T 0416/12 - Don't wait for the Board

Key points

• The Board does not admit auxiliary requests filed one month before the oral proceedings and after receipt of the preliminary opinion. 
• The Board summarizes established case law: "  unless good reasons exist for filing amendments so far into the procedure - this may be the case when amendments are occasioned by developments during the proceedings - [such requests] are only admitted at such a late stage if they are clearly or obviously allowable []. This means that it must be immediately apparent to the Board, with little or no investigative effort on its part, that amendments successfully address the issues raised without giving rise to new ones [].
• "  Finally, the Board is unconvinced that the overall duration of the opposition proceedings (currently 10 years) would justify the late submission of requests by the respondent in appeal, and that not admitting them would therefore represent a violation of their right to be heard. To the contrary, as apparent from the preceding section, the respondent has had almost 4 years to submit these requests and supporting arguments but chose not do so." 

T 0416/12 - link

Reasons for the Decision

3. Auxiliary requests - admissibility

3.1 According to Article 12 (2) of the Rules of Procedure of the Boards of Appeal (RPBA) "the statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on."

Thus, in accordance with the need for procedural economy and a fair proceedings, the underlying principle is one of early and complete presentation of the parties' case, as opposed to the piecemeal and tardy introduction of, amongst others, the arguments relied on, see Case Law of the Boards of Appeal, 7th edition 2013 (CLBA) IV.C.1.4.1 c), in particular T0951/91, reasons point 5.4.

3.2 In the present case, the first and second auxiliary requests were filed with letter of 16 March [read: May] 2016. They were thus filed after filing the reply to the grounds of appeal and after oral proceedings had been arranged [and after the preliminary opinion of the Board of 22 March, the oral proceedings were held on 14 June 2016]. Consequently, they constitute amendments to the respondent's case in the sense of Article 13 of the Rules of Procedure of the Boards of Appeal (RPBA). Under paragraph (1) of that article the Board has discretion in admitting such amendments. It shall exercise that discretion "in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy". Furthermore, under paragraph (3) of the article, "amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

3.3 An approach frequently adopted by the Boards when exercising their discretion in admitting amendments filed shortly before or in the course of oral proceedings can be summarized as follows: unless good reasons exist for filing amendments so far into the procedure - this may be the case when amendments are occasioned by developments during the proceedings -, they are only admitted at such a late stage if they are clearly or obviously allowable, see the Case Law of the Boards of Appeal, 7th edition, 2013, sections IV.C.1.4.1 and 1.4.2 and the decisions cited therein.

This means that it must be immediately apparent to the Board, with little or no investigative effort on its part, that amendments successfully address the issues raised without giving rise to new ones, see for example T 0087/05, reasons 2.

3.3.1 In the present case the Board does not consider that the amendments are in response to unforeseen developments during proceedings. The requests are said to be filed with a view to overcoming inventive step objections to claim 1 of the main request. However this objection was already raised by the appellant in their grounds of appeal, inter alia vis-à-vis D2 (see appellant's appeal grounds, pages 17 to 19), in response to the appealed decision's positive finding vis-à-vis D2 (reasons 3.5.2 and 3.5.3). It was addressed in the respondent's reply of 29 October 2012, section F.3.2, and in the Board's communication in section 9.3 and again in the respondents final letter of 16 May 2016, section D.7.3. It can therefore hardly have come as a surprise, i.e. have been an unforeseen development, that inventive step starting from D2 was an issue.

3.3.2 Furthermore, whether or not the amendments give rise to new issues, it is not immediately apparent to the Board why the amendments should successfully address the issues raised. Whereas the letter accompanying the requests indicated the basis of amendments, the respondent provided no explanation as to why the subject matter of the independent claim of the auxiliary requests should, inter alia, involve an inventive step.

Nor are the amendments of such a nature that the Board could be expected to immediately realise, without investigative effort that they must overcome, amongst others, the inventive step objections made with respect to the main request. As the respondent explained (see their letter of 16 May 2016, page 2, point B3) claim 1 of the auxiliary requests essentially combines claim 1 of the main request with technical features taken from dependent claims. The amendments are therefore substantive in nature and would thus require proper investigation, inter alia in respect of inventive step vis-à-vis the prior art on file.

3.4 By waiting to present their arguments in respect of these issues until the very last moment, namely at the oral proceedings, barring their adjournment, the respondent denies the appellant the chance to properly consider and formulate counter arguments, and the Board the chance to prepare for the parties' arguments.

In the Board's view, admitting such requests with their associated supporting arguments revealed for the first time at the oral proceedings would neither be compatible with a fair procedure nor with the need for procedural economy. Rather, in accordance with the procedure codified by Article 13 (3) RPBA, the Board considers that the requests should not be admitted.

3.5 It is not in dispute that the appellant commented in their grounds of appeal (see their appeal grounds pages 23 and 24) on requests in the opposition proceedings worded almost the same as the respondent's late filed auxiliary requests. However, in the Board's view this does not relieve the respondent of the need for complete presentation of their case as early as possible. If this were not so it would place an unfair onus on the appellant as opponent to correctly predict what requests and associated arguments the respondent as proprietor might later introduce into the proceedings. Nor does the fact that similar requests were already on file in the opposition proceedings change the way in which the Board should exercise its discretion in admitting late filed requests and arguments in appeal proceedings. In accordance with established jurisprudence, the appeal procedure is not a continuation of the opposition procedure, but a distinct procedure in which any facts, evidence or arguments considered relevant must, if need be, be resubmitted. Were this not the case, Rule 12(2) RPBA would serve no purpose. For decisions highlighting the independent nature of appeal proceedings, see G 10/91, OJ 1993, 420; G 9/92 and G 4/93, both in OJ 1994, 875.

3.6 For all these reasons the Board decided not to admit the first and second auxiliary requests into the proceedings in accordance with Article 114(2) EPC.

4. Objection under Rule 106 EPC regarding violation of right to be heard

4.1 The respondent (patent proprietor) objected that the Board's finding violated their right to be heard for the following reasons:

- previous to the oral proceedings before the Board the inventive step of claim 1 of the main request had never been discussed vis-à-vis document D2 in combination with common general knowledge,

- the duration of the proceedings is not acceptable,

- no proof (document proving) common general knowledge had been provided.

4.2 It is evident from the preceding section that D2 was addressed as starting point in the decision under appeal, the appellant-opponent's grounds of appeal and the board's communication. The latter at section 9.3 refers to the appellant's arguments that relate to combinations involving D2. The appellant's grounds, page 17 under "A56" in points 87 to 105 discuss inventive step based on D2 alone, arguing obviousness of differences in their own right without any further documents. This issue, identified as decisive by the Board at the oral proceedings, was discussed there in detail and the respondent given ample opportunity to respond. In this point the Board is unable to see any violation of the right to be heard.

4.3 Nor did the discussion of inventive step hinge on any particular instance of common general knowledge, but rather on the skilled person's understanding of the relevant passage of D2 (cf. section 2.6 above). The respondent's objection regarding lack of proof of common general knowledge is therefore beside the point. Apart from this, the objection was raised only after all requests had been discussed and decided.

4.4 Finally, the Board is unconvinced that the overall duration of the opposition proceedings (currently 10 years) would justify the late submission of requests by the respondent in appeal, and that not admitting them would therefore represent a violation of their right to be heard. To the contrary, as apparent from the preceding section, the respondent has had almost 4 years to submit these requests and supporting arguments but chose not do so.

4.5 From the above the Board concludes that none of the points raised constitute a violation of the right to be heard. The Board therefore decided to dismiss the objection.