T 2632/18 - New objection Board and Art. 13(2)

Key points

• The patentee files an auxiliary request after the notification of the summons before the Board.
• The Board, on the admissibility: " in the present case no new objections were raised in the board's communication under Article 15(1) RPBA 2020."
• The Board then rather obiter deals with the case that the Board had raised new objections. As a comment, this may mean that the present Board 3.5.03 wishes to make the points even if obiter.
• "it is recalled that the mere fact that a "new" objection was raised by a board cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see e.g. T 2271/18, Reasons 3.3)."
• I don't see this in T 2271/18.
• The Board also places this obiter remark in the headnote: "That a "new" objection was raised by a board in appeal proceedings cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020."

• The Board: "In the board's view, [the Explanatory Remarks to Art. 13(2)], at most, provides an example of how to present "cogent reasons" rather than implying that a new objection raised by a board in a communication alone exemplifies "exceptional circumstances" in that context. A "precise explanation" as regards cogent reasons is however completely absent here."
• The Explanatory Remark at issue: "The basic principle of the third level of the convergent approach is that [...] amendments to a party's appeal case are not to be taken into consideration. However, a limited exception is provided for: it requires a party to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons"). For example, if a party submits that the Board raised an objection for the first time in a communication, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board or a party [...]."
• The Board seems right that this Explanatory Remark does not state that a new objection of a Board is an exceptional circumstance. 
• As a comment, it is of course beyond doubt that the Board has to comply with Article 113(1) EPC. If the Board raises a new objection of its own motion against claims, the applicant/patentee must be given a fair opportunity to respond, including the right to have a submitted response (e.g. amended claims) properly examined by the Board. 
• 
  

EPO T 2632/18 

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/t182632eu1.html

4. Second auxiliary request: admittance into the appeal proceedings (Article 13(2) RPBA 2020)

4.1 The second auxiliary request was submitted after notification of the summons to oral proceedings (cf. point III above).

4.2 In support of its admittance, the appellant argued that it was submitted in reaction to objections first raised by the board against the main request (i.e. the then "first auxiliary request") and that the present situation was similar to the ones in T 1482/17 and T 1278/18, where an "exceptional circumstance" within the meaning of Article 13(2) RPBA 2020 was recognised.

4.3 Firstly, it is recalled that the mere fact that a "new" objection was raised by a board cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (see e.g. T 2271/18, Reasons 3.3). Nothing else can be derived from the decisions cited by the appellant. In both cases, the aspect relating to "new objections" was considered as only one of several other criteria, including the complexity or the clear allowability of the amendments made (see T 1482/17, Reasons 2.3 and T 1278/18, Reasons 5).

Also, the "explanatory remarks" to Article 13(2) RPBA 2020 mentioned in CA/3/19, as e.g. invoked in cases T 988/17 (Reasons 6.3.3) and T 1786/16 (Reasons 3.2), do not indicate that a "new" objection raised for the first time in a board's preliminary opinion or in the oral proceedings before the board, taken alone, would be an example of such "exceptional circumstances". Rather, the third paragraph of those remarks reads (board's emphasis):

"The basic principle of the third level of the convergent approach is that [...] amendments to a party's appeal case are not to be taken into consideration. However, a limited exception is provided for: it requires a party to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons"). For example, if a party submits that the Board raised an objection for the first time in a communication, it must explain precisely why this objection is new and does not fall under objections previously raised by the Board or a party [...]".

In the board's view, this paragraph, at most, provides an example of how to present "cogent reasons" rather than implying that a new objection raised by a board in a communication alone exemplifies "exceptional circumstances" in that context. A "precise explanation" as regards cogent reasons is however completely absent here.

4.4 Secondly, even if a board's "new objection" amounted automatically to "exceptional circumstances", in the present case no new objections were raised in the board's communication under Article 15(1) RPBA 2020. Only a reasoning was provided as to why the appellant's arguments as regards novelty in view of feature (d) was not persuasive (cf. point 5.2.1 of that communication).

4.5 In conclusion, the appellant did not provide any "cogent reasons" justifying "exceptional circumstances" under which this claim request could be admitted into the proceedings. Nor can the board see any such circumstances.

4.6 During the oral proceedings before the board, the appellant reiterated that the opposition proceedings had been very brief and emphasised that they had not had a chance to react to the appealed decision in the form of amended claims.

The board notes, in this respect, that the appellant had not requested oral proceedings during the opposition proceedings and, hence, deliberately took the "risk" and accepted that the opposition division would decide on the basis of the facts and arguments on file. While the appellant is, of course, free to do so, appeal proceedings, being of a reviewing nature, cannot be used to counter, by filing claim requests in the appeal proceedings that could have been submitted before the opposition division, a negative outcome incurred as a result of taking this "risk".

4.7 Consequently, in the absence of any exceptional circumstances, the second auxiliary request could not be admitted into the appeal proceedings (Article 13(2) RPBA 2020).

Order

For these reasons it is decided that:

The appeal is dismissed.