Late filed requests – how many auxiliary requests must we file?

When the current version of the Rules of Procedure of the Boards of Appeal came into force in 2020, it fundamentally changed how opposition proceedings had to be handled. Previously, there were no regulations corresponding to the new Article 12(2) RPBA which states: “In view of the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a partyꞌs appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based”. Instead appeal proceedings in opposition were generally regarded as a second chance. It was not uncommon for entirely new prior art to be cited and/or entirely new requests to be filed on appeal. Some attorneys even considered the proceedings before the Opposition Division to only be relevant for deciding who would be paying the appeal fee.

Over time, the Boards of Appeal have moved towards the view that the appeal process is less a second chance to freely argue the merits of the case, and more a forum for reviewing the merits of the first instance decision. Well before the new rules came into force, it sometimes happened that a party was not allowed to file new requests at a late stage. In T 0074/06, the Board considered the method claims as granted to fulfil the requirements of the EPC, but no request that simply removed the apparatus claims had been filed before the oral proceedings. When the proprietor attempted to file such a request (auxiliary request Vb) during the oral proceedings, the Board decided not to admit it. The Board argued that “The potential lack of patentability of the apparatus claims which may have prompted the filing of the auxiliary request Vb was known to the respondent from the beginning of the appeal proceedings indeed even from the opposition proceedings. For filing this auxiliary request the respondent thus waited [until] the oral proceedings, more precisely the board’s announcement that the subject-matter of the apparatus claims according to the main request and the auxiliary requests II, IV and V was not patentable. He did not provide any proper justification for such a late filing. The claims of auxiliary request Vb correspond to the granted method claims 1 to 9 with granted apparatus claims 10 to 19 deleted. It is observed that the respondent had already submitted five auxiliary requests VI to X, i.e. a not inconsiderable number of auxiliary requests having only method claims. It goes without saying that this auxiliary request Vb was not the proprietor’s “last chance” to get its patent maintained”. The proprietor therefore had to revert to method claims according to one of the previously filed requests, which were considerably more limited than the method claims as granted.

As anyone who has tried to defend an opposed patent knows, it is almost impossible to think of all fall-back positions which could potentially turn out to be needed already at the time of responding to a notice of opposition. It is very difficult to imagine all the discussions that could potentially come up at a later stage during the opposition proceedings, let alone during appeal. However, case law after the introduction of the new Article 12(2) RPBA suggests that all potential requests that could be needed at any point during opposition or appeal proceedings must be filed from the start.

Because of Article 12(2) RPBA, new requests during appeal proceedings will typically not be allowed. However, Article 13(2) RPBA states that “Any amendment to a party’s appeal case made after the expiry of a period specified by the Board (…) shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned”. T 1686/21 discusses what could constitute such “exceptional circumstances”.

In T 1686/21, the patent was maintained in amended form in an interlocutory decision. The opponent appealed, requesting revocation of the patent. During the oral proceedings in appeal, the proprietor filed a new main request, in reaction to the Board finding there to be an intermediate generalisation in the claims which had been upheld by the Opposition Division.

The opponent contested the admissibility of this new main request, and argued that it constituted an amendment of the proprietor’s appeal case. The opponent stated that they had objected to the omission of the feature in question both during the opposition proceedings and in their Grounds of Appeal. The new main request was however admitted into the proceedings by the Board.

The Board agreed with the opponent that the new main request constituted an amendment of the proprietor’s appeal case. However, they argued that this in fact constituted “exceptional circumstances” according to Article 13(2) RPBA, because:

The amendment as such cannot be surprising for the appellant (in such a way as to affect its position, giving advantage to other party);
The amendment does not give rise to new objections;
In view of the large number of different objections […], the number of requests to be filed at the very beginning of the appeal proceedings in order to provide appropriate fall-back positions for every possible outcome […] would have been extremely high and, as therefore not compliant with procedural efficiency.

The amendment as such was present in several of the auxiliary requests on file, even though no request was exactly like the new main request.

If the Board in T 0074/06 had taken the same view, they would most probably have allowed auxiliary request Vb, because:

The amendment as such (removal of the apparatus claims) was already present in auxiliary requests VI to X;
The amendment as such did not give rise to any new objections;
If all of the auxiliary requests would have been filed both with and without method claims, a large number of requests would have been needed.

So, does this mean that there may in fact be a higher chance now than at the time of T 0074/06 of having a late filed request admitted? Can T 1686/21 be used to argue that as long as a late filed request is not surprising for an appellant and does not give rise to new objections, it should be allowed?

In opposition cases where there are many different objections, it may be necessary to file hundreds of auxiliary requests in order to cover all conceivable combinations of the different proposed amendments. In practice, proprietors often file a limited number of auxiliary requests, and then state that they request to be allowed to, if necessary, combine features of these filed auxiliary requests into new auxiliary requests. It is yet uncertain whether this will in fact be allowed, although T 1686/21 provides some support.

However, argument number one in T 1686/21 was partly based on the reasoning that “the opposition division understood the feature in question to be implied in claim 1 as maintained”. It is open to question whether the Board would have considered the circumstances to be exceptional if this had not been the case.

If you would like to discuss how to protect your innovation, please contact the author or your usual Barker Brettell patent attorney.