T 1220/21 - A tutorial on Art. 12(3) RPBA

Key points

• A carry-over auxiliary request [*] was re-submitted with the reply of the proprietor/respondent. The basis for the amendments was indicated in a marked-up copy of the claims. The Board, in the end, considers this insufficient because references were made to paragraph numbers.  "In fact, the description as originally filed does not even include numbered paragraphs, so the reference to "[SP [0056]]" (probably also the reference to claim 5) is either wrong or refers to the patent as granted rather to the application as filed".
• * =  i.e. an auxiliary request that is lower ranking that the claim request that was held to be allowable by the OD./
• The Board first confirms established case law that requests that benefit from the unless clause of Art. 12(4)(s.1) RPBA must be substantiated in appeal under Art.12(3), and adds that this involves indicating the basis for the amendments by analogous application of Art. 12(4)(s.4).
• "According to Article 12(3) and (5) RPBA 2020, a lack of or an insufficient substantiation of an amended request may lead to the non-admittance of this request. This does however not imply that the request has not been validly filed" (note that Art. 12(5) indeed mentions this discretion).
• "The admittance of an amended request which is not expressly substantiated pursuant to Article 12(3) RPBA 2020 is at the discretion of the Board under Article 12(5) RPBA, even if the amendments are self-explanatory". The reason is that "an implicit argument does not meet the requirement that the party should specify expressly the arguments relied on (T 2598/12, reasons 1.10)" Art.12(3) requires a substantiation and requires parties to specify expressly the arguments relied on, which is not complied with by an implicit argument. The Board adds that the self-explanatory nature of the amendments will be a factor to consider when deciding on whether to admit the claim request.
• I'm unsure about this reasoning. Any appeal case relies on a large number of technical/scientific arguments/facts which are implicit but evident to the skilled person as common general knowledge. Article 12(3) can not be interpreted to require that self-evident arguments/facts are spelled out in the appeal submissions. 
• "The substantiation of an amended request under Article 12(3) RPBA 2020 includes the primary duty of the proprietor to indicate the basis for the amendments in the application as originally filed, even if no objection under Article 123(2) EPC has been previously raised" (the possibility of previously raised objections applies to carry over requests).
• The Board is not in favour of annexes. "Information that can only be found in attached documents, without an explicit reference and explanation by the party, cannot be regarded as sufficient substantiation pursuant to Article 12(3) RPBA 2020".
• Turning to substantiation of amended claims in general: "(b) If a claim request is intended to overcome novelty or inventive step objections, the proprietor should at least identify the relevant documents and the features which distinguish the claimed subject-matter therefrom (see T 1659/20, reasons 2.1). According to some Boards, where a claim request is filed to overcome an objection under Article 56 EPC, the proprietor should even substantiate it on the basis of a more detailed chain of logic (see for example T 420/14, reasons 9.5).

• (c) However, the specific extent and detail of the explanations required to substantiate a claim request cannot be determined in an absolute or precise manner. This may depend on the level of detail and accuracy of the objections to be overcome in the impugned decision or as raised by the opponent (see T 1659/20, reasons 2.1). Moreover, the required degree of substantiation is not static, but might depend on how the corresponding objections evolve.'

• "The purpose of Article 12(3) RPBA 2020 is to ensure that the relevant submissions are present in the proceedings as early as possible to enable the Board and the other party(ies) to start working on the case on the basis of the parties' complete submissions (Case Law of the Boards of Appeal, 10th edition, V.A.4.3.5 a)) without being forced to speculate on the intentions of the other parties. The extent to which a lack of or an incomplete substantiation runs counter to this objective is a factor that may be taken into account when exercising the discretion under Article 12(5) RPBA 2020 (T 1659/20, reasons 2.1). This includes addressing the question of whether the amendments and the chain of logic underlying the claim requests are self-explanatory."

• I recommend reading the entire decision.

• The headnote seems to add a few points that can not be found (literally) in the reasoning itself.

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t211220eu1

4. Auxiliary requests 2 and 3 - Admittance under Article 12(3) and (5) RPBA 2020

The Board exercised its discretion not to admit these requests under Articles 12(3) and (5) RPBA 2020 and not to take into account the respondent's subsequent submissions filed after notification of the summons to oral proceedings under Article 13(2) RPBA 2020 which aimed at substantiating the auxiliary requests.

