b)
Filing of requests during the oral proceedings 

Under Art. 15(6) RPBA 2007, the case should be ready for decision at the conclusion of the oral proceedings before the board, unless there are special reasons to prevent this. The board of appeals have developed several criteria in exercising its discretionary power to admit amended claims submitted for the first time during oral proceedings without any legally relevant excuse for the lateness. An amendment at a late stage is justifiable if it is an appropriate reaction to unforeseeable developments in the proceedings, – for example if it addresses comments or objections first raised in those proceedings (T 391/11, T 2385/11).

New requests can be considered only in exceptional cases, for example if a party is confronted with unexpected developments during the proceedings (T 1869/10, T 2219/12) or if it would be immediately apparent to the board, with little or no investigative effort on its part, that the new requests are clearly and obviously allowable (T 5/10, T 1912/09, T 2219/12). It is established case law that claims which are clearly not allowable will not normally be admitted. Thus, the general principle is that in order to be admissible, an amended claim belatedly filed in oral proceedings must be clearly allowable by virtue of a clearly permissible amendment (T 1273/04, T 1311/05, T 2238/09). It must be immediately apparent to the board, with little or no investigative effort on its part, that amendments successfully address the issues raised without giving rise to new ones (T 5/10). According to T 1315/08 (ex parte) an especially strict standard should be applied to such requests. As a rule, new requests not filed until the oral proceedings could only be admitted if they eliminated minor objections to an otherwise allowable claim or if they were a reaction to debate in the oral proceedings, especially where this reaction was to limit the claim even further.

In T 183/09 auxiliary requests 2 to 4 were filed at the oral proceedings. The board summarised by stating that unless an amendment is justified by developments in the appeal proceedings – for example if it addresses objections or comments first raised in the proceedings – it will be admitted only if it does not extend the scope or framework of discussion as determined by the decision under appeal and the statement of the grounds of appeal, and is moreover clearly allowable. From the above the board inferred that procedural economy, that is the need to conclude proceedings swiftly and so create legal certainty, plays an increasingly dominant role as appeal proceedings progress towards their end. In the final stages of an appeal procedure it may in fact come to outweigh all other factors in the balance of interests that the board must strike when deciding on the admissibility of new requests or of new facts and evidence (T 1993/07, T 532/08, T 562/09, T 1227/10, T 1354/11).

R. 116 EPC (R. 71a(2) EPC 1973) and Art. 13(3) RPBA 2007 have considerably restricted the scope for admitting in opposition appeal proceedings new requests first filed by the patentee in oral proceedings despite specification of a deadline for filing such requests in the summons notice. Such auxiliary requests could be refused as belated under R. 116 EPC, unless they had to be admitted on the grounds that the subject of the proceedings has changed (T 1105/98, T 913/03, T 494/04).

In T 1617/08 the board stated that the purpose of an oral hearing in appeal proceedings is to give the parties an opportunity to argue their case but not to give an appellant (patentee) the opportunity to repeatedly modify its requests until an acceptable set of claims is found.

In T 1790/06, in exercising its discretion the board also took account of the conduct of the respondent (patentee) during the oral proceedings. A party's obligations included taking care not to act in a manner detrimental to the efficient conduct of oral proceedings. At such proceedings, it should not for example submit requests willy-nilly, withdraw them and then resubmit them later. That was unacceptable, for both the board and other parties. Similarly, in T 2540/12 the respondent's behaviour impaired the efficient conduct of the oral proceedings and the board stated that this in itself was sufficient reason not to admit the new auxiliary request.

(i) Amended claims not admitted

In T 1105/98 the auxiliary request was not submitted until the start of oral proceedings before the board. The board had to make sure that the amended claims fulfilled the formal requirements and appeared likely to succeed, bearing in mind the time needed to ascertain this but also the right to be heard. These conditions were not fulfilled if a further search was needed, so that either the oral proceedings had to be postponed or the matter remitted to the department of first instance for further prosecution. The board in T 681/02 adopted the view taken in T 1105/98, where the board had held that, if the said request was intended as a response to the board's preliminary opinion in preparation for the oral proceedings, it could have been submitted prior to the time limit specified in that opinion, that is to say, up to one month before the oral proceedings.

