4.2.2 First level of the convergent approach: amendments to a party's case – Article 12(4) RPBA
(i) Approaches to the "admissibly raised" requirement
In several decisions, the boards have based their approach on whether the department of first instance would have had to admit the submissions in question in accordance with the rules governing the first-instance proceedings, had such a decision needed to be taken (explicitly e.g. in T 1913/21, T 2395/22 and T 364/20, impliedly e.g. in T 446/22, T 731/22 and T 924/22).
In some of these decisions, the Guidelines were taken as the basis, either the version valid at the time the new submission was filed (T 1913/21, T 446/22, T 731/22, T 1178/23, the latter with detailed explanations; cf. also T 1659/22 and T 823/23), or the version valid at the time of the board's decision (T 924/22).
The board in T 364/20 determined which criteria were applicable to the department of first instance not primarily on the basis of the Guidelines but on independent criteria. The board held that, in view of Art. 114(2) EPC, as a rule, claim requests should have been admitted by the opposition division if they were filed within the time limit set under R. 79(1) EPC. However, based inter alia on R 6/19, in truly exceptional situations auxiliary requests filed within this time limit could be considered not to have been admissibly raised. Whether or not a claim request filed after the expiry of this time limit but before expiry of the period set under R. 116(1) EPC was to be considered filed in due time depended on whether this request was submitted in direct and timely response to a change to the subject of the proceedings. Concerning the exercise of discretion, the board referred to G 9/91 and held that a patent proprietor had in principle to be permitted to redefine its fallback positions in terms of auxiliary claim requests also at a late stage of opposition proceedings. The board acknowledged that lack of clear allowability could be a reason for the opposition division not to admit a late-filed claim request filed after the expiry of the R. 79(1) EPC time limit, as could be insufficient time for an opponent to deal with an amended claim request. Moreover, the criteria generally used by the boards when exercising their discretion to admit a party's submission in appeal under the RPBA could also be used, in a more lenient way however, in view of the administrative character of opposition proceedings. See also T 309/21. On the principles to be applied by the first instance, see also chapters IV.C.4. and IV.C.5.1.4 to IV.C.5.1.11.
In other decisions, the boards did not take the perspective of the first-instance department but formulated aspects or requirements to be considered in relation to the requirement of "admissibly raised" that were independent from the criteria applicable at first instance (albeit to varying degrees reminiscent of these criteria).
In T 1800/20, the board explained that the review of whether a part of the appeal case had been admissibly raised in the first-instance proceedings should take the following aspects, among others, into consideration: a) the time the submission was filed; b) the suitability of the submission to overcome the objections against the higher-ranking request; c) whether the submission creates new issues; d) the suitability of the submission to contribute to a convergent development of the first-instance proceedings (see T 1903/13).
In T 246/22 the board discussed the different approaches to the "admissibly raised" requirement. The approach taken in T 364/20 (slipping at least partly into the shoes of the opposition division) did not convince the board inter alia because determining what an opposition would have decided would be a "moving target". Neither did the board subscribe to the elaborate criteria proposed in T 1800/20, which, in the present board's view, could lead to rather harsh situations for the parties. Nor did the board endorse the conclusions drawn in decisions T 42/20 and T 476/21, where merely the timing aspect was considered. Instead, it proposed a new approach defining the following requirements. The party has to demonstrate:
1) that the requests had been filed in due time, typically before expiry of the time limit set by the opposition division under R. 116 EPC; and
2) that it had been made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they tried to overcome and how this was actually achieved.
See also e.g. T 1135/22, T 1749/22, T 2366/22, T 506/23 (by the same board); along similar lines, see also T 445/21.
In T 1659/22, the board took the term "admissibly raised" to mean "raised in the bona fide expectation that it would be admitted" and saw in this wording an expression of the principle of the protection of legitimate expectations generally applicable in proceedings before the EPO (G 5/88, OJ 1991, 137). As the patent proprietor had filed and substantiated its auxiliary requests in the opposition proceedings within the period under R. 116(1) EPC, the board considered that there had been such a legitimate expectation. It could not see anything that might have led the opposition division to exercise its discretion differently, for example a lack of substantiation (T 246/22), an excessive number of requests or diverging requests (T 1800/20).
And again in other decisions, without setting out a general approach for the criteria to be applied, the boards have based their conclusions regarding the "admissibly raised" requirement on the circumstances of the case, e.g. time of filing and (lack of) justification for not filing earlier (e.g. T 2978/19, T 108/20, T 543/20, T 274/20, T 996/20, T 778/21, T 886/21, T 1214/21, T 1650/21, T 842/22, T 1464/22, T 2036/22).
(ii) Party's duty to demonstrate
In several decisions the boards have emphasised the respective party's duty to demonstrate that a part of their case had been "admissibly raised" and have based their conclusions (inter alia) on the party's failure to fulfil this duty (T 3024/19, T 81/20, T 639/20, T 1081/20, T 309/21, T 631/21, T 1224/21, T 246/22, T 389/22, T 1135/22).
In T 246/22 the board explained, with regard to Art. 12(4) RPBA, that the ordinary meaning of "demonstrates" was that, as a general rule, the party making a submission bears the burden of showing that it was "admissibly raised and maintained". The lawmakers' idea was obviously not to put ex officio responsibilities on the boards and expect them to assume an investigative role, identify and track claim requests to their source, and understand why they were filed. Furthermore, the board held that, since the statement of grounds of appeal, with which the auxiliary requests were submitted, lacked any indication that they had been "admissibly raised and maintained", it had not contained the proprietor's complete appeal case (cf. Art. 12(3) RPBA). In this sense, there were temporal restraints on the "demonstration" required under Art. 12(4), first sentence, RPBA.
