Résumé de Art 13(2) RPBA 2020 pour la décision T1686/21 du 23.01.2024

In T 1686/21 the main request was filed by the respondent as auxiliary request 1f" during the oral proceedings before the board in reaction to the board's finding that the omission, in claim 1 of the patent as maintained, of a certain feature resulted - contrary to the assessment of the opposition division - in an unallowable intermediate generalisation of a specific embodiment disclosed in the originally filed parent application and therefore infringed Art. 76(1) EPC. The board noted that the specific combination of features now recited in claim 1 had never been claimed as such in any request filed by the respondent and that the addition of the feature at issue ("paddle shape" feature) - even though it had already been added to claim 1 of several other auxiliary requests - was an amendment to the respondent's appeal case. Regarding the admissibility of this amendment, the appellant (opponent) had argued that the omission of the "paddle shape" feature had been the subject of an objection both during the opposition proceedings and in its statement of grounds of appeal and that the respondent could and should have filed this request at the latest with its reply to the statement of grounds of appeal. However, the board considered the following circumstances of the case and concluded that they represented exceptional circumstances justifying the admittance of the main request in hand. The amendment under discussion was already present in several auxiliary requests filed during the first-instance proceedings and re-submitted by the respondent on appeal in order to address the objection raised by the appellant concerning omission of the "paddle shape" feature. In view of this, the appellant's objection of lack of substantiation was not justified. This amendment explicitly defined a feature that the opposition division had read - albeit erroneously, in the board's view - into the wording of independent claim 1. It clearly addressed and solved the issue under Art. 76(1) EPC raised against the patent as maintained. In view of the above, the amendment could not be considered surprising for the appellant in such a way as to negatively affect its position in the appeal proceedings, thereby giving an advantage to the other party. The amendment at issue did not give rise to new objections and was not detrimental to procedural economy. And, last but not least, in view of the large number of different objections raised under Art. 76(1) EPC, the number of requests to be filed at the very beginning of the appeal proceedings in order to provide appropriate fall-back positions for every possible outcome of the assessment of compliance with Art. 76(1) EPC would have been extremely high and therefore not compliant with procedural efficiency.