Key points
- Art. 12(3) RPBA requires a party's appeal case to be substantiated. This also applies to carry-over auxiliary requests that can not be held inadmissible under Art. 12(4).
- Carry-over requests are requests that were admissibly filed and maintained in the first instance proceedings. Such requests are no case amendment under Art 12(4).
- The Explanatory Remarks are imprecise when they state that "they will not be considered an amendment and, therefore, will be part of the appeal proceedings".
- Self-evident amendments need not be explained according to established case law. The present decision does not touch on that rule.
- The references of the patentee to certain letters in the first instance proceedings are no valid substantiation, according to the Board.
- As a practical rule of thumb, imagine (when drafting your Statement of grounds or appeal reply) that the file wrapper of the first instance proceedings is burnt, except for the minutes and the decision (Art.12(1)) and except for the claim requests and evidence (Art. 12(3)(s.3)). Letters of parties in the first instance proceedings will, however, be considered for the purpose of assessing whether submissions were "admissibly raised and maintained in the proceedings leading to the decision under appeal" under Art. 12(4)(s.1) and the entire first instance file wrapper will be considered for holding submissions under inadmissible under Art. 12(6)(s.1) RPBA by showing that the party filing the submission in appeal had one or more reasonable opportunities to file them in the first instance proceedings and made no avail of them or (tacitly) abandoned the submissions.
- As a further practical rule, attorney arguments probably should be presented in the SoG proper, not in an annexe (same for the appeal reply brief) (see T 0974/20).
- The Board in translation: "There is agreement that auxiliary requests 0, 0.1, 1 - 11 were filed in opposition proceedings and were not abandoned. However, this is not decisive in the present case, because the non-admission is not based on the provisions of Article 12(2), (4) RPBA, but on those of Article 12(3), (5) RPBA. The objections to the reference to documents and scarcity under Article 12(3) RPBA, as well as the requirement under Article 12(3)(b) RPBA to submit such documents, have already been addressed in Section 5.1.1 above and require no further comment."
5. Admission of auxiliary requests 0, 0.1, 0.2, 1 - 11
5.1 During the oral proceedings, the board discussed the admission of unsubstantiated auxiliary requests 0, 0.1, 1 - 11, as this fell within its discretion under Article 12(5) RPBA.
5.1.1 In Section E of its response to the appeal, the Respondent referred only to "auxiliary requests 0, 0.1, 1 - 11" and "to the briefs of the first instance proceedings as well as to the brief of November 27, 2020, the brief of May 24, 2019 and the pleading of April 24, 2020 "in order to make their relevant first-instance submissions "by reference the subject of the appeal proceedings".
5.1.2 In points 1 and 8.1 of its notification pursuant to Article 15(1) RPBA, the Chamber pointed out that, contrary to Article 12(3) RPBA, the reply to the appeal is not complete, since general references to submissions in the first-instance proceedings according to applicable case law are not taken into account, RSBK 10th edition, 2022, VA2.6.5.
A reference to "the pleadings of the first instance proceedings" is blanket. The reference to the three individual pleadings also remains general, because due to the repeated addition and renaming of the auxiliary requests in the opposition proceedings, it is not obvious without a substantive examination of these pleadings which submission in which pleading belongs to which auxiliary request. Neither the other parties nor the board can be expected to collect the respondent's arguments for thirteen auxiliary requests from three pleadings themselves. In the present case, this would have meant that the chamber would have had to act actively on behalf of a party, which was out of the question given the expected impartiality of the chamber.
