4.4.5 Discretion under Article 13(1) RPBA – new requests
The question of whether requests should have been filed earlier is an important criterion for the exercise of discretion under Art. 13(1) RPBA (see also chapter V.A.4.4.4b) on a party’s duty to provide reasons for not amending its case at an earlier stage in the proceedings; some decisions also refer to Art. 12(6), second sentence, RPBA, which applies mutatis mutandis at the second level of the convergent approach (Art. 13(1), second sentence, RPBA, see e.g. T 938/20).
(i) Response to objection not considered critical by opposition division – high number of objections
In T 938/20 the appellant's (proprietor's) new main request, filed as auxiliary request 105 shortly before the notification of the summons to oral proceedings, was considered a fair reaction to opponent 2's objection raised under Art. 83 EPC in their reply to the appeal. This objection had already been raised in the notice of opposition but had apparently not been discussed during the oral proceedings before the opposition division (although it would have equally applied to a request then at issue). The board noted that the request could have been filed before the opposition division, but took into account the total number of objections raised by the opponents in opposition proceedings and that there was apparently no clear indication that it should have been filed in addition to the numerous requests filed before the opposition division, since the opposition division apparently did not consider this objection critical for the requirements of Art. 83 EPC. Therefore, there was no reason not to admit it when considering Art. 12(6) RPBA.
(ii) Response to new objections raised by the other party
In T 131/18 the board first of all assessed whether, hypothetically, it would have admitted auxiliary request 3 filed in response to the reply, because, apart from two amendments, its wording and content were identical to the new auxiliary request 6 now at issue. It considered auxiliary request 3 admissible for the following reasons: the main request the appellant had filed with its grounds of appeal had been a first attempt to remedy the infringement of Art. 123(2) EPC established in the contested decision and, as it had demonstrated, the further minor amendments made in auxiliary request 3 had simply been its response to the additional objections to that main request raised in the reply under Art. 123(2), Art. 83 and Art. 84 EPC. Moreover, auxiliary request 3 had not been filed so late that the respondent (opponent) had no longer been able to react. The board found that the amendments made overcame the existing problems without giving rise to any new ones and so concluded that it would have exercised its discretion under Art. 13(1) RPBA to admit auxiliary request 3. The editorial adjustments to that request which had been made in auxiliary request 6 in order to remove inconsistencies were also admitted under Art. 13(2) RPBA (see under chapter V.A.4.5.4 n)).
In T 524/18 the board considered the filing of auxiliary request B1 as legitimate and timely reaction to the filing of experimental reports with the reply to the statement of grounds of appeal, which experimental reports comprised new data in order to strengthen the respondent's position.
(iii) Response to clarification of objections
In T 32/16, with regard to the respondent's reasons for submitting the request in issue only in response to the board's preliminary opinion (Art. 13(1) RPBA applied instead of Art. 13(2) RPBA), the board highlighted the special circumstances of the case in hand, where the board's communication had crystallised for the first time what the board itself had deduced to be the relevant elements of the appellant's lengthy arguments concerning its objections under Art. 100(c) EPC. Although the appellant had stated that its set of arguments was always supposed to have been understood in the way the board had deduced, the board took the view that its statement could be understood as having identified the salient argument for the first time. The board also noted that the respondent's amended request had been submitted on the day it received the board's preliminary opinion.
(iv) Further examples where the reaction was considered timely and legitimate – inter partes
For further inter partes cases where the boards admitted new requests which were considered a timely and legitimate reaction, see e.g. T 32/16 (summarised in chapter V.A.4.4.5 d) below), T 2101/16 (legitimate reaction to clarification of Art. 83 EPC objection raised in statement of grounds of opposition), T 102/16 (inventive-step objection raised for the first time in the board's preliminary opinion, essentially a combination of two claims of the patent as granted, no need to adjourn).
(v) Examples where the reaction was considered timely and legitimate – ex parte
In ex parte case T 278/17 the amendments in the (sole) claim of the main request were a reaction to issues raised by the board for the first time during a telephone conversation with regard to auxiliary request 2. Auxiliary request 2 had in turn been a serious attempt to overcome all of the issues raised – mainly for the first time – in the communication under Art. 15(1) RPBA 2007. Since the amendments were directed to and clearly overcame all of the objections raised in the telephone conversation and the communication under Art. 15(1) RPBA 2007, the board admitted the new main request, having regard to Art. 13(1) RPBA and Art. 13(1) and (3) RPBA 2007.
For a further ex parte case, see T 2129/16 (request clearly overcame the clarity objection raised for the first time in the board's preliminary opinion).
(vi) In response to board's communication confirming the opposition division's or opponent's opinion
In T 136/16 the board considered the criteria under Art. 13(1) RPBA – which under Art. 25(3) RPBA applied in this case instead of Art. 13(2) RPBA – and exercised its discretion not to admit auxiliary request 1. It found, first, that the amendment made in auxiliary request 1 prima facie led to a new objection under Art. 84 EPC and, second, that this amendment could and should have been made at an earlier stage in the appeal proceedings. Indeed, in the contested decision the opposition division had already pointed out the fundamental importance of the interpretation of a disputed term in the claim. The opposition division had construed this term narrowly in the light of paragraph 7 of the description, but in its statement of grounds the appellant (opponent) had submitted detailed arguments contradicting this narrow interpretation on the basis of other passages of the description. Since the amendment had been made in view of an issue of fact that had already been discussed extensively, the respondent (patent proprietor) had already had cause to make it together with its reply. Its argument that the large number of attacks put forward prevented it from formulating meaningful auxiliary requests until it had the board's preliminary opinion did not convince the board either, given the fundamental importance of the interpretation of the term at issue in almost all the objections raised.
In T 1004/18 the board found that it had already been foreseeable for the respondent (patent proprietor) on the basis of the grounds of appeal that it would take the same line as either the opposition division or the appellant and that, accordingly, it should already have come up with auxiliary requests as a fallback position in its reply to the grounds of appeal. Therefore the board did not admit the auxiliary request in question.
The board in T 700/15 similarly held that a communication from the board which merely summarised and reiterated the interpretation already reached by the opposition division in the contested decision and advocated by the opponent in its reply to the grounds of appeal and did not include any new aspects or arguments or raise any new objection could not be taken as justification for filing new auxiliary requests that could have been filed earlier (referring to CLB, 9th edn. 2019, V.A.4.7). The requests were not admitted.
For a further case in which the new request was not admitted because the issues underlying the board's conclusions had already been raised in the decision under appeal, see T 1384/16.
For a further case in which an objection had been on file since the filing of the grounds of appeal and new requests in reaction to a statement of the board reiterating this objection were not admitted under Art. 13(1) RPBA, see e.g. T 1170/16.
For a case in which the new request was considered late because the objections it intended to overcome had been part of the appeal proceedings from the outset, but the request was nevertheless admitted in view of other discretionary criteria, see T 1597/16.