It has become increasingly challenging for parties to have new requests, facts, evidence and/or objections admitted into appeal proceedings; more so following the introduction of the revised Rules of Procedure of the Boards of Appeal (RPBA) on 01 January 2020 [see note 1, below], which arguably codified what practitioners had been experiencing.
An EPO appeal is not intended to be a complete re-examination of a case. Under the revised RPBA [see note 2, below], a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. Any part of a party’s case that does not relate to this is considered to be an amendment which will only be admitted into proceedings at the discretion of the Board of Appeal. When deciding whether to allow an amendment the Board of Appeal will consider the complexity of the amendment, the suitability of the amendment to address issues which led to the decision, and the need for procedural economy[see note 3, below]. The onus on a party to demonstrate the admissibility of an amendment becomes increasing greater the later on in appeal proceedings the amendment is put forward.
Decisions T 1439/16, T1480/16 and T 0482/19 (which were all issued after 01 January 2020) provide some guidance on late-filed amendments to a case which involves deleting claims from a claim request.
In T 1439/16, an appeal decision concerning an opposition division’s decision to maintain patent EP2161223 in an amended form, the Board of Appeal considered (i) whether a late-filed request in which claims had been deleted could be admitted and (ii) whether arguments against this admitted late-filed request could be admitted during oral proceedings.
In this case, the summons to oral proceedings was issued on 23 August 2019. Then, on 12 December 2019, the Board of Appeal issued a preliminary non-binding opinion in which they indicated that: claim one of the patent as maintained in opposition proceedings appeared to contain added subject-matter; the subject-matter of claims 8 and 9 appeared to be new; and the subject-matter of claims 1, 2, 8 and 9 appeared to be inventive. Shortly afterwards, on 30 December 2019, the patentee filed substantive comments and auxiliary claim requests 1-6. During the appeal hearing on 02 September 2020 [see note 4, below], the patentee requested that the patent be maintained on the basis of auxiliary request 6. The opponent argued that the request was late-filed and should not be admitted.
Findings of the Board of Appeal in T 1439/16
The Board of Appeal agreed that auxiliary request 6 had been filed late because the patentee’s complete case should have been submitted with the reply to the grounds of appeal. However, the Board of Appeal went on to point out that amendments to a party’s case filed after the summons to oral proceedings are not to be dismissed a priori but their admittance is subject to the Board’s discretion [see note 5, below]. In addition, the Board of Appeal noted that by deleting claim 1 the patentee had not introduced new subject-matter but rather had “reduced the disputed subject-matter”, in particular the issue of added subject-matter had been resolved. Further, the Board of Appeal noted “the amendment is not at all detrimental to procedural economy, but rather in its favour”.
Thus, the Board of Appeal used its discretion to admit the auxiliary request into proceedings.
The admission of the auxiliary request caused the opponent to raise a new added subject-matter argument against the subject of claim 7 of this request (which corresponded to claim 8 of the patent as maintained by the opposition division).
The Board of Appeal highlighted that the statement of grounds of appeal shall contain a party’s complete case [see note 6, below]. In addition, they pointed out that it was the choice of the opponent to raise an added subject-matter objection to only claim 1 of the patent as maintained.
The Board of Appeal noted that submitting the added subject-matter objection for the first time at oral proceedings is detrimental to procedural economy because the opponent had been aware of the claim request for some six months before oral proceedings and, thus, could have submitted the objection well before oral proceedings to allow both the patentee and the Board of Appeal to prepare for discussion. The Board of Appeal considered that it was a “surprising attack”. For procedural fairness and the right to be heard, the patentee needed an opportunity to react to the new objection (for example, by filing new auxiliary claim requests) and this would delay proceedings.
The Board of Appeal used its discretion [see note 7, below] to not admit the objection of added subject-matter into the proceedings.
T 1480/16 [see note 8, below] is an appeal decision concerning the decision of the opposition division to maintain EP2455267 in an amended form. In this case, the Board of Appeal considered whether the deletion of one category of claims in auxiliary request 5 compared to auxiliary request 3 would be considered as an amendment to the submission.
