4.5.4 Admittance of new requests
In many decisions, ex parte as well as inter partes, the boards have emphasised that a preliminary opinion of the board containing, or giving an opinion on, objections that were already part of the proceedings did not qualify as an exceptional circumstance within the meaning of Art. 13(2) RPBA (e.g. T 2778/17, summarised in chapter V.A.4.5.4a) (i) and the examples below). According to some of the case law, however, exceptional circumstances can nevertheless arise in view of other factors in such cases (see chapters V.A.4.5.4j) and V.A.4.5.4k)).
In several decisions the boards have pointed out that it was irrelevant for the purposes of Art. 13(2) RPBA whether the opinion in their communication diverged from a previous position or differed from the contested decision (e.g. T 752/16, T 2610/16, T 1962/17).
Objections or arguments that were confirmed in essence in the preliminary opinion were not considered as new objections, which could be a reason for providing the proprietor with a further opportunity to file new claim requests (e.g. T 3171/19, ex parte). For examples, see the summaries and further references below in sections (ii) and (iii). In some of these cases the board's reasoning departed to some extent from the objections previously raised (e.g. T 689/15) or refined/developed the previous argumentation (T 1080/15, T 450/20, T 599/21).
(i) Duty to substantiate why the objection is new
In T 42/17 the board recalled the principles set out in the explanatory remarks on Art. 13(2) RPBA (in CA/3/19, section VI), and in particular the following: if an appellant submitted that the board had raised an objection for the first time in its communication, it had to explain precisely why this objection was new and did not fall under objections previously raised by the opposition division or the respondent (opponent). The issues in question in the case in hand had already been discussed in the first-instance proceedings and had been referred to by the respondent in its reply to the grounds of appeal. The appellant (patent proprietor) therefore had to expect that the board might express a provisional opinion that was different from the opposition division's opinion. The appellant did not demonstrate that the board's provisional opinion contained any objection not raised previously. See likewise T 2423/19.
See also chapter V.A.4.5.1c) regarding more generally the duty under Art. 13(2) RPBA to provide cogent reasons to demonstrate exceptional circumstances.
(ii) Preliminary opinion confirming (in essence) objections or arguments raised by the examining division
In T 689/15 the application was refused because, inter alia, the subject-matter of claim 1 of the then first auxiliary request lacked inventive step over the combined disclosures of documents D1 and D2. The board's assessment of inventive step in its preliminary opinion was based on the same documents and the board identified the same closest prior art (D1). However, the board identified only one difference with respect to D1, whereas the examining division had identified two differences. As a result, the board defined an objective technical problem which was not as broad as the one defined by the examining division. But the board confirmed the examining division's assessment that the person skilled in the art would implement the teaching of D2 in the method known from D1. The board was therefore not convinced that the arguments set out in its preliminary opinion differed from the arguments set out in the decision under appeal to such an extent that they presented a whole new line of reasoning. Hence, the board saw no exceptional circumstances which would justify admitting the auxiliary request into the proceedings.
Similarly, in T 2279/16 the combination of documents on which the board based its inventive-step objection in its preliminary opinion was exactly the same as the one which had led to the refusal of the application, and hence this was not a new objection from the board (even if the board's reasoning differed in certain details). The board saw no exceptional circumstances.
In T 599/21 the board held that using a passage of the description to confirm the examining division’s broad interpretation of a term in the claims did not confront the appellant with facts previously unknown to it and did not constitute an "exceptional circumstance" which could justify amendments to the appeal case in the present case.
See also the following cases, where, in the board's view, its preliminary opinion did not raise a new objection which could have justified the filing of new requests: T 14/20 (examining division's assessment already based on the same understanding of the features and definitions at issue), T 1080/15 (objection raised by the board was a mere development of the objection originally raised by the examining division), T 597/16 (board's observations consistent with the decision under appeal), T 2486/16 (board, while departing in some respects from the reasoning of the examining division on inventive step, reached the same conclusion), T 1294/16 (board cited D7 as evidence that an argument of the examining division was based on common general knowledge, but exceptional circumstances acknowledged for other reasons; see chapter V.A.4.5.5k)), T 167/17 (board merely explained, in detail and by highlighting all relevant aspects, why it was of the preliminary opinion that the examining division had not erred in finding that the main request did not meet the requirements of Art. 76(1) EPC), T 1639/18 (board argued in essentially the same manner as the examining division), T 1058/20 (board's preliminary opinion merely confirmed the reasons given in the contested decision).
