4.3.6 Im erstinstanzlichen Verfahren nicht zugelassenes Vorbringen – fehlerhafte Ermessensausübung – Artikel 12 (6) Satz 1 VOBK

In T 837/24 the board dealt with two issues of admittance, the first being the admittance of an objection under Art. 123(2) EPC against the main request on appeal (identical to the "first auxiliary request" maintained by the opposition division). In the proceedings before the opposition division the opponent had raised this objection for the first time in response to the communication under R. 115(1) EPC against features of claim 1 of the then main request (patent as granted). These features were partly present also in "auxiliary request 1", the later main request. This new objection was not admitted by the opposition division based on a prima facie assessment. With regard to the first auxiliary request (main request on appeal) the decision under appeal merely indicated that the opposition division considered the subject-matter of claims 1 and 7 to be "compliant with the requirement of Article 123(2) EPC [...] for the same reasons as already provided in the context of the claims 1 and 7 of the patent", thus suggesting that the opposition division had conducted an assessment on added-matter in full, without however providing a different reasoning on that issue.

The board pointed out that, since compliance of auxiliary request 1 could not have been established without admitting the objection with respect to the then "main request", the decision under appeal was manifestly inconsistent. Moreover, the minutes of the oral proceedings before the opposition division stated the same facts. It could thus not be determined with certainty whether or not the opposition division had indeed admitted the opponent's late-filed objection into the proceedings. The board held that, to ensure the parties' right to be heard, at the oral proceedings before it, it first had to discuss and decide on the admittance of the late-filed objection under Art. 123(2) EPC.

The board found that, regardless of whether the opposition division committed an "error" when exercising its discretion within the meaning of Art. 12(6), first sentence, RPBA and irrespective of whether the added-matter objection was indeed admitted by the opposition division into the opposition proceedings, at least the "circumstances of the appeal case" justified admitting the late-filed objection into the appeal proceedings, inter alia for the following reasons. The claim construction argued by the opponent was technically meaningful and when the claim was so construed there was indeed no basis in the application as filed. In consequence, the late-filed objection was indeed prima facie highly relevant to the appeal case. Moreover, both parties had already discussed that issue in full in their first submissions on appeal and were thus in a position to present their full case on this issue. Regarding the proprietor’s argument that the opponent had not requested, during the appeal proceedings, admittance of this objection, the board considered that the opponent could have reasonably assumed that the objection was part of the proceedings. With regard to the proprietor’s argument that the opposition division had based its prima facie assessment on an interpretation of claim 1 initially also accepted by the opponent, the board pointed out that claim interpretation as such was a matter of law and could change as the proceedings evolve (see R 25/22, R 14/23). Moreover, a technically meaningful claim interpretation should not be ignored by a deciding body.

The second admittance issue dealt with by the board concerned auxiliary requests M-A and M-B filed in reaction to the board's preliminary opinion issued under Art. 15(1) RPBA. The board first recalled that a party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings. Indeed, each party should take into account that a board may depart from the preliminary view or decision issued by the first-instance department (e.g. T 614/21 and T 764/16), in particular when it comes to claim construction. However, the board concurred with the proprietor that it could not be objectively taken from the appealed decision whether the added-matter objection had been admitted into the opposition proceedings. It held that a self-contradicting or inconsistent decision of an opposition division may in itself constitute "exceptional circumstances" within the meaning of Art. 13(2) RPBA. Furthermore, there was also a causal link between the filing of auxiliary requests M-A and M-B, i.e. the amendment of the proprietor's appeal case, and the contradictory information as contained in the decision under appeal. The board thus decided to admit auxiliary requests M-A and M-B into the appeal proceedings in view of these exceptional circumstances.

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.