EP 2 765 668 B1 relates to the simulation of an electrical power distribution network in a wind farm
Brief outline of the case
The OD revoked the patent and the proprietor appealed.
The OP was adjourned, and in the present case two OP took place.
The OD did not admit a series of AR, filed before the second OP.
The board confirmed the non-admissibility of the AR, and confirmed the revocation.
The board confirmed the lack of IS of the requests deemed not allowable by the OD.
In this post, we will look at the non-admissibility of the AR.
The OD’s handling of the case
During the first OP, the proprietor filed AR1bis. As it could not be discussed the OP were adjourned.
In the summons for the second OP, the OD did not change the date set in the first summons under R 116(1).
One day before the second OP, the proprietor filed a new AR1=AR1n.
The OD did not admit AR1n as being late filed..
The same applied to AR2pre-6pre=AR10-14 in appeal.
The OD considered that the amendments could have been filed earlier, especially in lieu of AR2-6 filed earlier.
By going back and forth between features taken from the description, the proprietor had not properly reacted to the course of the proceedings and it would have been against procedural efficiency to admit the newly filed requests at such a very late stage of the proceedings. Also, the requests did not meet the “clear allowability criteria”.
The proprietor’s point of view
According to the proprietor, it was established EPO case law, CLBA 10th edition 2022, IV.C.5.1.4d, that requests filed before the expiry of a R 116 time limit were generally admissible, and that this principle also applies for AR with features taken from the description.
The proprietor moreover argued that the OD did not follow the applicable rules when setting the date for the second OP. In particular, they did not set a valid final date for making written submissions in accordance with R 116(1).
The proprietor argued that, just because both parties had agreed on a notification period shorter than two months for issuing summons, this did not mean that the OD did not have set a new date for filing final submissions.
Therefore, it could not be said that AR1n was late filed, and therefore the board should admit AR1n into the appeal proceedings.
The opponent’s point of view
The opponent requested that AR1n not be admitted under the Guidelines (version of March 2024), E-III, 8.11.2. Guidelines E-III, 9.11.2 has not been amended in the Guidelines 2026, and states inter alia that “A new final date for making submissions is not fixed under Rule 116 in the new summons if the subject of the proceedings has not changed, cf. E-VI, 2.2.2.” The latter have also not been amended.
The board’s decision
In the board’s view, there is no established principle that submissions filed before the date set under R 116 are generally admissible, just as there is no principle saying that a submission filed after that date is automatically inadmissible.
It is rather established case law that the OD has a discretion (not) to admit amendments filed after the period specified in the communication under R 79(1), cf. CLBA, 11th edition, IV-C 5.1.4. a) and b).
In exercising its discretion, the OD considered, apart from the date of filing one day before the oral proceedings, which must be considered late by any standards, the nature of the amendments including their complexity and whether they were a reaction to the course of the proceedings.
A feature taken from the description is naturally more complex to deal with as it might require an additional search.
Furthermore, the amendments did not represent a convergent development as the “individual WTC feature” replaced the previous “grid code feature” rather than build onto it. Thus, the OD considered that it was not justified to admit this amendment at such a late stage of the proceedings. The board saw nothing wrong with this. In the board’s view, the OD exercised their discretion in a reasonable way.
Concerning the alleged failure to set a final date for making submissions under R 116, it is clear that the second OP were a continuation of the first OP.
As set out in the Guidelines E-III 8.11.2, adjournment of OP requires a new summons. This does not mean, however, that a new date for making submissions needs to be set.
AR1n was not admitted by the board under Art 12(6) RPBA. The same applied to AR2-7.
AR8 being a new request filed with the grounds of appeal, was not admitted under Art 16(RPBA).
AR10-14
The board did not see any error in the OD’s use of discretion or any other reason justifying the admittance of AR10-14 into the appeal proceedings.
They were not admitted under Art 12(6) RPBA.
Comments
Claim requests filed in opposition
The first opportunity for a proprietor to file amended claim requests is in reply to the opposition, cf. R 79(1).
The proprietor can file requests until the date set under R 116(1), with a big proviso: those requests have to be correctly anfd fully substantiated. Any substantiation filed after this date might render the requests not-admissible, cf. R 5/24 , commented in the present blog and T 1732/10. It is only if the requests have been properly substantiated that they can be deemed admissibly raised under Art 12(4) RPBA and taken into account in appeal.
Any AR comprising features from the description must be filed before the date set under R 116(1). This is established case law, cf. T1048/99, T 120/03, T 358/06, T 1763/07, T 1659/14 or T 2128/10.
In T 1522/20, commented in the present blog, the AR were admissibly raised and maintained in opposition, and were thus taken into account in appeal.
In T 364/20, also commented in this blog, the board held that, even requests filed before the date set under R 116(1), might not be admitted as the proprietor should file all its requests within the time limit set under R 79(1). This is going a trifle too far.
For the opponent
For the opponent, all grounds, evidence and argumentation, have to be filed before the end of the opposition period.
Guidelines E-III 8.11.2,
In case of adjournment ot the OP, the Guidelines are very clear.
The new summons must indicate the points that still need to be discussed during the upcoming OP, but it is at the discretion of the division whether to mention the points that have already been settled or to provide a provisional opinion on the points that are still outstanding.
A new final date for making submissions is not fixed under R 116 in the new summons if the subject of the proceedings has not changed.
It is only if the subject of the proceedings has changed, that a new date under R 116(1) has to be set.
Converging/diverging claim requests
An opposition division will have to admit a number of divergent requests filed before the date set under R 116(1), provided they are all properly substantiated.
Late-filed non-converging requests will not be admitted, either by the OD or by the board.
See for instance T 2472/18, Reasons 2.2, or T 1389/23, Reasons 3, also commented in this blog, in which the re-ordering of AR in appeal introduced a non-convergence of the AR.
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