Key points

The Board provides an extensive analysis of when an OD has discretionary power to hold a submission inadmissible, in the Board's view. The Board reaches a conclusion that differs from a (key) statement in the GL. It took me some time to appreciate the decision.
The decision is in German, and I had to clean up the HTML publication (excess line breaks) before the machine translation went well.
The proprietor is the appellant and objects to the decision of the OD to hold AR-1 (and 2) inadmissible. The proprietor filed those requests during the oral proceedings before the OD. The proprietor argues that the requests should have been admitted, "because [the OD's] preliminary opinion on novelty had been favourable to the patent proprietor and [the OD] had changed its view on this matter during the oral proceedings". AR-1 changed the device claims into use claims. The patent was granted with only device claims. The use claim concerns the use of the device "zum sexuellen Stimulieren eines Bereichs im Inneren einer Vagina".
The OD held the requests inadmissible "for lack of prima facie allowability in view of Article 53(c) EPC".
"The Board ... notes that ... auxiliary requests 1 and 2 ... were intended to overcome the objections of lack of novelty over D2 and D3, which had already been raised in the notice of opposition."

Accordingly, Th proprietor's rights under Article 113(1) EPC were no issue.

However, the proprietor argued that the ARs were not "late filed" in the meaning of Art. 114 (and Rule 116) such that the OD had no power to hold them inadmissible.
I think that Article 123(1) is the relevant provision for amended claims; see e.g. T 966/17, but the current Board gives reasons why it refers to Article 114(2) EPC. Amended claims were seen as 'facts' in earlier decision T 1776/18 (with the same legal member; from 2022), and my comments on that decision can be found here - link.
The Board, in translation: "The prerequisite for discretion under Article 114(2) EPC is that the submission in question is “late”. "
The Board: "Whether a submission is late within the meaning of this provision depends exclusively on the point in time at which it was made. In opposition proceedings, objections and evidence submitted or filed by an opponent after expiry of the opposition period under Article 99(1) EPC, as well as sets of claims or evidence filed by a patent proprietor after expiry of the period under Rule 79(1) EPC, are generally to be regarded as late-filed within the meaning of Article 114(2) EPC"

Be careful to note that th Board's phrase "within the meaning of this provision" - i.e., Art. 114 EPC - implies "without regard to Article 113(1)".
Understood in that way, I can agree with the Board's statement (see my post on T 098/19), leaving aside Rule 116 for the moment.

The Board: "The reason why a party made a submission only after the aforementioned points in time is irrelevant to the question of whether the deciding department of the European Patent Office has discretion. The question whether a department has discretion within the meaning of Article 114(2) EPC must be distinguished from the question of the criteria according to which that discretion is to be exercised and how those criteria are to be applied in an individual case".
"Considerations as to whether new submissions were, for example, permitted as an immediate reaction to a change in the subject of the proceedings are irrelevant to whether there is discretion as to admissibility; they concern exclusively the question of how that discretion is to be exercised"

This confirms that the Board considers that the OD has a "discretion", even if a decision to hold the submission inadmissible violates Article 113(1) EPC (namely in the case of an "immediate reaction to a change in the subject of the proceedings"). This makes sense under the separate treatment of Article 113(1) and Article 114(2).

In the case at hand, the OD changed its view on novelty during the oral proceedings and decided that D2 was novelty-destroying.
The Board: "in the predominant recent case law of the Boards, a change in the Opposition Division's preliminary opinion is not, in itself, regarded as a reason why the Opposition Division should have no discretion when admitting newly filed sets of claims" (after an extensive review).
However, the Guidelines state that E-VI,2.2.2 (current version, 2026): "the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent. In these examples, a request for amendment made by the applicant or proprietor in response cannot be rejected as late-filed."
"The Board points out, pursuant to Article 20(2) RPBA, that the interpretation of the EPC adopted in the present decision differs [from the] Guidelines for Examination, point E-VI 2.2.2. ... In the Board's view, the statements in point E-VI 2.2.2 of the Guidelines concerning Rule 116(2) EPC and the existence of discretion as to admissibility of the Opposition Division are contrary not only to the present decision but, as explained above, also to the predominant recent case law of the Boards."

The passage in the Guidelines interprets Rule 116(2), second sentence, as it refers to Rule 116(1), fourth sentence, in particular the final clause thereof: "New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed."
A question is, therefore, whether the passage in the GL correctly interprets Rule 116.
In fact, the issue is twofold: (1) whether a change from the preliminary opinion is a change of the subject of the proceedings in the sense of Rule 116, and (2) whether, for any change of the subject of the proceedings (the GL give more examples), the OD is obliged to admit new facts.
Question (1) is answered above: "a change in the Opposition Division's preliminary opinion is not, in itself, regarded as a reason why the Opposition Division should have no discretion when admitting newly filed sets of claims"
The travaux préparatoires to Rule 116 can be found, effectively, in the Notice in OJ 1995 p.409. The Notice says that "The procedure under Rule71a is described in more detail in revised Guidelines E-III, 6 and 8.6." (see here for the GL text as of 1995). The statement "the examining or opposition division departs from a previously notified opinion" was not yet included in th GL then. It was included in the GL 2007, E-III 8.6, referring to T 273/04, r.5 (2006). The reasoning in that decision is plain and simple.

