment under Art. 12(4) RPBA. However, these requests had not been substantiated in the reply to the appeal. For assessing the requests' admittance under Art. 12(3) and (5) RPBA, the board proceeded in two steps: in a first step, it ascertained whether they had been validly filed and whether the respondent's reply, with respect to these requests, fulfilled the requirements of Art. 12(3) RPBA; in a second step it assessed whether the subsequent submissions of the respondent, aiming at substantiating the auxiliary requests, should be admitted pursuant to Art. 13(2) RPBA, and exercised its discretion under Art. 12(5) RPBA. On whether an unsubstantiated request is validly filed, the board held, in view of the provisions of Art. 12(3) and (5) RPBA, that a lack of or an insufficient substantiation of an amended request may lead to its non-admittance, but that this did not imply that the request had not been validly filed. Concerning the required substantiation, the board noted that the provisions of Art. 12(3) RPBA reflect that it is not for the board to speculate as to the intentions underlying the party's submissions or to further investigate the submissions made before the first instance. The board then pointed out that an amended request, that is self-explanatory, nevertheless did not meet the standard as set out in Art. 12(3) RPBA, because an implicit argument did not meet the requirement that the party should specify expressly the arguments relied on (see also T 2598/12). With regard to the required degree of substantiation, the board explained that this depended on the specific circumstances of the case. The proprietor was at least required to (i) indicate the basis in the application as filed for each amendment, (ii) indicate which objections are intended to be overcome by which amendment, and (iii) provide reasons why an amendment overcomes the objections raised (similar to Art. 12(4), fourth sentence, RPBA). Moreover, if a claim request was intended to overcome novelty or inventive step objections, the proprietor should identify the relevant documents and the features which distinguish the claimed subject-matter therefrom (see T 1659/20). The board finally held that the specific extent and detail of the explanations required depended on the level of detail and accuracy of the objections to be overcome. The board made it clear that the requirement set out in Art. 12(3) RPBA also applied when the opposition had been rejected and the proprietor acted as respondent in the appeal proceedings. If the proprietor requests that the patent be maintained based on a claim request which does not correspond to that found allowable in the impugned decision, this implies that the decision under appeal is to be amended and should therefore be reasoned according to Art. 12(3) RPBA. The board pointed out that the duty to provide a basis for the amendments did not depend on whether the allowability of the request has been previously contested under Art. 123(2) EPC. It also held that information that can only be found in attached documents, without an explicit reference and explanation by the party, cannot be regarded as sufficient substantiation pursuant to Art. 12(3) RPBA. The board then assessed whether the late substantiation of the request could be admitted under Art. 13(2) RPBA, which was rejected by the board, and exercised its discretion under Art. 12(5) RPBA not to admit the requests. As noted by the board, this discretion had to be exercised in view of the specific circumstances of the case. The purpose of Art. 12(3) RPBA was to ensure that the relevant submissions were present in the proceedings as early as possible to enable the board and the other party(ies) to start working on the case on the basis of the parties' complete submissions without being forced to speculate on the intentions of the other parties. The extent to which a lack of or an incomplete substantiation runs counter to this objective was a factor that could be taken into account when exercising the discretion under Art. 12(5) RPBA (T 1659/20). This included addressing the question of whether the amendments and the chain of logic underlying the claim requests were self- explanatory (which was not the case here).