4.2. Änderungen des Vorbringens eines Beteiligten

In T 1296/23 the board pointed out that requests filed during the first-instance proceedings on which the department of first instance had taken no decision were not automatically part of the appeal proceedings. The board had an obligation to review the decision under appeal (Art. 12(2) RPBA; see also T 1309/16 and T 1943/16). This obligation, however, did not extend to auxiliary requests, which were not amongst the requests on which the decision under appeal was based (Art. 12(2) RPBA). That some of these requests might have been "admissibly raised" within the meaning of Art. 12(4) RPBA was immaterial in this regard, unless they had also been expressly maintained on appeal.

In the case in hand, the decision under review was the interlocutory decision of the opposition division to maintain the patent on the basis of auxiliary request 2. Auxiliary requests 3 to 9 filed before the opposition division were only mentioned in the facts and submissions of the decision under appeal. The respondent (proprietor) made no specific requests. Since it countered the appellant's arguments why auxiliary request 2 did not comply with the EPC, the board understood the respondent's (sole) request to be that the appeal be dismissed. This was also noted in the communication under Art. 15(1) RPBA. The board's assessment of the respondent's request(s) remained uncontested until the oral proceedings. In the board's view, the absence of such an objection could be considered as a silent acknowledgment that, when filing its response to the appeal (and in fact at any time before the oral proceedings took place), the respondent only requested maintenance of the patent on the basis of auxiliary request 2. As noted by the board, auxiliary requests 3 to 9 were at the very least not expressly part of the reply to the statement of grounds of appeal and therefore not amongst the requests defining the respondent's case according to Art. 12(3) RPBA.

Only at the oral proceedings did the respondent submit that they had considered auxiliary requests 3 to 9 to be part of the appeal proceedings given that they were mentioned in the decision under appeal and in the appellant's rejoinder. The board did not agree. It pointed out that it was apparent from the summary of facts and submissions and the absence of reasons given in the decision under appeal in respect of those requests that they did not form part of the basis for that decision within the meaning of Art. 12(1)(a) and 12(2) RPBA. The board also noted that nothing in the appellant's rejoinder indicated that the appellant would have understood that said requests were also part of the appeal proceedings.

The board concluded that auxiliary requests 3 to 9 were made for the first time in the oral proceedings before the board. They therefore constituted an amendment under Art. 13(2) RPBA. The board did not consider the explanation given by the respondent for filing these requests only at the oral proceedings to identify exceptional circumstances. It further explained that the re-introduction of said requests and any reasons relating to such requests at such a late stage of the appeal proceedings would contravene the principle of procedural economy, if only because their admittance would have required either a postponement of the oral proceedings or a remittal to the department of first instance. The board decided, therefore, not to take into account auxiliary requests 3 to 9 in the appeal proceedings.

Dans l’affaire T 1857/23, la veille de la procédure orale devant la chambre de recours, la titulaire a déposé un courrier dans lequel elle demandait que des questions – concernant les conséquences de la perte d'une requête présentée devant la division d'opposition et les responsabilités pour la conservation d’une requête déposée – soient soumises à la Grande Chambre de recours au titre de l’art. 112(1)a) CBE. Ces questions de saisine s'inscrivaient dans le contexte suivant : selon l'avis de la chambre dans une première procédure de recours, la division d'opposition avait commis un vice substantiel de procédure en ne consignant pas au dossier une requête subsidiaire non admise. Dans la procédure d'opposition réouverte et le recours suivant, l'opposante avait déposé une requête en répartition différente des frais pour abus de procédure de la part de la titulaire qui n'était pas en mesure de produire un exemplaire de la requête non admise. Cependant la titulaire avait fait valoir que l'opposante avait également une part de responsabilité.

Sur la question de savoir si cette requête en saisine constituait une "modification des moyens" au sens de l'art. 13(2) RPCR, la chambre a considéré qu’une requête en saisine de la Grande Chambre de recours au titre de l'art. 112(1)a) CBE contient non seulement des observations purement juridiques, mais aussi, toujours, des éléments de fait selon lesquels une application uniforme du droit doit être assurée ou selon lesquels une question de droit d'importance fondamentale se pose. Une requête tardive en saisine de la Grande Chambre de recours devait donc toujours être considérée comme une "modification des moyens".

