T 0137/21: How The Board looked at the “exceptional circumstances” which kept the Appellant from timeously filing his auxiliary requests

Background

In T 0137/21 the decision under appeal, the decision of the ED to refuse application no. EP4172264.3 was appealed by the A for lack of inventive step under Art. 56 EPC. The key issue at hand was that the ED refused the application on grounds that the subject-matter of claim 1 lacked inventive step over D1. 

The Appeal

The decision of the ED to refuse the EP4172264.3 was appealed by the A. In the statement setting out the grounds of appeal dated 7 December 2020, the A, requested that the refusal on the ED be set aside and the application be granted on basis of the annexed main request, or alternatively on the basis of any one of the annexed first to fourth auxiliary request. 

On 3 January 2022, The Board issued summons to oral proceedings, to be held on 13 September 2022. In the communication accompanying the summons, the Board agreed with the ED’s assessment that none of the main request or auxiliary requests contained subject matter that could be considered novel and/or inventive in light of cited prior art D1. 

On 7 September 2022, the unrepresented A requested postponement of the oral proceedings, citing health reasons, and filed another auxiliary request. The Board cancelled the oral proceedings and subsequently, on 23 January 2024, issued a second summons for oral proceedings to be held on 18 April 2024.  In the communication accompanying the second summons, The Board indicated a reluctance to admit the newly filed auxiliary request under Art. 13(2) RBPA. On 10 April 2024, the A again requested postponement due to health reasons. The Board then postponed the oral proceedings to 13 November 2024. In a communication dated 15 April 2024, The Board pointed out that the appeal case has been pending since 2020 and that oral proceedings had already been postponed twice. During this time, the A could and should have appointed a representative, especially given the chronic nature of his illness. On 15 October 2024, The Board was informed by a letter that the A had appointed a representative. With a letter dated 17 October 2024, the A filed fifth to seventh auxiliary requests, through his representative. 

Decision of the Board (of Appeal)

The Board agreed with the finding of the ED regarding the inventive step and based hereon, The Board dismissed the main request. Concerning auxiliary requests 1 to 4, The Board stated that none of these requests provided inventive technical contributions. 

The fifth to seventh auxiliary requests were filed after the second communication pursuant to Art. 15(1) RPBA. Under Art. 13(2) RPBA, amendments which are filed after the notification of the communication under Art. 15(1) RPBA, shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned. 

The A argued that the exceptional circumstances in this case, being his poor health, justified the admittance of the fifth to seventh auxiliary requests. He stated that his illness severely impacted his ability to full partake in the proceedings and timely prepare and submit the auxiliary requests. Since his illness was a matter beyond his control, it would be unjust to penalize him for the unavoidable delay. The A also argued under Art. 113(1) EPC that he had a right to be heard. Due to the illness compromising his ability to present his case fully and in a timely manner, he was only now able, with the help of the representative to submit auxiliary requests 5 to 7, which have been prepared to specifically address the issues raised by The Board in earlier communications. The A argued that, in the interests of fairness and achieving a just outcome, The Board should consider the auxiliary requests on their merits.

In fact, the A’s health issues already existed during the proceedings before the ED. To ensure fairness to the A, The Board postponed the oral proceedings twice. Each time, the new date was set far enough into the future so that the A had the opportunity to appoint a representative. Yet, the A only appointed a representative one month before the oral proceedings were to take place and it was only then that the new representative filed auxiliary requests 5 to 7. 

Several decisions have held that The Board has discretion to admit amendments at a late stage, even if no exceptional circumstances exist. The Board may consider the more general criteria set out in Art. 13(1) RPBA, namely the current state of the proceedings, the suitability of the amendment to resolve the issues 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. The A argued that the complexity of requests 5 to 7 were low and would not impose an undue burden on The Board. The Board did not agree that the complexity was so low that the requests could be dealt with without delay and stated that additionally, the requests introduce new issues. The Board subsequently stated that none of requests 5 to 7 were admissible and since no allowable request was present, the appeal was dismissed. 

Summary written by the NLO EPO Case Law Team