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 0691/24 - Review of decision to hold inadmissible

Key points

• The OD did not admit an auxiliary request filed during the oral proceedings. Should the Board admit it under Art. 12(6), first sentence, RPBA, on the ground that the OD's decision suffered from an error in the use of discretion?
• "These claim requests were not filed within the period set out in the opposition division's invitation pursuant to Rule 79(1) EPC [ ...] . Rather, the opposition division had the discretion pursuant to Article 123(1) EPC in conjunction with Rules 81(3), 79(1) and/or 116(2) EPC not to admit them (see e.g. R 6/19, Reasons 6 and 7; T 256/19, Reasons 4.7 [post] ). "
• "This discretion exists independently of the provisions of Rule 116 EPC and of whether the opposition division deviated from its provisional opinion as set out in the annex to the summons to the first-instance oral proceedings (see e.g. T 966/17 [post])"
• " In other words, a positive preliminary opinion on auxiliary request 9a - already admitted into the proceedings at the opposition division's discretion - cannot guarantee per se the admittance of yet a further filing of claim requests. Nor does such a positive opinion "reset" the application of the "convergence criterion" which the opposition division relied upon when taking its discretionary decision on admittance in the opposition proceedings."
• "Also the EPO Guidelines (in its version of March 2025) do not state that an opposition division's deviation from its preliminary opinion necessarily constitutes a "change of the subject of the proceedings" within the meaning of Rule 116(1), fourth sentence, EPC (cf. part E, chapter VI, section 2.2.2, board's emphasis: "The following are examples of what would normally constitute a change of subject of the proceedings: [...] the opposition division departs from a previously notified opinion."). 
• "Nor can such a deviation as such justify an automatic admittance of claim requests (see the decisions cited by the proprietor, i.e. T 868/20, Reasons 3.1.2 and T 847/20, Reasons 3.3.3). "
•  "The "convergence criterion" as regards claim requests is definitely a well-established criterion which can legitimately be used by a first-instance department when exercising its discretion as to admittance of late-filed claim requests (and this even before the expiry of the time limit set under Rule 116(1) EPC; see e.g. T 364/20, Reasons 7.2.10; see also EPO Guidelines, part E, chapter VI, section 2.2.3: "Convergence of requests is another of the relevant factors that the division may consider when exercising its discretion"). 
• The GL paragraph seems to refer to the case " if the opposition division states in the annex to the summons that the patent is likely to be revoked and the proprietor in response submits amendments after the final date set under Rule 116(1), possibly not until the oral proceedings, the division could, in principle, treat such requests as late-filed" (which is quite the opposite of the Board's analysis).
• "In view of the minutes of the two oral proceedings before the opposition division, the board agrees with the respondents that the discussions concerning auxiliary requests 5 and 6 had already taken a considerable amount of time. Moreover, through the replacement of features, those discussions became at once moot when the appellant moved on to "auxiliary request 10a""
  
  
• "Concerning the present first auxiliary request, and as a matter of principle, the board takes issue with the opposition division's announcement to "permit one further request and no more" (see point 97 of the minutes of the second oral proceedings) and its subsequent decision to "not look at the auxiliary request" (see Reasons 38 of the decision under appeal). This is because, firstly, the board sees no legal basis in the EPC to make submissions from a party - irrespective of their content - being subject to prior approval from the deciding body. Secondly, the limitation to "one further request and no more" - ex ante and without any consideration as to their substance - appears to be purely arbitrary."
• See also T 1241/21 (post) and T 756/18, but see also T 350/19 (post)

EPO 

The link to the decision is provided after the jump.

T 1639/23 - Made admissible by subsequent developments

Key points

• "The opposition division did not admit D7 and D7' (among other documents) [filed by the opponent] and the corresponding objections based on them into the opposition proceedings since they were considered late filed and, prima facie, not relevant."
• "Documents D7 and D7' were submitted by the appellant also on the final date referred to in Rule 116(1) EPC. Objections and evidence submitted by an opponent after the end of the opposition period under Article 99(1) EPC and claim requests submitted by a patent proprietor after the end of the period under Rule 79(1) EPC can generally be considered to not have been submitted in due time within the meaning of Article 114(2) EPC (see T 2172/21, Reasons 2, first paragraph; T 823/23, Reasons 7.18; and T 2662/22, Reasons 8.1, antepenultimate paragraph). Hence, the opposition division had discretion not to admit the aforementioned amended claim request or the aforementioned documents."
• " In the case at hand, documents D7 and D7' were submitted by the [opponent] at the same time as the [patent proprietor] submitted two amended claim requests [with features taken from the description]. These amended claim requests replaced all previously filed claim requests. During the oral proceedings before the opposition division, the patent proprietor filed, in two consecutive steps, two further amended claim requests as new main requests. The opposition division admitted all these amended claim requests into the opposition proceedings. When the fourth amended claim request was admitted by the opposition division, the appellant-opponent raised an objection against it based on documents D7 and D7', which the opponent had already filed on the final date referred to in Rule 116(1) EPC. The opposition division did not admit this objection for lack of prima facie relevance. While prima facie relevance is a correct criterion for the exercise of discretion, an opposition division must in such a situation also take account of previous procedural developments and ensure that the parties' opportunities to adapt their cases in the opposition proceedings are properly balanced. It appears questionable whether this was the case."
• The Board does not mention the opponent's right to be heard. 
• A question is whether D7 was admissible at the time of its filing (when the new auxiliary requests were not yet submitted) and if it could become admissible later.
• The Board does not have to make a decision on the point: "regardless of whether the opposition division's exercise of discretion suffered from an error, the Board considers that the circumstances of the appeal case justify the admittance of document D7. In particular, the Board considers document D7 prima facie highly relevant with regard to novelty"
• Claim 1 is found to be not novel over D7.
• The novelty-destroying effect of D7 would have applied equally to the claims as granted, it seems to me.
• The patent is revoked.

