Résumé de Art 13(2) RPBA 2020 pour la décision T0116/18 du 28.07.2023

See also abstracts under Article 56 EPC and Article 112(1)(a) EPC. In T 116/18 (of 28 July 2023) the board decided at the oral proceedings not to admit the respondent's (patent proprietor's) submission that the facts underlying T 873/21 were analogous to the facts under consideration in the case in hand, so that, based on that decision, the effect demonstrated in D21 could be relied on. The board's final decision in the proceedings in hand was to grant the respondent's main request, i.e. to dismiss the appeal. The board nevertheless considered it appropriate to explain why the respondent's argument that the reference to T 873/21 should be taken into account because it was always possible to refer to case law was not convincing. According to the explanatory notes made as regards Art. 12(4) RPBA 2020, submissions by a party which concern only the interpretation of the law are not an amendment within the meaning of this Article. However, in the board's view, a distinction had to be made between an interpretation of the law based on a previous decision by the boards of appeal, on the one hand, and a reference to the specific factual and legal assessments of this previous decision and the allegation that this factual situation was the same as in the case pending before the board, on the other hand. As regards the interpretation of the law, the board explained that the boards of appeal were expected to be familiar with the relevant case law. They had to apply the EPC correctly and examine the relevant case law ex officio. If there was a contradiction between the interpretation of the EPC the board intended to follow in the case pending before it and the interpretation adopted in the earlier decision, the board in the case pending before it had to explain the reason for its deviation. In some circumstances, a referral might even be appropriate or necessary. Therefore, any reference to principles of law or interpretation of the EPC set out in previous decisions had to be taken into account. The board distinguished this case from the submission of a party that argued that the specific factual and technical situation underlying a particular earlier decision was similar to the factual and technical situation underlying the case pending before the board and that therefore the way in which the EPC was applied in that earlier decision should be followed. In the board's view, such a submission was not simply an interpretation of the law made by reference to an earlier decision. On the contrary, it contained both a statement of fact and its legal qualification. In order for the board to deal with such a submission in the case pending before it, it had to examine the factual situation on which the earlier decision was based and assess whether it was similar to or different from the one underlying the pending case. The board pointed out that, in general, doing so required not only a careful reading of the reasoning, but also consultation of the facts and submissions in the case underlying the earlier decision. For these reasons, the submission that the specific factual and technical situation underlying a particular earlier decision was similar to the factual and technical situation underlying the case pending before the board, such that the way in which the EPC was applied in that earlier decision should be followed in the pending case, was not only an interpretation of the law, but included a new allegation of fact. Since, in the case in hand, this new allegation of fact was made for the first time at the oral proceedings, the board concluded that it constituted an amendment to the respondent's appeal case. In the absence of any exceptional circumstances, the board decided not to admit this amendment (Art. 13(2) RPBA 2020).