A. Appeal procedure

In T 396/23 the patent proprietor requested at the oral proceedings that the decision under appeal be set aside and that the patent be maintained on the basis of the main request or on the basis of one of the auxiliary requests 1 to 16 as filed with its statement of grounds of appeal, or auxiliary requests 17 to 20 as filed with its reply to the opponent's appeal, or auxiliary requests 21 to 40 as filed in reply to the opponent’s rejoinder, or auxiliary request 41 or 42 as filed in reply to the communication under Art. 15(1) RPBA.

At the oral proceedings the board came to the conclusion that claims 1, 2 and 3 of the main request did not meet the requirements of Art. 83 EPC. Neither did auxiliary requests 1 to 40 which contained the features at issue. The subject-matter of claim 1 of the main request was also found to lack novelty over D1.

With regard to admittance of auxiliary request 41, the board observed that, when exercising its discretion under Art. 13(2) RPBA, it may also rely on the criteria set out in Art. 13(1) RPBA.

Auxiliary request 41 corresponded to auxiliary request 18 filed with the proprietor’s reply to the opponent’s statement of grounds of appeal, but with claims 1 and 2 removed. The remaining claim of auxiliary request 18, claim 3, was based on independent claim 16 as originally filed, i.e. it had been in the proceedings as an independent claim throughout (although it comprised all of the features of another independent claim). The board underlined that, by drafting claim 3 as one of three independent claims and by presenting arguments in respect of its patentability, the proprietor had clearly indicated its intention to defend this embodiment. Hence, the filing of auxiliary request 41 did not result in a situation for which the opponent or the board were unprepared.

The board pointed out that the admittance of auxiliary request 41 did not change the legal or factual framework of the case and did not require any new substantive discussion. A claim including the restriction contained in the sole claim of auxiliary request 41 had been included in the independent claims ever since the reply to the notice of opposition. A claim including two further features at issue of the sole claim had likewise been on file since the reply to the notice of opposition and had been discussed in the written proceedings. Indeed, the submission of auxiliary request 41 merely served to remove some of the points of dispute, without introducing any new aspect to be discussed, thus improving procedural economy.

The board concluded that the admittance of auxiliary request 41 was compatible with the principles of both procedural economy and procedural fairness and did not change or add anything to the subject of the appeal proceedings. In other cases where new requests were filed that satisfied these conditions, a considerable amount of case law had concluded that there were exceptional circumstances within the meaning of Art. 13(2) RPBA justifying the admittance of the new requests (see e.g. T 2022/22 and the decisions cited therein). The board therefore decided, in view of the circumstances above, to admit auxiliary request 41 into the appeal proceedings.

Since auxiliary request 41 was found to be novel and inventive, the case was remitted to the opposition division with the order to maintain the patent on the basis of auxiliary request 41 and a description to be adapted thereto.

Im Verfahren T 1865/23 hatte die Kammer die Frage zu prüfen, ob der erstmals mit der Beschwerdeerwiderung der Patentinhaberin eingereichte Hilfsantrag 10, der somit als Änderung im Sinne von Art. 12 (4) VOBK angesehen wurde, schon im Einspruchsverfahren hätte eingereicht werden müssen. Die Einsprechenden argumentierten, dies sei der Fall, da die getätigten Änderungen Einwände beträfen, welche schon in der Einspruchsschrift erhoben worden seien. Sie verwiesen in diesem Zusammenhang auf T 1188/16.

Die Kammer teilte die Auffassung der Einsprechenden jedoch nicht. Sie hob hervor, dass die zuständige Kammer in T 1188/16 befand, dass der Hauptantrag schon im Einspruchsverfahren hätte eingereicht werden müssen, da die Einspruchsabteilung in der mündlichen Verhandlung eine unzulässige Änderung bemängelt hatte. Im vorliegenden Fall sei der Sachverhalt jedoch anders..

