The meaning of “admissibly raised” in Article 12(4) RPBA

Case Law | 09.02.2024

There is little case law on the application of the “admissibly raised and maintained” part of Article 12(4) of the Rules of Procedure of the Boards of Appeal (2020). HOFFMANN EITLE’S London partner Matthew Birkett was involved in the recent appeal case T 364/20, which provides clarification on this issue.

Article 12(4) RPBA (first sentence) states that “[a]ny part of a party's appeal case which does not meet the requirements in paragraph 2 is to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal.”  In T 364/20, Board 3.3.02 had to decide on the admissibility of claim requests which were filed at first instance and not withdrawn, but which were not part of the Opposition Division’s decision.  The Board provided several generally applicable conclusions.

Firstly, the Board held that claim requests filed within the term set under Rule 79(1) EPC for responding to a notice of opposition are never late-filed and, as a rule, are admissible.  However, the Board stresses that the admittance of such claim requests is not a given.  Opposition Divisions have discretion to refuse to admit claim requests filed within the Rule 79(1) term if there are “truly exceptional” circumstances, such as a high number of requests which diverge and are not fully substantiated.  This represents a divergence from the EPO’s own Guidelines for Examination, part E-VI, 2.1 of which states that “[i]f a patent proprietor replies to a notice of opposition by amending the patent, such a request for amendment cannot be considered as late-filed and has to be admitted into the proceedings.”

Secondly, the Board held that claim requests filed after the expiry of the term for responding to a notice of opposition but before the deadline under Rule 116(1) EPC are not necessarily timely filed.  According to the Board, it depends on whether the claim requests were filed “in direct and timely response to a change to the subject of the proceedings introduced by the opponent or the opposition division”.  If this is not the case, there is a risk the claim requests will be found to be late-filed.  This is significant because it means patentees cannot assume that claim requests filed before the Rule 116(1) deadline are timely filed and therefore admissible.  Again, there is a divergence from the Guidelines for Examination.  Part E-VI, 2.2.2 of the Guidelines states that “[a]mendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed.”

Thirdly, the Board held that if claim requests filed before the Rule 116(1) deadline are considered late-filed under the above-mentioned assessment, the Opposition Division, and therefore also the Board, has discretion regarding admittance of the claim requests.  Relevant criteria to consider include those set out in the final sentence of Article 12(4) RPBA, namely the complexity of the amendments, procedural economy, and the suitability of the amendments to overcome attacks without creating new issues.  However, the Board stresses that these criteria should not be applied as strictly as for amendments filed during the appeal procedure, bearing in mind that the first instance is an administrative procedure.  This aspect of the decision softens the impact of the Board’s strict approach to the assessment of whether claim requests were late-filed.

In the case in suit, some of the claim requests were filed in response to the notice of opposition, and the Board considered that these claim requests were timely filed and no truly exceptional circumstances existed which would prevent their admittance.  The Board concluded that the remaining claim requests were late-filed, even though they were filed by the Rule 116(1) deadline, since the Patentee did not explain why they were not filed earlier and the only change in the subject of the proceedings was introduced by the Patentee.  Nonetheless, the Board admitted these claim requests on the basis that there was more than one inventive step attack and the amendments were mainly based on the dependent claims as granted.

T 364/20 is also notable for its discussion of the public availability of university theses in Finland.  The Board held that the default position is that theses are publicly available in Finland immediately after their approval.  A consequence of this is that a Finnish master’s thesis cited in our notice of opposition was admitted as prior art and all the Patentee's claim requests were found to lack an inventive step over the thesis.