First landmark decisions regarding Art. 13 (2) of the Rules of Procedure of the Boards of Appeal (RPBA) of the European Patent Office (EPO)
The new Rules of Procedure of the Boards of Appeal (RPBA) of the European Patent Office (EPO) have been in force since January 1, 2020. One of the major changes of these new Rules of Procedure is regulated in Article 13 (2) RPBA of the EPO, which stipulates that after a time limit set by the Board or after submitting the summons to attend the oral hearing, amendments to a party’s appeal case shall, in principle, not be taken into account. This concerns the so-called third stage of convergence and applies to all summonses to attend an oral hearing issued after January 1, 2020. According to Article 13 (2) RPBA, such amendments can only be admitted by way of exception due to “exceptional circumstances”, which have been justified with “cogent reasons” by the party concerned.
In the meantime, several decisions of Boards of Appeal have been rendered, which give substance to this legal concept of “cogent reasons”. For example, decision T 2486/16 provides that it is not sufficient to summarize the “exceptional circumstances”, but it must be clearly explained how these circumstances prevented the party from introducing relevant arguments or documents or requests in the proceedings at an earlier stage. In decision T 2271/18, even a submission of new claims after the summons was rejected, even though new objections were introduced in the appeal proceedings in the summons by the Board of Appeal and the patent proprietor filed new auxiliary claims in response to these newly presented grounds, attempting to overcome these new objections of the Board of Appeal. In this case, however, it was also decided that the newly filed auxiliary requests did not satisfy the requirement of clarity and therefore were not admitted as prima facie relevant.
However, despite the very strict approach of the Boards of Appeal, there are now also two example cases in which Boards of Appeal allowed new submissions after the summons to attend the oral hearing were dispatched, despite Article 13(2) RPBA. For example, in the appeal proceeding T 1756/16, a new auxiliary request 1 was admitted, taking into account such clarity objections of the Board of Appeal, which were communicated to the patent proprietor by the Board of Appeal. These objections were addressed the first time by the Board of Appeal in the summons. According to the Board of Appeal, the objection addressed minor formal errors, which could be easily remedied, in particular in view of granted (dependent) claim 2. Since the amendments concerns a subject matter of an already granted claim, against which no clarity objections could be raised, the made amendments were considered admissible.
In decision T 1294/16, auxiliary requests were considered, which were a reaction to the content of a new document D7, which was communicated by the Board of Appeal for the first time in the summons.
Considering above, it can be noted that in both cases amendments were still admitted after the summons to attend the oral hearing were dispatched, since these amendments were a reaction to the content of the preliminary opinion of the Board of Appeal and new objections were raised by the Board of Appeal.
Although the submission of new arguments or facts after the issuance of the summons to attend the oral hearing were dispatched in appeal proceedings at the EPO will generally be rejected in the future, there appear to be certain exceptional cases, in which amendments could be taken into account. A necessary condition could be that the amendments are a reaction to new objections introduced by the Board of Appeal in the summons to attend the oral hearing.
Dr. Stephan Kratz