T 2125/18 - In principle (in Art. 13(2) RPBA)

Key points

•  Article 13(2) RPBA provides that case amendments are in principle not taken into account in a certain stage of the appeal proceedings, unless an exception applies. The Board in the present decision provides an interpretation of the phrase "in principle".
• As a comment, I speculate that the phrase "in principle" was possibly added into new Art. 13(2) RPBA during the discussions about the draft provision in the decision making process as a kind of compromise.e In other words, I suspect that there was some debate about Article 13(2) and that "in principle" was included in order to have sufficient support for the new provision and/or to accommodate strong reservations (edited 21.04.2022).
• The present Board: "First, the terminology "in principle" can only be understood to refer to the general principle which is to be observed at this late stage of the appeal procedure. This is because Article 13(2) RPBA 2020 is that part of the RPBA which is the most stringent - i.e. it defines the "third level of convergence". Thus, the wording "in principle" cannot be understood to mean that it can be applied simply where the Board finds it fitting, because this would reduce its application to the far broader discretionary powers granted to the Board under Article 13(1) RPBA 2020."
• "Also, it is only logical when following the concept of the three levels of convergence (as explained in e.g. the explanatory remarks to Articles 12(4), 13(1) and 13(2) RPBA 2020) that such a stringent approach must be followed after the less stringent ones, and as the proceedings progress. Indeed, this principle comes into effect only at a late stage of the appeal proceedings (here, after the summons was notified), when a party has made its complete appeal case and any amendments to that appeal case which may have been appropriate under Article 13(1) RPBA 2020. Thus, following the wording of Article 13(2) RPBA 2020, the principle has to be applied, such that, for the Board to take the amendment to the appeal case into account, exceptional circumstances must have arisen."
• Compare T 0172/17.
• The Board gives a very particular meaning to "in principle", but I'm not entirely sure if a native speaker would use "in principle" when trying to convey the concept identified by the Board. Possibly a native speaker would use "as a matter of principle" i.e. according to a dictionary: "a situation that requires something be done a certain way because one believes it is the only right way" (link to Merriam Webster Dictionary)

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t182125eu1.html

2. Exceptional circumstances

2.1 According to Article 13(2) RPBA 2020, "[a]ny 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".

First, the terminology "in principle" can only be understood to refer to the general principle which is to be observed at this late stage of the appeal procedure. This is because Article 13(2) RPBA 2020 is that part of the RPBA which is the most stringent - i.e. it defines the "third level of convergence". Thus, the wording "in principle" cannot be understood to mean that it can be applied simply where the Board finds it fitting, because this would reduce its application to the far broader discretionary powers granted to the Board under Article 13(1) RPBA 2020. Also, it is only logical when following the concept of the three levels of convergence (as explained in e.g. the explanatory remarks to Articles 12(4), 13(1) and 13(2) RPBA 2020) that such a stringent approach must be followed after the less stringent ones, and as the proceedings progress. Indeed, this principle comes into effect only at a late stage of the appeal proceedings (here, after the summons was notified), when a party has made its complete appeal case and any amendments to that appeal case which may have been appropriate under Article 13(1) RPBA 2020. Thus, following the wording of Article 13(2) RPBA 2020, the principle has to be applied, such that, for the Board to take the amendment to the appeal case into account, exceptional circumstances must have arisen.

For applying the exception stated in Article 13(2) RPBA 2020, it is also the party amending its case which has to show that exceptional circumstances exist that would justify why deviation from the general principle should be allowed.

2.2 The appellant argued that no objection under Article 76(1) EPC had been made specifically regarding the first paragraph of page 8 of the description of the application as filed before the Board objected to it in item 1.7 of its preliminary opinion dated 25 June 2020. According to the appellant, it amended the description of its own volition before receiving the preliminary opinion of the Board but nevertheless the amendment also constituted a legitimate response to an objection made for the first time by the Board.

2.2.1 The Board does not find this argument persuasive. As can be seen in the decision under appeal (see page 9, first text paragraph), the opponent already argued that the first paragraph on page 8 of the divisional application did not exist in the parent application as filed. From the last sentence in the first paragraph on page 10 of the contested decision, in which it is stated that the proprietor argued that the subject-matter of the first paragraph on page 8 of the description did not extend beyond the content of the parent application as filed, it is also clear that the proprietor understood (albeit the proprietor did not agree with the objection) that this paragraph was considered to contain subject-matter that did not fulfil the requirement of Article 76(1) EPC.

The opposition division also stated, in the paragraph before last on page 10 of the decision, that it was of the opinion that the subject-matter in the paragraph on page 8 was not "objectively and unambiguously derivable" from the parent application and in the following sentence (through the use of the conjunctive adverb "also") that the paragraph was not disclosed in the parent application. The Board thus finds that the decision indeed concludes that the paragraph on page 8 constitutes a deficiency and does not fulfil the requirement of Article 76(1) EPC.

Also on page 3, first paragraph of the reply to the grounds of appeal (in the respondent's summary of the decision reasoning) it is stated that "[t]he Opposition Division rejected the Appellant's such arguments and decided on violation of Article 76(1) EPC because the paragraph was added when filing the divisional application O1 and not contained in the earlier application El".

This objection was thus not made for the first time by the Board in its preliminary opinion but was part of the decision and the respondent's appeal case.

2.2.2 Since it was already established by the opposition division that the first paragraph on page 8 contained subject-matter that contravened Article 76(1) EPC, the Board cannot recognize any exceptional circumstances justified with cogent reasons for the amendment to the appellant's case after notification of the summons to oral proceedings.

2.2.3 The Board also notes that in this case the amendment made to the description is not equatable with an adaptation of the description to a set of allowable claims but can only be seen as a response to an objection relating specifically to the text of the description independent of any possible amendment of the claims, not least since the text of the paragraph does not match the wording of the claims and also contains further subject-matter (for example, regarding the inner and outer wall of the annular shaped body) manifestly without correspondence in claim features.

2.3 The appellant also argued that the proprietor had changed the law firm representing it during the proceedings, which had led to the objection regarding the description being recognized at a late stage.

The Board does not find this argument persuasive either. A change of representative cannot be recognized as an exceptional circumstance for amendments to the party's appeal case being filed at this late stage of proceedings. To accept such an argument would leave the door open for a change of representative to be purposively made in order to enable the admittance of e.g. new requests after the complete case had been made as laid down in Article 12(3) RPBA 2020. This would not provide a basis for a fair procedure.

2.4 The Board thus finds that no exceptional circumstances justified by cogent reasons have been presented which justify the filing of an amended description only after the notification of the summons to oral proceedings.

2.5 The same amended description is present in all the auxiliary requests, which were also filed after the summons to oral proceedings was notified. The Board cannot recognize any specific exceptional circumstances for filing the amended description only after the notification of the summons to oral proceedings for any of the auxiliary requests either. The appellant also did not argue that there were any.

3. Accordingly, the Board exercised its discretion under Article 13(2) RPBA 2020 not to take the main request and the auxiliary requests 1 to 4 into account.

4. In the absence of any request in the proceedings on the basis of which the patent can be maintained, the impugned decision cannot be set aside and the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.