T 0954/17 - Art. 13(1) optional for very late submissions

Key points

• Similarly as held in T 0584/17, the Board analyses that the boards of appeal are free to use or not use the criteria set out in Article 13(1) RPBA 2020 when deciding, in the exercise of their discretion in accordance with Article 13(2) RPBA 2020, whether to admit an amendment made at this stage of the proceedings. 
• “This also holds true when Article 13 RPBA 2007, rather than Article 13(2) RPBA 2020, is to be applied” (in the present case, the summons were notified before 01.01.2020).
• “In the present case, however, the board does not consider it necessary to apply the criteria set out in Article 13(1) RPBA 2020 in addition to those which it may take into account when exercising its discretion under Article 13 RPBA 2007”
• “The [opponent's new] objection under Article 123(2) EPC is not complex and could have been dealt with by the board or the patent proprietor during the oral proceedings without the need for adjournment. Therefore, the board exercised its discretion under Article 13(1) and (3) RPBA 2007 and decided to admit the opponent's objection into the appeal proceedings.”
• “The board is of the opinion that the amendment to claim 1 meets the requirements of Article 123(2) EPC.”

EPO Headnote
At the third level of the convergent approach applicable in appeal proceedings in accordance with the revised version of the Rules of Procedure of the Boards of Appeal (RPBA 2020), the boards of appeal are free to use or not use the criteria set out in Article 13(1) RPBA 2020 when deciding, in the exercise of their discretion in accordance with Article 13(2) RPBA 2020, whether to admit an amendment made at this stage of the proceedings. This also holds true when Article 13 RPBA 2007, rather than Article 13(2) RPBA 2020, is to be applied. (See points 3.7 to 3.11 of the Reasons)

EPO T 0954/17 -  link

Reasons for the Decision

3. Admission of the opponent's objection under Article 123(2) EPC

3.1 By comparison with claim 1 of the patent as granted, claim 1 of the present request additionally defines the following:

"... that the presence of the slit member (500) causes the scintillator unit (300) to be irradiated with X-rays (S2) having a narrower width than the X-rays (S1) emitted by the X-ray emission device (200)".

3.2 The opponent argued that claim 1 did not meet the requirements of Article 123(2) EPC because the feature added from the description (paragraph [0072]) was taken out of its context and therefore constituted an unallowable intermediate generalisation.

Furthermore, the feature was in contradiction to the general teaching of the patent (see paragraphs [0038] and [0043] and Figure 3 of the patent specification), according to which only X-rays which passed through the slit reached the scintillator. The current claim, however, did not comprise this restriction, instead allowing other X-rays, e.g. X-rays on both sides of the slit, to reach the scintillator.

3.3 The patent proprietor argued that this objection was raised for the first time at the oral proceedings. As it constituted a "new case", this objection should not be admitted into the appeal proceedings.

3.4 In the present case, the summons to oral proceedings was notified before 1 January 2020. Thus, in accordance with Article 25(3) RPBA 2020, Article 13(2) RPBA 2020 does not apply. Instead, Article 13 RPBA 2007 continues to apply.

According to Article 13(1) RPBA 2007, the board has the discretion to admit and consider amendments made to a party's case after it has filed its statement of grounds of appeal or reply. The discretion has to be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA 2007 adds that amendments sought to be made after the oral proceedings have been arranged will not be admitted "if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

3.5 Article 13(1) RPBA 2007 merely lists examples of factors to be considered by the board when exercising its discretion and not an exhaustive set of criteria which must be cumulatively met, such that other considerations and well-established criteria relevant to the admissibility issue can also be taken into account (see Case Law, 9th edition 2019, V.A.4.1.2). Nor do these criteria have to be cumulatively met. According to the case law of the boards of appeal developed in the context of Article 13(1) and (3) RPBA 2007, for amendments within the meaning of Article 13 RPBA 2007, such as facts and evidence submitted late, further criteria may also be applied, for example the relevance of the late-filed submission, the reasons for the late filing, whether the late filing has to be regarded as an abuse of procedure and whether it is a legitimate reaction to the decision at first instance (see e.g. Case Law, 9th edition 2019, V.A.4.13). According to established case law, discretion has to be exercised equitably, i.e. all relevant factors which arise in the particular circumstances of the case have to be considered and, in exercising this discretion, the circumstances of the specific case have to be taken into account (see Case Law, 9th edition 2019, V.A.4.3).

3.6 In the present case, the opponent's objection under Article 123(2) EPC is an amendment to its appeal case within the meaning of Article 13(1) and (3) RPBA 2007. The board took into account the criteria set out in Article 13(1) and (3) RPBA 2007, as well as those developed by the case law in the context of those provisions (see point 3.5 above). The objection under Article 123(2) EPC is not complex and could have been dealt with by the board or the patent proprietor during the oral proceedings without the need for adjournment. Therefore, the board exercised its discretion under Article 13(1) and (3) RPBA 2007 and decided to admit the opponent's objection into the appeal proceedings.