Regarding point (2), the Board is of the view that the GL interpret Rule 116 incorrectly: "Rule 116(2) EPC ... does not restrict the discretion available to the Opposition Division under Article 114(2) EPC (see T 1776/18, Reasons 4.7.8)."

The Board does not seem to give substantive reasons for that conclusion in the present decision, other than by referencing T 1776/18 (same legal member)
I commented on T 1776/18 before (link). Cited point 4.7.8 is about Rule 116(2). The relevant reasoning about Rule 116(1), fourth sentence, is in point 4.6.8: "the word "admitted" expresses the exercise of discretionary power, and the phrase "on the grounds" indicates a criterion for exercising this discretionary power. Rule 116(1), fourth sentence, EPC thus confirms that a change in the subject of the proceedings must be taken into account by the Opposition Division in the course of exercising its discretion."
That reasoning in T 1776/18 seems to address question (2). As I understand it, the TBA reasons that the word "admitted" assumes the existence of a discretionary power (also) in the event that the subject of the proceedings has been changed. This may be correct if we understand "discretionary" as "to be exercised in compliance with Article 113".
The French version of Rule 116(1), fourth sentence, seems the most helpful: "De nouveaux faits ou preuves présentés après cette date peuvent ne pas être pris en considération, à moins qu'il ne convienne de les admettre en raison d'un changement intervenu dans les faits de la cause." - unless it is appropriate (my translaton of 'convienne' ) to admit newly submitted facts because of a change in the circumstances of the case; the term 'convienne' more clearly permits using a plurality factors to determine whether it is appropriate to admit the newly asserted facts.
The Board notes that: " Point E.VI.2.2.2 states that amendments filed before the point in time specified in Rule 116(1) EPC generally cannot be regarded as late-filed."
A third question is whether the Board's view, that "Rule 116(2) EPC ... does not restrict the discretion available to the Opposition Division under Article 114(2) EPC", also means that GL are incorrect in stating that "amendments filed before the point in time specified in Rule 116(1) EPC generally cannot be regarded as late-filed" (and be held inadmissible?).
This hinges on question (3): what is the status and meaning of the clause in Rule 116 that "New facts and evidence presented after that date need not be considered". Is the reference to that date in Rule 116(1), fourth sentence, first clause, meaningless, in that the situation is before and after the date the same?
A related question is whether Rule 116 and/or the GL can limit the OD in how they excersise their power under Article 114.
The proprietor apparently did not invoke the principle of (non) venire contra factum proprium (see, e.g., recently J 2/25).

On medical methods
For the perceived issue under Article 53(c), the OD cited as evidence D2, a patent application by the current proprietor, in which the use of the device was allegedly described as therapeutic. Consultation of D2 reveals that the term 'therapeutic ' was used only when D2 summarises what earlier prior art teaches in terms of known devices. Moreover, the use of D2 - namely, the stimulation of the clitoris - seems different from that of the current claims.
The patent is about "a stimulation device [that] can be introduced into a human body, in particular into a vagina or a rectum, and comprises a pressure-field generating device for stimulating a region to be stimulated inside the human body"
The Board notes, in connection with a different auxiliary request, that "Eine therapeutische Wirkung kann bei der beanspruchten sexuellen Stimulation nicht ausgeschlossen werden."
Perhaps one day we will have substantive case law on the point in another case; there is enough patent litigation in the technical field at issue.

The link to the decision is provided after the jump, as well as the machine translation.

https://www.epo.org/de/boards-of-appeal/decisions/t240712du1

Machine translation (ChatGPT)

Decision T 0712/24 — English translation

1. Subject-matter of the patent

1.1

The patent concerns a stimulation device for a region inside a human body. The stimulation device can be introduced into a human body, in particular into a vagina or a rectum, and comprises a pressure-field generating device for stimulating a region to be stimulated inside the human body by means of a pneumatic alternating pressure field.

1.2

The device shown, for example, in Figure 2 comprises a first part (11a) which is configured to be introduced at least partially into a vagina or a rectum of a human body, and a second part (11b) which is dimensioned and shaped such that it cannot be introduced into the vagina or rectum when the first part has been introduced into the human body. The device further comprises a pressure-field generating device (1) configured to generate a pneumatic alternating pressure field in a pressure chamber (2).

1.3

The pressure chamber has an opening (3) formed in a side wall (51) of the first part, such that an alternating pressure field in the pressure chamber (2) can be applied through the opening (3) to a region to be stimulated inside the human body.

1.4

A sealing device (30) is further provided around the opening, which, after insertion of the first part (11a), bears against an inner side of the vagina or rectum and seals the pressure chamber (2) from the surroundings.

2. Main request and auxiliary request 2 — Admissibility

2.1

Both the main request and auxiliary request 2 are based on a reformulation of the granted device claims into claims directed to a use.

2.2

The main request corresponds to auxiliary request 1 in the opposition proceedings and auxiliary request 2 corresponds to auxiliary request 2 in the opposition proceedings. In the opposition proceedings, these two requests were filed during the oral proceedings before the Opposition Division and were not admitted by the Opposition Division for lack of prima facie allowability in view of Article 53(c) EPC.

2.3

The appellant requests that the negative decision on admissibility of the Opposition Division be set aside and that the main request and auxiliary request 2 be admitted into the appeal proceedings pursuant to Article 12(6), first sentence, RPBA. In the appellant's view, the Opposition Division's decision on admissibility involved an error of discretion, as a result of which the Opposition Division had violated the appellant's right to be heard and committed a substantial procedural violation warranting reimbursement of the appeal fee.

