T 2920/18 - A close reading of Art.13(2) RPBA

Key points

•  The patentee (respondent) files a new auxiliary request after notification of the summons.
• "The respondent argued that the first auxiliary request did not comprise any additional subject-matter since only claims 2 to 5 and claims 12 and 13 of the main request had been deleted in reaction to the Board's preliminary opinion as regards the objection under Article 100(b) EPC against claims 2 and 3 of the main request"
• "The Board follows decision T 247/20, point 1.3 of the Reasons, in that the examination under Article 13(2) RPBA 2020 is of a two-step nature (see also T 2988/18, point 1.2 of the Reasons), i.e. in that it is first necessary to examine whether there is an amendment to a party's appeal case. If that question is answered in the negative, there is no discretion not to take the relevant submission into account. However, if the question is answered in the positive, it is necessary to examine whether the party concerned has provided cogent reasons for the existence of exceptional circumstances which may justify the submission at such a late stage of the proceedings."
• "The question of whether Article 13 RPBA 2020 is applicable in the case of a mere deletion of claims, [...] is answered differently in the case law."
• "according to that systematic interpretation, the filing of an amended set of claims, even if the amendment is merely a deletion of claims and the remaining claims were already part of a set of claims in the appeal proceedings, constitutes an amendment to a party's appeal case. The Board finds the systematic interpretation of the term "amendments to a party's appeal case" convincing and endorses this view. "
• So, whether or not to admit the request is subject to Art. 13(2) RPBA.
• " the Board would first like to point out that Article 13(2) RPBA 2020 does not explicitly provide for discretionary power of the Boards. However, it is clear from the explanatory remarks that the legislator had the intention to give the Boards discretionary power (see Supplementary Publication 1, OJ EPO 2020, Annex 2, page 221, explanatory remarks in the third column, third paragraph, last sentence: "The Board may decide to admit the amendment in the exercise of its discretion."). This is also apparent from Article 13(1), first sentence, RPBA 2020, which in general provides for discretion for the admittance of amendments to the appeal case after the filing of the statement of grounds or reply. Furthermore, the exclusion of any discretion would hardly be compatible with Article 114(2) EPC."
• "In T 1294/16 the Board concluded that the word "in principle" should be ignored due to its ambiguity, because it was either redundant to the requirement of "exceptional circumstances" or would provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (cf. ibid., point 18.1 of the Reasons). The Board does not follow this approach, since a term contained in a legal provision should only be disregarded if no interpretation appears possible or if it appears to be manifestly contrary to the meaning of the provision, or if an interpretation cannot be reconciled with higher-ranking law"
• "On the contrary, the Board is of the opinion that a meaningful interpretation is readily possible. The principle laid down in Article 13(2) of the RPBA 2020 is precisely that amendments to a party's case shall not be taken into account at this late stage of the procedure ("in principle"). The exception to this principle then follows in the half sentence introduced by the phrase "unless", i.e. the principle that amendments to a party's case shall not be taken into account at this late stage of the procedure (i.e. "in principle") can be set aside if the existence of exceptional circumstances is demonstrated with cogent reasons. Such an interpretation is also consistent with the explanatory remarks to Article 13(2) RPBA 2020"
• Turning to exceptional circumstances: "the explanatory remarks appear to require causality in the sense that the amendments to a party's appeal case must have been triggered by exceptional circumstances.
• "However, in similar cases, some Boards have acknowledged exceptional circumstances provided that the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA, nor to the legitimate interests of a party to the proceedings. This specific procedural situation was considered an "exceptional circumstance" within the meaning of Article 13(2) RPBA 2020 (see T 1598/18, point 25.1 of the Reasons; T 1294/16, points 18.3 and 19 of the Reasons; T 339/19, point 1.5 of the Reasons)." 
• "It should be noted that the wording of Article 13(2) RPBA 2020 does not require the amendment to be triggered by exceptional circumstances."
• As a comment, that's undeniable true. Based on the English wording, the requirement is simply that "there are exceptional circumstances".  Any requirement for a nexus between the circumstances and the appeal case is implicit. 
• As a further comment, the wording requires that the party justifies the circumstances (in the English version). So, if the relevant circumstance is a  new objection raised by the Board, it is for the party to justify that circumstance according to the literal wording of the provision.
• " It is sufficient for exceptional circumstances to exist, which can therefore also be of a legal nature. In the Board's view, such an interpretation does not conflict with the above explanatory remarks, which appear to illustrate only the main scenario under that provision that an amendment to the appeal case may be taken into account if it is made in reaction to exceptional circumstances."
• " In addition, a teleological interpretation which considers the purpose of the EPO's power to disregard late-filed facts or evidence and the discretionary power to refuse new requests as enshrined in Articles 114(2) and 123(1) EPC seems to support this conclusion. It follows from the preparatory documents ("travaux préparatoires") to the EPC 1973 (cf. T 122/84, point 11 of the Reasons; T 951/91, point 5.13 of the Reasons) that this procedural possibility is intended to prevent the parties from improperly delaying the proceedings. In particular, it serves to ensure the principles of procedural economy and of fair proceedings. It should therefore be noted that the power to disregard late submissions under the EPC does not constitute a procedural end in itself. In the Board's view, therefore, there is no reason, unless there is a risk of prejudice to the above principles, to disregard requests filed at a late stage of the proceedings aiming at maintenance of a patent in a particular version (cf. also T 339/19, points 1.3.3 and 1.5 of the Reasons)."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t182920eu1.html

