CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1220/21 – Discussion in appeal of AR not discussed before the OD

chat_bubble 4 comments access_time 4 minutes

The patent relates to a curved vehicle windshield made from laminated glass, so as to avoid double images in a Head-Up Display.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board held that claim 1 as granted lacked IS over D1=US 6,414,796 + D2=US 5,013,134, whereby both documents were not ment

An objection based on D3=US 2004/0166288 as CPA was admitted under Art 12(4) RPBA. It followed that claim 1 of AR1 lacked IS over D3+D2.

AR 2 and 3 were not admitted under Art 12(3 and 5) RPBA, as not substantiated but validly filed. The subsequent explanations of the proprietor during the OP before the board were not admitted under Art 13(2) RPBA.

The patent was thus revoked.

In this blog we will discuss the admission of an objection based on D3.

The non-admissibility of AR 2 and 3 will be discussed separately.

The parties’ point of view on the admissibility of objections based on D3

In its grounds of appeal, the opponent raised an objection against granted claim 3 starting from D3 as CPA.

The proprietor argued that during first instance proceedings D3 had only been cited in combination with D2 as CPA, and that D3 had never been cited as CPA. Since the new objection had been introduced for the first time at the appeal stage, it represented an amendment of the case that should not be admitted under Art 12(2) and (4) RPBA.

The board’s decision on the admissibility of objections based on D3 as CPA

Irrespective of whether an IS objection starting from D3 as the CPA should be admitted for discussing IS of the claims as granted, the board considered that such an objection should be admitted at least within the context of the discussion of AR1 and exercised its discretion to admit this objection.

The board noted that AR1 was not addressed at the OP before the OD, as the latter rejected the opposition.

Thus, even if the objection had been raised in the first instance, the board would not have before it a decision that could be reviewed. Under these circumstances, arguments based on Art 12(2) RPBA are not suitable for justifying not admitting the objection.

Furthermore, D3 is prima facie relevant and not entirely new, as it was cited at least in combination with D2 during the opposition proceedings.

The board therefore exercised its discretion under Art 12(4) RPBA to admit the IS objection based on D3 as the CPA filed with the grounds of appeal, at least for the discussion of AR1.


The decision is interesting as it makes clear that a request can nevertheless be discussed in appeal even if it had not been discussed before the OD.

We have seen other boards, requesting that the opponent discusses all AR filed before the OD when entering appeal, whereby some boards were more lenient, as the opponent could not know which requests would be pursued in appeal.  

In T 614/21, commented on this blog, the board did not admit AR filed by the proprietor when entering appeal. In T 614/21, the board held that AR should have been admissibly filed and maintained in the proceedings before the OD. By not filing any AR in opposition, the requests filed when entering appeal were considered as an amendment under Art 12(4) RPBA and therefore not admitted.

In T 1080/20, commented in this blog, the proprietor did not file any AR in opposition, and waited entering appeal to do so.  In T 1080/20, the board admitted the new MR,  although it was considered as an amendment under Art 12(4) RPBA.

Here we have a new way of applying Art 12(4) RPBA for the benefit of the opponent. As there was no necessity to discuss any AR in opposition, the board decided ex-officio to deal with AR1 and admitted in the procedure objections based on D3 as CPA.

The present board gave an interpretation of Art 12(4) RPBA which is, let’s say rather strange, and which might not be shared by other boards.

For the present board it appears sufficient that some objections were raised in opposition against AR1, in order even on the basis of a document which has never been used as CPA in opposition. In opposition, the objections against AR1 were D2+D3 or D4+D3. D3 was never the CPA.

If changing the CPA is not an amendment to the opponent’s case, what has then to be considered as an amendment under Art 12(4) RPBA?

I have seen other boards not admitting a late filed objection for less than this! That a document is relevant was not a reason to admit a late filed objection based on this document.

This way of dealing with an AR appears miles away from a judicial review of the OD’s decision under Art 12(2) RPBA.

It appears urgent and necessary for the boards to first come to a common understanding in procedural matters when in appeal, and especially on the interpretation of Art 12(4) RPBA on what is to be understood under “amendment”.

It also appears urgent and necessary for the boards to come to a common understanding on how to deal with AR which did not have to be discussed before the OD in view of the latter’s decision, but are maintained or filed for the first time in appeal.

