T 0989/15 - The rejoinder in appeal

Key points

• As to the present case: “the appellant [patentee] affirmed at the oral proceedings that the preliminary opinion of the board did not include any issues not already raised by the respondents in their replies of 15 December 2015 and 21 January 2016 to the statement setting out the grounds of appeal. The relevant objections of added subject-matter, lack of clarity and lack of novelty were therefore known to the appellant at the latest at the beginning of 2016, i.e. just short of four years before the preliminary opinion of the board was issued. As a consequence, there can be no doubt that the appellant could have replied to the objections earlier, in particular in direct reply to the respondents' letters of reply mentioned above.”
• “In fact, through the statement in its letter dated 3 December 2015 requesting "to provide the proprietor with an opportunity to reply to [a reply of the opponent directed to the proprietor's arguments and claim sets]", the appellant had expressed its intention to react to objections at an early stage of the appeal proceedings.
• In contrast, the appellant opted to wait until it had received the board's preliminary opinion given in the communication of 3 January 2020. Only after that the appellant filed a rejoinder.”
• The procedural step of the rejoinder of the appellant is implicitly specified in Art.15(1) paragraph 1, second sentence RPBA; see also Explanatory Note 13(2): “The intention behind the two-month minimum waiting time [between the respondent's response and the summons] is to give a party the opportunity to react to another party’s written reply with submissions falling under the less strict second level of the convergent approach, i.e. Art. 13(1).”
• “The board concurs with respondent II [opponent] that a party to appeal proceedings must always be prepared for the board to reverse a conclusion reached by the department of first instance in the proceedings leading to the impugned decision. The fact that the opposition division in point 5.1.4 of its decision gave a positive opinion, that the amendment of feature I met the requirements of Article 123(2) EPC, was in itself not a sufficient reason for the appellant to not file an appropriate fall-back position with its initial appeal submissions.”
• The OD had revoked the patent, finding that claim 1 of AR-2 was not novel. The Board's remark raises the interesting issue whether patentee should really address Art.123(2) - that was decided in its favour by the OD - in its Statement of grounds (thereby going against the idea of convergence at the first level) or in the rejoinder.
• I suggest using the term 'initial appeal submissions' as umbrella term for the Statement of grounds and the response of the respondent under reply under Art. 12(1)(c) RPBA

• This decision of Board 3.2.05 has verbatim the same headnote as recent decision T 0954/17 of Board 3.4.02, with different parties. 
• Which raises an interesting issue about the independence of the Board, incidentally.
• Erratum 26.07.2020 Which perfectly makes sense because the legal member was the same in both cases.  The idea of multiple Technical Boards of Appeal sharing a legal member is indeed improving the consistency of the case law.   
• For an analysis of the headnote, I refer to T 0954/17.

EPO - T 0989/15 link

Reasons for the Decision

Procedural status of parties

1. Under Article 107, second sentence, EPC, the parties to proceedings before the department of first instance are also parties to the ensuing appeal proceedings, even if they have not filed an appeal. Therefore, where more than one party to opposition proceedings lodges an appeal and one of them subsequently withdraws its appeal, it becomes a party as of right under Article 107 EPC, provided the other appeal(s) is(are) admissible.

2. Accordingly, after withdrawing its appeal during the oral proceedings before the board, opponent 2 became a party as of right under Article 107 EPC to the present appeal proceedings, i.e. respondent II.

Admittance of the appellant's main request and first to fourth auxiliary requests

3. The main request and the first to fourth auxiliary requests were filed with the letter dated 17 January 2020 as the fourth to eighth auxiliary requests. Thus, these requests were filed after the parties had been summoned to oral proceedings.

In the present case, the summons to oral proceedings was notified before the date on which the RPBA 2020 entered into force, i.e. 1 January 2020. Thus, in accordance with Article 25(3) RPBA 2020, Article 13(2) RPBA 2020 does not apply to the question whether to admit the appellant's requests filed on 17 January 2020 into the appeal proceedings. Instead, Article 13 of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007, see OJ EPO 2007, 536 and EPC, 16th edition, June 2016, pages 601 to 629) continues to apply.

4. Pursuant to Article 13(1) RPBA 2007, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. This discretion is 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".

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 of the Boards of Appeal of the European Patent Office ("Case Law"), 9th edition 2019, V.A.4.1.2). Nor do these criteria have to be met cumulatively. 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).

