T 2221/21 - Oppo rejected, auxiliary requests in reply to appeal

Key points

• Another case where the OD rejects the opposition, the opponent appeals, the proprietor presents auxiliary requests in their reply to the appeal, and the Board considers the claims as granted to be unallowable. How to assess the admissibility of the auxiliary requests?
• "Under Article 12(4), fifth sentence, RPBA, the board is to exercise its discretion in view of, inter alia, the complexity of the amendment and the need for procedural economy."
• "the board is of the opinion that it would at least require a complex discussion to ascertain whether there was a basis for [the added feature]. (The Board explains why this is the case for the feature at hand).
• "Such a complex discussion would be contrary to the need for procedural economy."
• The Board could have admitted the request and decided that it lacks a direct and unambiguous basis in the application as filed.
• However, the underlying procedural question is: to what degree does the right to be heard under Article 113(1) EPC entail a right to present auxiliary requests that provoke a complex discussion? Is the requirement stricter than before the OD?  Assuming, of course, the auxiliary request is introduced into the procedure without undue delay and does not amount to an abuse of procedure?
• Just to be clear, I don't have a settled view on this point. I'm not just sure if the text of Art. 12(4) provides the complete and definitive answer to those questions. 
• The auxiliary request is not admitted.

EPO 

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

T 0500/23 - OD rejects oppo, auxiliary requests in appeal

Key points

• The OD maintained the patent as granted. The opponent appeals. The Board finds the main request and AR-1 to be unallowable.
•  "The appellant [opponent], in point 7.2 of its grounds of appeal, argued that inter alia auxiliary request 2 should not be admitted since this was filed late before the opposition division without any explanation or justification.
• I think that, strictly speaking, the opponent as the appellant must present attacks to the set of claims held allowable by the OD (the claims as granted) without a need to speculate on which auxiliary requests are presented by the proprietor in appeal. 
• The objection is under Art. 12(4) RPBA.
• The Board: "In this regard, it should be noted that the opposition division had in its annex to the summons already outlined its preliminary view that the ground for opposition under Article 100(a) EPC, in conjunction with Articles 54 and 56 EPC, did not prejudice maintenance of the patent as granted. Nevertheless, the [proprietor] clarified its fall-back positions by filing auxiliary requests (shortly) before the oral proceedings before the opposition division. The fact that the auxiliary requests were filed shortly before the oral proceedings, although this was not strictly necessary due to the preliminary opinion of the opposition division, should not be unfavourable to the patent proprietor."
• The remark about "not strictly necessary" could also be relevant under Art. 12(6)(s.2) in cases where the proprietor does not present such auxiliary requests after the favorable preliminary opinion of the OD.
• " Furthermore the opposition division found the patent as granted to meet the requirements of the EPC such that it had no need to consider any further requests, including the auxiliary requests that were late filed. Therefore, with no need to consider any auxiliary requests in the impugned decision, it is clearly reasonable for the respondent to be able to pursue auxiliary requests filed in the opposition proceedings and/or to file other auxiliary requests on appeal as part of its complete appeal case (see Article 12(3) RPBA) in order to provide suitable fall-back positions should the patent as granted be found not to be allowable. This the respondent has done at the first opportunity on appeal i.e. in its reply to the grounds of appeal."
• As a comment, the auxiliary request should then be fully substantiated in the reply to the statement of grounds.
• Furthermore, the auxiliary request should be suitable to address the attacks raised by the opponent/appellant in their SoG.
• Note, the "and/or" makes the sentence also relevant under Art. 12(6)(s.2).
• 5.3 Consequently, under the particular circumstances, the Board exercises its discretion to admit auxiliary request 2 into the proceedings."
• How to deal with AR-2 in the appeal? 
• The Board examines the novelty of the amended claim over two prior art documents and remits for inventive step, in a specifically reasoned part of the decision.
• "In the present case an important aspect is that the Board has, through its finding with respect to claim 1 of the main request, overturned the entire basis on which the opposition division had understood D1 to subsequently conclude that the claims before it met the requirements of the EPC. The Board would thus be considering the specific issues with respect to inventive step for the very first time on a totally different basis, which would deprive the parties of the opportunity of having an examination of the claimed subject-matter before two instances and moreover would go far beyond the purpose of the appeal proceedings as being primarily a review of the impugned decision. Not least due to this, special reasons (Article 11 RPBA) exist for remitting the case. Also, the parties had not developed their inventive step arguments with respect to the subject-matter of claim 1 of auxiliary request 2 in view of how this is differentiated over D1 and D2."