First auxiliary request

3. Admittance

3.1 The first auxiliary request was filed with the respondent's letter of 18 January 2022, i.e. after notification of the summons to oral proceedings which had been issued in 2021. Thus, without prejudice to the parties' arguments, its admittance is governed by Article 13(2) RPBA 2020 (cf. transitional provisions of Article 25(3) in conjunction with Article 24(1) RPBA 2020), according to which any amendment to a party's appeal case is, in principle, not taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

3.2 The appellant argued that the filing of the first auxiliary request meant a change of the respondent's case which was neither due to exceptional circumstances nor justified by cogent reasons and should not be taken into account under Article 13(2) RPBA 2020. It should have been filed in the first instance proceedings, or at the latest in reaction to the objections of lack of sufficiency of disclosure raised in the statement of grounds of appeal.

3.3 The respondent argued that the first auxiliary request did not comprise any additional subject-matter since only claims 2 to 5 and claims 12 and 13 of the main request had been deleted in reaction to the Board's preliminary opinion as regards the objection under Article 100(b) EPC against claims 2 and 3 of the main request relating to the issue of conversion of the tear strength into a TTD value (see above point 2.3.1). Consequently, the filing of the first auxiliary request did not result in a change of case since the remaining subject-matter was also part of the main request and was fully discussed between the parties. In the absence of a change of case the first auxiliary request should be taken into account. If it were nevertheless to be regarded as a "change of case", then exceptional circumstances would exist, since the deletion of the claims would reduce the number of objections to be discussed and thus the complexity of the procedure. It should also be noted that with the filing of the first auxiliary request, the other auxiliary requests were also withdrawn, so that the procedure as a whole was simplified. The "change of case" therefore served the purpose of procedural economy. According to the respondent, it would not be in line with the rationale behind Article 13 RPBA 2020 if changes that simplify the procedure were not taken into account.

3.4 The Board follows decision T 247/20, point 1.3 of the Reasons, in that the examination under Article 13(2) RPBA 2020 is of a two-step nature (see also T 2988/18, point 1.2 of the Reasons), i.e. in that it is first necessary to examine whether there is an amendment to a party's appeal case. If that question is answered in the negative, there is no discretion not to take the relevant submission into account. However, if the question is answered in the positive, it is necessary to examine whether the party concerned has provided cogent reasons for the existence of exceptional circumstances which may justify the submission at such a late stage of the proceedings.

3.5 The first auxiliary request differs from the main request only in that claims 2 to 5 and claims 12 and 13 have been deleted, i.e. it comprises only subject-matter which was also part of the main request.

3.6 The question of whether Article 13 RPBA 2020 is applicable in the case of a mere deletion of claims, i.e. whether the Board has a discretionary power to admit or disregard such a request is answered differently in the case law.

3.6.1 Some Boards took the view that the deletion of a category of claims or the deletion of dependent claims or alternatives in claims should not be regarded as an amendment of the appeal case, provided that the deletion neither led to a change in the factual or legal framework of the proceedings nor to a re-weighting of the subject of the proceedings (see the summary of the case law in T 1569/17, point 4.3.2 of the Reasons, T 494/18, point 1.3.1 of the Reasons, T 2091/18, point 3 of the Reasons). In these circumstances, there was no discretionary power with regard to the admittance of such a set of claims under Article 13(2) RPBA 2020.

