T 1908/22 - On T 1914/12 and whether arguments can be held inadmissible

Key points

• "The respondent argued that these objections [Art. 123(2)]  were raised for the first time during the oral proceedings before the board and requested not to admit these into the appeal proceedings for being late-filed."
•   The appellant was of the view that the board had no discretion not to admit "arguments" into the appeal proceedings and referred to decisions T 1914/12 and T 1875/15. "
• T 1914/12 (of 13.06.2018) observed that Article 114 EPC gives the Boards the power to hold facts and evidence, not arguments. Since that time, the Boards have declared a lot of things to be factual assertions, such as asserted claim interpretations.
• The premise of T 1914/12 is that " The RPBA can help in clarifying and interpreting the EPC but they cannot confer on the boards any powers that the EPC does not give them (T 1914/12, citing Art. 23 RPBA in this context)." (CLBA VII.1.4)
• It could be argued, perhaps, that Articles 106 - 111 EPC on appeal give the Boards the power to hold arguments inadmissible independent of Art. 114, but that is not argued in this case.
• "The board is not convinced that the findings of T 1914/12 and T 1875/15 can be applied to the present case, since the case at hand underlies the RPBA 2020 and not the RPBA 2007. "
• I don't readily see how the RPBA 2020 could confer on the boards any powers that the EPC does not give them where the RPBA 2007 does not, so is it a distinction without a difference?
• " The board notes that Article 12(2) RPBA 2020 specifies that a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based."
• The text of the RPBA of course does not address that premise of T 1914/12.
• "These provisions of the RPBA 2020 are not at odds with Article 114(2) EPC, which focuses on the discretionary power to disregard late-filed facts and evidence, whereas the RPBA focuses rather on the discretionary power of a board of appeal to not admit an amendment which may, for example, consist of new arguments or objections as in the present case."
• This reasoning suggests that this Board considers the  RPBA as creating powers for the Boards to hold submissions inadmissible beyond the scope of Article 114 EPC (and Article 123(2) EPC).
• 
  

EPO 

The link to the decision can be found after the jump, as well as an extract of the decision.

https://www.epo.org/en/boards-of-appeal/decisions/t221908eu1

1.3.1 The respondent argued that these objections were raised for the first time during the oral proceedings before the board and requested not to admit these into the appeal proceedings for being late-filed.

1.3.2 The appellant confirmed that these objections were submitted for the first time during the oral proceedings before the board. The appellant was of the view that the board had no discretion not to admit "arguments" into the appeal proceedings and referred to decisions T 1914/12 and T 1875/15. Furthermore, the appellant argued that the objections clearly prejudiced the maintenance of the patent as granted and that it should be the task of the board to guarantee that only valid patents are maintained.

1.3.3 The board is not convinced that the findings of T 1914/12 and T 1875/15 can be applied to the present case, since the case at hand underlies the RPBA 2020 and not the RPBA 2007. The board notes that Article 12(2) RPBA 2020 specifies that a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.

According to Article 12(4) RPBA 2020, any part of a party's appeal case which does not meet the requirements of Article 12(2) RPBA 2020 is to be regarded as an amendment, which may be admitted only at the discretion of the board. In addition, according to Article 13(2) RPBA 2020, any amendment to a party's appeal case made after notification of a 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.

1.3.4 In the board's view, these provisions of the RPBA 2020 are not at odds with Article 114(2) EPC, which focuses on the discretionary power to disregard late-filed facts and evidence, whereas the RPBA focuses rather on the discretionary power of a board of appeal to not admit an amendment which may, for example, consist of new arguments or objections as in the present case.

1.3.5 The circumstances in the present case are even more severe since the new arguments and/or objections filed for the first time during the oral proceedings before the board were directed against claim 1 as granted. The board is convinced that the appellant not only could but most importantly should have formed its complete case on Article 123(2) EPC already during opposition proceedings, at the latest during the discussion of this issue at the oral proceedings before the opposition division. Due to the appellant's course of action, the discussion of added subject-matter based on the three new arguments and/or objections could not be dealt with by the opposition division and consequently the decision under appeal is not based thereon. Since the appellant has not convincingly demonstrated that this part was admissibly raised and maintained in opposition proceedings and that it was not a mere development of the previous arguments, it results in an amendment which, according to Article 12(4) RPBA may only be admitted at the discretion of the board.

The appeal proceedings, which are largely determined by the factual and legal scope of the preceding proceedings, are not intended as an opportunity to bring an entirely fresh case to the board. This means that an appellant is not at liberty to shift its case as it pleases, and so to compel the board either to give a first ruling on the critical issues or to remit the case to the opposition division. Conceding such freedom to an appellant would run counter to orderly and efficient appeal proceedings, which are primarily directed to reviewing the correctness of the decision under appeal according to Article 12(2) RPBA.

Against this background, the board, exercising its discretion under Article 12(4) RPBA, does not admit the new lines of argument on added subject-matter brought forward for the first time during the oral proceedings before the board into the appeal proceedings.

1.3.6 Furthermore, the appellant has not justified with cogent reasons that there were exceptional circumstances for the submission of the new three arguments and/or objections under Article 123(2) EPC, so that these are also not considered in the appeal proceedings under Article 13(2) RPBA.

1.4 In consequence, the board concludes that the appellant has not admissibly and convincingly demonstrated the incorrectness of the finding of the opposition division, that the subject-matter of claim 1 as granted does not infringe Article 123(2) EPC.