T 2988/18 - Arguments pertaining to the interpretation of law

 Key points

• The Board indicates that it concurs with the view that “Arguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings”, following  T 247/20.
• The patentee's argument based on G1/93 regarding Article 123(2) is such an argument.
• “The appellant's argument based on G 1/93 is essentially that G 1/93 permits an undisclosed feature to be added to a claim in certain limited circumstances, and that these circumstances existed in the present case. In short: the principle set out in headnote 2 of G 1/93 applied to the present case. The Board is of the opinion that this argument is precisely what was meant by the passage of the explanatory remarks to the RPBA 2020 referred to above, because an argument about the interpretation of law will naturally concern how that interpretation applies to the facts of the case before the Board.”

https://www.epo.org/law-practice/case-law-appeals/recent/t182988eu1.html

Reasons for the Decision

1. Admission of late filed arguments

1.1 In its submissions dated 26 March 2021 the appellant presented two arguments to meet the objection that the amendment to claim 1 of the main request, whereby the amounts of uncrosslinked hyaluronic acids were amounts expressed in percent "by volume", did not comply with Article 123(2) EPC. The first one was that this amendment did not add new technical teaching. The second was that even if the feature was not derivable from the application as filed it would nevertheless comply with Article 123(2) EPC in view of decision G 1/93. It is this second argument that was objected to by the respondent 01. Respondent 01 requested that it was not admitted into the proceedings.

1.2 In the present case the Board issued the summons to oral proceedings in July 2020. Notification of the summons occurred before the appellant filed its argument based on G 1/93. This means that Article 13(2) RPBA 2020 is relevant (Article 25(3) RPBA 2020). That provision suggests 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 with cogent reasons by the party concerned."

The Board concurs with the interpretation of Article 13(2) EPC given in decision T 247/20 (Reasons 1.3) as summarised below.

The test under Article 13(2) RPBA 2020 is a two-fold one. The first question is whether the submission objected to (the argument based on G 1/93) is an amendment to a party's appeal case. If that question is answered in the negative, then the Board has no discretion not to admit the submission. If, however, that question is answered in the positive, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons, why the submission is to be taken into account.

An amendment to a party's appeal case is a submission which is not directed to the requests, facts, objections, arguments and evidence relied on by the party in its statement of grounds of appeal or its reply. In other words: it goes beyond the framework established therein. As there was no argument based on G 1/93 in the statement of grounds of appeal the question arises whether this argument is an amendment to the appellant's appeal case. The Board considers that it is not for the reasons set out below.

1.3 There is no definition of the term "argument" in the RPBA 2020. In G 4/92 the Enlarged Board contrasted arguments to grounds or evidence and suggested that arguments "are reasons based on the facts and evidence which have already been put forward" (Reasons 10). This leaves open the question whether the type of argument made by the appellant, namely one where the Enlarged Board interpreted Article 123(2) EPC (the argument based on G 1/93), also falls under the ambit of Article 13(2) RPBA 2020.

1.4 Arguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings (see e.g. for German nullity proceedings Hall/Nobbe in Benkard, PatG, 11**(th) edition, § 83 Rz. 14 and Voit in Schulte, Patentgesetz mit EPÜ, 10**(th) edition, § 83 PatG, Rz. 20, for German civil proceedings Saenger, Zivilprozessordnung, Nomos, 8**(th) edition, § 282, Rz.12; for English civil proceedings Pittalis v Grant [1989 QB 605], at p.611). This has been recognised in the explanatory remarks to the RPBA 2020 according to which submissions of a party which concern the interpretation of law are not an amendment (Supplementary publication 1, OJ EPO 2020, p.218). The Board concurs with this view.

Respondent 01 submitted that the argument based on G 1/93 was not limited to a reference to the case law, but that a new argument had been developed on the basis of this case law. This constituted a new line of argument which amounted to an amendment to the appellant's appeal case. The Board is not convinced. The appellant's argument based on G 1/93 is essentially that G 1/93 permits an undisclosed feature to be added to a claim in certain limited circumstances, and that these circumstances existed in the present case. In short: the principle set out in headnote 2 of G 1/93 applied to the present case. The Board is of the opinion that this argument is precisely what was meant by the passage of the explanatory remarks to the RPBA 2020 referred to above, because an argument about the interpretation of law will naturally concern how that interpretation applies to the facts of the case before the Board.