4.5.4 Admittance of new requests
In some cases involving objections or arguments that were not entirely new but had in fact already been submitted at first instance or in the opposing party's written submissions, the boards have nevertheless decided that filing requests in response at an earlier stage could not have been expected.
(i) Response to individual aspect of an overall unconvincing line of argument
In ex parte case T 916/21 the amendments made in auxiliary request 3 were a response to an explanation of the interpretation of the claims given in the board's preliminary opinion. The same explanation had already appeared in the contested examination decision, but there it was just part of a line of argument that was fundamentally unconvincing as a whole. In the board's view, the appellant could not have been expected to file amendments in response to this individual aspect of an overall unconvincing line of argument as early as when filing the appeal. The board therefore treated the amendments as a response to its preliminary opinion and admitted them on the basis that the request clearly met the EPC requirements and so it could take a decision without holding oral proceedings.
(ii) Early objection raised but not pursued by examining division
In T 922/17 the board took into consideration that, while the objection at issue had already been introduced by the examining division in an earlier communication, it was contained in neither the communication underlying the contested decision with respect to the main request nor the contested decision. The board therefore held that, in the case in hand, the fact that it had reintroduced the Art. 123(2) EPC objection in its communication under Art. 15(1) RPBA could be regarded as an exceptional circumstance within the meaning of Art. 13(2) RPBA. Moreover, the effect of the amendments at issue was readily apparent, such that the board was satisfied that the appellant had justified the amendments by cogent reasons as required by Art. 13(2) RPBA.
However, see also the following decisions, in which the boards considered the requirement of exceptional circumstances not to be fulfilled for objections or arguments that had already been raised by the examining division: T 2778/17, T 2279/16, T 14/20, T 1080/15, T 597/16, T 689/15.
(iii) Objection raised previously but without substantiation
In T 1224/15 the appellant (patent proprietor) had filed a new auxiliary request 3 in response to an objection raised by the board under Art. 123(2) EPC in its preliminary opinion. The respondent (opponent) contended that this objection had already been raised in its reply to the grounds of appeal. The board, however, observed that the respondent had merely referred to its notice of opposition and had not countered the arguments on which the contested decision was based, as was required under Art. 12(2) RPBA 2007. This objection was therefore disregarded. The board thus considered the amendment made in auxiliary request 3 to be a direct response to its preliminary opinion. Since this amendment (deletion of a dependent claim) also did not give rise to any new objection or entail any change to the arguments in support of insufficient disclosure and lack of novelty, the board found the new request admissible (Art. 13(2) RPBA).
(iv) Objection of opposition division not reflected in the appealed decision
In T 1771/17 the respondent (proprietor) filed new auxiliary request 2B in response to the board's objection under Art. 123(2) EPC against auxiliary request 2A in its communication under Art. 15(1) RPBA. The board considered that it was irrelevant whether the opposition division had already referred to the objected claim wording in its preliminary opinion, as this was in any case not reflected in the decision under appeal. Nor had the appellant raised this issue against auxiliary request 2A which had been filed with the reply to the appeal. Thus, the objection was not part of the appeal proceedings until it was mentioned in the board's communication and the respondent had no reason to file auxiliary request 2B earlier. Moreover, no new issues were raised by auxiliary request 2B. The board admitted this request.
(v) Response to further development of an argument
In T 1609/19, the appellant's arguments had developed at the oral proceedings and finally led to the board's conclusion on novelty. The board underlined that it was thus appropriate to give the respondent an opportunity to react to this new line of argument as it could not have anticipated the way in which the appellant's arguments would develop. The board held that a party's argument developing in such a way as to be decisive for the decision on the request, yet not being seen as a change of the party's case, was to be seen as an exceptional circumstance which in the present case justified taking auxiliary request 12 into account.
- T 0837/24
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.