2.4

With reference in particular to T 688/16, the appellant submitted that the Opposition Division had had no discretion because its preliminary opinion on novelty had been favourable to the patent proprietor and it had changed its view on this matter during the oral proceedings. In addition, the Opposition Division had exercised its discretion in an inappropriate manner. Both submissions are incorrect.

2.5

In the Board's view, at the level of the Convention, Article 114(2) EPC constitutes a legal basis under which the departments of the European Patent Office have discretion not to take into account late submissions by parties, including sets of claims (see T 1776/18, Reasons 4.5.1-4.5.11, with numerous further references; see also T 364/20, Reasons 7.1.1).

2.6

The view expressed in the decision cited by the appellant, T 688/16, Reasons 2.1, that the Opposition Division has such discretion only under Rule 116(2) EPC, and that the existence of this discretion also depends on the content of the Opposition Division's preliminary opinion, appears to be a minority view which is hardly still followed in the more recent case law of the Boards (see points 2.24 and 2.25 below). The Board likewise rejects this view as unconvincing for the reasons set out below.

Rule 116(2) EPC also does not restrict the discretion available to the Opposition Division under Article 114(2) EPC (see T 1776/18, Reasons 4.7.8).

2.7

The prerequisite for discretion under Article 114(2) EPC is that the submission in question is “late”. Whether a submission is late within the meaning of this provision depends exclusively on the point in time at which it was made. In opposition proceedings, objections and evidence submitted or filed by an opponent after expiry of the opposition period under Article 99(1) EPC, as well as sets of claims or evidence filed by a patent proprietor after expiry of the period under Rule 79(1) EPC, are generally to be regarded as late-filed within the meaning of Article 114(2) EPC (see T 1324/23, Reasons 4.6.2; T 823/23, Reasons 7.18; and T 2662/22, Reasons 8.1 and T 2172/21, Reasons 2, concerning objections and evidence, including those of the patent proprietor; and T 1639/23, Reasons 1.5, concerning sets of claims).

2.8

The reason why a party made a submission only after the aforementioned points in time is irrelevant to the question of whether the deciding department of the European Patent Office has discretion. The question whether a department has discretion within the meaning of Article 114(2) EPC must be distinguished from the question of the criteria according to which that discretion is to be exercised and how those criteria are to be applied in an individual case (see T 1776/18, Reasons 4.6.1). Considerations as to whether new submissions were, for example, permitted as an immediate reaction to a change in the subject of the proceedings are irrelevant to whether there is discretion as to admissibility; they concern exclusively the question of how that discretion is to be exercised (see T 1776/18, Reasons 4.6.9).

2.9

The present main request and the present auxiliary request 2 (at that time auxiliary requests 1 and 2) were filed only during the oral proceedings before the Opposition Division and thus after expiry of the period under Rule 79(1) EPC. The two requests were therefore late-filed within the meaning of Article 114(2) EPC, and the Opposition Division had discretion not to admit these requests into the opposition proceedings. The reference to Article 114 EPC as the legal basis in the contested decision was likewise correct in view of the above.

2.10

Discretion means that, on the basis of certain factual circumstances, the deciding department of the European Patent Office has, as a matter of legal consequence, a number of different decisions open to it. In this respect, the deciding departments of the European Patent Office have a certain margin of discretion when exercising their discretion. The Boards therefore generally limit their review of the exercise of such discretion to examining whether the department of first instance exercised its discretion according to the correct criteria and in an appropriate manner, and whether it exceeded the limits of the discretion conferred upon it (see J 14/19, Reasons 8.3 and 10.2, referring to G 7/93, Reasons 2.6).

2.11

In the present case, there was no error of discretion whatsoever. The Opposition Division applied a correct criterion, namely the lack of prima facie allowability of the then auxiliary requests 1 and 2. It exercised its discretion appropriately, without exceeding its discretionary power, and gave reasons for its decision.

Contrary to the respondent's view, there was therefore also no substantial procedural violation within the meaning of Rule 103(1)(a) EPC.

2.12

The appellant submitted that, even if the Opposition Division had had discretion, it had not exercised that discretion appropriately. This was apparent in particular from the unequal treatment of the then auxiliary requests 3 and 4, which it admitted, and the then auxiliary requests 1 and 2, which it did not admit. Since the auxiliary requests 3 and 4 were ultimately also considered unallowable by the Opposition Division, the lack of prima facie allowability of auxiliary requests 1 and 2 should likewise not have prevented their admission.

This argument is not convincing. First, there is no contradiction between admitting a set of claims and subsequently deciding, after a full examination, that that set of claims is not allowable. Second, the differentiated approach taken by the Opposition Division shows that it correctly subjected the various requests to an individual admissibility examination and did not simply refuse admission of all requests filed after changing its preliminary opinion. Since, unlike auxiliary requests 3 and 4, the then auxiliary requests 1 and 2 involved a change of claim category to a use claim, the differentiation made by the Opposition Division in exercising its discretion as to admissibility is also readily understandable to the Board.

