Brief outline of the case
AR1c was filed in response to the board’s communication pursuant to Art 15(1) RPBA20. Hence, its admittance is in principle subject to Art 13(2) RPBA20.
The single method claim of this request is identical to method claim 1 of AR 1b pending during the opposition proceedings and “maintained” without further substantiation.
More specifically, new claim 1 no longer requires that the RRC message is an RRC Connection Reconfiguration message but now includes feature (d1), i.e. requiring that it is the “eNode B” that indicates via an RRC message whether to use the second or first buffer size level.
AR 1c was not admitted by the board under Art 13(2) RPBA20.
As there was no allowable set of claims on file, the patent was revoked.
Deleted claims
The other claims of auxiliary request 1b, i.e. claims 2 to 12, among them apparatus claims including features not included in method claim 1, were deleted.
The board’s position
For the board, the crucial issue is therefore whether the filing of the claim set according to AR 1c constitutes an “amendment” of the proprietor’s appeal case within the meaning of Art 12(4) in conjunction with Art 12(2) RPBA20.
In other words, the first question to be answered is whether the board has any discretion at all to disregard that claim request under Art 13(2) RPBA20
Deletion of claims
The board was aware of the current divergence in the jurisprudence of the Boards of Appeal as to whether or not deletions of claims in certain claim requests amount to such an “amendment”.
First line of case law
One strand of jurisprudence holds that, if the deletions of claims in a previously filed claim request do not change the “factual and legal framework of the case” or “the subject of the discussions” and does not lead to a “re-weighting of the subject of the proceedings”, such deletions are not to be considered an “amendment” within the meaning of Art 12(4) RPBA20
Here the board refereed to T 1480/16-3.2.01, T 1857/19-3.3.05 or T 2201/19-3.5.05; also labelled “non-applicability approach”.
Second line of case law
According to another strand of jurisprudence, any deletion of claims from a previous set of claims amounts to an “amendment” of the applicant’s or proprietor’s appeal case and thus confers discretion to a board to disregard the claim request at issue. This discretion has then to be exercised in a reasonable manner according to a so-called “two-step examination approach“.
Here the board referred to J 14/19-3.1.01, T 494/18-3.3.06, T 2091/18-3.2.05, T 2920/18-3.3.03.
The line of case law adopted by the board
This board endorsed the conclusions drawn by the latter line of jurisprudence on the basis of a systematic interpretation of the notion of “amendment”, mainly for the reasons indicated in the above-cited decisions.
In addition, this board held that neither from the wording of Art 12(2) RPBA20 nor from the explanatory remarks to the RPBA20 can it be deduced
- that a party’s appeal case has to be directed to the “factual and legal framework”
- or the “subject of the discussions” relating to the party’s submissions, such as claim requests, on which the decision under appeal was based,
- or that “re-weighting of the subject of the proceedings” may not take place.
This provision rather requires simply that a party’s appeal case is directed to the “requests, facts, objections, arguments and evidence on which the decision under appeal was based”.
As a consequence, the submission of AR 1c constitutes an “amendment” to the proprietor’s appeal case, and Art 13(2) RPBA20 indeed applies here.
According to Arte 13(2) RPBA20, any amendment to a party’s appeal case made 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.
Furthermore, in the application of Art 13(2) RPBA20, the criteria applicable under Art 13(1) RPBA20 may be relied on. In accordance with Art 13(1) RPBA20, “[the] Board shall exercise its discretion in view of, inter alia, the current state of the proceedings, the suitability of the amendment to resolve the issues which were […] raised by the Board, whether the amendment is detrimental to procedural economy, and, in the case of an amendment to a patent application or patent, whether the party has demonstrated that any such amendment, prima facie, overcomes the issues raised by […] the Board and does not give rise to new objections”.
In the present case, as to the reasons for this late amendment, the patent proprietor maintained and referred to the related arguments concerning previous auxiliary request 1b, and argued that there was no necessity to add more at this stage, in particular, since the opponent did not raise an objection under Art 123(2) with respect to this claim request.
