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Case law 30 mei 2023

Correction of inconsistent application of the right principles of admissibility | T 1617/20

-- Dit artikel is onderdeel van de EPO Case Law Newsletter en gaat verder in het Engels -- Prima facie allowability under Art. 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 the claim request. The Board in T 1617/20 ruled that 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 (see point 2.6.11 of the reasons).


The appeal lodged by the Patentee [appellant, AP] lies from the Opposition Division’s [OD] decision to revoke EP 1840145 B1. The OD considered the Main Request [MR], being the claims as granted , as well as Auxiliary Requests [AR] 1 and 3 to 13 not to comply with Art. 123(2) EPC. One of the auxiliary requests, AR2, was not admitted into the procedure.

The OD concluded in first instance that Art 100(c) EPC prejudiced the maintenance of the patent as granted since the terms "stereochemical" and "polymeric" in claim 1 of the granted patent did not have a basis in the original application. This decision on claim 1 as granted deviated from the OD’s preliminary opinion wherein the OD expressed the view the claim complied with the requirements of Art 123(2) EPC. Still in first instance, the proprietor subsequently filed AR1, based on AR5, therein removing the objected terms. Although the OD admitted AR1 into the proceedings, prima facie allowability under Art 123(2) EPC of the claim from which the objected features were removed was initially not examined, yet AR1 was eventually found to add matter. In reaction the proprietor filed AR2 (current MR) based on previously submitted AR9 and addressed the added matter problem. The proprietor argued this amendment was triggered by the change in opinion of the OD, addressed the raised Art 123(2) EPC objection and as acknowledged for AR1, would not change the subject of the proceedings.

However, the OD subsequently applied a different criterion, namely prima facie allowability under Art 123(2) EPC, when deciding on the admittance of AR2. They concluded that AR2 was not prima facie allowable under Art 123(2) EPC, even though the feature in question was present in claim 1 as granted and AR 1 and had never been objected to before. On the basis thereof it was decided to revoke the patent.

The Appeal

In the grounds of appeal, AP contested the reasoning of the OD that led to the non-admittance of former AR2. It maintained that the subject-matter of this request, re-filed in the appeal proceedings as the MR, complied with Article 123(2) EPC. The appellant also filed amended pages of the specification, which had been adapted to the claims of this MR (former AR2) and 2 further ARs.

In its reply to the appeal, the Opponent ("respondent", RO) contested the admittance of all the appellant's requests. Moreover, it submitted that the claimed subject-matter of the MR infringed Art 123(2) and (3) EPC and lacked clarity under Art 84 EPC.

In their preliminary opinion the Board expressed the view that the MR should be admitted into the proceeding and that the claimed subject matter complied with Art 123(2) and 84 EPC. RO’s objection under Art. 123(3) EPC was preliminarily held inadmissible.

Oral Proceedings

AP requested to set aside the appealed decision and to maintain the patent on the basis of the MR, or alternatively on the basis of one of the ARs. AP further requested a remittal to the OD should any of the requests be considered to meet the requirements of Art. 123(2) EPC. RO in turn requested to dismiss the appeal, not to admit any of AP’s requests and to confirm revocation of the patent. In addition RO submitted that the amendments to the description were not present in the description pages filed in first instance and that this would be an amendment of AP’s case within the meaning of Art 12(4) RPBA 2020.

Admissibility of amended description

The Board agreed that the amendment of the description was not part of the appealed decision and represented an amendment of AP’s case under Art 12(4) RPBA2020. The Board however also found that the amendment was not complex merely consisting of the deletion of a sentence. The amendment was made to overcome the objection raised in the appealed decision that the features expressed by the sentence that had now been deleted were not disclosed in the original application. The amendment thus directly addressed an issue that led to the appealed decision and did not introduce any issues imparting procedural economy. Therefore, the Board saw no reasons why the amended description according to the MR should not be admitted.

A Board should only overrule the OD's exercise of discretion if it was done i) according to the wrong principles, or ii) without taking into account the right principles, or iii) in an unreasonable way
The Board of Appeal - European Patent Office

Admissibility of the MR

The OD examined AR2 (current MR) and decided not to admit it into the proceedings. AP argued that filing AR2 as the MR in the appeal does not represent an amendment of their case. The Board noted with reference to T 879/18 and T 222/16 that in view of G 7/93, a Board should only overrule the OD's exercise of discretion if it was done i) according to the wrong principles, or ii) without taking into account the right principles, or iii) in an unreasonable way.

The Board found that the, under Art 123(2) EPC objected feature was already present in claim 1 as granted, as well as in claim 1 of AR1 as filed in first instance and admitted by the OD. This feature had not been objected to prior by RO or the OD.

The Board set out that the OD should have used the same criteria when deciding on the admittance of AR1 and AR2. By using different criteria for admissibility of AR1 and AR2, the OD's decision to not admit the current MR was based on an inconsistent approach. The Board set out that while prima facie allowability under Art 123(2) EPC may indeed be a valid criterion, objecting to a feature for the first time during oral proceedings, while it was already present in higher ranking claim requests without previous objections, goes against fairness and good faith.

The Board concluded that the OD's decision not to admit the current MR suffered from an error in the use of their discretion, as they used available criteria in an unreasonable way. The Board decided to overturn the OD’s decision on the non-admittance of former AR2, and to admit the present MR into the appeal proceedings pursuant to Article 12(6) RPBA 2020.

The Board found the Art 123(2) EPC objections against the MR not convincing. The Board further exercised its discretion under Art 12(5) RPBA 2020 not to admit RO’s Art 123(3) EPC objections into the proceedings, since the objection was not substantiated in the reply to the appeal. As a consequence, neither the Board nor AP were in a position to understand why the amendment of claim 1 would have led to an extension of the protection conferred. The clarity objection was found unconvincing, consequently the Board found the MR to comply with Art 84 EPC.

Decision of the Board of Appeal

The appealed decision dealt only with the issue of added subject-matter under Art 123(2) EPC. In the opposition also a lack of sufficiency of disclosure and a lack of inventive step (Article 100(a) and (b) EPC) were invoked. As a consequence, the Board had to make use of its discretion under Art 111(1) EPC, and remitted the case to the OD for further prosecution, in accordance with the AP’s request.

The Board set aside the decision under appeal and remitted the case to the OD.

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EPO Case Law Team

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