T 0545/19 - If oral proceedings are to serve a purpose

 Key points

• The Board holds a request filed during oral proceedings inadmissible even though the Board came to a different claim interpretation during the oral proceedings and somewhat different reasoning for inventive step.
• “In passing, the board also notes the following. If oral proceedings are to serve a purpose, it would seem that there must be room for the discussion during oral proceedings to deviate to an extent from the preceding written submissions - at least in terms of facts and arguments within the meaning of Article 114 EPC. It would therefore be necessary for everybody concerned, the parties and the board, to have some leeway to adapt their opinions in view of that discussion without such a change, in and by itself, being sufficient to justify further amendments [as admissible under Art.13(2) RPBA].”
• As a comment, I think the relevant provision is Art.113(1) EPC (wherein the right to comment on the grounds (for the future decision) involves a right to submit amended claims where appropriate).

T 0545/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t190545eu1.html

Third auxiliary request

18. The third auxiliary request is an amendment to the respondent's case which, according to Article 13(2) RPBA 2020, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the respondent. In view of the above discussion (point 15), the board stresses that Article 13(2) RPBA 2020 puts - deliberately and clearly - a much more stringent requirement on the admittance of the amendment than Article 12(4) RPBA 2007.

19. The appellant objected that the third auxiliary request was late-filed. The respondent argued that it only became clear to it during the oral proceedings how broad an interpretation on the claimed second component the board would place. The board's objection to inventive step of the "interposition" feature was different from that given in the summons to oral proceedings, and the third auxiliary request was filed in response to that objection.

19.1 The board accepts that the reasoning given above differs from the shorter one according to the board's preliminary opinion (point 23).

19.2 Even so, the respondent was informed of a preliminary negative opinion of the board vis-à-vis the feature in question and cannot, therefore, be surprised that the board came to a negative finding during the oral proceedings. Therefore, the board does not accept the respondent's argument as a justification for the filing of the third auxiliary request only at the end of the oral proceedings and after all other requests had been exhaustively discussed.

19.3 In passing, the board also notes the following. If oral proceedings are to serve a purpose, it would seem that there must be room for the discussion during oral proceedings to deviate to an extent from the preceding written submissions - at least in terms of facts and arguments within the meaning of Article 114 EPC. It would therefore be necessary for everybody concerned, the parties and the board, to have some leeway to adapt their opinions in view of that discussion without such a change, in and by itself, being sufficient to justify further amendments.

19.4 The board therefore decided not to admit the third auxiliary request under Article 13(2) RPBA 2020.

Order

For these reasons it is decided that:

1. The decision is set aside.

2. The patent is revoked.