However, the maintenance of the arguments related to AR 1b does not address the late-filing of AR 1c, let alone constitutes a justification for this amendment, cf. Art 13(1), first paragraph, RPBA20.
For the board, the mere lack of an objection under Art 123(2) by the opponent cannot justify such late-filing either.
The patent proprietor thus failed to provide “cogent reasons” for the belated submission of AR 1c.
Furthermore, claim 1 of AR 1c includes the feature that it is the “eNode B” that indicates whether to use the second or the first buffer size level table. The term “eNode B” or its abbreviation “eNB” appears in the application as filed solely in paragraphs [0020], [0040], [0041], [0046] and [0047].
However, none of these paragraphs discloses that added feature. Claim 12 and paragraph [0047] as filed may provide a basis for a downlink transmission of the indication which table to use, and a respective control by the network, but, contrary to the patent proprietor’s arguments, not necessarily for the “eNode B” performing this transmission. AR 1c is therefore, prima facie, not allowable under Art 123(2).
In view of the above, the board, in exercising its discretion, decided not to admit AR 1c.
Comments
As claim 1 of AR 1c was amended over claim 1 of AR1b after the communication of the board under Art 15(1) RPBA20 and that claim 1 of AR 1c was prima facie infringing Art 123(2), those reasons were good enough not to admit it under Art 13(2) RPBA20.
There has never been any doubt about the fact that an amendment of a claim following a communication has little chance to be admitted and that the conditions of Art 13(1) RPBA20 can apply to a request admissible under Art 13(2) RPBA20.
Deletion of claims
It is however noteworthy that the board found it necessary to deal with the deletion of claims in the new request and to analyse the existing case law in this matter.
Claims might have been deleted, but the actual reason for not admitting AR1c was the change in the wording of claim 1.
Why then bother to discuss deleted claims?
For the first line of case law see further T 2243/18, reasons 2; T 1792/19, reasons 2; T 1151/18, reasons 2.1; T 1857/19, reasons 1.1.
The second line of case law can be divided in two branches
The first branch considers that deletion of claims represents an amendment to a party’s case but at the same time found that such amended claims are admissible as they contribute to procedural economy, cf. T 2091/18, reasons 4, amended claims admitted; T 1597/16, reasons 4, amended AR VI admitted; T 1439/16, reasons 2, admitted as not detrimental to procedural economy; T 1224/15, reasons 5, admitted as objection under Art 123(2) by the respondent was late; T 908/18, reasons 1, admitted; T 682/16, reasons 5 to 8, admitted; even in T 494/18 cited by the present board a new request with deleted claims was admitted.
The second branch considers that requests comprising deleted claims are not admissible as they are simply too late. See T 1259/17 or T 482/19.
T 317/20 can be considered somehow in between the two branches as the deletion of a claim resulted in a set of claims for which features of a claim would have to be considered that thus far had not played any role in the appeal proceedings. This “would result in a substantial and unexpected change in the discussion at the oral proceedings“. On top the deletion of some claims did not overcome the objections raised under Art 123(2).
In the present case, the deletion of some claims had no influence on a prima facie problem of added matter.
T 423/18 published on 24.08.2022
The claims of AR 2 correspond to those of the main request wherein claims 1 to 7 have been deleted.
Since the claims of AR 2 are identical to claims 8 to 15 of the MR, which have been already discussed and also decided upon by the opposition division, the Board considered it appropriate not to apply its discretion under Art 12(4) RPBA07 to not admit AR 2 into the proceedings.
The file was remitted to the OD for further prosecution on the basis of AR2
https://www.epo.org/law-practice/case-law-appeals/recent/t180423eu1.html
Necessity of a decision of the EBA
In view of the clearly diverging case law deciding whether deletion of claims represents an amendment to a party’s case and is admissible or not in appeal should be subject to a referral to the EBA.
As already explained in previous publications, it is difficult to consider that deletion of claims does not improve procedural efficiency. Beside always possible exceptions, such requests with deleted claims should in principle be admissible even if they represent an amendment of a party’s case.
