T 1294/16 (I) - A close reading of Art. 13(2) RPBA

 Key points

• In this examination appeal, the Board gives a critical assessment of Article 13(2) specifying that certain amendments to party's appeal case “shall, in principle, not be taken into account, unless there are exceptional circumstances, which have been justified by cogent reasons by the party concerned”. 
• “The Board finds Article 13(2) RPBA 2020 to be ambiguous.”
• The applicant had submitted an auxiliary request after receiving the Board's preliminary opinion. The reasons for filing the requests stated by the applicant are not exceptional circumstances according to the Board (r.17.3).
• The Board, on the meaning of ‘exceptional’ in Art. 13(2) RPBA 2020: “The exceptionality is hence not necessarily linked to events being exceptional in the sense of deviating from the expected, but can also be caused by considerations related to the legal framework, notably the principles underlying the rules of procedure” because the Explanatory Notes to Art. 13(2) mention as example the Board raising a new objection, “although the Board raising a new objection is in a situation that may not necessarily be qualified as exceptional in the (dictionary) sense of unusual or uncommon.”
• “If admittance of a (late-filed) submission is not detrimental to procedural economy this Board considers it appropriate to accept that "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 are present, and justified to admit the submission, provided that this does not adversely affect any other party. ”
• The Board, on “ justified ... by the party concerned”: “ if the Board, of its own motion, finds the circumstances exceptional in view of the purpose of the convergent approach, then cogent legal reasons need not be brought forward by the party.”
• The Board, on “in principle”: “The Board concludes that the term "in principle" should be ignored.” as the term is either redundant, or makes Art. 13(2) contradictory, or “it is unclear inter alia whether the term "in principle" is meant to provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (or where no cogent reasons were supplied for their justification).” (the Board in fact assuming such residue of discretion). 
• See also T2155/15 of the same Board admitting a request under Art. 13(2) RPBA 2020: “The opponent had no objections to this auxiliary request being taken into account, and it was possible for the board to deal with the request without undue delay. Hence the board, of its own motion, found the situation to be exceptional, Article 13(2) RPBA 2020, no arguments in this respect from the respondent [patentee] being necessary. The board therefore admitted the auxiliary request. In so doing, the board concurred with the findings of T1294/16” 
  
  

T 1294/16

https://www.epo.org/law-practice/case-law-appeals/recent/t161294eu1.html

Reasons for the Decision

Auxiliary requests: admittance

(Article 13(1) and (2) RPBA 2020)

15. Article 13(1) RPBA 2020 states that any amendment to a party's appeal case after it has filed its grounds of appeal or reply may be admitted only at the discretion of the board. Article 13(2) RPBA 2020 further provides that any amendment to a party's appeal case made 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 by cogent reasons by the party concerned.

16. The amendments to the first two requests with respect to the auxiliary requests as filed with the grounds of appeal consisted in the addition of the following specification of the form of single data array resulting from the first alternative predetermined rule: which is two-dimensional.

16.1 The appellant explained that the amendments were a reaction to the Board citing document D7. It clarified that the first transformation rule lead to data being transformed into a two-dimensional matrix, and not a linear array for storage into memory, which was the teaching of D7.

16.2 The Board accepts that this is the case but notes that it had introduced D7 only as evidence that an argument by the Examining Division was based on common general knowledge (see the summons, point 17). This is a development that the appellant should have foreseen and which does not change the objection in substance.

17. The third auxiliary request was filed during the oral proceedings before the Board. The appellant stated that the filing was caused by the explanations provided by the Board during the oral proceedings as to why no technical effect could be acknowledged, in particular the distinction made between mathematics, software and hardware. The amendment aimed to make clear the difference with D1 in terms of the mathematical equation used and the usage of just two loops for computation instead of three.

17.1 However, the Board's finding of a lack of inventive step is a confirmation of the same finding of the Examining Division. Furthermore, it was already set out in the summons to oral proceedings that the mathematical result was the same and that no technical effect could be identified in view of the lack of software and hardware specification. That the Board is not persuaded by the argumentation of the appellant is a foreseeable possibility.

17.2 The amendments to the third auxiliary request limit the claims in such a way that an argument important to the appellant finds basis in the claim. The appellant's interest to make a claim fit its arguments is not, in the Board's view, sufficient to justify the late filing of amendments.

17.3 As explained in points 16.2, 17.1 and 17.2 the Board holds that the reasons provided by the appellant have not established "exceptional circumstances" in the meaning of Article 13(2) RPBA 2020 for filing the three auxiliary requests at late stages in the proceedings.