EPO 

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

T 2240/22 - Auxiliary requests of the proprietor/respondent

Key points

• The OD maintains the patent on the basis of AR 5bis. The Board finds those claims to be obvious. The board turns to the lower-ranking requests.
• " These auxiliary requests were filed for the first time in appeal with the respondent-proprietor's reply to the opponent's appeal. "
• "The Board is unconvinced that these requests could and should have been filed already in the opposition proceedings (so that Article 12(6) RPBA would come into play), because there was no reason for the proprietor to file further auxiliary requests in the opposition proceedings after auxiliary request 5bis was held to be allowable."
• " However, these requests are amendments of the respondent proprietor's appeal case in the sense of Article 12(4) RPBA. ... these requests, ... are undoubtedly newly filed in appeal and indisputably have not been raised and maintained in the preceding opposition proceedings, are amendments."
• "As they are amendments to the respondent proprietor's appeal case their admission is at the discretion of the Board, Article 12(4) RPBA, 1st paragraph, 2nd sentence. The Board exercises its discretion according to the following two paragraphs of Article 12(4) RPBA, that amendments should be identified as such, reasons for their filing and (for claim requests) a basis given; they bring in no additional complexity, are suitable to address the relevant issues, and they meet the need for procedural economy. The latter criteria are similar though not identical to those that the opposition division would have applied if these requests had been filed at the oral proceedings before the division: clear allowability (clearly resolve all relevant issue), convergence and procedural expediency, cf. E-VI.2.2.3. "
• Art. 12(4), fifth sentence, specifies factors, not cumulative criteria. 
• Turning again to auxiliary requests 6bis, 7bis, 6tris, 7tris, these are not simple combinations of granted claims (as admitted auxiliary request 5bis is). Rather, they combine granted claims with subject-matter taken from the description and figures of the alternative embodiments of figures 2 and 4 []
• "In the Board's view, such amendments are complex and not suitable for addressing the lack of inventive step, as taking features from specific embodiments of the description raises questions of added subject-matter and would have required additional examination, especially considering that such subject-matter may not have been searched. It is unlikely, that the opposition division would have admitted such requests filed at the very last moment in opposition oral proceedings, as they would have failed the criterion of clear allowability for the same reasons."
• Comparing the filing of an auxiliary request with the reply to the appeal to the filing an auxiliary request at the end of the oral proceedings before the OD is interesting. The reply in appeal is filed months, if not years, before the Board holds oral proceedings.
• "This approach is also confirmed by jurisprudence of the Boards of appeal, see for example T 0288/16, reasons 8, in which the Board confirmed that the opposition division had exercised its discretion in a reasonable manner and in accordance with the right principles when deciding not to admit requests incorporating a feature from the description."
• "For these reasons, the Board decided not to admit auxiliary requests 6bis, 7bis, 6tris, 7tris into the appeal proceedings, Article 12(4) RPBA with Article 114(2) EPC. The question as to whether the requests had been adequately substantiated can be left undecided."
• It stands to reason that the non-appealing proprietor should have a fair chance to respond to an appeal against an amended patent that may be successful, but they should also not gain any advantage by waiting to file auxiliary requests in the appeal rather than during the opposition oral proceedings. In other words, it should not have a better chance of having auxiliary requests admitted in appeal than in the proceedings leading to the appealed decision.
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EPO 

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

T 0823/23 - Admissibly raised and the Guidelines

Key points

• For the 'admissibly raised' prong of Art. 12(4) RPBA, should the Board consider the GL like the OD would have done, should the OD have arrived at the request or attack?
•  In point 6.1 of its communication dated 6 July 2022, the opposition division stated that this fresh ground of opposition could have already been raised against the patent as granted with the notice of opposition. The division indicated its intention not to admit the ground into the opposition proceedings due to a lack of prima facie relevance, referring to Article 114(2) EPC. However, this was only a preliminary opinion, and the opposition division did not take a final decision on this issue."
• Not sure how this happened, by the way: "the opposition division stated in its written preliminary opinion that it did not intend to admit a new ground of opposition under Article 100(b) EPC concerning auxiliary requests 3 and 4 (see point 6.1 of the communication dated 6 July 2022) and decided that the patent as amended on the basis of the main request (filed as auxiliary request 1 during the preceding appeal proceedings with the letter dated 15 September 2017) met the requirements of the EPC."
• Not deciding on an attack is a substantial procedural violation, isn't it?
• " In other words, the objection under Article 100(b)/83 EPC is a "carry-over objection", i.e. an objection which was raised and maintained in the opposition proceedings but which was not decided upon in those proceedings, neither with regard to its admittance nor in substance, due to the allowability of a claim request that ranked higher than the claim request against which the objection under Article 100(b)/83 EPC had been raised."
• "The RPBA do not define what is meant by a submission being admissibly raised in the proceedings leading to the decision under appeal. Having said this, the ordinary meaning of the term "admissibly" indicates a reference to admittance, and the reference to the "proceedings leading to the decision under appeal" makes it clear that the circumstances of the proceedings leading to the decision under appeal are decisive, as opposed to the circumstances of the appeal proceedings in which the notion of "admissibly raised" as per Article 12(4) RPBA is assessed."
• "When assessing how a department of first instance would have exercised its discretion (assuming legally correct and reasonable conduct), the Board uses the criteria which the department of first instance would have had to apply. The case law of the Boards of Appeal on reviewing the exercise of discretion in examination proceedings (see for example T 937/09, Reasons 3.4 and 3.5, and T 573/12, Reasons 3.3 and 3.4) and opposition proceedings (see for example T 1930/14, Reasons 22, and T 84/17, Reasons 2.2) can provide guidance for assessing how a department of first instance would have exercised its discretion."
• Compare T 0246/22: " 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."
• I see the point of T 0246/22, but still the approach of T 0823/23 seems more practical for the procedure as a whole. 
• " A board may also take account of the Guidelines for Examination in the European Patent Office ("the Guidelines") when assessing how a department of first instance would have exercised its discretion. This, in principle, is no different from a board taking account of the Guidelines when reviewing the actual exercise of discretion by a department of first instance in the context of Article 12(6), first sentence (see T 435/21, Reasons 3.1, fifth sentence, and T 1088/20, Reasons 4.3.3) or second sentence (see T 1990/20, Reasons 4.2), RPBA. While the Guidelines are not binding on the Boards of Appeal in view of Article 23(3) EPC, they are - as general instructions pursuant to Article 10(2)(a) EPC - to be taken into account by the departments of first instance. However, the Guidelines do state that they do not constitute legal provisions and that, for the ultimate authority on practice in the EPO, it is necessary to refer firstly to the EPC itself and secondly to the interpretation of the EPC by the Boards of Appeal and the Enlarged Board of Appeal (General Part, section 3, General remarks). Against this background, a board's consideration of the Guidelines when assessing whether a submission was admissibly raised within the meaning of Article 12(4) RPBA does not appear to cause any issues."
  
