CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1686/21 – Change of opinion of a board during OP can lead to the admissibility of a new AR under Art 13(2) RPBA

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The patent relates to a minimally invasive heart valve replacement system.

Brief outline of the case

The patent was maintained in amended form according to AR1.

Both proprietor and opponent appealed.

At the end of OP, the proprietor withdrew his appeal and requested maintenance according to AR1f’’ filed during said OP. The patent was maintained according this request.

The case is interesting as the request AR1f’’ was admitted under Art 13(2) RPBA.

The opponent’s point of view

The opponent contested the admissibility of AR1f’’ as being late-filed.

The opponent argued that, as the omission of the feature in question in claim 1 as maintained had been the subject of an objection both during the opposition proceedings and in its statement of grounds of appeal, the patent proprietor could and should have filed this request already during the first-instance proceedings or, at the latest, with its statement of grounds of appeal.

The opponent further argued that were no “exceptional circumstances justified by cogent reasons” for the late filing.

The proprietor’s point of view

The proprietor submitted that that the submission of the new request, which contains further limitations inserted into independent claim 1 of the patent as maintained, did not represent an amendment of the its appeal case.

The feature added to claim 1 of the patent as maintained – namely that the support posts are configured in the shape of a paddle – had already been added to claim 1 of several of the AR submitted by the proprietor in order to overcome the same added subject-matter objection.

The board’s decision

For the board it was clear that AR1f’’ represented an amendment of the proprietor’s case as the specific combination of features now recited in claim 1 was never claimed as such in any of the requests filed by the proprietor.

In the board’s view, the OD erred in considering that the feature that the supports (22) are “configured in the shape of a paddle”, was implicitly included into the wording of independent claim 1 of the patent as maintained taken as a whole.

This amendment clearly addressed and solved the issue under Art 76(1) raised by the opponent against the patent as maintained in relation to the omission of the paddle shape of the supports.

The board held that the amendment:

  • cannot be considered surprising for the opponent)in such a way as to negatively affect its position in the appeal proceedings, thereby giving an advantage to the proprietor, in particular given that the OD understood the feature in question to be implied in claim 1 as maintained;
  • did not give rise to new objections and is not detrimental to procedural economy.

The board further noted that in view of the large number of different objections raised under Art 76(1), the number of requests to be filed at the very beginning of the appeal proceedings in order to provide appropriate fall-back positions for every possible outcome of the assessment of compliance with Art 76(1) EPC would have been extremely high and, as therefore not compliant with procedural efficiency.

The board thus considered that the above circumstances represent exceptional circumstances within the meaning of Art 13(2) justifying the admittance of the main request under consideration.


In its communication under Art 15(1) RPBA the board provisionally stated that the patent as granted was infringing Art /6(1), but that claim 1 as maintained was apparently allowable. The omission the feature that the supports (22) are “configured in the shape of a paddle” was not considered as an unallowable intermediate generalisation.

The decision is also interesting in that the board mad clear that filing at the outset of the appeal a large number of AR represent all possible fall-back positions would not helped procedural economy.

In matters of procedure, other boards are not so lenient in admitting further AR under Art 13(2) RPBA. It should however be kept in mind that, even admissible under Art 13(2) RPBA, the AR should be immediately allowable under Art 13(1) RPBA.

It is manifest that the discussions during the OP have led the board to change its opinion about the omission of shape of the supports.

It was thus normal that a request overcoming the omission had to be admitted in the procedure. The board could also accept the new AR as the proprietor had already filed AR comprising this feature, even not in the last combination of AR1f’’

An OD changing its mind during OP has, in principle, also the duty to admit a new AR overcoming the new objection.

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