T 0364/20 - The admissibly-raised exception

Key points

•  The Board arrives at auxiliary requests 1  to 16, which are carry-over requests. 
• "To examine whether auxiliary requests 1 to 16 were admissibly raised before the opposition division, it is necessary to consider the file history."
• The requests were filed by the Rule 116 EPC date.
• The opponent: " It submitted that claim 1 as granted had been amended in at least seven different diverging directions in auxiliary requests 1 to 16 and referred to the table bridging pages 5 and 6 of its letter dated 3 November 2020. Moreover, claim 1 of several auxiliary requests contained various combinations of the granted dependent claims which were not disclosed as such in the claims as granted. Features from the description had also been included. "
• The Board considers that auxiliary requests filed with the reply under Rule 79(1) EPC can be held inadmissible in exceptional cases only. "The board bases this view on decision R 6/19 of the Enlarged Board of Appeal, according to which (catchword) the basis for an opposition division's discretion to admit or not claim requests is Article 123(1) EPC. The Enlarged Board held (reasons, points 7 to 9) that under Article 123(1) EPC, a patent proprietor does not always have the right to amend its patent and that "amendments and their admission into the proceedings shall be in accordance with the provisions of the implementing regulations". The Enlarged Board referred to Rule 81(3) EPC, which gives the opposition division the discretion not to admit claim requests. The Enlarged Board derived this discretion especially from the rule's provision that an opportunity to amend the patent must be given only "where necessary". The current board observes that in a similar way, Rule 79(1) EPC stipulates that a patent proprietor must be given the opportunity to amend its patent in reply to the notice of opposition only "where appropriate"."
• "The existence of a truly exceptional situation leading to the consideration of claim requests filed within the time limit set under Rule 79(1) EPC to not have been admissibly raised should be decided on a case-by-case basis. Such a situation might occur where an abuse of the proceedings occurred, e.g. when an unreasonably high number of diverging auxiliary requests were filed without proper justification. The number of grounds for opposition or different objections raised by an opponent as well as the number of opponents may represent, inter alia, criteria to be considered."
• The relation of this holding to Rule 80 EPC could be considered.
• "Decision T 221/20 (points 2.1 to 2.4) considered auxiliary requests filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit under Rule 116(1) EPC set by the opposition division in its summons to attend oral proceedings to have been admissibly raised. In fact, the current version of the Guidelines for Examination in the EPO (March 2023 Edition), in Section E-VI.2.2.2, states that "[a]mendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed".
•  "However, in the board's view, it cannot be held that any claim request submitted after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is automatically filed in due time and thus was admissibly raised."
• This could be an important point for the practice of the OD if the first instance departments were to follow the present decision and/or other Boards were to follow the present decision.
• The point also raises the interesting question of how free the Boards are to depart from the GL under the "admissibly raised" exception. And, if the Boards apply different rules for the "unless clause" that the OD's, how would such a double set of rules work in practice.
• "The board holds that whether or not a claim request filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is to be considered to have been filed in due time depends on whether it was submitted as a direct and timely response to a change of the subject of the proceedings introduced by the opponent or the opposition division."
• The requests are admitted, are each considered on the merits, and the patent is revoked. 

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t200364eu1

Auxiliary requests 1 to 16 - admittance into the proceedings under Article 12(2) and (4) RPBA 2020

5. The respondent filed auxiliary requests 1 to 16 before the opposition division by letter dated 20 September 2019.

5.1 The opposition division decided to reject the opposition and thus did not decide on the admittance of auxiliary requests 1 to 16 (see appealed decision, page 8, point II5). The respondent argued that since these auxiliary requests were filed before the opposition division and no decision on their admittance had been taken, the requests were per se part of the appeal proceedings.

5.2 The statement of grounds of appeal was filed on 28 April 2020. Therefore, the Rules of Procedure of the Boards of Appeal in their revised version that entered into force on 1 January 2020 apply.

5.3 Under Article 12(2) RPBA 2020, a party's appeal case shall be directed, inter alia, to the requests on which the decision under appeal was based. Since the opposition division did not decide on the admittance of auxiliary requests 1 to 16, the appealed decision is not based on these requests. Thus, the reliance of the respondent on auxiliary requests 1 to 16 in the appeal proceedings does not meet the requirements of Article 12(2) RPBA 2020.