Die Kammer erläuterte, dass die Einsprechende 1 innerhalb der Einspruchsfrist zwar u.a. bemängelt hatte, dass eine unzulässige Zwischenverallgemeinerung vorliege. In ihrer Erwiderung darauf hatte die Patentinhaberin dies aber bestritten und die Einspruchsabteilung hatte ihr in ihrer vorläufigen Meinung zugestimmt und diese Ansicht auch in der angefochtenen Entscheidung vertreten. Nach Ansicht der Kammer gab es daher keinen Grund, den Hilfsantrag 10 schon im Einspruchsverfahren einzureichen. Da die Ansprüche 1 und 3 des Hilfsantrags 10 die gemäß Art. 123 (2) EPÜ gegen den Hauptantrag erhobenen Einwände beheben konnten, ließ die Kammer den Hilfsantrag 10 zum Beschwerdeverfahren gemäß Art. 12 (4) VOBK zu.

Im Verfahren T 1125/23 wurde der Hauptantrag der Beschwerdeführerin (Patentinhaberin) unstrittig erstmals mit der Beschwerdebegründung vorgelegt. Er unterschied sich von den Ansprüchen des erteilten Patents lediglich in der Streichung des abhängigen Anspruchs 4. Die Beschwerdegegnerin beantragte, den Hauptantrag nach Art. 12 (6) VOBK nicht im Beschwerdeverfahren zuzulassen..

Die Beschwerdeführerin trug vor, durch die Streichung des Anspruchs 4 werde der einzige Einwand, auf dem die angefochtene Entscheidung hinsichtlich des Patents in der erteilten Fassung beruhe, ausgeräumt. Wie von der Kammer festgestellt, war allerdings unstreitig, dass der Einwand der mangelnden Ausführbarkeit gegen den Anspruch 4 des erteilten Patents, auf dem die angefochtene Entscheidung hinsichtlich des Patents in der erteilten Fassung beruhte, bereits in der Einspruchsschrift erhoben worden. Die Einspruchsabteilung befand diesen Einwand in ihrer der Ladung zur mündlichen Verhandlung beigefügten Mitteilung vorläufig für überzeugend. Die dort angeführten Gründe übernahm die Einspruchsabteilung auch in der angefochtenen Entscheidung als tragende Gründe. Sie ging lediglich ergänzend auf Gegenargumente der Beschwerdeführerin ein, ohne dass dies aber nach Ansicht der Kammer zu einer Änderung der Argumentation der Einspruchsabteilung in ihrer Mitteilung geführt hätte. Daher bestand nach Auffassung der Kammer bereits im Hinblick auf diese Mitteilung Veranlassung, den vorliegenden Hauptantrag einzureichen. Dies werde auch durch die Tatsache unterstrichen, dass die Patentinhaberin zu diesem Zeitpunkt Hilfsanträge einreichte, die sich von vorherigen Hilfsanträgen nur dadurch unterschieden, dass Anspruch 4 gestrichen war. Der vorliegende Hauptantrag wäre daher bereits im Einspruchsverfahren vorzubringen gewesen.

Zudem befand die Kammer, dass die Streichung zu einer völligen Neugewichtung des Verfahrensgegenstandes führen, den faktischen und rechtlichen Rahmen ändern und eine neue Diskussion hinsichtlich Neuheit und erfinderischer Tätigkeit erforderlich machen würde. Die Kriterien der Komplexität und der Verfahrensökonomie (Art. 12 (4) VOBK) sprachen daher nach Ansicht der Kammer gegen eine Zulassung des Hauptantrags im Beschwerdeverfahren. Die Kammer entschied daher, den Hauptantrag der Beschwerdeführerin gemäß Art. 12 (6) VOBK nicht im Beschwerdeverfahren zuzulassen.

In T 883/23 the board had to consider the admittance of document A35 – a poster describing the protocol of the clinical trial of example 3 of the patent – which was for the first time filed by the appellant opponent 1 with the statement of grounds of appeal and thus represented an amendment to the appellant’s case. Its admittance was therefore at the board's discretion under Art. 12(4) and (6), second sentence, RPBA.

A35 had been published between the filing of the priority applications P4 and P5 and was presented by the opponents as an alternative starting point for the inventive step assessment, because it presented more information than the previously filed document D6 relating to the same clinical trial.

