T 1914/12 - Late arguments to be admitted

Key points

• In this opposition appeal, an argument was made for the first time with a letter during the appeal procedure. The question is whether the argument is admissible. In the preliminary opinion, the Board had indicated that the argument would be not admitted under Article 13(1) RPBA.
• The Board's decision clearly makes a case, was given publication code [B] by the Board and goes against the presently predominant case law. Yet, the decision does not entirely convince me. The decision was also summarized on the DeltaPatents blog (here), at the Patent my French blog (here) and in French here.
• The Board notes that Art. 114(2) gives the power to disregards "fact or evidence" which are not submitted in due time, and further notes that Article 114(1) refers to "facts, evidence and arguments" in the English version (the German and French versions of Article 114 are silent about 'arguments'). 
• As indicated in T1621/09, point 22, it is established case law that new arguments can be submitted at any stage of the first instance proceedings, and can not be disregarded as late because Art. 114(2) gives no power to disregard arguments (see also point 33, first sentence; and e.g. recently  T 2238/15). The Board in T1621/09 then finds that late arguments can be disregarded under Art. 13(1) RPBA as amended in 2003 (point 34).
• The present Board recapitulates T 1069/08 and T1621/09, in which it was held that the phrase "Any amendment to a party's case after it has filed its grounds of appeal or reply" in Art. 13(1) RPBA includes new arguments because Article 12(2) prescribes that the Statement of grounds "shall contain a party's complete case" and should specify expressly "all the facts, arguments and evidence relied on". The present Board finds that these decisions do not comply with Article 114(2) EPC, in particular, because the interpretation in T1621/09 "ignores the fact that Article 114(2) EPC does not justify such discretion, as the previous case-law has repeatedly stated" (point 7.2.3).
• In T 1621/09, it was held that (now) Article 13 RPBA as introduced in 2003 gives the Boards the power hold inadmissible late arguments. Regarding the travaux of the provision (which I believe are not publicly available), the Board in T 1621/09 recalls that in the explanatory notes to the proposal as sent to the AC, reference was made to an amendment to a party's case "whether relating to facts, evidence or requests", whereas in the explanatory notes to the earlier proposal sent to the Presidium of the Boards, reference was made to amendments of a party's case as filed, "whether relating to facts, evidence, arguments or requests", i.e "arguments" was omitted from the explanatory notes for the AC. From T1621/09, par 33: "the change in the wording between the [explantory documents] indicates perhaps that new arguments alone were not considered to be the subject matter of amendment, although the extended wording ("whether relating to facts, evidence or requests") is in fact not limiting and was not repeated in the accompanying draft text and is not found in the present rule." 
• The present Board concludes that this change in the explantory document "seems to express the intent of the Presidium" (point 7.2.1). The Board also concludes that the RPBA also can not give powers to the Board that they do not have under the EPC.
• The Board concludes that it does not have the power to hold the argument inadmissible, such that the allegedly further distinguishing feature must be considered. The Board remits the case.
• In this opposition case, the opponent had bought the patent during the appeal stage, after the OD had revoked the patent (and registered itself as patentee) and had withdrawn the opposition; and only then as patentee had filed an extensive letter including the new argument at issue. I assume that there is therefore no one unhappy with the patent pending for some more years simply because the patentee came up with an argument about some further distinguishing feature (mention of the grant 20.05.2009; decision OD 09.07.2012). 
• The decision appears a bit problematic in that parties may often be able to come up with new arguments, forcing a remittal under this decision. Justice delayed is justice denied.
• In my view, Art. 177(1)  EPC forbids deriving too much from one language version of the EPC, because the three text are "equally authentic". From a brief study of the travaux of Art. 114, the terminology is already interesting in the Haertel draft of 1961, where the French precursor of Art. 114 does refer to arguments (IV/5569/61-F). A study in more detail goes beyond this blog post. For instance, why are the "requests" present in the French and German version of Art. 114(1) EPC but not in the English version? For how to deal with discrepancies in equally authentic language versions, it is useful to turn to EU case law: "the need for a uniform interpretation of  those versions requires, in the case of divergence between them, that the provision in question be interpreted by reference to the purpose and general scheme of the  rules of which it forms part" (ECLI:EU:C:1996:404, par. 28; see also this EU law handbook). Addendum 27.06.201: see also G4/19 referring to Art. 33 VLCT.
• I wonder if the cited preparatory documents are publicly available?

Addendum 05.04.2020:

T1621/09 r.37(b) stated that “To the extent that the decision of the Enlarged Board in G 4/92 deals with the general admissibility of new arguments, it must be taken to have been modified in accordance with (a) above by the Rules of Procedure of the Boards of Appeal introduced with effect from 1 May 2003.” Buhler in Singer/Stauder/Luginbuhl 8th ed. Art.114 fn.69 adds that because the explanation of the EPC by the EBA is on the same level as the EPC (Articles) in the hierarchy of norms, a different rule can only be achieved by an amendment of the EPC if (for the present issue of late-filed arguments) Article 114(2) provides an exhaustive rule. 

In G4/92, “The [Enlarged] Board referred to Articles 114(1) and (2) EPC and the possibility of the opposition division or Board of Appeal examining late-filed facts or evidence, but concluded that the other party must be given the opportunity to comment on such material, and a decision may therefore not be based on facts or evidence put forward for the first time during oral proceedings when the other party is absent. As to the admissibility of new arguments during oral proceedings at which the other party is not present, the Board said: "... the requirements of Article 113(1) EPC have been satisfied even if a party who has chosen not to appear consequently did not have the opportunity to comment on them during oral proceedings, insofar as such new arguments do not change the grounds on which the decision is based. In principle, new arguments do not constitute new grounds or evidence, but are reasons based on the facts and evidence which have already been put forward."” (quote from T1621/09 r.19)

Furthermore, Article 114(2) was interpreted in T122/84 r.11 (about the conflict between the examination of own motion, and the power to disregard late-filed facts and evidence): “However, a solution seen as not conflicting with the principle of examination by the Office of its own motion was that of leaving the department concerned to decide whether facts or evidence not submitted in due time should be examined instead of ruling out that possibility - an alternative also considered. In adopting this solution it was assumed that sparing use would be made of the option of disregarding facts or evidence, whose purpose was to prevent the parties from improperly dragging out opposition proceedings (see BR/12/69, loc. cit.).” (cited by Singer/Stauder/Luginbuhl 8th ed. Art.114 rdn.46.

Addendum 29.06.2020
" The RPBA can help in clarifying and interpreting the EPC but they cannot confer on the boards any powers that the EPC does not give them (T 1914/12, citing Art. 23 RPBA in this context)." (CLBA VII.1.4)

r.7.2.3: "Selon la présente chambre, le RPCR, s'il peut préciser et interpréter les dispositions de la CBE, ne saurait conférer aux chambres de recours des pouvoirs que la CBE ne leur donne pas."

EPO T 1914/12 -  link

EPO Headnote
The Boards of Appeal do not have a discretion as to the admissibility of late arguments based on facts already in the proceedings (decision departing from T 1621/09) (translation)

Les chambres de recours ne disposent pas d'un pouvoir d'appréciation quant à la recevabilité d'arguments tardifs qui se fondent sur des faits qui sont déjà dans la procédure (décision s'écartant de T 1621/09)

[Text in French of the decision can be found on the EPO website]