5.4 Under Article 12(4) RPBA 2020, "[a]ny part of a party's appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal. Any such amendment may be admitted only at the discretion of the Board" (emphasis added by the board).

5.5 Hence, the respondent's reliance in appeal on auxiliary requests 1 to 16 constitutes an amendment of its appeal case unless these requests were admissibly raised and maintained before the opposition division. It was not contentious between the parties that the auxiliary requests had been maintained throughout the opposition proceedings. A decisive question on the admittance of auxiliary requests 1 to 16 is therefore whether these requests had been admissibly raised before the opposition division. If this is the case, the board has no discretion for not admitting them into the proceedings under Article 12(4) RPBA 2020.

5.6 To examine whether auxiliary requests 1 to 16 were admissibly raised before the opposition division, it is necessary to consider the file history.

5.6.1 The patent was opposed in its entirety on the ground under Article 100(a) EPC in combination with Article 56 EPC, lack of inventive step (Form 2300, points V and VI). In the notice of opposition, the appellant raised objections against all dependent claims (notice of opposition, pages 9 to 11).

5.6.2 With the reply to the opposition, and before expiry of the time limit set under Rule 79(1) EPC, the respondent filed four sets of claims according to auxiliary requests 1 to 4.

5.6.3 The opposition division issued a preliminary opinion stating that the subject-matter of claim 1 as granted was inventive over the prior art cited by the appellant (D1, D4 and D5 were indicated as possible closest prior-art documents).

5.6.4 The appellant replied to the opposition division's preliminary opinion and maintained that the subject-matter of claim 1 as granted was not inventive. It also raised objections against inventive step of auxiliary requests 1 to 4 then on file.

5.6.5 On 20 September 2019, i.e. two months prior to the oral proceedings before the opposition division and within the time limit set by the opposition division under Rule 116(1) EPC, the respondent filed the sets of claims according to current auxiliary requests 1 to 16. Auxiliary requests 5, 6 and 16 were identical to the previously filed auxiliary requests 1 to 3. No reasons were specified by the respondent as to why the remaining auxiliary requests had not been filed with the reply to the notice of opposition.

6. The appellant argued in appeal that auxiliary requests 1 to 16 had not been admissibly raised and requested that they not be admitted into the proceedings. It submitted that claim 1 as granted had been amended in at least seven different diverging directions in auxiliary requests 1 to 16 and referred to the table bridging pages 5 and 6 of its letter dated 3 November 2020. Moreover, claim 1 of several auxiliary requests contained various combinations of the granted dependent claims which were not disclosed as such in the claims as granted. Features from the description had also been included. Thus, prima facie, issues under Article 123(2) EPC arose, the discussion of which was detrimental to procedural economy. The appellant further noted that although the filing of diverging claim requests could be justified in some cases, e.g. when several grounds for opposition were invoked by an opponent, in the case at hand, only lack of inventive step had been put forward. No special reasons were mentioned by the respondent, nor can any be seen in view of the file history, which justified the filing of such diverging auxiliary requests only two months prior to oral proceedings. Moreover, the respondent had substantially modified its case two months in advance of the oral proceedings before the opposition division by filing, besides auxiliary requests 1 to 16, new experimental data and new submissions disputing the public availability of D4. In its reply to the preliminary opinion of the opposition division, the appellant had merely reiterated previous objections, and thus this reply could not have justified this change of the respondent's case. Two months was not enough time for the appellant to properly draft objections against the subject-matter of each of the newly filed diverging requests.

7. The board finds the appellant's arguments unconvincing for the following reasons.

To judge whether a claim request was admissibly raised in opposition proceedings within the meaning of Article 12(4) RPBA 2020, a board has to decide whether the opposition division should have admitted the claim request had a decision on admittance been required. If so, the claim request was admissibly raised. This will be examined in the following for the claim requests filed before the board in the current case.