The board held that, in view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (Art. 12(2) RPBA), it was the responsibility of the opponents to file the evidence regarding the prior art on which they intended to rely for their arguments against the maintenance of the patent as granted or as amended according to any of the requests filed by the patent proprietor during the first-instance proceedings.

The board did not accept the opponent’s argument that A35 had been particularly hard to retrieve. A35 had been obtainable from the USPTO following the filing of the Information Disclosure Statements for a US patent application of the patentee in 2019. The patent proprietor had filed its main request with the reply to the notices of opposition of 7 December 2021. The oral proceedings before the opposition division had been held on 24 January 2023. After the filing of the patent proprietor's main request, the opponents had thus more than a year to file A35 during the first-instance proceedings. In the board’s view, document A35 could and should therefore have been filed during the first-instance proceedings.

The board was also not persuaded by the opponent’s argument that, in line with the considerations in T 1472/22, the theoretical possibility of the retrieval and filing of A35 at an earlier stage of the proceedings did not justify the rejection of its admittance under Art. 12(4) and (6) RPBA. The board pointed out that, in the case of T 1472/22, the decision was based on an auxiliary request filed by the patent proprietor during the oral proceedings before the opposition division. Thus, the opponent had no cause prior to these oral proceedings to file its evidence of a public prior use directed against the subject-matter of this auxiliary request. The board’s conclusion in that decision referred to the theoretical possibility to anticipate amendments in auxiliary requests that had not yet been filed by the patent proprietor, whereas, in the case in hand, the main request had already been filed with the reply to the notices of opposition.

The board then assessed whether the circumstances of the appeal case justified the admittance of A35 into the appeal proceedings (Art. 12(6), second sentence, RPBA). Replying to an argument of the opponents, the board did not see how its conclusion (different from the opposition division), that claim 1 of the main request did not enjoy the claimed priorities, could in any way justify the late filing of A35, given the fact that the opponents had challenged the priority claim during the first-instance proceedings. The board also explained that in view of its considerations in points 2.2. to 2.3 of the Reasons (which are based on the primary object of the appeal procedure), neither the explanation provided for the late filing of A35 (difficulties to retrieve the document) nor the assertion that the patent proprietor was already aware of its publication justified the admittance of A35. Likewise, the asserted prima facie relevance of A35 claimed by the opponents did not suffice as a justification for its admittance in the appeal proceedings. The board also noted in this regard that the opponents' argument appeared inconsistent with their claim that A35 did not dramatically alter the assessment of inventive step..

The board did therefore not admit A35 into the appeal proceedings under Art. 12(6), second sentence, RPBA.

In T 1285/23 the proceedings initially started with the Receiving Section's refusal to add GB as a designated state. In J 13/18 the Legal Board dismissed an appeal against that decision. It interpreted Art. 76(2) EPC and concluded that adding GB as a designated contracting state would contravene it, because GB had been withdrawn as a designated contracting state in the parent application at the time of filing the application at issue. The Legal Board also decided to admit neither the submissions under R. 139 EPC filed with the statement setting out the grounds of appeal nor the new submissions (made during the oral proceedings before it) based on the principle of good faith..

Before the examining division, the appellant then requested that the application be updated such that GB be included as a designated state, basing this on the principle of good faith, arguing that this reasoning had not been admitted by the Legal Board in J 13/18 and requesting that it now be admitted. In a communication the examining division not only gave a preliminary opinion on the request to add GB as a designated state under the principle of good faith, but also on a request for correction. The examining division explained that: "For the sake of completeness, and taking duly account of the decision of the Legal Board of Appeal not to admit the request under Rule 139 EPC (see point 2 of J 13/18), the Examining Division will also examine whether the requirements for a correction under Rule 139 EPC are met." In its subsequent submissions before the examining division the appellant based its request both on the principle of good faith and on the correction of an error. In the decision under appeal the examining division decided that neither the principle of good faith could be applied nor could the request for correction under R. 139 EPC be granted. The request to include GB as a validly designated state for the present application was thus refused..

In the present appeal, the board explained that by dismissing the appeal the Legal Board in J 13/18 had issued a conclusive decision on the request of the appellant to include GB as a validly designated state in the application, rather than admitting the late-filed lines of argument (including that of the principle of good faith) and remitting the case to the department of first instance for further prosecution.

