Key points
- I present the following reasoning of the Board without comments, except for a rhetorical question: does the right to be heard under Article 113(1) EPC entail more than a formal opportunity to file amended claims, namely a right to have amended claims which are filed without undue delay and as a serious attempt to address one or more objections considered on their substantive merits?
- The Board: "Article 113(1) EPC enshrines the fundamental right of a party to be heard before a decision is issued against it. Neither this provision nor the principle of party disposition expressed in Article 113(2) EPC [...] give any right to an applicant or patent proprietor in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant or patent proprietor (see also G 7/93, Reasons 2.1)."
- The Enlarged Board: " The referring Board of Appeal has indicated its view that Article 113(2) EPC is based on the fundamental right of parties to civil law proceedings to decide the scope of their case. In the Enlarged Board's view, this provision of the EPC does not give any right to an applicant in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant. The effect of this provision [= Article 113(2) EPC ] is merely to forbid the EPO from considering and deciding upon any text of an application other than that "submitted to it, or agreed, by the applicant or proprietor ..."."
- " The right to file amended claims is defined in Article 123(1) EPC in accordance with the Implementing Regulations. These provisions, and not Article 113 EPC, set the conditions for taking amendments to the claims into account."
- " It follows that the opportunity to present comments does not inevitably extend to having any auxiliary request submitted at any time automatically admitted into the proceedings (see also R 9/11, Reasons 3.2.2); its admittance in the appeal proceedings is subject to the applicable provisions of the Rules of Procedure of the Boards of Appeal, in this case Article 13(2) RPBA 2020."
- " In the current case, the respondent [patentee] had the right and the opportunity to react and present their comments, including by filing amended claims, to the appellant's submissions regarding document D8. However, auxiliary requests 1, 3 and 4 were filed only with the letter dated 22 July 2022, i.e. more than two-and-a-half years after the appellant [opponent] had submitted document D8 and provided detailed argument on why it was of the view that the subject-matter of claim 1 as granted lacked novelty over document D8. Auxiliary request 1A was filed a further two months later. On account of these actions, it is clear that the respondent did not wish to react to the appellant's submissions, but instead chose to wait until after the board had given its preliminary opinion in the communication pursuant to Article 15(1) RPBA 2020 to file the auxiliary requests."
- " None of these claim amendments can thus be regarded as a timely reaction to the appellant's filing of document D8, as required by the Rules of Procedures of the Boards of Appeal. For this reason alone, the board rejects the respondent's argument that it was not given an opportunity to amend the claims in reaction to the submission of document D8."
- " By choosing not to react until the board had given its preliminary assessment on document D8, the admittance of the auxiliary requests became subject to the stringent limitations of Article 13(2) RPBA 2020. Under the present circumstances, however, the respondent had the possibility and, with more than one-and-a-half years before the summons were issued, sufficient time to react to the appellant's submissions regarding document D8 by filing amended claim requests under the less stringent limitations of Article 13(1) RPBA 2020."
- " But even after the board's communication was issued, the respondent still had the opportunity to react and amend its appeal case. In fact, point 36 at the end of the communication drew the attention of the parties to the provision of Article 13(2) RPBA 2020, under which a limited exception is provided for amending their appeal cases. At the heart of this provision, based on the principle of Article 123(1) EPC and Rules 81(3) and 100(1) EPC, is the board's discretion to admit such an amendment. The respondent therefore had the right to react to the board's provisional opinion by filing auxiliary requests. It had the opportunity to comment on the admittance of these requests, but there was no certainty that these would be admitted (see R 1/13, Reasons 13.3 and R 6/19, Reasons 5 to 11)."
14. In view of the above, the subject-matter of claim 1 as granted lacks novelty over document D8 (Article 54(1) and (3) EPC). The ground for opposition under Article 100(a) together with Article 54(1) EPC therefore prejudices the maintenance of the patent as granted.
Admittance of the auxiliary requests
15. The amended claims of auxiliary requests 1, 1A, 3 and 4 were all filed after notification of the summons to oral proceedings. As the summons was notified after 1 January 2020, the transitional provisions of Article 25(1) and (3) RPBA 2020 stipulate that these requests are subject to Article 13(2) RPBA 2020, under which any amendment to a party's appeal case made after notification of a summons to oral proceedings is, as a rule, not to be taken into account unless there are exceptional circumstances justified with cogent reasons by the party concerned.