7.1 Auxiliary requests 5, 6 and 16

7.1.1 Article 114(2) EPC gives an opposition division the discretion to disregard facts or evidence not submitted in due time by the parties concerned. As set out in decision T 1776/18 (points 4.5.5 and 4.5.6 of the reasons), for the purposes of Article 114(2) EPC, a patent claim is to be regarded as a statement of technical facts in legal terms and thus qualifies as "facts or evidence" within the meaning of Article 114(2) EPC. An opposition division thus has, as a rule, the discretion to admit or not to admit a late-filed claim request.

7.1.2 On 18 July 2018, the opposition division issued a communication under Rule 79(1) EPC informing the respondent that an opposition had been filed and setting a time limit of four months for filing observations and/or amendments. As set out above, auxiliary requests 5, 6 and 16 are identical to auxiliary requests 1 to 3 filed by the respondent with its reply to the notice of opposition with the letter of 23 November 2018. Auxiliary requests 1 to 3 (current auxiliary requests 5, 6 and 16) were thus filed within the time limit set by the opposition division in its communication under Rule 79(1) EPC. The time period up to the expiry of this time limit constitutes the earliest point during opposition proceedings in which a proprietor (respondent in these proceedings) can file amended claims. Therefore, auxiliary requests filed with the reply to the notice of opposition within the time limit set under Rule 79(1) EPC are not late filed. Thus, Article 114(2) EPC does not apply. Therefore, as a rule, claim requests filed in reply to the notice of opposition within the time limit set under Rule 79(1) EPC should be admitted by the opposition division and would thus be deemed to have been admissibly raised within the meaning of Article 12(4) RPBA 2020 (see e.g. T 2114/19 (unnumbered paragraph of the reasons with the heading "Auxiliary request 1") and T 1214/21 (point 5)).

7.1.3 Article 114(2) EPC does only apply to claim requests not submitted in due time. However, the board takes the view that from this article it cannot be derived, by inverse reasoning, that every claim request filed in due time must always be considered admissibly raised under Article 12(4) RPBA 2020.

On the contrary, auxiliary requests filed within the time limit under Rule 79(1) EPC might also be, in truly exceptional situations, considered not to have been admissibly raised within the meaning of Article 12(4) RPBA 2020. The board is aware that in this respect it diverges from what is stated in the Guidelines for Examination at the EPO in Section E-VI 2.1 ("If a patent proprietor replies to a notice of opposition by amending the patent, such a request for amendment cannot be considered as late-filed and has to be admitted into the proceedings (Rule 79(1))", emphasis added by the board).

The board bases this view on decision R 6/19 of the Enlarged Board of Appeal, according to which (catchword) the basis for an opposition division's discretion to admit or not claim requests is Article 123(1) EPC. The Enlarged Board held (reasons, points 7 to 9) that under Article 123(1) EPC, a patent proprietor does not always have the right to amend its patent and that "amendments and their admission into the proceedings shall be in accordance with the provisions of the implementing regulations". The Enlarged Board referred to Rule 81(3) EPC, which gives the opposition division the discretion not to admit claim requests. The Enlarged Board derived this discretion especially from the rule's provision that an opportunity to amend the patent must be given only "where necessary". The current board observes that in a similar way, Rule 79(1) EPC stipulates that a patent proprietor must be given the opportunity to amend its patent in reply to the notice of opposition only "where appropriate". Therefore, discretion is available to the opposition division also not to admit claim requests filed within the time limit set under Rule 79(1) EPC. Hence, these claim requests may, in truly exceptional situations, also be regarded as not having been admissibly raised.

The existence of a truly exceptional situation leading to the consideration of claim requests filed within the time limit set under Rule 79(1) EPC to not have been admissibly raised should be decided on a case-by-case basis. Such a situation might occur where an abuse of the proceedings occurred, e.g. when an unreasonably high number of diverging auxiliary requests were filed without proper justification. The number of grounds for opposition or different objections raised by an opponent as well as the number of opponents may represent, inter alia, criteria to be considered.

