T 1800/20 - Not admissibly raised in the meaning of Art. 12(4)(s.1) RPBA

Key points

• The Board decides on the admissibility of an auxiliary request that was filed before the OD but that the OD did not reach in their decision because the OD found a higher-ranking request allowable.
• The Board examines whether the request as admissible raised before the OD, under Art. 12(4) and concludes that this is not the case because the request was not convergent with the higher-ranking request. The Board refers to the framework of T1903/13.
• T1903/13 is Art.12(4) RPBA 2020 avant la lettre.   See T 0494/18, r.3.7.5 for a different approach under Art. 12(4) RPBA 2007.
• However, the framework specified in T1903/13 concerns what is now Art. 12(4) fifth sentence, not Art. 12(4), first sentence, unless clause. The rules applied by the  Boards for admissibility (i.e. the factors of the fifth sentence) are not necessarily the same as the rules to be applied by the OD, respectively governing the term 'admissibly raised' in the first sentence of Art. 12(4).
•  Therefore, the request does not benefit from the unless clause of Art. 12(4) RPBA
• The Board, in translation: "3.7 Since auxiliary request 2' was not submitted in an admissible manner in the first instance opposition proceedings, its submission in the appeal proceedings represents a change in the patent proprietor's appeal submissions, the admission of which is at the discretion of the board. The board exercises this discretion to not admit auxiliary request 2' into the proceedings because its treatment would be incompatible with the requirement of procedural economy due to a lack of convergence (cf. T 1456/20, point 4.5 of the reasons for the decision)."
• Note the sanction of not falling under the unless-clause of the first sentence is that the second sentence of Art. 12(4)  applies. Art. 12(4) fifth sentence provides that "The Board shall exercise its discretion [i.e. of the second sentence] in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (iii) and the need for procedural economy." (Roman numerals added)
• Note that the Board in the present case does not explicitly consider all three factors indicated in the RPBA. T 1456/20 r.4.5 held that the criterion of convergence is an expression of the principle of procedural economy of Art. 12 and 13, when deciding on admissibility under Art. 13(2). However, this does not mean that it is an overriding factor.
• Note that a submission being inadmissible raised in the first instance procedure in the sense of Art.12(4)(s.1)  on the ground that it was raised and maintained in the first instance proceedings does not imply that Art.12(6), first or second sentence, applies, not even by analogy, neither that the discretion under Art.12(4)(s.2) is to be applied stricter, nor that it is an additional factor under Art. 12(4)(s.5). Such a rule can not be inferred from the RPBA 2020, nor would it be justified. The late filing of a request during the first instance proceedings that the OD did not reach is not detrimental to procedural efficiency compared to filing it with the initial appeal submissions.
• Furthermore, convergence under Art.12(4)(s.5) should be examined with respect to the requests filed with the initial appeal submissions. Convergence under Art. 12(4)(s.1) with respect to the requests pending at some time during the first instance procedure. 
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• EPO 

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

https://www.epo.org/de/boards-of-appeal/decisions/t201800du1

ubmitted in an admissible manner due to the lack of convergence with the higher-ranking auxiliary request 1' (then auxiliary request 2) mentioned above under point 3.4 d). It should be noted that the then auxiliary request 4 did not represent a convergent development of the procedure compared to the then auxiliary request 2 at the time it was submitted in the first instance opposition proceedings.

3.6 In addition, the opponent stated that auxiliary request 2' (then auxiliary request 4) was only submitted during the oral proceedings before the opposition division and should therefore be viewed as late. The patent owner has not given any reasons for the late submission. Therefore, regardless of the criterion of lack of convergence, auxiliary request 2' was not submitted in an admissible manner due to the late submission aspect mentioned in point 3.4 a).

3.7 Since auxiliary request 2' was not submitted in an admissible manner in the first instance opposition proceedings, its submission in the appeal proceedings represents a change in the patent proprietor's appeal submissions, the admission of which is at the discretion of the board. The board exercises this discretion to not admit auxiliary request 2' into the proceedings because its treatment would be incompatible with the requirement of procedural economy due to a lack of convergence (cf. T 1456/20, point 4.5 of the reasons for the decision).

3.8 Arguments of the patent owner for the admission of auxiliary request 2'

3.8.1 The patent proprietor argued in the oral hearing before the Board of Appeal that auxiliary request 2' should be admitted because it was already present in the first instance opposition proceedings.

The Chamber cannot share this view. As explained above in points 3.1 to 3.7, auxiliary request 2' was not admissibly submitted and maintained in the first instance opposition proceedings due to a lack of convergence. Therefore, the Chamber exercises its discretion in accordance with Article 12(4) RPBA 2020 not to admit auxiliary request 2' into the proceedings.

3.8.2 The patent owner denied that auxiliary request 2' was not convergent with the higher-ranking requests. The subject matter of claim 1 of the auxiliary request 2' develops in the same direction as the subject matter of claim 1 of the main request and the auxiliary request 1', namely towards a more precise definition of a blood analysis device.

For the reasons explained in point 3.5, the Chamber is not convinced that auxiliary proposal 2' represents a convergent further development. Within the broad technical field of blood analysis, main application and auxiliary application 1' attempt to define an invention with regard to the measurement geometry of the light emitter and the light detector, while auxiliary application 2' attempts to define an invention with regard to the presence of a secondary blood circulation. These two inventions go in completely different directions.