The new art. 13(2) RPBA 2020
The new art. 13(2) RPBA 2020
On January 1st of 2020 the new Rules of Procedure of the Boards of Appeal (RPBA) of the European Patent Office went into force. I will refer to these new rules as RPBA 2020 in the below. The RPBA 2020 replace the previous RPBA 2007. The new RPBA 2020 introduce a “three-step” test in which it becomes more and more difficult to amend one’s case when the case progresses further. The first test, of Art. 12(1) RPBA 2020, deals with the submission of the grounds of appeal and limits the room for new arguments not previously brought or upheld. The more stringent second test, of Art. 13(1) RPBA 2020, deals with the period after the grounds of appeal or reply are filed. Any amendments at that stage may only be admitted at the discretion of the Board. The most stringent third test is laid down by new Art. 13(2) RPBA 2020, which states that any amendments to a party’s appeal case after the issuing of summons to oral proceedings shall in principle not be taken into account.
The first decision that applies new rule 13(2) RPBA 2020 has now been published in case T953/16. Although it is too soon to draw a conclusion from this single case, it is nevertheless worthwhile to compare the “old regime” with the “new regime”.

OLD REGIME, RPBA 2007
For appeal cases in which the oral proceedings took place in 2020 but for which summons were already issued in 2019, Art. 13(2) RPBA 2020 is not yet applicable (as confirmed in many decisions). Art. 13(1) RPBA 2020 is however applicable to any amendments made to a case in 2020, in addition to Art. 13 RPBA 2007. This is explained quite well in e.g. T32/16, reason 1.1.2.

In some cases this has meant that the Board allowed a patentee / applicant to file an auxiliary request as late as during the oral proceedings. If the auxiliary request resolved all issues at stake, it would generally be accepted. See e.g. T1471/16, T388/16 and the already-mentioned T32/16.
However, if the auxiliary request filed during the oral proceedings did not resolve all issues, it would be considered but no second opportunity would be given to file further auxiliary requests. See e.g. T164/16, reason 2.6, where a new auxiliary request was filed at the oral proceedings, which was considered but not allowed as it still suffered from an unallowable amendment under Art. 123(2) EPC.

NEW REGIME, RPBA 2020
In the case T953/16, reason 3.1, a new auxiliary request was filed after receiving the summons and the preliminary opinion of the Board, in response to said preliminary opinion. The auxiliary request was not taken into account under Art. 13(2) RPBA 2020. As to the why, the reason for not taking the auxiliary request into account was not the mere fact that it was filed too late in the proceedings. In its preliminary opinion, the Board found a lack of clarity as well as lack of inventive step. In its analysis of inventive step, one possible claim interpretation was assumed in view of the clarity objection. The filed auxiliary request addressed only the clarity issue but not the lack of inventive step. As such, although the auxiliary request might have been clear, it could not address all the outstanding issues raised by the board and was not taken into account.
It would be very interesting to learn how the boards of appeal would apply the new Art. 13(2) RPBA 2020 when an auxiliary request does address all outstanding issues, but such a decision has not been published yet.

CLOSING REMARKS
Importantly, the new article 13(2) RPBA 2020 applies to cases in which summons to oral proceedings are received after 1 January 2020 and is not restricted to new cases appealed after said date. Knowing that there is quite a backlog at the Boards of Appeal, this means that there will be many cases which were started under the “old regime” and will be decided upon under the “new regime”.

It remains to be seen how strict this new Article 13(2) RPBA 2020 will be interpreted, and whether there will be different interpretations by different Boards of Appeal. For opponents, a strict interpretation would mean that no new arguments can be brought forward after the summons to oral proceedings are received. Not in reply to the preliminary opinion of the Board of Appeal, and also not when the opinion deviates from the decision of the opposition division. For patentees / applicants, a strict interpretation would mean that no new auxiliary requests can be filed after the summons to oral proceedings are received. Not in reply to the preliminary opinion of the Board of Appeal, and also not when this opinion deviates from the decision of the opposition division.