  
• "Taking these criteria into account, the Board concludes that the objection under Article 100(b)/83 EPC - and fresh ground of opposition - was not admissibly raised in the opposition proceedings, for the following reasons. Since the case had already been remitted to the opposition division once, the procedure was at a very advanced stage when the objection was raised for the first time. There was no good reason for the belated submission either. The subject-matter of claim 1 of auxiliary request 3 corresponds to the subject-matter of claim 5 as granted. Hence, any lack of sufficiency of disclosure would have also been present for the claims as granted and therefore could and should have already been addressed within the opposition period."
•  Furthermore, ... . Hence, the objection was prima facie not relevant in the opposition proceedings."" 
• " Exercising its discretion under Article 12(4) RPBA, the Board thus decided not to admit the objection under Article 100(b)/83 EPC into the appeal proceedings."
• "  in the case in hand the applicability of G 10/91 to raising the objection under Article 100(b)/83 EPC in the appeal proceedings can ultimately be left open. Restrictions on new submissions by an opponent pursuant to G 10/91 and a board's discretionary power not to admit late-filed party submissions under Article 114(2) EPC in conjunction with Articles 12 and 13 RPBA are separate from each other and must be applied in a cumulative manner (see T 1042/18, Reasons 4.5). "

EPO 

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

T 0449/23 - (IV) On the need to actively maintain carry-over requests in appeal

Key points

• The OD maintained the patent in amended form based on AR-1. The opponent and the proprietor appeal.
• Are AR-2 to 8 part of the appeal procedure?
• I think the Board applies existing case law, yet it's good to see it explained in all details.
• "With the letter dated 10 December 2024, with which the above auxiliary requests were submitted, the patent proprietor noted that the communication of the board pursuant to Article 15(1) RPBA had not mentioned auxiliary requests 2 to 8 filed before the opposition division. In the proprietor's view, these requests were however to be considered as part of the appeal proceedings from the outset within the meaning of Article 12 RPBA."
• "The board disagrees. Rather, as argued by the opponent, and indeed as understood by the board in drafting the communication pursuant to Article 15(1) RPBA, prior to the letter dated 10 December 2024, there was nothing in the patent proprietor's submissions in appeal indicating that as an alternative to its main request or auxiliary request 1, it requested maintenance of the patent on the basis of auxiliary requests 2 to 8."
• The proprietor refers to some remark in its Notice of appeal. The Board finds this remark to be insufficient.
• I note taht at any rate, the proprietor should logically maintain AR-2 to 8 in its reply to the appeal of the opponent, as lower ranking requests.
•  "the patent proprietor's grounds of appeal and reply collectively defined its requests as the main request and auxiliary request 1. Hence, even if the notice of appeal were to have referred to auxiliary requests 2 to 8, this would have been superseded by the grounds of appeal and reply which were absent any reference thereto. In this regard, Article 12(3) RPBA stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and inter alia should specify expressly all the requests relied on."
• "The patent proprietor also argued that auxiliary requests 2 to 8 had been set out in its reply to the notice of opposition dated 1 October 2021 (pages 22 to 25). Since this document was submitted as an annex to the patent proprietor's statement of grounds of appeal, auxiliary requests 2 to 8 were part of the appeal proceedings."
• "it is for the appellant, in the present case the patent proprietor, to define the extent of the appeal and as set out above, in accordance with Article 12(3) RPBA, set out its complete case in the statement of grounds of appeal or the reply thereto.  The submission of the reply to the notice of opposition as an annex to the grounds of appeal does not fulfil this requirement. Specifically, it does not change the fact that the patent proprietor's express requests in appeal did not include auxiliary request 2 to 8. Indeed, the board notes that in its grounds of appeal, the patent proprietor only referred to its reply to the notice of opposition in the context of inventive step starting from D3 (grounds of appeal, page 7, point 2.2, first paragraph). Hence, the patent proprietor's argument in this regard also fails."
• "To support the argument that auxiliary requests 2 to 8 were part of the appeal proceedings, the patent proprietor also referred to the opponent's grounds of appeal, in which said requests were addressed. Specifically, the opponent's grounds of appeal comprised a table on page 15 referring to auxiliary requests 1 to 8 submitted by the proprietor in opposition proceedings, as well as providing some comments on the allowability of said requests."
• " The board disagrees. As stated by the opponent, its submissions related to auxiliary requests 2 to 8 were filed merely "as a precautionary measure" (grounds of appeal page 15, paragraph below the table), i.e. in anticipation of the possibility that the patent proprietor might request maintenance of the patent on the basis of these requests. However, the patent proprietor did not request maintenance of the patent on the basis of auxiliary requests 2 to 8, neither with its statement of grounds of appeal nor with its reply to the opponent's appeal. Indeed, given the fact that auxiliary requests 2 to 8 were addressed in the opponent's grounds of appeal, the lack of any reference to those requests in the patent proprietor's reply to the opponent's grounds of appeal served to confirm that auxiliary requests 2 to 8 did not form part of its requests in appeal."
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• " The patent proprietor argued that having been filed during opposition proceedings, auxiliary requests 2 to 8 were "carry-over" requests. Therefore, to determine whether such requests represented an amendment to its appeal case in the sense of Article 13(2) RPBA, the criteria set out in Article 12(4) RPBA were to be applied."

• The Board: " the amendment referred to in Article 12(4) RPBA is an amendment of the party's case relative to its requests, facts, evidence, arguments and objections on which the decision under appeal is based, which is distinct from "amendments to a party's appeal case" in Article 13(2) RPBA, carried out at a later stage of the appeal proceedings relative to earlier submissions in appeal."

• "the patent proprietor's interpretation would have as a consequence that any submission or request admissibly raised and maintained in opposition proceedings could be reintroduced without impediment at any stage of the appeal proceedings, since following said interpretation, such a request would never be an amendment of the party's appeal case under Article 13(1) and (2) RPBA, with the consequence that the board would not have the discretion to exclude it. This would in turn run contrary to the legislator's intent underlying Article 13(2) RPBA"

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EPO 

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

T 0924/22 - Applying the GL under Art.12(4) RPBA

Key points

• Should the Boards apply the Guidelines under the 'admissibly raised' clause of Art. 12(4) RPBA? 
• The Board:  "4. 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."

EPO 

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

T 0664/20 - Pre-emptive attacks?

