T 0731/22 - The Guidelines under Art. 12(4) RPBA

Key points

• The Board, in translation: "Since the opposition division rejected the opposition, auxiliary request 2 [filed during the oral proceedings before the OD] does not form the basis of the contested decision. According to Article 12(4) RPBA, auxiliary request 2 is not to be regarded as an amendment of the respondent's case if it was admissibly raised and maintained in the proceedings before the opposition division."
• " In assessing this question, the board will refer to the version of the Guidelines for Examination in the European Patent Office applicable at the time of the contested decision. In view of the Guidelines in force in December [2021] (see Guidelines for Examination in the European Patent Office, March 2021, H-II.3.5. and E-VI.2.2.), according to which - if the division concludes at the oral proceedings that the patent must be revoked, contrary to its preliminary, non-binding opinion in the annex to the summons - a request by the patent proprietor for (further) amendments is generally admitted into the proceedings, and claim 1 of auxiliary request 2 is also based on granted claims 1 and 5, auxiliary request 2, which is not the subject of the contested decision, was admissibly raised and maintained in the opposition proceedings."
• The request was also sufficiently substantiated in appeal.  
• "In the present case, the grounds of appeal, particularly with regard to document D3, only cited lack of novelty as a ground for opposition. Lack of inventive step was only mentioned in passing. Against this background, it is self-explanatory that the changes made, namely the inclusion of granted claim 5 in claim 1 of auxiliary request 2, represent an attempt to structurally restrict the claimed device in order to establish the novelty of the subject matter of claim 1 of auxiliary request 2 compared to document D3 [JP 2009 056681 A]. The requirements of Article 12(3) RPBA are therefore met in the present case, so that the board has no discretion under Article 12(5) RPBA to disregard the respondent's arguments."
• The Board seems rather friendly to the proprietor: the amended claims must be novel and inventive over D3. Since the amended feature was not in claim 1 as granted held allowable by the OD, there was no need (?) for the appellant/opponent to comment on that feature in the Statement of grounds.
• The case is remitted.
• There is the remarkable issue that there is no trace of AR-2 in the minutes or decision of the OD, though the parties agreed it was filed during the oral proceedings.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0342/22 - Unable to present its complete case

Key points

• The OD decided to maintain the patent in amended form on the basis of an auxiliary request filed late during the oral proceedings. The appellant/opponent presents new attacks in appeal. 
•  "The board is of the view that the appellant [opponent] could and should have raised all its objections before the opposition division. The auxiliary request, although late-filed, was a combination of the granted independent claim together with only complete dependent claims from the limited number of granted claims, and the appellant [opponent] did not request that the proceedings be postponed nor indicate in any way that it was unable to present its complete case at the oral proceedings before the opposition division."
• A possible procedural obligation to request postponement of the oral proceedings is a bit doubtful. The now-mentioned alternative course of action, indicating that you are unable to present a complete case, is, however, interesting. The question is, however, how can the OD properly respond to such a remark?

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0924/22 - Admissibly raised before the OD

Key points

• The Board decides on the admissibility of carry-over requests.
• "Admission of auxiliary requests 1 to 7. The requests were filed early on in the opposition proceedings, with letters of 21 October 2019, 3 September 2020 and 5 August 2021 respectively, before the Rule 116(1) EPC deadline of 6 August 2021 mentioned in the summons of 25 November 2020."
• " Even if they did not converge, that criterion applies only if requests are late filed, after the Rule 116(2) deadline, see Examination Guidelines 2024, H-III, 3.3.2.2. As they were further substantiated to the required level in opposition, they are seen to have been admissibly raised in opposition. Though they were not examined there is no indication that these requests were not maintained."
• " Finally, though their substantiation in appeal is very succinct, the Board considers it sufficient to allow all to understand the case the respondent proprietor is making for them. The Board therefore decided to admit these requests into the appeal proceedings in the exercise of its discretion under Art 12(4) and 12(5) RPBA."
• As a comment, the requests were carry-over requests, that were admissibly raised before the OD (so the Board judges). Hence, there was no discretion under Art. 12(4), and they were substantiated, so there was no ground for holding them inadmisisble under Art. 12(5) RPBA.
• For a different approach (no consideration of the GL to determine the meaning of "admisisbly raised" in Art. 12(4) RPBA), see T 0246/22

EPO 

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

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.