The appellant misunderstands T 966/17, Reasons 2.4.2(c), when it argues that, according to that decision, new requests can be refused only on the basis of objections that have already been in the proceedings for some time, which was allegedly not the case with the lack of prima facie allowability under Article 53(c) EPC found by the Opposition Division. On the contrary, T 966/17 states that, when deciding on admissibility, consideration may be given to “whether the requests appear prima facie allowable or would in any event have to be refused on the basis of other objections that have already been in the proceedings for some time” (emphasis added by the Board).

Moreover, the situation referred to in T 966/17, Reasons 2.4.2(c), concerned a reaction by the patent proprietor to a new line of attack by the opponent and to a newly filed document, neither of which occurred in the present opposition proceedings.

The fact that the Opposition Division's negative decision on admissibility of the then auxiliary requests 1 and 2 meant that the Opposition Division did not take a substantive decision on those requests which could subsequently be fully reviewed on the merits in appeal proceedings is likewise inherent in the situation and, contrary to the appellant's view, does not constitute an error of discretion.

2.13

The Board further notes that the then auxiliary requests 1 and 2 (corresponding to the present main request and auxiliary request 2) were intended to overcome the objections of lack of novelty over D2 and D3, which had already been raised in the notice of opposition.

In this respect, it would have been possible for the patent proprietor to react to these objections already during the opposition proceedings, within the period under Rule 79(1) EPC, by filing new sets of claims.

2.14

At the oral proceedings before the Board, the appellant submitted that there were divergent decisions of the Boards concerning the question of the conditions under which an Opposition Division has discretion not to admit a party's submission. According to the appellant, one line of decisions, such as T 1776/18, focused exclusively on the point in time at which the submission was made, whereas another line of decisions, such as T 688/16, also took “subjective elements” into account, such as a change in the subject of the proceedings or a change in the Opposition Division's preliminary opinion.

The appellant mentioned the possibility of a referral to the Enlarged Board of Appeal but did not request such a referral. The Board likewise considered this unnecessary for the reasons set out below.

2.15

The Board agrees with the appellant that the case law of the Boards concerning the question whether the existence of discretion of the Opposition Division when admitting new submissions in opposition proceedings depends exclusively on fixed points in time, namely expiry of the periods specified in Article 99(1) EPC and Rule 79(1) EPC, or whether relative or, in the appellant's terminology, “subjective” criteria must additionally be taken into account, is inconsistent.

As in the present case, the decisions mentioned above in point 2.7, namely T 1639/23, Reasons 1.5; T 2172/21, Reasons 2; T 1324/23, Reasons 4.6.2; T 823/23, Reasons 7.18; and T 2662/22, Reasons 8.1, determine the existence of discretion of the Opposition Division exclusively by reference to the aforementioned fixed points in time. In T 1776/18, Reasons 4.6.5, relative criteria are likewise rejected and reference is made to Rule 79(1) EPC, although, because of the specific circumstances of that case, the Board ultimately did not have to decide whether the relevant fixed point in time was that specified in Rule 79(1) EPC.

In T 966/17, Reasons 2.2.1, and T 1529/20, Reasons 2.10.2, the existence of discretion as to admissibility before the Opposition Division was likewise linked, by reference to Article 123(1) EPC or Rule 81(3) EPC, to expiry of the period under Rule 79(1) EPC, as also appears to have been the case in T 1219/19, Reasons 39.

What all these decisions have in common is that relative or “subjective” criteria are not used to determine whether the Opposition Division has discretion, irrespective of whether Article 114(2) EPC or Article 123(1) EPC is relied upon as the primary legal basis at Convention level for the possible non-admission of new sets of claims.

In the Board's view, the two aforementioned lines of case law, which are based either on Article 114(2) EPC or Article 123(1) EPC and both refer to Rule 79(1) EPC in relation to late-filed submissions by the patent proprietor, represent the majority view in the more recent case law of the Boards. In substance, these two lines of case law do not differ. See also T 1731/23, Reasons 12, in which neither Article 114(2) EPC nor Article 123(1) EPC, but solely Rule 79(1) EPC, is referred to and which describes this as “established case law”.

2.16

There are, however, also decisions denying the existence of discretion as to admissibility of the Opposition Division where the subject of the proceedings has changed, see for example T 487/13, Reasons 6.2, or, in more recent case law, T 1398/23, Headnote (see, on further decisions, Case Law of the Boards of Appeal, 11th edition, revised version 2026, IV.C.5.1.6.).

The Board does not consider this further line of case law convincing for the following reasons.

2.17

Making the existence of discretion as to admissibility dependent on relative considerations rather than fixed points in time conflicts with the rule-of-law requirements of predictability and legal certainty (see T 1776/18, Reasons 4.6.7; see also Reasons 4.6.2: “moving target”).

It does not appear reasonable to expect either the parties to opposition proceedings or the Opposition Division to determine whether the admission of a new submission requires a mandatory decision or whether there is discretionary power on the basis of specific, constantly changing circumstances of the individual case, which ultimately are only determined retrospectively by a Board when reviewing a decision on admissibility that has already been taken.

Rather, it should follow directly from the applicable legal provisions whether a binding decision is required or whether there is discretionary power. This is the case if, for the purpose of determining whether a submission in opposition proceedings is late within the meaning of Article 114(2) EPC, only the points in time specified in Article 99(1) EPC and Rule 79(1) EPC are taken into account.