Key points

•  T 0919/17 held that under the RPBA 2007:  “It is correct that the appellant [opponent] did not file any objections against the auxiliary requests together with its grounds of appeal. However, it was under no obligation to do so. Since the opposition had been rejected, the appellant correctly argued in its grounds of appeal as to why the decision of the opposition division to reject the opposition was wrong. At that point in time the appellant could not have foreseen which lines of defence the patent proprietor would adopt during the appeal proceedings and there was no reason to assume that it would file the same auxiliary requests as during opposition proceedings.” 
• See also T 2843/19 about the rejoinder under the RPBA 2020 ("The filing a rejoinder is appropriate for an appellant’s response to attacks or auxiliary requests that are not already the subject of the contested decision but are submitted by the respondent in the [appeal reply brief]."). Note that carry-over requests are indeed introduced in appeal, see the unless clause of Article 12(4) RPBA.
• The present board, in translation: "the statement of grounds of an opponent as appellant must include all grounds covering all requests pending before the opposition division, including those which were not considered in the contested decision. Failing this, the appellant risks having the grounds filed after the statement of grounds and relating to auxiliary requests pending before the opposition division and filed in response to the appeal brief by the patent owner being held inadmissible. ".
• The Board's reasoning,  "3. According to Article 12(3) RPBA, the statement setting out the grounds for the appeal must contain all the grounds relied on by an applicant (opponent) in the appeal.

  Auxiliary requests 3 to 15 had already been filed on September 12, 2019 before the opposition division. Applicant II therefore had to expect that the patent owner (applicant I) would re-file auxiliary requests 3 to 15 in the appeal proceedings. Consequently, applicant II should have addressed these requests in his statement explaining the grounds of appeal and provided the document at the latest at this stage (24). Therefore, the board does not admit document (24) into the appeal proceedings (Articles 13(1) and 12(3) RPBA)."

• Note, Article 12(3) states that "accordingly, they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld". As the auxiliary requests were not considered in the decision under appeal, I do not see how Article 12(3) would require parties to comment on matters from the first instance procedure that did not make it into the decision. Article 12 RPBA is the first stage of the convergent approach. T 0664/20 goes in the opposite direction by requiring pre-emptive comments on requests that are not even in the appeal. 

• See also T 0248/22 indicating that the Statement of grounds of the proprietor should not  include pre-emptive auxiliary requests.

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

T 0364/20 - The admissibly-raised exception

Key points

•  The Board arrives at auxiliary requests 1  to 16, which are carry-over requests. 
• "To examine whether auxiliary requests 1 to 16 were admissibly raised before the opposition division, it is necessary to consider the file history."
• The requests were filed by the Rule 116 EPC date.
• The opponent: " It submitted that claim 1 as granted had been amended in at least seven different diverging directions in auxiliary requests 1 to 16 and referred to the table bridging pages 5 and 6 of its letter dated 3 November 2020. Moreover, claim 1 of several auxiliary requests contained various combinations of the granted dependent claims which were not disclosed as such in the claims as granted. Features from the description had also been included. "
• The Board considers that auxiliary requests filed with the reply under Rule 79(1) EPC can be held inadmissible in exceptional cases only. "The board bases this view on decision R 6/19 of the Enlarged Board of Appeal, according to which (catchword) the basis for an opposition division's discretion to admit or not claim requests is Article 123(1) EPC. The Enlarged Board held (reasons, points 7 to 9) that under Article 123(1) EPC, a patent proprietor does not always have the right to amend its patent and that "amendments and their admission into the proceedings shall be in accordance with the provisions of the implementing regulations". The Enlarged Board referred to Rule 81(3) EPC, which gives the opposition division the discretion not to admit claim requests. The Enlarged Board derived this discretion especially from the rule's provision that an opportunity to amend the patent must be given only "where necessary". The current board observes that in a similar way, Rule 79(1) EPC stipulates that a patent proprietor must be given the opportunity to amend its patent in reply to the notice of opposition only "where appropriate"."
• "The existence of a truly exceptional situation leading to the consideration of claim requests filed within the time limit set under Rule 79(1) EPC to not have been admissibly raised should be decided on a case-by-case basis. Such a situation might occur where an abuse of the proceedings occurred, e.g. when an unreasonably high number of diverging auxiliary requests were filed without proper justification. The number of grounds for opposition or different objections raised by an opponent as well as the number of opponents may represent, inter alia, criteria to be considered."
• The relation of this holding to Rule 80 EPC could be considered.
• "Decision T 221/20 (points 2.1 to 2.4) considered auxiliary requests filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit under Rule 116(1) EPC set by the opposition division in its summons to attend oral proceedings to have been admissibly raised. In fact, the current version of the Guidelines for Examination in the EPO (March 2023 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".
•  "However, in the board's view, it cannot be held that any claim request submitted after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is automatically filed in due time and thus was admissibly raised."
• This could be an important point for the practice of the OD if the first instance departments were to follow the present decision and/or other Boards were to follow the present decision.
• The point also raises the interesting question of how free the Boards are to depart from the GL under the "admissibly raised" exception. And, if the Boards apply different rules for the "unless clause" that the OD's, how would such a double set of rules work in practice.
• "The board holds that whether or not a claim request filed after the expiry of the time limit set under Rule 79(1) EPC and before the expiry of the time limit set under Rule 116(1) EPC is to be considered to have been filed in due time depends on whether it was submitted as a direct and timely response to a change of the subject of the proceedings introduced by the opponent or the opposition division."
• The requests are admitted, are each considered on the merits, 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 1800/20 - Not admissibly raised in the meaning of Art. 12(4)(s.1) RPBA

