T 0339/19 - Interpreting Art. 13(2) RPBA (and legal peace)

Key points

• Art. 13(2) RPBA is a provision that requires some interpretation for its correct application, in my view. In this decision, Board 3.3.06 analyses the meaning of Art. 13(2) in some detail. 
•  Board 3.3.06: "The board holds that the new request qualifies as an "amendment" to the proprietor's case, as it indeed changes the factual and legal framework thereof. While filed as a reaction to the preliminary opinion of the board, the latter did not raise any points of fact or law that had not already been discussed or addressed in the framework of the opposition proceedings. [...] The board thus cannot establish "exceptional circumstances" when giving these words their ordinary meaning, and such reading of Art. 13(2) RPBA would lead to the result that the request should not be admitted. The board is aware that many decisions of the Boards of Appeal have indeed interpreted the term "exceptional circumstances" in this manner."
• "Yet this board takes the view that Art. 13(2) RPBA, as in fact all provisions of the Rules of Procedure, needs to be read and interpreted in the light of the overarching principles by which appeal proceedings are guided. In taking this approach, the board finds most helpful guidance in decision T 1294/16 of 10 March 2021, where the board concerned was faced with a situation comparable to the one at issue.
• "The present board finds itself in complete agreement with the above-cited passages, namely that the term "exceptional circumstances" should be interpreted in light and in application of the principles underlying the rules of procedure. The board would like to add that these principles have been developed by the boards of Appeal in connection with the right to be heard (Art. 113 EPC), the right to oral proceedings (Art. 116) and the right to a fair hearing both under Art. 6 European Convention of Human Rights (as per decisions G 1/05 (OJ 2007, 362), G 2/08 of 15 June 2009, T 1676/08 of 9 March 2012 and R 19/12 of 25 April 2014) and Art. 125 EPC (T 669/90 of 14 August 1991, headnote). The right to be heard also relates to the right to introduce and have heard evidence as defined in Art. 117 EPC, T 2294/12 of 12 January 2016, point 1.1. of the reasons. Art. 114(2) EPC however clarifies that such right to introduce new facts or evidence is not unfettered, but rather limited to their timely submission."
• "In each case where new facts or evidence are introduced, it is thus incumbent on the deciding board to balance the right to be heard with the public interest of doing justice in good time. The board is further in agreement with decision T 855/96 of 10 November 1999 that emphasises the position of the boards as the only judicial instance in proceedings before the European Patent Office and accentuates the need for public acceptance of its decisions ...
• [As held in T 855/96] "It serves legal peace and the acceptance of decisions rendered by the Boards of Appeal, and takes into account the importance of the boards' role as the only judicial instance that when deciding on the patentability of a patent with effect for all designated Member States, decisions should take into account the complete submissions made in appeal proceedings. Thus, a document submitted at the appeal stage should be taken into account unless completely irrelevant where its consideration can be justified from a point of view of procedural economy." (translation of quote of T 855/96 by the Board)
• "In taking the above principles as an interpretative guidance for the term "exceptional circumstances", the board decided to admit the main request because neither did its admittance compromise the procedural rights of the appellant/opponent in that issues beyond the current framework of appeal proceedings had to be discussed, nor did it lead to delays that would have compromised the interests of procedural economy."
• The Board finds the request at issue to be allowable.

• 
  

 

EPO  T 0339/19

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/t190339eu1.html

1.3 Since the opponent requested not to admit this request the board had to decide on its admissibility.

1.3.1 According to Art. 13(2) RPBA: "Any amendment to a party's appeal case made after the expiry of a period specified by the board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, 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."

1.3.2 The board holds that the new request qualifies as an "amendment" to the proprietor's case, as it indeed changes the factual and legal framework thereof. While filed as a reaction to the preliminary opinion of the board, the latter did not raise any points of fact or law that had not already been discussed or addressed in the framework of the opposition proceedings. In particular, the statement to which the proprietor referred merely reformulated the subject-matter of the claim. Also the board's opinion on the relevance of document D7 was not a new issue, but had already been set out by the appellant in the grounds of appeal. The board thus cannot establish "exceptional circumstances" when giving these words their ordinary meaning, and such reading of Art. 13(2) RPBA would lead to the result that the request should not be admitted. The board is aware that many decisions of the Boards of Appeal have indeed interpreted the term "exceptional circumstances" in this manner.

1.3.3 Yet this board takes the view that Art. 13(2) RPBA, as in fact all provisions of the Rules of Procedure, needs to be read and interpreted in the light of the overarching principles by which appeal proceedings are guided. In taking this approach, the board finds most helpful guidance in decision T 1294/16 of 10 March 2021, where the board concerned was faced with a situation comparable to the one at issue.

The passages relevant to this point read as follows:

"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."

1.3.4 The present board finds itself in complete agreement with the above-cited passages, namely that the term "exceptional circumstances" should be interpreted in light and in application of the principles underlying the rules of procedure. The board would like to add that these principles have been developed by the boards of Appeal in connection with the right to be heard (Art. 113 EPC), the right to oral proceedings (Art. 116) and the right to a fair hearing both under Art. 6 European Convention of Human Rights (as per decisions

G 1/05 (OJ 2007, 362), G 2/08 of 15 June 2009,

T 1676/08 of 9 March 2012 and R 19/12 of 25 April 2014) and Art. 125 EPC (T 669/90 of 14 August 1991, headnote). The right to be heard also relates to the right to introduce and have heard evidence as defined in Art. 117 EPC, T 2294/12 of 12 January 2016, point 1.1. of the reasons. Art. 114(2) EPC however clarifies that such right to introduce new facts or evidence is not unfettered, but rather limited to their timely submission.

1.3.5 In each case where new facts or evidence are introduced, it is thus incumbent on the deciding board to balance the right to be heard with the public interest of doing justice in good time. The board is further in agreement with decision T 855/96 of 10 November 1999 that emphasises the position of the boards as the only judicial instance in proceedings before the European Patent Office and accentuates the need for public acceptance of its decisions: "Es dient dem Rechtsfrieden sowie der Akzeptanz der Entscheidungen der Beschwerdekammern und trägt ihrer Bedeutung als der einzigen gerichtlichen Instanz Rechnung, die über die Patentierbarkeit des Patents mit Wirkung für alle benannten Vertragsstaaten entscheidet, wenn diese Entscheidungen den gesamten, im Beschwerdeverfahren unterbreiteten Streitstoff berücksichtigen. Ein im Beschwerdeverfahren vorgelegtes Dokument sollte daher berücksichtigt werden, wenn es nicht völlig irrelevant ist und seine Berücksichtigung verfahrensökonomisch vertretbar ist."

[It serves legal peace and the acceptance of decisions rendered by the boards of Appeal, and takes into account the importance of the boards' role as the only judicial instance that when deciding on the patentability of a patent with effect for all designated Member States, decisions should take into account the complete submissions made in appeal proceedings. Thus, a document submitted at the appeal stage should be taken into account unless completely irrelevant where its consideration can be justified from a point of view of procedural economy.]

1.4 Summing up, this board found the request a good-faith attempt to overcome the inventive step objection raised against the main request then on file, found that the request did not raise new issues, could be dealt within the current framework of proceedings and posed no additional difficulties or surprises for either the other party or the board.

1.5 In taking the above principles as an interpretative guidance for the term "exceptional circumstances", the board decided to admit the main request, because neither did its admittance compromise the procedural rights of the appellant/opponent in that issues beyond the current framework of appeal proceedings had to be discussed, nor did it lead to delays that would have compromised the interests of procedural economy.