Likewise, in appeal proceedings, relative considerations are not relevant to the question whether a submission is late and whether discretion exists; they are relevant only to the question of how that discretion should be exercised in the individual case (see T 1776/18, Reasons 4.6.3).

2.18

Likewise, as correctly submitted by the respondent, a change in the Opposition Division's view during the oral proceedings compared with its preliminary opinion communicated with the summons cannot, on its own, mean that any requests submitted during the oral proceedings would have to be admitted without any discretion on the part of the Opposition Division.

That would, however, be a consequence of the appellant's position (see T 1776/18, Reasons 4.7.7).

2.19

R 6/19 appears to establish a further line of case law. Unlike the decisions referred to in point 2.15, which, like R 6/19, are based on Article 123(1) EPC, R 6/19, Reasons 9, first sentence, does not base the existence of discretion as to admissibility of the Opposition Division on expiry of the period under Rule 79(1) EPC. Instead, it relies on the fact that the applicant's right under Article 123(1) EPC to amend the application once does not apply to the patent proprietor in opposition proceedings, with the consequence that the Opposition Division has discretion in opposition proceedings not to admit filed sets of claims, apparently from the outset.

In this respect, although R 6/19 is cited in T 1529/20, Reasons 2.10.2, it does not appear to support the view expressed there, and likewise considered correct by the Board in the present case, that before expiry of the period under Rule 79(1) EPC the Opposition Division generally has no discretion not to admit newly filed sets of claims. See also, on this issue, T 364/20, Reasons 7.1.2.

An approach according to which the Opposition Division has general discretion, before expiry of the period under Rule 79(1) EPC, concerning the admission of new sets of claims, not limited to special situations such as abuse of procedure, would in this respect appear to result in unequal treatment of the patent proprietor and the opponent. Under such an approach, the Opposition Division would have no discretion to refuse to admit submissions by the opponent before expiry of the period under Article 99(1) EPC, whereas such discretion would exist from the outset for submissions by the patent proprietor in the form of sets of claims.

Other submissions by the patent proprietor, for example in the form of evidence, could moreover under this approach be refused admission into the opposition proceedings under Article 114(2) EPC only after the relevant point in time (see, for example, T 2172/21, Reasons 2). This would not apply from the outset, however, since such submissions cannot be regarded from the outset as “late” within the meaning of Article 114(2) EPC in opposition proceedings.

This approach could therefore result in a division and unequal treatment of submissions by the patent proprietor, even if those submissions are substantively connected and admitted at the same time (for example, where evidence is filed jointly with and in connection with a set of claims).

2.20

All of this, in addition to the reasons given in T 1776/18, Reasons 4.5.5-4.5.10, supports the application of Article 114(2) EPC to the filing of a new set of claims substantiated by factual submissions, an issue left open in R 6/19, Reasons 11.

This ensures consistency in the treatment of late-filed submissions by the patent proprietor and equality of arms between the parties.

As regards R 6/19, it can therefore be concluded for the present case that, in any event, it cannot be derived from that decision that the Opposition Division had no discretion not to admit the main request and auxiliary request 2 into the opposition proceedings.

2.21

The line of case law mentioned above in point 2.16, according to which the existence of discretion as to admissibility is to depend on relative considerations, initially appears to support the appellant's submission that the Opposition Division should have had no discretion as to admissibility in the present case.

On closer examination, however, the decisions mentioned in point 2.16 concern a different situation from that in the present case, namely a change in the subject of the proceedings in the form of the raising of a new objection or the filing of new evidence. This was the case both in T 487/13 and in T 1398/23.

In the present case, by contrast, there was no change in the subject of the proceedings in the sense of new objections being raised or new evidence being filed; rather, the Opposition Division merely changed its preliminary opinion concerning objections that had been in the proceedings from the outset.

2.22

Under Article 20(1) RPBA, the Board is required to give reasons for an interpretation of the Convention which differs from that in earlier decisions of other Boards. The above discussion of those earlier decisions was therefore necessary.

However, insofar as the divergent interpretation of the Convention in earlier decisions of other Boards, involving the use of relative criteria for determining the existence of discretion as to admissibility, concerns a change in the subject of the proceedings in the form of new objections being raised or new evidence being filed, a corresponding question for referral to the Enlarged Board of Appeal would, strictly speaking, not be relevant to the decision to be taken in the present proceedings.

The consistency of the case law concerning the situation at issue here, namely a change in the Opposition Division's preliminary opinion concerning an objection that had been in the proceedings from the outset, must therefore be examined more closely.

2.23

The Board agrees with the appellant that, at least in the older case law of the Boards, the question whether the existence of discretion as to admissibility in opposition proceedings depends on the content of the Opposition Division's preliminary opinion was likewise not treated consistently.

In particular, according to T 754/16, Reasons 1.3.2, sets of claims filed after the point in time specified in Rule 116(1) EPC could be disregarded by an Opposition Division only if the patent proprietor had previously been informed in writing of the reasons standing in the way of maintenance of the patent.

The significance of a change in the Opposition Division's preliminary opinion was also emphasised in the decisions cited by the appellant, T 688/16, Reasons 2.2, and T 586/16, Reasons 5, although the latter decision did not call into question the existence of discretion as such.

2.24

In T 1776/18, Reasons 4.6, the view expressed in T 754/16, Reasons 1.3.2, was expressly rejected. The Board in T 1171/20, Reasons 11.2, likewise rejected the view expressed in T 754/16, referring to T 1776/18.