In T 1135/22, the board pointed out that right up to the end of the proceedings the patent proprietor had been unable to state precisely why the amendments at issue had been made. The patent proprietor's observation that the auxiliary requests had been filed within the time specified in accordance with R. 116(1) EPC was irrelevant since such requests could still be deemed "late-filed" under the case law. See also T 309/21.
(iii) Invoking other opponents' submissions
In T 920/20, the board could not derive any restriction under Art. 12(4) RPBA to the effect that each party on appeal could only base its case on matter that it had itself admissibly raised in the previous proceedings. Therefore, the board deemed it legitimate for an appellant to also use lines of attack raised by other opponents in the opposition proceedings. See also T 2036/22 (D42).
(iv) Time of filing – requests
In several decisions the boards have, according to the circumstances of the case, considered requests to be admissibly raised which were filed within the four month time limit for reply to the notice of opposition (see e.g. T 2114/19 and T 615/22; see also T 1214/21, where additionally a later correction under Art. 14(2) EPC had been carried out) or before or on the final date in accordance with R. 116(2) EPC (see e.g. T 42/20, T 221/20, T 476/21 and T 1464/22; see also T 108/20, where it was furthermore undisputed that the request had been admissibly raised, and T 1650/21 where additionally redundant text was deleted shortly before the oral proceedings in a request initially filed before the final date under R. 116 EPC).
However, in T 364/20 the board referred to exceptional situations where auxiliary requests filed within the time limit under R. 79(1) EPC could be considered not to have been admissibly raised (in line with R 6/19). Whether or not a claim request filed before expiry of the period set under R. 116(1) EPC was to be considered filed in due time depended on whether this request was submitted as a direct and timely response to a change to the subject of the proceedings. In T 1135/22 and T 309/21 too, the boards emphasised that the fact that the requests in question had been filed by the date fixed under R. 116(2) EPC was not decisive for the purposes of Art. 12(4) RPBA. See also T 246/22.
For filings after the final date set under R. 116 EPC, the boards have generally examined whether there was a justification as to why the submission in question had not been filed earlier (e.g. T 996/20, T 778/21, T 842/22, T 506/23). In the circumstances of the case before it, in T 996/20 the board considered a request as admissibly filed which had been filed at the end of the oral proceedings before the opposition division.
(v) Time of filing – objections or evidence
In T 1738/21 the board found that document E23 was admissibly filed in reaction to the opposition division's preliminary opinion. E23 was an extract from a handbook representing common general knowledge, which was prima facie relevant for the contested issue.
In T 221/20 documents, which were filed two weeks after the final date specified in accordance with R. 116 EPC, constituted in the view of the board a direct reaction to the submission of the amended requests and were "admissibly raised".
(vi) Reordered requests
In T 309/21, auxiliary requests 18 to 20, which were filed with the grounds of appeal, were identical to requests filed and maintained in opposition proceedings. However, higher-ranking auxiliary requests had been inserted before them. Thus, the overall sequence of auxiliary requests for consideration relative to the opposition had changed. The board pointed out that this materially changed the focus of auxiliary requests 18 to 20. And this had also led to a lack of convergence because the higher-ranking requests were based on combinations with dependent claims and included newly introduced features from the description. The board observed that in the case law of the boards of appeal such a change of case resulting from the introduction of higher-ranking requests had been regarded as an amendment (citing T 1185/17 and T 2112/16, with respect to Art. 13(1) RPBA, and T 1516/20 with respect to Art. 12(4) RPBA, see also the summary of the latter decision in chapter V.A.4.2.2d) (ii)). The board also noted that the proprietor had not presented any reasoning as to why the requests were admissibly raised at that stage of the opposition proceedings. In this respect the board held that not every claim request submitted before the expiry of the time limit set under R. 116(1) EPC was automatically admissibly raised (see e.g. T 364/20).
(vii) Convergence
In T 886/21, claim 1 of auxiliary request 6 in the opposition proceedings did not further restrict the subject-matter of claim 1 of auxiliary request 5 but the subject-matter of claim 1 of the main request. As such, claim 1 of each higher-ranking request had not been developed in a convergent manner. For the board, this alternative way of restricting the subject-matter, namely in a divergent direction, was not apt to bring the proceedings to an end, even retrospectively. The board pointed out that the issue of whether a new set of claims is convergent was a valid criterion for an opposition division to consider when exercising its discretion. Moreover, the board acknowledged that a significant part of the added feature was derivable solely from the description, concluding on the basis of these considerations that the request had "not been admissibly" raised in the opposition proceedings.
Likewise, in T 1800/20 auxiliary request 2' was already not convergent with the next-highest-ranking request at the time the request was filed in the opposition proceedings. In the board's view, the request could not be considered to have been admissibly raised for this reason alone.
For further decisions in which the boards applied or at least acknowledged the convergence criterion as applicable criterion for the exercise of discretion of the opposition division, see T 364/20, T 312/22 und T 309/21.
However, in T 1464/22, the board held that the mere fact that the request in question was not "convergent" with a previous request did not necessarily mean that it was not "admissibly raised" within the meaning of Art. 12(4), first sentence, RPBA. See also T 2254/17, citing T 996/12.
In T 2395/22 the board considered that the requests at issue were "sufficiently convergent" given the number of objections.
- T 1178/23
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).
- T 0823/23
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.
- T 1913/21
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.