The appellant argued that res judicata applied to the reasoning of a decision, rather than to its order. Given that its request was based on the principle of good faith and the Legal Board had not considered this line of argument in substance, it argued that decision J 13/18 had no effect of res judicata on its current request. As long as the proceedings were still pending, any new line of argument in support of the same request could be brought and be considered by the competent department provided it did not contradict the earlier decision.

The board disagreed and held that the effect of "res judicata" emanating from J 13/18 could not be limited by the board's reasoning on which the decision was based. If a party were allowed to pursue the request decided upon in that decision again, this time on the basis of new facts, it would open the possibility to render the legal effect of that decision null and void, a legal consequence specifically not foreseen for decision J 13/18, which cannot be appealed.

During the oral proceedings, the appellant relied on numerous passages of decision T 2194/22. The board distinguished T 2194/22 from the case in hand in two respects. First, T 2194/22 was not concerned with a case where the board had finally settled a request. The discussion in T 2194/22 concerned the binding effect, under Art. 111(2) EPC, of the first board of appeal decision T 2371/18 on the opposition division, and in particular whether a claim request, which had not been admitted by the competent board, could be considered in substance by the opposition division in subsequent proceedings. Secondly, the facts underlying the competent board's decision in T 2371/18 (the first appeal in the proceedings leading up to T 2194/22) for not admitting the claim request in question were not the same as the facts before the opposition division after remittal, because a new objection had been introduced in the post-remittal proceedings. In the case in hand, no such change in the factual situation had occurred.

In conclusion, the board held that the examining division was not competent to decide in substance on the appellant's request to add GB as a validly designated state in the application. The decision was void and formally to be set aside. By issuing a decision on a matter in respect of which it was not competent, the examining division had committed a substantial procedural violation.

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.

Dans l'affaire T 2271/22 la division d’opposition a rejeté l'opposition conformément aux dispositions de l'art. 101(2) CBE. La requérante a demandé l'annulation de la décision de rejet de l'opposition et la révocation du brevet dans son ensemble.

Dans sa réponse au mémoire exposant les motifs du recours, l’intimée a déclaré qu'elle maintenait "toutes les requêtes déposées en 1ere [sic] instance". Ce n’était qu’en réponse à la notification selon l’art. 15(1) RPCR que l’intimée a précisé qu’il s’agissait bien de la première requête subsidiaire déposée le 2 juin 2021 et de la deuxième requête subsidiaire déposée le 28 mars 2022.

La chambre a relevé que, dans sa réponse aux motifs du recours, l'intimée n'avait donné aucun argument pour soutenir la recevabilité et le fondement de ces requêtes subsidiaires au cas où la chambre partagerait le point de vue de la requérante en ce qui concerne les revendications telles que délivrées. En particulier, l'intimée était restée silencieuse sur la question d'une activité inventive basée sur les caractéristiques techniques ajoutées. La chambre a aussi noté que la requérante avait attaqué ces requêtes subsidiaires dans son mémoire de recours..

La chambre n’a pas accepté l’argument de l’intimée que, la décision attaquée ayant maintenu le brevet conformément à la requête principale, l’art. 12(3) RPCR, selon lequel le mémoire et la réponse doivent présenter de façon claire et concise les motifs pour lesquels il est demandé d'annuler, de modifier ou de confirmer la décision attaquée, ne s’appliquerait pas aux requêtes subsidiaires dans l’espèce. La chambre a clarifié que, si l'intimée demande de manière subsidiaire le maintien du brevet conformément à une requête subsidiaire, elle doit présenter dans sa réponse au mémoire de recours les motifs pour lesquels il est demandé de modifier ou de confirmer la décision attaquée et d'exposer expressément et de façon précise l'ensemble des requêtes, faits, arguments et preuves invoqués, même si cette requête subsidiaire avait déjà été déposée pendant la procédure d'opposition et jamais traitée par la division d'opposition. Par conséquent, les exigences de l'art. 12(3) RPCR n’étaient clairement pas remplies en ce qui concerne ces requêtes subsidiaires.