3.6.2 Other Boards, on the other hand, held that the filing of a set of claims which differed from a set of claims in the proceedings only to the extent that certain claims were deleted, constituted an amendment to a party's appeal case so that the Board had discretionary power to admit such a request (see the summary of case law in T 494/18, point 1.3.2 of the Reasons).

3.6.3 The aforementioned lines of case law therefore differ in their interpretation of the term "amendments to a party's appeal case".

3.6.4 Since that term is not defined in Article 13 RPBA 2020 itself, some decisions (see T 247/20, point 1.3 of the Reasons; T 2091/18, point 4.1 of the Reasons) apply a systematic interpretation, i.e. the term is interpreted in the context of other provisions. In that respect, Article 12(3) RPBA 2020, according to which the statement of grounds of appeal or the reply shall contain a party's complete appeal case, is relied upon. Further considering that Article 12(2) RPBA 2020 inter alia requires the appeal to be directed to the requests on which the decision under appeal was based, the Legal Board of Appeal concluded, in J 14/19 (see point 1.4 of the Reasons), e contrario that submissions by the parties which are not directed to the requests contained in the statement of grounds or reply thereto imply an amendment to a party's appeal case. Therefore, according to that systematic interpretation, the filing of an amended set of claims, even if the amendment is merely a deletion of claims and the remaining claims were already part of a set of claims in the appeal proceedings, constitutes an amendment to a party's appeal case.

3.6.5 The Board finds the systematic interpretation of the term "amendments to a party's appeal case" convincing and endorses this view. That conclusion is furthermore supported by the fact that amendments to a set of claims have a direct impact on the version of the patent in which it might be maintained, and therefore concerns the - as a rule - central matter of opposition and opposition appeal proceedings. The late filing of the first auxiliary request therefore constitutes, in the Board's view, an amendment to the respondent's appeal case within the meaning of Article 13(2) RPBA 2020. In this respect, the Board follows decisions T 2091/18, point 4.1 of the Reasons and T 494/18, point 1.4 of the Reasons.

3.7 With regard to the question of discretion, the Board would first like to point out that Article 13(2) RPBA 2020 does not explicitly provide for discretionary power of the Boards. However, it is clear from the explanatory remarks that the legislator had the intention to give the Boards discretionary power (see Supplementary Publication 1, OJ EPO 2020, Annex 2, page 221, explanatory remarks in the third column, third paragraph, last sentence: "The Board may decide to admit the amendment in the exercise of its discretion."). This is also apparent from Article 13(1), first sentence, RPBA 2020, which in general provides for discretion for the admittance of amendments to the appeal case after the filing of the statement of grounds or reply. Furthermore, the exclusion of any discretion would hardly be compatible with Article 114(2) EPC.

3.8 In T 1294/16 the question was raised of whether and to what extent Article 13(2) RPBA restricted the exercise of discretion in view of the term "in principle" used in this provision ("Any amendment to a party's appeal case made ... shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned." (emphasis by the Board)). In T 1294/16 the Board concluded that the word "in principle" should be ignored due to its ambiguity, because it was either redundant to the requirement of "exceptional circumstances" or would provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (cf. ibid., point 18.1 of the Reasons). The Board does not follow this approach, since a term contained in a legal provision should only be disregarded if no interpretation appears possible or if it appears to be manifestly contrary to the meaning of the provision, or if an interpretation cannot be reconciled with higher-ranking law (see Article 23 of the RPBA 2020).

3.9 On the contrary, the Board is of the opinion that a meaningful interpretation is readily possible. The principle laid down in Article 13(2) of the RPBA 2020 is precisely that amendments to a party's case shall not be taken into account at this late stage of the procedure ("in principle"). The exception to this principle then follows in the half sentence introduced by the phrase "unless", i.e. the principle that amendments to a party's case shall not be taken into account at this late stage of the procedure (i.e. "in principle") can be set aside if the existence of exceptional circumstances is demonstrated with cogent reasons. Such an interpretation is also consistent with the explanatory remarks to Article 13(2) RPBA 2020 (see Supplementary Publication 1, OJ EPO 2020, Annex 2, page 221, explanatory remarks in the third column, third paragraph, first three sentences) which read as follows: "The basic principle of the third level of the convergent approach is that, at this stage of the appeal proceedings, amendments to a party's appeal case are not to be taken into consideration. However, a limited exception is provided for: it requires a party to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons")." (emphasis by the Board).