7.1.4 In the current case, the respondent only filed four auxiliary requests with its reply to the notice of opposition, with the amendments being based on dependent claims as granted (see below). Auxiliary requests 1 and 2 (identical to current auxiliary requests 5 and 6) were convergent with the main request; auxiliary request 3 (identical to current auxiliary requests 16) corresponded to auxiliary request 1 with the claims being amended as use claims; and auxiliary request 4 contained a single process claim, convergent with auxiliary request 3. Therefore, these auxiliary requests were convergent and clearly reasonable in number. In view of the above observations, these auxiliary requests should have been admitted into the proceedings had a decision on admittance been required by the opposition division. It follows that auxiliary requests 5, 6 and 16, being identical to three of the four requests filed with the reply to the notice of opposition, were admissibly raised in terms of Article 12(4) RPBA 2020.

7.2 Auxiliary requests 1 to 4 and 7 to 15

7.2.1 These auxiliary requests were filed after expiry of the time limit set under Rule 79(1) EPC and before expiry of the time limit set under Rule 116(1) EPC.

7.2.2 Decision T 221/20 (points 2.1 to 2.4) considered auxiliary requests filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit under Rule 116(1) EPC set by the opposition division in its summons to attend oral proceedings to have been admissibly raised. In fact, the current version of the Guidelines for Examination in the EPO (March 2023 Edition), in Section E-VI.2.2.2, states that "[a]mendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed" (emphasis added by the board).

7.2.3 However, in the board's view, it cannot be held that any claim request submitted after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is automatically filed in due time and thus was admissibly raised.

7.2.4 The board holds that whether or not a claim request filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is to be considered to have been filed in due time depends on whether it was submitted as a direct and timely response to a change of the subject of the proceedings introduced by the opponent or the opposition division.

7.2.5 In the current case, no reasons were mentioned by the respondent as to why auxiliary requests 1 to 4 and 7 to 15 had not been filed earlier, and especially why they had not been filed with the reply to the notice of opposition within the time limit set under Rule 79(1) EPC. Like the appellant, the board sees no reason for the filing of these auxiliary requests only at a later stage, especially in view of the preliminary opinion issued by the opposition division having been in the respondent's favour and since no substantial new submissions had been filed by the appellant in its reply to the opposition division's provisional opinion. In other words, the subject of the proceedings had not changed. Therefore, auxiliary requests 1 to 4 and 7 to 15 have to be considered to have been filed late during opposition proceedings.

7.2.6 Opposition divisions have the discretion to not admit any late-filed claim request if a decision on admittance is required (see e.g. T 966/17, points 2.2 to 2.4 of the reasons). Hence, the boards have the discretion to consider a late-filed claim request not to have been admissibly raised.

7.2.7 As set out by the Enlarged Board of Appeal in decision G 9/91 (loc. cit.), in contrast to appeal proceedings, the procedure before the opposition division has an administrative and investigative character. This allows an opponent to submit prior art also at a late stage of the procedure, which, unlike in appeal proceedings, if prima facie relevant, has to be admitted. In the same way, to properly defend its patent, a patent proprietor must, as a rule, be permitted to redefine its fallback positions in terms of auxiliary requests also at a late stage of opposition proceedings.

In the following, criteria available to opposition divisions when exercising their discretion not to admit a late-filed claim request are discussed.

7.2.8 The board acknowledges that lack of clear allowability as referred to by the appellant in the current proceedings may be a reason not to admit a late-filed claim request filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC. The board notes, however, that the Guidelines for Examination at the EPO, March 2023 Edition, refer to the criterion of clear allowability only for requests filed after the time limit set under Rule 116(1) EPC (see Section H-II.2.7.1 as referred to in Sections E-VI.2.1 and E-VI.2.2). In the current case, however, as set out above, auxiliary requests 1 to 4 and 7 to 15 were filed before rather than after the expiry of the time limit set under Rule 116(1) EPC. For such auxiliary requests, clear allowability should in the board's view at least not be the sole criterion an opposition division should look at when deciding to admit or not such claim requests. For such auxiliary requests, this criterion should thus not be the sole criterion for the board to decide whether they were admissibly raised.

7.2.9 Whether an opponent has sufficient time to deal with an amended claim request is, as argued by the appellant, another criterion the opposition division might consider. This criterion is also mentioned in the Guidelines for Examination at the EPO, March 2023 Edition, Section E-VI.2.2.3 (see also T 726/20, point 3.2 of the reasons and T 435/21, point 3.1 of the reasons). However, in the same way as for the criterion of clear allowability, the Guidelines mention this criterion only for claim requests filed after the expiry of the time limit set under Rule 116(1) EPC. It is indeed in this situation where the question whether the opponent has sufficient time to deal with the late-filed claim requests may play a prominent role.