La chambre a ensuite rappelé que l'art. 13(2) RPCR impose à la partie non seulement l'obligation d'expliquer la raison pour laquelle l'affaire comporte des circonstances exceptionnelles, mais également la raison pour laquelle sa modification, aussi bien par son contenu que par la date à laquelle elle a été déposée, constitue une réponse justifiée à ces circonstances. En particulier, lorsqu'une partie tente de modifier ses moyens à un stade très avancé de la procédure, les raisons convaincantes visées par l'art. 13(2) RPCR doivent justifier de l'impossibilité de déposer la modification antérieurement (cf. T 1707/17, T 2795/19).

La chambre a relevé qu’en l’espèce, la question de la répartition différente des frais avait déjà été soulevée dans la réponse de l'opposante au mémoire exposant les motifs du recours, de sorte que la titulaire aurait pu, en temps utile, prendre position à ce sujet et renvoyer à la jurisprudence qu'elle jugeait pertinente. La titulaire n'avait pas indiqué de raisons pour lesquelles elle n'avait déposé sa requête en saisine que la veille de la procédure orale. Dans ces conditions, selon la chambre, ni l'opposante ni la chambre n'ont pu examiner cette requête de manière adéquate. Vu ces circonstances, la chambre a exercé son pouvoir d'appréciation en vertu de l'art. 13(2) RPCR en ne prenant pas en compte la requête en saisine présentée par la titulaire.

In T 1319/23 the appeal lay from the decision of the opposition division revoking the European patent concerned. According to the appealed decision neither the main request nor auxiliary request 1 met the requirement of sufficiency of disclosure. One of the main points of dispute between the parties during the opposition proceedings related to the impossibility to perform TREF measurements with a particular solvent in a certain temperature range.

In its statement of grounds of appeal, the appellant (proprietor) submitted two lines of argument regarding sufficiency of disclosure. In section C.1, it argued that the arguments retained by the opposition division to reach their decision on this point were related to a potential clarity issue rather than sufficiency of disclosure. In section C.4, it submitted that even if the issue identified in the appealed decision related to sufficiency of disclosure, these concerns were irrelevant for most polymers and at most would affect the extreme boundaries of the claim. The board observed that undisputedly the appellant had not put forward these arguments during the opposition proceedings and concluded that they constituted an amendment to the appellant’s case (Art. 12(2) and (4) RPBA). Their admittance was therefore at the board’s discretion pursuant to Art. 12(4) and (6) RPBA.

Considering that the main request is the patent as granted, the board agreed with the respondent that these arguments could have been submitted earlier.

However, in the board’s view, the appellant was not using the arguments in section C.4 to build a fresh case in appeal. Rather they were strictly linked to a central point of the decision under appeal and merely represented a further development of an existing line of argument, which remained within the same framework of the line of defence adopted in opposition proceedings. In certain aspects, they were also a response to specific concerns expressed by the opposition division in the impugned decision.

Moreover, the board considered that whether an objection relates to clarity or sufficiency of disclosure was a purely legal issue. Contrary to the respondent's view, it could not be disregarded since it was the board's duty to ensure that the parties address the correct legal basis during the proceedings and that this legal basis is the one eventually considered when reaching a decision on the disputed issue. In this regard, the board agreed with the appellant that these arguments concerned the correct application of the law to the underlying facts and were not directed to the presentation of new facts. The board also noted that Art. 12(4) RPBA, which states that the board should, when exercising its discretion, take into account the complexity of the amendment, could not be interpreted as meaning that such additional arguments should be disregarded automatically because of this inherent increased complexity.

In view of the above, the board decided to exercise its discretion pursuant to Art. 12(4) RPBA to admit into the proceedings the arguments put forward by the appellant in sections C.1 and C.4 of the statement of grounds of appeal. Based on these arguments, the board concluded that the issue related to the impossibility to perform TREF measurements in a certain (marginal) temperature range, did not amount to a lack of sufficiency of disclosure pursuant to Art. 100(b) EPC and remitted the case for further prosecution.