Key points

• The Board decides on the admissibility of an auxiliary request that was filed before the OD but that the OD did not reach in their decision because the OD found a higher-ranking request allowable.
• The Board examines whether the request as admissible raised before the OD, under Art. 12(4) and concludes that this is not the case because the request was not convergent with the higher-ranking request. The Board refers to the framework of T1903/13.
• T1903/13 is Art.12(4) RPBA 2020 avant la lettre.   See T 0494/18, r.3.7.5 for a different approach under Art. 12(4) RPBA 2007.
• However, the framework specified in T1903/13 concerns what is now Art. 12(4) fifth sentence, not Art. 12(4), first sentence, unless clause. The rules applied by the  Boards for admissibility (i.e. the factors of the fifth sentence) are not necessarily the same as the rules to be applied by the OD, respectively governing the term 'admissibly raised' in the first sentence of Art. 12(4).
•  Therefore, the request does not benefit from the unless clause of Art. 12(4) RPBA
• The Board, in translation: "3.7 Since auxiliary request 2' was not submitted in an admissible manner in the first instance opposition proceedings, its submission in the appeal proceedings represents a change in the patent proprietor's appeal submissions, the admission of which is at the discretion of the board. The board exercises this discretion to not admit auxiliary request 2' into the proceedings because its treatment would be incompatible with the requirement of procedural economy due to a lack of convergence (cf. T 1456/20, point 4.5 of the reasons for the decision)."
• Note the sanction of not falling under the unless-clause of the first sentence is that the second sentence of Art. 12(4)  applies. Art. 12(4) fifth sentence provides that "The Board shall exercise its discretion [i.e. of the second sentence] 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)
• Note that the Board in the present case does not explicitly consider all three factors indicated in the RPBA. T 1456/20 r.4.5 held that the criterion of convergence is an expression of the principle of procedural economy of Art. 12 and 13, when deciding on admissibility under Art. 13(2). However, this does not mean that it is an overriding factor.
• Note that a submission being inadmissible raised in the first instance procedure in the sense of Art.12(4)(s.1)  on the ground that it was raised and maintained in the first instance proceedings does not imply that Art.12(6), first or second sentence, applies, not even by analogy, neither that the discretion under Art.12(4)(s.2) is to be applied stricter, nor that it is an additional factor under Art. 12(4)(s.5). Such a rule can not be inferred from the RPBA 2020, nor would it be justified. The late filing of a request during the first instance proceedings that the OD did not reach is not detrimental to procedural efficiency compared to filing it with the initial appeal submissions.
• Furthermore, convergence under Art.12(4)(s.5) should be examined with respect to the requests filed with the initial appeal submissions. Convergence under Art. 12(4)(s.1) with respect to the requests pending at some time during the first instance procedure. 
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• EPO 

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

T 0813/20 - A case amendment under Art.12(4) ?

Key points

• The OD maintains the patent in amended form based on AR-II (identical to AR-2 in appeal). Both parties appeal.
• "The statement of grounds of appeal of the opponent contains an objection of lack of inventive step based on D11 as closest prior art against claim 1 of auxiliary request II underlying the contested decision.
• That objection was maintained in the rejoinder of the opponent (section 4.4, item 42), as the present second auxiliary request corresponds to said auxiliary request II. An objection based on D11 as closest prior art was also raised in the rejoinder of the opponent against the main request, the first auxiliary request, and the third auxiliary request in appeal (rejoinder of the opponent, sections 4.3 and 4.5, item 53). 
• The objection against the main request [i.e. lack of inventive step over D11], which corresponds to the patent as granted, is to be regarded as an amendment to the opponent's case within the meaning of Article 12(4) RPBA 2020. Its admittance is at the discretion of the Board."
• The OD had held the claims as granted to lack basis in the application as filed, Art. 123(2).
• The OD also found that AR-2 was inventive over D11 as the closest prior art. As the Board notes: " It is also immediately apparent that the objection of lack of inventive step over D11 submitted against claim 1 of the second auxiliary request is also relevant for the main request whose claim 1 is more broadly defined"
• It is  not clear to me how the inventive step attack from D11 can then be a case amendment. More precisely, how it can be a "part of appeal case not meeting the requirements of Art.12(2)", i.e. not directed to the ... objections ... on which the impugned decision was based. If the inventive step attack against AR-2 is valid, then it must apply equally to the main request, which must be broader (claims as granted).
• At any rate, the Board considers the "unless clause" of Art. 12(4) to apply, such that following the wording of Art.12(4), the attack is "not to be regarded as an amendment".
• The unless clause applies because, even though the attack was "first raised towards the end of the oral proceedings before the opposition division", "it is however apparent from the minutes that the admittance of the objection was discussed between the parties at the oral proceedings proceedings, after which the opposition division admitted the objection into the proceedings. The parties provided their arguments relating to that objection and the impugned decision is based on that objection " (indeed in view of AR-II)
• " Under Article 12(1)(a) RPBA 2020, any such facts, having become part of the contested decision, are basically part of the appeal proceedings too"
• Under the one-way interpretation of G7/93, r.2.6, this is the case.
• "In addition, that amendment of the opponent's case does not add complexity or goes against procedural economy. "
• As the Board had already concluded that it had no discretion to hold the attack inadmissible under Art. 12(4) and established case law, this added remark is puzzling. 

