4.3. First level of the convergent approach – submissions in the grounds of appeal and the reply – Article 12(3) to (6) RPBA 2020
In J 12/18 the Legal Board applied the criteria of Art. 12(6) RPBA 2020 at the second level of the convergent approach. The appellant (applicant) presented for the first time submissions concerning the protection of its legitimate expectations during the oral proceedings. The Legal Board exercised its discretion under Art. 12(4) RPBA 2020 and Art. 12(6) RPBA 2020 and Art. 13(1) RPBA 2020 not to admit the new submissions; the appellant could and should have presented the facts that formed the basis for the alleged protection of legitimate expectations earlier in the proceedings. The appellant argued that it had relied on an EPO communication of 10 August 2016 issued in the parallel case J 14/18. However, the Legal Board observed that if the appellant had really trusted the content of this communication, it would have been aware of this fact from the moment of taking note of that information. The Legal Board also considered that the new objection would require the assessment of several issues (causal link between the erroneous information in another case and the reaction of the appellant, requirement of proof thereof, reasonableness of the appellant's reaction) and that this would be detrimental to procedural economy. Moreover, the objection would introduce a completely new aspect on which the assessment and the reasoning in the appealed decision were not focused. The Legal Board further underlined that a party had to present the complete case already with the statement of grounds of appeal (Art. 12(3) RPBA 2020), which required a complete preparation considering all the relevant documents that were available. See also the parallel case J 3/20.
In T 1188/16 the board, applying Art. 13(1) RPBA 2020 and Art. 12(6) RPBA 2020, came to the conclusion that the request of the appellant (proprietor) should have been filed in the first-instance proceedings. At the latest during the oral proceedings before the opposition division, the appellant, which had already been aware of a general objection regarding an intermediate generalisation, had received an unambiguous indication which features were missing from the claim and thus been in a position then to file requests including the omitted features.
In T 81/20 new objections under Art. 100(c) EPC were raised in the statement of grounds of appeal. The board considered that the appellant (opponent) could and should have submitted these objections already in the first-instance proceedings. The board noted that appellant had not set out any circumstances which would justify the admittance of the new objections (and the board could not see any). In view of these considerations, the need for procedural economy and the fact that these objections appeared prima facie not to prejudice maintenance of the patent, the board, exercising its discretion under Art. 12(2) RPBA 2020, Art. 12(4) RPBA 2020 and Art. 12(6) RPBA 2020, did not admit them into the proceedings.
In T 1456/20 the board similarly concluded that auxiliary request 7 (which corresponded to one of the auxiliary requests filed with the reply) should already have been submitted in the opposition proceedings. The novelty objection it was designed to overcome had already been addressed at the oral proceedings before the opposition division but the patent proprietor had decided at the time to limit the claimed subject-matter in a certain way and thereby deliberately foregone an examination of subject-matter now reintroduced in auxiliary request 7. The board held that reintroducing this subject-matter was at odds with the purpose of appeal proceedings referred to in Art. 12(2) RPBA 2020. It could see no circumstances that might justify a different conclusion.
In T 847/20 the board held that the auxiliary requests at issue, filed for the first time with the statement of grounds of appeal, should have been filed in the proceedings before the opposition division. The board could not find any circumstances which justified their admittance. The board noted that the objection which the appellant (patent proprietor) intended to address had already been raised in the notice of opposition. Although the opinion of the opposition division had changed in the course of the proceedings, the appellant had had several opportunities to address this objection by filing new requests and had filed several requests during oral proceedings to this end. The board could not see any valid reason that would justify the filing of further requests to address this very same issue at the appeal stage. The general explanation that the appellant sought to address the reasoning of the opposition division in its written decision was not considered to be specific enough to justify the admittance of the requests at the appeal stage.
- Annual report: case law 2022
- Summaries of decisions in the language of the proceedings