T 2329/15 - Unusual but not exceptional

 Key points

• The applicant files an auxiliary request after the notification of the summons for oral proceedings. The admissibility is governed by the Art. 13(2) RPBA 2020 and requires exceptional circumstances. 
• “the representatives explained that the request was filed in response to the novelty objections raised in the communication accompanying the summons to oral proceedings. It had not been possible to file it earlier since the representatives had been unable to contact the appellant for months.” (the latter being unusual)
• The Board: “The appellant's lack of involvement in the prosecution of the present case, as unusual as it may be, can in the current case not be regarded as "exceptional circumstances" which may lead the Board to admit the filing of the new second auxiliary request after notification of the summons to oral proceedings. "Exceptional circumstances" generally concern new or unforeseen developments of the appeal proceedings themselves, such as new objections raised by the Board (or another party). In the present case, however, the novelty objection in view of D6 had already been raised by the Examining Division and formed part of the reasons for the impugned decision. Thus, whether or not the appellant's representatives were unable to liaise with their clients in the period between notification of the summons and the oral proceedings is of no relevance to the issue of admittance of the request into the proceedings.” 
• (typo corrected)
  

EPO T 2329/15 -  link

4. New second auxiliary request

4.1 The appellant explained that in order to remedy the raised novelty objection, amended claim 1 filed during oral proceedings was formulated as a purpose-related product claim in the sense of Article 54(5) EPC specifying a medical use otherwise excluded from patentability under Article 53(c) EPC. Claim 1 was no longer addressed at a device, but at a "composition" of first and second marker elements for use in a biopsy cavity marking device for identifying a subcutaneous biopsy cavity and for long-term follow-up of the subcutaneous biopsy cavity.

4.2 Article 13(2) RPBA 2020 specifies that any amendment to a party's case filed after notification of a summons to oral proceedings "shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned".

4.3 When queried about the reasons justifying the late filing of the request during oral proceedings, the representatives explained that the request was filed in response to the novelty objections raised in the communication accompanying the summons to oral proceedings. It had not been possible to file it earlier since the representatives had been unable to contact the appellant for months.

4.4 The Board disagrees. The appellant's lack of involvement in the prosecution of the present case, as unusual as it may be, can in the current case not be regarded as "exceptional circumstances" which may lead the Board to admit the filing of the new second auxiliary request after notification of the summons to oral proceedings. "Exceptional circumstances" generally concern new or unforeseen developments of the appeal proceedings themselves, such as new objections raised by the Board (or another party). In the present case, however, the novelty objection in view of D6 had already been raised by the Examining Division and formed part of the reasons for the impugned decision. Thus, whether or not the appellant's representatives were unable to liaise with their clients in the period between notification of the summons and the oral proceedings is of no relevance to the issue of admittance of the request into the proceedings.

4.5 The Board, therefore, exercised its discretion under Article 13(2) RPBA 2020 not to admit the new second auxiliary request.