The patentee filed auxiliary request 5 during oral proceedings. Auxiliary request five differed from auxiliary request 3 (submitted earlier during the appeal process) in that the method claims were deleted and the word “simultaneously” was included in claim 1.
The opponent argued that auxiliary request 5 should not be admitted as it was late-filed.
Findings of the Board of Appeal in T 1480/16
The Board of Appeal held that the deletion of method claims in auxiliary request 5 compared to auxiliary request 3 was not a change and the addition of the term “simultaneously” explicitly expresses what the opposition division had implicitly inferred and did not require further restriction. The Board of Appeal noted that the discussion of novelty and inventive step would be the same. Thus, the Board of Appeal used its discretion to admit auxiliary request 5 into the proceedings.
In T 0482/19, an appeal decision concerning the decision of the opposition division to maintain EP2649896 in an amended form based on auxiliary request 2, the Board of Appeal considered whether the deletion of one category of claims would necessitate the discussion of a new issue.
The patentee filed new auxiliary requests 12 and 13 one month before oral proceedings. Auxiliary request 12 was based on the claims as granted and auxiliary request 13 was based on the claims allowed during opposition proceedings. In both of these requests, the product claims were deleted but the method of manufacturing claims was retained. The patentee argued that the new requests were not an amendment to the case because they contained no new subject-matter and thus Article 13 RPBA was not applicable. The opponents had not raised any objections to the method claims but had only objected to the product claims.
The opponents asserted that auxiliary requests 12 and 13 should not be admitted as they were late-filed.
Findings of the Board of Appeal in T 0482/19
The Board of Appeal pointed out that this case differed from T 1480/16. The Board of Appeal noted that in both auxiliary requests 12 and 13 of T 0482/19 the method claims were more limited than the deleted product claims. The Board of Appeal observed that these additional features of the method claims had not featured in the appeal procedure because the submissions of all parties had related to the product claims that had been present in all of the previous requests on file. The Board of Appeal held that the additional features of the method claims required consideration (in particular in relation to the issue of inventive step) and this would result in a substantial and unexpected change in the discussion at oral proceedings. The Board of Appeal noted that the patentee had not provided any reasons why the requests were filed at such a late stage of the procedure.
The Board of Appeal held that the new auxiliary requests constituted an amendment of the patentee’s case and they were inadmissible.
Practical considerations in view of T 1439/16, T 1480/16 and T 0482/19
It has become increasingly important for parties to file all relevant requests, facts objections and/or evidence in first instance proceedings and for the appeal (or reply to an appeal) to contain a party’s complete case.
Consideration of “procedural economy” is one of the factors taken into account by the Board of Appeal when deciding to use its discretion to allow an amendment to a case.
Amendments to a case, such as claim deletions, which reduce the disputed subject-matter and/or resolve a disputed issue are likely to be admitted (even if requested at a late stage in the appeal process) because they favour procedural economy. In particular, it seems that amendments to a case in which claims are deleted will be admitted if no additional discussion is required of issues (for example, the discussion of an issue such as novelty and/or inventive step would be the same). However, if the deletion of claims necessitates the discussion of a new issue or requires substantial additional discussion for the remaining claims (for example, the discussion of an issue such as novelty and/or inventive step is not the same because of the presence of an additional feature in the remaining claims) then the amendment to the case is unlikely to be admitted - especially if filed at a late stage in the proceedings.
Further, amendments to a case (such as introducing a new attack) which means that a respondent should be given the opportunity to react (such as filing additional claim requests) are unlikely to be admitted because they are detrimental to procedural economy – especially if submitted at a late stage in appeal proceedings (such as during oral proceedings).
Regardless of the type of amendment, if you need to amend your case then the amendment should be filed (together with supporting reasoning) as soon as possible in the appeal process in order to improve your chances of the amendment to your case being admitted.