T 0032/16 - Art.13(1) RPBA 2020 also for older filings

Key points

• The Board decides on the admissibility of auxiliary requests filed in appeal, before 01.01.2020 and after filing the initial appeal submissions. As in T 634/16, the Board concludes that Art.13(1) RPBA 2020 applies to requests filed before 01.01.2020 because the decision is taken after 01.01.2020. 
• The Board: “Since no exclusion or transitional provision exists concerning Article 13(1) RPBA 2020, it therefore applies to this case (see e.g. CA/3/19, page 62, explanatory remarks to Article 25(2) RPBA 2020).”
• “The Board cannot see any legal difficulty in such application, or that this might have been contrary to the intention of the legislator. Additionally, no contradiction can be found in the wording of Article 13(1) RPBA 2020 compared to Article 13 RPBA 2007. Indeed, when compared, the revised wording in Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion; the difference however merely reflects much of the case law developed under Article 13(1) RPBA 2007.”
• “The revised provision inter alia requires the party [] to provide reasons for submitting the amendment at this stage of the appeal proceedings. In exercising its discretion, the Board is to also consider whether the party has demonstrated that the amendment prima facie overcomes the issues raised by the appellant or by the Board and does not give rise to new objections. These are criteria and requirements that distill and crystallise the relevant case law since 2007 without altering the ambit of the provision.”
• About the admissibility of the new AR: “the [patentee's] argument that the Board's preliminary opinion went against all findings regarding Article 123(2) EPC to date is in itself not a persuasive reason for not having filed an appropriate fall-back position with its [initial appeal submissions].”
• However, in this case, the Board had singled out one argument from the " opponent's lengthy arguments concerning its objections under Article 100(c) EPC". Therefore, AR is admissible as it was filed quickly after the preliminary opinion of the Board and involves simple amendments addressing the issues found relevant by the Board. 
• “Demonstration of how these amendments overcame the objection, as argued by the [patentee], were thus, in this particular case where the lacking features as such had at least already been identified by the [opponent], self-evident in the amendments made.”
• note: see also T2227/15: “where the summons to oral proceedings or a Rule 100(2) EPC communication has been notified before 1 January 2020, Article 13(1) RPBA 2020 applies simultaneously with Article 13(1) and (3) RPBA 2007. Where such notification has been done after that date, solely Article 13 RPBA 2020 applies without exception”

EPO T 0032/16 -  link

Reasons for the Decision

1. Admittance of the main request

1.1 The main request was originally filed as auxiliary request 3 in response to the preliminary opinion of the Board. Its submission at that stage constitutes an amendment of the party's case. Its admittance is thus at the discretion of the Board under Article 13(1) of the Revised Rules of Procedure of the Boards of Appeal (RPBA 2020) and Article 13 RPBA 2007.

1.1.1 The first issue in the present case was for the Board to establish that Article 13(1) RPBA 2020 was indeed applicable in addition to Article 13 RPBA 2007. Although the discussion of this matter during the oral proceedings was not controversial, the Board considers it useful to add some explanatory remarks on this issue due to the very recent entry into force of RPBA 2020.

1.1.2 Article 25(1) RPBA 2020 states that 'the revised version (i.e. RPBA 2020) shall apply to any appeal pending on...the date of the entry into force, subject to the following paragraphs'.

The transitional provision of Article 25(3) RPBA 2020 results in the fact that Article 13(2) RPBA 2020 does not apply in the present case, since the summons to oral proceedings was notified before the date of entry into force of the revised rules. Instead it is stated that Article 13 RPBA 2007 shall continue to apply.

Since no exclusion or transitional provision exists concerning Article 13(1) RPBA 2020, it therefore applies to this case (see e.g. CA/3/19, page 62, explanatory remarks to Article 25(2) RPBA 2020).

This results in both Article 13 RPBA 2007, including its particular version of Article 13(1), and Article 13(1) RPBA 2020 being applicable at the same time.