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).
• 
  

EPO 

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

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.

T 0248/22 - Pre-emptive auxiliary requests and Art. 12(4) RPBA

Key points

• This decision seems important. The proprietor submitted a new auxiliary request with the Statement of grounds. Admissibility under Art. 12(4) RPBA is to be considered.
• "When exercising its discretion whether to admit an amendment to a party's case, the board has to consider whether the amendment is suitable for addressing the objections raised (Article 12(4) RPBA). In the current case, the proprietor argued that the amendments remedied an objection which is not part of the decision under appeal [...]. Any reasons why an amendment overcomes an unraised objection do not constitute valid reasons for admitting an amended request in view of Article 12(4) RPBA, second paragraph."
• Hence, in the Statement of grounds, the proprietor does not need to file auxiliary requests to address objections that could be raised by the opponent as respondent but are not part of the impugned decision.
• The decision is, however, difficult to follow on the specific facts as the Board also states that the auxiliary request addressed an objection under Art. 123(2) that "was presented for the first time during the oral proceedings before the opposition division". The objection was, therefore, not an "unraised objection". However, it seems that according to the Board, what matters is whether the objection is in the appealed decision.
• If the opponent as respondent introduces (or reintroduces) the objection in the reply to the appeal, the proprietor should file a rejoinder to address it with an appropriate auxiliary request. 

EPO 

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

T 0543/20 - (II) Art. 12(4)(s.4) RPBA bites

Key points

• Auxiliary request 2 (renumbered from AR-5) is a carry-over auxiliary request.

Admissibly raised before OD

• The first question is whether the unless-clause of Art. 12(4) RPBA applies, particularly whether it was admissibly filed before the OD.
• The Board, in translation: "Auxiliary request 5 was submitted in the opposition proceedings after the time specified in the summons to oral proceedings, up to which pleadings and/or documents can be filed under Rule 116 EPC, and was therefore filed late in the opposition proceedings (see, for example, the second headnote in T 1776/18 and Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.4.3.2 and IV.C.5.1.4). Its admission and consideration was therefore at the discretion of the opposition division. For this reason alone, auxiliary request 5 cannot per se be viewed as being submitted in an admissible manner. The current auxiliary request 2 is therefore an amendment in accordance with Article 12(4) RPBA, the approval and consideration of which is now at the discretion of the Board."
• "The respondent's [proprietor's] opinion cannot be accepted in this respect, according to which auxiliary request [5] was a response to an objection raised by the [opponent] in the written statement filed [before the OD] under Rule 116 EPC [...]. It had already been argued in the notice of opposition that document D2 disclosed a liquid detergent which contained the R99E protease variant and the phosphonate HEDP, and that the claimed subject matter was not new via this disclosure or only differed from it [by an obvious feature] (see pages 3 and 4, the first two complete paragraphs on page 6 and the last paragraph on page 9 of the notice of opposition)."
• "Auxiliary request 2, which [specifies a difference with ] document D2, could therefore have already been filed in response to the notice of opposition in order to address the objections raised therein under novelty and inventive step ."
• It may be wise for proprietors to take the first opportunity to file a reply to a Notice of opposition seriously.

Requirement to indicate the basis

• The proprietor had, as respondent, not indicated the basis for the amendment in its appeal reply brief. Therefore, Art. 12(4)(s.4) is not met, and the request is not admissible on that ground. The Board considers that the requirement of indicating the basis of claim amendments is, in translation, "a further essential prerequisite".
• " Weitere essentielle Voraussetzung für die Berücksichtigung nach Artikel 12(4) VOBK ist, im Falle einer Änderung der Patentanmeldung oder des Patents, die Angabe der Grundlage der Änderung in der ursprünglich eingereichten Fassung der Anmeldung, sowie die Anführung der Gründe, warum mit der Änderung die erhobenen Einwände ausgeräumt werden."
• Some further requests are not admitted either, and the patent is revoked. 