16. In accordance with the explanatory remarks on Article 13(2) RPBA 2020 in section VI of document CA/3/19, this provision implements the third level of the convergent approach applicable in appeal proceedings. The underlying principle of the convergent approach is that, as the appeal proceedings progress, it becomes increasingly difficult for parties to amend their cases. The third level comes into effect at an advanced 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 (see T 2125/18, Reasons 2.1). It imposes the most stringent limitations on a party wishing to amend its appeal case at this advanced stage. Only if exceptional circumstances are shown to exist may the board, in exercising its discretion, admit the amendment made to the party's appeal case.
17. The respondent essentially argued that the board's provisional opinion on the admittance of document D8 set out in the communication pursuant to Article 15(1) RPBA 2020 meant that the circumstances under which the auxiliary requests were filed were exceptional.
The board is not persuaded that this is so.
The section "Admittance of document D8" on pages 7 and 8 of the board's communication provided the relevant legal basis, it summarised the appellant's reasons given on page 2 of its letter dated 30 December 2019 and highlighted the criteria the board had to weigh up when exercising its discretion whether to admit the late-filed document. The board's preliminary findings on the prima facie relevance in point 17 of the communication were entirely based on the appellant's submissions presented in section 1.1 ("The disclosure of document D8 is prima facie highly relevant and seriously prejudices the validity of the patent-in-suit in its entirety (see below at section 1.2)") and section 1.2 of its letter dated 30 December 2019. As the respondent had not reacted to the appellant's submissions regarding document D8 at the time the communication was issued, the board's tentative view in point 18 of the communication ("the board is inclined to exercise its discretion and to admit the submission under Article 13(1) RPBA 2020") was based solely on the appellant's submissions. It can therefore not have come as a surprise to the respondent. The same applies to the board's preliminary assessment in the subsequent section "Novelty objection over document D8" on pages 8 and 9 of the communication, which was entirely based on the appellant's submissions set out in section 1.2 of its letter dated 30 December 2019.
In consequence, the board's provisional opinion on document D8 could not be regarded as creating exceptional circumstances within the meaning of Article 13(2) RPBA 2020 (see also "Case Law of the Boards of Appeal of the European Patent Office", tenth edition, July 2022, V.A.4.5.6.c).
18. In a further line of argument, the respondent justified exceptional circumstances by submitting that it was highly improbable that late-filed documents were admitted in appeal.
While the board acknowledges that already at the second level of the convergent approach strict conditions apply, the question whether late-filed evidence is admitted in appeal proceedings under Article 13(1) RPBA 2020 is actually very much dependent on the circumstances of the case. It therefore serves little purpose to assign a probability to the admission of late-filed evidence, let alone to use that probability as justification that the circumstances two-and-a-half years after the evidence had been filed were exceptional.
19. The respondent further argued that it should be given the opportunity to react to the belated filing of document D8 and amend the claims accordingly. Reference was made to Article 113(1) EPC.
Article 113(1) EPC enshrines the fundamental right of a party to be heard before a decision is issued against it. Neither this provision nor the principle of party disposition expressed in Article 113(2) EPC, according to which the EPO is forbidden from considering and deciding upon any text of an application or a patent other than that "submitted to it, or agreed, by the applicant or proprietor of the patent ...", give any right to an applicant or patent proprietor in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant or patent proprietor (see also G 7/93, Reasons 2.1).
The right to file amended claims is defined in Article 123(1) EPC in accordance with the Implementing Regulations. These provisions, and not Article 113 EPC, set the conditions for taking amendments to the claims into account.
Since the parties in the present case have not objected as to which provision in the EPC provides a legal basis for the discretion to admit amendments to claims, the present board does not see a need to discuss whether Article 123(1) EPC or also Article 114(2) EPC and/or Rule 116(2) EPC constitute an appropriate legal basis. With a view of deciding the underlying case, the present board concurs with the jurisprudence having found that the first sentence of Article 123(1) EPC in conjunction with Rules 81(3) and 100(1) EPC gives the deciding organ a discretionary power to consider amendments filed in opposition and opposition appeal proceedings (see e.g. R 6/19, Reasons 6 to 11 and T 966/17, Reasons 2.2.1). According to Rule 81(3) EPC, the opportunity for a patent proprietor to amend the description, claims and drawings in opposition proceedings is given only where necessary. Under Rule 100(1) EPC, this provision also applies in opposition appeal proceedings, albeit further subject to the provisions of the Rules of Procedures of the Boards of Appeal, particularly Articles 12 and 13 RPBA.
