4.5.1 General principles
Article 13(2) RPBA implements the third level of the convergent approach applicable in appeal proceedings. Art. 13(2) RPBA imposes the most stringent limitations on a party wishing to amend its appeal case at an advanced stage of the proceedings, namely after expiry of a period set by the board of appeal in a communication under R. 100(2) EPC or, where no such communication is issued, after notification of the communication under Art. 15(1) RPBA (see document CA/3/19, section VI, explanatory remarks on Art. 13(2) RPBA, published in Supplementary publication 2, OJ 2020, 60, as well as OJ 2023, A103 on the latest amendment of Art. 13(2) RPBA).
In the version of Art. 13(2) RPBA which entered into force on 1 January 2020 the third level was triggered, in cases where no R. 100(2) EPC communication had been sent, by notification of the summons; this is reflected in part of the case law presented in this chapter. However, in order to avoid that the third level of the convergent approach is triggered by an early summons, as from 1 January 2024 (see Art. 2 of the decision of the Administrative Council of 13 December 2023, OJ 2023, A103), it is for all pending appeal proceedings the notification of the communication under Art. 15(1) RPBA, rather than the summons, which triggers the third level.
Article 13(2) RPBA provides that any amendment to a party's appeal case made at this stage of proceedings will, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.
In numerous decisions the boards have emphasised the party needs to set out compelling reasons why the circumstances are exceptional, in the absence of which the submissions concerned are not admitted (see e.g. T 1107/16, T 2486/16; see however the exception stated in T 1294/16). See also chapter V.A.4.5.1c) below. Furthermore, Art. 13(1) RPBA – including the duties to provide justification it lays down – also applies to the third level of the convergent approach (see e.g. T 2360/17).
Applying Art. 13(2) RPBA, the boards have consistently refused at this advanced stage of the proceedings to admit new submissions that should have been made earlier and that were considered detrimental to procedural economy or the rights of the other parties (see in particular the decisions cited in chapters V.A.4.5.4f), V.A.4.5.4g), V.A.4.5.4h), V.A.4.5.4i), V.A.4.5.4m) and V.A.4.5.4q)).
However, in cases in which the unjustified late submission ran contrary to neither the principle of procedural economy nor the legitimate interests of a party to the proceedings, the boards have come to different conclusions in their interpretation of Art. 13(2) RPBA.
In some of their decisions, the boards have considered that there needs to be a causal link between the "exceptional circumstances" and the time of filing in the proceedings (e.g. T 2463/16, T 2486/16), or that the "exceptional circumstances" need to justify the filing of new submissions at this advanced stage of the proceedings (e.g. T 1904/16, T 482/19, T 1590/19, T 2795/19). This interpretation of Art. 13(2) RPBA is based on, among other things, the parties' duty to facilitate due and swift conduct of the proceedings (T 2843/19) and on the aim of ensuring fair proceedings for all parties (T 1904/16).
In many other decisions, however, the boards have interpreted "exceptional circumstances justified with cogent reasons" in a broader sense. In T 2920/18 the board pointed out in this context that it was clear from the explanatory remarks that the legislator had had the intention to give the boards discretionary power (Supplementary publication 1, OJ 2020, Annex 2, 221). In T 339/19 the board explained that, in each case, it was incumbent on the deciding board to balance the right to be heard with the public interest in doing justice in good time. In the same way, numerous decisions have considered "exceptional circumstances" to be circumstances in which admission did negatively impact neither the procedural rights of another party (or of the other parties in inter partes proceedings) nor procedural economy (see, for example, T 1294/16, T 101/18, T 1290/18, T 1598/18, T 2920/18, T 339/19 and T 2465/19). For further details see chapter V.A.4.5.4k) below. See also V.A.4.5.5b) to V.A.4.5.5 e).
On the various related interpretations of "exceptional", see also chapter V.A.4.5.1e). On the meaning of "in principle" in Art. 13(2) RPBA, see chapter V.A.4.5.1f).
These different interpretations of "exceptional circumstances justified with cogent reasons" within the meaning of Art. 13(2) RPBA also influence whether admissibility under Art. 13(2) RPBA is examined in one or two steps. See chapter V.A.4.5.1g) below.
As regards the applicable criteria for exercising discretion, there seems to be consensus that at the third level of the convergent approach the boards of appeal are free to apply the criteria set out in Art. 13(1) RPBA when exercising their discretion under Art. 13(2) RPBA in deciding whether to allow an amendment at this stage in the proceedings (see, for example, T 989/15, T 584/17, T 954/17, T 752/16, T 764/16, T 709/16, T 995/18, T 1780/20; see also T 1609/16 and T 1421/20, which apply these criteria without citing Art. 13(1) RPBA). In T 2429/17 the board held that at the third level of the convergent approach it could also use criteria that applied to the first level, i.e. the criteria set out in Art. 12(4) to (6) RPBA. See also chapters V.A.4.5.4 and V.A.4.5.5, which provide a more detailed description of the case law on admitting new requests or new facts, objections, arguments or evidence, arranged by specific procedural situation or topic.
- 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.