T 0246/22 - What does admissibly raised mean?

Key points

• I think this is an important decision. 
• " Pursuant to Article 12(4), first sentence, RPBA, such qualification as "amendments" applies only "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal" . To decide whether this exemption applies here, in which case auxiliary requests 3 to 8 would necessarily be part of the appeal proceedings, or whether they are indeed "amendments", in which case their forming part of these proceedings would be a discretionary matter for the board, requires in particular an interpretation and application of the terms "demonstrates", "admissibly raised" and "maintained".
• "the ordinary meaning of "demonstrates" must be that, as a general rule, the party making a submission that would, on the face of it, constitute an "amendment" bears the burden of showing that it was "admissibly raised and maintained" in the proceedings leading to the decision under appeal. The lawmakers' idea was obviously not to put ex officio responsibilities on the boards and/or expect them to assume an investigative role, learn every detail of the first-instance proceedings, identify and track claim requests to their source, and understand why they were filed. The onus is no doubt on the amending party."
• The Board acknowledges that there was "some leniency in this respect in the early jurisprudence (cf. T 221/20, T 42/20 and T 476/21)"
• "The proprietor also argued, in its reply to the board's communication under Article 15(1) RPBA and relevant to the matter of demonstrating that auxiliary requests 3 to 8 were "admissibly raised" in the opposition proceedings, that the requests were "entirely validly filed" six weeks in advance of the final date for making submissions ahead of the oral proceedings under Rule 116 EPC. However, what the proprietor means by the unsubstantiated phrase "entirely validly filed" is obscure, and the rest of the arguments in that reply are rather relevant to the demonstration of maintenance (i.e. a matter already resolved above)."
• What more can the patentee say about admissibility?
• The board finds it helpful, in the context of claim amendments, to establish what the actual requirements might be for a party's demonstration that submissions were indeed "admissibly raised".In that regard, one viable approach could be that a Board decides whether the opposition division should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required (see e.g. T 364/20, Reasons 7). This would in turn mean that a Board - at least in part - should slip into the shoes of the opposition division. It would then have to infer, from the Board's perspective, how the opposition division should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA (see T 364/20, Reasons 7.2.10, last sentence). However, one of the possible consequences of that approach could arguably be that the boards would have to closely monitor the currently applicable Guidelines to derive guidance as to how the respective opposition division should have exercised discretion generally conferred by Article 123(1) EPC in conjunction with Rule 81(3) EPC in inter partes proceedings (cf. R 6/19, Reasons 6 and 7). For the boards, the subject of such an approach could virtually correspond to a "moving target", possibly leading to similar cases being treated differently, depending on the amendments made to the Guidelines over the years. This approach also fails to convince this board since the Guidelines are not binding on the Boards and since the RPBA are approved and adopted specifically to govern the proceedings before the Boards.
• This board, however, proposes another approach, namely that of defining minimum requirements for the demonstration of "admissibly raised" which could be more conducive to legal certainty and fairness in that regard, especially in opposition appeal proceedings. The board considers that claim requests which were already filed during the opposition proceedings and which did not belong to the basis of the decision under appeal in the above-mentioned sense (i.e. "carry-over requests") may indeed be regarded as "admissibly raised" under the minimum requirements that the party shows
(1) that they were filed in due time, typically before expiry of the time limit set by the opposition division under Rule 116(1) and (2) EPC, and
(2) that it was made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they try to overcome and how this is actually achieved.
• " the present board also does not subscribe to the test, with elaborate criteria, proposed by the competent board in case T 1800/20. According to that decision - besides the timing aspect - questions relating to (i) the suitability of the submission to overcome the objections raised against a higher-ranking claim requests, (ii) whether the submission gives rise to new objections and (iii) the suitability of the submission to be part of a convergent development of the first-instance proceedings should be considered in the assessment whether submissions were "admissibly raised" (see Reasons 3.4, items a) to d)). Taking such additional criteria into account when assessing the concept of "admissibly raised" and thus the question whether there is, at all, any discretion for a Board not to admit a party's submission into the appeal proceedings would compellingly lead to a significant overlap with the codified criteria to be used by the Boards once they indeed have such a discretion"

EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220246eu1

4. Auxiliary requests 3 to 8 - admittance

4.1 Claim 1 of auxiliary requests 3 to 8 further specifies that (board's emphasis):

[...]

4.2 Auxiliary requests 3 to 8 were filed for the first time during the opposition proceedings (then labelled as "auxiliary requests 2 to 7"). However, the opposition division did not decide upon them because a higher-ranking claim request had already been found allowable. Therefore, they represent "carry-over requests". Since the decision under appeal was thus not based on those requests, they would, on the face of it, constitute "amendments" of the proprietor's case within the meaning of Article 12(2) and (4) RPBA. However, pursuant to Article 12(4), first sentence, RPBA, such qualification as "amendments" applies only "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal" [board's emphasis].

4.3 To decide whether this exemption applies here, in which case auxiliary requests 3 to 8 would necessarily be part of the appeal proceedings, or whether they are indeed "amendments", in which case their forming part of these proceedings would be a discretionary matter for the board, requires in particular an interpretation and application of the terms "demonstrates", "admissibly raised" and "maintained".