3.7 Furthermore, in some recent decisions where Article 13 RPBA 2007 was held to apply instead of Article 13(2) RPBA 2020, as in the case now before the board, Article 13(1) RPBA 2020 was considered to apply in addition because this is not excluded by Article 25 RPBA 2020 (see e.g. decisions T 634/16 of 10 January 2020, points 7 to 14 of the Reasons, and T 32/16 of 14 January 2020, points 1.1.1 to 1.1.3 of the Reasons).

3.8 In the present case, however, the board does not consider it necessary to apply the criteria set out in Article 13(1) RPBA 2020 in addition to those which it may take into account when exercising its discretion under Article 13 RPBA 2007 (see points 3.4 and 3.5 above).

3.9 In cases where the summons to oral proceedings was notified on or after 1 January 2020, Article 13(2) RPBA 2020 implements the third level of the convergent approach applicable in appeal proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), first paragraph, first sentence; see also Supplementary publication 2 to OJ EPO 2020). Article 13(2) RPBA 2020 imposes the most stringent limitations on appeal submissions made at an advanced stage of the proceedings, namely after expiry of a period set by the board of appeal in a communication under Rule 100(2) EPC or, where no such communication is issued, after notification of a summons to oral proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), first paragraph, second sentence). Where an amendment is made to a party's appeal case at this advanced stage of the proceedings, Article 13(2) RPBA 2020 provides that it will in principle no longer be taken into account unless the party concerned has shown compelling reasons why the circumstances are exceptional. If such circumstances are shown to exist, the board of appeal may exercise its discretion and decide to admit an amendment made to the appeal case at this advanced stage of the proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), third paragraph, last sentence).

3.10 As to whether the provisions of Article 13(1) RPBA 2020 are to be applied in addition to those of Article 13(2) RPBA 2020 at the third level of the convergent approach, the board notes that Article 13(2) RPBA 2020 does not contain any explicit reference to the first paragraph of that article. However, the Explanatory remarks on Article 13(2) RPBA 2020 contain the following guidance:

"At the third level of the convergent approach, the Board may also rely on criteria applicable at the second level of the convergent approach, i.e. as set out in proposed new paragraph 1 of Article 13." (Document CA/3/19, section VI, Explanatory remarks on Article 13(2), fourth paragraph; emphasis added by the board.)

From this the board concludes that, at the third level of the convergent approach, the boards of appeal are free to use or not use the criteria set out in Article 13(1) RPBA 2020 when deciding, in the exercise of their discretion in accordance with Article 13(2) RPBA 2020, whether to admit an amendment made at this stage of the proceedings.

In this respect, Article 13(2) RPBA 2020 and Article 13(1) RPBA 2020 are also worded differently. In contrast to Article 13(2) RPBA 2020, in Article 13(1) RPBA 2020 the legislator has clarified, by means of the explicit reference in the second sentence to new Article 12(4) to (6) RPBA 2020, that the criteria specified in these paragraphs and already applicable at the first level of the convergent approach also apply accordingly to any submissions made at the stage when the second level of the convergent approach applies (see also document CA/3/19, section VI, Explanatory remarks on Article 13(1), second paragraph, second sentence).

3.11 Where, as in the present case, Article 13 RPBA 2007, and not Article 13(2) RPBA 2020, applies to a discretionary decision taken at the third level of the convergent approach, the board's view is that it is likewise free to use the criteria of Article 13(1) RPBA 2020 in addition. It is not apparent from either the transitional provisions of Article 25 RPBA 2020 or the Explanatory remarks why the use of the criteria in Article 13(1) RPBA 2020 should be any different when Article 13 RPBA 2007, rather than Article 13(2) RPBA 2020, is to be applied at the third level of the convergent approach.

3.12 At the same time, however, the board considers that the criteria of Article 13(1) RPBA 2020 correspond in essence to those developed by the case law in the context of Article 13(1) RPBA 2007 (see also decisions T 634/16, point 14, second paragraph, of the Reasons, and T 32/16, point 1.1.3, second paragraph, of the Reasons). In its discretionary decision to admit the opponent's objection into the appeal proceedings, the board took into account the criteria set out in Article 13(1) and (3) RPBA 2007, as well as those developed by the case law in the context of those provisions (see points 3.4 to 3.6 above). Therefore it saw no reason to apply the criteria of Article 13(1) RPBA 2020 in addition.
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4.3 The board is of the opinion that the amendment to claim 1 meets the requirements of Article 123(2) EPC.