CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1128/21 – Difference between admissibly filing and substantiation of AR

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The patent relates to an apparatus and a method for the control of a modular power converter with distributed energy storages.

Brief outline of the case

The opponent appealed the rejection of the opposition by the OD.

The board held that claim 1 as granted infringed Art 123(2). AR1-3 were not admitted under Art 12(3 and 5) RPBA for lack of substantiation. AR1a was not admitted pursuant Art 13(2) RPBA.

The patent was thus revoked.

The case is interesting in that itt makes a difference between the notion of admissibly filing of AR and their substantiation.

The opponent’s point of view

The opponent was of the opinion that AR 1 to 3 should not be admitted for lack of sufficient substantiation under Art 12 (3) RPBA. In particular, it is not clear from the written submission of the rproprietor which objections are to be addressed and why these are to be overcome. Furthermore, the amendments were not suitable to overcome the objections under Art 100 (a), (b) and (c) asserted in the statement of grounds of appeal.

The proprietor’s point of view

The proprietor requested the admission of AR1-3, as otherwise there was a risk of revocation of a “good patent”.

In this respect, it should be taken into account in particular that the AR were filed in due time in the opposition proceedings, although – due to the favourable assessment of the OD – there was no reason to file requests at that time.

The requests were also comprehensible on their own merits. According to the case law of the Boards of Appeal, e.g. T 319/18, this was a reason for admitting the requests. In particular, it was clearly recognisable for AR 1 that it had been filed to overcome the ground for opposition under Art 100(c). Features from granted claims 2 and 3 had been included which were recognisably suitable for overcoming the objections asserted by the opponent.

Moreover, granted claim 2 was identical to the originally filed claim 1. Not all features from claims 2 and 3 had been taken over. However, this had clearly been done in response to the opponent’s objection that there was an inadmissible intermediate generalisation. Only essential features from the dependent claims had been taken over. Features that were not relevant had not been taken over. The basis for this was provided by the description.

The board’s decision

The board exercised its discretion pursuant to Art 12 (3) and (5) RPBA to the effect that AR 1-3 were not admitted due to a lack of sufficient substantiation.

Effective submission despite lack of substantiation

AR 1-3 were effectively submitted. This was not questioned by the parties.

Some boards held that unsubstantiated requests that are not self-explanatory are only deemed to have been filed at the point in time at which they are sufficiently substantiated. The board referred to T 1732/10, Reasons 1.5; T 1426/17, Reasons 2.1. This view is not shared by the present board.

Rather, a distinction must be made between the filing of a request with amended claims and the question of sufficient substantiation of this request, cf.  T 1220/21, Reasons 4.2.

This follows systematically from Art 12(3) and (5) RPBA, according to which the admissibility of a request, even if it has not been sufficiently substantiated, must be examined by the board.

Such an examination and the possibility of admitting an application despite insufficient substantiation presupposes that the AR is pending despite a lack of substantiation, i.e. that it has been effectively filed.

Therefore, while the lack of substantiation leaves the admissibility of the request to the discretion of the board, based on Art 12(3) and (5) RPBA, the board considered that there is no basis for concluding that a request was not validly filed merely because it was not or not sufficiently substantiated.

Nature and scope of substantiation under Art 12 (3) RPBA

Article 12 (3) RPBA provides that the parties must clearly and concisely state the grounds on which it is requested that the contested decision be set aside, varied or confirmed.

It is not the task of the board or of the opposing party to speculate on the intentions and bases underlying the parties’ submissions, see also T 2115/17, Reasons 6.1.3, or to search the submissions made in first instance for any supplementary explanations.

The requirement of substantiation under Art 12(3) RPBA also applies if the opposition was rejected in first instance and the proprietor is only involved in appeal as a respondent.

The degree of substantiation required under Art 12(3) RPBA depends on the specific circumstances of the individual case. A patent proprietor filing AR with amendments must, as a rule, expressly and in detail indicate

  • where in the originally filed application the basis for each of the amendments made in the claims is to be found,
  • which objections are to be overcome and
  • why the respective amendment should be suitable to overcome the objections raised.

This requirement was valid under Art 12 (3) RPBA20 and for Art 12 (2) RPBA07,  see e.g. the decision T 319/18, Reasons 2.1.

Substantiation in written proceedings

In the present case, the proprietor merely submitted in the written proceedings that features of granted claims 2 and 3 were inserted into the independent patent claims 1 and 8 in AR 1, features of granted claim 10 in AR 2 and features of granted claims 10 and 11 in AR 3. No information was provided on the basis in the original application.

This information provided by the proprietor on the basis of the amendments does not meet the substantiation requirement of Art 12(3) RPBA. The mere designation of the granted claims as the basis for the amendments made without further explanation is not sufficient if dependent claims – as here – are only partially taken over, i.e. not with all features, and a correspondingly truncated dependent claim remains in the AR without further explanation.

In its written submission, the proprietor did not indicate which objections were intended to be overcome by the amendments, although the opponent based objections in its appeal on the grounds of opposition under Art 100(a), (b) and (c).

Substantiation during OP

The lack of substantiation could also not be remedied by the proprietor’s new statements during OP.

These statements were only made after the summons to OP and the service of a communication pursuant to Art 15 (1) RPBA. They would therefore only be taken into account pursuant to Art 13 (2) RPBA, if the proprietor had shown cogent reasons for the existence of exceptional circumstances. However, no such exceptional circumstances were apparent.


The risk of revocation of, in the proprietor’s eyes, a “good patent” for formal reasons always exists. The present decision is the best proof of it.

The present decision makes clear that under the present RPBA, T 1732/10 is no longer applicable. T 1732/10 was cited in no less than 30 decisions of the boards.

The present decision confirms T 1220/21, commented in this blog.

The submission of an AR is effective at its date of filing, in spite any lack of substantiation. The admissibility of AR does thus not depend on the moment in time when the substantiation is filed.

The substantiation has to be complete at the beginning of the written appeal procedure. Any complementary substantiation brought forward during OP is submitted to Art 13(2) and has little chance to be admitted.

Even if the AR were not needed during opposition, their substantiation by the proprietor is necessary.

If not all features of a dependent claim is taken over in an amended independent claim, a full explanation in support of this kind of “intermediate generalisation” is due.

All in all, the conditions for admissibility of any AR in appeal cannot come as a surprise.  

As far as the fate of AR filed in appeal is concerned, the following decisions can also be of interest:

All those decisions concern the admissibility and substantiation of AR by the proprietor.

These decisions can however not require the opponent to raise, when entering appeal, objections against AR not dealt with during opposition, as was deemed necessary in T 664/20, commented in this blog. When appealing, the opponent does not know in advance which requests will be maintained by the proprietor.  It should thus be sufficient for the opponent to react once the proprietor has replied to its appeal.

On the procedure

As the bard decided that claim 1 as granted infringed Art 123(2), it can be held that the patent should never have been granted in the form it was.


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