J 0014/19 - (I) A tutorial on admissibility

 Key points

• The Legal Board of Appeal uses a case about a stay of proceedings to give a tutorial about the meaning of ‘amendment’ in the sense of Art. 12 and 13 RPBA 2020. I've made a translation of the relevant paragraphs 1.1-1.11 below. I recommend reading the decision entirely in the original or in translation.
• The Board recalls that only submissions that are an amendment to the party's appeal case can be held inadmissible under Art.13(1) and (2) and that the appeal case is defined by the appellant's Statement of ground and the respondent's (timely filed) appeal reply brief.
• The Board: “a submission that is not directed to the "requests, facts, objections, arguments and evidence" contained in the statement of grounds or the reply will result in an amendment of the appeal case” (note, this leaves open whether the comparison is to initial appeal submissions of the party concerned, or to all initial appeal submissions in inter partes cases).
• cf. T 247/20: “In other words: it goes beyond the framework established therein”
• “[The] term "arguments" in Article 12(2) RPBA 2020 should be interpreted in such a way that the result of interpretation is in line with Article 114(2) EPC. Statements by a party that relate solely to the interpretation of the EPC contain no element of fact, i.e. no reference to "facts and evidence" within the meaning of Article 114(2) EPC. In the opinion of the board, such purely legal explanations, therefore, do not fall under the term "arguments" in Article 12(2) RPBA 2020. In the board's view, [the term "arguments" in Article 12(2) RPBA 2020] rather relates to statements that contain both legal and factual elements. ”
• See also the foundational decision T 1914/12 and e.g. T 1875/15, headnote.
• “This [i.e. a statement containing both legal and factual elements] is regularly the case in particular with questions of patentability, for example when one of the parties involved, makes submissions regarding the disclosure content of the originally filed application or a previously published patent specification invoking the fictitious person skilled in the art and with a view to a desired legal consequence.”
• Cf. USA patent law: “Obviousness is a question of law based on underlying findings of fact.” (In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009)).
• As of yet, the EPO Boards of Appeal review both conclusions in law and findings of fact of the first instance department de novo (T1604/16).
• As to the example, the “invoking the fictitious person skilled in the art” probably introduces the legal argument (also purely factual assertions are made in legal proceedings with a view to a desired legal consequence, so that does not lend the legal character to the submission). On a separate note, I think the Board could have referred to any kind of prior art document in the given example, and that there was no reason to refer to a published patent specification in particular (the example is about patentability). 
• An amendment of the appeal case must be distinguished from the mere refinement of an already existing line of argument (cf. T 247/20, No. 1.3 of the reasons).
• The mere fact that a party has already introduced a particular document into the appeal proceedings does not mean that all of its content is part of that party’s appeal case. If a party invokes other passages in the text of such a document than those previously used, this can result in an amendment of the appeal case (see T 482/18, no. 1.2.5.e of the reasons). In the board's view, both a new combination of factual elements (e.g. the choice of a different citation or a different passage in the text of a citation as the starting point for assessing inventive step) and a new combination of factual and legal elements (e.g. the reference to an already discussed text passage in a different legal context) represents an amendment of the appeal case. 
  
  
• Applying this framework to the present case:
• “The appellant's statements in its letter of January 27, 2021 are either (i) a repetition or refinement of statements already contained in the statement of grounds of appeal, (ii) statements that exclusively support the interpretation of Article 61(1) EPC and Rule 14(1) EPC or (iii) statements [about a topic] that are directly related to the statements made by the board on [that topic] for the first time in the communication pursuant to Article 15 (1) RPBA 2020. The appellant's statements in the brief of January 27, 2021 will therefore be taken into account by the board in accordance with Article 13(2) RPBA 2020. ”
• Note, that in each of the first two cases, the Legal Board has no discretion under Art. 13(2) as it is not a case amendment. As to the third case, my analysis is the submission is actually a case amendment but is considered to be a timely (and appropriate) response to a new development in the appeal proceedings such that not admitting it would violate the appellant's right to be heard under Art.113(1) if the Board's decision were to be based on the point concerned. 

J 0014/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/j190014du1.html

Translation

Reasons for decision

1. Consideration of the appellant's submissions in the letter of January 27, 2021

1.1 Pursuant to Article 13(2) RPBA 2020, amendments to a party's appeal case after a period specified by the board in a Communication under Rule 100(2) EPC or, if no such Communication is issued, after the summons to oral proceedings has been notified, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

1.2 The prerequisite for the application of Article 13(2) RPBA 2020 is that the submission in question is an "amendment of the appeal case" within the meaning of that provision. This term must first be interpreted using Article 13(1) RPBA 2020, in which the same term is used. The [time] point of reference for the examination of whether there is an amendment of the appeal case in the sense of Article 13(2) RPBA 2020 is therefore the statement of grounds of appeal or the reply (if filed timely). As a result, Article 13(1) and (2) RPBA 2020 differ from Article 12(4) RPBA 2020. With the latter provision, the point of reference for the question of whether a part of the appeal case is to be regarded as an amendment is the contested decision.

