Zusammenfassung von Art 12(6) RPBA 2020 für die Entscheidung T1617/20 vom 07.02.2023

In T 1617/20 the appellant (proprietor) filed as main request a set of clams identical to the claims of auxiliary request 2 underlying the appealed decision as well as amended pages of the description. As regards the amended description, the board examined whether it should have been submitted in opposition proceedings (Art. 12(6), second sentence, RPBA 2020). It pointed out that it was common practice in proceedings before the opposition division that when amended claims are filed, corresponding amendments to the description are carried out only once (and only if) the amended claims are admitted into the proceedings and found to be allowable. In the current case, the proprietor had filed the claims of auxiliary request 2 at the oral proceedings before the opposition division and explained that the description was still to be amended. The board held that since this claim request had not been admitted by the opposition division, there was no need for the appellant to file description pages in line with this claim request in the opposition proceedings. The board then observed that the amendment to the description had not been dealt with in the appealed decision and thus represented an amendment of the appellant's case within the meaning of Art. 12(4), first paragraph, RPBA 2020. Hence, in addition to the above- mentioned criterion under Art. 12(6) RPBA 2020, the further criteria under Art. 12(4), third paragraph, RPBA 2020 also needed to be considered for the board's discretionary decision on the admittance of the amendment. The amendment at issue was not complex since it merely consisted of the deletion of a sentence. Moreover, it had been made to overcome an objection raised in the appealed decision and thus directly addressed an issue leading to the decision under appeal. Finally, no detriment to procedural economy associated with this amendment could be recognised. Therefore, the board saw no reasons why the amended description according to the main request should not be admitted into the proceedings. As regards the claims of the main request, the board noted that these were identical to the claims of auxiliary request 2 as filed at the oral proceedings before the opposition division. Said auxiliary request 2 had been examined by the opposition division as regards its prima facie allowability and was not admitted. The board held that this decision on the admittance of auxiliary request 2 was part of the appealed decision and thus, contrary to the respondent's view, the filing of this request as the main request in appeal did not represent an amendment of the appellant's case within the meaning of Art. 12(4) RPBA 2020. Art. 12(4), second and third paragraph, RPBA 2020 did not apply. Still regarding the claims of the main request, the board further considered Art. 12(6), first sentence, RPBA 2020. The board explained that in order to decide whether the opposition division's discretionary decision suffered from an error, i.e. was based on a wrong principle, or was taken by applying the right principle in an unreasonable way, the file history of the present case had to be considered. In the case in hand the proprietor had filed auxiliary request 1 in response to a conclusion of the opposition division during oral proceedings deviating from its preliminary opinion. Auxiliary request 1 had been admitted, but not allowed. Thereafter, the appellant had filed auxiliary request 2. The opposition division, instead of applying the same criteria as for auxiliary request 1, applied the criterion of prima facie allowability under Art. 123(2) EPC to a feature that had already been present in claim 1 as granted, and in claim 1 of auxiliary request 1 as admitted by the opposition division. More importantly, this feature had never been objected to before under Art. 123(2) EPC, either by the respondent or by the opposition division. The board held that basing the decision on admittance of auxiliary requests 1 and 2 on different criteria resulted in an inconsistent approach. Moreover, using the prima facie allowability criterion to object for the first time at oral proceedings to a feature of the late-filed claim request that was already present in higher-ranking claim requests and had never been objected to before, not even when deciding on the allowability or admittance of those higher-ranking claim requests, went against the principles of fairness and good faith. For these reasons, the board decided to overturn the opposition division's decision on the non-admittance of what was then auxiliary request 2, and to admit the current main request into the appeal proceedings pursuant to Art. 12(6) RPBA 2020. Moreover, the board decided on admittance of a new objection of the respondent under Art. 123(3) EPC, raised in its reply to the grounds of appeal. The opposition division had concluded that the amendment in claim 1 of the main request had restricted the claimed subject-matter. By not explaining in its reply why this conclusion was not correct, the respondent failed to substantiate its objection as required by Art. 12(3) RPBA 2020. In exercising its discretion under Art. 12(5) RPBA 2020, the board decided not to admit the respondent's objection into the proceedings.