T 316/08 – Complexities

Article 13(1) of the Rules of Procedure of the Boards of appeal provides that “[a]ny amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings and the need for procedural economy.” In the present case the parties could not agree on whether the amendment was complex or not. Here is what the Board had to say:

[19] These auxiliary requests were filed one month before the oral proceedings (OPs) […]. Article 12(2) RPBA requires that the statement of grounds of appeal contains an appellant’s complete case, setting out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and specifying expressly all the facts, arguments and evidence relied on. While Article 12(1)(c) RPBA provides that appeal proceedings shall be based on, in addition to the grounds of appeal and reply, any communication sent by the Board and any answer thereto, this cannot mean that any new requests filed with such an answer are per se admissible since otherwise parties could withhold less preferred requests until after obtaining the Board’s provisional opinion on more preferred requests, a tactic which would largely negate the function and value of provisional opinions.

[20] Article 12(4) RPBA requires the Board to take into account everything presented by the parties under Article 12(1) RPBA if and to the extent it relates to the case under appeal and meets the requirements in Article 12(2) RPBA, which includes the complete case requirement. Thus the Board is quite clearly not required to take into account anything which does not satisfy that requirement, such as requests which could have been filed with the statement of grounds of appeal but were not.

[21] This is complemented by Article 13(1) RPBA which requires that any amendment to a party’s case after it has filed its grounds of appeal or reply - and a new set of claims with a new feature is clearly such an amendment - is admissible not as of right but at the Board’s discretion, and that discretion is to be exercised in view of inter alia three criteria, namely the complexity of the new subject matter, the current state of the proceedings, and the need for procedural economy.

Further, Article 13(3) RPBA provides that amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.

[22] As for the criteria in Article 13(1) RPBA, the complexity of the new subject-matter is unsurprisingly the subject of substantial difference between the parties. The appellants argued that the addition of the feature of a bone tunnel was not technically complex - in the sense of technical complexity, that argument appears quite correct - and the feature was readily understandable.

[23] However, the Board cannot accept that the concept of “complexity” in Article 13(1) RPBA is confined merely to the technical content of a proposed amendment to a party’s case. It must also extend to any procedural complexity the amendment would entail and, in this connection, the Board accepts that the Respondent’s arguments carry considerable weight - the new feature in the present case is taken from the description, has never been relied on or even discussed previously at any stage of the opposition or appeal proceedings, and was not taken into account in any searches. At the very least the Respondent would want to conduct its own prior art searches and assess the results. Thus, as regards the complexity criteria, the Board finds the Respondent’s arguments the more persuasive.

I find it difficult to believe that the drafters of the RPBA thought of procedural complexity when writing “complexity of the new subject matter submitted”. This somewhat far-fetched interpretation is not needed as the list given in Article 13 is manifestly not intended to be exhaustive (“… in view of inter alia …”).

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