T 2486/16 - Do not supplant

 Key points

• In this examination appeal the Board decides on the admissibility of an auxiliary request under Article 13(2) RPBA. The headnote is as follows, with the context of the decision added with bullet points.

1. In applying Article 13(2) RPBA 2020 the Board may also rely on the criteria set out in Article 13(1) RPBA 2020 ... . The criteria of Article 13(1) RPBA 2020 may therefore supplement, but do not supplant, the separate requirements of Article 13(2) RPBA 2020 (Reasons, point 6.4.1).

• “In the letter dated 15 December 2020 the only argument provided by the appellant in support of admitting these requests into the proceedings was that they were "prima facie allowable". The Board accepts that this is one of the criteria mentioned in Article 13(1) RPBA 2020. However, the Board does not feel it necessary to decide on the issue of prima facie allowability, since, even if this were accepted, the appellant did not provide cogent reasons why, in the present case, such prima facie allowability alone was sufficient to meet the requirement of Article 13(2) RPBA 2020 that there were "exceptional circumstances".”

2. When filing requests within the period mentioned in Article 13(2) RPBA 2020, the party, in providing its "cogent reasons", should not only identify the circumstances invoked and explain why they are to be regarded as "exceptional", it should also explain why these circumstances had the direct result of preventing the party from filing its requests at an earlier stage. (Reasons, point 6.5.6).

3. The mere fact that, in a communication under Article 15(1) RPBA 2020, the Board departs in some respects from the reasoning of the Examining Division on inventive step (while reaching the same conclusion) does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, nor does it open the door to the filing of new requests as a response (Reasons, point 6.6.3).

•     "The original applicant therefore went into receivership almost two years after the filing of the statement of grounds of appeal. Even if difficulties experienced by the original applicant were considered to constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, the appellant has submitted no evidence that the original applicant was experiencing any such difficulties at the date of filing the statement of grounds of appeal, when any auxiliary requests on which the appellant wished to rely should have been filed."

https://www.epo.org/law-practice/case-law-appeals/recent/t162486eu1.html

5.12 The Board therefore judges 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.

6. First and Second Auxiliary Requests: Admission into the Proceedings

6.1 A summons to oral proceedings pursuant to Rule 115(1) EPC was sent in May 2020, and hence it was notified after the date of the entry into force of RPBA 2020 (1 January 2020). By virtue of Article 25(1) and Article 25(3) RPBA 2020 e contrario, Article 13(2) RPBA 2020 therefore applies.

The Board's communication pursuant to Article 15(1) RPBA 2020 stated (under point 5) the following: "The appellant is reminded of the provisions of Article 13 RPBA 2020 on amendments ...".

6.2 Article 13(2) RPBA 2020 reads as follows:

"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."

The first and second auxiliary requests were filed with the letter dated 15 December 2020, hence after notification of the summons to oral proceedings, and therefore can, in principle, only be taken into account if there are "exceptional circumstances, which have been justified with cogent reasons by the party concerned".

6.3 The appellant provided a number of arguments to the effect that the first and second auxiliary requests should be admitted pursuant to Article 13(2) RPBA 2020. These arguments, and the Board's responses thereto, are as follows:

6.4 Prima Facie Allowability

6.4.1 In applying Article 13(2) RPBA 2020 the Board may also rely on the criteria set out in Article 13(1) RPBA 2020 (see the Administrative Council document CA/3/19, page 12, point 60 and the explanatory notes to Article 13(2), page 43, second paragraph; see also e.g. T 2429/17, Reasons for the Decision, point 2.2). The criteria of Article 13(1) RPBA 2020 may therefore supplement, but do not supplant, the separate requirements of Article 13(2) RPBA 2020.

6.4.2 In the letter dated 15 December 2020 the only argument provided by the appellant in support of admitting these requests into the proceedings was that they were "prima facie allowable".

The Board accepts that this is one of the criteria mentioned in Article 13(1) RPBA 2020. However, the Board does not feel it necessary to decide on the issue of prima facie allowability, since, even if this were accepted, the appellant did not provide cogent reasons why, in the present case, such prima facie allowability alone was sufficient to meet the requirement of Article 13(2) RPBA 2020 that there were "exceptional circumstances".

6.5 Question of "exceptional circumstances"

6.5.1 In oral proceedings the appellant provided new arguments why the first and second auxiliary requests should be admitted.

The appellant argued that, as there was little case law on the meaning of "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, this term should be interpreted in the light of the case law relating to the re-establishment of rights, which also made reference to "exceptional circumstances".

6.5.2 The Board firstly notes that the term "exceptional circumstances" does not appear in the legal provisions relating to the re-establishment of rights (Article 122 and Rule 136 EPC), but does appear in the case law relating to this issue. According to Case Law of the Boards of Appeal of the European Patent Office, 9th Edition, July 2019, III.E.5.2, third paragraph:

"For cases where the cause of non-compliance with a time limit involves some error in the carrying out of the party's intention to comply with the time limit, the case law has established the criterion that due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances [...] or from an isolated mistake within a normally satisfactory monitoring system [...]" (emphasis in the original).