EPO 

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

T 0526/21 - Agreeing with choice CPA is abandoning other attacks

Key points

•  " The Board observes that the [inventive step] attacks based on D24 and D34 were raised in writing during the opposition proceedings in reply to the preliminary opinion of the opposition division []. However, the minutes of the opposition oral proceedings (see point 19.) indicate that "The three opponents agreed that D9 was the closest prior art. The proprietor argued that example 2 of D2 would be a better closest prior art [...]". According to the minutes, the choice between D2 and D9 as closest prior art was then discussed but no other document was considered by any opponent. None of the appellants requested a correction of the minutes. In line with T 2730/16, the Board considers that the attacks starting from D24 and D34 were not actively maintained."
• "It follows that these attacks do not form part of the appeal proceedings according to Article 12(2) RPBA 2020. Their admittance into the appeal proceedings is thus at the discretion of the Board according to Article 12(4) RPBA 2020."
• "The implicit abandonment of the attacks based on D24 and D34 by appellant 1 prevented the decision from being based thereupon. A re-introduction of these attacks would be against the purpose of the appeal proceedings to constitute a judicial review of the appealed decision and against procedural economy."
• Note, the Board here seems to apply Art. 12(6).
• 
  

EPO 

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

T 0938/20 - Making use of the 10d period to file 100+ AR's

Key points

• The summons for oral proceedings was dated 07.10.2021.
• On 12.10.2021,  the patentee filed auxiliary requests 25 to 139. The operative main request was filed as auxiliary request 105.
• The Board: " The present request was submitted on 12 October 2021, i.e. shortly before notification of the summons to oral proceedings was deemed to have been delivered (Rule 126 EPC). Therefore Article 13(1) RPBA 2020 applies." 
• " The request is a reply to an objection raised under Article 83 EPC by opponent 2 in their reply to the appeal concerning enablement over the whole scope. This objection was not part of the impugned decision, but was admissibly raised within the meaning of Article 12(4) RPBA 2020 in opponent 2's notice of opposition. 
• " However, it had apparently not been discussed during the oral proceedings before the opposition division, although said objection would equally apply to the then-auxiliary request 4. (...) Therefore in the case in hand it cannot be clearly established whether the objection was indeed maintained as required by Article 12(4) RPBA 2020. In view of this, the board considers that it can be accepted that the objection was re-introduced with opponent 2's reply to the appeal. Although it took some time for the appellant to react, the request is considered a fair reaction to opponent 2's objection independently of the fact that many other requests had been filed. The request could have been filed before the opposition division, but, taking into account the total number of objections raised by the opponents in opposition proceedings, it appears that there is no clear indication that it should have been filed in addition to the numerous requests filed before the opposition division, since the opposition division apparently did not consider this objection critical for the requirements of Article 83 EPC. Therefore there is no reason not to admit it when considering Article 12(6) RPBA 2020" [which also applies under Art. 13(1) RPBA 2020] 
• " The request is not detrimental to procedural economy, but to the contrary in the case at hand helped to streamline the proceedings and led to an allowable request as set out below. ' 
• "  the board notes that "giving rise to new objections" is understood to mean that the appellant has to show that prima facie no valid new objection is recognisable (see Supplementary publication 2, Official Journal 2020, RPBA 2020, Table setting out the amendments to the RPBA and the explanatory remarks). It is not understood to mean that any new objection raised by the opponents - whether justified or not - renders the request inadmissible. In the present case it means in particular with respect to Article 123(2) EPC that a basis for the amendment should be easily recognisable." 
• " As to the question of convergence of the (former) requests, the board accepts that in the case at issue, where an extremely large number of objections of different kinds were raised against all the requests on file, convergence was particularly difficult to achieve and under the given circumstances should not be used as the only criterion for denying admissibility of this request. It may be noted in this context that a series of requests that are drafted in defence against a single objection are expected to converge, but equality of arms would be infringed if the opponent was free to raise a multitude of diverging objections, whereas the patentee was restricted to only one line of defence against all of these. In view of all these considerations, the board exercises its discretion to admit the request into the proceedings.'
• Turning to sufficiency: "It is well-established case law that an objection of insufficient disclosure cannot legitimately be based on an argument that the patent does not enable a skilled person to achieve a technical effect which is not defined in the claim (see T 1311/15, Reasons 5.2). The effect is however of relevance to the question of inventive step (see point 7.5 below)."
• Turning to inventive step: " Therefore the board accepts that there is no convincing evidence from the opponents' side showing that a sheet obtained by the process of D9b has as good weldability as a sheet obtained according to the claimed process. In other words, due to the lack of evidence to the contrary it is accepted that the problem posed is solved. The problem does not need to be redefined in less-ambitious terms."
• In this case, the patent included an example showing certain good weldability values, and a comparative example. The burden of proof was on the opponent to show that the cited prior art D9 had already achieved the same weldability as the claimed invention. 
• " the specific combination of heating conditions and pre-coating for good weldability is not rendered obvious by the prior art. The subject-matter of claim 1 of the main request meets the requirements of Article 56 EPC."

