Key points
- The Board, in machine translation: “According to Article 13(2) RPBA 2020, it is incumbent on the party wishing to change his or her appeal case to point out exceptional circumstances with cogent reasons. In the opinion of the Board, this means that it is not itself obliged to actively check whether exceptional circumstances have existed. However, the regulation does not go so far as to restrict the Board's exercise of discretion in such a way that it can only be based on the reasons put forward by the party concerned.”
- The OD rejected the opposition The patentee as respondent defended the claims as granted in its Appeal Reply Brief. With a letter of 08.12.2020 (after the summons), it filed a new Main Request. With a letter of 31.03.2021, after the summons for oral proceedings, it reverted to the claims as granted Main Request (with a new professional representative).
- Reverting to the claims as granted is a case amendment. Admissibility is subject to Art.13(2) RPBA. The change of representative is no exceptional circumstance.
- Nevertheless, “In the present circumstances, the board sees undue hardship for the respondent if the main request - namely the maintenance of the patent as granted - were not allowed to enter the proceedings again.”
- “it would not have been objectionable if the Respondent, instead of replacing the original main request with a new one, had supplemented the original main request with auxiliary requests. Then the board and the appellant should have discussed the main request in the matter and at least the admissibility of the auxiliary requests at the oral hearing. By allowing the reintroduction of the main request into the proceedings, the board and the appellant would be confronted with the same procedural situation. ”
- Moreover, admitting the request did not increase procedural complexity.
- The claims as granted are found to be not novel.
- Auxiliary Requests 1-3, submitted after the summons, are not admitted into the proceedings.
- Somewhat remarkably, the Board had stated at the end of the oral proceedings that: “Die Berücksichtigung von neuem Vorbringen im Verfahren geschieht nach Maßgabe der Artikel 12 und 13 VOBK 2020 (Amtsblatt EPA 2019, A63). Die Übergangsbestimmungen für die Verfahrensordnung sind in Artikel 25 VOBK 2020 geregelt. Zusätzlich zu den dort genannten Erfordernissen muss weiteres Vorbringen spätestens einen Monat vor der mündlichen Verhandlung vorliegen.” emhpahsis added.
- I suppose that the Boards in principle can add further rules regarding admissibility beyond Art.13(2).
EPO T 0664/17
Link to the decision after the jump, as well as an extract of the text of the decision.
source http://justpatentlaw.blogspot.com/2022/02/t-066417-cogent-reasons-under-art132.html