The minimum condition is that such requests do not give raise to further objections, cf. Art 13(1) RPBA20.
https://www.epo.org/law-practice/case-law-appeals/recent/t172360eu1.html
Comments
5 replies on “T 2360/17 – Deletion of claims – The saga continues”
Dear Daniel, thank you for posting. I have two questions in this regard, and maybe you can comment a bit when you have time.
1. I do not quite understand the reasoning of the board I respect of assessing “amendment” to appeal case. Is this feature (d1) considered in this context or not? If not, then AR1c is maintained in the opposition proceeding, and therefore according to Art 12(4) RPBA 20, it should not be considered an amendment, as the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal.
(2) want is the relation between Art 12(3) and Art 12(4) RPBA 20? Not complying Art 12(3) but complying Art 12(4) would not be seen as an amendment?
Dear Dicker Pandasays:
The OD decided maintenance on the basis of AR2a which automatically became the MR when the proprietor withdrew his appeal.
The OD never decided to maintain according to AR1c.
AR2b can also be considered as amended as it contains the further feature “wherein the first maximum buffer size value is 150 Kbytes”. Art 12(4) RPBA20 applies in theory to AR2b as it comprises an amendment which was not contained in the request decided upon by the OD.
In its communication under Art 15(1) RPBA20 the board considered some of the features in (d) of the MR (=AR2a as maintained) and of AR2b to infringe Art 123(2).
As the MR and AR2b were infringing Art 123(2), the board did not bother to consider the addition of a feature in AR2b as an amendment. The objection under Art 123(2) was much stronger as it relied on the substance and not on formal aspects.
In reply to this objection the applicant filed AR1c with (d1) in order to overcome the objection under Art 123(2). Some features were deleted as infringing Art 123(2) (wherein the RRC message is an RRCConnectionReconfiguration message), other were added (the eNode B, eNB, a Medium Access Control Control Element, in the following referred to as MAC Control Element).
Those new features (d1) are a clear amendment with respect to the basis of the decision that is the MR and have been filed after the summons. Hence, its admittance is subject to Art 13(2) RPBA20.
It happens that the wording of claim 1 of AR1c is identical to method claim 1 of AR 1b pending during the opposition proceedings and “maintained” without further substantiation.
If lower ranking ARs have not been discussed before the OD, the proprietor can resubmit them in appeal, provided they had been substantiated in opposition. This was manifestly not the case here.
As there was no substantiation it cannot be said that the party has demonstrated that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal.
In the absence of substantiation of the request, merely filing it at the outset of appeal and adding a substantiation only in appeal would also have represented an amendment under Art 12(4) RPBA20!
The new features in (d1) clearly represent an amendment to the party’s case and this amendment is subject to the third level of convergence by virtue of Art 13(2) RPBA20. That on top of this amendment some claims were deleted appears totally irrelevant. All the considerations of the board with respect of deletion of the claims appear superfluous.
Even if an amendment can be admissible under Art 13(2) RPBA20, it can still be subject to Art 13(1) RPBA20 representing the second level of convergence. An amendment is inter alia not admissible under Art 13(1) if it gives rise to new objections.
Here the board did not bother to apply Art 13(1) RPBA20 and simply did not admit AR1c under Art 13(2) RPBA.
Art 12(3) RPBA20 merely requires that all the case of a party (documents, requests, and argumentation) is filed at the outset of the appeal procedure. This is to avoid salami tactics by the parties filing new documents, requests, and argumentation depending the way the appeal progresses.
Art 12(4) is there to define an amendment to a party’s case with respect of what has been decided by the first instance deciding body. Parts of a party’s appeal case, which are not directed to requests, facts, etc. on which the decision under appeal was based are regarded as an amendment. Art 12(4) represents the first level of convergence, immediately at the outset of the appeal.
According Art 12(2) RPBA20 the BA only proceeds to a judicial review of the decision of first instance so that anything which was not discussed in first instance can be considered as an amendment. Amendments are not prohibited as such, but their admissibility is subject to the discretion of the board.
