T 0945/12 - Claims are not facts under Article 114

Key points

The OD did not admit a request under Article 114 EPC.
" In the opinion of the Board, claims are not facts within the meaning of Article 114(2) EPC (see also Bühler in Singer/Stauder, "Europäisches Patentübereinkommen", 7th edition, 2016, Art 114, 52; T 133/92 of 18 October 1994, reasons 7), so that the Opposition Division did not provide the correct legal basis for not admitting the request. Nonetheless, the same reasoning would apply under Rule 116(2) EPC."

EPO T 0945/12 -  link

7. Admission

7.1 The Opposition Division did not admit into the proceedings the auxiliary request submitted during oral proceedings at 15:10, which substantially corresponds to auxiliary request I filed with the grounds of appeal. It is therefore questionable whether auxiliary request I should be admitted into the appeal proceedings.

7.2 The Opposition Division did not admit the request submitted during oral proceedings at 15:10 under Article 114(2) EPC, "for being facts not submitted in due time". In the decision under appeal it argued that three late-filed requests had already been admitted during the oral proceedings. It shared the opponent's view that the opponent/respondent could not reasonably be expected to familiarise itself, in the time available, with the proposed amendments, which were "much more extensive than the previous ones, technically complex" and which "would require an additional search of relevant documents if the question of inventive step would arise" because they were "not based on any of the previous claims". The opponent had stated that a prolonged adjournment of the further proceedings would probably be necessary, if the amended claims of the proprietor's request were to be admitted.

The decision under appeal also mentions that the subject of the proceedings had not changed since the summons, so that the proprietor had had the opportunity to file the amendments in due time. Furthermore, the amendments had not revealed that they would prima facie render the claims allowable with respect to added subject-matter or inventive step.

7.3 In the opinion of the Board, claims are not facts within the meaning of Article 114(2) EPC (see also Bühler in Singer/Stauder, "Europäisches Patentübereinkommen", 7th edition, 2016, Art 114, 52; T 133/92 of 18 October 1994, reasons 7), so that the Opposition Division did not provide the correct legal basis for not admitting the request. Nonetheless, the same reasoning would apply under Rule 116(2) EPC.

7.4 According to decision G 7/93 (OJ EPO 1994, 775) and established case law, a board of appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department has not exercised its discretion in accordance with the right principles or that it has exercised it in an unreasonable way (G 7/93, reasons 2.6). In a plurality of decisions the boards of appeal have stated that in such a case the board of appeal had nevertheless to exercise its discretion under Article 12(4) RPBA independently, giving due consideration to the appellant's additional submissions. In doing so, the board of appeal was not re-exercising the discretion of the department of first instance based on the case as it was presented then, but rather taking into account additional facts and different circumstances while exercising its own discretion under Article 12(4) RPBA (see e.g. T 971/11 of 4 March 2016, reasons 1.2, and T 2219/10 of 6 September 2016, reasons 3.1 to 3.3).

In line with those decisions, in the following the Board exercises its discretion with regard to auxiliary request I in the light of the new circumstances and submissions, while taking into account the reasoning given by the Opposition Division for not admitting the very similar request in the first instance proceedings.

7.5 The appellant did not provide arguments directly addressing the question why auxiliary request I should be admitted in the appeal proceedings. However, it provided a basis for the claim features and extensive arguments regarding novelty.

7.6 The Board notes that most of the reasons invoked by the Opposition Division no longer apply.

Since auxiliary request I was submitted with the grounds of appeal, both the Board and the former opponent have had time to examine the request. Moreover, the former opponent did not reiterate its request that auxiliary request I not be admitted in appeal proceedings and has anyway withdrawn its opposition.

7.7 Exercising its discretion within the meaning of Article 12(4) RPBA, the Board therefore decides to admit the request into the appeal proceedings.