T 1894/23 - Prevailing proprietor, narrower claims

Key points

• The EPO is open for business (including payment of renewal fees and other fees), and we have business to do here.
• If the proprietor prevails (opposition rejected), is he (they?) nevertheless required to submit auxiliary requests before the OD, in the sense of Art. 12(6)(s.2) RPBA? Does it matter if the preliminary opinion of the OD was positive (for the proprietor)?
• What if the OD decides to maintain the patent in amended form? Is the proprietor nevertheless obliged to submit further lower-ranking auxiliary requests under Art. 12(6)(s.2) RPBA?
• According to CLBA (2025), V.A.4.3.7.c, the prevailing line in the case law is that of T 205/22: "the board stressed that since the opposition had been rejected, there was no need for the patentee to file auxiliary requests before the opposition division, and a request filed at the beginning of the appeal proceedings could not be rejected solely on the ground that it should have been submitted earlier".
• However, see T 45/22, T 2140/22, and T 0566/20 for decisions taking a different view. Whether these are isolated decisions, I don't know.
• The OD found AR-7 allowable, which is the Main Request in the Board's decision. The Board decides that product claim 1 of the MR is not novel over D5.
• In AR-1, the product claims are deleted, and two method claims are kept.
• "The respondent did not contest that a claim request containing only method claims had never been submitted during the opposition proceedings and that auxiliary request 1 was new to the proceedings. However, the respondent asserted that deleting entire claim categories from a previously filed request was not an amendment to its case."
• "[M]ore recent decisions have predominantly held that deleting claims present in a previously filed set of claims is to be regarded as an amendment to a party's appeal case within the meaning of Article 13 RPBA in line with e.g. T 494/18, Reasons 1.3 and T 2091/18, Reasons 4. The diverging approaches seem to be converging towards the majority opinion (see in particular T 1800/21, Reasons 3.3 and 3.4 and decisions cited in that decision)."
• Hence, AR-1 is an amendment.
• "Under Article 12(6), second sentence, RPBA, the board should, in principle, not admit, inter alia, requests which should have been submitted in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance. It is well established in the case law of the boards of appeal that Article 12(6), second sentence, RPBA expresses and codifies the principle that each party should submit all facts, evidence, arguments and requests that appear relevant as early as possible to ensure a fair, speedy and efficient procedure "
• "In the case in hand, the respondent relied on auxiliary request 1 to address novelty objections against the claimed products. However, these objections had been raised from the outset of the opposition proceedings. In view of this, the board cannot discern any persuasive reasons why this claim request was not filed in the opposition proceedings, or any circumstances of the appeal that would justify filing this request only on appeal."
• "In view of the above considerations, the board decided not to admit auxiliary request 1 into the proceedings under Article 12(4) RPBA and Article 12(6) RPBA as this claim request addresses novelty objections against the product claims that had been raised at the outset of the proceedings. Auxiliary request 1 therefore should have been filed in the opposition proceedings. Moreover, admitting this request would neither simplify the proceedings nor serve the interests of procedural economy."
• The Board does not comment on the fact that the OD would not have considered AR-1, given that the OD found the higher-ranking MR (then AR-7) allowable.
• The Board does not engage with the case law set out in  CLBA (2025), V.A.4.3.7.c.
• AR-2 to 41 are not admitted either. 

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231894eu1