EPO 

The link to the decision can be found after the jump.

T 0217/23 - The duty of the proprietor in opposition proceedings

Key points

• The proprietor, as respondent, files auxiliary requests in appeal. The Board finds the proprietor's main request (claims held allowable by the OD) to be not allowable. 
•  "At issue is whether a patent proprietor may wait for the preliminary opinion of the opposition division to react to the objections raised in the notice of opposition and whether, where the preliminary opinion is positive, no auxiliary claim requests with fallback positions need to be filed, unless the opposition division changes its opinion at oral proceedings."
• "In inter partes proceedings, each party has to be given equal opportunity to present its case and a fair chance to respond to new matter raised by the other party or parties, or by the opposition division. The opposition division and the parties have to observe the principle of good faith (T 669/90, OJ EPO 1992, 739, points 2.3 and 2.4; T 201/92, point 3.5). To expedite the proceedings and implement the principle of fairness towards the other party or parties, each party must submit all facts, evidence, arguments and requests for amendments relevant for its case as early and completely as possible, and not in a piecemeal manner (T 326/87, OJ EPO 1992, 522, points 2.1.1 and 2.1.2; T 430/89, point 5.3; T 951/91, OJ EPO 1995, 202, points 5.2 and 5.3). This case law developed mainly in the context of Article 114(2) EPC pertaining to facts and evidence. 
• Nevertheless, in view of the principles set out above, the rationale of this case law also applies to a patent proprietor's observations and amendments (Rule 79(1) EPC), which should not only include all facts and evidence relied on to defend the patent (T 502/98, point 1.5) but also requests for amendment of the patent considered necessary to address the main objections raised by the opponent in case these should be found to prejudice the maintenance of the patent (see e.g. T 582/08, point 8.5)."
• "Patent proprietors do not have a privileged position in opposition proceedings allowing them to address objections raised by opponents by way of requests for amendment only when presented with the preliminary or final opinion of the opposition division in the summons or during oral proceedings."
• "This would be unfair to the opponents as they would be confronted at a very late stage with a change in the object of the proceedings that they could not reasonably have foreseen and for which they could not prepare. To expect a patent proprietor to address in its observations to a notice of opposition the objections raised by the opponents also by filing suitable fallback positions does not place an undue burden on the patent proprietor. "
• A proper response to an opposition does not require permutations of sets of amended claims that address each objection individually or in any combination as this would leave it to the opposition division to identify any patentable subject-matter from such a plethora of claim sets and unduly burden the proceedings.
• It seems common practice in appeal proceedings.
• "Presented with an opponent's complete case at the outset of the opposition proceedings, a patent proprietor, knowing its commercial interests, should be able to define a reasonable number of fallback positions that address the main issues in its observations to the opposition. Although the persuasiveness of objections by opponents cannot be predicted with absolute certainty, the duty to file requests for amendment cannot solely depend on the opinion by the opposition division as this would imply a shift of the patent proprietor's responsibility for making its case to the opposition division and would compromise the opposition division's duty to equal treatment of the parties. "
• "Of course, there are complex cases in which numerous objections are raised which cannot be fully addressed by a reasonable number of requests for amendments and which might even require the patent proprietor to adopt non-convergent strategies of defence to safeguard its commercial interests in a patent. Nevertheless, also in these cases, the main lines of defence should emerge from the patent proprietor's observations to an opposition which also must include any request for amendment to give the opponent a proper opportunity to reply to new matter and to avoid ping-pong submissions immediately before or during oral proceedings before the opposition division."
• Requiring the submission of all facts, evidence, arguments and requests for amendments relevant for the patent proprietor's case as early and completely as possible does not preclude further submissions, including the filing of additional requests for amendment in the course of opposition proceedings if there are good reasons, for example, responding to new evidence, addressing new objections or dealing with unforeseen challenges relating to gaps in the chain of evidence or argument which emerge during the course of the proceedings.
• So far, the Board could be setting a framework for the OD to decide on the admissibility of auxiliary requests filed after the proprietors' first reply to the opposition, in particular on the admissibility of auxiliary requests filed by the Rule 116 date.
• However, the Board provides the above reasons as part of the reasoning to hold auxiliary requests inadmissible that were filed by the respondent with the reply to the appeal. In particular, the OD had decided to maintain the patent in amended form, and in the ARs the claims are narrowed compared to the claims held allowable by the OD. [edit 08.10.2025]
• Hence, the OD would not have even considered the auxiliary requests at issue and whether they were filed or not would not make a difference for the judicial review of the OD's decision, it seems. In other words, had the ARs been filed already before the OD (timely), they would have been carry-over requests that had not been considered in the written decision of the OD, but then would have been admissible under Art. 12(4) RPBA.

EPO 

The link to the decision can be found after the jump.

