CABINET CHAILLOT

T2795/19

The applicant lodged an appeal against the decision of the examining division refusing European patent application No. 12002842.8.
On 5 October 2022 oral proceedings took place, during which the appellant filed amended claims according to a new main request and declared that this request should substitute all former requests.
According to Article 13(2) RPBA 2020, "[a]ny 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".
It is settled case law that "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 may be acknowledged where, for instance, the filing of new requests constitutes a legitimate and timely response to a new objection raised by the board in its communication under Article 15(1) RPBA 2020.
However, the board emphasizes that Article 13(2) RPBA 2020 requires the appellant not only to explain why the case involves exceptional circumstances but also to explain why its amendment, in terms of both content and timing, is a justified response to these circumstances. In particular, where an appellant seeks to amend its case at a very late stage in the proceedings, the cogent reasons referred to in Article 13(2) RPBA 2020 should include reasons why it has not been possible to file such an amendment earlier.
In the present case, the board accepts that the amendments in claim 1 of the new main request aim at overcoming the objections under Article 84 EPC raised for the first time by the board in its preliminary opinion. However, the new main request was filed only during the oral proceedings before the board, hence at the latest possible stage in the procedure. In view of the fact that the preliminary opinion had been issued already on 17 December 2021, the board is unable to see any reason why this request could not have been filed earlier. Nor did the appellant submit any such reason. Consequently, the board concludes that there are no exceptional circumstances within the meaning of Article 13(2) RPBA 2020.
Moreover, when exercising its discretion under Article 13(2) RPBA 2020, the board may also rely on criteria as set out in Article 13(1) RPBA 2020.
Under Article 13(1), fourth sentence, RPBA 2020, "[t]he 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 admissibly raised by another party in the appeal proceedings or 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 another party in the appeal proceedings or by the Board and does not give rise to new objections".
In amended claim 1 of the new main request, instead of "a mass flow rate" and "a fluid viscosity" now "an average mass flow" and "an average fluid viscosity" are measured. The appellant argued that these amendments were disclosed in the application as originally filed.
The board is not convinced by the appellant's arguments. The amendments are not directly and unambiguously derivable from the description. The board is therefore of the opinion that the amendments in claim 1 of the new main request give rise to a new objection under Article 123(2) EPC.
Consequently, also for that reason the board decided not to admit the new main request into the proceedings.
As no admitted requests are on file, the appeal is dismissed.

 

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