Art 12(3 and 4) RPBA20 have a different finality. Art 12(3) RPBA20 requires that all the appeal case in filed at the outset of the appeal and Art 12(4) RPBA20 simply says that all what has been filed at the outset is not necessarily taken into account by the board. If part of what is filed at the outset of the appeal represents an amendment, the board has the discretion not to admit it.
In my humble opinion it does thus not appear possible not to comply with Art 12(3) RPBA20 but to comply with Art 12(4) RPBA20.
I hope the present explanation are clear enough.
Dear Daniel, thank you for your very detailed reply. Now I understand the decision.
The reason why I am confused with regard to Art. 12(3) RPBA20 is that it seems the initial submission by the appellant does not limit the outset of appeal case covered by Art. 12(2) RPBA20. For example by filing the Appeal, the appellant fails to include some arguments which are maintained in opposition leading to the contested decision. Then if the appellant re-submits these arguments in the later stage of Appeal, said belated arguments would not be seen as an amendment, whereby the board would have no discretion not to admit it. Is that correct?
I came accross this decision T 0100/18 which partially cited as follows.
“Da jedoch sein Inhalt nicht über die Anträge, Tatsachen, Argumente und Beweismittel hinausgeht, die der angefochtenen Entscheidung zugrunde liegen, erfüllt das dortige Vorbringen die Erfordernisse nach Artikel 12(2) VOBK und ist auf das vorrangige Ziel des Beschwerdeverfahrens, nämlich die gerichtliche Überprüfung der angefochtenen Entscheidung, gerichtet. Es handelt sich bei dem im Schreiben vom 18. August 2020 enthaltenen Vortrag somit nicht um eine Änderung des dem Verfahren zugrunde liegenden Sachverhalts. Der von der Beschwerdeführerin genannte Artikel 12(3) VOBK 2020 nennt zwar Anforderungen an Beschwerdebegründung und Beschwerdeerwiderung, er definiert jedoch nicht, was als Änderung des Beschwerdevorbringens anzusehen ist.”
Dear Dicker Pandasays,
You are right to say that Art 12(3) RPBA20 does not limit the outset of appeal case covered by Art 12(2) RPBA20.
Whether the appellant or the other party fails to include some arguments in its original submission, those arguments will be clearly belated.
The arguments raised in opposition have a priori no relevance in appeal procedure as in the meantime a decision of the OD was issued. The arguments raised in opposition can be reused, but have to be adapted to the decision taken.
References to previous submissions made before the opposition division are, not in compliance with the substantiation requirements of Art 12(3) RPBA20, or in the past Art 12(4) RPBA07. Although having been taken under the RPBA07, T 2396/17 or T 1473/18 clearly illustrate this point.
Belated arguments are to be seen as an amendment, whereby the board has discretion not to admit them.
Art 12(3) RPBA20 defines that “The statement of grounds of appeal and the reply shall contain a party’s complete appeal case. Accordingly, they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on”.
When arguments are belated it cannot be said that the statement of grounds of appeal and the reply contains a party’s complete appeal case.
According to T 1914/18, the Boards have no discretion on the admissibility of belated arguments which are based on facts and evidence already in the proceedings.
This is different from the present situation and should not be confused as T 1914/12 accepts that as long as the original arguments used are merely further developed, they are admissible and are not considered as a “new” line of argumentation.
In order for T 1914/12 to be applicable, proper arguments have to be on file and it therefore cannot be applied when there are originally no arguments on file.
This was for instance the case in T 100/18.
In T 100/18, the situation was as follows:
In reply to the appeal of the opponent, the proprietor filed a reply (02.07.2018) without any argument of substance. The proprietor simply requested dismissal of the appeal and maintenance as decided by the OD.
The reply in substance from the proprietor came only after (18.08.2020) the board had issued summons to OP (28.04.2020).
It is only in this letter that the respondent/proprietor explained why in his opinion the appeal should be dismissed.
Art 12(1,c) RPBA20 defines the content of the appeal file and mentions expressis verbis that the reply to the appeal is part of the appeal file.