In T 162/12 the discussion during the oral proceedings had been essentially limited to the objection raised in the board's annex to the summons, without any new issues coming up which could have left the appellant facing a new situation. Claim 1 of the auxiliary request 1 corresponded to the combination of claims 1 and 2 of the main request. However, the board had already expressed in its annex to the summons its preliminary opinion that the subject-matter of claim 2 of the main request did not involve an inventive step. The appellant therefore could have filed said auxiliary request, properly supported by arguments, sufficiently in advance for the board to prepare itself for the oral proceedings. In acting as it did, the appellant kept all its cards to itself whereas the board with its annex to the summons had laid its cards on the table. That could not be considered conducive to efficient proceedings.

In T 831/92, the board held that it was contrary to the principle of procedural fairness to file an auxiliary request during oral proceedings before a board of appeal because it was difficult for an opponent to deal with a request not submitted in good time before the oral proceedings (T 1333/05). In T 667/04 the board stated that no exceptional circumstances were put forward excusing the late filing of the request. To have admitted it would have run counter to the principle of procedural fairness (see also T 233/05).

In T 156/15 the appellant filed auxiliary request 19 after the chairman had announced the results of the board's deliberation on the main request and auxiliary requests 1 to 18, and filed auxiliary request 20 after the chairman had announced the result of the board's deliberation on auxiliary request 19. By its behaviour, the appellant (patent proprietor) was, as a matter of fact, adjusting its strategy to the results of the board's deliberation, which put the appellant (opponent) in a position where it was difficult to react. In deciding on the admission of such late-filed requests, respect for the principle of fairness of the procedure might make it immediately apparent that these requests should not be admitted, even without also considering specific criteria for the exercise of the board's discretion such as prima facie allowability.

During the oral proceedings in T 14/02, the respondent (patentee) requested the board's leave to file additional requests in order to limit the claimed subject-matter. The board refused the request on two grounds: firstly, the need for a new request had already been apparent before the oral proceedings since the board had already issued a communication containing a negative provisional opinion setting out why the main request did not appear to be inventive; secondly, the proposed subject-matter of the new requests would have required the other party to perform another search and might have resulted in a remittal.

In T 236/11 the amended claim consisted of a combination of features that had not been claimed in the proceedings before that. In view of the many different sets of claims filed during the proceedings before the opposition division, the board found the claiming of this combination at this late stage surprising, with the result that neither it nor the appellant was in a position to deal with the claim without postponing the oral proceedings or remitting the case to the department of first instance.

In T 732/11 (ex parte) the appellant's sole request was filed during the oral proceedings before the board, after the board had given its opinion that the previous request contravened Art. 123(2) EPC. The reasons for that opinion had already been presented to the appellant in the board's communication. The board stated that it would have been possible (and indeed incumbent on the appellant) to have prepared the request in advance of the oral proceedings, rather than obliging the board to interrupt the oral proceedings so that this could be done.

In T 2046/14 the board stated that, independently of its success in overcoming the objections, a piecemeal filing of auxiliary request(s) in a case where the relevant objections were known from the beginning of the appeal proceedings neither satisfies the requirements of Art. 12(2) RPBA 2007, nor satisfied the requirements of due process (efficient conduct of the proceedings) and the need for economy of the proceedings.

(ii) Amended claims admitted

In T 1067/03 (inter partes), the board regarded the clarifications in the auxiliary request as a response to the preceding discussion in the oral proceedings. Moreover, the amendment was not so complex that it would have made it impossible to reach a definitive decision in the oral proceedings.

In T 1045/08 the board considered that the auxiliary requests filed in the oral proceedings responded to objections to the earlier filed requests in particular in view of the newly introduced documents. In filing a relevant document shortly before oral proceedings a party must accept that the other party may file appropriate new requests also during the oral proceedings, which may raise issues not previously addressed in the proceedings.

In T 2097/10, the amendment entailed deletion of claim 1 and so eliminated the objections raised. Moreover, the then remaining independent claim, which was already in auxiliary request 1, was prima facie allowable. Since the amendment was restricted to deletion of a claim, it would not unnecessarily delay the proceedings.

In T 1589/11 the board raised no objection to the introduction by the opponent of new arguments not contained in the statement of grounds of appeal. That the board found these new arguments convincing only became apparent to the proprietor during the oral proceedings. Under these circumstances the board considered it equitable to allow the proprietor to formulate a response to this finding, especially as the new request could not be seen as adding greatly to the complexity of the case.

In T 2284/12 (ex parte) the board accepted that the auxiliary requests were filed in reaction to detailed comments and objections of the board that were debated in the course of the oral proceedings. The amendments made could be considered as an attempt by the appellant to overcome all pending objections. They did not raise new issues of particular complexity and contributed to the convergence of the debate. See also similar cases T 2485/10, T 391/11, T 1306/11 and T 1995/12.

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