T 1815/23 - Prima facie and bona fide

Key points

• The proprietor submits amended claims before the Rule 116 date, in reply to a new objection under Art. 123(2) raised by the OD in the preliminary opinion,  and submits a correction of clerical errors in those claims after the Rule 116 date. How should the OD consider admissibility?
• The Board, in translation: The requests pending at the beginning of the oral proceedings thus constitute a timely response to the objection of inadmissible amendment first raised in the summons, and also filed within the time limit, so that, contrary to the Opposition Division's view [...] these requests were not late. Therefore, the Opposition Division had no discretion in admitting the requests, but should have admitted them into the proceedings and examined them in detail.
• The Board, in the original German: " Die von der Einspruchsabteilung vorgenommene prima facie-Prüfung war deshalb nicht ausreichend und benachteiligte die Beschwerdeführerin in unzulässiger Weise, da der von ihr gemachte bona fide Versuch, den Mangel der vermeintlich unzulässigen Änderung zu beheben, nicht vollumfänglich geprüft wurde.""
• Hence, if the amended claims are a timely and bona fide response to an objection, they must be examined on the merits (and hence admitted). 

EPO 

The link to the decision can be found after the jump.

T 2188/22 - Renumbering requests during the OP OD

Key points

• The proprietor renumbered auxiliary request during the OP before the OD: "auxiliary requests 18 to 33 filed during the oral proceedings were identical to auxiliary requests 2 to 17 filed during the written proceedings"
• Hence, new requests 2-17 were inserted during the oral proceedings after the OD concluded that claim 1 was not new over D4.
• "The opposition division decided not to admit auxiliary request 2 into the proceedings. Thereafter the appellant stated that it wished to revert to the auxiliary requests submitted in the written procedure (cf. minutes, page 6, para 4). After the parties were heard on the issue of novelty of the subject-matter of claim 1 of auxiliary request 2 filed on 21 June 2021 the opposition division concluded that auxiliary request 2 lacked novelty. Thereafter the Chairman informed the parties that no further request would be admitted and announced the opposition division's decision revoking the patent"
• The Board: "With regard to the Chairman's statement that only one further request may be filed, it should be noted that it is up to the parties to define their requests. In principle the opposition division cannot prevent the filing of requests, but can only decide on their admittance after having heard the parties on that issue."
• "it should be noted that the appellant had not withdrawn its auxiliary requests 2 to 17 filed in the written procedure. By submitting auxiliary requests 2 to 34 at the oral proceedings, the appellant obviously only pursued the goal of ranking the previous auxiliary requests after the newly submitted auxiliary requests. This follows from the fact that auxiliary requests 18 to 33 submitted at the oral proceedings corresponded to the auxiliary requests 2 to 17 submitted in the written procedure. The fact that the appellant subsequently stated that it wished to revert to its original requests merely meant that it did not wish to pursue the auxiliary requests 2 to 17 newly filed during the oral proceedings. Since the parties were neither heard on the question of admissibility of auxiliary requests 3 to 17 (filed in the written proceedings), nor was the content of those auxiliary requests discussed, the appellant's right to be heard was violated (Article 113(1) EPC). "
• "The fact that the auxiliary requests filed in the written proceedings were renumbered during the oral proceedings before the opposition division does not mean that these requests are to be regarded as "new" requests as stated under point 6 of the impugned decision. "
• "it should be noted that the renumbering of the auxiliary requests which took place during the oral proceedings before the opposition division is not a sufficient reason for disregarding those requests in the proceedings."
• The Board: "The [proprietor] did not file an unreasonable number of requests, nor can the [proprietor's] conduct be considered abusive" because "the higher ranking requests additionally filed in the oral proceedings (i.e. auxiliary requests 2 to 17 then on file) were withdrawn immediately after the opposition division had decided not to admit the newly filed auxiliary request 2. Thus, in fact, the substance of any further request had not been discussed before the appellant decided to revert to its original requests".
• As a comment, the position of the opponent who had to prepare for 17 newly filed auxiliary requests during the hearing should also be considered. Forcing the opponent to prepare for a large number of requests only to withdraw them during the same oral proceedings can be an abuse of procedure in my view, depending on the circumstance (i.e. I'm not saying that it was abusive in the present procedure). 
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0029/22 - New argument raised, auxiliary request not admitted

Key points

•  "Pursuant Article 12(6) RPBA 2020, first sentence, the Board does not admit auxiliary request 1a which was already filed during the oral proceedings and not admitted by the Opposition Division."
• "Appellant 1 [proprietor] argued that auxiliary request 1a was a direct reaction to the new discussion about the relevance of paragraph [52] of D7 during oral proceedings in opposition. Therefore, auxiliary Request 1a should have been admitted [by the opposition division]." The proprietor argues that paragraph 52 was not mentioned in the preliminary opinion of the OD. The opponent had mentioned paragraph 52 in the written submissions, but based on a different line of argumentation, still according to the proprietor.
• The Board: "The Board [does] not recognise any error in the use of discretion by the Opposition Division not to admit the auxiliary request 1a (Reference is made to points 13-15 of the appealed decision). Indeed, the Opposition Division considered that the lack of novelty of auxiliary request 1a was to be expected in view of their preliminary opinion from 31 January 2020 and the letter of the opponent dated 20 April 2020. While the annex to the summons of the opposition division may be referring to different paragraphs compared to the decision, the letter of the opponent dated 28 April 2020 specifically mentions paragraph [52] as well as [22] and [23] as referred to in the decision of the opposition division. And while the opponent may have emphasised that the non-fusible materials may be made of natural fibers, the passage cited from paragraph [23] discloses that they can be made of "thermoset polymer materials (e.g., polyester, acrylic)"."
• I wonder if the OD could hypothetically have included the reasoning based on paragraph 52 for the first time in the written decision without violating Article 113(1) EPC, and, if not, whether the fact that the opponent presented the argument during the oral proceedings but the OD did not admit a responsive auxiliary request is sufficient to meet Article 113(1) EPC.
• The Board: "Furthermore, the amendments made to auxiliary request 1a were taken from paragraph [0068] of the patent specification, column 13, second sentence (i.e. paragraph [0067] of the A1-publication, sentence bridging column 12 and 13). The amendments were not taken verbatim and raised new issues under Articles 123(2) and 84 EPC."
• The Board does not explain if "raised new issues" means that the opponent had objections, whether having any merits or not, or if the Board sees issues under Article 123(2) and Article 84. The Board does not expand at all on said issues. 
• If the opponent raises a new argument during the oral proceedings that turns out to be essential, and assuming that the argument goes beyond the factual and legal framework of the case, i.e. would be a case amendment under the RPBA, is the proprietor limited to combing the claims as granted?