4.1 Article 12(4) RPBA 2020 - no amendment

The claims of auxiliary requests 2 and 3 include several amendments, namely additional features that were not present in the granted claims, and correspond to auxiliary requests 2 and 3 which were admissibly raised and maintained in the opposition proceedings. The requests are thus not to be regarded as an amendment under Article 12(4) RPBA 2020.

However, as indicated in the preliminary opinion, the requests have not been substantiated in the appeal proceedings, so their admittance was to be assessed under Articles 12(3) and (5) RPBA 2020.

In a first step, the Board thus had to assess whether the auxiliary requests were validly filed (see point 4.2 below) and whether the respondent's reply with respect to the auxiliary requests fulfilled the requirements of Article 12(3) RPBA 2020 (see points 4.3 and 4.4.1-4.4.5 below).

In a second step, the Board had to assess whether the subsequent submissions of the respondent, aiming at substantiating said auxiliary requests, should be admitted pursuant to Article 13(2) RPBA 2020 (see point 4.4 below). Based on the respective results, the Board exercised its discretion under Article 12(5) RPBA 2020 (see points 4.5 and 4.6 below).

4.2 Unsubstantiated requests - validly filed

In the Board's view, a lack of or an insufficient substantiation of an amended request may lead to its non-admittance, but this does not imply that the request has not been validly filed.

And even if some Boards have concluded that unsubstantiated requests which were not self-explanatory were deemed to have been filed only at the point of time when substantiation was provided (see

T 1732/10, reasons 1.5; T 1426/17, reasons 2.1; Case Law of the Boards of Appeal, 10th edition, V.A.5.12.6), this view is not shared by the present Board.

Rather, a distinction should be made between the filing of a claim request and its substantiation. This follows from Article 12(3) and (5) RPBA 2020, according to which a request, even if not substantiated, should be assessed by the Board with respect to its admittance and may eventually be admitted. Such an assessment of the request and the possibility of admitting it presupposes that the request has been validly filed despite deficiencies in its substantiation. In other words, while the lack of substantiation leaves the admittance of the claim request to the discretion of the Board, there is no basis in Article 12(3) and (5) RPBA 2020 for concluding that a claim request is not validly filed solely because it is not substantiated.

4.3 Article 12(3) RPBA - required substantiation

4.3.1 According to Article 12(3) RPBA 2020 the parties should set out their requests clearly and concisely and specify expressly all the requests, facts, objections, evidence and arguments relied on. These provisions reflect that it is not for the Board to speculate as to the intentions underlying the party's submissions (see also T 2115/17, reasons 6.1.3) or to further investigate the submissions made before the first instance.

4.3.2 Even if an amended request were to be considered self-explanatory, this would not meet the standard as set out in Article 12(3) RPBA 2020, because an implicit argument does not meet the requirement that the party should specify expressly the arguments relied on

(T 2598/12, reasons 1.10). Therefore, the admittance of such request would still be at the discretion of the Board (see for example T 568/14, reasons 8.4 and 8.5, where the request was explicitly admitted although it was considered to be self-explanatory). However, if a request is considered to be self-explanatory, this aspect will normally be taken into account when exercising the discretion (see points 4.5.1 and 4.5.2 below).

4.3.3 The required degree of substantiation under Article 12(3) RPBA 2020 depends on the specific circumstances of the case, namely:

(a) A proprietor who files an amended claim request is normally required to at least:

- indicate the basis in the application as filed for each amendment,

- indicate which objections are intended to be overcome (i.e. the purpose of the amendments) and

- provide reasons why an amendment overcomes the objections raised.

These requirements essentially correspond to those set out in Article 12(4), 3**(rd) and 4**(th) sentence RPBA 2020, which applies to those requests regarded as an amendment under Article 12(4), 1**(st) half-sentence RPBA 2020. There is no reason to apply a different standard if - as in the present case - the submitted claim request is not an amendment under Article 12(4) RPBA 2020. Therefore, the fact that a request is not an amendment under Article 12(4) RPBA 2020 does not exempt or reduce the respondent's duty to substantiate such a request. Rather, it is the duty of the party filing an amended claim request to present the arguments on which it relied clearly and concisely, which includes also the required information as set out in Article 12(4) RPBA 2020.

(b) If a claim request is intended to overcome novelty or inventive step objections, the proprietor should at least identify the relevant documents and the features which distinguish the claimed subject-matter therefrom (see T 1659/20, reasons 2.1). According to some Boards, where a claim request is filed to overcome an objection under Article 56 EPC, the proprietor should even substantiate it on the basis of a more detailed chain of logic (see for example T 420/14, reasons 9.5).

