4.5.4 Admittance of new requests
In numerous decisions, the boards have treated situations in which the proprietor was first confronted with new objections, arguments or evidence in the communication under Art. 15(1) RPBA, in subsequent party submissions or at the oral proceedings as exceptional circumstances (with reference to the explanatory remarks on Art. 13(2) RPBA in Supplementary publication 2, OJ 2020, 60; see e.g. T 2461/17, T 1255/18). They have then admitted requests which, in terms of both their content and timing, were a justified response to those circumstances. It was sometimes the situation as a whole, including the justified response to the new objections, that was treated as amounting to exceptional circumstances; see chapter V.A.4.5.1 on the various different interpretations of Art. 13(2) RPBA.
When exercising their discretion in this respect, they have also relied on the criteria in Art. 13(1) RPBA and Art. 12(4) RPBA; on this, see chapter V.A.4.5.4e) "No carte blanche to amend claims at will – criteria set out in Articles 13(1) and 12(4) RPBA".
(i) Examples from ex parte proceedings
In T 1255/18, for instance, the board observed that, as was apparent from the appellant's (applicant's) submissions, the filing of the auxiliary requests concerned constituted not only a legitimate but also a timely response to the additional objection under Art. 76(1) EPC, raised by the board in the communication under Art. 15(1) RPBA. The amendment introduced into these auxiliary requests did not go beyond amending the feature whose presence in the higher-ranking requests had been newly objected to by the board. The board acknowledged that there were exceptional circumstances within the meaning of Art. 13(2) RPBA which justified taking the newly submitted auxiliary requests into account.
In T 2351/17 the board found that there were exceptional circumstances, given that it had raised a new objection under Art. 123(2) EPC in its preliminary opinion and that the amendments were designed to overcome that objection and did not give rise to any new ones.
For further ex parte cases where the board raised an objection or argument for the first time in its preliminary opinion or at the oral proceedings and considered this (partly together with the fact that the reaction to this objection was appropriate) to be an exceptional circumstance, see e.g. T 1870/15 (auxiliary requests aimed at overcoming new clarity objection), T 2461/16 (new clarity objection in provisional opinion an exceptional circumstance which justified the filing of new requests intended to overcome this objection), T 2429/17 (main request filed to address issues newly raised under Art. 84 EPC and Art. 123(2) EPC), T 1166/18 (legitimate reaction to objections under Art. 84 and 123(2) EPC), T 1768/20 (main request and auxiliary requests admitted as legitimate defence against fresh line of argument against inventive step).
(ii) Counter-examples from ex parte proceedings
A counter-example, where a board did not admit requests filed in response to objections or arguments raised for the first time at the oral proceedings, is T 2214/15 (summarised in chapter V.A.4.5.4i) "Repeated attempts at overcoming deficiencies"). The identification of problems newly introduced when the appellant attempted to solve issues discussed in the proceedings up to that point was to be seen as an ordinary development of the discussion.
In T 1869/18 the board emphasised that while objections raised by the board for the first time in a communication under Art. 15(1) RPBA could be considered to give rise to exceptional circumstances and could possibly justify the filing of amendments which specifically respond to the new objections, this did not open the door to additional amendments which were unrelated to the new objections. Similarly T 1190/17.
(iii) Examples from inter partes proceedings
In T 1756/16 a clarity objection to auxiliary request 1 filed with the reply was raised for the first time by the board, of its own motion, in its preliminary opinion under Art. 15(1) RPBA. The respondent (patent proprietor) sought to overcome this objection at the oral proceedings by filing a "new auxiliary request 1" containing just one minor amendment (lowering of the indices for intensity features "I44" and "I45"). The board found that its objection amounted to an exceptional circumstance justifying the filing of the auxiliary request at this stage.
In T 1482/17 the board admitted auxiliary requests filed during the oral proceedings. As regards the requirement that their filing be justified by exceptional circumstances, the board observed that adding another clarifying feature was a direct response to a new line of argument that the board had, of its own motion, raised for the first time during the oral proceedings. This line of argument was a departure from its preliminary opinion that the earlier auxiliary request 1 was allowable; this implied that there was little prospect of the other auxiliary requests being allowable either. In view of this exceptional circumstance, the board considered that, even at this late stage in the proceedings, the patent proprietor was entitled to be given a chance to overcome the newly raised objections. Moreover, the amendments amounted to an elaboration on the gist of the invention. In the board's view, both the amendments and the resulting subject-matter were technically straightforward and did not entail unexpected combinations. The new auxiliary requests also did not put the appellant (opponent 2) at a disadvantage because there was essentially no change in either the closest prior art or the invention's technical contribution.
Another case in point is T 135/17, in which the filing of the second auxiliary request during the oral proceedings before the board did not present a fresh case and could be regarded as an appropriate reaction to a novelty objection raised during the oral proceedings against the independent method claim of the first auxiliary request. Moreover, it did not increase the technical and procedural complexity of the case and the opposing party did not object.
For further examples of inter partes cases in which the proprietor was confronted with a new objection or argument raised in the board's preliminary opinion or at the oral proceedings and the board admitted the new request as a legitimate response taking into account further aspects, see T 1152/17, T 2091/18, T 655/19, T 935/19, T 953/20, T 974/20, T 1489/20, T 623/23. See also T 32/16 (in which 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); see however also T 1362/21, in which the board distinguished its case from T 32/16. See also chapter V.A.4.5.4e) "No carte blanche to amend claims at wish – criteria set out in Articles 13(1) and 12(4) RPBA".
(iv) Counter-examples from inter partes proceedings
The board in T 2632/18 explained that the mere fact that a "new" objection was raised by a board could not per se amount to "exceptional circumstances" within the meaning of Art. 13(2) RPBA (citing T 2271/18). Nothing else could be derived from the decisions cited by the appellant (T 1482/17 and T 1278/18). In both these cases, the aspect relating to "new objections" was considered as only one of several other criteria, including the complexity or the clear allowability of the amendments made (see also chapter V.A.4.5.4e) "No carte blanche to amend claims at will – criteria set out in Articles 13(1) and 12(4) RPBA".) In the case in hand, no new objection had been raised.
In T 2352/19 the board held that exceptional circumstances could only justify the admittance of a new request filed in response to a new aspect raised by the board, if this aspect was ultimately relevant for the board's final conclusion. Otherwise, the parties' right to be heard was not affected and there would be no reason for exceptions to be applied.