Résumé de Art 12(4) RPBA 2020 pour la décision T0364/20 du 04.10.2023

In T 364/20 auxiliary requests 1 to 16 were filed before the opposition division on the final date for making written submissions (R. 116 EPC); auxiliary requests 5, 6 and 16 were identical to auxiliary requests 1 to 3 filed with the reply to the opposition within the time limit set under R. 79(1) EPC. The opposition division decided to reject the opposition and thus did not decide on the admittance of auxiliary requests 1 to 16, which were later refiled by the respondent (proprietor) with its reply to the statement of grounds of appeal. In the board's view, to judge whether a claim request was admissibly raised in opposition proceedings within the meaning of Art. 12(4) RPBA 2020, a board had to decide whether the opposition division should have admitted the claim request, had a decision on admittance been required. If so, the claim request was admissibly raised. With regard to auxiliary requests 5, 6 and 16 (identical to requests filed within the time limit set under R. 79(1) EPC), the board first explained that, for the purposes of Art. 114 EPC, a patent claim was to be regarded as a statement of technical facts in legal terms and thus qualified as "facts or evidence" within the meaning of Art. 114(2) EPC (T 1776/18). Since said requests had been filed at the earliest opportunity, Art. 114(2) EPC did not apply. Nevertheless, in the board's view, auxiliary requests filed within the time limit under R. 79(1) EPC could, in truly exceptional situations, be considered not to have been admissibly raised within the meaning of Art. 12(4) RPBA 2020. The board based this view on R 6/19, according to which the basis for an opposition division's discretion to admit or not claim requests was Art. 123(1) EPC, and on the wording of R. 79(1) EPC ("where appropriate"). However, since auxiliary requests 5, 6 and 16 in the case in hand were convergent and clearly reasonable in number, they were considered admissibly raised in terms of Art. 12(4) RPBA 2020. With regard to auxiliary requests 1 to 4 and 7 to 15 the board observed that they were filed after the time limit set under R. 79(1) EPC but before the expiry of the time limit under R. 116(1) EPC. The board held that it could not be considered that requests filed at this stage of proceedings were automatically filed in due time. Whether or not they were, depended on whether they were submitted as a direct and timely response to a change of the subject of the proceedings introduced by the opponent or the opposition division. In the case in hand, no reasons were mentioned by the respondent as to why auxiliary requests 1 to 4 and 7 to 15 had not been filed earlier. The board did not see any reasons either, especially since the opposition division's preliminary opinion had been in the respondent's favour and no substantial new submissions had been filed by the appellant in reply to this opinion. In other words, the subject of the proceedings had not changed. Therefore, the board considered auxiliary requests 1 to 4 and 7 to 15 to have been filed late and the opposition division had the discretion not to admit them. Concerning the exercise of discretion, the board referred to G 9/91 and held that to properly defend its patent a patent proprietor had in principle to be permitted to redefine its fallback positions in terms of auxiliary claim requests also at a late stage of opposition proceedings. The board acknowledged that lack of clear allowability could be a reason not to admit a late-filed claim request filed after the expiry of the time limit set under R. 79(1) EPC and before the expiry of the time limit set under R. 116(1) EPC, however not the sole reason. Whether an opponent had sufficient time to deal with an amended claim request was another criterion the opposition division might consider. However, at this stage of proceedings, if the appellant had considered that it did not have enough time to properly respond, it should have requested a postponement of the oral proceedings. Moreover, according to the board, the criteria generally used by the boards when exercising their discretion to admit or not a party's submission in appeal under the RPBA 2020 could also be considered when deciding whether or not a late-filed claim request submitted at this stage of proceedings should have been admitted by the opposition division and was thus admissibly raised in the opposition proceedings. However, when taking this decision, in view of the administrative character of opposition proceedings, these criteria should be used by the boards in a more lenient way than for a party's submission filed during appeal proceedings. In the case in hand, the board came to the conclusion that the auxiliary requests 1 to 4 and 7 to 15 had been admissibly raised, in particular since the divergence of the auxiliary requests was justified in view of the different inventive-step attacks and they constituted a reasonable redefinition of fall-back positions.