Résumé de Art 13(2) RPBA 2020 pour la décision T1968/18 du 31.08.2022

In T 1968/18 appellant I (patent proprietor) filed amended description pages during the oral proceedings before the board. Appellant II (opponent) took the view that an amended description constituted an amendment to the patent proprietor's appeal case within the meaning of Art. 13(2) RPBA 2020. The board noted that in J 14/19 the Legal Board had found that, in a systematic interpretation, the question of whether a submission resulted in an "amendment to a party's appeal case" within the meaning of Art. 13 RPBA 2020 had to be answered using the list of possible components of an appeal case in Art. 12(2) RPBA 2020. The Legal Board had concluded that submissions not directed to requests, facts, objections, arguments or evidence relied on in the statement of grounds of appeal or in the reply amounted to an amendment to the appeal case. In the board's view, applying this systematic interpretation in the case at hand meant that the filing of amended description pages resulted in an amendment to the patent proprietor's appeal case, even if they had been filed so that the description was consistent with the amended claims of the main request which were considered allowable. However, the board did not follow appellant II (opponent) according to which exceptional circumstances within the meaning of Art. 13(2) RPBA 2020 were only new or unforeseen developments in the appeal proceedings themselves. The term "exceptional circumstances" could also be interpreted more broadly (see e.g. T 713/14, T 1294/16, T 545/18, T 661/18 and T 1598/18). The board pointed out that it was established case law that if the claims of a patent as granted were amended, the description had to be made consistent therewith (see e.g. T 977/94 and further decisions cited in CLB, 10th ed., II.A.5.3.). While the board was aware of decision T 1989/18, it agreed with other, more recent, decisions (see e.g. T 1024/18 and T 121/20), in which adaptation of the description was still considered necessary in the event of inconsistency with the amended claims. In the board's view, in the case at hand, it was important to bear in mind that it was established practice of the boards of appeal to deal with the question of adapting the description only after the board had concluded that the claims of the patent as amended were allowable. It was therefore quite common for the description of the patent as granted not to be adapted until the oral proceedings, even if a set of amended claims had already been filed prior to the oral proceedings. In accordance with common practice, a remittal "with a description to be adapted" could be decided on even if the patent proprietor had not yet filed a description adapted to the allowable amended claims in the appeal proceedings (CLB, V.A.9.9.). Against this background, the board saw the exceptional circumstances within the meaning of Art. 13(2) RPBA 2020 as already existing in that the amended description pages were filed in order to adapt the description to the claims of the main request, which were considered to be allowable. The board remitted the case to the department of first instance with the order to maintain the patent with claims 1 to 12 of the main request filed by letter dated 12 December 2019 and a description to be adapted thereto. The board noted that Art. 11 RPBA 2020 only applied to cases that were remitted "for further prosecution". In the board's view, it did not apply to cases that were remitted with an order by the board to grant a patent or to maintain a patent in amended form, be it with or without adaptation of the description (see document CA/3/19, section VI, explanatory remarks on Art. 11 RPBA 2020, second paragraph).