T 0981/23 - Review of positive admittance decisions (?)

Key points

• "Positive admittance decisions by departments of first instance are not regulated in Article 12(6), first sentence, RPBA. Having said this, in this Board's opinion such decisions are still subject to a board's limited power to review discretionary decisions of departments of first instance (see G 7/93, Reasons 2.6; for claim requests, see also T 1202/19, Reasons 39 to 43)."
• G7/93 r.2.6 is the well known remark about "in the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles as set out in paragraph 2.5 above, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion"
• T 1202/19 - blog post
• "In the case in hand, there was no error in the opposition division's exercise of discretion."
• See also T 0909/23: "Nach Ansicht der Kammer ist die Ausübung des Ermessens einer erstinstanzlichen Abteilung auch im Rahmen einer positiven Zulassungsentscheidung einer Überprüfung im Beschwerdeverfahren nach den in G 7/93 dargelegten Grundsätzen zugänglich"
• On the other hand, see T 1884/19 (24-10-2022): "D25 to D30 were not only admitted into the proceedings, but considered by the opposition division for assessing sufficiency of disclosure of claim 6 as granted. There is in such a case no legal basis for excluding documents D25 to D30 from the appeal proceedings (see also T 0487/16, point 3.1 of the Reasons for the decision, as well as the case law developed under RPBA 2007, e.g. T 0026/13, point 2 of the Reasons for the decision; T 1568/12, point 2.4 of the Reasons for the decision; T 2603/18 points 1.1 to 1.2 of the Reasons for the decision)."
• For a more recent case, see T 2036/22 (2024), and T 0189/23 (07-10-2025): "According to a number of decisions to which the present Board agrees (Case Law, V.A.3.4.3 and in particular T 617/16, point 1.1.1 of the reasons or T 2603/18, points 1.1 and 1.2 of the reasons), the EPC does not provide a legal basis for excluding documents, requests or evidence on appeal if the contested decision was based on them. In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA, such submissions are automatically part of the appeal proceedings". 
See also the extensive reivew of the issue in CLBA V.A.3.4.3 "Submissions admitted at first instance are part of the appeal proceedings"
• I wonder whether / how / when this divergence in the case law will be resolved. Can the Board unadmit documents or claim requests that were examined on the merits (and decided on) by the OD?

EPO 

The link to the decision is provided after the jump.

T 0456/24 - No review of decision to admit

Key points

• "The respondent [proprietor] argued that document D20 should not be admitted into the appeal proceedings, contending that the reasoning provided by the opposition division for admitting this document was insufficient, as late-filed documents should only exceptionally be admitted if there are reasons to suspect that such late-filed documents prejudice the maintenance of the patent in suit. 
• The board disagrees. According to established case law, since D20 was part of the opposition proceedings and the decision was based on D20, this document cannot be excluded from appeal proceedings (see Article 12(2) RPBA and the Case Law of the Boards of Appeal, 11th edition 2025, CLB in the following, V.A.3.4.3).
• This is because the aim of appeal proceedings is to review the decision under appeal in a judicial manner, which, in the present case, also inevitably requires a review of the findings drawn by the opposition division on the basis of D20."

• "In addition, no error in the use of discretion from the opposition division is apparent, because the appealed decision clearly shows that the opposition division decided to admit D20 after a prima facie review of the content of the disclosure of this document  ... ."

EPO 

The link to the decision is provided after the jump.

T 0508/24 - New public prior use after remittal

Key points

• "In the present case, the alleged prior use "Tulip-Oldenburg" was introduced for the first time after remittal of the case to the opposition division and was not directly related to the prior art already on file."
• "To assess whether feature e) of claim 1 was disclosed, the opposition division specifically analysed the videos D36 and D37. Their conclusion, that feature e) is not disclosed because the machine shown in the videos includes grippers which operate independently from the conveyor belts and are not connected thereto, clearly represents a technical assessment based on prima facie relevance examination which does not appear to violate the opposition division's discretionary powers.
• Based on the prima facie finding of the distinguishing feature e), which feature e) was also not disclosed in any of the cited documents, the opposition division assessed the prima facie relevance of the alleged public prior use with respect to inventive step for the outcome of the case."
• The OD did not admit the new attack based on an alleged public prior use. The Board sees no mistake in this decision.
• "The case law of the Boards of Appeal does not establish a fixed or uniform standard for how deeply an opposition division must examine late-filed evidence when assessing prima facie relevance. This means that an opposition division must exercise its discretion under Article 114(2) EPC according to the particular facts before it, and that boards of appeal should only intervene if that discretion was exercised on the basis of wrong principles, without taking account of the right principles, or in an arbitrary or unreasonable manner (CLB, V.A.3.4.1b)."

EPO 

The link to the decision is provided after the jump.

