Résumé de Art 12(4) RPBA 2020 pour la décision T0246/22 du 09.01.2024

In T 246/22 auxiliary requests 3 to 8 had already been filed during the opposition proceedings. However, the opposition division did not decide on them because a higher-ranking claim request had already been found allowable. The board noted that the decision under appeal was not based on these requests and that, pursuant to Art. 12(4), first sentence, RPBA, they were amendments "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal". The board explained that the ordinary meaning of "demonstrates" was that, as a general rule, the party making a submission bears the burden of showing that it was "admissibly raised and maintained". The lawmakers' idea was obviously not to put ex officio responsibilities on the boards and expect them to assume an investigative role, learn every detail of the first-instance proceedings, identify and track claim requests to their source, and understand why they were filed. The onus was no doubt on the amending party. The board acknowledged that Art. 12(4) RPBA itself did not stipulate a time in the proceedings by which it had to be demonstrated that the respective submission was "admissibly raised and maintained". However, since the statement of grounds of appeal, together with which the auxiliary requests were submitted, lacked any indication that they were "admissibly raised and maintained", it had not contained the proprietor's complete appeal case (cf. Art. 12(3) RPBA). In addition, there were increasingly demanding criteria for admitting new submissions made after the filing of the statement of grounds of appeal and the written reply (cf. Art. 13(1) and (2) RPBA). In this sense, according to the board, there were temporal restraints on the "demonstration" required under Art. 12(4), first sentence, RPBA. However, as an exemption from the general rule that the onus lies with the party, the board accepted that the minutes of the oral proceedings before the opposition division formed part of the basis of the appeal proceedings and that no further submissions on maintenance of the requests were required in the case in hand. Regarding the requirements for a party's demonstration that submissions were indeed "admissibly raised" in the opposition proceedings, the board discussed several approaches. One approach was that a board decides whether the opposition division should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required (see e.g. T 364/20). This would mean that a board - at least in part - should slip into the shoes of the opposition division. It would then have to infer, from the board's perspective, how the opposition division should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA. This approach did not convince the board inter alia because its subject could correspond to a "moving target" and the Guidelines were not binding on the boards. Neither did the board subscribe to the elaborate criteria proposed by the competent board in T 1800/20, which, in the present board's view, could lead to rather harsh situations for the parties. Nor did the board endorse the conclusions drawn in decisions T 42/20 and T 476/21, where merely the timing aspect was considered. Rather it proposed a new approach defining minimum requirements for the demonstration of "admissibly raised". According to this approach the party had to show: 1) that the requests had been filed in due time, typically before expiry of the time limit set by the opposition division under R. 116(1) and (2) EPC; and 2) that it had been made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they tried to overcome and how this was actually achieved. In the present case, according to the board, regardless of whether the proprietor's submissions made only in its reply to the board's communication under Art. 15(1) RPBA could be considered to be substantiated on time, the proprietor had failed to clearly indicate for what purpose the requests were filed, i.e. how the objections were concretely addressed and why they would be overcome. Consequently, they constituted amendments within the meaning of Art. 12(4) RPBA. Since the amendments gave rise to divergent claims requests and certain features were taken from the description, possibly leading to a fresh case, none of the auxiliary requests 3 to 8 were admitted into the appeal proceedings (Art. 12(4) RPBA).