T 2229/19 - Shortcutting Art. 116 through Art. 13(1) RPBA (?)

Key points

• This decision is from 27.03.2024. A petition for review was rejected. That drew my attention to the following.
• For the main request, dependent claim 4 was held non-compliant with Art. 123(2) by the Board (contrary to the OD).
• Auxiliary request 2 was filed after the preliminary opinion. Claim 4 is deleted in it. This solves the issue under Art. 123(2). The Board also finds it a case amendment.
• The Board: "In the exercise of its discretion, the board may, inter alia, take into account the suitability of the amendment to resolve issues admissibly raised by another party in the appeal proceedings or the board (Article 13(1) RPBA). In the current case, despite the fact that the amendment introduced with auxiliary requests 2 and 3 may overcome the objection under Article 76(1) EPC, this is not the case for the objection of lack of sufficiency raised under Article 83 EPC. The opposition division had found that the invention defined in the independent claims maintained in the set of claims of auxiliary requests 2 and 3 was not sufficiently disclosed in the application (Article 83 EPC), an opinion that the board endorsed in its preliminary opinion. The deletion of the dependent claims in auxiliary requests 2 and 3 therefore did not result in claims which were clearly allowable."
• The Board does not admit the request, holds AR-3 inadmissible for the same reason (in AR-3, all dependent claims were deleted) and rejects the appeal.
• A problematic point with this course of events is, in my view, that the minutes do not show that the key issue of Article 83 was discussed during the oral proceedings before the Board, or that the proprietor had a real opportunity to comment on it. Had the proprietor a fair opportunity to orally convince the Board that claim 1 met the requirement of Art. 83 - a right enshrined in Article 116?
• I acknowledge that Rule 104(a) only speaks of "contrary to Article 116, failed to arrange for the holding of oral proceedings requested by the petitioner". However, that does not mean that the entirely theoretical, of course, case wherein the Board opens the oral proceedings, directly announces a decision and immediately closes the oral proceedings is no ground for a petition for review, even less that conducting the oral proceedings in such a way complies with Article 116 EPC (although, just to be clear, I'm not saying parties have an unfettered right to speak at length during oral proceedings either).
• The opportunity that existed in the case to comment in writing on the preliminary opinion of the Board may have been sufficient under Article 113(1), perhaps, but Article 116 is a separate right.
• The Board could have admitted AR-3, listened to the proprietor on sufficiency of the independent claims, and copied/pasted the preliminary opinion on that point if the proprietor had nothing new to say about it during the hearing. Then, at least, we would have a decision of the Board on the point (also on post-published evidence and 'plausibility', which were the issues before the OD), and compliance with Article 116. 
• See also the critical comment of "Anon Y Mouse" over at IP Appify blog (https://blog.ipappify.de/r-14-24-the-limits-of-a-petition-for-review/#comment-1966)

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t192229eu1