T 0781/24 - Case amendments after remittal

Key points

• The Board in the first appeal remitted the case for further prosecution (i.e., not finding a set of claims to be allowable). Next, the proprietor changed their auxiliary requests. The OD did not admit the claim requests. The proprietor contests this finding in the second appeal.
• The proprietor argued that: "these requests were submitted after the case had been remitted to the opposition division for further prosecution and before the opposition division summoned for oral proceedings after remittal, therefore before the final date set under Rule 116(1) EPC. "
• The Board: "Whether or not amended sets of claims presented after the expiry of the time limit set under Rule 79(1) EPC should be considered in opposition proceedings does not merely depend on their filing within the time limit under Rule 116 EPC, but also on the specific circumstances of the case. If all new submissions received within the time limit according to Rule 116 EPC were automatically to be considered timely, the time limit set according to Rule 79(1) EPC would be rendered meaningless. Therefore, when determining whether amended requests, such as the main request and auxiliary requests 1 to 7, submitted within the time limit set under Rule 116 EPC, were filed in due time, it has to be taken into account whether these requests were submitted in direct and timely response to a change in the subject of the proceedings (see also T 364/20, reasons 7.2.4 and 7.2.6)."
• I think this approach is too strict for first-instance proceedings in general; it describes the procedural framework of Art. 13 RPBA for appeals. However, first instance proceedings are of a different, more administrative nature. Having said that, the Board correctly recalls that the time limit of Rule 79(1) EPC should not be meaningless.
• "The case at hand deals with the judicial review of a decision in post-remittal opposition proceedings. The board is convinced that, in exercising its discretion in such post-remittal proceedings, the opposition division generally should have due regard to the framework defined in the first appeal proceedings which resulted in the remittal. This requirement serves to safeguard the legitimate interests of other parties and the public."
• The point of case amendments after remittal is interesting, and does not come up in the case law very often. I don't recall the GL discussing it specifically either. The Board's discussion of the topic is extensive, and I recommend reading it entirely.
• "Although the board agrees that a patent proprietor is generally not barred from submitting requests that are consistent with the principles of res judicata and ratio decidendi, the patent proprietor is not at absolute liberty to file amended claim requests in opposition proceedings subsequent to a remittal without constraint, even though the order of the first appeal proceedings' decision in T 423/18 merely states that the "[T]he case is remitted to the opposition division for further prosecution", i.e. does not specify on which set(s) of claims this further prosecution is to be performed."
• "The board is of the view that further prosecution of a case after remittal must proceed, as a rule, on the basis of the situation prevailing at the conclusion of the first appeal proceedings that gave rise to the remittal (see also T 383/11, Reasons 1.4). This principle should be observed in post-remittal proceedings when assessing the admissibility of a party's submissions, notably where, as in the present case, the appellant-patent proprietor seeks to justify such requests as constituting a reasonable redefinition of fallback positions."
• I think the proposed criterion is "whether these requests were submitted in direct and timely response to a change in the subject of the proceedings after the Board's decision in the first appeal"

EPO 

The link to the decision is provided after the jump.

T 0981/23 - No functional or structural link between the features

Key points

• The question is whether, under Art. 123(2), a feature can be taken from a paragraph of the description without certain other features that are also taught in that paragraph.
• The Board: "There is no functional or structural link between the internal operations of power storage, power supply and activation of the controller and the fact that the remote control is suitable for controlling a "toilet device". The internal power management is not inextricably linked to the control functions assigned to the operating buttons either. Hence, the interaction with a toilet device and its functions can be omitted without infringing the requirement of Article 123(2) EPC."
• For a second amended feature: "Claim 1 specifies ... . The basis for these features is found in Figure 4 and the corresponding description on page 14, lines 4 to 7 of the application as filed. The respondent [opponent] submitted that claim 1 contained an unallowable intermediate generalisation because it did not specify the [a feature]  disclosed on page 14, lines 9 to 16, in .... In the Board's view, these additional features need not be explicitly specified. First, it is well known that a rectifier usually outputs currents flowing in only one direction ... . The inherent smoothing function of electric storage elements is also well known and thus implicit. Second, the generic term "rectifier" is not limited to a diode bridge ... "
• "This implies that the disclosed distribution of the functions of current inversion and smoothing between the rectifier and the electric storage element is not inextricably linked to the specification of a rectifier, electric storage element and voltage detector as disclosed in Figure 4 and incorporated in claim 1. Either way, omitting the more specific features from page 14, lines 9 to 17 does not extend beyond the content of the application as filed."

EPO 

The link to the decision is provided after the jump.

