T 1135/22 - Admissibly filed before the OD

Key points

• The Board arrives at carry-over requests that the proprietor had filed by the Rule 116(1) date before the OD (the Board also uses the term carry-over requests in the headnote/catchword). 
• The Board 3.5.05 follows Board 3.3.02 in T 0364/20.
• The Board does not discuss it, but the Guidelines state that the current version of the Guidelines for Examination in the EPO (March 2024 Edition), in Section E-VI.2.2.2, states that "[a]mendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed".
• The Board considers that the proprietor had not shown that the amendments were admissibly filed. The Board does not indicate what kind of proof is suitable.
• The Board, in translation: "The fact that the auxiliary requests were filed before the date specified under Rule 116(1) EPC is also not decisive. According to the case law of the Boards of Appeal, such requests could also be considered "late" (see, for example, T 364/20, Reasons 7.2.3)."
• "Even if the Board were to include in its considerations the statements in the patent proprietor's first-instance brief of 13 August 2021, with which auxiliary requests 1 to 12 were also filed - which is not necessary for the reasons set out above - the result would not be different. These statements are limited to the statement that the added features are intended to further highlight the differences from the prior art or to represent a "corresponding fallback position" "due to the new Rules of Procedure of the Boards of Appeal" (see page 2, second paragraph). The arguments at first instance also do not explain why the requests could not have been filed earlier."
• Note, currently the GL do not indicate that amended claims must be filed without delay in the first instance opposition proceeding.
• Note that it is not clear to me if in the present case, the auxiliary requests were substantiated in appeal, as is required under Art. 12(3).
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EPO 

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

https://www.epo.org/en/node/1126347

Machine translation

5. Auxiliary applications 1 to 12 – submitted in an admissible manner?

5.1 If certain claims do not "form the basis" of the decision pursuant to Article 12(2) RPBA, these claims are to be regarded as "amendments" within the meaning of Article 12(4), first sentence, RPBA, "unless the party concerned shows that this part was admissibly raised and maintained in the proceedings leading to the contested decision".

5.2 It follows from the wording of Article 12(4) RPBA that the Chamber must examine two things when examining whether it has a margin of discretion in taking into account so-called "carry-over requests". First, the Chamber must examine whether the party has "demonstrated" how and why the requests in question were "admissibly made and maintained" in the first instance proceedings. If such a presentation has been made, the second step for the Chamber is to examine whether the submission in question is factually correct, i.e. whether the requests in question can actually be regarded as "admissibly made and maintained" according to the applicable criteria developed by case law.

5.3 As regards the first of the above aspects, as this Board has pointed out in a different composition (see T 246/22, Reasons 4), it is clear from the wording of Article 12(4) RPBA that the legislator did not intend to impose on the Boards an obligation of their own motion to study the proceedings at first instance, to identify and trace requests back to their origin and to understand why they were filed. Rather, it is for the party to the proceedings concerned to demonstrate that those requests were "admissibly submitted". The provision does not expressly provide that this must be done in the statement of grounds of appeal or in the reply. However, this follows from the requirement that the statement of grounds of appeal and the reply must contain the parties' full arguments in support of the appeal (see Article 12(3), first sentence, RPBA).

5.4 In the present case, the patent proprietor failed to meet this burden of proof not only in its reply to the appeal but also during the oral proceedings before the Board. The patent proprietor considered that the relevant auxiliary requests, since they were filed at first instance, were also the subject of the contested decision; and this despite the fact that the Board had also referred to the relevant requirement in its preliminary opinion and explained why the requests in question were not to be regarded as forming the basis of the decision and as not "admissibly submitted" at first instance. Only after the Board had confirmed the view expressed in the preliminary opinion at the oral proceedings before the Board did the patent proprietor react to it. However, it only referred to the arguments contained in the reply to the appeal and to the fact that the present requests were filed within the first instance time limit for written submissions (i.e. the time limit under Rule 116(1) in conjunction with 116(2) EPC). However, both arguments are neither sufficient nor convincing.

5.5 In its reply to the appeal, the patent proprietor only indicated the respective basis for the changes made. It merely mentioned cursorily that the added features were not disclosed in the prior art E1 to E3 or E6 or that their use in an Interbus system was even technically impossible due to the nature of the system (see sections III.2 to III.7). However, these statements are only relevant to the question of whether the auxiliary requests at hand were substantiated in the appeal proceedings, but not to the question of whether they were admissibly submitted in the first instance.

5.6 The patent proprietor was also unable to specify precisely, during the oral proceedings before the Board, the purpose for which the amendments underlying these auxiliary requests had been made. In particular, it was not stated how the present objections of lack of sufficiency, inadmissible extension and lack of inventive step raised by the opponent (e.g. with regard to the technical effect of the distinguishing features, the formulation of the objective problem, any indications in the prior art, etc.) were to be overcome.

5.7 The fact that the auxiliary requests were filed before the date specified under Rule 116(1) EPC is also not decisive. According to the case law of the Boards of Appeal, such requests could also be considered "late" (see, for example, T 364/20, Reasons 7.2.3).

5.8 Even if the Board were to include in its considerations the statements in the patent proprietor's first-instance brief of 13 August 2021, with which auxiliary requests 1 to 12 were also filed - which is not necessary for the reasons set out above - the result would not be different. These statements are limited to the statement that the added features are intended to further highlight the differences from the prior art or to represent a "corresponding fallback position" "due to the new Rules of Procedure of the Boards of Appeal" (see page 2, second paragraph). The arguments at first instance also do not explain why the requests could not have been filed earlier.

5.9 The patent proprietor was therefore unable to show that auxiliary requests 1 to 12 were actually "admissibly submitted" in the opposition proceedings. It follows directly from this that these auxiliary requests constitute "amendments" within the meaning of Article 12(4), first sentence, RPBA. It is therefore within the discretion of the board to admit these "amendments" into the appeal proceedings in accordance with Article 12(4), second sentence, RPBA.