CASELAW - reviews of EPO Boards of Appeal decisions

T 1109/18 – Duty of neutrality of a deciding body of the EPO in inter-partes procedure

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This is the second appeal concerning EP 2079319.

At the end of the first appeal, see T 692/14, the case was remitted to the OD for further prosecution.

The proprietor and both opponents appealed the OD’s interlocutory decision holding the then AR 7 allowable.

The decision is interesting in two respects. Here we will deal with the duty of neutrality of the OD.

Opponent’s 2 requests and argumentation

Opponent 2 considered that the OD had committed a substantial procedural violation.

He requested the reimbursement of the appeal fee.

Opponent 2 argued that the OD made a suggestion to the benefit of the proprietor concerning how to successfully modify the claim requests.

The board’s position on opponent’s 2 query

The board referred to point 3.6 of the decision from which it appears that the OD decided not to admit AR 2-6 into proceedings, but offered the proprietor, if he so wishes, the occasion to introduce corresponding AR without use claims.

The minutes say the following “P requested to postpone the decision on admissibility in case the opposition division (OD) was minded to not admit AR 1-13”.

The minutes further state that “After a break (9:58-10:42) Ch announced the decision that MR, AR1 and AR7-13 are admitted into the proceedings and that AR2-6 are admitted under the condition that all use claims were deleted.”

For the board, the passages of the decision might be interpreted to mean that the opposition division mentioned that the non-admitted auxiliary requests might be amended by deleting the use claims.

The board added that while these passages from the decision alone do not clarify that there was an explicit suggestion by the OD, it seems to be derivable from the minutes that the OD’s chair stated that the then AR 2 to 6 without the use claims could be admitted into the proceedings.

For the board, this statement needs to be seen in the context of the preceding discussion, in which the opponents had argued that these requests should not be admitted in particular because they included additional use claims, as well as in the context of the proprietor’s statement requesting postponement of the decision on admissibility.

The board’s reservations

The board considered that it was not clear from these statements whether the proprietor had at least implied, if not stated, that it was prepared to delete the contentious use claims.

From the minutes and the decision under appeal, however, it is clear that the OD was attempting to strike a balance between the interests of the proprietor and those of the opponents.

The board’s conclusion

Although this resulted in a rather unfortunate course of events, taking the specific circumstances of the case into account, the board concluded that the OD’s behaviour cannot be said to amount to a procedural violation of such severity that it could be qualified as substantial within the meaning of R 103(1,a).

The board’s warning

The board emphasised that the OD needs to be neutral and impartial, impartiality being a paramount requirement in inter-partes proceedings.

Therefore, in such proceedings the OD’s freedom to offer specific advice to one of the parties as to how an objection might be overcome is severely limited and the OD should refrain from giving one-sided assistance in such proceedings. The board referred to T 173/89, Reasons 2, penultimate paragraph; T 1072/93, Reasons 5.3.

Outcome of the procedure

The board considered the MR allowable and remitted to the OD for adaptation of the description.

The request of the opponent 2 for reimbursement of the appeal fee is refused.


In the present case the board did not consider that the OD committed a SPV, but it was not far from it. Otherwise it would not have issued the strong warning.

Some OD, alas, consider that opposition is a form of continuation of examination proceedings. It can happen that an OD comes up during OP with suggestions for the proprietor. Whilst this is perfectly legitimate to do so in examination, this is not correct in opposition.

In any case, it should not be forgotten that such requests will be late-filed and can easily been dismissed.

On the other hand, the OD should not do the job of the opponent and bring in further prior art or a new ground of opposition.

It is always possible that an OD knows about such prior art which can be easily retrieved. It can also appear that there are grounds of opposition which are so relevant that they should be introduced in the procedure. But this should remain an absolute exception!

In such a situation it is only fair if the OD brings in new objections prior to the OP and not wait until the OP to come up with those documents or new grounds. If it is not possible to do so prior to the OP it is then only fair to adjourn the OP.

Common general knowledge and the boards of appeal

As far as common general knowledge is considered it is in principle never late, but the same rule should apply and it should be avoided to bring in such common general knowledge during OP.

In this respect two decisions of the BA are rather problematic.

In T 1370/15 and, the BA felt empowered to introduce common general knowledge into the proceedings without supporting it by any evidence.

In T 1090/12 the same was applied in examination.

Try as opponent or first instance division to come up with common general knowledge without providing any evidence, you will see what a BA thinks of this.

Why can a BA do so?

It is difficult to consider that the BA have been neutral as in the first case the patent was revoked. In the second one the application was refused.

Guidelines D-VI, 5

In Guidelines D-VI, 5 it is envisaged that an additional search can be set in train by the OD.

The following examples for the need of a further search are given.

If in the opposition the main subject covered by the patent shifts

  • to elements of a dependent claim which were originally of subsidiary importance,
  • to elements which were previously not set out in the claims, but only in the description,
  • to individual features of a combination, or to sub-combinations,

and there are grounds for believing that the original search did not extend to such elements or features and if no relevant document can be found quickly in the circumstances set out in C‑IV, 7.3.

How is this part of the Guidelines relating to further searches compatible with the duty of an OD to be neutral and not help any party in opposition?

I would have thought that in opposition the search has to be done by the opponent and not by the OD. If the opponent did not quote any prior art against a dependent claim it does not seem to be the duty of the OD to compensate for this failure of the opponent.

As far as bringing in features from the description, such a request should not be admitted if filed during the OP. Should this feature have been incorporated in the claim before the OP, the opponent is allowed to bring in prior art relating to this new feature in the claim. Such prior art will not be considered late.

When it comes to individual features of a combination, this should be done by the opponent and not by the OD.

Sub-combinations can be considered in the same way as features stemming from the description.

It is surprising that in view of the established case law on late filings that this part of the Guidelines has never been deleted.

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