4.5.1 General principles
Article 13(2) RPBA provides that, for new submissions at the third level of the convergent approach to be taken into account, the party concerned must justify with cogent reasons that there are exceptional circumstances.
In T 482/19, for instance, the board found that the patentee had not provided any exceptional circumstances justified with cogent reasons, as to why the auxiliary requests in question had been filed only at a late stage of the proceedings (namely after notification of the summons to oral proceedings). Hence both auxiliary requests were not taken into account, in accordance with Art. 13(2) RPBA (see however also chapters V.A.4.5.1d) to V.A.4.5.1g) on the different interpretations of "exceptional circumstances").
In T 2423/19 the board underlined with reference to the explanatory notes relating to Art. 13(2) RPBA (Supplementary publication 2, OJ 2020, 60) that, if the board raises an objection in a communication, which in the party's view is raised for the first time, it is up to that party to explain precisely why they consider this objection not to fall under objections previously raised.
An exception may be found in T 1294/16. In this decision, the board held that there was no need for a party to put forward cogent reasons where the circumstances were beyond that party's control (e.g. board's judgment as to whether it can, without undue delay, deal with the submission at issue; other party's agreement) and a board, bearing in mind the purpose of the convergent approach, considered ex officio the circumstances to be exceptional (see also T 1790/17; on the different views of what constitutes "exceptional circumstances", see however chapters V.A.4.5.1d) to V.A.4.5.1g) below). A further exception is described in T 2465/19. In the board's view, considering that the amendments were filed following the express invitation from the board, requiring such an explanation from the appellant would be clearly counter-intuitive.
In T 552/16 the board did not admit a late-filed document, because exceptional circumstances for its late filing within the meaning of Art. 13(2) RPBA had neither been presented nor were they evident from the case (see also T 553/22).
Duties to provide justification can additionally arise under Art. 13(1) RPBA, which also applies to the third level of the convergent approach. In T 2360/17, for instance, the board did not admit the new request inter alia because the appellant's arguments did not constitute a justification for the amendment as required by Art. 13(1), first sentence, RPBA. On these duties under Art. 13(1) RPBA, see also chapter V.A.4.4.4.
- 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.