4.3.6 Submissions not admitted at first instance – error in the use of discretion – Article 12(6), first sentence, RPBA
According to Art. 12(6), first sentence, RPBA there are two criteria which can justify the admittance of the request under this provision: an error in the use of discretion or the circumstances of the appeal case (T 726/20). Similarly T 1017/20. In the following cases, the boards, after finding that the non-admittance by the opposition division was not affected by an error, examined the question of whether admittance was justified by the circumstances of the appeal case.
In T 1017/20 compliance of a previous main request with the requirements of Art. 100b) EPC had been discussed at the oral proceedings before the opposition division and denied by the opposition division and was the reason for the submission of the amended main request. The board held that, in this particular situation, the prima facie compliance of the main request on appeal with the provisions of Art. 100(b) EPC formed part of the circumstances of the appeal case that were to be considered for the purpose of applying Art. 12(6) RPBA. However, since the main request prima facie did not solve the issue discussed at the oral proceedings, it was not admitted.
In T 1589/21 the appellant (patent proprietor), in response to the preliminary opinion of the board, resubmitted requests that had not been admitted into the opposition proceedings. The appellant argued that since the board had a different opinion on added subject-matter from the opposition division, the appellant's situation had changed. However, the board did not find this argument persuasive, as in its preliminary opinion, it had merely agreed with the respondent on this issue. The respondent had raised this objection of added matter already in the notice of opposition and again in the reply to the appeal.
In T 500/20 the board considered that there was no apparent error in the opposition division's exercise of discretion regarding the admittance of E18, which was resubmitted on appeal. The board also observed that the subject-matter of the case, i.e. the claims at issue, was unchanged and concluded in its preliminary opinion that there appeared to be no new circumstances of the case that could justify the admittance of the new document in question at this stage. Since this conclusion was not challenged, E18 was not admitted into the appeal proceedings.
In T 1556/20 the board, having found that it could not recognise any error by the opposition division in the use of its discretion not to admit late-filed requests, noted that the circumstances of the appeal case were not different from those existing before the opposition division since the disputed issues remained the same. The board therefore decided not to admit these requests into the proceedings under Art. 12(6) RPBA.
In T 290/20 document D6 had been filed by the opponent after the date set by the opposition division under R. 116 EPC and less than four weeks before the oral proceedings, according to the opponent in reaction to the proprietor's late filing of auxiliary request 4 (single independent claim directed to a process). The opposition division had not admitted D6 as it considered that this document could have been filed earlier and that it was not more relevant than other documents already in the proceedings. The board however admitted D6 into the proceedings. The filing of auxiliary request 4 shortly before the date of the oral proceedings before the opposition division, and the arguments brought forward by the proprietor in support of inventive step of claim 1 of that request, represented a change in the course of the opposition proceedings, which justified the filing of a new document as a reaction by the opponent.
- T 0837/24
In T 837/24 the board dealt with two issues of admittance, the first being the admittance of an objection under Art. 123(2) EPC against the main request on appeal (identical to the "first auxiliary request" maintained by the opposition division). In the proceedings before the opposition division the opponent had raised this objection for the first time in response to the communication under R. 115(1) EPC against features of claim 1 of the then main request (patent as granted). These features were partly present also in "auxiliary request 1", the later main request. This new objection was not admitted by the opposition division based on a prima facie assessment. With regard to the first auxiliary request (main request on appeal) the decision under appeal merely indicated that the opposition division considered the subject-matter of claims 1 and 7 to be "compliant with the requirement of Article 123(2) EPC [...] for the same reasons as already provided in the context of the claims 1 and 7 of the patent", thus suggesting that the opposition division had conducted an assessment on added-matter in full, without however providing a different reasoning on that issue.
The board pointed out that, since compliance of auxiliary request 1 could not have been established without admitting the objection with respect to the then "main request", the decision under appeal was manifestly inconsistent. Moreover, the minutes of the oral proceedings before the opposition division stated the same facts. It could thus not be determined with certainty whether or not the opposition division had indeed admitted the opponent's late-filed objection into the proceedings. The board held that, to ensure the parties' right to be heard, at the oral proceedings before it, it first had to discuss and decide on the admittance of the late-filed objection under Art. 123(2) EPC.
The board found that, regardless of whether the opposition division committed an "error" when exercising its discretion within the meaning of Art. 12(6), first sentence, RPBA and irrespective of whether the added-matter objection was indeed admitted by the opposition division into the opposition proceedings, at least the "circumstances of the appeal case" justified admitting the late-filed objection into the appeal proceedings, inter alia for the following reasons. The claim construction argued by the opponent was technically meaningful and when the claim was so construed there was indeed no basis in the application as filed. In consequence, the late-filed objection was indeed prima facie highly relevant to the appeal case. Moreover, both parties had already discussed that issue in full in their first submissions on appeal and were thus in a position to present their full case on this issue. Regarding the proprietor’s argument that the opponent had not requested, during the appeal proceedings, admittance of this objection, the board considered that the opponent could have reasonably assumed that the objection was part of the proceedings. With regard to the proprietor’s argument that the opposition division had based its prima facie assessment on an interpretation of claim 1 initially also accepted by the opponent, the board pointed out that claim interpretation as such was a matter of law and could change as the proceedings evolve (see R 25/22, R 14/23). Moreover, a technically meaningful claim interpretation should not be ignored by a deciding body.
The second admittance issue dealt with by the board concerned auxiliary requests M-A and M-B filed in reaction to the board's preliminary opinion issued under Art. 15(1) RPBA. The board first recalled that a party prevailing in opposition proceedings is not relieved from its duty to timely prepare its case for the event of subsequent appeal proceedings. Indeed, each party should take into account that a board may depart from the preliminary view or decision issued by the first-instance department (e.g. T 614/21 and T 764/16), in particular when it comes to claim construction. However, the board concurred with the proprietor that it could not be objectively taken from the appealed decision whether the added-matter objection had been admitted into the opposition proceedings. It held that a self-contradicting or inconsistent decision of an opposition division may in itself constitute "exceptional circumstances" within the meaning of Art. 13(2) RPBA. Furthermore, there was also a causal link between the filing of auxiliary requests M-A and M-B, i.e. the amendment of the proprietor's appeal case, and the contradictory information as contained in the decision under appeal. The board thus decided to admit auxiliary requests M-A and M-B into the appeal proceedings in view of these exceptional circumstances.