Résumé de EPC2000 Art 114(2) pour la décision T1776/18 du 05.10.2022

In T 1776/18 the board first dealt with the legal basis for not admitting amended claim requests. It cited a long line of case law according to which claim requests may be disregarded under Art. 114(2) EPC, as well as examples of case law in which the opposition division's discretion not to admit claim requests was considered to have its legal basis in Art. 114(2) EPC in conjunction with R. 116(1) EPC. The board also outlined an alternative view set out in R 6/19, in which the Enlarged Board held that the first sentence of Art. 123(1) EPC provided a legal basis for the EPO's discretion as to whether or not to admit claim requests. The Enlarged Board left open whether or not Art. 114(2) EPC constituted such a legal basis as well. In T 256/19, the board stated that discretion to disregard an amended version of a patent could only emanate from Art. 123(1) EPC in conjunction with R. 79(1), 81(3) or 116(2) EPC. There were further views in the case law on the legal basis for not admitting amended claim requests, including that R. 116(2) EPC was the only legal basis (see T 688/16). There were also decisions in which Art. 114(2) EPC in conjunction with R. 116(2) EPC was considered to be the legal basis for not admitting amended claim requests (e.g. T 2536/12, T 525/15, T 1758/15). The present board agreed with the case law according to which Art. 114(2) EPC constituted a legal basis for not admitting claim requests, concluding that in submissions containing claim requests which were explicitly or implicitly substantiated, factual elements were present. The presence of these factual elements allowed Art. 114(2) EPC to be relied on as a legal basis for disregarding claim requests which were not filed in due time (J 14/19). Applying Art. 114(2) EPC to amended claim requests and hence to the submissions of both opponents and patent proprietors also ensured that the parties were treated equally and according to the same criteria, which guaranteed equality of arms. Secondly, the board analysed whether the concept of "not submitted in due time" in Art. 114(2) EPC relied on fixed criteria, such as a certain point in time in the proceedings, or, alternatively, on relative criteria, such as individual procedural developments. The board spoke against relying on relative criteria. It observed among other things that, for appeal proceedings, the RPBA 2020 implemented Art. 114(2) EPC in a manner which in principle was binding (T 1042/18) and relied on fixed criteria in order to determine whether a Board had the discretion not to admit a certain submission. In the board's view this approach was also preferable for opposition proceedings as an approach relying on relative criteria tied to individual procedural circumstances had the grave disadvantage that the opposition division's discretionary power was then not clearly and predictably delimited by the law itself. The board noted that for opposition proceedings there were fixed points in time which allowed the deciding body to determine whether a submission had been filed "in due time" within the meaning of Art. 114(2) EPC. The board identified two such fixed points relevant to the present case (expiry of the period set under R. 79(1) EPC or the final date specified under R. 116(1) EPC). Since, in the case in hand, the relevant request had been filed only after the final date under R. 116(1) EPC, its submission was in any case late-filed. As to the exercise of its discretion, the opposition division had to bear in mind that in opposition proceedings more weight must be given to examination ex officio under Art. 114(1) EPC than in appeal proceedings (cf. G 9/91 and G 10/91, point 18 of the Reasons). As to the interpretation of R. 116(2) EPC when applied to opposition proceedings, the board did not share the views expressed in T 754/16 in which it is stated that requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent. The board held that the primary purpose of inviting the patent proprietor to file amended claim requests under R. 116(2) EPC was to expedite the opposition proceedings, and to prevent the patent proprietor from filing such requests after the date specified in R. 116(1) EPC. The board found that R. 116(2) EPC did not limit the opposition division's discretionary power under Art. 114(2) EPC and R. 116(1) EPC. In the board's opinion, as a rule, this discretionary power did not depend on the contents of the opposition division's communication under R. 116(1) EPC. However, if the opposition division invited the patent proprietor to file an amended claim request to address a specific objection and the patent proprietor complied with this invitation by filing the required amendments by the date set under R. 116(1) EPC, the opposition division's discretion not to admit that claim request may effectively be reduced to zero.