3.10 The question then arises as to whether there are exceptional circumstances within the meaning of Article 13(2) RPBA 2020 which could justify taking into account the first auxiliary request in the procedure. In this context, it should be noted that the late submission of this auxiliary request was justified by the fact that it had been filed in reaction to the Board's preliminary opinion on the appellant's objections under Article 100(b) EPC and that the claims remaining after the deletion were already part of the main request and were discussed in detail by the parties in the proceedings. However, the filing of a set of claims in which claims 2 to 5 and claims 12 and 13 of the main request were deleted would already have been possible and reasonable with the rejoinder to the statement of grounds of appeal in response to objections raised in the statement of grounds of appeal, i.e. it was not triggered in the present case by subsequent developments in the appeal proceedings.

3.11 Following the explanatory remarks to Article 13(2) RPBA 2020 (see Supplementary Publication 1, OJ EPO 2020, Annex 2, page 221, explanatory remarks in the third column, third paragraph, third sentence), a party has "to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons")." (emphasis by the Board). Accordingly, the explanatory remarks appear to require causality in the sense that the amendments to a party's appeal case must have been triggered by exceptional circumstances.

3.12 However, in similar cases, some Boards have acknowledged exceptional circumstances provided that the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA, nor to the legitimate interests of a party to the proceedings. This specific procedural situation was considered an "exceptional circumstance" within the meaning of Article 13(2) RPBA 2020 (see T 1598/18, point 25.1 of the Reasons; T 1294/16, points 18.3 and 19 of the Reasons; T 339/19, point 1.5 of the Reasons).

3.13 In this context, however, it should be noted that in the aforementioned cases the late amendments to the appeal case, i.e. the deletion of certain claims or groups of claims, was not causally linked to exceptional circumstances. The admittance of such late amendments in the above decisions seems to be based rather on a legal assessment of the specific procedural situation, by requiring that the amendments are not detrimental to procedural economy and do not affect the legitimate interests of another party, which can be considered as "exceptional" when an amended set of claims is filed at such a late stage of the proceedings. It should be noted that the wording of Article 13(2) RPBA 2020 does not require the amendment to be triggered by exceptional circumstances. It is sufficient for exceptional circumstances to exist, which can therefore also be of a legal nature. In the Board's view, such an interpretation does not conflict with the above explanatory remarks, which appear to illustrate only the main scenario under that provision that an amendment to the appeal case may be taken into account if it is made in reaction to exceptional circumstances.

3.14 In addition, a teleological interpretation which considers the purpose of the EPO's power to disregard late-filed facts or evidence and the discretionary power to refuse new requests as enshrined in Articles 114(2) and 123(1) EPC seems to support this conclusion. It follows from the preparatory documents ("travaux préparatoires") to the EPC 1973 (cf. T 122/84, point 11 of the Reasons; T 951/91, point 5.13 of the Reasons) that this procedural possibility is intended to prevent the parties from improperly delaying the proceedings. In particular, it serves to ensure the principles of procedural economy and of fair proceedings. It should therefore be noted that the power to disregard late submissions under the EPC does not constitute a procedural end in itself. In the Board's view, therefore, there is no reason, unless there is a risk of prejudice to the above principles, to disregard requests filed at a late stage of the proceedings aiming at maintenance of a patent in a particular version (cf. also T 339/19, points 1.3.3 and 1.5 of the Reasons).

3.15 As regards the present first auxiliary request it is noted that it differs from the main request only in that claims 2 to 5 and claims 12 and 13 have been deleted. Furthermore, the remaining claims have already been discussed in detail by the parties in their written submissions, so that the appellant's legitimate interests are not adversely affected by that change of case. Thus, the first auxiliary request neither altered the factual or legal framework of the proceedings, nor was there a need for a re-weighting of the subject of the proceedings. Moreover, with the filing of the first auxiliary request, the other auxiliary requests were also withdrawn, so that the procedure as a whole was simplified. The "change of case" therefore served the purpose of procedural economy and was not contrary to the principle of fair proceedings.

3.16 For these reasons, which in the Board's view constitute exceptional circumstances within the meaning of Article 13(2) RPBA 2020, the Board made use of its discretion pursuant to Article 13(2) RPBA 2020 by admitting the first auxiliary request into the proceedings.