THE NEW ART. 13(2) RPBA 2020

On January 1st of 2020 the new Rules of Procedure of the Boards of Appeal of the European Patent Office went into force. I will refer to these new rules as RPBA 2020 in the below. The RPBA 2020 replace the previous RPBA 2007. The new RPBA 2020 introduce a “three-step” test in which it becomes more and more difficult to amend one’s case as the case progresses further. The first test, of Art. 12(1) RPBA 2020, deals with the submission of the grounds of appeal and limits the room for new arguments not previously brought or upheld. The more stringent second test, of Art. 13(1) RPBA 2020, deals with the period after the grounds of appeal or reply are filed. Any amendments at that stage may only be admitted at the discretion of the Board. The most stringent third test is laid down by new Art. 13(2) RPBA 2020, which states that any amendments to a party’s appeal case after the issuing of summons to oral proceedings shall in principle not be taken into account.

In a previous article I tried to compare the “old regime” under RPBA 2007 with the “new regime” under RPBA 2020. When that article was published, just one decision which applied Art. 13(2) RPBA 2020 was taken. I concluded in the previous article that it remains to be seen how strict this new Article 13(2) RPBA 2020 will be interpreted, and whether there will be different interpretations by different Boards of Appeal.

The present article is an update to the previous one. I analyzed ten recent decisions of the Boards of Appeal in which the most stringent test of Art. 13(2) RPBA 2020 was applied and present the highlights below.

              Valid reasons for amending one’s case after issuing of the summons

I managed to find some cases in which amendments made in response to the preliminary opinion of the Board of Appeal were admitted into the case, all of them being appeals against decisions from the Examining Division.

For example in T1255/18 the Board raised in its preliminary opinion an objection that was not raised by the Examining Division. The applicant filed an auxiliary request in response, addressing the newly raised issue, one month before the oral proceedings. As the applicant could not have anticipated this new objection, and the auxiliary request was filed timely, the Board of Appeal found that there were exceptional circumstances for admitting the auxiliary request into the proceedings under Art. 13(2) RPBA 2020 (see reason 6.1), although in the end the Board ruled that the new auxiliary request did not meet all criteria of the EPC.

 Similar situations arose in T1609/16 (reason 1) and T1080/15 (reason 7.1).

              Invalid reasons for amending one’s case after issuing of the summons

In the vast majority of cases however, amendments filed in this late stage of the proceedings were not allowed, as the Board could not be convinced that there were “exceptional circumstances” which warranted the late filing.

In case T597/16 the applicant argued that the auxiliary requests filed after the receipt of the summons was in response to a clarity objection raised for the first time in the entire proceedings in the preliminary opinion of the Board (a valid reason in the cases discussed above). Indeed a clarity objection was not made by the Examining Division, but in this particular case the Board of Appeal decided that the proposed amendment was not a mere clarification prompted by the Board’s preliminary opinion, but rather a substantive amendment corresponding to a substantive change of the appeal case (reason 3.3.1). The auxiliary request was not admitted

Also in case T689/15 the appellant tried to argue that the Board of Appeal in its preliminary opinion brought forward a new objection. In this case, the Board found that there was one distinguishing feature compared to the closest prior art (whereas the Examining Division had found two), and accordingly reformulated the problem to be solved compared to the proceeding before the Examining Division. This was however not a ‘whole new line of reasoning’ which warranted the filing of further auxiliary requests and they were not admitted (reasons 4.3 and 4.4).

In case T2778/17, the Board essentially confirmed in its preliminary opinion that it followed the reasoning of the Examining Division. This was to be expected by the applicant, and even though the auxiliary requests were filed one month before the oral proceedings and the amendments did not lead to subject-matter developed in an entirely new direction, they were not admitted as they could also have been filed already earlier (reasons 3.2 – 3.4).

T42/17, which is an appeal against a decision from the Opposition Division to revoke the granted patent, goes even further. The patentee had to expect that the board might express a provisional opinion that would be different from the opinion of the opposition division on matters already discussed during opposition proceedings. This different opinion was not an exceptional circumstances which warranted the admission of any auxiliary request in response to said opinion, as no new objections had been raised (reasons 4.4. and 4.5).

The fact that a representative could not get a hold of its client in the period leading up to the oral proceedings is not an exceptional circumstance which warrants late filed auxiliary requests admissible either, according to case T2329/15 (reason 4.4).

Also a change of professional representative after notification of the summons, the new representative not having had the opportunity to file an auxiliary request at an earlier stage since he was not in charge of the case, is not an “exceptional circumstance” (T1080/15, reason 5.4).

The strongest wording used upon not admitting an auxiliary request after receipt of the summons is probably used in T967/16, where the Board explicitly states that “the case law clearly states that there is no established “last chance” doctrine or any absolute right for a patent proprietor to such a “last chance” request (reason 18).

All the above cases relate to auxiliary requests filed by the applicant / patentee. However Art. 13(2) RPBA also applies to opponents as appellant. In case T241/18 an opponent brought a certain inventive step attack in the notice of opposition. The same attack was also pursued at the oral proceedings before the opposition division. The patent was maintained in amended form, and the opponent appealed. In the statement of the grounds of appeal, this particular attack was not invoked. After the summons were issued in the appeal case, the attack was revived – thereby amending the case in the appeal proceedings with a new attack on inventive step. This attack was not admitted under Art. 13(2) RPBA.

              Closing remarks

This analysis is not a complete overview of every case in which Art. 13(2) RPBA is invoked – and even if it would be, it would no longer be up to date tomorrow. From this analysis, it seems that the criterion of Art. 13(2) RPBA 2020 is applied strictly and that the test essentially boils down to answering the question ‘could (not would but could) the present amendment have been presented earlier’? In many cases, the question to that answer is “yes”. The only cases in which a request was allowed under Art. 13(2) RPBA 2020 – that is, wherein an admissible request was filed after the summons to oral proceedings had been issued – were examination appeal cases in which a new objection was raised for the first time in the provisional opinion of the Board. In all other cases, requests filed after the summons to oral proceedings had been issued were not admitted.