CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1080/20 – Failure to request an OP in first instance has no consequences in appeal – Admission of a combination of granted claims

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The patent relates generally to devices, systems and uses for monitoring fluid volume in patients with renal diseases.

Brief outline of the case

The patent was revoked as the OD decided that claim 1 as granted was infringing Art 123(2). The proprietor had submitted observations, but not requested OP. The proprietor appealed.

The original MR in appeal was maintenance as granted. During OP the proprietor dropped the MR and elected AR1 as MR. Claim 1 of the MR in appeal combined claims 1 and 2 as granted and claim 2 combined claims 1 and 3 as granted.

Objections of the opponent under Art 123(3) against the MR were dismissed by the board.

The MR was admitted by the board. The case was remitted to the OD for further prosecution.

The opponent’s point of view

Request for OP

The opponent considered that the proprietor’s request for OP in the appeal was filed only after the statement of grounds of appeal had been filed. It should have been submitted already, within the meaning of Art 12(6) RPBA, in first instance. The request for OP should thus not be admitted.

Admissibility of the MR

The opponent considered that the MR should not be admitted as the OD had had no chance to decide on the MR, which should have been filed earlier. The MR represented a fresh case and was not prima facie allowable because it infringed Art 123(3).

The proprietor’s point of view

Request for OP

The proprietor simply maintained its request for OP.

Admissibility of the MR

The appealed decision had been taken by the OD without issuing a preliminary opinion or holding OP. The MR had been filed at the outset of the appeal proceedings together with the statement of grounds of appeal.

The board’s decision

Request for OP

A party’s request for OP in appeal is different from that party’s request for OP in the proceedings before the department of first instance. If a party, as in the present case, chooses not to avail itself of its right to OP before the department of first instance, it has to bear the consequences of that choice in that it must accept that that department may decide on the basis of that party’s written submissions only. This, however, does not mean that such a party is then also barred from requesting OP in any ensuing appeal proceedings.

Hence OP were held in line with the proprietor’s request.

Admissibility of the MR

The MR was filed together with the statement of grounds of appeal and constitutes an amendment within the meaning of Article 12(4) RPBA. It directly addresses the OD’s finding – of which the proprietor only became aware when the decision under appeal was issued – that claim 1 as granted comprised added subject-matter.

Furthermore, the amendment is directed to a combination of claims as granted. The claimed combination adds the features the omission of which resulted in added subject-matter according to the decision of the OD. In view of these circumstances, the board decided to exercise its discretion to admit the MR into the appeal proceedings.

Since the appealed decision dealt only with the ground for opposition under Art 100(c) in view of Art 123(2) for claim 1 as granted, the case was remitted to the OD for further prosecution.


Request for OP

As the appeal procedure is not the continuation of the first instance procedure, holding OP in appeal cannot be made dependent on filing a request for OP in first instance.

For the same token, a request to hear an accompanying person in first instance has to be repeated in appeal, see T 520/07.

Admissibility of the MR

In the absence of a request for OP, and OD is not obliged to send out a communication. If it can decide on the view of the submissions of the parties, it will do so.

The present decision should however not be taken as an encouragement for waiting until appeal in order to file further requests.

It should also not be seen as an encouragement not requesting OP in first instance.

However, should OP had been held in first instance, it is doubtful that the new MR would have been admitted in appeal if it had only be filed when entering appeal.

A combination of granted claims only filed in appeal is to be considered as an amendment under Art 12(4) RPBA and is only admitted at the discretion of the board.

Some boards have also been reluctant to admit requests consisting of combinations of claims as granted.

As the board could easily remit, there was no real extra work for the board.

All in all, the proprietor’s attitude was nevertheless risky.

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