4.4 Despite some leniency in this respect in the early jurisprudence (cf. T 221/20, T 42/20 and T 476/21), the ordinary meaning of "demonstrates" must be that, as a general rule, the party making a submission that would, on the face of it, constitute an "amendment" bears the burden of showing that it was "admissibly raised and maintained" in the proceedings leading to the decision under appeal. The lawmakers' idea was obviously not to put ex officio responsibilities on the boards and/or expect them to assume an investigative role, learn every detail of the first-instance proceedings, identify and track claim requests to their source, and understand why they were filed. The onus is no doubt on the amending party.

4.5 In its statement of grounds of appeal, the proprietor merely submitted that auxiliary requests 3 to 8 corresponded to specific claim requests filed during the opposition proceedings, and referred to the comments made on those requests in the first-instance proceedings. Later, in its reply to the board's communication under Article 15(1) RPBA, in which the board noted that the proprietor had not demonstrated that auxiliary requests 3 to 8 had been "admissibly raised and maintained", the proprietor argued that neither in Article 12(4) RPBA nor elsewhere in the RPBA was it laid down when it must be demonstrated that submissions not meeting the requirements of Article 12(2) RPBA were admissibly raised and maintained. This begs the question of whether there is any time requirement for the "demonstration" that a submission was "admissibly raised and maintained".

4.6 The board acknowledges that Article 12(4) RPBA itself does not provide a time by which it must be demonstrated that the respective submission was "admissibly raised and maintained". However, auxiliary requests 3 to 8 were submitted with a statement of grounds of appeal that lacked any indication that they were "admissibly raised and maintained" in the opposition proceedings. Since the statement did not contain the proprietor's complete appeal case within the meaning of Article 12(3) RPBA, the board has discretion not to admit such subsequent submissions (Article 12(5) RPBA). In addition, there are increasingly demanding criteria for admitting new submissions made after the filing of the statement of grounds of appeal and the written reply (cf. Article 13(1) and (2) RPBA). In this sense there are, at least in practice, temporal restraints on the "demonstration" required under Article 12(4), first sentence, RPBA.

4.7 The proprietor asserted, in its reply to the board's communication under Article 15(1) RPBA, inter alia, that its "maintenance" of auxiliary requests 3 to 8 was self-evident from the minutes of the oral proceedings before the opposition division.

4.8 Those minutes in fact form part of the basis of these appeal proceedings, whether or not the proprietor invoked them (cf. Article 12(1)(a) RPBA). According to point 17 of these minutes, in the time between the announcement of the conclusion that a higher-ranking claim request was found allowable and the announcement of the decision, the proprietor expressly maintained auxiliary requests 3 to 8 (then labelled as "auxiliary requests 2 to 7"). In other words, those requests were manifestly maintained until the opposition division took its decision.

4.9 Irrespective of the admittance of the proprietor's late submissions to demonstrate maintenance of the auxiliary requests (cf. point 4.6 above), and as an exemption from the general rule that the onus lies with the party, the board cannot ask more of the proprietor in this respect than what is already obvious from said minutes - which a Board must always read. The circumstances of the present case do not warrant any statements as to possible further exemptions from said general rule.

4.10 The proprietor also argued, in its reply to the board's communication under Article 15(1) RPBA and relevant to the matter of demonstrating that auxiliary requests 3 to 8 were "admissibly raised" in the opposition proceedings, that the requests were "entirely validly filed" six weeks in advance of the final date for making submissions ahead of the oral proceedings under Rule 116 EPC. However, what the proprietor means by the unsubstantiated phrase "entirely validly filed" is obscure, and the rest of the arguments in that reply are rather relevant to the demonstration of maintenance (i.e. a matter already resolved above).

4.11 In support of its view, the proprietor invoked two decisions of the Boards of Appeal. In the proprietor's view, decisions T 42/20 (Reasons 4.2) and T 476/21 (Reasons 7.1 to 7.3) confirmed that auxiliary requests which were "admissibly raised and maintained" in the first-instance proceedings but not considered in the first-instance decision were not "amendments", with no discussion over how or when this was demonstrated as required by Article 12(4), first sentence, RPBA.

4.12 Given the proprietor's view, and the silence in the RPBA and their explanatory remarks as to the meaning of "admissibly raised", the board finds it helpful, in the context of claim amendments, to establish what the actual requirements might be for a party's demonstration that submissions were indeed "admissibly raised".

4.13 In that regard, one viable approach could be that a Board decides whether the opposition division should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required (see e.g. T 364/20, Reasons 7). This would in turn mean that a Board - at least in part - should slip into the shoes of the opposition division. It would then have to infer, from the Board's perspective, how the opposition division should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA (see T 364/20, Reasons 7.2.10, last sentence). However, one of the possible consequences of that approach could arguably be that the boards would have to closely monitor the currently applicable Guidelines to derive guidance as to how the respective opposition division should have exercised discretion generally conferred by Article 123(1) EPC in conjunction with Rule 81(3) EPC in inter partes proceedings (cf. R 6/19, Reasons 6 and 7). For the boards, the subject of such an approach could virtually correspond to a "moving target", possibly leading to similar cases being treated differently, depending on the amendments made to the Guidelines over the years. This approach also fails to convince this board since the Guidelines are not binding on the Boards and since the RPBA are approved and adopted specifically to govern the proceedings before the Boards.