5.1.3 Contrary to the opinion of the Respondent, it cannot be deduced from Article 12(3) RPBA that a blanket reference is permissible under the requirement of scarcity. "Documents to which reference is made" and which "have already been filed in grant, opposition or appeal proceedings" within the meaning of Art. 12(3) and paragraph (a) RPBA 2020 (the content is unchanged compared to the version of 2007) cannot in principle replace the actual complaint presentation. According to current case law, arguments that were mere repetitions of the submissions in opposition proceedings cannot justify an appeal, RSdBK, VA2.6.3 h), and a blanket reference to submissions submitted in the first instance is in principle not sufficient for justification, RSdBK, VA2 .6.5. The same principles apply in particular to applications, see RSdBK, VA4.3.5 b), according to which a blanket reference to applications submitted in the first instance is incompatible with the requirement of Article 12(3) RPBA. Furthermore, it would not have made any difference if the respondent had re-submitted a copy of the three pleadings as documents to which reference is made or if the board had asked them to do so, Article 12(3)a), b) RPBA. Rather, what is decisive is that, through the reference or through the mere repetition of arguments brought forward in the opposition proceedings, neither the board nor the other party can immediately see which objections raised by the appellant in its appeal against the main request
5.1.4 This is not changed by the fact that in the present case it was not possible to deal with any findings of the contested decision on the auxiliary requests, since the patent proprietor was successful in the first instance with its higher-ranking request. Because she would still have had to prepare for a defense of the auxiliary requests in the appeal proceedings. It was foreseeable that these would come into effect if the main application did not stand up. It was also foreseeable that at such a stage of the proceedings it would have been up to the patent proprietor to substantiate its requests.
5.1.5 Although the Respondent responded to the Board's notification by letter dated December 2, 2022 and filed another auxiliary request 0.2, it neither withdrew auxiliary requests 0 and 0.1 nor submitted any substantiation on them. With regard to auxiliary request 1, she was of the opinion, despite the board's above-mentioned reference, that further explanations would be superfluous because the board had provisionally considered it to be viable. In point 8.4 of its communication, however, the Board had only briefly examined aspects of the original disclosure and novelty compared to E1 in two sentences because the parties had not submitted any submissions on auxiliary request 1. She did not comment on the allowability of auxiliary request 1.
5.1.6 Under Article 12(5) RPBA, the Board has the discretion not to admit a party's submissions that do not meet the requirements of paragraph 3 (of Article 12). In exercising this discretion, the board decided in the oral proceedings that these auxiliary requests were not admitted to the proceedings because they were not substantiated.
5.2 Auxiliary request 0.2 was filed by letter dated December 2, 2022, after the notice of summons to the oral proceedings before the Chamber was served. This motion is therefore considered to be a change in the Respondent's appeal submissions within the meaning of Article 13(2) RPBA. Accordingly, such changes are generally disregarded unless the Respondent has shown valid reasons for the existence of exceptional circumstances.
The Respondent stated that it was surprised by the Board's broad interpretation of the pre-selection step in its communication. Since the board only followed the appellant's arguments known to the respondent from the statement of grounds of appeal (page 14 below to page 16 above), it could not identify any exceptional circumstances and therefore did not admit auxiliary request 0.2 to the proceedings under Article 13(2) RPBA.
6. Complaint under Rule 106 EPC
6.1 Following the board's decision not to admit the auxiliary requests, the respondent raised a complaint under Rule 106 EPC, which it submitted in writing. Consequently, by not admitting all auxiliary requests, she felt that her rights, in particular her right to be heard under Article 113(1) EPC, were being curtailed. This decision was surprising, since the Chamber dealt with the auxiliary requests in the notification and even considered auxiliary request 1 to be worthy of being maintained for the time being. In addition, the complainant did not object to the admission. In particular, Article 12(3) RPBA expressly allows references and requires succinct drafting. There was no explicit request for the submission of further supporting documents under Article 12(3)(b) RPBA, although the Respondent was able to rely on the substantive discussion of auxiliary requests that these were part of the proceedings. The non-admission therefore contradicts the principle of the protection of legitimate expectations. A dutiful exercise of discretion according to Art. 12(5) RPBA should at least have led to the admission of auxiliary request 1, since according to the preliminary view of the Chamber in its communication it is valid.
6.2 The Board rejected the objections set out in the complaint. It agrees with the respondent that refusing to admit auxiliary requests due to incorrect exercise of discretion could violate a party's right to be heard and could therefore be grounds for review under Article 112a(2)(c) EPC. However, after hearing the parties on the question of admission and the complaint, the Chamber did not see such a violation as having occurred.
6.3 There is agreement that auxiliary requests 0, 0.1, 1 - 11 were filed in opposition proceedings and were not abandoned. However, this is not decisive in the present case, because the non-admission is not based on the provisions of Article 12(2), (4) RPBA, but on those of Article 12(3), (5) RPBA. The objections to the reference to documents and scarcity under Article 12(3) RPBA, as well as the requirement under Article 12(3)(b) RPBA to submit such documents, have already been addressed in Section 5.1.1 above and require no further comment.