• 
  

EPO 

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

T 3024/19 - New attacks in appeal

Key points

• This is a rather straightforward opposition appeal case, except that it is (still) one of the first published decisions to apply the new 'first level of convergence' of the RPBA 2020. 
• The statement of grounds of the opponent contained new objections. The statement of grounds was filed 26.02.2020 so Art. 12 RPBA 2020 applies in its entirety.
• " The objections raised in items 4, 5.3 to 5.7, 6.1 and 6.2 in the statement setting out the grounds of appeal are not directed to facts, objections, arguments and evidence on which the decision under appeal was based, as required by Article Article 12(2) RPBA 2020. Moreover, it has neither been submitted nor demonstrated that these objections were admissibly raised and maintained in the proceedings before the opposition division. The new objections in appeal thus constitute amendments of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, which may be admitted only at the discretion of the Board, whereby reasons should be provided for submitting the amendments in appeal (Article 12(4) 2020, second paragraph)." 
• " The appellant [opponent] argued in the statement setting out the grounds of appeal (section 1) that it had been impossible for them to react appropriately to the filing of the first auxiliary request in opposition (now the main request) since that request had not been filed until the day before the date set under Rule 116(1) EPC."
• " The Board observes that the request was filed on 18 July 2019 and thus two months in advance of the oral proceedings, which took place before the opposition division on 19 September 2019."
• As a comment, it is not clear to me if this means that the opponent should have filed a letter after the Rule 116 date before the OD. Point 1.4.3. of the decision suggest that the attacks should have been presented during the oral proceedings. 
• " Further, as indicated below, the amendments were either taken from granted claims, rather than from the description (see point 1.4.1), or the possibility of raising the objections newly raised in appeal was apparently specifically addressed already during the oral proceedings before the opposition division (see point 1.4.2). Thus, the Board finds that the appellant had reasons to raise those objections already during opposition proceedings." 
• " It is apparent that the objections of lack of sufficiency of disclosure raised by the appellant [] concern features and combination of features that were already present in the granted claims." 
• " Under these circumstances the new objections of lack of sufficiency of disclosure raised in appeal could have been raised before the opposition division in view of the corresponding granted claims. In view of that[,] the date at which the first auxiliary request was filed in the first instance proceedings does not justify the filing of these objections for the first time in the appeal procedure." 
• So it is important to attack all claims as granted and perhaps their combinations as well, already before the OD.
• " As to the other objections raised in appeal[]  it is apparent that at the oral proceedings before the opposition division the opponent did not object to the then first auxiliary request (present main request) under Rule 80 or Article 84 EPC [] and did not maintain their novelty objection against claim 1 of the first auxiliary request over document D10 []  while having the possibility to do so." 
• "The Board therefore does not see any reason why it was not possible for the appellant to raise the objections at the beginning of the opposition proceedings or at the latest at the oral proceedings before the opposition division."
• As a  comment, the new objections could also have been held inadmissible under Art.12(6)(s.2), as it seems that the Board in effect concludes that the new objections should have been filed before the OD (though the Board does not say so).
As a further comment, I'm surprised that the Board does not expressly apply the factors specified in the Art.12(4)(s.5): " The Board shall exercise its discretion in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (iii) and the need for procedural economy." [roman numerals added]. The fifth sentence uses "shall", not "may" .
• "  In view of the above, the Board finds it appropriate to make use of its discretion pursuant to Article 12(4), first paragraph, second sentence, RPBA 2020 by not admitting into the proceedings the objections" 
• 
  

