CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1089/20 – Divergent application of Art 13(2) RPBA20

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The patent results from a divisional application from EP06819634/EP 1 955 529

The patent relates to communication terminals capable of using different communication channels for communication with a remote party defined by a communication address, and a method for initiating a communication link to such a remote party.

Brief outline of the procedure

The patent was revoked under Art 100(c)=Art 76(1) and the proprietor appealed.

Opponent 2 withdrew its opposition after having sent a reply to the statement setting out the grounds of appeal.

The proprietor requested, as a MR that the patent be maintained in its granted form, or that the patent be maintained in amended form on the basis of the claims of one of six AR 1, 1A, 1B, 2, 2A and 2B; AR 1 and 2 were subject to the decision under appeal, whereas AR 1A, 1B, 2A and 2B were filed with the proprietor’s response to the board’s communication under Art 15(1) RPBA20.

The board held that the MR as well as AR 1 and 2 infringed Art 76(1).

AR 1A, 1B, 2A and 2B were not admitted in the procedure under Art 13(2) RPBA20.

The revocation was thus confirmed.

Admissibility of AR 1A, 1B, 2A and 2B

The proprietor’s position

The proprietor submitted that these AR were the direct response to the board’s preliminary opinion, since the board’s objection of added subject-matter was based on the broad claim language of a specific feature rather than on the lack of an embodiment combining both “dynamic search” and the presentation of “usable channels”.

Furthermore, these claim requests were not detrimental to procedural economy. In addition, similar AR were subject to the related German nullity proceedings. These requests did not make any difference in terms of novelty and inventive step, nor did they change the substance of claim 1. This was made apparent by the fact that opponent 1 had raised novelty and inventive-step objections against these new claim requests by mere reference to earlier submissions.

The board’s position

In its preliminary opinion, the board rather confirmed the OD’s and the opponents’ stance: the earlier application as filed discloses the presentation of communication channels “usable for communication with second communication terminal” for selection only in combination with a complete identification of the second communication terminal. In addition to this, the board expressed its reservations as to the wording of said specific feature.

Against this background, the negative opinion on allowability under Art 100(c) and 76(1) as regards the main request in the preliminary opinion does not constitute an “exceptional circumstance”. Indeed, the board, in response to the proprietor’s argumentation, made, at most, only additional and supporting observations which were not a repetition of a written statement appearing in the decision under appeal or in the opponents’ submissions.

These observations were only supporting and not determining the final assessment, which was in fact based on the reasoning already provided in the decision under appeal and in the opponents’ written submissions.

Only for the sake of completeness, the board added that even where a new objection had been raised, contrary to the conclusions drawn in T 1255/18 (Reasons 6.1) cited by the opponent, this would not per se amount to “exceptional circumstances” within the meaning of Art 13(2) RPBA20 and referred to T 2632/18, Reasons 4.3; and T 2271/18, Catchword. I commented both decisions on LinkedIn respectively in March and April 2022.


A similar situation occurred in T 1105/20 and similar decision was taken by board 3.5.03 in the same composition. This decision will not thus not be commented separately.

It is nothing new under the sun that filing new requests after a communication of the board under Art 15(1)RPBA20 has very little chance of success in the absence “exceptional circumstances” and “cogent reasons” for submitting new requests.

The RPBA20 have just made it more difficult to see late-filed submissions admitted at the third level of convergence.

That similar AR were subject to the related German nullity proceedings is certainly not a fact which will be taken into account by a board.

That they do not make any difference in terms of novelty and inventive step, nor did they change the substance of claim 1 are arguments which will not bring a board to admit them.

If a board merely emphasises what it considers key points to be discussed on the basis of the parties’ submissions, there is indeed no reason to file further requests. In this respect T 2271/18 clarified the situation.

What seems however problematic is when a board of appeal, like in T 2632/18, and now T 1089/20 and T 1105/20, decrees that even if a “new” objection is raised by a board in the communication annexed to the summons cannot per se amount to “exceptional circumstances” within the meaning of Art 13(2) RPBA20. In T 2332/18, the board held that it was to the party submitting the late request to give cogent reasons and to show why it considered the objection as being new.

Even if late-filed requests might be admissible under Art 13(2) RPBA20, they might still not be admitted under Art 13(1) RPBA20, representing the second level of convergence if they give raise to new objections.

If a new objection is raised, it should not be disputed by the board, in spite of what is said in the explanatory notes on Art 13(2) RPBA20 in CA/3/19.

In this respect T 1255/18 is more reasonable and should be followed. T 1255/18 was itself followed by T 1358/17 and T 1804/19.

Even if a further request is admissible under Art 13(2) RPBA20, third level of convergence, it can still be considered not admissible under Art 13(1) RPBA20, if it gives raise to new objections, cf. second level of convergence.

Manifest divergence in procedural matters

The discrepancy between T 1080/20 and T 1105/20 on the one hand and T 1255/18 as well as T 1358/17 and T 1804/19 on the other hand, shows that the discretion given to the boards in procedural matters by the RPBA20 is applied in a very different manner by different boards.

This was already perceptible in the case of deletion or combination of claims. Here as well, the discretion is applied in a very different way.

It should however not become a procedural lottery when parties file an appeal. It is not asking too much to have some reliability in procedural matters.

First instance

Should a division of first instance raise a new objection in the annex to the summons to OP, or modifies during OP the position it has expressed in the annex, and not allow further requests, it would invariably commit a substantial procedural violation.

Why should it be different for a BA?

For instance, in T 558/16, or T 754/16, the OD changed its opinion, but did not explain in its decision why it had come to a different conclusion. T 2362/08 is of the same vein.

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