11.6.4 Parties’ amendments to their cases on appeal – the Boards of Appeal’s convergent approach
The function of the Boards of Appeal is to review the appealed decision, not to merely continue the examination or opposition proceedings by reexamining the application or the revocation grounds against the patent. One of the consequences of this primary objective is that, as appeal proceedings progress, the possibilities for parties to amend their cases become increasingly limited. This has been coined the “convergent approach,” which consists of three levels, as regulated in the Rules of Procedure of the Boards of Appeal [hereinafter RPBA 2020].64
Which of these provisions applies depends on the point in time at which a party changes its case:
Article 12(4) applies when a party changes its case at the outset of the appeal proceedings (i.e., in its statement of case) with respect to what the party had filed before the Examining or Opposition Division, or with respect to what was decided by the division.
Article 13(1) applies when a party changes its appeal case after the initial stage of the appeal proceedings but before a summons to oral proceedings has been notified.65
Article 13(2) applies when a party changes its appeal case after the summons to oral proceedings has been notified.66
These three levels of convergence are explained in detail in the following sections.
220.127.116.11 First level of the convergent approach
In a party’s statement of grounds or their reply, the case must be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.67 This is in accordance with the primary objective of the appeal proceedings to review the decision under appeal.
If parts of a party’s appeal case are not directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based, they are regarded as an “amendment.”68 Two situations must be distinguished. In the first situation, the party presents, in its appeal, a case that is amended in comparison to what it had presented before the department of first instance. For example, a patent proprietor files a new claim request (i.e., a new set of claims) in its appeal, or the opponent submits a new prior art document, which had previously not been brought before the Opposition Division. In such a case, the filing of the new request or document is an amendment of the party’s case and may be admitted only at the discretion of the Board.69 The criteria that the Board may use in the exercise of its discretion are, inter alia, the complexity of the amendment, the suitability of the amendment to address the issues that led to the decision under appeal, and the need for procedural economy.70
In the second situation, the appellant’s case on appeal is not changed in comparison to the case it had presented during the first instance proceedings. However, the department of first instance did not base its decision on what was submitted by the party in the first instance proceedings. The submission on appeal is still regarded as an amendment under Article 12(4) of RPBA 2020. If, for example, the Opposition Division found the patent proprietor’s main claim request to fulfill the patentability criteria of the EPC, it had no reason to address the patent proprietor’s auxiliary requests in its decision. It is also possible that the Opposition Division found the disclosure of one prior art document to be novelty-destroying so that it had no reason to consider a second prior art document on which the opponent relied before the Opposition Division and still relies in its appeal. In such cases, the patent proprietor must demonstrate that the auxiliary requests – and the opponent must demonstrate that the second prior art document – were admissibly raised before the Opposition Division and maintained until the Opposition Division took its decision.71 If the party concerned complies with this obligation, the auxiliary requests and second prior art document will be part of the appeal proceedings and cannot be excluded by the Board.
In addition to these two situations, which are governed by Article 12(4) of RPBA 2020, Article 12(5) and (6) of the Rules regulate other typical situations in which a party submission may not be admitted into the appeal proceedings. For example, it is required that the statement of grounds of appeal and the reply thereto clearly and concisely set out the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and it should specify expressly all the requests, facts, objections, arguments and evidence relied upon.72 Any part of the submission not meeting this requirement may not be admitted.73 Moreover, the Board might not admit a request or document if the same request or document was already not admitted by the Opposition Division74 or if a request or document should already have been submitted during the opposition proceedings (or, if they were submitted, no longer maintained).75 Articles 12(5) and (6) of RPBA 2020 are applicable throughout the entire appeal proceedings – that is, they are also applicable at the later levels of the convergent approach.76
18.104.22.168 Second level of the convergent approach
After the initial exchange of briefs (i.e., the appellant’s statement of grounds of appeal and the respondent’s reply thereto), the second level of the convergent approach commences. If parties amend their appeal case at this stage, they must provide reasons as to why their initial case has been amended and why this has been done only at this stage of the appeal proceedings. All amendments of a party’s appeal case at this stage are subject to the Board’s discretion alone.77
The RPBA 2020 contains a list of possible criteria for applying that discretion. In general, the criteria for this stage are stricter than those at the first level of the convergent approach. The Board may consider, for example, whether the amendment is suitable for resolving the issues raised (at the first level of the convergent approach, it may be sufficient that the amendment “addresses” them) or whether the amendment is detrimental to procedural economy.78
The RPBA 2020 also mentions specific requirements for when the patent or patent application is amended on appeal. In these situations, the applicant or patent proprietor must demonstrate why the amendment, prima facie, overcomes the objections raised so far and does not give rise to new objections (such as a new objection of lack of clarity or added subject matter).79
22.214.171.124 Third level of the convergent approach
The third level of the convergent approach imposes the most stringent limitations on a party wishing to amend its appeal case. This level commences at an advanced stage of the proceedings, usually after a summons to oral proceedings has been notified.80
At this late stage of the appeal proceedings, amendments to a party’s appeal case are not to be taken into consideration. However, a limited exception is provided if there are “exceptional circumstances.”81 For this exception to apply, a party must present compelling reasons (“cogent reasons”) why the circumstances of the particular appeal exceptionally justify that the amendment be taken into account at this late stage of the proceedings. This may be the case, for example, if a party submits that the Board raised an objection for the first time in its communication that was sent in preparation for the oral proceedings (on this communication, see Section 126.96.36.199 below). The party must explain precisely why this objection is new and does not fall under objections previously raised by the Board or a party. The Board may then decide that there are exceptional circumstances and admit the amendment in the exercise of its discretion.