T 0193/23 - An undisclosed embodiment is now encompassed by claim 1

Key points

• At issue is Art. 123(2).
• "The appellant (patent proprietor) argued that the introduction of feature 1.4 in claim 1 as granted is supported by paragraph [0019] of the originally filed application. Under dispute is whether the omission in claim 1 of further features recited in paragraph [0019], namely that the openable cover ...  "is sealable by way of engagement of two halves of a zipper ..." results in an unallowable intermediate generalisation of the specific embodiment disclosed in the cited paragraph of the originally filed description [,] as concluded by the Opposition Division."
• "As correctly pointed out by the department of first instance and the appellant (opponent), the originally filed application does not indeed describe or even envisage an embodiment of the claimed luggage including an openable cover attached to the expansion body wherein these two elements are not sealable/openable by a zipper disposed along their perimeter. As a matter of fact, no embodiment can be found where a zipper is not present or replaced by another element. However, by omitting the zipper in feature 1.4, such an undisclosed embodiment is now encompassed by independent claim 1. "
• I wonder if this is the correct test. Any generalised claim includes embodiments that were not  "describe[d] or [...] envisage[d]". However, for most claims, if not all claims, one can probably construct an embodiment that falls under the claim yet is not mentioned in the description. Hence, the test cannot be if the opponent can construct an embodiment that falls under the claim but was not 'described or envisaged' in the application as filed.
• With this test, a generalisation is never possible, it seems. Is that desirable?
• "The argument of the appellant (patent proprietor) that since the functionalities of attaching the openable cover to the expansion body and of closing and sealing the article luggage by a zipper disclosed in paragraph [0019] were not inextricably linked [,] no unallowable intermediate generalisation arose, is not convincing either. In this respect, the Board concurs with the Opposition Division and the appellant (opponent) that a functional overlap between these functionalities exists. In fact and to a certain extent, means to attach the openable cover to the expansion body and the zipper to seal the luggage article are required for the functionality of the luggage according to the application as filed."
• I wonder if a 'functional overlap' between features is the same as "inextricably linked. 
• The Board does not elaborate further on how the zipper is 'to a certain extent' "required for the functionality of the luggage according to the application as filed".
• Cf. CoA UPC 2 October 2025, expert e-Commerce/Seoul Viosys - https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Decision%20764-2025%20774-2025%20EP698%20EN.pdf 
• 
  

EPO 

The link to the decision is provided after the jump.

R 16/23 - On the right to oral proceedings

Key points

• This is the 13th successful petition for review, by my count. 
• The EBA corrects J 6/22, wherein the LBA had intentionally denied oral proceedings (and had dismissed the appeal), despite a valid request for oral proceedings of the applicant, in a case with a request for re-establishment for the late filing of the statement of grounds.
• Moreover, even though the underlying case is unusual, the LBA's reasoning was, though extensive on the legal points, quite generic and indeed suitable for copy/past in other (re-establishment) cases, as a TBA did in T 1874/23.
• The written reasoning of the LBA to deny the appellant's right to oral proceedings was extensive, and relied essentially on a purported 'dynamic' interpretation of Article 116, referring to the "substantial yearly number of appeals being filed and a considerable workload for the boards. Furthermore, the timely adjudication of cases has become a matter of increased interest to the stakeholders in the system, while it remains a challenge for the boards to carry out their function of effec­tively brin­ging justice to all parties within a reaso­nable time frame."
• The EBA holds, in the headnote, that "As oral proceedings had been requested by the appellant-applicant in the event that an adverse decision on the request for re-establishment of rights and on the appeal were taken, the [Legal Board of Appeal] should have arranged for the holding of oral proceedings pursuant to Article 116(1) EPC before taking any such adverse decision.
• " The failure to arrange oral proceedings constitutes a fundamental procedural defect within the meaning of Article 112a(2)(d) and Rule 104(a) EPC since, as a result, the appellant-applicant did not have the opportunity to present the case orally on the decisive issues of re-establishment of rights and the admissibility of the appeal"
• The EBA: "The second consideration referred to in the decision under review relates to aspects such as a timely adjudication of cases and the creation of legal certainty.  These are indeed aspects of great importance. The starting point is, however, that they are to be taken into account within the legal framework as provided by the legislator. In the view of the Enlarged Board, they are not sufficient on their own to justify a dynamic interpretation that would limit the scope of application of Article 116(1) EPC in such a way that a right to oral proceedings could be balanced against them."
• In addition, "As already stated in decision T 383/87, Article 116(1) EPC guarantees the right of any party to request oral proceedings, i.e. to argue its case orally before the relevant instance of the EPO. This includes the right for the party requesting oral proceedings merely to present orally what it has already submitted in writing (see also R 3/10, Reasons 2.11 confirming T 125/89, Reasons 7), without having to fear that, if it does so, the deciding body will order a different apportionment of costs for that reason alone (see also T 125/89, Reasons 7; T 383/87, Reasons 9)."
  
• The EBA's reasoning is extensive and clear. I recommend reading the entire decision. 

• The successful petitions are now: R 16/23; R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links). See also the list here.

EPO 

The link to the decision is provided after the jump.