Résumé de Art 12(4) RPBA 2020 pour la décision T0019/20 du 08.03.2023

In T 19/20 claim 1 of the main request (patent as maintained by the opposition division) corresponded to claim 1 as granted, in which a part had been deleted. The board had to decide on admittance of the appellant's (opponent's) objection under Art. 123(3) EPC against this claim. According to the respondent, the opponent had not raised any objections under Art. 123(3) EPC against this claim during the oral proceedings before the opposition division. Indeed, it was clear from the minutes of the oral proceedings before the opposition division and from the contested decision that no specific objection under Art. 123(3) EPC had been raised against what was then auxiliary request 2 (later main request). However, as underlined by the board, it was also undisputed between the parties that the present objection under Art. 123(3) EPC was exactly the same as the objection raised against the main request of the opposition proceedings. The amendments in auxiliary request 2 were unrelated to the objection. This objection was discussed at the oral proceedings and fully dealt with by the opposition division. Moreover, the board considered that the objection had been maintained also against lower ranking requests such as auxiliary request 2, which differed from the main request by amendments unrelated to the objection, even if not explicitly repeated. In this respect, the board considered that the statement of the appellant that there were no objections under Art. 123(3) EPC against auxiliary request 2 had to be understood as expressing that there were no further objections. Hence, the condition of the second sentence of Art. 12(6) RPBA 2020 did not apply to the objection at issue. For these reasons, the board took the view that the appellant's submission under Art. 123(3) EPC was directed to an objection on which the decision was based and was therefore not an amendment of the appellant's case. The board had therefore no discretion not to take it into account. The board also had to deal with the admittance of a new line of defence against this objection under Art. 123(3) EPC, raised for the first time at the oral proceedings before the board. The respondent argued that the deletion did not change the scope of claim 1 because claim 1 was implicitly limited by said feature in view of the description of the patent, whereas previously in the rejoinder to the statement of grounds of appeal the respondent had argued that the deleted part was an added undisclosed feature without any technical meaning that could be deleted without violating Art. 123(3) EPC. The board held that the new line of defence raised new legal and technical issues and thus constituted a change of the legal and factual framework of the appeal, this was therefore an amendment of the respondent's case within the meaning of Art. 13(2) RPBA 2020. The respondent offered no explanation for the submission of this line of defence only at this stage, nor could the board discern any. In the absence of any exceptional circumstances, the new line of defence was not taken into account.