Key points
- The Board decides on the admissibility of an auxiliary request that was filed before the OD but that the OD did not reach in their decision because the OD found a higher-ranking request allowable.
- The Board examines whether the request as admissible raised before the OD, under Art. 12(4) and concludes that this is not the case because the request was not convergent with the higher-ranking request. The Board refers to the framework of T1903/13.
- T1903/13 is Art.12(4) RPBA 2020 avant la lettre. See T 0494/18, r.3.7.5 for a different approach under Art. 12(4) RPBA 2007.
- However, the framework specified in T1903/13 concerns what is now Art. 12(4) fifth sentence, not Art. 12(4), first sentence, unless clause. The rules applied by the Boards for admissibility (i.e. the factors of the fifth sentence) are not necessarily the same as the rules to be applied by the OD, respectively governing the term 'admissibly raised' in the first sentence of Art. 12(4).
- Therefore, the request does not benefit from the unless clause of Art. 12(4) RPBA
- The Board, in translation: "3.7 Since auxiliary request 2' was not submitted in an admissible manner in the first instance opposition proceedings, its submission in the appeal proceedings represents a change in the patent proprietor's appeal submissions, the admission of which is at the discretion of the board. The board exercises this discretion to not admit auxiliary request 2' into the proceedings because its treatment would be incompatible with the requirement of procedural economy due to a lack of convergence (cf. T 1456/20, point 4.5 of the reasons for the decision)."
- Note the sanction of not falling under the unless-clause of the first sentence is that the second sentence of Art. 12(4) applies. Art. 12(4) fifth sentence provides that "The Board shall exercise its discretion [i.e. of the second sentence] in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (iii) and the need for procedural economy." (Roman numerals added)
- Note that the Board in the present case does not explicitly consider all three factors indicated in the RPBA. T 1456/20 r.4.5 held that the criterion of convergence is an expression of the principle of procedural economy of Art. 12 and 13, when deciding on admissibility under Art. 13(2). However, this does not mean that it is an overriding factor.
- Note that a submission being inadmissible raised in the first instance procedure in the sense of Art.12(4)(s.1) on the ground that it was raised and maintained in the first instance proceedings does not imply that Art.12(6), first or second sentence, applies, not even by analogy, neither that the discretion under Art.12(4)(s.2) is to be applied stricter, nor that it is an additional factor under Art. 12(4)(s.5). Such a rule can not be inferred from the RPBA 2020, nor would it be justified. The late filing of a request during the first instance proceedings that the OD did not reach causes no harm compared to filing it with the initial appeal submissions.
- Furthermore, convergence under Art.12(4)(s.5) should be examined with respect to the requests filed with the initial appeal submissions. Convergence under Art. 12(4)(s.1) with respect to the requests pending at some time during the first instance procedure.
- EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2023/11/t-180020-not-admissibly-raised-in.html
