4.5.4 Admittance of new requests

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.

In T 396/23 the patent proprietor requested at the oral proceedings that the decision under appeal be set aside and that the patent be maintained on the basis of the main request or on the basis of one of the auxiliary requests 1 to 16 as filed with its statement of grounds of appeal, or auxiliary requests 17 to 20 as filed with its reply to the opponent's appeal, or auxiliary requests 21 to 40 as filed in reply to the opponent’s rejoinder, or auxiliary request 41 or 42 as filed in reply to the communication under Art. 15(1) RPBA.

At the oral proceedings the board came to the conclusion that claims 1, 2 and 3 of the main request did not meet the requirements of Art. 83 EPC. Neither did auxiliary requests 1 to 40 which contained the features at issue. The subject-matter of claim 1 of the main request was also found to lack novelty over D1.

With regard to admittance of auxiliary request 41, the board observed that, when exercising its discretion under Art. 13(2) RPBA, it may also rely on the criteria set out in Art. 13(1) RPBA.

Auxiliary request 41 corresponded to auxiliary request 18 filed with the proprietor’s reply to the opponent’s statement of grounds of appeal, but with claims 1 and 2 removed. The remaining claim of auxiliary request 18, claim 3, was based on independent claim 16 as originally filed, i.e. it had been in the proceedings as an independent claim throughout (although it comprised all of the features of another independent claim). The board underlined that, by drafting claim 3 as one of three independent claims and by presenting arguments in respect of its patentability, the proprietor had clearly indicated its intention to defend this embodiment. Hence, the filing of auxiliary request 41 did not result in a situation for which the opponent or the board were unprepared.

The board pointed out that the admittance of auxiliary request 41 did not change the legal or factual framework of the case and did not require any new substantive discussion. A claim including the restriction contained in the sole claim of auxiliary request 41 had been included in the independent claims ever since the reply to the notice of opposition. A claim including two further features at issue of the sole claim had likewise been on file since the reply to the notice of opposition and had been discussed in the written proceedings. Indeed, the submission of auxiliary request 41 merely served to remove some of the points of dispute, without introducing any new aspect to be discussed, thus improving procedural economy.

The board concluded that the admittance of auxiliary request 41 was compatible with the principles of both procedural economy and procedural fairness and did not change or add anything to the subject of the appeal proceedings. In other cases where new requests were filed that satisfied these conditions, a considerable amount of case law had concluded that there were exceptional circumstances within the meaning of Art. 13(2) RPBA justifying the admittance of the new requests (see e.g. T 2022/22 and the decisions cited therein). The board therefore decided, in view of the circumstances above, to admit auxiliary request 41 into the appeal proceedings.

Since auxiliary request 41 was found to be novel and inventive, the case was remitted to the opposition division with the order to maintain the patent on the basis of auxiliary request 41 and a description to be adapted thereto.