1.1.3 The Board cannot see any legal difficulty in such application, or that this might have been contrary to the intention of the legislator.

Additionally, no contradiction can be found in the wording of Article 13(1) RPBA 2020 compared to Article 13 RPBA 2007. Indeed, when compared, the revised wording in Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion; the difference however merely reflects much of the case law developed under Article 13(1) RPBA 2007.

The revised provision inter alia requires the party (in this case the respondent) to provide reasons for submitting the amendment at this stage of the appeal proceedings. In exercising its discretion, the Board is to also consider whether the party has demonstrated that the amendment prima facie overcomes the issues raised by the appellant or by the Board and does not give rise to new objections. These are criteria and requirements that distill and crystallise the relevant case law since 2007 without altering the ambit of the provision.

1.2 In regard to the reasons for the request to have been submitted at this (late) stage of the appeal proceedings (Article 13(1) RPBA 2020, 3rd sentence) and the party's justification (Article 13(1) RPBA 2020, 1st sentence), and despite the appellant's objections thereto, it must first be noted that the respondent's argument that the Board's preliminary opinion went against all findings regarding Article 123(2) EPC to date is in itself not a persuasive reason for not having filed an appropriate fall-back position with its response to the grounds of appeal.

1.3 An assumption by a party that a Board's findings will not differ from those of the opposition division, even with no substantial change to the arguments having been presented, and responding to this objection by simply filing arguments without adopting a fall-back position, may be open to risk in certain cases, as the Board is evidently not prevented from reaching a different conclusion on the same issue. Nonetheless, in the present case the Board's communication did crystallise for the first time what the Board itself had deduced to be the relevant elements of the appellant's lengthy arguments concerning its objections under Article 100(c) EPC. Although the appellant stated that its set of arguments was always supposed to have been understood in the way the Board had deduced, the Board's statement (in this context, and despite what the opposition division had concluded) that the claimed term 'joined' did in fact appear to be of broader scope than the disclosed term 'bonded', could be understood as having identified the salient argument for the first time. It is thus accepted by the Board that the respondent's first opportunity to reply to this specific argument was after receiving the Board's preliminary opinion. It is thus in the context of the very special circumstances of this particular case, that the respondent's reasons for submitting the (now) main request at such a late stage of the appeal proceedings can be accepted.

1.4 It is also noted that the amended requests, which included the (now) main request as auxiliary request 3, were submitted on the day the Board's preliminary opinion was received by the respondent. It had thus responded without delay to the objections once these had been identified. It is furthermore noted that the respondent, after discussing the added subject-matter objections to claim 1 as granted (see minutes of oral proceedings) withdrew all its auxiliary requests save for the (now) main request, such that the respondent is found to have behaved in a procedurally economic fashion.

1.5 As regards the exercise of the Board's discretion concerning whether the respondent has demonstrated that the amendment prima facie overcomes the issues raised by the appellant or by the Board and does not give rise to new objections (as stated in Article 13(1) RPBA 2020 last sentence), this has also been taken into account as follows.

1.5.1 The main request directly addressed the objections of added subject-matter presented in writing by the appellant against claim 1 as granted. The amendments to replace the word 'joined' with 'bonded' and to include the hydrogel layer thickness of 0.5mm to 20mm in claim 1 were, despite the somewhat diffuse arguments around this, those features identified by the appellant as missing in claim 1 as granted and giving rise to its objections under Article 100(c) EPC against the subject-matter of claim 1 as granted.

1.5.2 In its written response, the respondent also stated from where the amendment was taken (Article 12(4) RPBA 2020, 2nd sentence), it being noted that the introduced terminology is an explicit recitation of the language used. Demonstration of how these amendments overcame the objection, as argued by the respondent, were thus, in this particular case where the lacking features as such had at least already been identified by the appellant, self evident in the amendments made. The amendments were also not complex (Article 13(1) RPBA 2007; Article 13(1) RPBA 2020 2nd sentence reference to Article 12(4) RPBA 2020) in any sense, nor was this argued to be the case.