In T 1223/23 the opposition division had come to the conclusion that claim 1 of the patent as granted was not new in view of document D2. During the oral proceedings before the board, the appellant (proprietor) submitted for the first time in appeal proceedings that D2 based on a new interpretation could not be relevant to the novelty assessment of the subject-matter of claim 1. The respondent (opponent) requested that this fresh argument not be admitted into the appeal proceedings, because it was raised at a very late stage and should have been submitted earlier.

The board first pointed out that, while the appellant's submission did not introduce any new facts or evidence, Art. 12(3) RPBA made clear that arguments also formed part of a party's case, and that a late-filed argument could therefore qualify as an "amendment" under Art. 13(2) RPBA, the admission of which being at the board's discretion. The board then mentioned the case law denying discretion to disregard (certain) late arguments in view of the wording of Art. 114(2) EPC (T 1914/12 and the decisions cited therein as well as T 1617/23 concurring with this line with certain reservations) but could leave open whether this case law was persuasive..

The board held that even on the assumption that the board had discretion not to admit a late-filed argument, there would be no justification to exercise it here. Once the parties had submitted the relevant claim requests and documents and presented their arguments on them, the board had to resolve a number of legal issues falling under its judicial responsibility. These included the interpretation of the claims, the construction of the relevant (prior-art) documents and the proper assessment of their disclosure from the perspective of a skilled person in the respective field. If the board became aware, even at a late stage, that its previous interpretation of a (prior-art) document or a claim from the perspective of the skilled person, or its understanding of a prior-art technical teaching, was wrong, in the present board's view, it had a duty to correct that error. This applied irrespective of whether the new understanding arose from the board's own analysis or from a party's new submission.

As explained by the board, in the present case, to disregard the appellant's argument and keep its original understanding of the disclosure in D2 would have forced the board to base its decision on an interpretation which it considered erroneous. The procedural framework of the appeal proceedings aimed to secure efficient and fair proceedings, but also to guarantee that the decisions, based on the facts and evidence adduced, were substantively correct. In other words, a (technically) correct interpretation of a prior-art document took precedence over formal or procedural considerations here. For this reason, once convinced by the appellant's submission, the board adopted it in its assessment of the present case. In view of the above, the new argument was admitted into the appeal proceedings and the respondent's request in that regard rejected. The case is remitted to the opposition division for further prosecution.

In T 989/23 auxiliary request 17, filed with the statement of grounds of appeal, had first been filed in the opposition proceedings on the final date set under R. 116 EPC. The opposition division had decided that this auxiliary request was not open for examination as to its admissibility since it had been filed within the set time limit. Auxiliary request 17 was not considered by the opposition division since a higher-ranking auxiliary request was found allowable. The appellant-opponent requested that auxiliary request 17 not be admitted into the appeal proceedings, arguing that the division had misunderstood its discretionary powers.

In view of the line of case law holding that submissions admitted by the opposition division could not be excluded from consideration on appeal (e.g. T 487/16, T 1768/17, T 617/16, T 26/13, T 989/23, T 1568/12, T 2603/18, T 3201/19) the board first addressed the extent of its power of review. It explained that like an opposition division's decision to disregard late-filed submissions, a decision to admit such submissions into the opposition proceedings was a discretionary procedural decision which formed part of the opposition division's final decision on the merits of an opposition. A decision to admit late-filed submissions adversely affected the party contesting their admittance (in view of a possible adverse decision on appeal based on the admitted submissions, T 1549/07). Therefore, a board had the power to review an opposition division's procedural decision to take into consideration submissions filed late in opposition proceedings. Otherwise, the parties' right to a judicial review of an essential part of the opposition division's decision would be denied. Moreover, on appeal, a board would be compelled to accept a legal and factual framework, even if it is based on an erroneous exercise of discretion. As a consequence, requests, facts or evidence that had been admitted into opposition proceedings could be disregarded on appeal if the opposition division's decision suffered from an error in the use of discretion (T 1209/05, T 1652/08, T 1852/11, T 2197/11, T 572/14, T 341/15, T 326/22, T 776/17). The board thus had the power and duty to review the opposition division's decision to admit auxiliary request 17 into the opposition proceedings.

