CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1242/21- T 131/01 Is a single decision not to be followed – This is a mere allegation – Hierarchy of norms

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The patent relates to a “support for pivotable mounting of the axle guide of a vehicle axle”.

Brief outline of the case

The proprietor and the opponent appealed the OD’s decision to maintain the patent in amended form according to AR II.

Claim 1 as granted lacked N over D5=DE 10 2006 044 598 or D6=WO 03/062663.

For the OD, the same objection applied to claim 1 of AR I.

In appeal, the MR of the proprietor was maintenance according to AR I in opposition.

The bord considered that N was given and that the opponent could not change from lack of N to lack of IS as was deemed possible according to T 131/01.  

The patent was thus maintained according to ARI in opposition.

The case is interesting in that the board decided that, under Art 13(2) RPBA, T 131/01 was not any longer of application.

The opponent’s point of view

The opponent argued that it could not have any objection of lack of IS as in its opinion, all the features pf the claim at stake were known from the prior art. There were thus no features allowing to distinguish the features of claim 1 of ARI from the prior art.  

The proprietor’s point of view

In its statement of grounds of appeal, and in its reply to the statement of the ground of appeal of the opponent. the proprietor had identified some distinguishing features from with respect to the prior art.

The board’s decision

The board held that the opponent could have at least commented on those distinguishing features, assuming that the board would follow the proprietor and considers these features not disclosed in the prior art and could have identified documents suggesting these features in the present technical context.

The board further held that T131/01 was not relevant to the present case.

It considered T 131/01 as an isolated case-by-case decision concerned with the  question of whether the ground for objection of lack of IS, which was raised for the first time in the appeal proceedings, may be admitted into the proceedings without the consent of the proprietor.

In the present case, the proprietor did not object to the newly submitted ground for opposition, but rather to the line of argument presented for the first time in appeal.

The board concluded that the RPBA20, which did not yet exist in 2001, when T 131/01 was taken, must be applied in the present case.


To be precise T 131/01 was not issued in 2001 but on 18.07.2002.

Following T 1042/18, commented in this blog, the present decision is one of the few decisions. in recent times, not allowing the opponent to revert from an objection of lack of N to an abjection of lack of IS if the board finds during the OP that N is given. The reasons for this are to be seen in the RPBA20.  

When the present board alleges that T 131/01 is an isolated decision, it did not take the bother to look at the decisions citing T 131/01.

The following decisions were in favour and applied T 131/01: T 437/17, T 353/06, T 1077/00, T 1105/00, T 952/99, T 597/07, T 710/15, T 1052/07, T 184/17, T 281/03, T 838/17, T 2430/09, T 2589/12, T 299/15, T 496/15, T 1501/19, T 2238/15, T 1553/07, T 1192/02, T 1225/08, T 1027/03, T 1042/18, T 1579/05.

The first important change occurred with the RPBA07 and plenty decisions found T 131/01 applicable in spite of the new RPBA07.

In the following decisions, T 131/01 was not considered applicable in view of the peculiarities of the case: T 1029/14, T 174/01, T 151/19, T 635/06, T 12226/01, T 1569/19, T 1142/09.

Next to the present decision, the following decisions disagreed with T 131/01: T 1914/12, T 401/19, T 448/03, T 428/05, T 261/19, T 1042/18. In the recent times, the pretext not to apply T 131/01 and the following decisions was indeed to be seen in the RPBA.

Hierarchy of norms

It seems odd that the RPBA can serve as pretext to throw overboard a long lasting line of case law, especially when it is furthermore based on decisions of the EBA.

The boards not agreeing with decisions of the EBA and finding that those were superseded by the RPBA should at least have applied Art 21 RPBA as the RPBA are, according to Art 23 RPBA, only binding to the boards provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention.

I would allow myself to claim that decisions of the EBA are expressing the spirit and purpose of the Convention and cannot be superseded by rules of procedure. The problem at stake here is the hierarchy of norms.

The present board

The argumentation provided by the present board is bordering on hair splitting.

It can be considered of the same value of that of a bard claiming that the opponent has to deal with all AR, even those not discussed in opposition, whilst he is not knowing which AR will be retained.

Even if an objection of lack of N has been properly substantiated, from the decisions finding T 131/01 not applicable, it is best that when filing the opposition it queries not only a lack of N but also a lack of IS by ticking the corresponding box.  

Hower, the attitude of the present board does not come as a surprise as the same board, with the same chairperson and rapporteur, allowed themselves to consider that G 1/21 to have become obsolete in view of the improvements in videoconferencing, thereby superbly ignoring Art 21 RPBA.

Production and convenience for the board is all what matters.  

On the procedure

D5 and D6 were not found during the original European search.  

The patent is classified in B 60G 7/02 and the European search was performed in B 60G.

D5=DE 10 2006 044 598 is classified in B 60G 13/00 or 9/02.  Its family member is EP 1 902 933 might have as IPC class B 62D but as CPC it bears the class B60G.  

D6=WO 03/062663 is classified inter alia in B 60G 7/02.

If the opponent could find those documents, it is surprising that the SD did not find them.

The list of decisions of an OD set aside by a board is presntly relatively short, but it will certainly increase over the year.


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