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0951/19 - The OD changes opinion, opponent should request postponement

Key points

• The Board, in translation: "During the oral proceedings before the opposition division, the opponent requested that the filed auxiliary request 1 not be admitted due to late submissions, since the changes made were taken from the description and their subject-matter was surprising .
• However, the opposition division admitted auxiliary request 1, filed during the oral proceedings, into the opposition proceedings. The requirements of Rule 80 EPC and Article 123 EPC are met and the changes are [...] not surprising for the opponent [according to the OD]."
• Acccording to the opponent, the auxiliary request at issue involved significant differences compared to an earlier auxiliary request and was hence surprising.
• "In the present case, the opposition division took the preliminary view in its summons that granted claim 1 was new compared to E1 and changed this view at the oral proceedings after extensive discussion with the parties. The admissibility of auxiliary request 1, which was then filed, was discussed during the oral proceedings and both parties were heard, see points 41 to 48 of the minutes. The opponent also does not deny having been heard by the opposition division on the admissibility. She has not argued that the opposition division had not given her sufficient time, nor has she requested that the oral proceedings before the opposition division be interrupted or adjourned. To that extent the present case is different from T 789/83
• In T 789/83, the OD proposed amended claims of own motion (as they did in those days) and "[a]fter submitting the proposed amended Claim 1, the Opposition Division gave the parties ten minutes for studying the suggested version of Claim 1". This was a substantial procedural violation.
• I assume that the  Board refers to the opponent not requesting a break or adjournment of the oral proceedings after the OD decided to admit the auxiliary requests in the procedure. 
• "The board is therefore of the opinion that there has been no violation of the right to be heard and that the opposition division exercised its discretion correctly and also justified it in the decision under appeal,"
• 
  
• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text in machine translation.

T 0435/20 - Admissibility rules for OD

Key points

• This decision contains a number of important points regarding the admissibility rules for procedures before the OD.
•  "The board considers that the opposition division decided according to the wrong principles and disregarded the principles of procedural fairness and of equal treatment of the parties in not admitting documents D59 to D62 and D81 to D90. The reasons are as follows."
• The OD had also held evidence inadmissible submitted by the opponents on a point where the preliminary opinion of the OD was in their favour. The Board:   "the mere fact that the opposition division's preliminary opinion was positive for one party cannot in itself justify not admitting any further documents by this party which are filed by the final date set by the opposition division for making written submission under Rule 116(1) EPC. " (emphasis added)
• "the fact that the opposition division's preliminary opinion was negative for the appellant but positive for the respondents cannot justify a different treatment of the parties, since a preliminary opinion is neither binding nor definitive."
• The opponents filed a declaration D81 to support an earlier argument. The held the declartion, with annexes, inadmissible on the grounds iner alia that "the arguments of the declaration ... (D81) ... are reflected in the representative's arguments in the [accompanying] letter" 
• The Board: "arguments submitted by a party's professional representative do not qualify as means of giving evidence under Article 117(1) EPC and may therefore have a different weight depending on whether or not they are supported by evidence in the form of a declaration by a technical expert accompanied by evidentiary documents supporting the content of the declaration. Accordingly, the opposition division was mistaken in holding that the declaration D81 with supporting documents on the one hand, and the representative's arguments on the other were equivalent and that this could justify non-admittance of [declaration D81].
• The opponents had filed post-published evidence under sufficiency, which was held inadmissible on that ground by the OD. The Board: " consideration of a document submitted in substantiation of an allegation of fact does not depend on whether or not the document forms part of the state of the art (see CLBA, section III.G.4.1). The board therefore does not agree with the opposition division that, as a matter of principle, post-published evidence is prima facie unsuitable for the substantiation of allegations of verifiable facts in the context of sufficiency of disclosure."
• I note that the OD reasoned that: "documents D82 to D90 "were published years after the priority date of the present application and are prima facie not suitable to establish the general knowledge and the skills of the skilled person required at the date of filing which is discussed in this declaration". 
• The OD also violated the "principles of procedural fairness and of equal treatment of parties": "as noted above, documents D81 to D90 had been filed as direct and immediate response to new evidence, submitted by the appellant on the last day for making written submissions under Rule 116 EPC. In admitting the late filed documents D80 and its supporting documents D64 to D79 into the proceedings but not admitting documents D81 to D90 filed by the respondents in direct response, the opposition division did not respect the principles of procedural fairness and of equal treatment of parties."
• "Furthermore, prima facie relevance is to be assessed with taking into account the outcome of the proceedings (see CLBA, IV.C.4.5.3) and the opposition division gave no reasons why this criterion was not fulfilled for documents D59 to D62 [filed by the opponents]. Accordingly, the board cannot assess whether the opposition division has exercised its discretion in this respect correctly."
• The OD decided to revoke the patent, so this remark is not clear to me.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1617/20 - Fairness trumps prima facie allowability