The board held that the filing of requests for amendment of the patent was governed by Art. 123(1) EPC, which gave the opposition division the discretionary power not to admit new requests for amendment (e.g. T 755/96, OJ 2000, 174; T 980/08, T 1178/08, T 966/17, R 6/19, T 256/19, R 11/20). The exercise of this discretion had to take account of the following: In inter-partes proceedings, each party had to be given equal opportunity to present their case and a fair chance to respond to new matter raised by the other party or parties or by the opposition division. Both the opposition division and the parties had to observe the principle of good faith (T 669/90, OJ 1992, 739; T 201/92). To expedite the proceedings and implement the principle of fairness towards the other party or parties, each party had to submit all facts, evidence, arguments and requests for amendments relevant to their case as early and completely as possible (T 326/87, OJ 1992, 522; T 430/89; T 951/91, OJ 1995, 202). This case law had been developed mainly in the context of Art. 114(2) EPC, pertaining to facts and evidence. Nevertheless, in view of the principles set out above, the rationale of this case law also applied to a patent proprietor's requests for amendment of the patent (e.g. T 582/08). Whether amended sets of claims should be considered in opposition proceedings or not did not merely depend on their filing within the time limit under R. 116 EPC, but also on the specific circumstances of the case (see also T 364/20). Consequently, the opposition division erred in denying that it had discretionary power to disregard auxiliary request 17. As a consequence, this procedural decision did not establish that auxiliary request 17 was "admissibly raised" in opposition proceedings.

The board agreed with the opponent that the filing of additional sets of amended claims (including auxiliary request 17) on 23 January 2023 was not a diligent and appropriate reaction to the opponent's submissions filed on 14 April 2022 and reiterated on 2 September 2022, or to the opposition division's communication of 30 May 2022. Since part of the defences submitted by the proprietor was not able to overcome the board’s conclusions on lack of inventive step and a later filed part raised new issues, the board did not admit auxiliary request 17 into the appeal proceedings.

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.

Dans l'affaire T 458/22, l'intimée a fait valoir pour la première fois après notification de la communication en vertu de l'art. 15(1) RPCR, que le recours était irrecevable.

La requérante a fait valoir que les faits contestés étaient présents dans la procédure depuis le début et qu'aucune circonstance exceptionnelle ne justifiait l'admission de cette nouvelle objection à ce stade de la procédure.

La chambre était consciente de l'existence d'une jurisprudence qui considère que la question de la recevabilité d'une opposition ou d'un recours peut et doit être soulevée d'office à tous les stades de la procédure, même au cours de la procédure orale dans le cadre d'un recours (Jurisprudence des Chambres de recours de l'Office européen de brevets, 10e édition, juillet 2022, V.A.2.7). Les chambres dans les affaires T 289/91, T 15/01, T 522/94, T 1668/07, T 2223/10 et T 198/15 ont interprété ce principe initialement formulé dans la décision T 289/91 en ce sens qu'elles n'ont pas le pouvoir d'appréciation de ne pas prendre en considération une objection tardive à la recevabilité, même si elle a été soulevée par une partie pour la première fois lors de la procédure orale devant la chambre.

La présente chambre a considéré qu'elle possède un pouvoir d'appréciation pour ne pas prendre en compte l'objection à la recevabilité du recours soulevée par l'intimée.

Une objection à la recevabilité d'un recours ou d'une opposition soulevée par une partie constitue un moyen invoqué au sens de l'art. 114(1) CBE. Le libellé de l'art. 114 CBE ne fait pas d'exception pour des faits tardifs relatifs à la question de la recevabilité d'une opposition ou d'un recours. La question de savoir si le mémoire de recours est conforme aux exigences de la règle 99(2) CBE peut comprendre des faits ainsi que des arguments, par exemple la question de savoir s'il contient ou non des motifs pour lesquels il y a lieu d'annuler la décision attaquée.

