T 0024/18 - The high number of objections

Key points

• The Board holds amended claims inadmissible under Art.13(2) RPBA. 
• The Board: "The allegedly high number of objections is also not a reason to justify the late filing of requests, because such circumstance is by no means exceptional." 
• As a comment, Art.13(2) does not require that the filing of the appeal case amendment is justified by exceptional circumstances. Art. 13(2) RPBA in the English version reads "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 English version merely requires that there are exceptional circumstances, without expressly requiring any link between those circumstances and the filed case amendments
• Of course, the Board in the present case does not say that the invoked exceptional circumstances do not justify the late filing. The Board says that the filing is not justified by the circumstances, because the circumstances are not exceptional. In other words, whether or not the circumstances are frequent or rare, is equated to whether they can be used to justify the filing of the amendments.
• cf.  T 2703/16 which held that the fact that the applicant’s place of business was heavily affected by the Covid-19 pandemic in spring 2020, was not an ‘exceptional circumstance’ in the sense of the provision.
• Generally, the concept of what is justified in an individual case, seems rather distinct from statistics. For example, whether or not amended claims are admitted in a particular case, should not depend on how often the Boards raise new objections in their preliminary opinion. 
• The Board, additionally: "In fact, the circumstances cited by the proprietor appear to describe a fairly normal course of events. In particular, it is common for the parties and the board to go deeper into certain aspects of a given objection during the discussion at the oral proceedings, as this is one of the main purposes of the oral hearing. It is also not uncommon for the board to modify its preliminary opinion in view of the details discussed or the questions raised during the oral proceedings. " 
• The requests at issue were filed at the oral proceedings before the Board.

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/t180024eu1.html

3.3 The board cannot follow the proprietor's argumentation because none of the reasons brought forward are considered to justify the presence of "exceptional circumstances" as required by Article 13(2) RPBA 2020. In fact, the circumstances cited by the proprietor appear to describe a fairly normal course of events. In particular, it is common for the parties and the board to go deeper into certain aspects of a given objection during the discussion at the oral proceedings, as this is one of the main purposes of the oral hearing. It is also not uncommon for the board to modify its preliminary opinion in view of the details discussed or the questions raised during the oral proceedings. The allegedly high number of objections is also not a reason to justify the late filing of requests, because such circumstance is by no means exceptional.

With respect to the argument that the patent proprietor could not foresee that Article 13(2) RPBA 2020 would become applicable, the board notes that the RPBA 2020 were published well in advance of their entry into force (OJ EPO 2019, A63), giving parties the opportunity to timely file submissions in order to prevent their admittance being subject to the strict provision of Article 13(2) RPBA 2020.

Finally, the board notes that while it might be argued that the filing of the new requests would not present the opponents with completely new subject-matter, this argument is not relevant when exercising the board's limited discretion under Article 13(2) RPBA 2020.

The board therefore concluded that auxiliary requests 2a and 2b were not to be admitted into the proceedings.