CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 196/22 – No time allowed to prepare questions for a referral to the EBA after announcement of the board’s decision

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The patent relates to a self-propelling battery driven lawn mower.

Brief outline of the case

The patent was maintained according to AR 6.

Both opponents appealed.

The board held that claim 1 of AR 6 was lacking IS over D2=DE 195 28 167 with common general knowledge.

AR 11a, 12, 12a and 14a were not admitted under Art 12(4) RPBA. AR 16 was not admitted under Art 13(2) RPBA.

The patent was thus revoked.

The case is interesting in that the board refused to give time to the proprietor’s representative to prepare questions for a referral to the EBA after it had decided on the lack of IS and the non-admissibility of AR 11a, 12, 12a and 14a.

The proprietor’s request for referral

Together with the filing of AR 16, the proprietor requested to be given time to formulate two questions that should be referred to the EBA, the first question relating to the interpretation of synergy and the second to the standard for not admitting AR 11a, 12, 12a or 14a into the proceedings.

The proprietor acknowledged that the discussion on these points had been closed and the board had announced its conclusions in regard of synergy and taken the decision not to admit the above AR.

The proprietor argued that the necessity of a referral lay in the board’s conclusions, which of course could only be known once the board had reached them.

The only argument in regard of the latter was the representative’s remark that the position the board appeared to take on synergy was nothing he had experienced in his 25 years of practice before the boards of appeal.

The board’s decision

During the discussions on the synergy and the non-admissibility of the AR, the proprietor neither explicitly requested a referral, nor argued that these issues were of fundamental importance or that the board when coming to a certain conclusion would deviate from previous case law.

The board noted that it is not privy to a representative’s experience and therefore cannot draw the conclusion that this amounts to a request for referral because of a perceived conflict with existing case law.

A request for referral, be it directly or indirectly, or an argument in regard of fundamental importance or previous inconsistent case law, was thus not made when the relevant points were open for discussion. In fact, the representative cited not even one single decision. And since the board’s communication expressing its provisional opinion had mentioned both the question of synergy and of problems with late-filed requests, the representative was not confronted with new issues that may have taken him by surprise.

The question is then whether the board should give a party time to formulate questions for a potential referral to the EBA in regard of points that have already been discussed and decided. T

he board took the view that it should not.

OP, and court proceedings, for that matter, are not a domination-free discourse in the sense of Habermas where issues are discussed in whatever order until a solution agreeable to everyone has been reached. Rather, proceedings are meant to put the deciding body, in this case the board, in a position to decide about the issues in dispute.

In order to do so, procedure is structured by different stages, and once a certain stage has been concluded, a party may no longer be able or allowed to undertake certain procedural acts

Where in OP an issue has been discussed, the board closes the debate on this issue, deliberates thereupon and announces its conclusions. The board may of course reopen the discussion on this issue.

During the OP in this case, the issue of synergy was addressed. While the board was under the impression that a discussion on synergy was all the proprietor had to say on IS, it transpired that the proprietor had been under the impression that it should address issues other than synergy at a later stage.

Due to this misunderstanding, the board then reopened the discussion on IS which was then continued to hear the proprietor’s further submissions. Reopening the discussion was thus a necessity for guaranteeing the proprietor’s right to be heard.

A board can also reopen the discussion of its own motion if during its deliberation further issues of relevance come to light. However, the board is unlikely to reopen the discussion once the parties have been properly heard and the board feels in a position to form an opinion. It may do so, but it does not have to.

In the case at issue, the proprietor’s request for time in order to formulate questions to the EBA could have had no other purpose but to reopen a debate that already been concluded. Its only aim could have been for the board to review its conclusions of its own motion, or to request guidance from the EBA and review its conclusions in light of such guidance. As the board had already reached its conclusions, a reopening of the discussion was at the discretion of the board, and the board decided that no such reopening was opportune or necessary.

For one, it is inherent in judicial decisions that their result only becomes known after the court has reached its decision. Reopening the discussion on any issue relevant to the decision is then subject to the procedural avenues that are available.

In regard of a decision rendered by the boards of appeal, the only judicial remedy is a petition for review, as was pointed out to the proprietor during the OP. After all, there is no mechanism equivalent to Art 109 that would allow the party to an adverse decision to request an interlocutory review and have the board review its own decision.

The board added that, if the proprietor was correct in its argumentation, parties to OP would be entitled to request a referral to the EBA every time the board reached an adverse conclusion, thereby forcing the board to reopen the discussion on subject matter that by way of the board’s conclusions has become “water under the bridge”.

Should a party to proceedings before the boards be convinced that certain questions merit the attention of the EBA, this argument should be made before or during the discussion on this question, but certainly not afterwards.

A party may very well indicate during the discussion that “should the board intend to decide the question in this way, the following question should be referred to the EBA”, or “should the board not be minded to admit the ARs into the proceedings, it would deviate from established case law and the matter should be referred to the EBA”. However, submitting such requests raised only after the debate on the issue has been closed would, if allowed, make OP a merry-go-round, which, in the board’s view, they should not be.

The Board considered that for these reasons it was within its discretion in refusing to give a party time to formulate questions to the EBA whose only purpose it could have been to reopen a debate that had already been closed, and based on which the board had reached its conclusions.


The present decision makes it clear when a referral to the EBA should be requested by a party: at any time during the discussions of the various topics, even if the form of a conditional request “if-then”. At least the board is then made aware of a possible request to the EBA. However, the board still has the discretion to reject the request for referral to the EBA.

Filing a request for referral to the EBA after the board has announced its decision is clearly a no-go. A late-filed request for referral to the EBA cannot lead to the board to review it own decision.

In the present case, the board even reopened the discussion to be sure that the proprietor’s right to be heard was respected.

The fact that the representative added that the position the board appeared to take on synergy was nothing he had experienced in his 25 years of practice before the boards, did certainly not improve its standing vis-à-vis the board.

If a party wants a positive decision from a deciding body, it does not have to grovel, but brushing up the deciding body the wrong way, leads only to the available discretion tending asymptotically towards 0.  

Even before a first instance deciding body, issues are not discussed in whatever order until a solution agreeable to everyone has been reached. This is the more so before a board of appeal.

If a party intends to file a request, even before a first instance deciding body, it has to do it in a procedurally binding form, and not merely reserve itself the right to file further requests. The best way is to clearly state before the break that “if the decision on AR n is negative, then a further AR will be filed.” This does not mean that the request will be admitted, but the deciding body has to take knowledge of this late filed request. Otherwise, the deciding body announces its final decision and no requests are any longer admissible.

The comment that there is no prejudicial revision before a board in the meaning of Art 109 appears as well highly pertinent.

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