CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1859/22 –  Curious exercise of discretion by an OD, but no reimbursement of the appeal fee

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The patent relates to a enterically coated cysteamine bitartrate and cystamine composition useful for treating cystinosis and neurodegenerative diseases such as Huntington’s, Alzheimer’s and Parkinson’s disease,

The patent results from a divisional application of EP 1 919 458.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board decided that claim 1 as granted and claim 1 of AR comprised multiple infringements of Art 76(1). The patent was thus revoked.

The case is interesting in that the board refused the request for reimbursement of the appeal fee for not admitting two late filed documents.

D24 and D25 were submitted on the last day for making submissions under R 116(1).

The OD’s decision

The OD admitted neither D24 nor D25 for lack of prima facie relevance, considering that D24 did not address the same technical problem as the patent nor pertained to the same active principle i.e. not the same cysteamine salt.

The opponent’s point of view

The opponent contended that two substantial procedural violations occurred, namely:

  • the unreasonable exercise of discretion not to admit D24 and D25 into the proceedings, and
  • the inadequate reasoning in the appealed decision regarding inventive step in view of D24 and D25, by not admitting D24 and D25 into the proceedings after the parties extensively discussed these documents in the in the assessment of IS.

A reimbursement of the appeal fee would accordingly be equitable.

The board’s decision

The Board was of the opinion that the OD’s exercise of discretion was contradicted by its comprehensive discussion of D24 and D25.

The board reminded that prima facie relevance is ascertained on the face of the facts, i.e. with little investigative effort, which reflects the need for procedural expediency in considering and admitting late-filed facts and evidence.

In the case at hand, during the OP before the OD, the parties extensively debated the issue of IS, including starting from D24 or in view of D1 in combination with D24, and taking D25 into account.

Only thereafter did the OD open the discussion on admittance of D24 and D25. Following this discussion and after deliberation, the chairperson announced that D24 and D25 were not admitted, that the requirements of Art 56 were fulfilled, and that the opposition was rejected.

For the board, the detailed reasoning given in the appealed decision for the decision not to admit D24 and D25 goes beyond a mere assessment of prima facie relevance, but in fact explains entirely why, in the OD’s view, the criteria of inventive step would still be fulfilled if D24 and D25 were taken into account

The board considered that, having assessed D24 and D25 as to their content and found them to be not prejudicial to IS, the OD’s additional exercise of discretion not to admit D24 and D25 was under these circumstances not only unnecessary, but also inconsistent with the actual consideration of these documents in full during the proceedings and in the decision.

However, the board considered that, even if the OD’s exercise of discretion were to be seen as constitutive of a procedural violation, this would not be a substantial one and would not justify a reimbursement of the appeal fee, because, as explained above, the decision sufficiently explains why D24 and D25 did not lead, or would not have led, to a finding of lack of inventive step.

Contrary to the opponent’s position, the full reasoning in the appealed decision leaves no doubt that, if the OD had instead taken the stance that D24 and D25 were formally part of the opposition proceedings, they would have reached the same conclusion on inventive step.

The board could not accept either the opponent’s view that a wrong exercise of discretion is necessarily to be considered as a SPV justifying a reimbursement of the appeal fee.

In this respect, the Board’s reasoning is similar to the views expressed in decision T 2249/08, Reasons 6.7, wherein the OD’s exercise of discretion and decision not to allow a particular objection into the proceedings did not appear to the board to have been decisive, such that the procedural violation, if any, could not have been substantial.


Any submission of prior art an/or objections by an opponent, even within the time limit under R 116(1), is prima facie late and not automatically admitted in the procedure.

The present decision reminds of the fact that a wrong exercise of discretion of an OD does not necessarily represent a SPV. This is particularly the case when the non-admissibility of a submission did not have an influence on the outcome of the procedure. This is the case here, as the OD had, albeit unnecessarily, shown that even if D24 and D25 would have been admitted, the opponent’s point of view would not have prevailed.

In other words, if the fundamental deficiency was not causally linked with filing the appeal, then the appeal fee will not be reimbursed. See e.g. T 2225/21.

In T 1984/19, the reasoning the OD gave for its discretionary decision not to admit D16/D16a into the opposition proceedings, did not fulfil R 111(2).  

From the decision and the minutes, the board was unable to comprehend which considerations led the OD to the conclusion that the content of D16 did not go beyond the content of the documents on file. The board concluded that D16 was prima facie relevant to the issue of N of the subject-matter of claim 1. The case was remitted to the opposition division for further prosecution.

In T 776/17, the OD correctly exercised its discretion to admit a late filed document, but nevertheless committed a SPV in not allowing the proprietor to react to an objection of lack of IS raised for the first time during the OP before the OD.

On the procedure

It is difficult to follow the OD when it explains at length why D24 and D25 were not able to demonstrate a lack of IS, for later not admitting them in the procedure. Before discussing documents on their substance, their prima facie admissibility should be decided first.

The board’s decision is one of the many in which the board set aside the OD’s decision. The board noted two distinct, but rather manifest, infringements of Art 76(1).

All in all, the patent, filed on 26.01.2007, should not have been granted.


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