6.5.3 This passage refers to a case where a party intended to comply with a time limit, but failed to do so as a result of an error, and subsequently sought to remedy that error. By contrast, in the present case, the appellant wished to file auxiliary requests after the filing of the statement of grounds of appeal.

The two cases are not comparable. The appellant should have filed any auxiliary requests it wished to rely upon with the statement of grounds of appeal as part of its "complete appeal case" pursuant to Article 12(3) RPBA 2020. The appellant has not asserted that not filing auxiliary requests at this point was the result of an error or did not correspond to its true intention at that time. Filing a single request and relying on arguments to attempt to persuade the Board to overturn the contested decision appears to have been simply a strategic choice on the part of the appellant. There is therefore no error to be rectified. Already for this reason, the Board is not persuaded that the case law on the re-establishment of rights is relevant for the interpretation of Article 13(2) RPBA 2020 in the present case, as contended by the appellant.

6.5.4 The appellant further argued that the exceptional circumstances in the present case were the original applicant going into receivership, the consequent interruption and resumption of proceedings and the transfer of ownership. According to the appellant these facts were somewhat analogous to those mentioned in Case Law of the Boards of Appeal of the European Patent Office, 9th Edition, July 2019, III.E.5.3.

It appears to the Board that the the least remote comparison would be with section III.E.5.3.3, dealing with "Complex transfers of company ownership", in which the single case T 469/93 is cited.

In T 469/93, the notice of appeal and the statement of grounds of appeal were not filed within the two-month and four-month time limits under Article 108 EPC. The Board recognised that in the course of complicated company transfers of ownership ("im Verlauf komplizierter Firmen-Eigentumsübergänge"), even with all due care required by the circumstances, isolated errors were not entirely avoidable and could be remedied by re-establishment of rights (Reasons for the Decision, point 1, final paragraph).

6.5.5 Even if it were accepted that such a disruption to the normal functioning of a business could also represent "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, something which the present Board does not have to decide, T 469/93 deals with a case where a failure to carry out a procedural act (filing the notice of appeal and the statement of grounds of appeal within the relevant time limits) could be plausibly explained as being a direct result of the exceptional circumstances invoked (the complex change of ownership happening at the same time). In the view of the Board, a similar causal link would typically need to be established for any application of Article 13(2) RPBA 2020.

6.5.6 When filing requests within the period mentioned in Article 13(2) RPBA 2020, the party, in providing its "cogent reasons", should not only identify the circumstances invoked and explain why they are to be regarded as "exceptional", it should also explain why these circumstances had the direct result of preventing the party from filing its requests at an earlier stage.

6.5.7 The appellant in the present case should have filed its auxiliary requests with the statement of grounds of appeal dated 24 October 2016 as part of its "complete appeal case" (Article 12(3) RPBA 2020). According to the appellant's letter dated 9 May 2019, and the annexes thereto, the original applicant ("Intelligent Mechatronic Systems Inc.") went into receivership as a result of a court order dated 14 September 2018. Pursuant to Rule 142 EPC, the proceedings before the EPO were interrupted as from 14 September 2018, and resumed as from 1 August 2019 with the new (and present) applicant.

The original applicant therefore went into receivership almost two years after the filing of the statement of grounds of appeal. Even if difficulties experienced by the original applicant were considered to constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, the appellant has submitted no evidence that the original applicant was experiencing any such difficulties at the date of filing the statement of grounds of appeal, when any auxiliary requests on which the appellant wished to rely should have been filed.

6.5.8 For these reasons, the arguments of the appellant in this regard do not persuade the Board.

6.6 Reaction to the Arguments of the Board

6.6.1 Finally, the appellant argued that the auxiliary requests should be admitted as the arguments used by the Board in its communication pursuant to Article 15(1) RPBA 2020 were not exactly the same as those of the Examining Division in the contested decision.

6.6.2 The application was refused on the grounds that the subject-matter of claim 1 was not new, and that even if novelty were acknowledged it would not involve an inventive step, in both cases over document D1; in addition claims 5 and 10 did not meet the requirements of Article 123(2) EPC.

In its communication under Article 15(1) RPBA 2020 the Board stated that the question of novelty was for discussion, but found provisionally that the subject-matter of claim 1 did not involve an inventive step, in both cases over document D1, and that claims 5 and 10 did not appear to meet the requirements of Article 123(2) EPC. Thus, no new objections were raised by the Board which might have justified the filing of amended requests.

6.6.3 The mere fact that, in a communication under Article 15(1) RPBA 2020, the Board departs in some respects from the reasoning of the Examining Division on inventive step (while reaching the same conclusion) does not constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020, nor does it open the door to the filing of new requests as a response.

6.7 For the above reasons, the Board exercises its discretion not to admit the first and second auxiliary requests into the proceedings pursuant to Article 13(2) RPBA 2020.

Order

For these reasons it is decided that:

The appeal is dismissed.