(c) However, the specific extent and detail of the explanations required to substantiate a claim request cannot be determined in an absolute or precise manner. This may depend on the level of detail and accuracy of the objections to be overcome in the impugned decision or as raised by the opponent (see T 1659/20, reasons 2.1). Moreover, the required degree of substantiation is not static, but might depend on how the corresponding objections evolve.

4.4 Substantiation in the case at issue

4.4.1 The patent as granted having been objected to under the grounds of opposition according to Articles 100(a) and 100(b) EPC, the appellant contested novelty and inventive step and based its objections on several attacks and different documents. It was thus incumbent on the respondent to explain which ground of opposition and which specific objections were supposed to be overcome with each auxiliary request. As discussed above, Article 12(3) RPBA 2020 further requires that the party expressly specifies its arguments as to why the claim requests would be suitable to overcome the objections raised.

4.4.2 In the present case, when auxiliary requests 2 and 3 were filed with the reply to the appeal, the respondent explicitly refrained from submitting any observation with respect to these requests. Instead, it merely stated that since the subject-matter of the granted claims was novel and inventive, there was no need to submit any further argument in support of the auxiliary requests.

The Board notes that the only potential information given by the respondent as to the basis for the amendments appears to be provided in the marked versions of the claims that were attached to the letter of reply, which include in claim 1 the indications "[claim 5]", "[claim 5, SP[2255]" and for auxiliary request 3 additionally: "[SP [0056]]". There was no further explanation or even mention of these references in the requests or in the letter of reply.

4.4.3 The respondent argued that, since in the present case the opposition division had decided that the patent as granted met the requirements of the EPC, the lack of substantiation of the auxiliary requests in advance of receiving the preliminary opinion of the Board was not critical.

This reasoning is not convincing because it ignores the requirement for substantiation set out in Article 12(3) RPBA 2020, which also applies when the opposition has been rejected in the first instance proceedings and the proprietor acts as respondent in the appeal proceedings. Article 12(3) RPBA 2020 requires each party to set out clearly and concisely the reasons why the decision under appeal was to be reversed, upheld or amended by expressly specifying all the arguments relied on. If the proprietor requests that the patent be maintained based on a claim request which does not correspond to that found allowable in the impugned decision, this implies that the decision under appeal is to be amended and should therefore be reasoned according to Article 12(3) RPBA 2020.

4.4.4 The respondent also argued that no further substantiation for its auxiliary requests could be expected, because at the time of filing said requests the outstanding objections under Article 123(2) EPC had been late filed and were incomprehensible. This argument is also not persuasive, because it fails to recognise that the duty to provide a basis in the application as originally filed for amendments to a claim request is an obligation of the proprietor that does not depend on whether or not the opponent had already put forward an objection under Article 123(2) EPC. Even in examination proceedings, an applicant filing a new request must indicate the basis for the amendments in the application as filed (see Rule 137(4) EPC). Thus, this duty applies a fortiori to amendments in opposition proceedings, where not only the opposition division or the Board, but also the opponent must be enabled to assess whether the requirements of Article 123(2) EPC are met without the need to speculate. Even though an objection raised by the opponent might increase the requirements for substantiation under Article 12(3) RPBA 2020, the duty to provide a basis for the amendments does not depend on whether or not the allowability of the request has been previously contested under Article 123(2) EPC.

4.4.5 Finally, the Board notes that in the present case there is no need to further specify the required extent or detail of the substantiation, as the respondent did not submit any useful information as to auxiliary requests 2 and 3.

In particular, the cited references in brackets attached to the reply as a separate document do not provide the required substantiation, because information that can only be found in attached documents, without an explicit reference and explanation by the party, cannot be regarded as a substantiation, as Article 12(3) RPBA 2020 requires the parties to expressly specify their submissions.

Furthermore, the references in the marked version of the claims (i.e. "[claim 5]", "[claim 5, SP[2255]" and "[SP [0056]]") are of no practical use for determining the basis for the amendments, not only because they are unexplained, but also because they were misleading and erroneous, as claim 5 as filed does not define any of the relevant features and no paragraph [2255] can be found in the description as filed or the patent. In fact, the description as originally filed does not even include numbered paragraphs, so the reference to "[SP [0056]]" (probably also the reference to claim 5) is either wrong or refers to the patent as granted rather to the application as filed.

4.4.6 Admittance of subsequent explanations under Article 13(2) RPBA 2020

The initial lack of substantiation with respect to the auxiliary requests has not been overcome by the subsequent respondent's submissions provided after notification of the summons to oral proceedings, because the Board exercised its discretion not to take into account these submissions under Article 13(2) RPBA 2020.

