EP 2 504 118 B1 relates to a reconditioning method for a deep hole drill.
Brief outline of the case
The OD rejected the opposition and the opponent appealed.
Eventually the patent was revoked by the board.
The decision is interesting due to the consequence of the late filing of the proprietor’s reply to the opponent’s statement of grounds of appeal.
The grounds of appeal submitted by the opponent were served on the proprietor on 15.11.2023. Pursuant to Art 12(1,c) RPBA, the response to the appeal should therefore have been filed by 15.03.2024. The proprietor’s submission of 25.03.2024 was therefore late.
The proprietor’s point of view
In a letter dated 05.11.2025, the proprietor requested that the content of its response to the appeal dated 25.03.2024 be taken into account in the appeal proceedings in accordance with the discretion granted under Art 13(1) RPBA. It stated the circumstances that led to the late filing and the reasons that would justify its admission.
The board’s decision
The board considered the filing of the response to the appeal after the expiry of the deadline for response to be an amendment to the proprietor’s appeal case within the meaning of Art 13(1) RPBA.
The board also considered that the response to the appeal dated 25.03.2024 does not in fact contain any new arguments beyond those put forward during the opposition proceedings.
The admission of the response to the appeal dated 25.03.2024 is therefore not detrimental to procedural economy.
Since the response to the appeal was filed more than a year before the final oral proceedings and does not contain any new arguments, the board held that the position of the opponent in the appeal proceedings is not prejudiced.
For those reasons, the board decided, in exercising its discretion under Art 13(1) RPBA, to admit the content of the response to the appeal dated 25 March 2024 into the appeal proceedings.
Comments
The key message is for any respondent: file the reply to the SGA of the appelant within the 4 months’ time limit set out in Art 12(1,c) RPBA.
It has to be noted that Art 12(1,c) RPBA does not foresee any sanction for not respecting the time limit of 4 months set therein.
Interpreting the non-respect of this time limit as an amendment under Art 13(1) RPBA is a far-fetched, as Art 13(1) RPBA only speaks about an amendment to a party’s appeal case after it has filed its grounds of appeal or reply. If the reply is late, it has not been filed and can thus not be considered as an amendment.
In opposition proceedings the notion of the patent being deemed revoked does not exist. This is different in examination were the application can be deemed withdrawn when the applicant does not reply in time to a communication of the ED.
The day the boards have got red of their backlog, other boards could invoke this decision as not admitting the reply from a respondent if not filed within 4 months from the receipt of the SGA. After all, the notion of loss of rights does not exist in opposition.
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