Key points
- In this examination appeal, the Board gives a critical assessment of Article 13(2) specifying that certain amendments to party's appeal case “shall, in principle, not be taken into account, unless there are exceptional circumstances, which have been justified by cogent reasons by the party concerned”.
- “The Board finds Article 13(2) RPBA 2020 to be ambiguous.”
- The applicant had submitted an auxiliary request after receiving the Board's preliminary opinion. The reasons for filing the requests stated by the applicant are not exceptional circumstances according to the Board (r.17.3).
- The Board, on the meaning of ‘exceptional’ in Art. 13(2) RPBA 2020: “The exceptionality is hence not necessarily linked to events being exceptional in the sense of deviating from the expected, but can also be caused by considerations related to the legal framework, notably the principles underlying the rules of procedure” because the Explanatory Notes to Art. 13(2) mention as example the Board raising a new objection, “although the Board raising a new objection is in a situation that may not necessarily be qualified as exceptional in the (dictionary) sense of unusual or uncommon.”
- “If admittance of a (late-filed) submission is not detrimental to procedural economy this Board considers it appropriate to accept that "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 are present, and justified to admit the submission, provided that this does not adversely affect any other party. ”
- The Board, on “ justified ... by the party concerned”: “ if the Board, of its own motion, finds the circumstances exceptional in view of the purpose of the convergent approach, then cogent legal reasons need not be brought forward by the party.”
- The Board, on “in principle”: “The Board concludes that the term "in principle" should be ignored.” as the term is either redundant, or makes Art. 13(2) contradictory, or “it is unclear inter alia whether the term "in principle" is meant to provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (or where no cogent reasons were supplied for their justification).” (the Board in fact assuming such residue of discretion).
- See also T2155/15 of the same Board admitting a request under Art. 13(2) RPBA 2020: “The opponent had no objections to this auxiliary request being taken into account, and it was possible for the board to deal with the request without undue delay. Hence the board, of its own motion, found the situation to be exceptional, Article 13(2) RPBA 2020, no arguments in this respect from the respondent [patentee] being necessary. The board therefore admitted the auxiliary request. In so doing, the board concurred with the findings of T1294/16”
https://www.epo.org/law-practice/case-law-appeals/recent/t161294eu1.html
Reasons for the Decision
Auxiliary requests: admittance
(Article 13(1) and (2) RPBA 2020)
15. Article 13(1) RPBA 2020 states that any amendment to a party's appeal case after it has filed its grounds of appeal or reply may be admitted only at the discretion of the board. Article 13(2) RPBA 2020 further provides that any amendment to a party's appeal case made after notification of a summons to oral proceedings shall, in principle, not be taken into account, unless there are exceptional circumstances, which have been justified by cogent reasons by the party concerned.
16. The amendments to the first two requests with respect to the auxiliary requests as filed with the grounds of appeal consisted in the addition of the following specification of the form of single data array resulting from the first alternative predetermined rule: which is two-dimensional.
16.1 The appellant explained that the amendments were a reaction to the Board citing document D7. It clarified that the first transformation rule lead to data being transformed into a two-dimensional matrix, and not a linear array for storage into memory, which was the teaching of D7.
16.2 The Board accepts that this is the case but notes that it had introduced D7 only as evidence that an argument by the Examining Division was based on common general knowledge (see the summons, point 17). This is a development that the appellant should have foreseen and which does not change the objection in substance.
17. The third auxiliary request was filed during the oral proceedings before the Board. The appellant stated that the filing was caused by the explanations provided by the Board during the oral proceedings as to why no technical effect could be acknowledged, in particular the distinction made between mathematics, software and hardware. The amendment aimed to make clear the difference with D1 in terms of the mathematical equation used and the usage of just two loops for computation instead of three.
17.1 However, the Board's finding of a lack of inventive step is a confirmation of the same finding of the Examining Division. Furthermore, it was already set out in the summons to oral proceedings that the mathematical result was the same and that no technical effect could be identified in view of the lack of software and hardware specification. That the Board is not persuaded by the argumentation of the appellant is a foreseeable possibility.
17.2 The amendments to the third auxiliary request limit the claims in such a way that an argument important to the appellant finds basis in the claim. The appellant's interest to make a claim fit its arguments is not, in the Board's view, sufficient to justify the late filing of amendments.
17.3 As explained in points 16.2, 17.1 and 17.2 the Board holds that the reasons provided by the appellant have not established "exceptional circumstances" in the meaning of Article 13(2) RPBA 2020 for filing the three auxiliary requests at late stages in the proceedings.
18. It needs to be decided whether, in view of the very stringent wording of Article 13(2) RPBA 2020, the Board may admit the new requests nonetheless.
18.1 The Board finds Article 13(2) RPBA 2020 to be ambiguous.
source http://justpatentlaw.blogspot.com/2021/06/t-129416-i-close-reading-of-art-132-rpba.html