4.14 This board, however, proposes another approach, namely that of defining minimum requirements for the demonstration of "admissibly raised" which could be more conducive to legal certainty and fairness in that regard, especially in opposition appeal proceedings. The board considers that claim requests which were already filed during the opposition proceedings and which did not belong to the basis of the decision under appeal in the above-mentioned sense (i.e. "carry-over requests") may indeed be regarded as "admissibly raised" under the minimum requirements that the party shows

(1) that they were filed in due time, typically before expiry of the time limit set by the opposition division under Rule 116(1) and (2) EPC, and

(2) that it was made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they try to overcome and how this is actually achieved.

4.15 Consequently, the board does not endorse the conclusions drawn in decisions T 42/20 and T 476/21, cited by the proprietor, where merely the timing aspect was considered by the competent boards (cf. T 42/20, Reasons 4.2 and T 476/21, Reasons 7.2 and 7.3).

4.16 On the other hand, the present board also does not subscribe to the test, with elaborate criteria, proposed by the competent board in case T 1800/20. According to that decision - besides the timing aspect - questions relating to (i) the suitability of the submission to overcome the objections raised against a higher-ranking claim requests, (ii) whether the submission gives rise to new objections and (iii) the suitability of the submission to be part of a convergent development of the first-instance proceedings should be considered in the assessment whether submissions were "admissibly raised" (see Reasons 3.4, items a) to d)). Taking such additional criteria into account when assessing the concept of "admissibly raised" and thus the question whether there is, at all, any discretion for a Board not to admit a party's submission into the appeal proceedings would compellingly lead to a significant overlap with the codified criteria to be used by the Boards once they indeed have such a discretion (see e.g. Article 13(1), last sentence, RPBA: "the suitability of the amendment to resolve the issues [...]", "whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised [...] and does not give rise to new objections"). Such an overlap could also lead to rather harsh and possibly unfair situations for the parties, without much gain for legal certainty - especially when considering that claim amendments made to address different objections raised (e.g. removing features to address added subject-matter and adding features to address novelty or inventive step) could in some cases necessarily lead to diverging claim requests at the outset of appeal proceedings.

4.17 In the present case, regardless of whether the proprietor's submission made only in its reply to the board's communication under Article 15(1) RPBA that auxiliary requests 3 to 8 were in fact filed within the time limit of Rule 116(1) EPC can be considered to be substantiated on time (cf. point 4.6 above), the proprietor has failed to clearly indicate for what purpose they were filed, i.e. how the objections (for example added subject-matter, insufficiency of disclosure, lack of novelty and/or inventive step here) were concretely addressed and why they would be overcome. In particular, in the statement of grounds of appeal, the proprietor referred to the arguments provided in its letter dated 28 May 2021, accompanying the first submission of these auxiliary requests. Therein, it was notably not stated what respective technical problem was solved, or even what technical effect was caused, by the features added in claim 1 of each of the auxiliary requests. With these crucial elements for the assessment of inventive step missing, the onus to make factual submissions relevant to the application of the problem-solution approach in order to determine whether inventive step is to be acknowledged would lie entirely on the board, which is however not its role but the responsibility of the party. The proprietor's late sweeping statement that auxiliary requests 3 to 8 were "entirely validly filed" would obviously not suffice, even if they were to be admitted. In other words, the proprietor has not discharged its burden to demonstrate that these requests were "admissibly raised". Consequently, the exemption is not applicable, and auxiliary requests 3 to 8 indeed constitute "amendments" within the meaning of Article 12(4), first sentence, RPBA. Whether these amendments may be admitted into the appeal proceedings is thus a matter of the board's discretion (Article 12(4), second sentence, RPBA).

4.18 In line with the considerations set out in point 4.17 above, the board concurred with the opponent that the proprietor failed to sufficiently indicate why these auxiliary requests overcame the raised objections. The board thus concluded that the proprietor's pleadings did not comply with the requirement of Article 12(4), third and fourth sentences, RPBA ("The party shall [...] provide reasons for submitting [an amendment] in the appeal proceedings [...] and provide reasons why the amendment overcomes the objections raised.").

In addition, alternately adding and/or omitting features, i.e. features F3', F8, F9 and F10, throughout those auxiliary requests even more obfuscates the real purpose of their filing. This, at the same time, gives rise to "divergent" claim requests which may arguably increase the procedural and substantive complexity as regards the assessment of their compliance with the requirements of the EPC. Even more so when considering that at least features F3' and F9, i.e. performing the switchover on the basis of the "least active" time of day and taking one of the conveying devices out of service at a time, are evidently taken from the patent description rather than from the claims as granted, possibly also leading to a "fresh case".

4.19 Hence, none of auxiliary requests 3 to 8 was admitted into the appeal proceedings (Article 12(4) RPBA).