6.4 The Respondent invokes protection of legitimate expectations with regard to the admission of the auxiliary requests. The fact that the board in its communication (and subsequently also the appellant) dealt with some auxiliary requests without referring not only to Article 12(3) RPBA but also explicitly to Article 12(5) RPBA aroused the justified expectation that the auxiliary requests are already part of the appeal procedure. This should at least have been taken into account when exercising due discretion within the framework of Article 12(5) RPBA to the extent that auxiliary request 1, which was positively decided, should have been allowed.
6.4.1 From the cursory remarks made by the Chamber in its communication on the first three auxiliary requests, it cannot infer that it gave the impression that these auxiliary requests were admitted and could be maintained. Firstly, in point 8.1 on the auxiliary requests, it was expressly pointed out again with reference to point 1 that none of the parties had submitted any substantiated submissions on the auxiliary requests. Under point 1, "Framework of the appeal", the board had pointed out the requirement under Article 12(3) RPBA that each party submits a complete appeal, whereby blanket references to submissions in the first instance proceedings according to current case law are not taken into account. Although no explicit reference is made to Article 12(5) RPBA in these two points, however, the Board may assume that the parties are sufficiently aware of the legal consequences of unsubstantiated submissions under the Rules of Procedure of the Boards of Appeal, which have been in force since January 2020. Incidentally, the non-consideration of unsubstantiated applications was already established case law under the old rules of procedure, which derived directly from the provisions of Article 12(2) and (4) RPBA 2007 (see RSdBK 9th edition 2019, VA4.12.5). In any case, a party cannot claim that the non-naming of a procedural rule means that it should not be valid. Neither can a party invoke ignorance of regulations. that the parties are sufficiently aware of the legal consequences of unsubstantiated submissions under the Rules of Procedure of the Boards of Appeal, which have been in force since January 2020. Incidentally, the non-consideration of unsubstantiated applications was already established case law under the old rules of procedure, which derived directly from the provisions of Article 12(2) and (4) RPBA 2007 (see RSdBK 9th edition 2019, VA4.12.5). In any case, a party cannot claim that the non-naming of a procedural rule means that it should not be valid. Neither can a party invoke ignorance of regulations. that the parties are sufficiently aware of the legal consequences of unsubstantiated submissions under the Rules of Procedure of the Boards of Appeal, which have been in force since January 2020. Incidentally, the non-consideration of unsubstantiated applications was already established case law under the old rules of procedure, which derived directly from the provisions of Article 12(2) and (4) RPBA 2007 (see RSdBK 9th edition 2019, VA4.12.5). In any case, a party cannot claim that the non-naming of a procedural rule means that it should not be valid. Neither can a party invoke ignorance of regulations. derived directly from the provisions of Article 12(2) and (4) RPBA 2007 (see RSdBK 9th edition 2019, VA4.12.5). In any case, a party cannot claim that the non-naming of a procedural rule means that it should not be valid. Neither can a party invoke ignorance of regulations. derived directly from the provisions of Article 12(2) and (4) RPBA 2007 (see RSdBK 9th edition 2019, VA4.12.5). In any case, a party cannot claim that the non-naming of a procedural rule means that it should not be valid. Neither can a party invoke ignorance of regulations.
6.4.2 Second, Section 8.4 on auxiliary request 1 very succinctly stated that it appeared to meet the requirements of Article 123(2) EPC and that the features relating to no-load losses did not appear to be known from E1. There is no information there on inventive step, in particular because the parties had not yet submitted any submissions on this. As stated above, even after the notification was served, no submissions were made on the auxiliary requests.
6.4.3 Last but not least, the introductory paragraph of the communication should be pointed out, according to which the view following this paragraph is provisional. From this it may be clear to all parties that no legal claims can be derived from this view, since it can be changed in the course of the proceedings.
6.5 The fact that the Respondent was given the opportunity in the oral hearing to comment extensively and repeatedly on the various aspects in the discussion about the admission of the auxiliary requests (and again in the discussion on the complaint raised) gives her a legal claim Hearing has been preserved in the context of the admission of the auxiliary requests. In making its discretionary decision, the Chamber weighed and considered these statements and all the circumstances of the present case. The right to a fair hearing does not justify a further right to catch up on actions that have been missed, in this case the substantiation of auxiliary request 1, in order to correct any legal errors that may exist and to obtain admission.
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