The reply of 02.07.2018 in which the proprietor simply requested the appeal to be dismissed corresponds to the aim of Art 12(2) RPBA20, but nothing more.
My difficulty starts when the board claims that the letter of 18.08.2020 does not represent a change in the proprietor’s case.
If going from a purely formal request to dismiss the appeal to filing the substantiation of the request, this even after receipt of the summons, does not represent a change, then I am a loss to define what could be understood as a change.
According to T 1732/10 the effective date at which requests are filed is the date when their substantiation is filed.
In T 1732/10 the proprietor did not even reply to the appeal and waited shortly before the OP to file requests and their substantiation.
The catchword of T 1732/10 says inter alia:
Not reacting in substance to the appeal of the opponent, but waiting for the Board’s preliminary opinion before any substantive reaction is filed, is regarded as an abuse of procedure. It is contrary to the equal distribution of rights and obligations upon both sides in inter-partes proceedings and to the principle that both sides should set out their complete case at the outset of the proceedings. Both principles are clearly established by the Rules of Procedure of the Boards of Appeal.
In the present case, the proprietor did not react in substance to the opponent’s appeal and waited until he had received the summons to react in substance.
This behaviour, like in T 100/18, is against all the reasons why the RPBA07 and 20 have been set up.
The opponent’s objection that the reply to appeal was not in accordance with Art 12(3) RPBA20 was thus totally justified.
It is difficult to understand the position of the board in this respect.
The letter of 18.08.2020 represent a massive change and should have been queried under the third level of convergence pursuant Art 13(2) RPBA20.
Should the reply in substance have been filed before the summons, it would still represent a change of the proprietor’s case and it should have been queried under the second level of convergence pursuant Art 13(1) RPBA20.
The board is right that Art 12(3) RPBA20does not define what an amendment is, as this is done, for the first level of convergence, in Art 12(4) RPBA.
Art 12(3) RPBA20 defines that “The statement of grounds of appeal and the reply shall contain a party’s complete appeal case. Accordingly, they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the requests, facts, objections, arguments and evidence relied on”.
It is difficult to consider that, in its brevity, the reply to the appeal contained the party’s complete case and defined the reasons why the decision of the OD was to be confirmed.
As explained above when the reply of the proprietor was filed it was not in accordance with Art 12(3) RPBA20 as there was no reason given why the decision of the OD should be upheld.
What is irritating in T 100/18 is that the board queried the submission of two photographs during OP under Art 13(2) RPBA20.
It is the whole line of argumentation which had to be queried under Art 13(2) RPBA20 and not merely two photographs.
Following T 1732/10, the request of the proprietor should not have been admitted in the procedure and the patent should have been revoked.
I thus understand your confusion, and I would simply say that it is best to ignore T 100/18.
I was quite long, but I hope to have been clear enough and not have created further confusion.
Dear Daniel, thank you very much. Now I understand the whole story much better!
After I analyze the Art. 13(1) RPBA20, I think the “amendment” defined in Art. 13(1) RPBA20 is a broader concept than “amendment” defined in Art. 12(4) EPC.
Art. 13(1) RPBA20 reads as follows:
“Any amendment to a party’s appeal case after it has filed its grounds of appeal or
reply is subject to the party’s justification for its amendment and may be admitted only at
the discretion of the Board.
Article 12, paragraphs 4 to 6, shall apply mutatis mutandis.
…………………”.
Thus, if the “amendment” defined in Art. 13(1) RPBA20 is the same with “amendment” defined in Art. 12(4) EPC, then the sentence “Article 12, paragraphs 4 to 6, shall apply mutatis mutandis” is superfluous, as it should direkt refer to Art. 12 in this case.
Thus, the “amendment” in Art. 13(1) and (2) RPBA20 should be given its general meaning, i.e. any amendment which goes beyond the outset of the case established after initial filing.
Art 12(3) RPBA20 does not define what an amendment, but it does not mean that not complying Art 12(3) would not be seen as an amendment.
You are right, i should simplye ignore T 100/18.