Key points

• "The respondent [opponent] argued that the opposition division correctly exercised its discretion in not admitting auxiliary request 2 (i.e. the current main request). The respondent submitted that the appellant had already filed 12 auxiliary requests prior to the oral proceedings before the opposition division. At the oral proceedings, two further auxiliary requests were filed, including auxiliary request 2, which corresponds to the present main request. No reasons were apparent as to why this auxiliary request could not have been filed earlier, especially since an objection made under Article 123(2) EPC to the term "stereochemical" in claim 1 as granted had already been raised in the notice of opposition. The appellant could and should have reacted to this objection by filing the current main request in a timely manner. When filing a request late, especially at the oral proceedings, only the prima facie allowability of the claims should be examined. The opposition division acted correctly in this regard, when it found that claim 1 did not comply with Article 123(2) EPC."
• "The board disagrees."
• "In order to decide whether the opposition division's discretionary decision not to admit into the proceedings what was then auxiliary request 2 (i.e. the current main request) suffered from an error, i.e. was based on a wrong principle, or was taken by applying the right principle in an unreasonable way, the file history of the present case needs to be considered. "
• "In applying this different criterion of prima facie allowability under Article 123(2) EPC, the opposition division reasoned that the feature of claim 1 expressing the ratio [aliphatic to aromatic compounds] was not prima facie allowable under Article 123(2) EPC."
• " However, this feature was already present in claim 1 as granted [] and in claim 1 of auxiliary request 1 as filed during the oral proceedings and admitted by the opposition division. More importantly, this feature had never been objected to before under Article 123(2) EPC, either by the respondent or by the opposition division. The respondent confirmed at the oral proceedings before the board that it had not objected to this feature prior to the oral proceedings before the opposition division, and then only when auxiliary request 2 (the current main request) was being considered"
• "the board acknowledges that prima facie allowability under Article 123(2) EPC of a late-filed amended claim request may be a valid criterion to be used by the opposition division when deciding on the admittance of this claim request []. However, using this criterion, to object for the first time at oral proceedings to a feature of the late-filed claim request that was already present in higher-ranking claim requests and had never been objected to before, not even when deciding on the allowability or admittance of those higher-ranking claim requests, goes against the principles of fairness and good faith."
• "the board has concluded that the opposition division, when deciding not to admit the current main request, used the available criteria in an unreasonable way. The opposition division's decision thus suffered from an error in the use of its discretion."
• It is not clear to me if the OD should have held the new attack inadmissible, according to the Board.
• " For these reasons, the board has decided to overturn the opposition division's decision on the non-admittance of what was then auxiliary request 2, and to admit the present main request into the appeal proceedings pursuant to Article 12(6) RPBA 2020."
• " the board has concluded that the respondent's sole objection under Article 123(2) EPC is not convincing. Therefore, the main request fulfils the requirements of Article 123(2) EPC. "
• "essential questions concerning the patentability of the claimed subject-matter have not yet been examined or decided upon by the opposition division. Hence, the board finds it appropriate to make use of its discretion under Article 111(1) EPC and to remit the case to the opposition division for further prosecution,"

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1614/18 - Late filed but prima facie relevant before the OD

Key points

• First-instance opposition proceedings are a different game than opposition appeals, as illustrated by the present decision.
• "The appellant (patent proprietor) contested the decision of the opposition division to admit the late filed document D6."
• The Board: "the competent department [i.e. the OD] has in fact to take such a late filed and "prima facie" relevant evidence into consideration no matter what stage the procedure has reached and whatever the reasons for the belated submission."
• The Board adds that this is "stated in the EPO "Guidelines" VI, 2.1"". Presumably, GL E-VI, 2 is referred to: "In deciding whether to admit facts, evidence or grounds for opposition not filed in due time, their relevance to the decision, the state of the procedure and the reasons for belated submission are to be considered. If examination of late-filed grounds for opposition, late-filed facts or late-filed evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then the competent department has to take such grounds, facts or evidence into consideration no matter what stage the procedure has reached and whatever the reasons for belated submission. In that case, the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2) (see T 156/84).".
• " the Board confirms the conclusion of the opposition division that document D6 is not prejudicial to novelty of claim 1 as maintained."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1214/21 - Only one further request

Key points

•  "it is evident from the minutes of the oral proceedings before the opposition division (point 26) that the chair had indicated that, after having discussed three main requests in the proceedings, only one further request would be allowed without any consideration being given to (the) others, which is a further substantial procedural violation (see also T 756/18, Reasons 3)."
• The headnote of T 756/18 in translation: "The Opposition Division exceeds the appropriate limits of its discretion when it declares that it admits only one auxiliary request and immediately rejects additional requests without apparent valid reasons and without even having examined whether the amendments would have made it possible to set aside all the objections validly raised until then without giving rise to new ones, thus making them potentially admissible."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2442/17 - If you need more time, you have to ask for it

