Monday, January 11, 2021 T 2429/17 - Cogent reasons for amendment after summons

Lacking clarity

Art. 13(2) of the  Rules of procedure of the Boards of Appeal states that 

Any 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.

The question then is, what could be a cogent reason? In this case, the Board raised objections under Articles 84 and 123(2) EPC for the first time in its summons. As the new request responded to these objections, they cleared this hurdle. Unfortunately, the new request was also considered to introduce new clarity issues, so in the end the request was not admitted after all.  

 Reasons for the Decision

1. The appeal is admissible.

2. Main request - admission (Article 13(1) and (2) RPBA 2020)

2.1 The claims of the present main request have been filed after notification of the summons to oral proceedings.

2.2 Article 13(2) RPBA 2020 gives the board discretion not to admit requests after notification of a summons to oral proceedings. The basic principle of the so-called "third level of the convergent approach" is that, at this 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 for: it requires a party to present compelling reasons which justify clearly why the circumstances leading to the amendment are indeed exceptional in the particular appeal ("cogent reasons"). For example, if a party submits that the board raised an objection for the first time in a communication, it 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 decide to admit the amendment in the exercise of its discretion.

At the third level of the convergent approach, the board may also rely on criteria applicable at the second and first level of the convergent approach, i.e. as set out in paragraph 1 of Article 13 and Article 12, paragraphs 4 to 6 RPBA 2020. These criteria also include the complexity of the amendment, whether an amendment to a patent application overcomes the objections raised and whether the amendment, prima facie, does not give rise to new objections (see Rules of procedure of the Boards of Appeal 2020, Supplementary publication 2, Official Journal EPO 2020, explanatory remarks on Article 13(2) and (1) RPBA 2020).

2.3 The appellant argued that with its communication pursuant to Article 15(1) RPBA 2020 the board had raised objections under Article 84 and 123(2) EPC against claim 1 of the previous second auxiliary request. In its decision to refuse the present application, the examining division did not raise any objections under Articles 84 or 123(2) EPC against claim 1 of said second auxiliary request (see item 5 and following in the decision). Therefore, the objections under Articles 84 and 123(2) EPC raised by the board were new objections, and the amendments filed with this letter were necessitated by these new objections. Therefore, the amendments were admissible under Article 13(2) RBPA 2020.

The amendments in the present main request solved the issues under Articles 84 and 123(2) EPC raised by the board. The appellant put forward that it was clear from the description in paragraphs 0081 to 0084 how the IPS-LCD worked so that an excellent black image could be viewed at the diagonal direction. The appellant admitted that a liquid crystal layer that did not have a phase retardation under any circumstances would not be realistic.

2.4 The board took note that claim 1 had been filed to address issues raised for the first time by the board. Therefore, the board recognised "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 that could lead the board to consider the proposed amendments.

The board noted in the oral proceedings that the clarity and added subject-matter issues raised with respect to claim 1 of previous second auxiliary request had been addressed by filing claim 1 of present main request. However, the appellant had introduced also amendments that appeared not to be suitable to remedy the clarity objections raised, but to create new clarity objections. In particular, it was prima facie not clear how a liquid crystal layer in a liquid crystal display device could be implemented not having a phase retardation. Furthermore, the feature that the liquid crystal layer did not have a phase retardation had been newly introduced from the description. In the previous second auxiliary request it was only stated that a phase retardation effect of the liquid crystal layer was disregarded, meaning that the liquid crystal layer did have a phase retardation effect.

2.5 It follows that in claim 1 of the present main request a new feature from the description has been introduced which, prima facie, is not clear.

2.6 Therefore, the board, exercising its discretion under Article 13(2) RPBA 2020 in combination with the criteria set out in Article 13(1) RPBA 2020, did not admit the new main request into the appeal proceedings.

This decision  T 2429/17 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2020:T242917.20201211. The file wrapper can be found here. Illustration by Dr StClaire obtained via Pixabay under the PixaBay license (no changes made).