T 2279/16 - Written submissions and not attending oral proceedings

Key points

• In this examination appeal, the Board issues Summons dated 13.02.2020 and a preliminary opinion on 21.04.2020. On 18.05.2020, the applicant writes that they will not attend oral proceedings and files two auxiliary requests. The oral proceedings are then cancelled.
• A first question is whether the auxiliary requests are to be admitted and whether Art.13(2) RPBA 2020 applies.
• “It is not explicitly stated in Article 13(2) RPBA 2020 whether this provision still applies if, following notification of a summons to oral proceedings, the oral proceedings are subsequently cancelled. In the Board's opinion, at least in the case where the cancellation of oral proceedings has been occasioned by an appellant's statement that it will not be represented at the oral proceedings, Article 13(2) RPBA 2020 is applicable.”
• " there is nothing in the wording of the article to indicate any exceptions to this, or that the effects of Article 13(2) RPBA 2020 are dependent on the subsequent procedural history of the case."
• Hence, the reason for inadmissibility under Article 13(2) is not that the submission are made too close to the oral proceedings. 
• Accordingly, a postponement of the oral proceedings most likely does not reopen the 'second stage' of Article 13(1) RPBA
• A question is whether this statement also applies to a remittal to the OD. Are submissions filed after notification of the summons by the Board (e.g. further auxiliary requests), as a rule admissible or not when the case is remitted to the OD without the Board taking a decision on the admissibility of these submissions?
• The Board also comments on the purpose of oral proceedings: “the purpose of oral proceedings is to allow a party to state its case before the Board”.
• The requests are not admissible under Art.13(2) RPBA. “the fact that the Board in this case issued a preliminary opinion in which it came to the same conclusion as the Examining Division does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020”. The Board found the claims to lack inventive step over the same combination of documents as the Examining Division.
• The Board can decide to hold the requests inadmissible without holding oral proceedings and without inviting the appellant to comment. “Moreover, oral proceedings pursuant to Article 116(1) EPC to be held on 4 June 2020 and to which the appellant had been duly summoned would have provided the appellant with a further opportunity to be heard pursuant to Article 113(1) EPC on all issues, including the admission of any new requests. It was the appellant's own decision to forgo that right by announcing that it would not be represented at oral proceedings.”.

EPO T 2279/16 -  link

6. The Board therefore concludes that the subject-matter of claim 1 of the main request does not involve an inventive step within the meaning of Articles 52(1) and 56 EPC.

7. Auxiliary Requests

7.1 In its communication pursuant to Article 15(1) RPBA 2020, the Board stated: "The appellant is reminded of the provisions of Article 13 RPBA 2020" (point 5.2). Article 13(2) RPBA 2020 states the following:

"Any amendment to a party's appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, 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 with cogent reasons by the party concerned."

In the present case, a summons to oral proceedings pursuant to Rule 115(1) EPC dated 17 February 2020 was sent. Receipt of the summons was acknowledged by the appellant by means of a fax dated 18 February 2020. Auxiliary requests 1 and 2 were filed with the letter dated 18 May 2020, hence "after notification of a summons to oral proceedings".

7.2 It is not explicitly stated in Article 13(2) RPBA 2020 whether this provision still applies if, following notification of a summons to oral proceedings, the oral proceedings are subsequently cancelled. In the Board's opinion, at least in the case where the cancellation of oral proceedings has been occasioned by an appellant's statement that it will not be represented at the oral proceedings, Article 13(2) RPBA 2020 is applicable.

The provisions of Article 13(2) RPBA 2020 take effect either after the expiry of a period specified in a communication under Rule 100(2) EPC or "after notification of a summons to oral proceedings", and there is nothing in the wording of the article to indicate any exceptions to this, or that the effects of Article 13(2) RPBA 2020 are dependent on the subsequent procedural history of the case.