Key points

• The O/D decided to admit an auxiliary request filed during the oral proceedings. The opponent asks the Board to reverse this. The Board reviews whether the OD has not misused its discretion (that the Board is willing to consider the possibility of reversing a decision to admit a request is interesting of its own).
• "The opponent also argued that the patent proprietor should have reacted before the oral proceedings since a lack of novelty objection in view of document D3 (DE 695 28 476 T2) had already been raised with the grounds of opposition."
• "According to Rule 116(2) EPC the opposition division has the discretion to admit new documents, i.e. new amendments to the description, claims and drawings, filed after the final date for making written submissions fixed by the opposition division in the annex to the summons to oral proceedings."
• Rule 116(2) in fact begins with a statement about the patentee being notified of the objections and being invited to submit amended claims. The Board, however, does not discuss that aspect of the provision.
• The Board applies the deferential review of discretionary decisions as specified in G 7/93.
• "The Board is of the opinion that the opposition division took into account the right criteria, since it considered the amendment to the claim to be suitable to overcome the objection of lack of novelty and also that the subject-matter of the claim was more restricted than that of claim 1 as granted"
• "The opposition division also considered the amendment to be a reaction to the course of the proceedings, since in the annex to the summons to oral proceedings it had referred to the possible relevance of D3 without elaborating on the matter."
  
• "The Board agrees with the opponent [] that an objection of lack of novelty had been raised with the notice of opposition with respect to D3. However, as argued by the patent proprietor, that objection was not fully substantiated, since it was not indicated why the load bearing assembly of D3 should be considered to be suitable for use in an elevator system []. The Board thus does not find fault in the opposition division's finding that the filing of auxiliary request 1 at the oral proceedings is to be seen as a reaction to the course of those proceedings.
• "According to the minutes of the oral proceedings, see point 5 thereof, the opponent did not request an adjournment of the oral proceedings nor did it request additional time to prepare a new line of argumentation. It therefore appears that at that time the opponent considered itself able to deal with the amended situation without delay."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2610/19 - Too many inventive step attacks

Key points

• Credits to T. Schürmann and M. Wachenhausen for highlighting this decision in epi Information 3/2022.
• The Board, in translation: "It is not possible to state in general how many starting points an opposition division has to take into account when examining inventive step. The answer to this question depends on the circumstances of each case, in particular on the distinguishing features of the different starting points proposed."
• "However, it is clear that in practice only a limited number of lines of attack can be examined. An opponent is therefore required to select from the multitude of possible starting points those which, in his opinion, most clearly call into question the patentability of the claimed subject-matter. If the number of attacks exceeds a reasonable level, an opposition division must have some discretion"
• As a comment, it would be useful if the Board had identified the legal basis for this discretion. Article 114(2) EPC  only refers to facts or evidence not submitted "in due time". 
• However, in the present case, the OD's had not correctly exercised this discretion. 
• The opponent had presented two inventive step attacks in the Notice of opposition, one starting from F3 and the other from F5. The OD in the preliminary opinion considered F4 to be the closest prior art.
• During the oral proceedings, the OD had decided that F5 was the closest prior art and had forbidden the opponent to present arguments regarding its attack starting from F3. In the written decision, the attack starting from F5 as well as the attack starting from F3 was considered by the OD." In the case of document F3, [the OD] only took into account the opponents' written submissions. It prevented the opponent from using any document other than document F5 as a starting point for examining inventive step during oral proceedings, relying on the third paragraph of Section G-VII, 5.1 of the Guidelines"
• ""When choosing the F5 as the closest prior art, the chairman of the opposition division pointed out that this choice determines the sole starting point.
• "Since the decision acknowledges the arguments put forward in the written procedure based on F3, the opposition division is of the opinion that the right to be heard of the opponents has not been violated (Article 113(1) EPC)."
• The Board: "the opposition division should have given the opponents the opportunity during the oral proceedings to comment orally on the attack based on document F3 and on the opposition division's preliminary view expressed in the summons."
"In this context, it is noted that the right to be heard under Article 113(1) EPC is not already fulfilled if a party who has requested oral proceedings under Article 116 EPC has only been able to submit comments in writing (see T 1077/06, points 10 and 14 of the reasons for the decision). Under the circumstances, the passage of the Guidelines cited by the opposition division cannot justify denial to the [opponent] to comment at the oral proceedings on inventive step on the basis of document F3. It is also not clear from items 23 and 24 of the minutes that there was any discussion of the relevance of other starting points at all. The opposition division's refusal to hear the opponent on those points before the opposition was rejected, constitutes a violation of the right to be heard"

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0267/18 - The term therapeutic agent is unclear