Le libellé des art. 101(1) et 110 CBE et des règles 77(1) et 101(2) CBE ne fait apparaître aucune nécessité d'une requête par une partie pour l'examen de la recevabilité, ni une quelconque restriction quant au moment où la chambre examine la recevabilité d'une opposition ou d'un recours. Il s'ensuit que la chambre de recours peut statuer sans requête, c'est-à-dire ex officio, sur la question de la recevabilité du recours ou l'opposition, et ce à tout moment de la procédure. En cela la chambre est en accord avec la ligne de jurisprudence précitée.

Toutefois, la chambre a considéré qu'il ne découle pas des dispositions précitées que les faits invoqués tardivement par une partie concernant la question de la recevabilité doivent toujours être pris en considération par une chambre de recours. Le libellé des art. 12 et 13 RPCR ne limite pas le pouvoir d'appréciation d'une chambre de recours de manière à en exclure la question de la recevabilité d'un recours ou d'une opposition.

La chambre ne partage pas le point de vue exprimé aux points 25 et 26 de la décision T 1006/21, selon lequel les dispositions des art. 12 et 13 du RPCR limitent uniquement les modifications des faits et du fond d'un recours, mais que les requêtes procédurales ne constituent pas des modifications au sens de ces dispositions.

Elle partage en revanche l'avis contraire exprimé au point 1.3.2 de la décision T 1774/21, selon lequel le libellé du RPCR a été délibérément choisi pour faire la distinction entre les "requêtes" générales (voir l'art. 12(2) et (3) RPCR) et les "modifications d'une demande de brevet ou d'un brevet" (voir l'art. 12(4), deuxième phrase, RPCR, l'art. 13(1), troisième phrase, RPCR). Ce point de vue est supporté également par le tableau présentant les modifications du RPCR avec remarques explicatives (publication supplémentaire 2, JO 2020, 17), selon lesquelles "Dans ce contexte [de l'art. 12(2) RPCR], le terme 'requêtes' n'est pas limité aux textes modifiés de demandes de brevet ou de brevets".

En l'espèce, l'objection à la recevabilité du recours par l'intimée n'est pas prise en compte en vertu de l'art. 13(2) RPCR, car il n'y a pas de circonstances exceptionnelles justifiant l'admission.

In T 449/23, the board rejected the patent proprietor's argument that auxiliary requests 2 to 8 were part of the appeal proceedings from the outset within the meaning of Art. 12 RPBA. These requests had not even been mentioned in their statement of grounds of appeal or their reply (to the opponent's statement of grounds of appeal).

Regarding the interpretation of "any amendment to a party's appeal case" in Art. 13(2) RPBA, the board pointed out that the reference point for determining an "amendment" under Art. 13(2) RPBA was not the same as under Art. 12(4) RPBA.

Art. 12(4) RPBA defined an "amendment", by way of reference to Art. 12(2) RPBA, as any matter departing from the framework of the decision under appeal (i.e. the requests, facts, objections, arguments and evidence underlying the contested decision), unless this matter had been admissibly raised and maintained in the proceedings leading to the decision under appeal. The reference point in Art. 13(1) and (2) RPBA, on the other hand, was the party's complete case as determined by Art. 12(1) to (6) RPBA.

Hence, the amendment referred to in Art. 12(4) RPBA was an amendment of the party's case relative to its requests, facts, evidence, arguments and objections on which the decision under appeal was based. This was distinct from "amendments to a party's appeal case" in Art. 13(2) RPBA, carried out at a later stage of the appeal proceedings relative to earlier submissions in appeal. The admissibly raised criterion of Art. 12(4) RPBA was not relevant to the question whether a claim request represented an amendment to a party's appeal case under Art. 13(2) RPBA.

Consequently, the board rejected the argument of the patent proprietor according to which auxiliary requests 2 to 8 were "carry-over" requests and therefore merely the criteria set out in Art. 12(4) RPBA had to be applied to determine whether these requests represented an amendment to the appeal case within the meaning of Art. 13(2) RPBA. The board distinguished the case in hand, where the relevant requests were submitted one day before oral proceedings before the board, from the procedural situation underlying T 246/22, where the relevant requests had been submitted with the statement of grounds of appeal.