EPO 

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

T 0652/20 - Modifed novelty attack not admitted

Key points

• The opponent cited Example 12 of document E3 as novelty destroying before the OD. In appeal, the opponent argues that Example 12 of document E3 is novelty destroying. The Board does not admit the attack.
• " In its statement setting out the grounds of appeal, the appellant - opponent raised a lack of novelty objection versus the composition of example 12 of E3 based on the argument that chitin contained therein would represent a sebum-absorbing powder having a sebum uptake of 35 mL/100 g or more [as specified in the claim]" 
• " During the first instance proceedings the [opponent] relied exclusively on fibroin as sebum-absorbing powder in its objection of lack of novelty over example 12 of E3. Fibroin was consequently the sole component considered as potential sebum-absorbing agent in the impugned decision. Hence, the lack of novelty reasoning of the [opponent] based on chitin as sebum-absorbing powder was provided for the first time in the entire proceedings with its statement setting out the grounds of appeal." 
• " During the oral proceedings, the [opponent] explained that this argument was not new. According to the [opponent], its objection of lack of novelty raised during the first instance proceedings concerned the whole composite material containing fibroin and chitin. These two components only differed in the mechanism by which sebum uptake occurred. Merely a new item of evidence substantiating the achievement of the claimed sebum-uptake parameter (A9) had been provided in reply to the decision of the opposition division pointing out the lack of evidence therefore" .
• The Board does not admit the modified attack under Art. 12(4) RPBA.
• " The new lack of novelty reasoning of the [opponent] raises an entirely new discussion regarding the physico-chemical properties of chitin. It does therefore not address the reasoning of the first instance decision as such but merely the conclusion thereof, namely that the composition of example 12 of E3 did not anticipate the subject-matter of granted claim 1. This opinion of the opposition division had furthermore already been expressed in the annex to the summons to oral proceedings in opposition.
• Moreover this new discussion regarding the physico-chemical properties of chitin would introduce complexity, in particular regarding the question of whether chitin has indeed a sebum-uptake according to claim 1, and would hence be against procedural economy." 
• The new documents supporting the attack are not admitted either.
• 
  

EPO 

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

T 0073/20 - Obligation to identify under Art. 12(4) RPBA 2020

Key points

•  With about two years delay, we are seeing an uptick in cases about Art. 12(4) RPBA 2020.
• "Article 12(4) RPBA 2020, second sentence establishes the appellant's obligation to identify any amendment to its case and provide reasons for submitting it in the appeal proceedings. " 
• "The appellant failed to fulfil its obligation under Article 12(4) RPBA 2020, second paragraph. It neither identified the amendment to its case nor provided reasons for submitting it in the appeal proceedings. " 
• The case amendment of the patentee was the new argument that " there was a technical prejudice in the prior art against the combination of the teaching of D1 and D2." 
• In particular, " The skilled person would have derived from D1 that it was essential for good MS and fluorescence signals that the group linking the labelling agent to the glycan be an amino group. As the linking group resulting from the method of D2 was a urea, the skilled person would have expected a loss of the MS signal and possibly also of the fluorescence signal when the method was used on the compounds of D1. According to the appellant, this prejudice was based on the skilled person's common general knowledge" 
• The patentee argues that the argument was based on paragraph [0037] of the patent and common general knowledge.
• Note, the Board does not apply the factors specified in Art. 12(4) for balancing the interests of the parties. 
• The Board also applies Art. 12(6)(s.2) RPBA 2020: " Furthermore, no circumstances justify the filing of the new argument in the appeal proceedings. The argument could and should have been filed in the opposition proceedings since the facts on which it relies were known to the appellant from the outset of the opposition proceedings. This is confirmed by paragraph [0037] of the patent, which hints at a relationship between the electron density on amino and urea groups and their corresponding MS signals." 
• " As this submission could not be justified as a legitimate reaction to late developments in the opposition proceedings and created a new situation on appeal, the board exercised its discretion not to admit the new argument under Article 12(4) and (6) RPBA 2020."
• As a comment, Art. 12(6)(s.2) does not clearly specify a discretion of the Board ("the Board shall not admit..."), but in the ultimate legal basis (Art. 114(2) EPC indeed specifies a discretion of the Boards).

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

T 0518/20 - Art.12(4) RPBA 2020 in action

Key points

• A notice of opposition is filed. Patentee requests rejection of the opposition with their response. The OD issues summons. The patentee files 15 auxiliary requests by the Rule 116 date. The OD finds AR-4 to be allowable (and admits it, it seems there was no objection to this).
• Opponent appeals and includes in the SoG a new inventive step attack against D4 based on the document E3 already on file and considered in the OD decision and the prior art acknowledged in the patent in suit.
• The Board does not admit the new attack.
• "Die beschwerdeführende Einsprechende hat mit der Beschwerdebegründung erstmals vorgetragen, dass der Gegenstand des Anspruchs 1 gemäß Hilfsantrag 4 nicht auf einer erfinderischen Tätigkeit beruhe, wenn man vom im Streitpatent genannten Stand der Technik (dort Figur 1) ausgehe und diesen mit der Lehre der E3 oder der E1 kombiniere. Damit richtet sich das Beschwerdevorbringen der Einsprechenden nicht gegen die der angefochtenen Entscheidung zugrundeliegenden Argumente und Einwände (vgl. Artikel 12 (2) VOBK 2020). 
• "Die beschwerdeführende Einsprechende hat weder im schriftlichen Verfahren noch in der mündlichen Verhandlung Gründe dargetan, warum dieser Angriff erst mit der Beschwerdebegründung vorgebracht wurde. Schon von daher war die mit der Beschwerdebegründung neu vorgebrachte Angriffslinie nicht in das Verfahren zuzulassen."
• The attack is not admitted under Art. 12(4) RPBA 2020.

