7.1.5 Begründung des Antrags auf Verlegung

In T 1544/22 the patent proprietor (respondent) submitted a letter, relating inter alia to auxiliary request 2, only two working days before the oral proceedings. They argued that this letter was a direct response to the board's preliminary opinion, which deviated from the impugned decision. According to the patent proprietor, the arguments presented in the letter only elaborated in more detail arguments that had already been presented before. Its aim was to facilitate discussing these arguments during the oral proceedings. Even if the letter had not been filed, its content could have been presented and discussed orally during the oral proceedings. The appellant (opponent 2) took the view that the letter contained a completely new set of arguments, which constituted an amendment to the patent proprietor's appeal case. This amendment would have necessitated contacting a technical expert, which was not possible due to the extremely late submission of the letter.

The board concurred with the patent proprietor that the part of the letter referring to auxiliary request 2 related to arguments considered in the decision under appeal and submitted by the patent proprietor during the written phase of the appeal proceedings (with its reply to the grounds of appeal of opponent 2). In fact, the patent proprietor had already addressed the issues explained in the letter, namely the technical effect of a certain feature and how it was advantageous over the prior art. The late-filed letter merely elaborated these arguments in more detail, as submitted by the patent proprietor. The board held that such a refinement of previously submitted arguments which further illustrated a party's position had to be allowed, especially when, as in the case at hand, the refinement of arguments concerned points where the board's preliminary opinion differed from the impugned decision. Otherwise, the parties could only repeat their arguments put forward in the statement of grounds of appeal and the reply thereto. The board agreed with T 247/20 that oral proceedings, to which the parties had an absolute right under Art. 116 EPC, would serve no purpose if such refinements were not allowed.

The board concluded that the arguments discussed in the late-filed letter relating to auxiliary request 2 were not new arguments and did not represent a fresh case, contrary to opponent 2's submissions. Instead, they concerned further refinements of arguments already addressed in the impugned decision (Art. 12(2) RPBA) and previously presented during the appeal proceedings (Art. 12(3) RPBA). Thus, they did not constitute an amendment to the appeal case as referred to in Art. 12(4), 13(1) and (2) RPBA. Therefore these (very late) submissions had to be considered in the case at hand.

However, the board also stressed that the preliminary opinion of the board had been communicated to the parties more than four months prior to the oral proceedings. Given that the letter in question had been submitted/received in practical terms only two days before the oral proceedings (i.e. on Monday 3 February 2025), the board agreed with opponent 2 that it had been filed extremely late. In addition, the board was of the opinion that the patent proprietor could and should have presented the arguments contained in the late-filed letter earlier in the proceedings. By submitting late-filed arguments with such a high level of detail at such a short notice – two days before the oral proceedings – the patent proprietor had unfairly put opponent 2 in an unnecessarily unfavourable position.

In view of this particular situation, the board had given opponent 2 the opportunity to request an adjournment of the oral proceedings and indicated that it was favourably disposed towards such a request. After opponent 2 had not requested an adjournment of the oral proceedings but preferred to continue them, the board did not consider it necessary to discuss the original accusation of abuse of procedure submitted by this party.

In T 1841/23 the board had accelerated the appeal proceedings due to parallel infringement proceedings before the Unified Patent Court. The board summoned the parties to oral proceedings to be held on 11 December 2024. According to its preliminary opinion, the patent was most likely to be revoked on the ground of added subject-matter. A notice of intervention was filed ca. three weeks before the arranged oral proceedings and the patent proprietor quickly requested their postponement. By communication of 26 November 2024 the board invited the proprietor and opponent 1 to file observations on the notice of intervention by 4 December 2024. Oral proceedings were held on 11 December 2024 as originally scheduled.

According to the board, the proprietor's argument, in effect invoking the right to be heard, that two weeks was an insufficient period to fully respond to the notice of intervention, had no bearing on the question of the date for oral proceedings as governed by Art. 15(2) RPBA. The same applied to its complaint that new arguments were put forward in the notice of intervention, and that the discussion had developed into an intertwined tripartite debate. As the proprietor's core concern was the right to be heard, and since oral proceedings served to protect that very right by providing another opportunity for parties to present their comments, the continuation of the oral proceedings before the board did not adversely affect the parties to the appeal proceedings.

The board also disagreed with the proprietor's suggestion, invoking decision T 1961/09, that continuing the oral proceedings before the board could only be fair to the proprietor if the intervener did not make any submissions at all. The implications of an intervention filed shortly before the arranged oral proceedings had to be determined on a case-by-case basis. In the board’s view, there seemed to be no appreciable disagreement between the two boards in methodological terms. In the present case, unlike the one underlying T 1961/09, the notice of intervention did not raise any further objections or new issues, but only argued on old topics.

The board then moved on to the added subject-matter objections against the patent and concluded that all claim requests were unallowable under Art. 123(2) EPC. After the board reached this conclusion but before any decision was announced, the proprietor submitted a written objection under R. 106 EPC.

The board observed that the proprietor's right to be heard was at the heart of the R. 106 objection. At issue was the decision to revoke the patent because recurring feature F3 was not originally disclosed, thus contravening Art. 123(2) EPC. The board noted that this ground and evidence had been around since the beginning of the opposition proceedings, and the evidence was entirely by the proprietor's own hand. It could not agree with the proprietor's view, namely that any late-refining or further developing of the arguments on the same old ground and evidence would raise concerns with respect to the right to be heard. The board recalled that a first indication of what the board found particularly relevant in this case had already been given in the preliminary opinion, in which the added-matter objection was one of merely two substantive objections addressed. The notice of intervention was evidently never considered relevant as a basis for the decision on the appeal, since an objection being most likely prejudicial to the opposed patent's maintenance was already in the proceedings. The proprietor could not have been taken by surprise by the grounds and evidence forming the basis of the present decision. Moreover, the proprietor had an opportunity to present its comments on them.

While an admissible intervention was to be treated as an opposition (Art. 105(2) EPC), its filing shortly prior to the oral proceedings before a board did not generally excuse the proprietor, and in particular it did not hand them a voucher for more time. Its concrete implications for opposition appeal proceedings were rather to be determined on a case-by-case basis, under the provisions of the EPC and the RPBA. Nor were opposition appeal proceedings designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement. They were rather an existential challenge to the title, on the basis of which enforcement was pursued in the infringement proceedings, and parameters such as legal certainty and procedural economy were also involved. Any difficulties for the proprietor in drafting auxiliary requests that also provided the best scope of protection, considering the ongoing infringement proceedings, were not a reason to delay the opposition appeal proceedings.

For these reasons, which also translated into a lack of "special reasons" under Art. 15(6) RPBA, the board did not refrain from deciding on the appeal on a ground for opposition that appeared also in the notice of intervention. As a result, the objection submitted by the proprietor under R. 106 EPC was dismissed.