The Board in the present case likewise endorses the principles set out in T 1776/18 and its rejection of T 754/16.

As far as can be ascertained, the view expressed in T 754/16 has not been followed in more recent case law, at least not with an express reference to that decision. The Board in T 921/21, Reasons 3.2.5-3.2.8, likewise does not appear to have done so.

The Board in T 691/24, Reasons 1.1.4, stated, with reference to Rule 79(1) EPC, that a change in the Opposition Division's preliminary opinion does not result in the Opposition Division having no discretion as to the admission of amended sets of claims.

In T 1529/20, Reasons 2.10.2, and T 1731/23, Reasons 12, the existence of discretion as to admissibility of the Opposition Division was likewise based exclusively on expiry of the period under Rule 79(1) EPC, as also appears to have been the case in T 1219/19, Reasons 39.

T 1639/23, Reasons 1.5, likewise held that sets of claims filed after expiry of the period specified in Rule 79(1) EPC are generally to be regarded as late within the meaning of Article 114(2) EPC and that the Opposition Division therefore has discretion as to their admission.

All these decisions are substantively contrary to the view expressed in T 754/16, Reasons 1.3.2, and T 688/16, Reasons 2.2, that the Opposition Division has no discretion as to admissibility where new sets of claims are filed in response to a change in its preliminary opinion.

2.25

In the present case, the Board expressly rejects not only T 754/16, Reasons 1.3.2, but also T 688/16, Reasons 2.2 (see point 2.6 above; see also T 1776/18, Reasons 4.7).

Decisions T 966/17, Reasons 2.4.2(b), and T 1174/18, Reasons 3, likewise appear to attach little weight to T 688/16 in substantive terms, although in those two decisions a distinction was made at the level of the facts.

T 1662/21, Reasons 3.2.3, appears to be the only more recent decision to partly endorse T 688/16, although it likewise expressly qualifies this by stating that the Opposition Division has discretion as to admissibility even when it changes its preliminary opinion.

2.26

In summary, the Board concludes that, in the predominant recent case law of the Boards, a change in the Opposition Division's preliminary opinion is not, in itself, regarded as a reason why the Opposition Division should have no discretion when admitting newly filed sets of claims.

In this situation, which is decisive for the present case, the case law of the Boards therefore appears to be developing consistently, such that there is no question of law of fundamental importance.

A referral of this question to the Enlarged Board of Appeal by the Board of its own motion therefore did not appear necessary at the present time within the meaning of Article 112(1)(a) EPC.

2.27

At the oral proceedings before the Board, the appellant further referred to T 1855/13, Reasons 1.8.2 to 1.8.4. That decision states that the fact that a request was filed late does not automatically mean that it should not be admitted. This is correct.

As explained above, the late filing of a submission is a prerequisite for the existence of discretion as to admissibility under Article 114(2) EPC, but of course does not determine the outcome of the exercise of that discretion.

T 1855/13 therefore contradicts the appellant's submission that the Opposition Division had no discretion whatsoever in the present case.

Moreover, that decision primarily concerns a different issue, namely insufficient reasoning for an Opposition Division's decision on admissibility.

2.28

T 726/20, Reasons 3.3-3.3.6, does not concern the question whether the Opposition Division had discretion as to admissibility, but rather whether the circumstances of the appeal case justify admission of the set of claims into the appeal proceedings within the meaning of Article 12(6) RPBA.

T 218/20, Reasons 3.1, concerns the filing of a new set of claims in response to a new objection and the admission of that set of claims pursuant to Article 12(4) RPBA. The same applies to T 776/17, Reasons 16.

None of these decisions cited by the appellant is therefore relevant to the present case.

2.29

The appellant referred to the Guidelines for Examination in the EPO, April 2026 edition. Point E.VI.2.2.2 states that amendments filed before the point in time specified in Rule 116(1) EPC generally cannot be regarded as late-filed.

It further states that even if a request is filed after the point in time established by Rule 116(1) EPC, it cannot be refused as late-filed if “the Opposition Division, during the oral proceedings, contrary to its preliminary, non-binding opinion in the annex to the summons, concludes that an objection stands in the way of maintenance of the patent”.

The Guidelines likewise state that the Opposition Division has discretion as to admissibility only if the request is not a timely reaction to a change in the factual basis underlying the proceedings.

2.30

The Guidelines acknowledge that they do not constitute legal provisions and that, for the work of the EPO, the EPC is primarily decisive, followed by the interpretation of the EPC by the Boards of Appeal and the Enlarged Board of Appeal (see Guidelines for Examination, General Part, 3.4, fourth paragraph).

As regards the substance, the Board points out, pursuant to Article 20(2) RPBA, that the interpretation of the EPC adopted in the present decision differs, for the reasons stated above, from the guidance contained in the Guidelines for Examination, point E.VI.2.2.2.

In the Board's view, the statements in point E.VI.2.2.2 of the Guidelines concerning Rule 116(2) EPC and the existence of discretion as to admissibility of the Opposition Division are contrary not only to the present decision but, as explained above, also to the predominant recent case law of the Boards.