18. It needs to be decided whether, in view of the very stringent wording of Article 13(2) RPBA 2020, the Board may admit the new requests nonetheless.

18.1 The Board finds Article 13(2) RPBA 2020 to be ambiguous.

 It does not merely state that submissions filed after notification of a summons to oral proceedings shall not be taken into account, unless there are exceptional circumstances (that are justified with cogent reasons), but that this should apply only "in principle". "In principle not" is frequently construed as "only under extraordinary, i.e. exceptional, circumstances". This means that, under a literal reading, Article 13(2) RPBA 2020 could be paraphrased to read in pertinent part:

Any amendment to a party's appeal case made... after notification of a summons to oral proceedings shall[deleted: , in principle, not ]be taken into account only under exceptional circumstances, unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

It is not clear whether the term "in principle" is

(i) effectively redundant over the express requirement of exceptional circumstances,

(ii) whether it is in opposition with that express requirement, as the literal reading of Article 13(2) RPBA 2020 might suggest, thus making this provision contradictory in itself and, as a consequence, not applicable, or

(iii) whether the term means something different and what this could be. In this latter respect, it is unclear inter alia whether the term "in principle" is meant to provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (or where no cogent reasons were supplied for their justification).

The Board is of the view that the second ("literal") option would invalidate Article 13(2) RPBA 2020 and thus cannot reflect the lawmakers' intention. Taking either the first or the third option means that no further conclusions can be drawn on the basis of the qualification of "in principle". The Board concludes that the term "in principle" should be ignored.

18.2 The Board also notes that neither the Article nor the explanatory remarks contained in CA/3/19 give an explanation of how to determine in general whether the circumstances are "exceptional". However, the example provided in the explanatory remarks to Article 13(2) RPBA 2020, according to which the Board raising a new objection can be seen to constitute such exceptional circumstances, suggests that, in view of procedural fairness vis-à-vis the concerned party, considerations similar to those in Article 13(1) as to "the suitability of the amendment to resolve the issues ... which were raised by the Board" should (exceptionally) prevail over considerations of procedural economy, although the Board raising a new objection is in a situation that may not necessarily be qualified as exceptional in the (dictionary) sense of unusual or uncommon. The exceptionality is hence not necessarily linked to events being exceptional in the sense of deviating from the expected, but can also be caused by considerations related to the legal framework, notably the principles underlying the rules of procedure.

18.3 Articles 12 and 13 RPBA 2020 implement what the explanatory remarks refer to as "convergent approach", according to which it should be the more difficult for parties to have their submissions considered the later in the appeal proceedings they are made. The major motivation for this principle is the procedural economy of the appeal proceedings. If admittance of a (late-filed) submission is not detrimental to procedural economy this Board considers it appropriate to accept that "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 are present, and justified to admit the submission, provided that this does not adversely affect any other party. The exceptionality of this situation resides in that considerations related to procedural economy are not present and thus the interests of the party in overcoming objections by amendment may prevail without running counter to the principles of the convergent approach.

18.4 Moreover, the Board sees that there are circumstances which are beyond the submitting party's control, namely the Board's judgment as to whether it can, without undue delay, deal with the proposed submission, but also any other party's agreement to have the submission taken into account. In particular, if the Board, of its own motion, finds the circumstances exceptional in view of the purpose of the convergent approach, then cogent legal reasons need not be brought forward by the party.

19. The Board considers the principles set out in the preceding paragraph to be complied with in respect of all three auxiliary requests. These being ex parte proceedings, no other party is adversely affected, and procedural economy was not affected as the Board was able to deal with the amendment without undue delay during the oral proceedings. That is because the submissions were only further specifications aiming to make sure that all of the appellant's arguments already brought forward are taken into account (see points 16.1, 17, 17.2 in view of the appellant's arguments as summarised in points 12 and 23). The Board therefore finds the auxiliary requests to be filed under "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 and takes them into account.

With this conclusion, the Board is in agreement with the decision T 2135/18 (reasons 2).

20. The Board would like to make it clear that it would have come to the same conclusion by exercising its discretion under Article 13(1) RPBA 2020 in view of the general approach applying to the admittance of late-filed submissions which can be briefly summarised by the expression "the later, the stricter". The considerations under point 19 above would then apply mutatis mutandis.

[...]

28. Thus the claimed data transformation means does not solve any technical problem at all, and hence cannot contribute to a finding of inventive step. As in the case of the main request, claim 1 of this request lacks inventive step starting from D1 in view of the common knowledge in the art or from D2 in view of D1 and the common knowledge in the art.