Essentially, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of its rights as early and completely as possible, in particular in inter partes proceedings, in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings (see Case Law, 9th edition 2019, V.A.4.1.2 and V.A.4.2.1). According to the established case law of the boards of appeal, amending a party's case at a late stage in the proceedings can be justifiable if it is an appropriate and immediate reaction to unforeseeable developments in the previous proceedings which do not lie in the responsibility of the party submitting the amendment (see Case Law, 9th edition 2019, V.A.4.4.2).

6. The present requests were submitted by the appellant "to address all objections put forward by the BoA and those of the opponents" (page 1 of the letter dated 17 January 2020).

Yet, the appellant affirmed at the oral proceedings that the preliminary opinion of the board did not include any issues not already raised by the respondents in their replies of 15 December 2015 and 21 January 2016 to the statement setting out the grounds of appeal. The relevant objections of added subject-matter, lack of clarity and lack of novelty were therefore known to the appellant at the latest at the beginning of 2016, i.e. just short of four years before the preliminary opinion of the board was issued. As a consequence, there can be no doubt that the appellant could have replied to the objections earlier, in particular in direct reply to the respondents' letters of reply mentioned above.

In fact, through the statement in its letter dated 3 December 2015 requesting "to provide the proprietor with an opportunity to reply to [a reply of the opponent directed to the proprietor's arguments and claim sets]", the appellant had expressed its intention to react to objections at an early stage of the appeal proceedings.

In contrast, the appellant opted to wait until it had received the board's preliminary opinion given in the communication of 3 January 2020. Only after that the appellant filed a rejoinder.

7. In this context the board wishes to remark that a communication under Article 15(1) RPBA 2020 is intended to set out the preliminary opinion of the board as guidance for the oral proceedings. Where the board's communication contains a preliminary opinion based solely on the issues raised by the parties and their arguments, that communication cannot be taken as a justifiable trigger for submitting new requests that the parties could have filed earlier (see also Case Law, 9th edition 2019, V.A.4.7).

8. The board concurs with respondent II that a party to appeal proceedings must always be prepared for the board to reverse a conclusion reached by the department of first instance in the proceedings leading to the impugned decision. The fact that the opposition division in point 5.1.4 of its decision gave a positive opinion, that the amendment of feature I met the requirements of Article 123(2) EPC, was in itself not a sufficient reason for the appellant to not file an appropriate fall-back position with its initial appeal submissions.

9. Also, the argument that the appellant could not have been expected to file an auxiliary request in reaction to each and every objection raised by the other parties does not persuade the board. In the present case, respondents I and II each brought forward one objection of added subject-matter to claim 1 of the then main request in their letters of reply dated 15 December 2015 and 21 January 2016. Given the circumstances of the case, it would not have posed an undue burden on the appellant as the losing party to file an auxiliary request addressing at least these two issues in an attempt to provide a fall-back position in case the board were to concur with the respondents.

10. By filing the claim requests at such a late stage of the appeal proceedings, the requirements of due process and the need for procedural economy were therefore not satisfied.

11. With the main request and each of the first to third auxiliary requests, the appellant filed an amended dependent claim 2 with the added feature:

"walls (26, 27) of the meandering channel (24) that are positioned next to each other have a distance (d) equal to two times an amplitude (a) of the sine wave".

The appellant argued that this amendment was a reaction to the view of the board expressed in point 11.3 of its preliminary opinion, in particular that "the amplitude configuration in pending claim 2 of the main request ... depends on the anti-symmetric feature, according to the claiming sequence in granted claims 4 and 5" (letter dated 17 January 2020, point 1.2.3.1). The amendment was alleged to have a basis on page 24, lines 28 to 31, of the description as originally filed.

12. Instead of addressing the objection of added subject-matter in respect of claim 2, which was raised by respondent I and referred to by the board in its preliminary opinion, the appellant chose to incorporate entirely new subject-matter taken from the description into the claim.

Admitting these requests would have meant having to analyse dependent claim 2 anew with respect to the requirements of the EPC, in particular Articles 84 and 123(2) EPC. Such an analysis would have been complex, requiring a substantial amount of time at this late stage of the appeal proceedings, contrary to the need for procedural economy.

The board is of the view that, at such a late stage, it is not reasonable for the other parties to be expected to deal with subject-matter never before presented in the proceedings, although it could easily have been done so at an earlier stage of the appeal proceedings, and that does not appear to be a clear reaction to the objections on file.

13. In this respect, the fourth auxiliary request differs from the higher-ranking requests because claim 2 under dispute is now deleted.

