Résumé de Art 13(2) RPBA 2020 pour la décision T0172/22 du 07.05.2024

In T 172/22 the opponent (appellant) had lodged an appeal against the decision of the opposition division concerning maintenance of the patent in amended form on the basis of the then auxiliary request 42 (main request in appeal). The respondent (proprietor) submitted auxiliary requests 42a and 72a during oral proceedings before the board. Auxiliary request 42a corresponded to the main request with claims 1 to 3 deleted and was filed after the board had communicated its intermediary conclusion that claim 1 of the main request did not meet the requirements of inventive step. The respondent asserted that, according to T 1800/21, even if the submission of auxiliary request 42a was to be considered as an amendment to its case, the deletion of an entire category of claims would be admissible under Art. 13(2) RPBA. Recalling that the question of whether a deletion of a category of claims amounted to an amendment was answered differently by the boards, the present board was of the view that the filing of a new set of claims had to be regarded as an amendment to the appeal case, even if only a category of claims was deleted. Its admittance was therefore subject to the board's discretion (see e.g. T 494/18, T 2295/19, T 1569/17, T 2229/19). The board observed that the relevant objection on inventive step against claim 1 of the main request was already present in the opposition proceedings. The respondent would have been in the position to submit this request at least with its reply to the statement of the grounds of appeal. Thus, for this reason alone, there were no exceptional circumstances that could justify the filing of this new set of claims at this stage. Moreover, the deletion of all claims directed to a steel sheet for hot press forming (independent claim 1 and dependent claims 2 and 3) would de facto have required a discussion on the remaining independent claims 4 and 7 of the main request (claims 1 and 4 of auxiliary request 42a), even though this had so far appeared unnecessary and was contrary to the requirements of convergence and procedural economy (Art. 13(1) RPBA). In fact, a request without claims directed to the steel sheet in question but with remaining unamended independent claim 7 of the main request had never been filed by the respondent in the appeal proceedings. This would have imposed a shift of the discussion towards claim 7 of the main request, which was not included in any of the following auxiliary requests. In the board's view, the filing of auxiliary request 42a at this stage in the proceedings was a procedural "salami" tactic to determine which of the remaining independent claims of the main request could be kept unchanged, aimed at establishing an allowable set of claims. This could not be allowed, as it would be contrary to procedural economy (Art. 13(1) RPBA, cf. T 156/15). As a result, T 1800/21 did not apply in the present case. For the sake of completeness only, the board added that even if auxiliary request 42a were to be admitted into the proceedings, it still would not meet the requirements of Art. 123(2) EPC. The board then turned to auxiliary request 72a, which was filed as a reaction to the admittance of two new documents and the shift of the board's preliminary opinion on Art. 123(2) EPC. The relevant objection on added subject-matter was already present in the opposition proceedings and the respondent could have submitted this request at least with its reply to the statement of the grounds of appeal. A proprietor had to consider the possibility that the board could agree with a raised objection against the maintenance of the patent and had to react promptly. The change in the board's preliminary opinion did not constitute exceptional circumstances that could justify the admittance of auxiliary request 72a. Furthermore, the new documents were not decisive for the conclusions drawn with respect to Art. 123(2) EPC. The respondent had also failed to demonstrate that this amendment would not give rise to new objections that would have to be examined for the first time during the oral proceedings before the board, in detriment to procedural economy. Thus, the board did not admit auxiliary request 72a into the appeal proceedings either. In conclusion, the decision under appeal had to be set aside, and in the absence of an admissible and allowable request, the patent had to be revoked.