d) Complexity of amendment

(i) New submissions not admitted

In J 3/20 the appellant (applicant) presented a completely fresh case concerning R. 139 EPC with the statement of grounds of appeal. The Legal Board considered that these submissions would imply complex legal and factual issues which were not addressed in the decision under appeal and would thus contradict procedural economy. The Legal Board therefore used its discretion not to admit these submissions into the appeal proceedings.

In T 652/20 the appellant raised for the first time in its statement of grounds of appeal an objection of lack of novelty over example 12 of E3 based on the argument that chitin (not only fibroin as previously alleged) anticipated a certain feature of granted claim 1. The board observed that this new reasoning raised an entirely new discussion regarding the properties of chitin. It therefore did not address the reasoning of the first instance decision as such, but merely the conclusion thereof. Moreover, in the board’s view, this new discussion would have introduced complexity and hence been against procedural economy. Accordingly, the new reasoning and the supporting evidence were not admitted into the appeal proceedings.

(ii) New submissions admitted

In T 3272/19 of 11 February 2021 date: 2021-02-11 D14, filed with the statement of grounds of appeal, consisted of a single table comprising a list of molecular weights which corresponded to a feature specified in operative claim 1. The board observed that D14 was not only easy to understand but also related to a feature which was essential for the outcome of the decision under appeal. It also noted that the appellant's (opponent's) arguments based on D14 were in support of the same line of attack as the one used during the opposition proceedings. The board underlined that, although D14 could have been filed earlier (since the feature the list related to was already present in claim 1 as granted), it had been filed at the first opportunity in reaction to the decision under appeal. In view of these circumstances, D14 was admitted pursuant to Art. 12(4) RPBA.

For further examples where the amendment did not lead to any complex subject-matter and was admitted, see e.g. T 1655/20 (ex parte, further limitation of the claim by deleting “particularly”), T 1617/20 (inter partes, deletion of one sentence in the description), T 1516/20 (inter partes, subject-matter of the claim limited by deleting a variant).