In the case at hand, however, as set out above, the auxiliary requests were filed before rather than after the expiry of the time limit set under Rule 116(1) EPC, such that the appellant had two months to deal with the auxiliary requests. If the appellant considered that it did not have enough time to properly respond, it could and should have requested a postponement of the oral proceedings. No such request was made.

7.2.10 The board further acknowledges that other criteria like timeliness and complexity of the amendments, procedural economy, especially divergence of claim requests and suitability of the amendments to overcome previously raised objections without giving rise to new issues, which are generally used by the boards of appeal when exercising their discretion to admit or not an amendment to a party's appeal case (Articles 12(4) and 13(1) RPBA 2020), may also be considered when deciding whether or not a late-filed claim request submitted after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC should have been admitted by an opposition division and was thus admissibly raised (T 2385/12, reasons, point 1.6; T 84/17, reasons, point 2.2; T 1270/18, reasons, points 4 to 7; T 1695/18, reasons, point 10; T 602/20, reasons, point 12.3.1; T 1800/20, reasons, points 3.1 to 3.7). Whether or not the late-filed claim request was substantiated when filed before the opposition division could also be taken into account (a criterion used by the boards under Articles 12(3) and (5) RPBA 2020 for submissions filed in appeal). However, when taking this decision, in view of the above-stated administrative character of opposition proceedings, these criteria should be used by the boards in a more lenient way than for a party's submission filed during appeal proceedings.

7.2.11 In the current case, the appellant emphasised that the respondent had amended its case at a late stage during opposition proceedings without there being any reason for filing this amendment so late. There had not been any reason why the amended claims had not been filed in reply to the notice of opposition. Moreover, it pointed to the divergence of the amendments made.

7.2.12 The board acknowledges that if in appeal proceedings an amendment of the appeal case is filed after the initial stage of the appeal proceedings (filing of statement of grounds of appeal and reply) without proper justification and a reason why the amendment was not made at an earlier stage, a board might decide not to admit the amendment inter alia under Article 13(1) RPBA 2020. The board acknowledges that applying the same criterion in the same strict way to the filing of auxiliary requests 1 to 4 and 7 to 15 in the current case might lead to the conclusion that had a decision been needed on their admittance in opposition proceedings, they would not have been admitted, implying that they had not been admissibly raised. However, this would imply that criteria under Article 13(1) RPBA that deal with later stages of the appeal proceedings are applied in the same strict manner at a much earlier stage, namely during opposition proceedings. The board takes the view that this cannot be the correct approach.

7.2.13 The board further concurs with the appellant that the amendments made in auxiliary requests 1 to 4 and 7 to 15 were partially divergent (see below) and that divergence of claim requests can also play a role for opposition divisions when deciding on admittance. However, as argued by the respondent, the divergence in the case at hand can be regarded as being justified in view of the different inventive-step attacks of the appellant in the notice of opposition (three documents had been indicated as the possible closest prior art). Furthermore, as set out above, the amendments made in auxiliary requests 1 to 4 and 7 to 15 were essentially based on dependent claims as granted.

7.2.14 Therefore, although the opposition division's preliminary opinion was in favour of the respondent, the board considers the filing of auxiliary requests 1 to 4 and 7 to 15 to be a reasonable redefinition of the fallback positions of the respondent to defend its patent against a possible change of mind of the opposition division at the oral proceedings. Therefore, even though there has not been any change of the subject of the proceedings or other reason for filing the auxiliary requests only shortly before the expiry of the time limit set under Rule 116(1) EPC, the opposition division should have admitted auxiliary requests 1 to 4 and 7 to 15 into the proceedings if a decision on admittance had been required.

7.3 For these reasons, the board concludes that auxiliary requests 1 to 16 were admissibly raised and maintained by the respondent before the opposition division. Therefore, no discretion is available to the board under Article 12(4) RPBA 2020 for not admitting these requests into the proceedings.