4.2.3 Second and third levels of the convergent approach: amendments to a party's appeal case – Article 13(1) and (2) RPBA
An amendment to a party's appeal case under Art. 13 RPBA is in analogy with Art. 12(4) RPBA (with reference to Art. 12(2) RPBA) a submission which is not directed to the requests, facts, objections, arguments and evidence relied on by the party in its statement of grounds of appeal or its reply. In other words, it goes beyond the framework established therein (T 247/20 and T 2988/18, endorsed e.g. in T 907/20, T 19/20, T 499/20). Parties must however be allowed to refine their arguments, even to build on them, provided they stay within the framework of the arguments and the evidence submitted in a timely fashion in the written proceedings (T 247/20, confirmed in T 2605/18, T 2623/18 and T 1132/22).
This definition was explained in T 247/20 as follows: the RPBA contained no definition of "amendment to a party's appeal case", but they assisted in defining what was meant by an "amendment" and by "a party's complete appeal case". Under Art. 12(3) RPBA parties needed to set out why the decision under appeal should be reversed, amended or upheld, and should specify expressly "all the requests, facts, objections, arguments and evidence relied on". Art. 12(4) RPBA defined what was meant by an amendment vis-à-vis the first-instance proceedings, namely everything that did not comply with Art. 12(2) RPBA. In effect, an amendment was – apart from a clearly defined exception – what was not "directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based". The board then transferred this definition to amendments to a party's appeal case. In the case in hand, the arguments which the appellant had presented during the oral proceedings and to which respondent 2 objected were all aimed at illustrating, refining or further developing the arguments already presented with the grounds of appeal and at countering the arguments made by respondent 2 in this context and, in the board's view, did not amount to an amendment of the appellant's appeal case.
In J 14/19, the Legal Board also found that, on a systematic interpretation, the question whether a submission resulted in an "amendment to a party's appeal case" within the meaning of Art. 13 RPBA had to be answered using the list of possible components of an appeal case in Art. 12(2) RPBA. Art. 12(3) RPBA likewise referred to those components. See also T 101/18 and T 1042/18.
In T 100/18, however, the board found that, while Art. 12(3) RPBA, invoked by the appellant (opponent), set out requirements to be met by the statement of grounds of appeal and the reply, it did not define what was meant by an amendment to an appeal case. The board thus looked only at whether the requirements under Art. 12(2) RPBA had been met. The content of the letter at issue in the case in hand, which had not been received until after expiry of the period for the reply, did not go beyond the requests, facts, arguments and evidence dealt with in the decision under appeal. It therefore met the requirements of Art. 12(2) RPBA and was aimed at achieving the main purpose of the appeal proceedings, namely a review of the decision under appeal in a judicial manner.
In J 14/19 the Legal Board further held that, at the level of the EPC, the possibility of refusing to admit late-filed submissions was provided for in Art. 114(2) EPC (supplemented by Art. 123(1) EPC for amendments to a patent or patent application). Under Art. 114(2) EPC, a late-filed submission containing factual elements could be disregarded. See also T 1042/18.
The board in T 482/18 only partly endorsed the view taken in T 1914/12 that the boards had no discretion when it came to admitting late-filed arguments based on facts already at issue in the proceedings. Art. 114(2) EPC 1973 (left unchanged by the EPC 2000 revision) was not a basis for rejecting arguments. However, the board interpreted "argument" narrowly, treating the term as equivalent to submissions concerning interpretation of the law (on this see, chapter V.A.4.2.3l) and V.A.4.2.3p)). It also rejected the view that facts apparent from the patent documents were part of the proceedings without having been expressly asserted (see chapter V.A.4.2.3n)).
- T 1223/23
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.
- T 0449/23
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.