Moreover, the purpose of oral proceedings is to allow a party to state its case before the Board. Where an appellant decides that it will not be represented at oral proceedings, a Board may decide to cancel the oral proceedings on the ground that it sees no point conducting oral proceedings with an absent appellant. To conclude that such a purely practical decision by the Board should have the effect of returning the appellant to a more favourable position regarding the admission of new requests than that of an appellant who elected to attend the oral proceedings would be, in the view of the Board, inconsistent with the aim and purpose of Article 13 RPBA 2020, which is to provide a convergent approach to limiting the possibilities for a party to amend its appeal case. Hence, the Board judges that Article 13(2) RPBA 2020 applies to the present case.

7.3 The appellant's letter dated 18 May 2020 contains no attempt to justify why the auxiliary requests should be admitted into the procedure; the appellant merely states the following:

"According to the preliminary opinion of the Board of Appeal, the termination structure according to claim 1 does not involve an inventive step over D6 in view of D3. In reply to this preliminary opinion, two auxiliary requests are filed."

The combination of D6 and D3 is exactly the same combination which led to the refusal of the application for lack of inventive step, and hence this was not a new objection from the Board (even if the Board's reasoning differed in certain details from that of the Examining Division). It should be apparent to any appellant that its arguments may fail to convince the Board, and the fact that the Board in this case issued a preliminary opinion in which it came to the same conclusion as the Examining Division does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020.

7.4 Moreover, the appellant's submission does not contain "cogent reasons" (or indeed any reasons) why the auxiliary requests should be admitted.

Auxiliary requests 1 and 2 filed with the letter dated 18 May 2020 are therefore not admitted into the procedure pursuant to Article 13(2) RPBA 2020.

7.5 For completeness the Board notes that even if it had come to a different conclusion about the applicability of Article 13(2) RPBA 2020, there can be no doubt that at least Article 13(1) RPBA 2020 applies, and auxiliary requests 1 and 2 also fail to meet the requirements for admission into the proceedings pursuant to that article.

Article 13(1) RPBA 2020 requires that:

"Any amendment to a party's appeal case after it has filed its grounds of appeal or reply is subject to the party's justification for its amendment and may be admitted only at the discretion of the Board ...

The party shall provide reasons for submitting the amendment at this stage of the appeal proceedings."

The appellant provided no reasons why auxiliary requests 1 and 2 were submitted at a late stage in appeal proceedings. In its provisional opinion the Board raised no new objections, and the appellant does not argue that new objections were raised. As noted above, a provisional opinion in which the Board merely concurs with the conclusion of the department of first instance does not justify the filing of new requests at a late stage in the proceedings. Hence, and in addition to the conclusion reached above under point 7.4, auxiliary requests 1 and 2 are also not admitted into the proceedings pursuant to Article 13(1) RPBA 2020.

8. Articles 116(1) and 113(1) EPC

8.1 Following the request for oral proceedings in the statement of grounds of appeal, the appellant stated in its letter dated 29 April 2020 that "nobody will be present for the applicant at the oral proceedings". Such a statement is normally treated as equivalent to a withdrawal of the request for oral proceedings (see Case Law of the Boards of Appeal, 9th Edition, 2019, III.C.4.3.2). No further request for oral proceedings was made in the subsequent submissions of the appellant. Hence, there is no current request for oral proceedings pursuant to Article 116(1) EPC on file.

8.2 Concerning the appellant's right to be heard according to Article 113(1) EPC, in the communication pursuant to Article 15(1) RPBA 2020 the appellant's attention was drawn to the provisions of Article 13 RPBA 2020. This clearly indicated to the appellant the Board's intention to apply the provisions of this article to the admission of any new requests, including the requirement (under both Article 13(1) and Article 13(2) RPBA 2020) that a party must provide reasons why such requests should be admitted. The appellant therefore had an opportunity to be heard on this issue in the letter accompanying the newly filed requests, but chose not to provide any reasons why they should be admitted into the procedure.

Moreover, oral proceedings pursuant to Article 116(1) EPC to be held on 4 June 2020 and to which the appellant had been duly summoned would have provided the appellant with a further opportunity to be heard pursuant to Article 113(1) EPC on all issues, including the admission of any new requests. It was the appellant's own decision to forgo that right by announcing that it would not be represented at oral proceedings.

Order

For these reasons it is decided that:

The appeal is dismissed.