Zusammenfassung von Art 13(2) RPBA 2020 für die Entscheidung T1058/20 vom 04.11.2022

In T 1058/20 claim 1 of the new first auxiliary request, filed after notification of the summons to oral proceedings, was limited to only one of three alternative embodiments (alternative (iii)) claimed in claim 1 of the main request. The board, referring to case law cited in T 2920/18 and in T 494/18, held that the deletion of a claim or an alternative within a claim was to be regarded as an "amendment to the party's appeal case" within the meaning of Art. 13(2) RPBA 2020, and also an amendment in view of the requests on which the impugned decision was based (Art. 12(2) and (4) RPBA 2020). The board explained that the question of what could be defined as an "amendment to a party's appeal case" could be answered in the systematic context of the provisions on appeal proceedings. Art. 12(3) RPBA 2020 provided that the statement of grounds of appeal and the reply had to contain a party's complete appeal case. Accordingly, all requests had to be specified expressly at this stage. It followed from this that only requests filed with the party's statement of grounds of appeal or the reply formed part of a party's appeal case. Consequently, a new request filed afterwards with a set of claims different to that of the previous requests was usually to be regarded as an "amendment to a party's appeal case". In the board's view, whether the new request was to be qualified as an amendment (a factual condition) was to be assessed in a first step without anticipating the criterion of procedural economy, which was only applied in a second step as a criterion of discretion when determining the legal consequence. The board then assessed whether to admit the new first auxiliary request in exercise of its discretion under Art. 13(2) RPBA 2020. In the board's view exceptional circumstances which could justify the admittance of the new first auxiliary request were not present because the filing of a request limited to alternative (iii) would have been reasonable during the examining proceedings and the circumstances had not changed in view of the impugned decision or during the appeal proceedings. The principles underlying Art. 12(2), (4) and (6) RPBA 2020 could also be applied when assessing whether exceptional circumstances were present according to Art. 13(2) RPBA 2020, because an amendment that would not have been admitted at the beginning of the appeal proceedings (as it could and should have been submitted during the first-instance proceedings) could normally not be justified at a later stage of the appeal proceedings either. The board distinguished the case from T 2920/18 and observed that in the case in hand refraining from the submission of the new request in the first-instance proceedings contravened procedural economy because the appeal could have been superfluous if the examining division had had the opportunity to assess the allowability of the new claim request. In this respect, the board pointed out that the principles of procedural economy are not to be assessed isolated from the course of the appeal proceedings but rather in view of the proceedings as a whole. Finally, in response to the appellant's argument that the request should be admitted because it was clearly allowable, the board pointed out that prima facie allowability as such would not justify exceptional circumstances under Art. 13(2) RPBA 2020. Moreover, this assertion was not entirely accurate since at most the request would be allowable under Art. 123(2) EPC so that, if admitted, the board would remit the case to the examining division for further prosecution. The primary object of the appeal proceedings was to review the decision under appeal in a judicial manner (Art. 12(2) RPBA 2020; G 9/91, OJ 1993, 408, point 18 of the Reasons). However, in the case in hand, the filing of the new first auxiliary request did not aim to rectify an error in the decision but rather the appellant's failure to file a request in time. Admitting this request would not only be at odds with the purpose of the appeal proceedings but would also devalue the first-instance proceedings.