In fact, the respondent attempted to substantiate the auxiliary requests for the first time with its letter of 19 October 2023, i.e. shortly before the oral proceedings before the Board. Since these submissions, which were further elaborated at the hearing, were filed after the notification of the summons to attend oral proceedings, their admittance is governed by the provisions of Article 13(2) RPBA 2020.

The respondent argued in this respect that it did not expect that further substantiation would be required for the auxiliary requests before the appellant itself provided substantiated objections with respect to these requests. Further, it held the appellant's statements vague and generic and not related to the newly added features, so they did not merit a substantive response. Furthermore, the appellant's objections in the grounds of appeal under Article 123(2) EPC against auxiliary requests 2 and 3 were not part of the first instance decision. As a consequence, they were late filed and should not be admitted at the appeal stage. And even if they were admitted, the respondent had not expected that a response would have been required. This seemed reasonable, since the new Rules of Procedure of the Boards of Appeal had only entered into force at the beginning of 2020, and the parties were not used to the new provisions.

The Board cannot accept these arguments, because as indicated above (see points 4.3.3.(a) and 4.4.4), the proprietor's duty to substantiate its claim requests (in particular to provide a basis for the amendments in the application as originally filed) is an initial obligation which does not depend on whether or not the opponent had previously put forward an objection under Article 123(2) EPC. The respondent's expectations in view of the new rules of procedure do not qualify as an exceptional circumstance, in particular considering that the wording of Article 12(3) RPBA 2020 corresponds largely to that of Article 12(2) RPBA 2007 and accordingly, it was and still is common practice of the Boards of Appeal to assess whether the proprietor filing an amended set of claims has provided the required substantiation (see Case Law of the Boards of appeal, 10th edition: V.A.4.3.5 and V.A.5.12.6).

In view of the above considerations, the Board concluded that the respondent had not explained with cogent reasons why exceptional circumstances would apply which could justify admitting the new submissions aiming at substantiating the auxiliary requests after the notification of the summons under Article 13(2) RPBA 2020. Thus, the Board exercised its discretion under Article 12(3) and (5) RPBA 2020 not to take into account these submissions.

4.5 Relevant criteria for exercising the discretion under Article 12(5) RPBA 2020

4.5.1 The discretion under this specific Article is to be exercised in view of the specific circumstances of the case.

The purpose of Article 12(3) RPBA 2020 is to ensure that the relevant submissions are present in the proceedings as early as possible to enable the Board and the other party(ies) to start working on the case on the basis of the parties' complete submissions (Case Law of the Boards of Appeal, 10th edition, V.A.4.3.5 a)) without being forced to speculate on the intentions of the other parties. The extent to which a lack of or an incomplete substantiation runs counter to this objective is a factor that may be taken into account when exercising the discretion under Article 12(5) RPBA 2020 (T 1659/20, reasons 2.1). This includes addressing the question of whether the amendments and the chain of logic underlying the claim requests are self-explanatory.

4.5.2 In the present case, the amendments to the claims of auxiliary requests 2 and 3 were not self-explanatory.

The said claims included several amendments, some of which were based on the description. As indicated above (point 4.4.5), the only information as to a possible basis for the amendments was unclear, erroneous and misleading. Moreover, the Board also notes that there is an unexplained change in the wording used to define the effects in the amended claims according to auxiliary requests 2 and 3. In particular, as the original effect of "preventing" double images in reflection (see claim 9 as filed) was substituted by the wording "compensating" in granted claim 1, but the wording "preventing" was maintained for the effect concerning the double images in transmission in claim 1 of auxiliary requests 2 and 3, the Board and the appellant were left with the task of figuring out whether or not the words "prevent" and "compensate" were intended to have the same meaning, whether one was considered to be more restrictive or simply different from the other, why the wording was changed for the effect relating to double images from reflection but not for the effect relating to double images from transmission, and/or where the basis was for modifying this wording.

4.5.3 The respondent argued during the oral proceedings that the basis for the amendments had been submitted during opposition proceedings. This however does not change the Board's conclusions, as the relevant letters and passages of the respective submissions in the opposition proceedings were not even cited when the requests were filed in the appeal proceedings.

4.6 In view of the foregoing considerations, the Board exercised its discretion under Article 12(3),(5) RPBA 2020 not to admit auxiliary requests 2 and 3 into the appeal proceedings.