4.5.4 Admittance of new requests
As a rule, patent proprietors must not wait to see which objections the board follows up in its preliminary opinion before filing amended claim sets in response to them and, as illustrated in chapters V.A.4.5.4a) and V.A.4.5.4f), instances of such behaviour are one situation in which the boards have frequently found that the proprietor's requests should have been filed earlier. Other decisions in which the boards have reached this conclusion are summarised below. However, in some of the case law, the boards have taken the view that, even in cases where the requests should have been filed earlier, exceptional circumstances can nevertheless arise in view of other factors (see in particular chapters V.A.4.5.4j) and V.A.4.5.4k)).
(i) Amendments should have been filed before the first-instance department
In T 2703/16 claim 1 of the main request and auxiliary request 1, filed for the first time less than two weeks before the oral proceedings, differed from claim 1 of the claim set underlying the appealed decision and of the claim set filed with the statement of grounds of appeal in that certain limiting features had been removed, with the result that the claimed method had significantly changed. According to the board, by deleting the limitations which had been introduced during the examination proceedings and maintained until its conclusion, the appellant had essentially reset the case and thereby let the appealed decision become irrelevant. Thus, a fresh case had been created. The board held that if it were to admit the new requests, it would be compelled to either give a first ruling on a significantly changed subject-matter, which would run counter to the primary purpose of appeal proceedings, or remit the case to the department of first instance, which would clearly be contrary to procedural economy. In addition, the board saw issues under Art. 84 and 83 EPC. In view of the above, the board decided not to admit the new requests into the appeal proceedings.
In T 1421/20 the board considered that the auxiliary requests at issue (0b', 0b'-1 and 0c'), which had been filed after the board had issued the summons to oral proceedings and which contained features which had never been included in any of the claims filed and discussed before the examination division, could and should have been filed during first-instance proceedings. Moreover, the board considered that it could not deal with requests comprising such features without undue burden, since it was not even certain that appropriate prior art was readily available in the file. Exercising its discretion under Art. 13 RPBA, the board decided not to admit the requests into the proceedings.
Similarly, in T 2154/19 the board considered that the amendments requested at the oral proceedings before it could already have been filed at the opposition stage after the opposition division had found the main request not allowable at the oral proceedings. According to the board, that several different claim sets would have to have been filed at that point to overcome all the different novelty attacks addressed in the opposition proceedings was by no means an exceptional circumstance within the meaning of Art. 13(2) RPBA.
In T 1058/20 (ex parte) the board explained that the principles underlying Art. 12(2), (4) and (6) RPBA can also be applied when assessing whether exceptional circumstances are present according to Art. 13(2) RPBA. Indeed, an amendment that would not have been admitted at the beginning of the appeal proceedings (as it could and should have been submitted during the first-instance proceedings) can normally not be justified at a later stage of the appeal proceedings either. In the case in hand, the board held that exceptional circumstances which could justify the admittance of the new first auxiliary request – restricted to only one of the previously claimed embodiments – were not present; the filing of a request limited to this embodiment would have been reasonable during the examining proceedings and the circumstances had neither changed in view of the impugned decision nor during the appeal proceedings. Moreover, the admittance of the new claim request would have changed the framework of the proceedings. The board pointed out that refraining from the submission of the new request in the first-instance proceedings contravened procedural economy. See also T 1639/18. On deletion of claims or claim alternatives, see also chapter V.A.4.5.4j).
(ii) Party initially addresses new objection raised in preliminary opinion only by providing arguments
In T 428/18 the appellant (applicant) argued that the amended main request, filed during the oral proceedings and attempting to overcome a new objection raised in the board's preliminary opinion, should be admitted because it had not understood the objection until the oral proceedings. However, in the board's view the objection in its communication was sufficient to inform the appellant of its concern. It was then up to the appellant to consider, at the earliest opportunity, whether it was necessary to amend the application and to carefully examine whether there was a basis for any such amendment in the application as filed. For the main request filed with its letter of reply, the appellant had chosen not to address the objection by making an amendment and instead argued that the objected-to features did in fact have a basis in the application as filed. Therefore, the board did not deem the circumstances mentioned by the appellant to be exceptional.
In inter partes case T 1937/19, in the board's view the respondent (patent proprietor) could and should have replied directly to the objections that the appellant had raised in its rejoinder against auxiliary request 2. The board emphasised that waiting for its preliminary opinion before making appropriate amendments was not commensurate with the purpose of the RPBA.
(iii) Board's opinion at the oral proceedings in essence confirms its preliminary opinion
In T 1870/15 the appellant argued that the board's claim interpretation at the oral proceedings could not have been anticipated. The board, however, observed that its communication pursuant to Art. 15(1) RPBA had provided a preliminary assessment of inventive step of the claimed subject-matter over D1 as closest state of the art, which had already been thoroughly discussed in the proceedings before the examining division. The board's claim interpretation at the oral proceedings was merely a further elucidation of its inventive-step assessment which did not have any influence on the determination of the distinguishing features of the claimed subject-matter over document D1 and was entirely consistent with its previously communicated preliminary opinion on this issue. This was regarded by the board as a normal course of events during a discussion at oral proceedings.
In T 545/19 the board's reasoning given during the oral proceedings differed from the shorter one in its preliminary opinion. But the board held that, this notwithstanding, the respondent had been informed of its preliminary negative opinion on the feature in question and could therefore not have been surprised that it came to a negative finding during the oral proceedings.
(iv) Requests replacing late-filed requests
In T 640/20 the respondent argued that it was the board's communication under Art. 15(1) RPBA that had first raised doubts based on Art. 12(6) RPBA about the admissibility of the auxiliary requests it had filed with its reply to the appeal. It therefore considered that the new sets of claims it had submitted in response had been filed at the first opportunity. However, the board could not see any exceptional circumstances in this course of events. In particular, it observed that the conditions for admissibility under Art. 12 RPBA applied irrespective of whether the opponent had raised a related objection (see T 1426/17).
According to the boards in T 2599/19 and T 380/21, their respective pointing to substantive issues in requests which were eventually not admitted under Art. 12(6) RPBA could not serve as a valid justification for the presence of exceptional circumstances.