1.3 Pursuant to Article 12(2) RPBA 2020, an appeal case that does not address the "requests, facts, objections, arguments and evidence" underlying the contested decision is to be regarded as an "amendment" within the meaning of Article 12(4) RPBA 2020. This is only not the case if the party shows that the affected part of the submission was admissibly presented and maintained in the first instance proceedings.

1.4 Under a systematic interpretation, the question of whether a submission results in an "amendment of the appeal case" within the meaning of Article 13(1) and (2) RPBA 2020 is to be answered based on the list of possible components of an appeal case contained in Article 12(2) RPBA 2020. Accordingly, a submission that is not directed to the "requests, facts, objections, arguments and evidence" contained in the statement of grounds or the reply will result in an amendment of the appeal case. This also results from Article 12(3) RPBA 2020, in which reference is also made to these components of an appeal case and which stipulates that the statement of grounds and the reply must contain the complete case submitted by one of the parties.

1.5 An amendment to the patent application or the patent after the point in time specified in Article 13(2) RPBA 2020 therefore generally represents an amendment of the appeal case within the meaning of this provision, as does a change in an attack on the part of the opponent.

1.6 At the level of the EPC, the possibility of not admitting late submissions is regulated in Article 114(2) EPC; with regard to amendments to the patent application or the patent, Article 123(1) EPC can also be used as the legal basis (see R 6/19, no. 5-10 of the reasons). Article 114 (2) EPC refers to "facts and evidence"; on the basis of this provision, late submissions that contain an element of fact can be disregarded.

1.7 In the opinion of the board, the reference to a specific passage in a document - i.e. to a part of the evidence to prove a specific fact - is to be regarded as a factual element of a submission. Whether a submission that contains an element of fact represents an amendment within the meaning of Article 12(4) RPBA 2020 or an amendment of an appeal case within the meaning of Article 13(1) and (2) RPBA 2020, must - using the respective reference point (see above, no. 1.2 of the reasons) - be assessed in the overall context of the circumstances of the individual case.

1.8 The mere fact that a party has already introduced a particular document into the appeal proceedings does not mean that all of its content is part of that party’s appeal case. If a party invokes other passages in the text of such a document than those previously used, this can result in an amendment of the appeal case (see T 482/18, no. 1.2.5.e of the reasons). In the board's view, both a new combination of factual elements (e.g. the choice of a different citation or a different passage in the text of a citation as the starting point for assessing inventive step) and a new combination of factual and legal elements (e.g. the reference to an already discussed text passage in a different legal context) represents an amendment of the appeal case. An amendment of the appeal case must be distinguished from the mere refinement of an already existing line of argument (cf. T 247/20, No. 1.3 of the reasons).

1.9 In the board's view, the term "arguments" in Article 12(2) RPBA 2020 should be interpreted in such a way that the result of interpretation is in line with Article 114(2) EPC. Statements by a party that relate solely to the interpretation of the EPC contain no element of fact, i.e. no reference to "facts and evidence" within the meaning of Article 114(2) EPC. In the opinion of the board, such purely legal explanations, therefore, do not fall under the term "arguments" in Article 12(2) RPBA 2020. In the board's view, this term rather relates to statements that contain both legal and factual elements. This is regularly the case in particular with questions of patentability, for example when one of the parties involved, makes submissions regarding the disclosure content of the originally filed application or a pre-published patent specification invoking the fictitious person skilled in the art and with a view to a desired legal consequence.

1.10 Since statements that relate exclusively to the interpretation of the EPC are not to be subsumed under the term "arguments" under Article 12(2) RPBA, such purely legal statements do not result in any [case] amendments within the meaning of Article 12(4) RPBA 2020. This result is also confirmed in the explanatory remarks on the RPBA 2020: "Submissions of a party which concern only the interpretation of the law are not an amendment within the meaning of new Article 12(4)" (CA/3/19, para. 54; see also the table contained in CA/3/19 on the changes to the RPBA with explanations). This is to be applied accordingly to Article 13(1) and (2) RPBA 2020, so that pure legal statements without factual element cannot constitute an appeal case amendment within the meaning of these provisions.

1.11 The appellant's statements in its letter of January 27, 2021 are either (i) a repetition or refinement of statements already contained in the statement of grounds of appeal, (ii) statements that exclusively support the interpretation of Article 61(1) EPC and Rule 14(1) EPC or (iii) statements on German law that are directly related to the statements made by the board on German law for the first time in the communication pursuant to Article 15 (1) RPBA 2020. The appellant's statements in the brief of January 27, 2021 will therefore be taken into account by the board in accordance with Article 13(2) RPBA 2020. 

In response to the question of whether statements by a party that (exclusively) concern the interpretation of foreign law cannot bring about a change in the submission of complaints pursuant to Article 13(2) RPBA 2020 or whether these, as in some national legal systems (cf. C. Esplugues et al., General Report on the Application of Foreign Law by Judicial and Non-Judicial Authorities in Europe, in Esplugues et al., Application of Foreign Law, 2011, p. 8, para. 7) must be regarded as statements with a factual element insofar will not be entered into. [note: see also r.6.5]