T 0151/19 - Justification of case amendments as requirement

Key points

•  Article 13(1)(s.4) RPBA 2020 specifies a list of factors to be considered by the Board when deciding whether or not an amendment of a party's appeal case.
• Article 13(1)(s.1) RPBA 2020 however also specifies that such a case amendment is "subject to the party’s justification for its amendment".
• This decision implies that this requirement for justification is a threshold requirement.
• "The appellant's [opponent's] argument that the inventive step objections starting from D1, D2, D3 and D6 were not particularly complex and were filed over two years before the oral proceedings, actually pertains to the criteria for the exercise of discretion by the Board under [the fourth sentence of] Article 13(1) RPBA 2020, once satisfied that there is a reason for the late filing. Thus they do not justify their admittance either." 
• As a comment, the Board implies that the party must indicate a reason for the late filing that is valid in the Board's view, i.e. an objective justification. 
• " With respect to objections starting from D1 and D3 in its letter of 4 May 2020, the appellant aimed to 'preemptively respond to a generic argument' which cannot be considered a justification for the appellant to change its appeal case after having submitted its grounds of appeal." 
• I.e. the opponent specified a reason ("preemptively respond to a generic argument"), the Board found this reason to be not a valid reason and dismissed the attacks as inadmissible without considering the factors listed in the fourth sentence of Art. 13(1).
• As a comment, this decision is in line with T 0099/16 r.2.5.

EPO 

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

3.7.3 The appellant's argument that the inventive step objections starting from D1, D2, D3 and D6 were not particularly complex and were filed over two years before the oral proceedings, actually pertains to the criteria for the exercise of discretion by the Board under Article 13(1) RPBA 2020, once satisfied that there is a reason for the late filing. Thus they do not justify their admittance either.

(a) With respect to objections starting from D1 and D3 in its letter of 4 May 2020, the appellant aimed to 'preemptively respond to a generic argument' which cannot be considered a justification for the appellant to change its appeal case after having submitted its grounds of appeal.

(b) As for starting from D6, the appellant refers to the patentee having alleged the presence of a technical effect (when starting from D7). This is not a justification for presenting a new inventive step attack at this juncture. The very same conclusion was reached by the opposition division by way of formulating the objective technical problem to be 'how to improve the bond between the side panel and the diaper chassis' (see page 16 of the decision) such that, if a justification is at all to be recognised, the appellant had reasons to make this inventive step attack already in its grounds of appeal, in reaction to the opposition division's decision.

(c) As for the objection starting from D2 (see point 2.3.5 of the letter of 4 May 2020), this provides nothing which can be viewed as a justification for presenting this objection for the first time at this juncture.

In conclusion, in the appellant's letter of 4 May 2020, no justification was provided for the amendment to its appeal case relating to the late filing of the inventive step objections starting from D1, D2, D3 or D6.