T 0247/20 - What's an amendment of a party's appeal case

 Key points

• The Board: “The test under Article 13(2) RPBA 2020 is a two-fold one. The first question is whether the submission objected to is an amendment to a party's appeal case. If that question is answered in the negative, then the Board has no discretion not to admit the submission. If, however, that question is answered in the positive, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons, why the submission is to be taken into account.”
• As a comment, Article 13(1) RPBA has the same two-prong test, with the first prong being the same, and with a different threshold in the second prong.
• For the second prong, see also T 1294/16.
• The Board, as to the first question - whether the submission is an amendment: “The Board thus concludes that an amendment to a party's appeal case is a submission which is not directed to the requests, facts, objections, arguments and evidence relied on by the party in its [initial appeal submissions. In other words: it goes beyond the framework established therein.”
• As a comment, this may pertain to the legal and factual framework, with the disclaimer that Article 114 speaks of 'facts and evidence'.
• “The arguments presented by the appellant during the oral proceedings [...] were all aimed at illustrating, refining or further developing the arguments already presented with the grounds of appeal and to counter the arguments of [the respondent] made in this context. To the extent that additional passages or figures were referred to this merely served that purpose. The Board notes that no additional pieces of evidence were introduced and that the patent as well as D1 are very concise documents. The Board takes the view that the arguments [at issue] do not amount to an amendment of the appellant's appeal case.”
• “The above approach takes account of the fact that oral proceedings form an important part of proceedings before the Boards of Appeal. [...] Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments, and of course the evidence, submitted in a timely fashion in the written proceedings.”
• This analysis probably applies equally to any written submissions filed after the notification of the summons and prior to the oral proceedings before the Board.

T 0247/20 -

https://www.epo.org/law-practice/case-law-appeals/recent/t200247eu1.html

Reasons for the Decision

1. Admittance of D30, D31 and alleged amendment of the appellant's case

1.1 The respondents regard D30 - filed by the appellant with letter dated 25 January 2021 - as new evidence which should not be admitted into the proceedings under Article 13(2) RPBA 2020.

D30 contains figures which illustrate the appellant's interpretation of the production processes of the collecting bags of the patent and D1. Similar illustrations are often made on flip charts in oral proceedings in situ in order to clarify arguments which may be difficult to formulate in words. The figures are not regarded as evidence, or a change of the appellant's appeal case, but as supportive information of the appellant's oral presentation, albeit filed in advance of the oral proceedings. They were thus part of the appeal proceedings and the Board had no discretion not to admit them pursuant to Article 13(2) RPBA 2020.

1.2 During the oral proceedings, none of the parties objected to the admittance of D31, which was also filed by the appellant with their letter of 25 January 2021.

This is a textbook excerpt documenting the skilled person's common general knowledge regarding of hot melt adhesives. The Board saw no reason not to consider it, especially in view of the fact that its content was undisputed, even if the consequences derived therefrom by the parties were not.

1.3 In the course of the oral proceedings the appellant made submissions regarding novelty of the subject-matter of claim 1 of the main request in view of D1. Respondent 2 requested that the following parts of these submissions should not be taken into account pursuant to Article 13(2) RPBA 2020: arguments concerning a synergy between Features 1d and 1g, the interpretation of the patent claim in view of figures 3a, 3b and 4 of the patent, the interpretation of the adhesive and fabric layer in paragraphs [0027], [0029], [0034] and [0035] of D1, the oral reference to a dictionary definition of the term "embedding" and the interpretation of the barrier film as being "commercially available barrier film".

It is undisputed that for the assessment of that request the relevant legal provision is Article 13(2) RPBA 2020.

Article 13(2) RPBA 2020 provides that: "Any amendment to a party's appeal case made ... 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 test under Article 13(2) RPBA 2020 is a two-fold one. The first question is whether the submission objected to is an amendment to a party's appeal case. If that question is answered in the negative, then the Board has no discretion not to admit the submission. If, however, that question is answered in the positive, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons, why the submission is to be taken into account.

The RPBA 2020 contain no definition of what amounts to an "amendment to a party's appeal case". However, they assist in what is meant by an "amendment" and by "a party's complete appeal case". Article 12(3) RPBA 2020 requires that the statement of grounds of appeal and the reply must contain "a party's complete appeal case". This means that the party must set out why the decision under appeal should be reversed, amended or upheld, and should specify expressly "all the requests, facts, objections, arguments and evidence relied on". Article 12(4) RPBA 2020 defines what is meant by an amendment vis-à-vis the first instance proceedings, namely everything that does not comply with Article 12(2) RPBA 2020. In effect, an amendment is - apart from a clearly defined exception - what is not "directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based."

The Board thus concludes that an amendment to a party's appeal case is a submission which is not directed to the requests, facts, objections, arguments and evidence relied on by the party in its statement of grounds of appeal or its reply. In other words: it goes beyond the framework established therein.

In the present case the appellant identified in its grounds of appeal features 1d, 1f and 1g of claim 1 as not disclosed in D1. Central to the discussion of those distinguishing features in the grounds of appeal and reply were the nature of the fabric layer, its attachment to a barrier film, the embedding of fibre filaments of the fabric layer in the barrier film, and whether claim 1 required a direct securing to the barrier film material by embedding without any other element being present. In the grounds of appeal the appellant referred to numerous parts of the patent, including to figure 4, as well as to numerous passages of D1, including paragraph 35.

The arguments presented by the appellant during the oral proceedings to which respondent 2 objected were all aimed at illustrating, refining or further developing the arguments already presented with the grounds of appeal and to counter the arguments of respondent 2 made in this context. To the extent that additional passages or figures were referred to this merely served that purpose. The Board notes that no additional pieces of evidence were introduced and that the patent as well as D1 are very concise documents. The Board takes the view that the arguments presented by the appellant and objected to by respondent 2 do not amount to an amendment of the appellant's appeal case. Therefore, the Board has no discretion not to admit them into the proceedings.

The above approach takes account of the fact that oral proceedings form an important part of proceedings before the Boards of Appeal. Their prominence is underlined by the absolute right of a party to oral proceedings under Article 116 EPC. They serve to discuss the matters pertinent to the decision of the Board. Oral proceedings would serve no purpose if the parties were limited to present a mere repetition of the arguments put forward in writing. Instead, parties must be allowed to refine their arguments, even to build on them provided they stay within the framework of the arguments, and of course the evidence, submitted in a timely fashion in the written proceedings.