EPO T 0518/20

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

T 3272/19 - Art.12(4)(s.1) RPBA, unless clause

 Key points

•  This decision was published already in March 2021 but it still warrants writing a blog post. 
• Art. 12(4) RPBA 2020 applies as to the temporal scope (notice of appeal filed 18.12.2019, statement of grounds filed 18.02.2020).
• The Board: “Although D9a and D13 were cited in the contested decision [], these documents were undoubtedly filed after the nine months deadline pursuant to Article 99(1) EPC (i.e. they were late-filed). However, the admittance of these documents, which was not decided upon in the contested decision, was requested by the respondent. The appellant explicitly indicated at the oral proceedings before the Board that they had no objection against the admittance of D9a and D13 into the proceedings. Further considering that ... the Board finds it appropriate to exercise its discretion pursuant to Article 12(4) RPBA 2020 by admitting D9a and D13 into the proceedings.”.
• Now, the point of this blog post: are D9a and D13 subject to Art. 12(4)? 
• Let's be precise, so the question is whether their filing falls under “such amendment” as defined therein which “may be admitted only at the discretion of the Board” in the sense of Art.12(4)(s.2), which is the legal basis invoked by the Board. 
• The requirements for being “such amendment” are defined in Art. 12(4)(s.1) as:  “(i) Any part of a party’s appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, (ii) unless the party demonstrates that this part was admissibly raised (iii) and maintained in the proceedings leading to the decision under appeal” (roman numerals added). The question in the present case is whether the “unless clause” applies. Because the documents evidently were “maintained in the proceedings leading to the decision under appeal” (they were cited in the decision of the OD), the question is whether they were “admissibly raised ... in the proceedings leading to the decision under appeal”. 
• The Board observes that D9a and D13 were filed after the expiration of the nine-month opposition period, namely on 02.05.2019 leading to this remark of the Board: "these documents were undoubtedly filed after the nine months deadline pursuant to Article 99( 1) EPC (i.e. they were late-filed). "
• Here there are two remarkable things: (i) as far as I know, not every document that the opponent submits before the OD after the nine-month opposition period is automatically and always inadmissible, so I don't understand what the Board means by stating that the documents were "late-filed" only in view of them being filed after the expiration of the opposition period, and if that "late-filed" is the same as not admissibly raised ... in the proceedings leading to the decision under appeal and (ii) the documents at issue were filed by the patentee (letter) (in their written submissions).
• The documents were admitted, so the matter of the precise legal basis for admitting them is not dispositive, but it seems unfortunate that one of the very first decisions to apply the new "first level of convergence" that was introduced by Art. 12(4) RPBA 2020 does not seem to provide a helpful example of how to apply the new provision.
• A petition for review is pending (as R 9/21) but does not seem to concern the above aspect of the decision.

T 3272/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t193272eu1.html

1.2 Documents D9a and D13

Although D9a and D13 were cited in the contested decision (section 6 of the Facts and Submissions), these documents were undoubtedly filed after the nine months deadline pursuant to Article 99(1) EPC (i.e. they were late-filed). However, the admittance of these documents, which was not decided upon in the contested decision, was requested by the respondent. The appellant explicitly indicated at the oral proceedings before the Board that they had no objection against the admittance of D9a and D13 into the proceedings. Further considering that:

- D9a was relied upon by both parties, in particular during the oral proceedings, who both indicated that the disclosure of D9a - in English - was equivalent to the one of D9 - in German -;

- D13 was already filed with letter of 2 May 2019 during the opposition proceedings, in support of then pending auxiliary request 4 (now auxiliary request 5), but did not need to be dealt with in view of the positive decision of the opposition division regarding the then valid main request.

the Board finds it appropriate to exercise its discretion pursuant to Article 12(4) RPBA 2020 by admitting D9a and D13 into the proceedings.

T 0081/20 - First level of convergence

 Key points

• “[In] its statement of grounds of appeal the appellant [opponent] for the first time brought forward objections of a lack of original disclosure with respect to [certain claim features]. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.”
• “Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.”
• The objection is also covered by “Article 12(6), second sentence, RPBA 2020”. In particular, “the board is of the opinion that the appellant could and should have submitted the newly raised objections already in the first-instance proceedings. The appellant did not set out any circumstances (and the board fails to see any) which would justify the admittance of the new objections.”
• “In view of the above, the need for procedural economy and the fact that these objections appear prima facie not to prejudice maintenance of the patent, the board, exercising its discretion under Article 12(2),(4) and (6) RPBA 2020, does not admit the objections raised by the appellant for the first time in the grounds of appeal into the proceedings.”

T 0081/20 -

https://www.epo.org/law-practice/case-law-appeals/recent/t200081eu1.html

1.2 Further features

In the present appeal case the statement of grounds of appeal was filed on 25 February 2020, i.e. after the date of entry into force (1 January 2020) of the new Rules of Procedure of the Boards of Appeal (RPBA 2020).

According to Article 12(2) RPBA 2020, a party's appeal case should be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. However, in its statement of grounds of appeal the appellant for the first time brought forward objections of a lack of original disclosure with respect to features relating to the reflective element and the primary and secondary paths. Therefore, they do not meet the requirements of Article 12(2) RPBA 2020 and are, according to Article 12(4) RPBA 2020, to be regarded as an amendment to the appellant's case.

Furthermore, the appellant did not demonstrate that these objections were admissibly raised and maintained in the opposition proceedings leading to the decision under appeal. Therefore, according to Article 12(4) RPBA 2020, any such amendment may be admitted only at the discretion of the board. Contrary to the requirement under Article 12(4), third sentence, RPBA 2020, the appellant did not provide any reasons why it submitted the amendment only in the appeal proceedings.

[read more after the jump]

T 2730/16 - Losing inventive step attack

 Key points

• This case provides a stern warning in my view regarding the admissibility of inventive step attacks in opposition appeal, and in particular the risk of losing inventive step attacks in the course of the first instance opposition proceedings in cases wherein the opposition division aims for first selecting one (and only one) closest prior art document and then discussing inventive step.
• “During the written opposition proceedings, the appellant [opponent] initially argued on the basis of D1, D2 or D3 as the closest prior art. [The] opposition division took the preliminary view that D2 could not constitute the closest prior art. In its subsequent letter in response to the summons, the [opponent] put forward inventive-step objections based on D1 and D3 only. Then, at the oral proceedings before the opposition division, the appellant agreed to D1 being the closest prior art - see minutes page 2 - and apparently did not put forward inventive-step objections based on D2 or D3. Consequently, the decision under appeal [] only discusses the objection based on D1, but not those based on D2 or D3.”
• “The course of the proceedings described above shows that the appellant did not actively maintain its objection based on D2 as the closest prior art during the oral proceedings before the opposition division and that it did indeed abandon it, thereby preventing it from being discussed in the decision under appeal. However, in its statement of grounds of appeal, the appellant again put forward an objection based on D2 as the closest prior art.”
• The inventive step attack based on D2 is not admitted under Art.12(4) RPBA 2007. 
• I doubt if Art.12(4) RPBA 2007 provides legal basis for doing so but Art. 12(4) RPBA 2020 seems to support such an approach.
• In appeal, the opponent/appellant argued " that it had not actively withdrawn or abandoned the inventive-step attack starting from D2 as the closest prior art in the opposition proceedings".
• The  Board: “ It may be that the appellant had not withdrawn its inventive-step objection based on D2 verbatim during the opposition proceedings; however, as explained above, the course of the opposition proceedings and the decision under appeal show that such a withdrawal had occurred (at least) implicitly. In this connection, it is also noted that the appellant did not at any time request a correction of the minutes, nor did it claim that the decision under appeal was erroneous in that it did not deal with the appellant's objection based on D2.”
• I note that the Chair was M. O. Müller.

