T 2271/18 - New clarity objections by Board in preliminary opinion

 Key points

• In this examination appeal raises a number of new clarity objections. The applicant files a few auxiliary requests in response. The Board does not admit the requests. The Board indicates that the requests are not clearly allowable but adds, as first ground for the non-admittance, that a preliminary opinion is not an invitation to file new submissions, such as new sets of claims.
• I'm not at all sure if this is compatible with Article 113(1) EPC: the Board rising new clarity objections (which is fine as such) but holding amended claims timely filed in response inadmissible. The applicant's right to be heard is in no way limited if the Board raises new objections late in the appeal.
• The Board in the headnote: “In particular, amendments submitted in response to such a preliminary opinion cannot give rise to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020”
• What if hypothetically the Board cites new prior art of ow motion in the preliminary opinion? Is there a difference between the Board raising new novelty objections and new clarity objections?

EPO Headnote

A clear and detailed preliminary opinion provided by a board - rather than merely "drawing attention to matters that seem to be of particular significance for the decision to be taken" (cf. Article 15(1), fourth sentence, RPBA 2020) - is predominantly intended to give the party(ies) an opportunity to thoroughly prepare their arguments in response to it but not to file new submissions, such as new sets of claims, and to thereby arguably shift the focus on the issues on file to be decided in appeal proceedings. In particular, amendments submitted in response to such a preliminary opinion cannot give rise to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see point 3.3 of the Reasons).

T 2271/18
https://www.epo.org/law-practice/case-law-appeals/recent/t182271eu1.html

3. First to fourth auxiliary requests: admittance

3.1 The first to fourth auxiliary requests were filed after notification of the summons to oral proceedings (cf. point III above). In accordance with Article 13(2) RPBA 2020, such an amendment to the party's appeal case 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 application of the exercise under Article 13(2) RPBA 2020, the criteria mentioned in Article 13(1) RPBA 2020 may be used. One such criterion concerns whether the party has demonstrated that the amendments to its appeal case, prima facie, overcome the issues raised by the board and do not give rise to new objections.

3.2 The appellant justified the amendments underlying the first to fourth auxiliary requests by

(i) referring to the introduction, in the board's communication pursuant to Article 15(1) RPBA 2020, of a lack of clarity as a new objection in the appeal proceedings;

(ii) highlighting that the newly found lack of clarity was motivated by a list of multiple clarity objections;

(iii) indicating that the board had implied that the list of clarity objections was not exhaustive.

3.3 While arguments (i) to (iii) may in principle constitute "cogent reasons" (cf. the third paragraph of the explanatory remarks to Article 13(2) RPBA 2020), it is within the board's power to raise new objections during the appeal proceedings (cf. G 10/93; T 862/16, Reasons 8.3.1).

 In particular, in order to help concentration on essentials during the oral proceedings, a board's communication pursuant to Article 15(1) RPBA 2020 is based on a thorough analysis of the case and is meant to draw attention to matters that may be of particular significance for the decision to be taken, while the board "may" also provide a preliminary opinion (cf. Article 15(1), fifth sentence, RPBA 2020). The level of detail with which this analysis is reflected in the communication, in particular the extent to which a preliminary opinion is provided, is, however, up to the particular board's discretion, in view of the circumstances of the case. Accordingly, even a high level of detail provided in a communication issued under Article 15(1) RPBA 2020 can by no means be interpreted as an "invitation" for a party to amend its appeal case by filing amended claims (cf. for instance T 1459/11, Reasons 3.2; T 752/16, Reasons 3.4).

In other words, a clear and detailed preliminary opinion provided by a board - rather than merely "drawing attention to matters that seem to be of particular significance for the decision to be taken" (cf. Article 15(1), fourth sentence, RPBA 2020) - is predominantly intended to give the party(ies) an opportunity to thoroughly prepare their arguments in response to it but not to file new submissions, such as new sets of claims, and to thereby arguably shift the focus on the issues on file to be decided in appeal proceedings. In particular, amendments submitted in response to such a preliminary opinion cannot give rise to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020.

3.4 Even if it was accepted that there were cogent reasons justifying the presence of "exceptional circumstances" here, the board concludes that the above auxiliary requests are not clearly allowable for the following reasons: