T 1776/18 - (I) Amended claims are facts (?)

Key points

•  Board 3.3.09 gives an analysis of the legal basis in the EPC for holding amended claims inadmissible. The two main candidates are Article 114(2) and Article 123(1) EPC. 
• The facts of the case are that the OD held auxiliary request 4A inadmissible that was filed during the oral proceedings, in reply to a novelty attack based on D6. The Board has to review this decision of the OD. The Board ultimately approves of it. In doing so, it must deal with Rule 116(2) EPC and T 754/16 which found that "requests filed after the final date set for making written submissions, can only then not be admitted if the patent proprietor had been notified of the grounds prejudicing the maintenance of the patent".
• The patentee argues that:  "the request had been filed in direct reaction to the Opposition Division's conclusion that the claim under scrutiny lacked novelty over Example 4 of D6. This objection had been raised for the first time in one of the opponents' submissions filed on the last day fixed under Rule 116(1) EPC. Under these circumstances, the Opposition Division had no discretion not to admit the request. The reasoning of T 754/16 was applicable by analogy. According to the cited decision, auxiliary requests filed during oral proceedings in direct response to a reversal of the Opposition Division's preliminary opinion had to be admitted."  
• The Board: " The Opposition Division decided on the admittance of auxiliary request 4A under Article 114(2) EPC. In view of the patent proprietor's allegation that the Opposition Division did not have any discretionary power for its decision not to admit auxiliary request 4A, the Board will firstly assess whether Article 114(2) EPC provides a legal basis for such a discretionary decision. Secondly, it will be analysed whether the concept of "not submitted in due time" in Article 114(2) EPC relates to fixed criteria such as a certain point in time in the proceedings or, as alleged by the patent proprietor, to relative criteria such as individual procedural developments. Thirdly, it will be assessed whether Rule 116(2) EPC should, as alleged by the patent proprietor with reference to T 754/16, be understood as making the exercise of the Opposition Division's discretionary power subject to conditions other than that the amended claim request was not submitted in due time. Fourthly, the Opposition Division's way of exercising its discretion will be reviewed." 
   
• Board 3.2.01 explained that the legal basis is Article 123(1) EPC in T 0966/17, for the opposition division in conjunction with R.79(1) and R.81(3). In the petition for review case R 6/19, the same conclusion was arrived at.
•  It may be added that landmark decision T 0406/86 concluded that R.79(1) and R.81(3) [strictly speaking their predecessors in EPC 1973] provide the legal basis for holding claim amendments inadmissible in opposition (see my post on that decision). The legal basis was identified in T 406/86 as Art. 101(2) EPC 1973 which provides that: "[i]n the examination of the opposition, which shall be conducted in accordance with the provisions of the Implementing Regulations"; essentially the same provision can be found in Art. 101(2).
• However, as described in CLBA 2022 IV.C.5.1.4.a, "In many decisions the boards have relied on Art. 114(2) EPC " for holding amended claims inadmissible.
• As noted above, "the Opposition Division decided on the admittance of auxiliary request 4A under Article 114(2) EPC. In view of the patent proprietor's allegation that the Opposition Division did not have any discretionary power for its decision not to admit auxiliary request 4A, the Board will [first] assess whether Article 114(2) EPC provides a legal basis for such a discretionary decision. 
• Implicitly, the Board may have considered that the OD's decision to hold the amended claims inadmissible could not be supported by Article 123(1) as ultimate  legal basis; or the Board had to qualify amended claims as fact in order to rely on Rule 116(1) EPC.
• "There is a long line of case law (e.g. T 171/03, Reasons 5; T 811/08, Reasons 4.2; T 1100/10, Reasons 8 and 11; T 1933/12, Reasons 4.1; T 2385/12, Reasons 1.8; T 108/14, Reasons 3; and T 44/17, Reasons 2) according to which claim requests may be disregarded under Article 114(2) EPC. "
• "There is also an alternative view. ... The Enlarged Board deduced ... that the first sentence of Article 123(1) EPC provided a legal basis for the EPO's discretion as to whether or not to admit claim requests. It left open whether or not Article 114(2) EPC constituted such a legal basis as well (R 6/19, Reasons 5 to 11; cf. also T 966/17, Reasons 2.2.1). " 
• See also J 14/19, reasons 1.6.
• The Board then turns to T 1914/12 because Article 114(2) is limited to facts (and evidence), so the question is whether amended claims are facts in the sense of that provision. "In T 1914/12, last paragraph of Reasons 7.1.3.a), it is stated that new sets of claims are not facts within the meaning of Article 114 EPC. "
• The present Board concludes that amended claims are facts in the sense of Article 114(2), such that Article 114(2) provides a basis for holding amended claims inadmissible. In order to arrive at this conclusion, the Board rebuts the reasoning in T 1914/12, first summarizing that reasoning as follows: "In T 1914/12, last paragraph of Reasons 7.1.3.a), it is stated that new sets of claims are not facts within the meaning of Article 114 EPC. This is reasoned by references to previous decisions, namely to T 912/91, [...] However, all of these decisions are concerned with a very specific question, namely the question of whether Article 113(1) EPC and [G 4/92] prevent a Board from deciding on the maintenance of a patent on the basis of auxiliary requests made during oral proceedings in which the opponent was absent. "
• G 4/92 held that "A decision against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings [and that are exceptionally admitted into the proceedings]" (hn.1), the opinion is limited to inter partes proceedings in that it has "no bearing" on ex parte proceedings (r.1) The Enlarged Board indicated that the same principle applies to evidence (hn.2) but not to arguments (r.10) as these do not constitute grounds or evidence under Article 113(1). The opinion is silent on amended claims.
• The present Board states that it "is of the view that in particular the statements in T 912/91 and T 133/92 that the submission of auxiliary requests is not a fact "within the meaning of the above decision" (i.e. opinion G 4/92) cannot be generalised."
• This may imply that according to the present Board, the EPC has two concepts of 'fact'. 
• "For the purposes of Article 114(2) EPC, the present Board thus considers a patent claim to be a statement of technical facts in legal terms. This is also apparent in claim interpretation. While determining the subject-matter of a patent claim is overall a question of law, it also involves questions of fact, such as the meaning of a certain technical term at a certain point in time."
• As a comment, claim interpretation seems to be rather different in nature than submitting amended claims. The Board decides on the claim interpretation, but filing amended claims is the prerogative of the patentee (or applicant) under Article 113(2).
• I find the Board's reasoning difficult to follow at this point. A patent claim (if written customarily) is not a statement that can be true or false.
  
• Jumping from r.4.5.5 to r.4.5.8 of the Board's extensive reasoning: "[a] teleological interpretation of Article 114(2) EPC supports the understanding that substantiated claim amendments are facts within the meaning of this provision. The purpose of Article 114(2) EPC is to provide the deciding body with an effective means to prevent parties from unnecessarily protracting the proceedings. ...  Moreover, as to whether a late-filed submission may unnecessarily protract the proceedings, there is no principal difference between objections submitted by an opponent and amended claim requests submitted by a patent proprietor. Applying Article 114(2) EPC to both types of party submissions thus also ensures that the parties are treated equally and according to the same criteria, which guarantees equality of arms."
• As a comment, Article 114(2) EPC refers neither to objections nor to requests but to facts and evidence. 
• The Board: "As to Article 123(1) EPC as a possible legal basis for not admitting claim requests, it does not seem straightforward that the first sentence of this provision is concerned with any discretionary power conferred to the EPO. "
• The key part of Article 123(1) seems to be that: "The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations."
• " Rule 81(3) EPC as such does not appear to confer any discretionary power to the EPO either; rather, it concerns certain non-mandatory ("where necessary") contents of a communication of an Opposition Division under Article 101(1) EPC. Moreover, the requirement for a submission to not have been "submitted in due time" as a precondition for the exercise of discretion by the EPO only exists under Article 114(2) EPC, and not under Article 123(1) EPC. "
• As to the first sentence, I think this was already addressed by T 406/86:  “Although Rules 57 and 58 EPC [1973] directly concern only those criteria to be applied by the Opposition Division when the question of inviting the patent proprietor to make amendments arises, they indicate clearly and conclusively, so the Board is convinced, that even if not explicitly invited by the Opposition Division the patent proprietor may expect his proposals for amendments [i.e. auxiliary requests] to be allowed [i.e. admitted] only if it [=the OD] decides after exercising due discretion that it [=the OD] regards them as appropriate and/or necessary in the above sense. " (see also T 0295/87 (link)).
• As a further comment, an advantage of Article 123(1) EPC is that the Administrative Council can clarify the Implementing Regulations if it wishes. 
• As to the Board's second sentence, under Rule 80 EPC amended claims can be held inadmissible even if not filed late. 
• Of note, at the time of T 406/86, Rule 80 EPC did not yet exist. It was introduced in 1995, see OJ 1995, p.409.

• "Moreover, even if one were of the opinion that a patent claim as such does not qualify as "facts or evidence" within the meaning of Article 114(2) EPC, an amended claim request must be substantiated in order to become effective (see, for example, T 1732/10, [...]). Unsubstantiated claim requests are not considered validly filed and do not form part of the proceedings (T 1784/14, Reasons 3.7). "
• Unless the purpose of the amendments is self-evident, as the Board notes. The Board considers self-evident amendments to be a case of implicit substantiation.
• "In conclusion, in submissions containing claim requests which are explicitly or implicitly substantiated, factual elements are present. The presence of these factual elements allows Article 114(2) EPC to be relied on as a legal basis for disregarding claim requests which are not filed in due time (see J 14/19, Reasons 1.6 and 1.7)."
• The substantiation of amended claims may involve factual assertions in certain cases. Still, the prudent approach seems to be considering this on a case-by-case basis and identifying the precise factual assertions of the patentee when holding amended claims inadmissible on this ground. 
• The Board then has to deal with the issue of whether amended claims must actually be substantiated in the first instance proceedings. "Most of the case law on the need to substantiate claim requests concerns claim amendments submitted in appeal proceedings, and in these cases reference is often made to Article 12(2) RPBA 2007 (cf. Article 12(3) RPBA 2020). While this provision is not applicable in opposition proceedings, the principle that a party must contribute to the conduct of the proceedings by substantiating its own requests in a minimum way is not limited to appeal proceedings. This can in particular be deduced from Rule 76(2)(c) EPC, according to which an opponent requesting the revocation of a patent must also provide substantiation for at least one ground of opposition".
• Note, Rule 76(2)(c) EPC is about the opposition and not about claim requests.
• The Board, under r. 4.5.6: "In view of Rule 80 EPC, according to which an amended claim request must be occasioned by a ground for opposition, a claim request must be substantiated by submitting why the amendment is suitable for overcoming one or more grounds of opposition. "
• Rule 80 EPC indeed appears to be a plausible legal basis for the requirement to substantiate claim amendments in opposition. I note that Rule 80 is generally considered to be based on Article 123(1) EPC and/or Article 101(2) EPC.

I will discuss the Board's further reasoning in a later post.

• 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/t181776eu1.html

4.5 Article 114(2) EPC - legal basis for not admitting amended claim requests

4.5.1 There is a long line of case law (e.g. T 171/03, Reasons 5; T 811/08, Reasons 4.2; T 1100/10, Reasons 8 and 11; T 1933/12, Reasons 4.1; T 2385/12, Reasons 1.8; T 108/14, Reasons 3; and T 44/17, Reasons 2) according to which claim requests may be disregarded under Article 114(2) EPC. In T 1855/13, Reasons 1.8.1, a submission containing a claim request was explicitly considered to be a fact within the meaning of Article 114(2) EPC. Likewise, in T 604/01, Reasons 6.1, both the patent as granted and the claims as amended were considered facts. Examples of case law in which the Opposition Division's discretion not to admit claim requests was considered to have its legal basis in Article 114(2) EPC in conjunction with Rule 116(1) EPC include T 1270/18, Reasons 2 and 3, and T 85/19, Reasons 1.2.

4.5.2 There is also an alternative view. In a petition for review case before the Enlarged Board of Appeal, the petitioner had argued that a Board of Appeal had no power not to admit claim requests because claim requests were neither facts nor evidence within the meaning of Article 114(2) EPC. Against this background, the Enlarged Board referred to the first sentence of Article 123(1) EPC, according to which a patent may be amended in accordance with the Implementing Regulations. The Enlarged Board noted that the applicant's right under the second sentence of Article 123(1) EPC to be given at least one opportunity to amend the application was not applicable in opposition proceedings and that under Rule 81(3) EPC, in opposition proceedings, an opportunity to amend must only be given where necessary. The Enlarged Board deduced from this that the first sentence of Article 123(1) EPC provided a legal basis for the EPO's discretion as to whether or not to admit claim requests. It left open whether or not Article 114(2) EPC constituted such a legal basis as well (R 6/19, Reasons 5 to 11; cf. also T 966/17, Reasons 2.2.1). In T 256/19, Reasons 4.7, the Board stated that discretion to disregard an amended version of a patent could only emanate from Article 123(1) EPC in conjunction with Rule 79(1), 81(3) or 116(2) EPC.

4.5.3 There are further views in the case law (see Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.5.1.4 a)) on the legal basis for not admitting amended claim requests, including that Rule 116(2) EPC is the only legal basis (see T 688/16, Reasons 2.1), under this approach apparently without any corresponding provision in the articles of the EPC. There are also decisions in which Article 114(2) EPC in conjunction with Rule 116(2) EPC was considered to be the legal basis for not admitting amended claim requests (e.g. T 2536/12, Reasons 2.8, T 525/15, Reasons 1.2, and T 1758/15, Reasons 1.1.4).

4.5.4 In decision T 754/16, referred to by the patent proprietor, the Board was of the view that Article 114(2) EPC did not provide a legal basis for not admitting amended claim requests. This was reasoned by reference to a legal commentary. In the corresponding passage of the current, 8th edition of this commentary reference is made to T 1914/12. In T 1914/12, last paragraph of Reasons 7.1.3.a), it is stated that new sets of claims are not facts within the meaning of Article 114 EPC. This is reasoned by references to previous decisions, namely to T 912/91, Reasons 10; T 133/92, Reasons 7; T 771/92, Reasons 7, and T 235/08, Reasons 6.1. However, all of these decisions are concerned with a very specific question, namely the question of whether Article 113(1) EPC and the Enlarged Board's opinion in G 4/92 prevent a Board from deciding on the maintenance of a patent on the basis of auxiliary requests made during oral proceedings in which the opponent was absent. Against this background, the Board is of the view that in particular the statements in T 912/91 and T 133/92 that the submission of auxiliary requests is not a fact "within the meaning of the above decision" (i.e. opinion G 4/92) cannot be generalised. As highlighted in T 202/92, Reason 6, the question to be asked in the context of G 4/92 is whether an opponent can expect a patent proprietor to try to overcome the objections on file by filing an auxiliary request in the oral proceedings. In T 235/08, Reasons 6.1, which is the most recent decision cited in T 1914/12, it was accordingly held that G 4/92 did not prevent the admittance of amended claim requests filed at the oral proceedings "where the amendments made amount to clarifying restrictions made to avoid objections raised in the written proceedings and the amendments are of a nature that the absent opponents might have expected". This statement appears to indicate that the Board in T 235/08 considered amended claim requests as facts under G 4/92. Otherwise the Board would not have had to explain the specific circumstances which did not prevent the admittance of these amendments under G 4/92. In any case, opinion G 4/92 itself does not contain any statement as to the legal nature of claim requests in relation to Article 114(2) EPC.

4.5.5 The present Board agrees with the case law according to which Article 114(2) EPC constitutes a legal basis for not admitting claim requests. Under Rule 43(1) EPC, a patent claim defines the matter for which protection is sought in terms of the technical features of the invention. In G 2/88, Reasons 2.5, the Enlarged Board referred to an invention's technical features as physical features, namely as the physical parameters of the claimed entity or the physical steps of the claimed activity. For the purposes of Article 114(2) EPC, the present Board thus considers a patent claim to be a statement of technical facts in legal terms. This is also apparent in claim interpretation. While determining the subject-matter of a patent claim is overall a question of law, it also involves questions of fact, such as the meaning of a certain technical term at a certain point in time. Due to the technical expertise of the technically qualified members of the Boards of Appeal (and of the examiners in the Examining and Opposition Divisions) such questions of fact can usually be resolved without gathering evidence, but they are still questions of fact, and must at least implicitly be answered when interpreting a claim to assess whether a given claim request is allowable or not.

4.5.6 Moreover, even if one were of the opinion that a patent claim as such does not qualify as "facts or evidence" within the meaning of Article 114(2) EPC, an amended claim request must be substantiated in order to become effective (see, for example, T 1732/10, Reasons 1.5, T 2288/12, Reasons 3.1, and T 1784/14, Reasons 3.5). Unsubstantiated claim requests are not considered validly filed and do not form part of the proceedings (T 1784/14, Reasons 3.7). In view of Rule 80 EPC, according to which an amended claim request must be occasioned by a ground for opposition, a claim request must be substantiated by submitting why the amendment is suitable for overcoming one or more grounds of opposition. For novelty and inventive-step objections, this substantiation is usually provided through submissions which relate the amendment to prior-art documents, and for objections on sufficiency of disclosure and added subject-matter, through submissions which relate the amendment to the application documents. Submissions referring to such documentary evidence necessarily involve factual elements. Moreover, substantiating an amendment of a claim and explaining its technical meaning necessarily involves the view of the skilled person, which depends on their common general knowledge. While the skilled person per se is a fictitious character and therefore a legal construct, their common general knowledge is a question of fact. Even claim requests addressing a clarity objection raised in line with G 3/14 usually involve references to factual elements in some form or other, for example on the meaning of a certain technical term in a particular technical field. Exceptionally, an amended claim request may not be explicitly substantiated but may still be considered to have been validly filed because it is self-explanatory. Legally, however, this does not mean that such a claim request is not substantiated at all. Rather, the minimum substantiation required for any valid claim request is in such cases implicitly provided (cf. T 1078/18, Reasons 2.5), and is thus present in the form of an implied statement. In conclusion, in submissions containing claim requests which are explicitly or implicitly substantiated, factual elements are present. The presence of these factual elements allows Article 114(2) EPC to be relied on as a legal basis for disregarding claim requests which are not filed in due time (see J 14/19, Reasons 1.6 and 1.7).

4.5.7 Most of the case law on the need to substantiate claim requests concerns claim amendments submitted in appeal proceedings, and in these cases reference is often made to Article 12(2) RPBA 2007 (cf. Article 12(3) RPBA 2020). While this provision is not applicable in opposition proceedings, the principle that a party must contribute to the conduct of the proceedings by substantiating its own requests in a minimum way is not limited to appeal proceedings. This can in particular be deduced from Rule 76(2)(c) EPC, according to which an opponent requesting the revocation of a patent must also provide substantiation for at least one ground of opposition (see Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.2.2.8 a)). Accordingly, it was confirmed in T 44/17, Reasons 2, that claim requests are deemed to be validly submitted only as of the date of their substantiation in opposition proceedings as well. Correspondingly, it is also standard practice in opposition proceedings to substantiate claim requests explicitly.

4.5.8 A teleological interpretation of Article 114(2) EPC supports the understanding that substantiated claim amendments are facts within the meaning of this provision. The purpose of Article 114(2) EPC is to provide the deciding body with an effective means to prevent parties from unnecessarily protracting the proceedings. This serves the principle of procedural economy, which requires, inter alia, that the best possible use is made of a given legal system's limited resources. Excessively lengthy proceedings are also at odds with the right to a fair trial under Article 6(1) ECHR, which includes the right to have cases heard and adjudicated within a reasonable time. Clearly, amended claim requests which a patent proprietor does not submit in due time can unnecessarily protract the proceedings. Hence, the purpose underlying Article 114(2) EPC is only served if the deciding body has discretion not to admit late-filed claim requests. Moreover, as to whether a late-filed submission may unnecessarily protract the proceedings, there is no principal difference between objections submitted by an opponent and amended claim requests submitted by a patent proprietor. Applying Article 114(2) EPC to both types of party submissions thus also ensures that the parties are treated equally and according to the same criteria, which guarantees equality of arms.

4.5.9 A systematic interpretation does not lead to any other result either. According to the second subclause of Article 114(1) EPC on ex officio examination the EPO is not restricted to the "facts, evidence and arguments provided by the parties and the relief sought". Article 114(2) EPC on late-filed submission refers, on the other hand, only to "facts or evidence". The omission of the term "arguments" in Article 114(2) EPC has been invoked in favour of the view that late-filed arguments may not be equated with facts and may therefore not be disregarded under this provision (T 1914/12, Reasons 7.2.1.a); see also J 14/19, Reasons 1.10). This reasoning, however, cannot be applied in analogy to claim requests in view of the omission of the term "relief sought" ("Anträge" and "demandes", respectively, in the German and French versions) in Article 114(2) EPC, as this term cannot be understood as encompassing claim requests. In particular, Article 114(1) EPC provides that the EPO is in its examination not restricted to the "relief sought". Under 113(2) EPC, however, the EPO may only examine the patent in the text submitted or agreed by the patent proprietor. Hence, patent claim requests actually do restrict the EPO's power of ex officio examination (T 706/00, Reasons 2.1; T 1558/18, Reasons 1), and therefore they cannot be subsumed under the "relief sought" referred to in the second subclause of Article 114(1) EPC. In conclusion, a systematic interpretation of the term "facts" in Article 114(2) EPC is therefore also in line with considering substantiated claim requests as falling thereunder.

4.5.10 As to Article 123(1) EPC as a possible legal basis for not admitting claim requests, it does not seem straightforward that the first sentence of this provision is concerned with any discretionary power conferred to the EPO. While the word "may" in Article 114(2) EPC clearly refers to a discretionary power of the EPO, the wording in Article 123(1) EPC instead suggests that it is the applicant or patent proprietor itself which "may" amend its patent in accordance with the Implementing Regulations. Rule 81(3) EPC as such does not appear to confer any discretionary power to the EPO either; rather, it concerns certain non-mandatory ("where necessary") contents of a communication of an Opposition Division under Article 101(1) EPC. Moreover, the requirement for a submission to not have been "submitted in due time" as a precondition for the exercise of discretion by the EPO only exists under Article 114(2) EPC, and not under Article 123(1) EPC. While it may be possible to address this issue by relying on the differences in the wording of Rules 79(1) and 81(3) EPC (see T 966/17, Reasons 2.2.1), it appears preferable to ensure the equal treatment of opponents and patent proprietors in respect of the admittance of their submissions by relying on the same legal basis and the same precondition for the exercise of discretion, namely that the submission in question was "not submitted in due time". However, if considered necessary, this result can also be achieved by relying on Article 114(2) EPC in conjunction with Article 123(1) EPC (see J 14/19, Reasons 1.6: "ergänzend"), as the latter provision is complementary to the former in that it only requires an applicant to be given one opportunity to amend the application.

4.5.11 As an interim conclusion, Article 114(2) EPC provides a legal basis for disregarding claim requests which are not submitted in due time. Thus, provided that auxiliary request 4A was not submitted in due time, the Opposition Division had discretion under Article 114(2) EPC not to admit this request.