CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1084/21 – Late filed submission and Art 13(3) RPBA -  T 1914/12 is still applicable – T 604/01 is not any longer applicable

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The patent relates to a cold rolled steel sheet and recrystallisation-annealed steel flat product and a method for producing the same.

Brief outline of the procedure

The patent was revoked by the OD as claim 1 as granted was infringing Art 123(2) and none of the AR were allowable.

The proprietor appealed the decision.

The board decided that the MR in appeal was lacking IS over a Public Prior Use of one of the two opponents. The same applied to AR 1-3, 3’, 4-5.

AR6 was admitted under Art 13(1) RPBA. In AR6 all product claims were deleted. The PPU applied only to the product claims.

The board decided maintenance according to AR6.

The decision is interesting in that an objection under Art 123(3) was not admitted, whereby the board referred to T 1914/12.

The opponent’s point of view

The opponents considered that AR 6 should not be admitted to the proceedings under Ar 12(6) RPBA.

The opponents also argued for the first time at the oral proceedings before the Board that the amendments in claim 1 did not fulfil the requirements of Article 123(3).

The new objection under Art 123(3) was raised in relation to the amendments to claim 1 pursuant to AR 6, according to which the deletion of the reference back to product claims 1-4 in claim 5 as granted extended its scope of protection.

The opponents further argued that the new objection was not an amendment to their submission, but a simple argument that had been put forward in response to the course of the appeal proceedings within the meaning of Art 13(3) RPBA.

The board’s decision

The board held that AR6 was derivable from AR2 filed in opposition, the latter containing as well product claims. Hence, AR6 does not fall under the provisions of Art 12(6) RPBA.

The board noted that in response to the filing of the AR by the proprietor, no objection under Art 123(3) has been raised in respect of AR 6 or any other AR, although it would have been necessary in the context of the necessary procedural action to allow all parties to the proceedings a reasonable time to react.

Said objection was indisputably raised for the first time at the OP before the board, and hence at a very late stage of the proceedings.

For the board, the new objection under Art 123(3) is not merely a new argument serving to further substantiate an objection previously raised, but a new objection containing a new factual element and a new legal ground. The board referred to the Case Law of the Boards of Appeal, 10th edition, 2022, Chapter III.H.8, in particular decision T 1914/12, also cited by Opponent 1.

However, T 1914/12, Reasons 7.1.4, confirms that a new legal ground typically involves a new factual submission. In the present case, the new objections to the requirements of Art 123(3) are accordingly supported by the claim interpretation put forward for the first time, according to which a change in the chemical composition of the steel flat product is possible after it has been provided in accordance with process step (a) of claim 1. This new interpretation is a new factual element and does not constitute a mere further argument according to T 1914/12. This view is also confirmed by T 1875/15.

As can be seen from the cited chapter of the case law and from point 7.1.4 of the reasons of T 1914/12, T 604/01 , Reasons 6, which is also cited by the opponents in this regard and which is also mentioned in Reasons 7.1.3 of T 1914/12, has become obsolete in the context of the further development of case law and is not relevant in the present case.

Consequently, the new late-filed objection under Art 123(3) constitutes an amendment to the opponent’s appeal case, the admission of which to the proceedings is at the discretion of the board under Art 13(2) RPBA.

Furthermore, both opponents have exercised their right to react to the late filing of AR 6 with three successive written submissions within the meaning of Art 13(3) RPBA.

However, this right to respond to amended submissions does not mean that this can take place at any time and with any frequency and variation. Rather, the obligation to facilitate procedings also applies here. A response, including all objections, must be made promptly in order to ensure a fair procedure.

The provisions of Art 13(3) RPBA therefore do not provide any justification in the present case for the late objection to be admitted under said Art.

In exercising its discretion to admit a new objection under Art 13(2) RPBA, the board may consider whether the newly raised objection is at least prima facie convincing on the merits.

This requirement was not met in the present case.


The argumentation of the present board is convincing, the objection under Art 123(3) was an amendment of the opponents’ appeal case and was rightly not admitted under Art 13(2) RPBA. The reference to T 1914/12 is as well convincing.  

It was an interesting attempt of the opponents to refer to Art 13(3) RPBA, but it failed to convince the board. When answering a new submission of the proprietor, all objections should be raised as early as possible. This is however not a scoop.

For the present board, only T 604/01 is not any longer applicable, but T 1914/12 with its various definitions remains applicable under the RPBA20.

The position taken by the board in T 919/22, commented in this blog, claiming that T 1914/12, having been taken under the RPBA07 is not any longer of application under the RPBA20, is clearly at odds with that of the present board.

I will not disguise that I rather follow the resent board when it considers T 1914/12 still applicable. I would also say that J 14/19, Reasons 1, taken under the RPBA20,  does not say anything fundamentally different than T 1914/12.

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