The only possible conclusion at the moment is that way the discretion offered to the boards by the RPBA, here under Art 12(4) RPBA, is not applied in a uniform manner. Similar situations are not deal with in a similar way.

On the procedure

None of the documents, D1 to D3, relevant for the present decision, were mentioned in the ISR established by the EPO. They did however led to the revocation of the patent.

The decision of the OD was set aside, and from the rejection of the opposition, the procedure ended with the revocation of the patent.


4 replies on “T 1220/21 – Discussion in appeal of AR not discussed before the OD”


The RPBA are a disaster. The boards have given themselves such prescriptive rules that they can justify refusing to admit anything they don’t want to discuss. They can arbitrarily choose to admit anything they would like to discuss when the circumstances meet their definition of exceptional. The boards are clearly forming an opinion of how they want to decide the case and twisting the RPBA to make it as easy and quick as possible to reach the desired decision.

In an appeal against a decision to revoke a patent in opposition, I rephrased some inventive step arguments that had been made at first instance. The arguments related to the same combination of documents starting from the same CPA as the decision under appeal, but there were subtle points of (mis)interpretation of the prior art that were raised in the OD’s decision that needed to be addressed. The response of the board was to ask me to point to where I had made this argument in the opposition proceedings because we had not made this exact argument in the written procedure and the minutes of the opposition were very brief and did not mention what I was saying. I explained that specific aspects of the reasoning that I was countering only appeared for the first time in the written decision but my arguments were not admitted because I was changing the case and should have made these arguments at first instance. The board wanted to dispatch the case with minimal effort without listening to what I had to say. In many cases, they are not even performing the function of reviewing the decision under appeal. It is high time that the boards remember that Article 113 EPC and Article 6 ECHR trump their rules of procedure.

Doubting Thomassays:

“It is high time that the boards remember that Article 113 EPC and Article 6 ECHR trump their rules of procedure”.

Indeed. However, you are of course forgetting that “production” pressure trumps everything else, even fundamental rights.

Avatar photoDaniel X. Thomassays:

Dear Frustrated,

I would not go as far as to claim that the RPBA20 are, as such, a disaster. The disaster is rather the way the discretion given to the boards by the RPBA20 is applied by the latter. Similar procedural situations are not dealt with in a similar manner. This is the real problem. The various boards can actually be compared to a series of baronies that do as they please and ignore superbly what is happening in the board next door.

It is clear that the RPBA20 were set up in order to increase the production and/or productivity of the boards in view of the backlog they had accumulated due to the understaffing of the boards for many years. The reasons for the understaffing should be well known. The same goes for their exile to the Munich suburbs.

In view of the criteria of performance introduced by the reform of the boards in 2016, it is clear that a member which is not performing as expected, will not be reappointed. This is particularly important for members hired from outside the EPO.

If a board is minded to get rid of a case as quickly as possible, you might do whatever appears reasonable to you, you will not get a foot on the ground. Some boards are nevertheless taking their job seriously and don’t get hung up on production and/or productivity.

It has been often claimed that the RPBA20 have not done more than codify the case law in procedural matters existing in the RPBA07. I would claim that the situation has worsened with the RPBA20 and what reigns over all is a very narrow formalism, which goes as far as ignoring older decisions of the EBA or of BA for the sake of the RPBA.

True independence of the boards is an urgent necessity. What is needed is that the boards are made properly independent or autonomous from/within the EPO, rescind the performance criteria only based on production/productivity and that members of the boards cannot be at the same time members of the EBA. It is symptomatic that the chair of the BA systematically speaks about production and/or productivity at the beginning of each intervention, even in the event of a referral in accordance with Art. 112.

One cannot refrain the feeling that there is apparently also a new generation of legal members who are in competition with each other, and want to push each other’s buttons, not only in terms of procedure but also in terms of substantive law. This also contributes to the worsening situation at the boards.

A further need is the setting up of a revision instance not only in matters of procedure but also in matter of substantive decisions. Art 112 and 112a are not enough! Only then, it will be possible to consider the boards of appeal fully as courts in the meaning of Art 6(1) ECHR.

In spite of all possible gripes we can have about the boards, they nevertheless remain the benchmark when it comes to assessing the way EDs and ODs work. When like in 2023 60% of decisions of ODs have been set aside by boards, this says a lot.

Leave a Reply

Your email address will not be published. Required fields are marked *