Accordingly, the situations referred to in the Guidelines, such as the admission of new facts, evidence or objections, or a change in the Opposition Division's preliminary opinion, do not result in the complete removal of the discretion available to the Opposition Division under Article 114(2) EPC (and possibly also under Article 123(1) EPC) not to admit new sets of claims into the opposition proceedings. Rather, they are to be taken into account when exercising that discretion.

2.31

Under Article 12(6) RPBA, requests which were not admitted in the proceedings leading to the decision under appeal are not to be admitted into the appeal proceedings unless the decision not to admit them involved an error of discretion or the circumstances of the appeal case justify their admission.

2.32

As explained above, the Opposition Division's decision not to admit the present main request and auxiliary request 2 did not involve an error of discretion.

Nor do the circumstances of the appeal case justify their admission.

As regards the latter, the Board notes that reformulating the device claims as process claims constitutes a fundamental change in the subject-matter of the claims which is detrimental to procedural economy and, in the Board's view too, gives prima facie rise to new objections, in particular under Article 53(c) EPC, as set out in the contested decision.

2.33

The Board therefore did not admit the main request and auxiliary request 2 into the appeal proceedings pursuant to Article 12(6), first sentence, RPBA.

3. Auxiliary requests 1.0, 1A, 1A bis, 1A.0, 1A.0 bis, 1B, 1B.0, 1C, 1C.0, 2.0, 2A, 2A bis, 2A.0, 2A.0 bis, 2B, 2B.0, 2C, 2C.0 — Admissibility

3.1

Auxiliary requests 1.0 to 2C.0 were not part of the opposition proceedings and were filed for the first time with the statement of grounds of appeal.

They concern use claims which build upon the main request and auxiliary request 2. The main request and auxiliary request 2 were admitted neither into the opposition proceedings nor into the appeal proceedings.

No other requests comprising use claims were submitted or dealt with either in the opposition proceedings or in the appeal proceedings.

3.2

Auxiliary requests 1.0, 1A, 1A.0, 1B, 1B.0, 1C, 1C.0, 2.0, 2A, 2A.0, 2B, 2B.0, 2C and 2C.0 address the grounds for opposition under Article 100(a) in conjunction with Articles 54 and 56 EPC and Article 100(c) EPC, as well as an objection under Article 53(c) EPC.

Auxiliary requests 1A bis, 1A.0 bis, 2A bis and 2A.0 bis were filed by letter dated 12 June 2025 and address objections raised in the respondent's reply to the appeal under Articles 84 and 123(2) EPC.

3.3

The appellant requested admission of these requests under Article 12(6), second sentence, RPBA, since in its view the circumstances of the appeal case justified their admission.

The Board does not share this view.

3.4

Reformulating the device claims as process claims constitutes a fundamental change in the subject-matter of the claims which is detrimental to procedural economy (see point 2.32 above).

In the circumstances of the present case, admission of the above-mentioned auxiliary requests would, in the Board's view, require the main request and auxiliary request 2, on which all the further auxiliary requests are based, to be admitted into the appeal proceedings.

This is not the case (see point 2.33 above).

3.5

With the exception of auxiliary request 1.0 and auxiliary request 2.0, all of the above-mentioned auxiliary requests also address the objection under Article 53(c) EPC.

The objection under Article 53(c) EPC was discussed in the opposition proceedings in the context of the prima facie allowability of the then auxiliary requests 1 and 2, which were first filed during the oral proceedings before the Opposition Division, and was relied upon for the negative decision on admissibility.

3.6

Where new requests are filed in opposition proceedings, the Opposition Division is not restricted, when examining their prima facie allowability, to objections that are already in the proceedings.

If a new set of claims, as in the present case, gives rise for the first time to an objection under Article 53(c) EPC, that objection may be taken into account as part of the prima facie examination when exercising the Opposition Division's discretion as to admissibility.

Contrary to the appellant's view, however, this does not mean that such an objection can then be regarded as a new objection raised by the Opposition Division for the first time during the oral proceedings, to which the patent proprietor should be able to react by filing new sets of claims in the appeal proceedings.

Were this the case, every new request giving rise to a new objection could justify the filing of further new requests.

This would clearly be inappropriate and incompatible with the principle of procedural economy.

3.7

With regard to auxiliary request 1.0 and auxiliary request 2.0, the Board additionally finds, as it did above with respect to the main request and auxiliary request 2, that these requests prima facie give rise to an objection under Article 53(c) EPC.

A therapeutic effect cannot be excluded in the claimed sexual stimulation.

3.8

For these reasons, none of the above-mentioned auxiliary requests was admitted by the Board into the appeal proceedings pursuant to Article 12(6), second sentence, RPBA.

4. Auxiliary request 3 — Admissibility

4.1

This auxiliary request corresponds to auxiliary request 4 of the opposition proceedings, which was filed as auxiliary request 0.2a during the oral proceedings before the Opposition Division.

It was admitted by the Opposition Division and does not constitute an amendment within the meaning of Article 12(4) RPBA.

4.2

Auxiliary request 3 is therefore to be taken into account in the appeal proceedings.

5. Auxiliary request 3 — Novelty over D2 and D3

5.1

The device shown in Figures 1 to 3 of D2 is a stimulation device for stimulating a region inside a human body.

The device comprises a first part which can be introduced into a vagina or rectum of a human body and on whose side wall a pressure chamber coupled to a pressure-field generating device is arranged.

