Key points
- The patentee (respondent) files a new auxiliary request after notification of the summons.
- "The respondent argued that the first auxiliary request did not comprise any additional subject-matter since only claims 2 to 5 and claims 12 and 13 of the main request had been deleted in reaction to the Board's preliminary opinion as regards the objection under Article 100(b) EPC against claims 2 and 3 of the main request"
- "The Board follows decision T 247/20, point 1.3 of the Reasons, in that the examination under Article 13(2) RPBA 2020 is of a two-step nature (see also T 2988/18, point 1.2 of the Reasons), i.e. in that it is first necessary to examine whether there is an amendment to a party's appeal case. If that question is answered in the negative, there is no discretion not to take the relevant submission into account. However, if the question is answered in the positive, it is necessary to examine whether the party concerned has provided cogent reasons for the existence of exceptional circumstances which may justify the submission at such a late stage of the proceedings."
- "The question of whether Article 13 RPBA 2020 is applicable in the case of a mere deletion of claims, [...] is answered differently in the case law."
- "according to that systematic interpretation, the filing of an amended set of claims, even if the amendment is merely a deletion of claims and the remaining claims were already part of a set of claims in the appeal proceedings, constitutes an amendment to a party's appeal case. The Board finds the systematic interpretation of the term "amendments to a party's appeal case" convincing and endorses this view. "
- So, whether or not to admit the request is subject to Art. 13(2) RPBA.
- " the Board would first like to point out that Article 13(2) RPBA 2020 does not explicitly provide for discretionary power of the Boards. However, it is clear from the explanatory remarks that the legislator had the intention to give the Boards discretionary power (see Supplementary Publication 1, OJ EPO 2020, Annex 2, page 221, explanatory remarks in the third column, third paragraph, last sentence: "The Board may decide to admit the amendment in the exercise of its discretion."). This is also apparent from Article 13(1), first sentence, RPBA 2020, which in general provides for discretion for the admittance of amendments to the appeal case after the filing of the statement of grounds or reply. Furthermore, the exclusion of any discretion would hardly be compatible with Article 114(2) EPC."
- "In T 1294/16 the Board concluded that the word "in principle" should be ignored due to its ambiguity, because it was either redundant to the requirement of "exceptional circumstances" or would provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (cf. ibid., point 18.1 of the Reasons). The Board does not follow this approach, since a term contained in a legal provision should only be disregarded if no interpretation appears possible or if it appears to be manifestly contrary to the meaning of the provision, or if an interpretation cannot be reconciled with higher-ranking law"
- "On the contrary, the Board is of the opinion that a meaningful interpretation is readily possible. The principle laid down in Article 13(2) of the RPBA 2020 is precisely that amendments to a party's case shall not be taken into account at this late stage of the procedure ("in principle"). The exception to this principle then follows in the half sentence introduced by the phrase "unless", i.e. the principle that amendments to a party's case shall not be taken into account at this late stage of the procedure (i.e. "in principle") can be set aside if the existence of exceptional circumstances is demonstrated with cogent reasons. Such an interpretation is also consistent with the explanatory remarks to Article 13(2) RPBA 2020"
- Turning to exceptional circumstances: "the explanatory remarks appear to require causality in the sense that the amendments to a party's appeal case must have been triggered by exceptional circumstances.
- "However, in similar cases, some Boards have acknowledged exceptional circumstances provided that the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA, nor to the legitimate interests of a party to the proceedings. This specific procedural situation was considered an "exceptional circumstance" within the meaning of Article 13(2) RPBA 2020 (see T 1598/18, point 25.1 of the Reasons; T 1294/16, points 18.3 and 19 of the Reasons; T 339/19, point 1.5 of the Reasons)."
- "It should be noted that the wording of Article 13(2) RPBA 2020 does not require the amendment to be triggered by exceptional circumstances."
- As a comment, that's undeniable true. Based on the English wording, the exceptional circumstances must just "are" there. Any requirement for a nexus between the circumstances and the appeal case is implicit. (As a further comment, the wording requires that the party justifies the circumstances (in the English version). So, based on the literal wording of the provision, if the circumstance is a new objection raised by the Board, it is for the party to justify that circumstance).
- " It is sufficient for exceptional circumstances to exist, which can therefore also be of a legal nature. In the Board's view, such an interpretation does not conflict with the above explanatory remarks, which appear to illustrate only the main scenario under that provision that an amendment to the appeal case may be taken into account if it is made in reaction to exceptional circumstances."
- " In addition, a teleological interpretation which considers the purpose of the EPO's power to disregard late-filed facts or evidence and the discretionary power to refuse new requests as enshrined in Articles 114(2) and 123(1) EPC seems to support this conclusion. It follows from the preparatory documents ("travaux préparatoires") to the EPC 1973 (cf. T 122/84, point 11 of the Reasons; T 951/91, point 5.13 of the Reasons) that this procedural possibility is intended to prevent the parties from improperly delaying the proceedings. In particular, it serves to ensure the principles of procedural economy and of fair proceedings. It should therefore be noted that the power to disregard late submissions under the EPC does not constitute a procedural end in itself. In the Board's view, therefore, there is no reason, unless there is a risk of prejudice to the above principles, to disregard requests filed at a late stage of the proceedings aiming at maintenance of a patent in a particular version (cf. also T 339/19, points 1.3.3 and 1.5 of the Reasons)."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/08/t-292018-close-reading-of-art132-rpba.html