Key points

• The present decision deals with clarity of the term 'therapeutic agent', but first provides a useful summary of the rules for admissibility of amended claims filed during oral proceedings before the OD.
•  " Auxiliary Request 1 was filed and admitted during the oral proceedings in Opposition (see decision under appeal item 3.3.1). The amendments required no undue evaluation and complied with the requirements of Rule 80 EPC. Since the opposition division departed from its provisional opinion set out in the annex to the summons and finding on the novelty of the main request during the oral proceedings and concluded that the patent could not be maintained as granted, the filing of an auxiliary request, which intended to overcome the novelty objection, seemed justified as the subject of the proceedings had surprisingly changed for the patentee at a late stage of the proceedings." 
• " In principle, a decision taken by a department of first instance in the exercise of its discretion may be overruled by a Board of Appeal only if it is concluded that the department exercised its discretion in accordance with the wrong principles, without taking the right principles into account or in an arbitrarily or unreasonable way, thereby exceeding the proper limits of its discretion (see Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, in the following "Case Law", V.A.3.5.1.b), and in particular decision G 7/93, OJ EPO 1994, 775, reasons 2.6)." 
• "  In exercising its discretion, the division had first to consider the reasons for filing the request at such a late stage in the proceedings, the allowability of the late-filed amendments, on a prima facie basis, and whether the parties and the opposition division could reasonably be expected to familiarise themselves with the proposed amendments in the time available. Since the amendments introduced in claim 1 of the auxiliary request 1 were filed in reaction to a change of the opposition division's opinion regarding novelty, were intended to overcome a novelty objection, did not require any further extensive assessment for both the opposition division and the opponent, and were "prima facie" allowable, they were admitted." 
• italics added. A pertinent question may be whether "the time available" is simply the time scheduled for the oral proceedings before the opposition division or something else.
• " Hence the board fails to see why the opposition division had exercised its discretion according to the wrong principles or in an unreasonable way." 
• " For this reason, it will not overrule the way in which the first instance has exercised its discretion. Furthermore, since the auxiliary request 1 was admitted by the opposition division in the proper exercise of its discretion and was decided upon by the opposition division, the board fails to see a legal basis for disregarding this request (see also Case Law, supra, V.A.3.5.4). It follows that since the aim of appeal proceedings is to review the decision under appeal in a judicial manner (Article 12(2) RPBA 2020), auxiliary request 1, the only request now on file, forms part of the appeal proceedings." 
• The duty of the Board to review decisions to admit a case amendment was also acknowledged in T 0960/15.
• However, the amendment is found to be unclear. " Since the term "therapeutic agent" is open to interpretation or ambiguous, claim 1 lacks clarity within the meaning of Article 84 EPC."

• " Although a skilled person is able in most cases to decide whether a certain amount of a specifically defined product has a therapeutic effect or not (see decision T 151/01 of 9 February 2006, reasons 2.1), the "therapeutic agent" used in claim 1 defines far more than a specific class of compounds in a specific quantity having a therapeutic effect for a disease. It defines any known or yet unknown biologically active compound capable of treating or alleviating at least one disease state or condition. It is not limited to agents that are approved by a competent regulatory authority and/or are on a publicly available list of therapeutics. Hence, the respondent's argument that the skilled person would be able to determine from a list of approved therapeutic products whether any agent is a therapeutic agent or not, is not decisive in resolving the present clarity issue." 

•  The claim is directed to a delivery vehicle for a medicament, as I understand it, and reads: "1. A fully intact eubacterial minicell derived from a eubacterial parent cell, wherein the minicell comprises biologically active compound which is a therapeutic agent and displays an antibody or antibody derivative directed to a surface antigen of a cell for cell- or tissue-specific targeting of said eubacterial minicell, wherein the biologically active compound and the antibody or antibody derivative are exogenous to the parent cell and distinct from each other."

   

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2776/19 - OD was right to hold request inadmissible

Key points

• In this opposition appeal, the Board does not admit a request held inadmissible by the OD. The OD held the request inadmissible because it was filed during the oral proceedings and was considered to be late-filed.
• The Board: " The board is not able to see an undue exercise of discretion in the way the opposition division handled the case. Therefore, following the principle laid down in decision G7/93, point 2.6, and applied, for instance, in T28/10, point 2.1, a principle according to which the exercise of discretion by the first instance should only be overturned by the board in case wrong criteria were applied or the discretion was exercised unreasonably, the board upholds the opposition division's decision and does not admit the seventh auxiliary request into the proceedings " 
• The patentee argued that the OD's decision was incorrect because "the Opposition Division has not examined whether these amendments are prima facie suited to overcome the objections" and |" Moreover, "in case the opinion [of the opposition division] changes, the proprietor shall be given the opportunity to react"." 
• The Board: "Whether the patentee's view is convincing that "clear allowability" is a sufficient criterion for admitting a late-filed claims request into first-instance proceedings can remain an open question. In this case "clear allowability" had been disputed by the opponents raising various objections, including objections of lack of novelty and of inventive step." 
• In my view, it's unfortunate that there is no clearly established case law on this point.
• Perhaps more importantly, the Board: " the fact that the opposition division changes its view on certain technical aspects between its preliminary opinion provided in the communication annexed to the summons to oral proceedings and its opinion formed during the debate taking place during the oral proceedings, so that the opposition division's view becomes less favourable to the patentee, does not mean that the patentee automatically has the right to file a new claims request during oral proceedings. Indeed, since the objections raised by the opponents and the documentary evidence on which these objections were based, remained essentially unchanged since the beginning of the opposition proceedings, the change of view of the opposition division did not correspond to an unforeseeable or unknown situation for the patentee." 
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0707/17 - Should have filed that request with its reply to the notice of opposition

Key points

•  "At the end of the oral proceedings, the proprietor withdrew its main request and auxiliary requests 1 to 4, and requested that the appealed decision be set aside and that the patent be maintained on the basis of one of auxiliary requests 5 to 8."
• "The novelty attacks based on E6 and on E11 were raised for the first time in the statement of grounds of appeal. Nothing of significance follows from the fact that E6 was filed with the notice of opposition, whereas E11 was only filed with the statement of grounds of appeal; because lack of novelty in view of E6 was first invoked in the statement of grounds of appeal."
• "Given that the auxiliary request found allowable by the Opposition Division resulted from a combination of granted claims, both attacks could and should have been presented in the notice of opposition, or, at the latest, when the proprietor submitted the relevant request. However, the Board also considers that the proprietor should have filed that request with its reply to the notice of opposition, rather than only shortly before the oral proceedings before the Opposition Division."  
• As a comment, this may not be evident when reading the Guidelines and Rule 116.
• "The Board further acknowledges that, in view of the timing of the request and of the preliminary opinion of the Opposition Division, it was only during the oral proceedings before the Opposition Division that developments led to the conclusion that the evidence provided by E1 and E2 was not sufficient to demonstrate it not to be allowable."
• " It was thus the procedural behaviour of both parties that led to the Board being confronted with facts and evidence brought forward for the first time with the statement of grounds of appeal.  In view of the above, and the fact that the maintenance of invalid patents is not generally in the public interest, the Board considers the prima facie relevance of the new facts and evidence to be the decisive criterion in this case".
• "the novelty attack based on E6 lacks prima facie relevance"
• "There are, to the contrary, serious reasons to suspect that E11 might be prejudicial to novelty of claim 1 of the patent as maintained."
• "Having taken the decision to consider novelty in the light of E11, the proprietor can expect an opportunity to overcome the new issue." Auxiliary request 5 was filed with the reply to the appeal and addresses the novelty objection. 
• "auxiliary request 5 and the inventive step attacks against it based on E11 are to also be considered."
• "Given that none of the attacks brought forward against auxiliary request 5 is successful, the patent can be maintained on basis of it."