5.2

Contrary to the respondent's view, D2 does not directly and unambiguously disclose a second part of the device which, both because of its shape and because of its dimensions, cannot be introduced into the body when the first part has been introduced into the human body, and which comprises operating elements.

5.3

The respondent's division of the device shown in Figures 1 to 3 into a first and a second part, determined by the insertion depth, is based on the assumption that, because of its overall length, the device cannot be completely inserted into a vagina or rectum.

However, the wording of the claim makes it clear that the second part is shaped and dimensioned such that it cannot be introduced into the body when the first part has been introduced.

As submitted by the appellant, this requires the first part and the second part to have different configurations, i.e. for two distinguishable parts to exist.

In the device shown in D2, the skilled person would not directly and unambiguously recognise a second part distinguishable from a first part by its shape and dimensions.

This is also supported by the fact that the possibility of inserting the device into a vagina or rectum is not mentioned in D2.

5.4

The respondent argued that the feature “shaped and dimensioned” does not restrict the subject-matter of the claim because the precise shape and dimensions are not specified.

This argument is not convincing.

In order to be able to distinguish the second part directly and unambiguously from the first part on the basis of its shape and dimensions, it is not necessary to specify how the second part is shaped and dimensioned.

5.5

The subject-matter of claim 1 is therefore novel over D2.

Since Figures 1 to 3 of D2 show the device disclosed in D3, the same applies to D3.

6. Auxiliary request 3 — Added subject-matter

6.1

Claim 1 has been amended to include the feature that the sealing device is “formed around the opening of the pressure chamber so as to extend around it and is configured to seal the pressure chamber from the surroundings”, which originates from the first paragraph on page 4 of the description as originally filed.

6.2

Contrary to the respondent's view, omitting the feature, also mentioned in that paragraph, “corresponding to the shape of the opening” does not constitute an unallowable intermediate generalisation.

For the sealing effect, it is irrelevant whether the sealing device has the same shape as the opening of the pressure chamber.

The sealing effect is therefore not inextricably linked to the shape of the sealing device corresponding to the shape of the opening of the pressure chamber.

A possible enlargement of the pressure chamber is likewise not dependent on the shape of the opening.

The isolated incorporation of the above-mentioned feature therefore does not result in an unallowable extension.

6.3

Claim 1 of auxiliary request 3 therefore meets the requirements of Article 123(2) EPC.

7. Auxiliary request 3 — Admission of the objections under Articles 83 and 84 EPC

7.1

For the first time in the respondent's reply to the appeal, the respondent raised the objection that the subject-matter of claim 1 was unclear and insufficiently disclosed because of the negative wording “cannot be introduced into a human body”.

7.2

The feature originating from granted claim 14 was likewise considered unclear, namely that “when the first part (11a; 21a) is configured to be introduced into the rectum, the opening (3) is positioned and dimensioned such that the alternating pressure field can be applied through the opening (3) to a region of a rectal wall which is located adjacent to a prostate, such that the alternating pressure field can be applied to the prostate through the rectal wall”.

7.3

These objections were not raised in the opposition proceedings and accordingly did not form part of the contested decision.

Their being raised for the first time in the appeal proceedings therefore constitutes an amendment within the meaning of Article 12(4) RPBA.

7.4

The respondent did not give any reasons why these objections were raised for the first time in the appeal proceedings, but merely pointed out that, according to T 882/24, it was not necessary to raise all conceivable objections against a set of claims if an objection already stood in the way of maintenance of the patent on the basis of that set of claims.

7.5

In T 882/24, the Board held that an opponent had to be given the opportunity to respond in the opposition proceedings to a set of claims newly filed in those proceedings by raising new objections, even if the features to which the objections related had already been contained in an earlier set of claims and had not been challenged there.

That situation is not relevant to the present case, however, because, unlike in T 882/24, the objections here were raised for the first time in the appeal proceedings.

7.6

The objections concern features which were already contained in claim 1 of auxiliary request 4 filed on 8 December 2023.

They should therefore have been raised already in the opposition proceedings.

Article 12(6), second sentence, RPBA provides that such objections are to be admitted only if the circumstances of the appeal case justify their admission.

The respondent did not submit any such circumstances, and in the Board's view none exist.

7.7

The Board therefore did not admit the objections under Articles 83 and 84 EPC into the appeal proceedings.

8. Remittal

8.1

The primary object of the appeal proceedings is to review whether the decision of the Opposition Division was correct.

8.2

The issue of inventive step of the subject-matter of claim 1 was not addressed in the contested decision of the Opposition Division.

8.3

There are therefore special reasons within the meaning of Article 11 RPBA which justify remitting the case to the Opposition Division for further prosecution pursuant to Article 111(1) EPC.

9. Reimbursement of the appeal fee

9.1

As explained above, the Opposition Division's decision not to admit the then auxiliary requests 1 and 2 did not involve an error of discretion.

The patent proprietor's right to be heard under Article 113(1) EPC was not violated.

9.2

The Opposition Division therefore did not commit a substantial procedural violation which would justify reimbursement of the appeal fee.

The request for reimbursement of the appeal fee is therefore refused.

Order

For these reasons it is decided that:

The decision under appeal is set aside.
The case is remitted to the Opposition Division for further prosecution.
The request for reimbursement of the appeal fee is refused.

26 October 2026

T 0712/24 - Change preliminary opinion OD