It follows that the opportunity to present comments does not inevitably extend to having any auxiliary request submitted at any time automatically admitted into the proceedings (see also R 9/11, Reasons 3.2.2); its admittance in the appeal proceedings is subject to the applicable provisions of the Rules of Procedure of the Boards of Appeal, in this case Article 13(2) RPBA 2020. This applies even if the auxiliary request was submitted in response to late-filed evidence. If that were not the case, Article 13(2) RPBA 2020 would have little purpose since any amendment filed after notification of a summons to oral proceedings - in the present case in response to the board's communication pursuant to Article 15(1) RPBA 2020 - would have to be admitted, even if there were clearly no exceptional circumstances. This is not contrary to the principle of Article 113(1) EPC, according to which the decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.
In the current case, the respondent had the right and the opportunity to react and present their comments, including by filing amended claims, to the appellant's submissions regarding document D8. However, auxiliary requests 1, 3 and 4 were filed only with the letter dated 22 July 2022, i.e. more than two-and-a-half years after the appellant had submitted document D8 and provided detailed argument on why it was of the view that the subject-matter of claim 1 as granted lacked novelty over document D8. Auxiliary request 1A was filed a further two months later. On account of these actions, it is clear that the respondent did not wish to react to the appellant's submissions, but instead chose to wait until after the board had given its preliminary opinion in the communication pursuant to Article 15(1) RPBA 2020 to file the auxiliary requests. None of these claim amendments can thus be regarded as a timely reaction to the appellant's filing of document D8, as required by the Rules of Procedures of the Boards of Appeal. For this reason alone, the board rejects the respondent's argument that it was not given an opportunity to amend the claims in reaction to the submission of document D8.
By choosing not to react until the board had given its preliminary assessment on document D8, the admittance of the auxiliary requests became subject to the stringent limitations of Article 13(2) RPBA 2020. Under the present circumstances, however, the respondent had the possibility and, with more than one-and-a-half years before the summons were issued, sufficient time to react to the appellant's submissions regarding document D8 by filing amended claim requests under the less stringent limitations of Article 13(1) RPBA 2020.
But even after the board's communication was issued, the respondent still had the opportunity to react and amend its appeal case. In fact, point 36 at the end of the communication drew the attention of the parties to the provision of Article 13(2) RPBA 2020, under which a limited exception is provided for amending their appeal cases. At the heart of this provision, based on the principle of Article 123(1) EPC and Rules 81(3) and 100(1) EPC, is the board's discretion to admit such an amendment. The respondent therefore had the right to react to the board's provisional opinion by filing auxiliary requests. It had the opportunity to comment on the admittance of these requests, but there was no certainty that these would be admitted (see R 1/13, Reasons 13.3 and R 6/19, Reasons 5 to 11).
20. Also, the further argument of the respondent that novelty over document D8 was discussed for the first time during the oral proceedings cannot convince the board that the circumstances warranted admitting the late-filed auxiliary requests.
The argument is based on the false premise that the discussion of the novelty objection was confined to the exchange of facts and arguments at the oral proceedings. However, the discussion whether the subject-matter of claim 1 as granted lacked novelty over document D8 was initiated with the written submissions in the appellant's letter dated 30 December 2019, i.e. when the document was filed. The fact that the respondent chose not to present its counterarguments until the day of the oral proceedings does not alter this conclusion. Indeed, even after the board had provided a summary of the appellant's submissions in the communication pursuant to Article 15(1) RPBA 2020 and given its tentative view on the matter based solely on these submissions, the respondent replied by letters dated 22 July 2022 and 16 September 2022 without addressing the merits of the objection on novelty over document D8. It was only during the oral proceedings before the board that the respondent argued that features e and fc were not disclosed by document D8.
21. In view of the above, the board concludes that the respondent has not presented cogent reasons justifying exceptional circumstances for filing auxiliary requests 1, 3 and 4 on 22 July 2022 and auxiliary request 1A on 16 September 2022. The auxiliary requests are therefore not taken into account pursuant to Article 13(2) RPBA 2020.
Request for remittal
22. The respondent's request for remittal of the case to the opposition division for further prosecution was dependent on at least one of auxiliary requests 1, 1A, 3 or 4 being admitted in the proceedings. As none of the auxiliary requests were admitted (see point 21. above), the request for remittal is without object and has to be refused.
Conclusion
23. Since the only request taken into account by the board cannot be allowed for the reasons set out in points 9. to 14. above, the patent must be revoked.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The patent is revoked.
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