Regarding auxiliary request 6, which differed from the claims of the main request (claims as granted) solely by the deletion of independent claims 1 and 2, the board agreed with the reasoning set out in T 2091/18 and J 14/19 and held that any new and amended claim request was to be considered as an amendment to the party's appeal case. In the board's view, the filing of a new claim request always had to have a substantive purpose related to the potential outcome of the patent proprietor's appeal case. The board concluded that if there was such a substantive reason for filing the new set of claims, there was an amendment to the party's case. The board also observed that even when following the line of case law that considered a deletion of (an alternative in) an independent claim to be an amendment in the sense of Art. 13(2) RPBA only if it altered the factual and legal framework of the proceedings, it came to the same conclusion. In fact, even if the remaining subject-matter was encompassed by the claims of previously pending claim requests, the deletion created a new object which shifted the discussion in that the amendment "moved the target" out of the focus of the objections that had been debated on appeal so far.

Since no justification for the late filing of these requests had been submitted by the patent proprietor, nor did the board see any, the board found that there were no exceptional circumstances within the meaning of Art. 13(2) RPBA. Based on a systematic interpretation of Art. 13(1) and (2) RPBA, the board did not agree with the approach taken e.g. in T 2295/19, according to which exceptional circumstances were present if allowing the amendment was not detrimental to procedural economy.

In T 1178/23 auxiliary request 4 filed with the reply to the statement of grounds of appeal had the same wording as auxiliary request 2 in opposition proceedings, filed as auxiliary request 1 on the final date set by the opposition division under R. 116 EPC and renamed when a new auxiliary request 1 was filed at the oral proceedings. The decision under appeal was not based on auxiliary request 2, as the opposition division had held auxiliary request 1 to be allowable.

The board held that for the assessment of the condition under Art. 12(4), first sentence, RPBA ("admissibly raised"), the decisive question is whether the first-instance department would have admitted the request had a discretionary decision on admittance been required (T 364/20; see also T 2395/22 and T 246/22). In the board's view, the explicit use of the past tense ("was admissibly raised") and the reference to the proceedings leading to the decision under appeal implied that the perspective of the first-instance department was addressed. In other words, it needed to be determined how the first-instance department would have proceeded in reliance on the provisions and practice that applied at the time. This view was supported by the consideration that, without the first-instance perspective, a decision on the "admissibly raised" condition might lead to a different assessment of the admittance of a request that was filed but not decided on in first-instance proceedings compared to another, higher-ranking request that was filed under the same circumstances but was admitted and held allowable by the first-instance department. Setting minimum requirements post factum in appeal for determining whether a request was admissibly raised before the opposition division (T 364/20, T 1800/20, T 309/21, T 246/22, T 1749/22) was tantamount to applying different admittance criteria for auxiliary requests filed at the same time and under the same circumstances in first-instance proceedings. Arguably, such an approach would compromise legal certainty. Moreover, replacing the first-instance perspective with what essentially was an exercise of discretion on the part of the board would render the discretionary decision of Art. 12(4), second sentence, RPBA redundant.

The board explained that, to assess whether the first-instance department would have admitted a request, it had to be established whether this department had discretion not to admit the request and, if so, which practice applied at the time when the decision on admittance would have been taken. As a general rule, parties could expect first-instance departments of the EPO to act in accordance with the Guidelines in the version valid at the relevant time (T 446/22, T 731/22, T 823/23). The board addressed the "moving target" argument in T 246/22 by pointing out that the amendments to the Guidelines often reflected developments in the case law of the boards of appeal. They therefore could not constitute an impediment for the board in considering the Guidelines when determining how the opposition division would have proceeded at the relevant time.

In the case in hand, the board concurred with the respondent (patent proprietor) that, at the time of the oral proceedings on 14 March 2023, the opposition division would have considered the March 2023 version of the Guidelines had a discretionary decision on the admittance of that auxiliary request been required. The relevant section E-VI, 2.2.2 of the March 2023 version of the Guidelines included the provision that "amendments submitted before the date set under Rule 116(1) EPC cannot, as a rule, be considered as being late-filed". In view thereof, the board was satisfied that the respondent had demonstrated that auxiliary request 4 at issue was admissibly raised in the proceedings leading to the decision under appeal.

