Of Molecules & Medicine: New Rules of Procedure of the Boards of Appeal

By Iain Robertson, Attorney

At the start of this year, new Rules of Procedure of the Boards of Appeal (RPBA 2020) came into force. These new Rules make it more difficult to have requests admitted into the Appeal proceedings. Some recent decisions from the Boards of Appeal show just how difficult this can be.

T2214/15 shows how important it is to consider possible future objections when filing requests. T2214/15 was an appeal of the examining division’s decision to refuse EP09729412.8 because it did not meet the requirements of Article 84 EPC. Initially, the appellant filed a main request and auxiliary request 1 with their grounds of appeal. Later, in response to the summons to oral proceedings, auxiliary request 2 was filed. All of these requests were admitted to the proceedings.

At the oral proceedings, the Board decided that the main request and auxiliary request 1 did not meet the requirements of Article 84 EPC. Auxiliary request 2 was then discussed for the first time at the oral proceedings. The Board decided that auxiliary request 2 failed to meet the requirements of Article 84 EPC and Article 123(2) EPC. The appellant responded by filing auxiliary request 3.

The appellant argued that auxiliary request 3 should be admitted into the proceedings because it was filed in response to the objections raised against auxiliary request 2. However, the Board decided that the topics of discussion in view of auxiliary request 2 did not differ in substance from those identified in the summons. Therefore, they decided that there were no exceptional circumstances justifying the admittance of a new request as required by Article 13 (2) RPBA 2020[1], and auxiliary request 3 was not admitted to the proceedings.

Regarding the new objection under Article 123(2) EPC, the Board stated that the offending amendment was occasioned by a claim deficiency which the Board had raised in the summons, and that the appellant should be aware that all amendments will be examined for compliance with Article 123(2) EPC. Consequently, rejecting auxiliary request 2 under Article 123(2) EPC was considered to be an ordinary development of the appeal proceedings, and not an exceptional course of events that go beyond the framework of the underlying claim deficiency.

T 1188/16 is an example where it was arguably even harder to have new requests admitted. EP 2 285 323 was revoked by the opposition division for claiming subject-matter which extended beyond the content of the application as filed, and this decision was appealed in T 1188/16. The grounds of appeal included a main request, which contained the claims of the patent as granted, and auxiliary requests 1 and 2. The Board’s provisional opinion was that the main request contravened Article 123(2) EPC, and they questioned whether auxiliary requests 1 and 2 should be admitted into the appeal procedure. In response, a new main request was filed, based on auxiliary request 1. Claim 1 of this new main request was based on paragraph [0044] of the application as filed.

The Board decided that the patent proprietor knew at the oral proceedings before the opposition division why the claims on file were not supported by paragraph [0044] of the application as filed. Consequently, they could have filed the claims of the new main request during the oral proceedings of the opposition. The Board therefore decided that the new main request, the only request on file, should not be admitted due to Article 12(6) RPBA 2020[2]. The appellant did not file any further requests, and so their appeal was dismissed.

These decisions shows how important it is to respond to any objections as soon as possible, even during oral proceeding before the examining division or the opposition division, because the Boards might not admit any new requests which they think could have been filed earlier, even if that means no new requests are admitted during the appeal procedure at all.

[1] Article 13 (2) RPBA 2020 states:

Any amendment to a party’s appeal case made after the expiry of a period specified by the Board in a communication under Rule 100, paragraph 2, EPC or, where such a communication is not issued, after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

[2] The second sentence of Article 12(6) RPBA 2020 states:

The Board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.