EPO 

The link to the decision is provided after the jump.

T 1202/19 - Holding claims admitted by OD inadmissible

Key points

•  Claim 1 of the Main Request is directed to: "Use of McCoy cells persistently infected with Lawsonia intracellularis bacteria to grow and obtain these bacteria in purified form"
• "Lawsonia intracellularis is highly pathogenic." (wiki). 
• This post is however about procedural aspects of the case.
• The OD revoked the patent. The Board finds the claims of the main request to be not novel and AR-1 to AR-8 to be not allowable.
• Turning to AR-9 to AR-17: "The opposition division admitted auxiliary requests 9 to 17 into the opposition proceedings and considered that they did not overcome the objections discussed at the oral proceedings before the opposition division."
• "The respondent [opponent] contests this decision and maintains the objection against their admission already raised before the opposition division. Reference is made to the established case law and to the course of events at first instance, in particular the renumbering of the auxiliary requests at the beginning of the oral proceedings which had as a consequence the avoidance of a discussion - and thus, a decision - on the subject-matter of granted claim 1."
• "The respondent's [opponent's] request not to admit them into the appeal proceedings is understood mainly as a request to review the discretionary decision of the opposition division."
• The Board holds the requests inadmissible.
• " The sole reason for the opposition division for admitting auxiliary requests 9 to 17 into the proceedings appears thus to be the fact that "the patentee intends to maintain these requests for an eventual appeal against the decision of the opposition division" and so the opposition division considered it "legitimate to maintain the auxiliary requests as fall-back positions" [as stated in the decision under appeal]. The board, though, considers that it is not reasonable to admit claim requests into the opposition proceedings for the sole reason of providing fall-back positions in possible appeal proceedings; "
• "Claim 1 of auxiliary requests 9 to 17 is directed to a method to obtain McCoy cells persistently infected with Lawsonia intracellularis bacteria. " AR-9 to AR-17 also include a second independent claim being a use claim. The OD found the use claims not allowable for the MR and AR-1 and thereby could held AR-9 to AR-17 unallowable without examining the independent method claim. 
• The issue is probably that if AR-9, filed with the SoG / already before the OD is admitted, cancelling the use claim could be an attempted amendment in the course of the appeal proceedings.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0222/16 - Incorrect application Rule 116 by OD

 Key points

• The Board admits a request filed initial appeal submissions into the proceedings under Article 12(4) RPBA 2007 in this opposition appeal even though the claims are in substance the same as a request held inadmissible by the OD.
• The OD had not admitted the request AR-3 filed during the oral proceedings “on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.”
• “In the present case it is the board's conviction that the opposition division exercised its discretion in an unreasonable way for the following reasons”
• “A new objection under Article 123(3) EPC was raised by the opponent for the first time on the final date for making submissions set under Rule 116 EPC, namely on 7 September 2015. As the requests then pending could not have taken into account this new objection, the proprietor should have been given at least one opportunity to file a new request, which was not the case.”
• “the board notes that Rule 116(2) EPC states that new documents filed by the proprietor after the final date for making submissions need not be considered unless admitted on the grounds that the subject of the proceedings has changed. In the present case, the new objection under Article 123(3) EPC represented a change of the subject of the proceedings and, given the very late timing of the objection, it was evidently impossible for the proprietor to file a response before the final date set under Rule 116 EPC.”
• “the Board notes that according to the established jurisprudence, the relevant criterion for deciding on the admissibility of late filed requests is their prima-facie allowability in view of the objection under discussion. This criterion is fulfilled in the present case since the amendment in claim 1 is clearly suitable to overcome the objection under Article 123(3) EPC, ” (italics added)
• “For the board, the convergence criterion relied upon by the division is of secondary importance in the context of objections under Article 123(3) EPC, because while a novelty objection can be overcome by limiting a claimed subject-matter even further in a convergent way, this is not necessarily the case for an objection under Article 123(3) EPC.”
• “It goes without saying that the non-validity of the priority claim is an unsuitable criterion”

T 0222/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160222eu1.html

4. Third auxiliary request

Vis-à-vis claim 1 as granted, in claim 1 of this request the upper limit of the PIB molecular weight has been amended in to 1500.

4.1 Admissibility

The Board exercised its discretion under Article 12(4) RPBA 2007 not to hold inadmissible this request, because apart from the deleted dependency of claim 5 to claim 2, the claims of this request are identical to those of the third auxiliary request filed during the first instance oral proceedings but not admitted by the opposition division, on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.