(iii) Preliminary opinion confirming (in essence) objections or arguments raised by the opposition division or the opponent
In T 1187/16 the board held that, where all objections addressed in a board's communication had already been raised earlier on in the proceedings, the communication could not be regarded as creating exceptional circumstances within the meaning of Art. 13(2) RPBA. The objections in this case had already been set out in detail, in particular in the reply filed by the respondent (opponent). The board thus concluded that the appellant had already had ample opportunity before notification of the summons to oral proceedings to respond to the existing objections by filing precautionary auxiliary requests. In the board's view, considerations of procedural economy and the fact that the appellant had filed the auxiliary request more than one month before the oral proceedings were irrelevant in such circumstances (for a different view, see however chapters V.A.4.5.1a) and V.A.4.5.1d)).
In T 121/19 the board held that its endorsing one of the opponent's arguments was neither surprising nor unforeseeable; it was instead in the very nature of a decision-making body's process of determining the legal situation.
In T 121/20 the respondent (patent proprietor) filed auxiliary request 1 in reaction to the board's preliminary opinion and argued that it appeared from this opinion that among the various objections of added matter raised by the appellant only one was convincing and that accordingly the amendments addressing the other objections were not necessary for meeting the requirements of Art. 123(2) EPC. The board, however, recalled that the preliminary opinion was predominantly intended to give the parties an opportunity to thoroughly prepare their arguments, but not to file new submissions.
In several decisions the fact that, in its communication under Art. 15(1) RPBA or at the oral proceedings, the board's opinion differed from the contested decision was not considered an exceptional circumstance within the meaning of Art. 13(2) RPBA.
The board in T 2610/16, for instance, refused to accept the line of argument put forward by the appellant (patent proprietor) that the amendment at issue had been made in response to the communication under Art. 15(1) RPBA and that there had been no need to file it during the opposition proceedings because the patent had been maintained as granted. The board instead pointed out that the objection (included in its communication) had already been raised in the grounds for opposition and reiterated in the grounds of appeal. In these circumstances, that the position it had taken in its communication differed from the contested decision was not a cogent reason justifying an exceptional circumstance within the meaning of Art. 13(2) RPBA. See also T 752/16 (summarised in chapter V.A.4.5.4h).
The board in T 1962/17 followed this case law (citing T 764/16 and T 2610/16). It also remarked that, in doing so, it was even sticking to the practice before the revised RPBA's entry into force on 1 January 2020 (see T 1906/17). For further examples, see T 1897/16, T 172/17, T 1422/17, T 1569/17, T 1717/17, T 1962/17.
In other decisions the boards have also addressed the question of whether the objection it had raised in its preliminary opinion went beyond the scope of the one already raised previously in the proceedings or the facts asserted in support of it.
In T 2539/16 the board found that this was not the case and that it had at most clarified the arguments made by the appellant on the basis of the facts already asserted.
Likewise, in T 2775/17 the board rejected the respondent's argument that it had only been on reading the communication with the board's preliminary opinion that it had been able to understand the tenor of the objections to its auxiliary request 2. The board found that its communication had not introduced any new aspect.
In T 1891/16 the clarity objection raised in the board's communication to claim 1 of the fourth auxiliary request had been explicitly submitted in the opponent's reply only in relation to claim 1 of the first auxiliary request. However, the same contested feature was also present, unchanged, in the fourth request. Since, in the board's view, this was readily apparent to the patent proprietor, it could have filed the fifth auxiliary request as an immediate response to the opponent's reply instead of waiting for the board's summons.
In T 2632/18 the board observed with regard to the case in hand that no new objections had been raised in the board's communication under Art. 15(1) RPBA. Only reasoning was provided as to why the appellant's arguments as regards novelty in view of feature (d) were not persuasive.
In T 450/20 the board pointed out that a party could refine an objection within the previously established framework without this automatically constituting an amendment of its appeal case which could justify the filing of a new claim request. This also applied to a board taking up and refining arguments introduced by a party (citing T 1891/20 of 15 November 2021 date: 2021-11-15). T 450/20 was followed in T 719/22, in which exceptional circumstances were denied. Similarly T 1656/20 (citing T 1891/20 and T 2563/17) and T 3258/19.