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T 1354/18 – Admissibility of an opposition

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The patent relates to a simplified device of a camera unit of a motor vehicle.

Brief outline of the case

The OD has rejected the opposition and the opponent appealed the decision.

The opponent filed an appeal before notification of the written reasoned decision, but after delivery of the decision at the OP.

The proprietor considered that the appeal was not admissible, due firstly to the early filing of the notice of appeal and secondly the lack of substantiation as the arguments raised in opposition were merely repeated.

The statement of grounds of appeal was filed within four months of the signification of the decision

The board held the appeal admissible, be it for the early filing of the notice of appeal and for the substantiation.

As to the substance, the board held that the interpretation of a specific feature 5″ of claim 1 was too narrow and thus incorrect.

The board set aside the decision and remitted the file for further prosecution.

Admissibility of the appeal

According to Art 108, first sentence, notice of appeal has to be filed within two months of notification of the decision.

The opponent filed the notice of appeal before the two months mentioned in Art 108, first sentence.

In T 389/86, OJ EPO 1988, 87, the board held that an appeal filed after delivery of a decision at OP but before notification of the written reasoned decision abides by the time limit under Art 108, first sentence.

The proprietor’s position

The proprietor questioned the view expressed in T 389/86. In the proprietor’s view, if the early filing of the appeal were admissible, there would be at least a systemic possibility that the OD, for human reasons, would handle the grounds for the decision differently than it would have done without the certainty of a review of those grounds. It thus considered that the OD could be influenced by the pending appeal filed before signification of the decision.

Just as R 137(1) prohibits a search division from being disturbed by amendments to the patent application, Art 108, first sentence, should prevent any influence on the drafting of the grounds for the decision by the decision-making body.

The board’s position

For the board, the proprietor’s argumentation is based on an incorrect understanding of the requirements of the EPC and is therefore not convincing.

The EPC requires that the decision-making bodies of the EPO decide impartially on the parties’ requests

For BA members Art 24 applies. G 5/91, OJ EPO 1992, 617, applies for first instance deciding bodies. As long as the decisions are reasoned under R 111(2) the level of detail of the reasons for the decision is left to the decision-making bodies and therefore no party can complain.

The question whether the OD would have handled the grounds for decision differently than it would have done without the certainty of reviewing those grounds is therefore irrelevant.

The board further noted that the decision-making bodies have no control over the content of the parties’ submissions anyway. It cannot be prevented, for example, that a party already communicates in writing or at OP, before a decision is pronounced or notified, its intention to file an appeal if the outcome is negative for it.

No interpretation of the EPC could in this case prevent speculation as to whether the formulation of the grounds for the decision by the decision-making body was influenced by this communication. It must therefore also be accepted that no interpretation of Art 108, first sentence, can prevent similar speculation.

Contrary to the proprietor, the board cannot draw a parallel between R 137(1) and Art 108, first sentence. R 137(1) does not define a time limit within which a procedural step must be taken by a party, but a point in time before which an applicant may not in principle amend the description, claims or drawings of a European patent application.

Based on R 137(1), no statement can therefore be made on the correct interpretation of the wording “within two months after” of Art 108, first sentence.


It is clear that should a proprietor manage to have an appeal declared inadmissible, after a positive decision of the OD, the patent comes out of the whole procedure as fresh as granted.

The present decision makes clear that the notice of appeal can be filed once the final decision of the OD has been delivered during OP.

The two months’ time limit for filing the notice of appeal is therewith respected, and the step of the notification is not necessary to file the notice of appeal.

The other conditions, filing of the statement of grounds and appeal and substantiation remain.

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4 replies on “T 1354/18 – Admissibility of an opposition”


I would not be as severe as you are.

It was merely an attempt to get read of the appeal on a formal point after a positive decision of the OD to reject the opposition.

It is however no surprise that the attempt badly failed.

Even without T 389/86, the board would most probably not have decided differently.

Depending on the circumstances, any time limit provided for in the EPC does not necessarily have to be used in full.
However, any time limit provided for in the EPC does have to be respected.
Any action before the end of a time limit provided for in the EPC, should in principle be admissible, provided all other formal requirements are fulfilled.

Anonymous Attorneysays:

I stand by my previous words. The arguments were desperate and I would have been embarrassed to put the arguments forward. I hope that the opponent never requests further processing before they receive a Rule 112 communication if they truly believe that is how deadlines should be calculated under the EPC. I also hope they never ask for a first instance division to minute anything during oral proceedings, because they would not want to make the deciding body aware that there might be an appeal.


You are perfectly entitled to stay by your previous words.

In matters of embarrassment I have seen quite a lot during my active career and I need a lot to be surprised.
The present case in no surprise to me.

I have however learned one important thing during my career: do not necessarily put the blame on the representative.
He is doing what his client tells him to do, even if he is fully aware that it will not succeed.
This happens more often than you think. After all, the representative does not want to lose a client.

As far as further processing is concerned, it is the communication under R 112 which triggers the time limit for further processing.
When for instance the ED has refused an extension of time limit, the solution in order to gain time is not to reply within the existing time limit and wait for the communication under R 112.
The likelihood for an early request for further processing is thus very remote.

A party might ask to minute certain considerations/views, but it is the minute writer and the countersigning officer who decide what ends in the minutes.

However, it is not the function of the minutes to record statements which can be possibly relevant in any subsequent proceedings, for instance with the aim of recording a certain interpretation of a claim or relating to withdrawn requests. Requests to record such statements are rejected. See for instance T 996/18 or T 2545/16. This goes further than just an appeal at the EPO.

In T 2370/16 the board held that preparing the minutes of oral proceedings before the boards is a task entrusted only to the boards which cannot be transferred or delegated, in whole or in part, to the parties.
No single party can be permitted to decide on or influence the content of the minutes, cf. also T 1721/07.
This applies mutatis mutandis to deciding bodies of first instance.

When deciding in first instance, the deciding body is always aware that there might be an appeal.
This is the rule of the game and there is nothing to say against it.
A board is perfectly entitled to have a different opinion as to the substance.
What should be avoided in first instance is to commit a substantial procedural violation.

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