Crystalline forms

• “The subject-matter of claim 1, i.e. the SC-3 form, differs from amorphous dapagliflozin [of D1] in that it is a crystalline form further comprising (S)-PG and water.”
• “it has to be concluded that the SC-3 form has a higher stability, i.e. a lower hygroscopicity, than amorphous dapagliflozin.”
• The Board finds the crystalline form to be inventive. In particular D4 would not make the solution obvious. “ the skilled person would have considered the effect suggested by D4, namely the universal decrease in hygroscopicity, to be a mere allegation. Given the generally recognised high unpredictability of solvate properties (see above), the skilled person would not have had a reasonable expectation of obtaining a less hygroscopic form of dapagliflozin.”

T 2730/16

https://www.epo.org/law-practice/case-law-appeals/recent/t162730eu1.html

4. Closest prior art

4.1 The appellant considered both D1 and D2 to be suitable as the closest prior art.

4.2 D2 as the closest prior art

During the written opposition proceedings, the appellant initially argued on the basis of D1, D2 or D3 as the closest prior art. In the annex to the summons to oral proceedings (page 11, penultimate paragraph), the opposition division took the preliminary view that D2 could not constitute the closest prior art. In its subsequent letter in response to the summons, the appellant put forward inventive-step objections based on D1 and D3 only. Then, at the oral proceedings before the opposition division, the appellant agreed to D1 being the closest prior art - see minutes page 2 - and apparently did not put forward inventive-step objections based on D2 or D3. Consequently, the decision under appeal (page 11 f., point 4) only discusses the objection based on D1, but not those based on D2 or D3.

The course of the proceedings described above shows that the appellant did not actively maintain its objection based on D2 as the closest prior art during the oral proceedings before the opposition division and that it did indeed abandon it, thereby preventing it from being discussed in the decision under appeal. However, in its statement of grounds of appeal, the appellant again put forward an objection based on D2 as the closest prior art.

In its communication pursuant to Article 15(1) RPBA 2020 the board expressed its preliminary view that this objection should not be admitted into the appeal proceedings pursuant to Article 25(2) RPBA 2020 in conjunction with Article 12(4) RPBA 2007 because, inter alia, the appeal proceedings were judicial in nature, meaning that the decision of a board of appeal should in principle be based on the substance of the dispute before the department of first instance; see T 724/08 (point 3 of the Reasons) and Article 25(1) RPBA 2020 in conjunction with Article 12(2) RPBA 2020.

T 0028/20 - (II) First level of convergence

 Key points

• The Board, applying new Art.12(4) RPBA 2020 (for the first time in a published decision in opposition as far as I know): "In its statement of grounds of appeal, the appellant [opponent] not only put forward an objection of lack of inventive step against the subject-matter of claim 1 of the main request starting from D9 as closest prior art - as during the opposition proceedings - but further argued that it lacked inventive step in view of D4 as closest prior art, in particular [...]”
• “ an objection of lack of inventive step based on D4 as closest prior art was neither dealt with in the contested decision, nor that there were any reasons justifying the submission of said objection for the first time in the statement of grounds of appeal.”
• “Under these circumstances, that objection does not fall under a party's appeal case as defined in Article 12(2) RPBA 2020 (since it is not directed to an objection on which the decision under appeal was based). Therefore it constitutes an amendment of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, whereby also the stipulations of Article 12(4) 2020, second paragraph are not satisfied, since the appellant has not explained why that objection was first raised in appeal.”
• Note that the Board refers to Article 12(4) 2020, third sentence as 'stipulations' that are to be 'satisfied', not merely as factors to be taken into account when making the discretionary decision on admissibility.
• “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 objection of lack of inventive step starting from D4 as closest prior art.”
• As a comment, possibly the result would have been the same under Art.12(4) RPBA 2007 but the reasoning required under Art.12(4) RPBA 2007 would have been different in my view.

T 0028/20

https://www.epo.org/law-practice/case-law-appeals/recent/t200028eu1.html

3. Inventive step

3.1 Objections raised

3.1.1 In its statement of grounds of appeal, the appellant not only put forward an objection of lack of inventive step against the subject-matter of claim 1 of the main request starting from D9 as closest prior art - as during the opposition proceedings - but further argued that it lacked inventive step in view of D4 as closest prior art, in particular examples 4D-1 and 4D-2 thereof, in combination with common general knowledge or D9 (sections 6.18 to 6.20). The question of the admittance of that new objection was addressed in the Board's communication (section 7.5) and the respondent requested at the oral proceedings before the Board that said objection be not admitted.

3.1.2 In that respect, it was not contested by the appellant, in particular at the oral proceedings before the Board, that such an objection of lack of inventive step based on D4 as closest prior art was neither dealt with in the contested decision, nor that there were any reasons justifying the submission of said objection for the first time in the statement of grounds of appeal.

Under these circumstances, that objection does not fall under a party's appeal case as defined in Article 12(2) RPBA 2020 (since it is not directed to an objection on which the decision under appeal was based). Therefore it constitutes an amendment of the appellant's case in the sense of Article 12(4), first paragraph, RPBA 2020, whereby also the stipulations of Article 12(4) 2020, second paragraph are not satisfied, since the appellant has not explained why that objection was first raised in appeal.

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 objection of lack of inventive step starting from D4 as closest prior art.