CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1656/17 – A board is free to bring into appeal new objections not discussed in the decision of the OD

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The patent relates to digital cameras, such as those for capturing still or moving pictures, and more particularly, to digital cameras that compress image data.

Brief outline of the case

The OD decided that claim 1 and 7 as granted was deemed lacking IS over D5, a publication of the proprietor, and D9, a US patent not mentioned in the ISR established by the EPO. The AR were also deemed lacking IS.

The proprietor appealed the decision of revocation.

Eventually, the revocation was confirmed but for other reasons as that brought forward by the OD. The board considered as CPA D10 without explaining why this CPA was better than the one chosen by the OD, i.e. D5.

The reasons why the OD considered the claims lacking IS were not even touched upon during the appeal procedure and were not mentioned in the board’s decision.

The whole procedure seems to have been rather conflictual as the appellant/proprietor filed no less than 6 objections under R 106 and raised a suspicion of partiality against the whole board. This objection has been dismissed by the alternate board. All objections under R 106 were as well dismissed by the board.

OP were held in 2022 and in 2023.

The case is interesting in view of the reasons why the board could decide on new objections never discussed by the OD.

The opponent’s objections in appeal

In its reply to the appeal, the opponent raised objections based on D9 or D10 as CPA. In essence, he referred to his submissions in the notice of opposition as he simply alleged that certain features of the claim were known from either D9 or D10, without however stating in its reply to the appeal where in the D9 and D10.

The objections on which the OD based its decision were only dealt with at the end of its reply to the appeal, there again mainly with reference to the submissions in opposition. The thrust of the objections in appeal was clearly relating to reasons which were never discussed before the OD.

The board’s position

In a communication under Art 15(1) RPBA20/21, the board was of the opinion that the subject-matter of granted claims 1 and 7 did not involve an inventive step in view of the disclosure of documents D5 and D9, i.e. agreed with the OD. The same applied to the subject-matter of claim 1 of auxiliary requests 1 to 6.

In the same communication, the board also indicated that D9 and D10 might also be regarded as possible starting points for the assessment of inventive step for the subject-matter of granted claims 1 and 7, and invited the parties to be prepared to discuss during the OP whether the claimed subject-matter involved an inventive step in view of D9 or D10 combined with either D5 or D6. Documents D9 and D10 seemed to disclose all the features of granted claim 1.

Not a single word was spent in the decision of the board about the reasons given by the OD in its decision, i.e. taking D5 as CPA.

The reasons of the board why claim 1 of all requests lacks IS rely exclusively on D10 as CPA.

A request for remittal to the first instance by the proprietor was refused by the board.

The board held (see the catchword) that there is no legal basis in the EPC or the RPBA (in the versions of 2007 and 2020) that prevents the board from examining in the case at hand an objection of lack of inventive step raised by the opponent in the appeal proceedings against the patent as granted or as amended that was not addressed in the decision under appeal. Nor does the case law prevent the board from doing so.

The board added that this means that the board may examine whether such an objection is substantiated, whether it should be admitted into the appeal proceedings and whether it prejudices the maintenance of the patent as granted or as amended, as the case may be.


Art 12(2) RPBA20/21 states the following:

The primary object of the appeal proceedings to review the decision under appeal in a judicial manner, a party’s appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based.

From this statement it follows that, should the reasons brought forward by the OD in its decision not be deemed convincing for a board and the board is of the opinion that other objections would be more appropriate, it could be expected that the board explains in its decision why it considers the reasons of the OD not convincing and sets the decision of the OD aside.

No reasons why the decision of the OD was not convincing and why D10 was a better CPA than D5 are to found in the decision of the board. The board has simply ignored the reasons given by the OD and confirmed the revocation for totally different reasons. The board focused on new objections which seemed more “relevant”, i.e. more convincing in order to reject the MR, than those of the OD.

When the board claims that there is no legal basis in the EPC or the RPBA (in the versions of 2007 and 2020) that prevents the board from examining an objection of lack of inventive step not decided by the OD, this is a little light in the light of Art 12(2) RPBA, the wording of which originates in G 9/91 and G 10/91.

The board has actually created a fresh case in appeal. The only argument put forward is a very detailed analysis of the decisions/opinions of the EBA to say that the question to be decided (new inventive step objection at the level of the appeal) was not dealt with in these decisions and therefore they must be admitted.

The question at stake here is of general importance and should have been referred ex-officio by the board: Can a board simply ignore the reasons why a department of first instance considers a set of claims not allowable, without even setting aside the decision of the OD? If a board decides to ignore the reasons given in the decision is it obliged to explain why? Is the board, by ignoring the decision of the first instance, allowed to create a fresh case in appeal?

That a patent which has apparently no raison d’être should not be maintained is not at stake here, but should this be at the cost of a procedural sleight of hand?

A decision to refer or not questions to the EBA under Art 112 is a discretionary decision of a board.

It is clear that, according to Art 111, a board may either exercise any power within the competence of the OD or remit. Remittal is also subject to Art 11RPBA. It is clear that the decision to remit or not is a discretionary decision of the board. 

It is also a discretionary decision of a board to decide whether objections should be admitted and are sufficiently substantiated. There are reasonable doubts that this was the case in the present instance.

A further problem here is that the EBA acting under Art 112a has made clear in a recent decision, R 6/20, commented on this blog, that it has no power to control or review the normal exercise a board makes of its discretion.

In view of the large discretion given to the boards with the RPBA and the rather different exercise of discretion of the boards in procedural matters, a mechanism should be put in place in which the discretion of the boards can be revised.

It’s however no more than wishful thinking as it could jeopardize the production/productivity of the boards.

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