The fourth auxiliary request also seems to address the objection raised by respondent II in respect of feature I and summarised in point 11.2 of the preliminary opinion of the board, in that further features of the detailed description of Figure 3b were added to claim 1. The board further observes that the "initial thoughts" of respondent II "on whether the claims of the new requests would be 'clearly allowable'" (see the letter dated 5 February 2020) did not take issue with the fourth auxiliary request. This may be regarded as tantamount to a prima facie finding that the amendments successfully address the issues raised without giving rise to new ones.

Admittedly, in its letter dated 5 March 2020 (pages 13 and 14), respondent II saw a lack of clarity in view of the word "size" in feature J and alleged a lack of inventive step having regard to document E1. However, these issues correspond to a full assessment of the compliance of the request with the requirements of the EPC, rather than a prima facie consideration with the aim of deciding on its admittance. This is underpinned by the statement in the second paragraph on page 3 of that letter, in which respondent II expressed "that we hope to discuss at the oral proceedings if the first appellant's late-filed auxiliary requests are admitted into proceedings".

14. In view of the above, the board, in exercising its discretion in accordance with Article 13(1) and (3) RPBA 2007, decided not to admit the main request and the first to third auxiliary requests into the appeal proceedings for the reasons that they were filed at a very late stage and introduced new and complex issues in respect of features taken from the description.

15. The fourth auxiliary request, on the other hand, was admitted into the appeal proceedings by the board, exercising its discretion in accordance with Article 13(1) and (3) RPBA.

16. Furthermore, in some recent decisions where, as in the case now before the board, Article 13 RPBA 2007, and not Article 13(2) RPBA 2020, was held to apply, it was also considered that Article 13(1) RPBA 2020 applied 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).

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 4 and 5 above).

16.1 In cases where the summons to oral proceedings has been 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 which are 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, in exercising its discretion, 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).

16.2 With regard to the question whether, at the third level of the convergent approach, the provisions of Article 13(1) RPBA 2020 are to be applied in addition to those of Article 13(2) RPBA 2020, the board notes that Article 13(2) RPBA 2020 does not contain any explicit reference to the first paragraph of this 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 differently worded. In contrast to Article 13(2) RPBA 2020, the legislator has clarified in Article 13(1) RPBA 2020, 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).

16.3 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 of 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.

16.4 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). Since the board had already based its discretionary decision under Article 13(1) and (3) RPBA 2007 whether to admit the fourth auxiliary request into the appeal proceedings on 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 4 to 14 above), it saw no reason to apply the criteria of Article 13(1) RPBA 2020 in addition.

[...]

Conclusion on the appeal

21. Since none of the appellant's main request and first to fourth auxiliary requests is allowable, the appeal is to be dismissed.

Reimbursement of appeal fee

22. The appellant requested reimbursement of the appeal fee.

23. Rule 103(1)(a) EPC stipulates that the appeal fee has to be reimbursed where the board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

24. The precondition for reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC, namely that the appeal be allowable, is not met in the present case. According to established case law, "allowable" is to be understood in the sense that the board, in substance at least, "follows" the relief sought by the appellants, in other words that it allows their requests (J 37/89, OJ EPO 1993, 201, Reasons, point 6). That is not however the case here, since the appeal is to be dismissed (see point 21 above).

25. The request for reimbursement of the appeal fee is therefore to be refused.

Apportionment of costs

26. The appellant requests "apportionment of costs for all costs relating to the entire appeal proceedings" for the reason that the opposition division rejected a further auxiliary request as "fallback position" to a claim including the additional feature of original claim 2. According to the appellant, the lack of novelty of such claim had not been argued prior to the date of the oral proceedings before the opposition division.

27. Under Article 104(1) EPC, each party to opposition proceedings must bear the costs it has incurred. However, the board may, for reasons of equity, order a different apportionment of costs. According to established case law (see Case Law, 9th edition 2019, III.R.2), a different apportionment of costs is justified if the conduct of one party is not in keeping with the care required. In view of the provisions of Article 104(1) EPC and established case law, the board has no doubt that the conduct of the opposition division cannot justify a different apportionment of costs. Thus, Article 104(1) EPC does not apply in the present case. Article 16 RPBA 2020, which applies in accordance with Article 25(1) RPBA 2020, is also not applicable in the present case, since this provision refers to "a party".

28. The request for apportionment of costs is therefore to be refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee and the request for apportionment of costs are refused.