The fact that, according to the minutes of the oral proceedings held before the opposition division, the respondent had renumbered the auxiliary request 1 filed on the final date set under R. 116 EPC at the end of the oral proceedings, implied that this claim request was not withdrawn but maintained in the proceedings leading to the decision under appeal. The board concluded that auxiliary request 4 was not an amendment of the respondent's appeal case but was part of the appeal proceedings (Art. 12(4), first sentence RPBA).

In T 823/23 the board decided on the admittance of a "carry-over objection", i.e. – as explained by the board – an objection which was raised and maintained in the opposition proceedings but which was not decided upon in those proceedings, neither with regard to its admittance nor in substance, due to the allowability of a claim request that ranked higher than the claim request against which the objection had been raised.

The board noted that, in the case in hand, the applicability of G 10/91 to raising the objection at issue in the appeal proceedings could be left open. Restrictions on new submissions pursuant to G 10/91 and a board's discretionary power not to admit late-filed party submissions under Art. 114(2) EPC, Art. 12 and 13 RPBA had to be applied in a cumulative manner (T 1042/18). In the board's view, the objection at issue was not admissibly raised within the meaning of Art. 12(4) RPBA and the board decided not to admit the objection into the appeal proceedings.

The board pointed out that the purpose of the mechanism of Art. 12(4), first sentence, RPBA was to ensure that submissions on which the decision under appeal was not based were (i) neither automatically subject to the board's discretion regarding admittance, (ii) nor automatically part of the appeal proceedings simply because they were raised and maintained in the proceedings leading to the decision under appeal (even though they might not have been admitted into those proceedings had it been necessary to decide on their admittance). Considering the provision's wording, context and purpose, the board held that a submission was admissibly raised in the proceedings leading to the decision under appeal if it would have been admitted into those proceedings had a decision on its admittance been taken. A board first had to assess whether the first-instance department had discretion not to admit a submission. If this was the case, in a second step, the board had to assess how a department of first instance, assuming legally correct and reasonable conduct, would have exercised that discretion.

This required the board to take on the perspective of a department of first instance and use the criteria which this department would have had to apply. The case law of the boards on reviewing the exercise of discretion in examination proceedings (e.g. T 937/09, T 573/12) and opposition proceedings (e.g. T 1930/14, T 84/17) could provide guidance for assessing how a department of first instance would have exercised its discretion. A board could also take account of the Guidelines. In the board's view, this, in principle, was no different from a board taking account of the Guidelines when reviewing the actual exercise of discretion by a department of first instance in the context of Art. 12(6), first sentence, RPBA (see T 435/21, T 1088/20) or Art. 12(6), second sentence, RPBA (see T 1990/20). The board observed that the Guidelines were – as general instructions pursuant to Art. 10(2)(a) EPC – to be taken into account by the departments of first instance. However, as stated in the Guidelines, they did not constitute legal provisions and, for the ultimate authority on the practice in the EPO, it was necessary to refer to the EPC and to its interpretation by the boards of appeal and the Enlarged Board of Appeal. As only the circumstances of the proceedings leading to the decision under appeal mattered in the assessment of whether a submission was "admissibly raised", the version of the Guidelines in force at the relevant time in those proceedings was pertinent for this assessment (see T 446/22, T 731/22).

In the case in hand, the appellant (then opponent 2) did not raise the objection under Art. 100(b) EPC in the opposition proceedings until after the board had remitted the case to the opposition division, i.e. long after the end of the opposition period and therefore not in due time within the meaning of Art. 114(2) EPC (see T 1776/18). Accordingly, the opposition division had had discretion not to admit this objection. The Guidelines (March 2022 version) stated that in deciding whether to admit grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for the belated submission were to be considered, with particular emphasis on prima facie relevance (see E-VI, 2). This was in line with what was stated in G 10/91 (point 16 of the Reasons). The board concluded that the objection was not admissibly raised in the opposition proceedings. Since the objection still suffered from a lack of prima facie relevance, exercising its discretion under Art. 12(4) RPBA, the board decided not to admit it into the appeal proceedings.

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.