EPO 

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

T 1421/20 - Fast decision, first level of convergence

 Key points

• An appeal against a refusal decision. Statement of grounds filed 21.04.2020, forwarded to the Board under Art. 109 on about 21.06. Summons 23.06, preliminary opinion 26.06. Oral proceedings 02.11.2020, appeal dismissed (application filed already on 22.10.2003, on the other hand, so the EPO still needed 17 years to finally refuse it). 
• This is the first decision I know wherein the new 'first level of convergence' is applied, i.e. Article 12(4) RPBA 2020.
• “although the amendments carried out in the Auxiliary Requests 0a, 0b and 0c [filed with the Statement of grounds] may address the [clarity] objections raised by the examining division in the decision under appeal, they introduce new [clarity] issues that lead to new objections. Therefore, the board, exercising its discretion under Articles 12(2) and (4) RPBA 2020, decides not to admit the Auxiliary Requests 0a, 0b and 0c into the procedure.”
• The Board does not need to discuss whether these AR's should have been filed during the first instance proceedings. I guess that if the clarity objections of the Examining Division were first raised in the appealed decision, this would be an error under Article 113 EPC, but that would be something for the applicant to argue.
• The Board analyses the new clarity issues in detail in the appeal decision.
• Note that the requirement of “does not give rise to new objections” is in the second stage of convergence, Art.13(1)(s.4), clause (v)(b).
• The Board finds that Auxiliary Request 0a' and AR12 are not novel. The other requests are not admitted.
  
  
• “Auxiliary Requests 0b', 0b'-1 and 0c' [...] were filed with appellant's letter of 1 October 2020, i. e. after the board had issued summons to oral proceedings. They were incontestably late filed and constituted an amendment to the appellant's case. The appellant argued that these requests should exceptionally be admitted into proceedings because it could not predict that board would regard clear the feature that the examining division had considered not clear.”
• The Board does not admit them. “the board considers that the appellant could and should have filed these requests during the first instance proceedings. Moreover, the board regards that it could not deal with requests comprising such features without undue burden, since it was not even certain that appropriate prior art was readily available in the file”
  
  
• Perhaps even more relevant is the fate of AR1-5. “Although it is true that Auxiliary Requests 1 to 5 were underlying the decision under appeal, it is also true that they were replaced (i. e. withdrawn) in the beginning of the appeal and were, thus, not part of the appellant's case. The board regards, thus, their reintroduction with the appellant's letter of 1 October 2020 as an amendment to the appellant's case, which is to be admitted into the procedure under Article 13 RPBA 2020.The board notes further, that the examining division had rejected these requests for lack of clarity and no other opinion on them was given in the decision under appeal with respect to the other patentability requirements. Since the board did not agree with the lack of clarity objections of the examining division, these requests had to be assessed with respect to the other patentability requirements according to the EPC. Moreover, by replacing them in the beginning of the appeal, the appellant did not give the board the chance to examine them and form at least a preliminary opinion on them.” The Board is not prepared to examine novelty and inventive step, neither to remit the case, and does not admit these requests.
• Finally, AR-6 to 11 were held inadmissible by the Examining Division under Rule 137(3) EPC as being late-filed and prima facie unclear. The appellant does not contest this decision and the Board does not admit the requests on appeal.

T 1421/20 - link