What Constitutes “Exceptional Circumstances” at the EPO

 A number of recent decisions from the EPO’s Technical Boards of Appeal have clarified what constitutes “exceptional circumstances” in appeal proceedings.

The EPO’s Rules of Procedure of the Boards of Appeal¹(RPBA) outline a convergent approach to the admissibility of amendments to a party’s appeal case. In particular, Article 13(2) RPBA specifies that any amendment to a party’s appeal case late in oral proceedings (after an invitation from the Board or a summons to attend 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.”

This high standard for amending a party’s case late in proceedings is intended to ensure procedural economy. However, the question of whether there are exceptional circumstances is something on which parties and the Boards often disagree.

In T 2352/19², the Board’s preliminary opinion introduced a new interpretation of a key feature of the claims, which resulted in a new novelty objection. The patentee attempted to argue that this new interpretation constituted exceptional circumstances that should allow the patentee to file a new auxiliary request. However, the Board found that this was not sufficient by itself to acknowledge exceptional circumstances, because it was ultimately not relevant to the Board’s final decision. Therefore, it appears that for exceptional circumstances to be justified, there must be causality between the newly raised aspect and the Board’s final conclusion for the situation to qualify as an exceptional circumstance.

In T 463/19³, the Board found that there were exceptional circumstances, which resulted in five prior art documents being admitted late in proceedings. The five documents were all directed to demonstrating the presence of public prior use. In submitting the documents, the party argued that they were prima facie highly relevant, and detailed why they had only been made aware of the existence of the documents late in proceedings. The Board considered exceptional circumstances to exist for two reasons. Firstly, the public prior art documents were deemed to be objectively difficult to find, so there was no doubt that they had not been deliberately withheld until late in proceedings.  Secondly, the Board considered that they were highly relevant to the subject-matter of the case.

Similar to T 2352/19, the Board in T 2843/19⁴set out that a finding in its preliminary opinion did not necessarily result in exceptional circumstances allowing a party to amend their case. In the case in question, the Board’s preliminary opinion disagreed with the appellant’s argument that the claims lacked novelty over a prior art document.  In response, the appellant attempted to amend its case to set out that the claims would have been obvious starting from said prior art document.  The appellant argued that it was unreasonable to expect parties to submit cascades of arguments relating to inventive step, where it considered the claims to lack novelty over the relevant document, and that it was only possible to infer the novel features of the claim after reading the Board’s preliminary opinion. The Board did not agree, and also noted that waiting to file arguments on inventive step had an overall negative effect on procedural economy.

Therefore, it remains advisable to ensure detailed arguments are submitted for all grounds at the beginning of appeal proceedings, and if you wish to amend you case, detailed reasoning setting out why there are exceptional circumstances should be provided.

Further developments in the case law indicate that the standard may be lower in ex-parte proceedings, such as where the appeal stems from a decision of an Examining Division (compared to appeals from decisions of the EPO’s Opposition Divisions). In T 2465/19⁵, the Board exercised its discretion to admit a late-filed amendment to the patentee’s case.  In this instance, the Board had expressly invited the patentee to submit the new adapted description. Although there were not exceptional circumstances, the Board was satisfied that the amendments did not raise new issues, and were not detrimental to procedural economy because there were no other parties whose interest could be jeopardized by late-filing of amendments. Therefore, the Board admitted the amendments, which resulted in the application being found to be allowable.

The ability of the Boards to admit late-filed amendments to a party’s case in the absence of exceptional circumstances was considered further in ex-parte case T 1906/19⁶.  Here, the patentee filed amendments late in proceedings that were straightforward and led to a set of claims that was prima facie allowable.  The Board considered the newly filed claim request to be procedurally economic, but noted that there were not exceptional circumstances. However, the Board note that Rule 13(2) RPBA specifies that “in principle” late-filed amendments to a party’s appeal case should not be taken into account unless there are exceptional circumstances.  The Board considered that the phrase “in principle”introduced leeway, allowing the Board to consider an amendment despite the absence of exceptional circumstances.

Therefore, in ex-parte proceedings, the Board may deviate and allow amendments in the absence of exceptional circumstances, particularly where the amendments are prima facie allowable.

However, it remains advisable to ensure all arguments and claim requests that could reasonably be necessary are on file early in appeal proceedings, rather than needing to rely on demonstrating exceptional circumstances, or the Board’s discretion.

Endnotes

¹ https://www.epo.org/en/legal/epc/2020/rpba.html

² https://www.epo.org/en/boards-of-appeal/decisions/t192352eu1

³ https://www.epo.org/de/boards-of-appeal/decisions/t190463du1

⁴ https://www.epo.org/de/boards-of-appeal/decisions/t192843du1

⁵ https://www.epo.org/en/boards-of-appeal/decisions/t192465eu1

⁶https://www.epo.org/en/case-law-appeals/decisions/recent/t191906eu1