T 1906/19 - On the meaning of Art. 13(2) RPBA

Key points

• " The Board understands [the wording of Article 13(2) RPBA 2020] as laying down a basic rule but leaving some limited leeway for exceptions. The basic rule is that amendments are not considered unless there are exceptional circumstances justified by cogent reasons (by the submitting party). The leeway for deviating from this rule lies in the expression "in principle" ("en principe"; "grundsätzlich"), which the Board reads roughly as "as a rule", meaning that the provision's basic rule is not entirely without exception. This leeway, when applied, means that an amendment can be considered despite the absence of exceptional circumstances justified by cogent reasons." 
• Art. 13(2) RPBA in relevant part: " Any amendment to a party's appeal case made after [the 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."
• Cf. T2125/18 .
• The idiomatic phrase "as a rule" means "usually".
• " Article 13(1) and (2) RPBA 2020 defines the second and third levels of the convergent approach practised by the Boards of Appeal when deciding on admission. Together with the first level specified in Article 12(4) RPBA 2020, Article 13(1) and (2) sets increasingly stringent hurdles for the admission of new requests and other amendments. This stepwise approach for deciding on the admission of amendments would lose some of its coherence and convergence, if the Boards could exercise discretion on the first two levels but not the third. This Board interprets the passage "shall, in principle, not" as indicative of a remaining (though restricted) discretion." 
• Turning to the facts of the case: " In the present case, the [applicant/appellant] did not follow the common practise, [viz.] when submitting amended requests, of maintaining at least some previous requests  (seemingly) out of fear of being left with no admissible requests. This practice [i.e. not simply filing amended claims, but filing amended claims as additional auxiliary requests] sometimes means the Board and parties have to spend considerable time on requests that even the applicant or proprietor no longer thinks are viable. Instead, the appellant gave the Board a single set of claims to consider. It is true that it was twice further amended during oral proceedings, but the amendments were, in each case (including those filed before oral proceedings), straightforward, within the limits of the debate, and finally led to a set of claims that was, prima facie, clearly allowable." 
• " The succession of requests in the present case was not detrimental to procedural economy. There was no inconvenience for the Board, and no other party to the proceedings was affected." 
• "  The primary reason for the convergent approach is procedural economy. It would be unfortunate if it were so strictly applied that appellants, in ex parte proceedings, were seriously discouraged from filing a promising and facilitating new request and dropping non-viable requests." 
• " The circumstances in this case might, arguably, be exceptional; but whether they are or not, the Board, noting that the criteria under Article 13(1) RPBA 2020 come out favourably for the appellant, exercised the discretion provided by "in principle" in Article 13(2) RPBA 2020 and decided to admit the sole request." 
• As a comment, this approach seems sensible and pragmatic. I hope it will not remain an isolated decision. 
• 
  

EPO 

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

https://new.epo.org/en/boards-of-appeal/decisions/t191906eu1.html

Admission - Article 13 RPBA 2020

2. In its preliminary opinion, issued with the summons to oral proceedings, the Board raised an objection of added subject-matter against claim 1 of the (then) first auxiliary request. In a written response, the appellant withdrew all its previous requests and submitted a single new request that addressed this objection.

3. During oral proceedings before the Board, a potential problem with another feature of the new request became apparent. This feature had already been introduced in the previous first auxiliary request, but had not been objected to by the Board. The appellant immediately replaced the request by a new version, in which the potentially problematic feature was deleted in claim 1. After noticing that the deletion of the same feature had been overlooked in claim 12, the request was again replaced by a new version, the current sole request, in which this oversight was corrected.

4. Under Article 13(2) RPBA 2020, any amendments to a party's appeal case at this late stage, such as the sole request, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

5. The Board understands this wording as laying down a basic rule but leaving some limited leeway for exceptions. The basic rule is that amendments are not considered unless there are exceptional circumstances justified by cogent reasons (by the submitting party). The leeway for deviating from this rule lies in the expression "in principle" ("en principe"; "grundsätzlich"), which the Board reads roughly as "as a rule", meaning that the provision's basic rule is not entirely without exception. This leeway, when applied, means that an amendment can be considered despite the absence of exceptional circumstances justified by cogent reasons.

6. This textual understanding of Article 13(2) RPBA 2020 is supported by the following systematic and teleological considerations:

(a) Article 13(1) and (2) RPBA 2020 defines the second and third levels of the convergent approach practised by the Boards of Appeal when deciding on admission. Together with the first level specified in Article 12(4) RPBA 2020, Article 13(1) and (2) sets increasingly stringent hurdles for the admission of new requests and other amendments. This stepwise approach for deciding on the admission of amendments would lose some of its coherence and convergence, if the Boards could exercise discretion on the first two levels but not the third. This Board interprets the passage "shall, in principle, not" as indicative of a remaining (though restricted) discretion.

(b) This Board is also not convinced that the law maker, as seemingly implied by T 1294/16, has put words without meaning into a provision as important as Article 13(2) RPBA 2020: in such a view, "in principle" would be redundant in view of "unless...". Rather, the Board believes that the law maker had the foresight to see that the otherwise harshly-worded Article 13(2) needed a caveat allowing for consideration of the particular circumstances of a case.

7. In the present case, the appellant did not follow the common practise, when submitting amended requests, of maintaining at least some previous requests (seemingly) out of fear of being left with no admissible requests. This practice sometimes means the Board and parties have to spend considerable time on requests that even the applicant or proprietor no longer thinks are viable. Instead, the appellant gave the Board a single set of claims to consider. It is true that it was twice further amended during oral proceedings, but the amendments were, in each case (including those filed before oral proceedings), straightforward, within the limits of the debate, and finally led to a set of claims that was, prima facie, clearly allowable.

8. The succession of requests in the present case was not detrimental to procedural economy. There was no inconvenience for the Board, and no other party to the proceedings was affected.

9. The primary reason for the convergent approach is procedural economy. It would be unfortunate if it were so strictly applied that appellants, in ex parte proceedings, were seriously discouraged from filing a promising and facilitating new request and dropping non-viable requests.

10. The circumstances in this case might, arguably, be exceptional; but whether they are or not, the Board, noting that the criteria under Article 13(1) RPBA 2020 come out favourably for the appellant, exercised the discretion provided by "in principle" in Article 13(2) RPBA 2020 and decided to admit the sole request.