La présentation d’arguments quelques jours avant la procédure orale prévue ne pouvait, en l’absence de circonstances exceptionnelles, remplacer l’exposé exigé par l’art. 12(3) RPCR.

En conclusion, la chambre a considéré que les deux requêtes subsidiaires n'étaient pas motivées et, par conséquent, n'étaient pas recevables dans la procédure de recours (art. 12(3) et (5) RPCR).

In T 2194/22 the main request was identical to auxiliary request 1 filed on 11 February 2022, which was admitted and found to be allowable by the opposition division, and was in substance identical to auxiliary request II "new" filed during oral proceedings before the board on 28 April 2021 and not admitted in the board's earlier decision T 2371/18, even though auxiliary request 1 filed on 11 February 2022 contained minor formal amendments. In view of auxiliary request 1 and auxiliary request II "new" being substantively identical, it was necessary to assess whether the findings in the board's earlier decision T 2371/18 on auxiliary request II "new" were binding for the examination of the admissibility of auxiliary request 1.

The board did not share the appellant's view that a board's decision not to admit a request is in any case absolutely binding in post-remittal proceedings as res judicata even if the facts underlying the decision are not the same. The board noted that in the case law of the Boards, the binding effect following from the principle of res judicata is not always clearly distinguished from the binding effect of the ratio decidendi pursuant to Art. 111(2) EPC and the decisions are sometimes not consistent as to which principle applies in specific circumstances (see, for example, T 1545/08, points 11 and 12 of the Reasons compared to T 308/14, points 1.2 and 1.3 of the Reasons). The principle of res judicata implies that the conclusive decision on a specific request is an absolute bar for reconsideration. The binding effect of the ratio decidendi is on the one hand narrower as it is limited to proceedings on the same application or patent following a remittal of the case and as it only applies insofar as the facts are the same. However, on the other hand, it is broader insofar as it is related to matters not covered by the res judicata but encompassed by the underlying reasoning (ratio decidendi) in the remittal decision.

Against this background, the strict application of the principle of res judicata was not adequate for decisions on the non-admittance of the parties' submissions, such as a late-filed claim request, insofar as such decisions are intermediate conclusions based on a specific procedural situation. The board's "decision" not to admit auxiliary request II "new" filed on 28 April 2021 in the earlier appeal proceedings which was only based on procedural reasons was not an absolute bar for reconsideration of an identical or equivalent request in proceedings subsequent to remittal. The binding effect of the ratio decidendi as set out in Art. 111(2) EPC did apply to the board's earlier decision in T 2371/18 not to admit auxiliary request 1 filed on 11 February 2022 but only insofar as the relevant facts remained the same.

The reasoning (ratio decidendi) in the board's earlier decision T 2371/18 for not admitting auxiliary request II "new" merely related to the procedural situation at that stage of the proceedings. In the board's earlier decision, it was held that the proprietor had been made aware of the particular objection under Art. 123(2) EPC at an early stage, and therefore could and should have filed the new request already with its reply, whereas filing the request only in the oral proceedings before the board was detrimental to procedural economy.

However, in the opposition proceedings subsequent to remittal, the procedural and factual circumstances within the meaning of Art. 111(2) EPC indeed changed insofar as the opposition division issued a preliminary opinion in which it presented a new objection under Art. 123(2) EPC against the then pending auxiliary request III. This request had previously been filed on 28 November 2018 with the proprietor's statement of grounds of appeal in T 2371/18. Auxiliary request III filed on 28 November 2018 was not assessed in the board's decision T 2371/18 but formed the basis for the remittal. In pursuing this request when re-entering opposition proceedings, the proprietor did indeed follow on from the situation that existed at the end of the first appeal proceedings. The objections raised in the communication of the opposition division were not identical to the objections referred to in the board's earlier decision T 2371/18. Thus, in the case in hand, the facts with respect to admittance of auxiliary request 1 within the meaning of Art. 111(2) EPC were not the same in the post-remittal proceedings. Hence, the binding effect of Art. 111(2) EPC did not apply. Re-filed auxiliary request 1 was therefore not inadmissible for procedural reasons (Art. 111(2) EPC) such that its admittance was subject to the discretion of the opposition division.

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 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.

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.