The meaning of "admissibly raised" late claim requests in appeals at the EPO – and a discretion not to admit even claims filed in due time under exceptional circumstances.
Can a patentee rely in an appeal at the EPO on claim amendments submitted but not examined during opposition proceedings? This question was at issue in the recent Board of Appeal decision T0364/20, arising from an opposition in which the patent was maintained as granted in the first instance. This meant that various auxiliary requests filed by the patentee some two months before the opposition oral proceedings were never considered by the opposition division, simply because it was unnecessary to do so at that stage.
The current Rules of Procedure of the Boards of Appeal specify that "a partyꞌs appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based" (RPBA 2020 Art 12(2)). Since the original opposition decision was not in any way based on these auxiliary requests, the Board has now concluded that reliance on the auxiliary requests in the appeal did not meet the requirements of Art 12(2). Further, Art 12(4) notes that "Any part of a party's appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment ... Any such amendment may be admitted only at the discretion of the Board."
Since Boards of Appeal tend to be reluctant to exercise such discretion, was this game over for the patentee?
Fortunately, Art 12(4) also provides that such instances are considered an amendment "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal". So the question now becomes whether those unexamined auxiliary requests were admissibly raised?
The appellant/opponent naturally argued that they were not, citing the fact that the various requests "had been amended in at least seven different diverging directions", and that some of the requests "contained various combinations of the granted dependent claims which were not disclosed as such in the claims as granted. Features in the description had also been included. Thus, prima facie, issues under Article 123(2) EPC arose, the discussion of which was detrimental to procedural economy." (Reasons, point 6). Further, the filing of these requests only two months before the opposition oral proceedings represented a substantial modification of the patentee's original case, so the requests should not be considered "admissibly raised".
The Board disagreed with this view. While acknowledging that the opposition division has a wide discretion to disregard late submissions (Art 114(2) EPC), this does not apply to submissions filed within the original Rule 79(1) EPC deadline for responding to a notice of opposition. Here, three of the auxiliary requests were in fact identical with requests filed at that time; the remaining thirteen were newly filed shortly before the oral proceedings. The Board further commented that, contrary to the position of the Guidelines that any request filed on time is necessarily admissibly raised, "in truly exceptional situations" this may not be the case – giving as an example a potential abuse of process by filing "an unreasonably high number of diverging auxiliary requests were filed without proper justification" (Reasons, 7.1.3). This potentially identifies a discretion not to admit certain amendments filed in due time. However, the Board held that no such exception applied in this case, and that at least those three identical requests would have been considered admissible by the opposition division.
They then turned to the remaining requests. Here the Board held that whether a claim request filed after the Rule 79(1) EPC deadline is late filed "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", and went on to give an overview of what criteria may be used by an opposition division "when exercising their discretion not to admit a late-filed claim request" (Reasons, 7.2.7 – 7.2.10), and compare these with similar criteria applied by the Boards of Appeal. The Board acknowledged that it would have been unlikely to admit such amendments if introduced at Appeal stage. Significantly, however, the Board considered that the two procedural stages of opposition and appeal are distinct, and that to treat them identically "would imply that criteria under Article 13(1) RPBA that deal with later stages of the appeal proceedings are applied in the same strict manner at a much earlier stage, namely during opposition proceedings. The board takes the view that this cannot be the correct approach" (Reasons 7.2.12).
Instead, the Board considered that the criteria should and would be applied more leniently at opposition stage, and that a patentee "must in principle be permitted to redefine its fallback positions in terms of auxiliary claim requests also at a late stage of opposition proceedings". Hence all claim requests were considered "admissibly filed", and so could be considered on appeal.
Despite all this, over the following 15 pages of the decision, the Board found that each of the auxiliary requests lacked an inventive step, and revoked the patent.
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