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T 2179/16 – Objections before OD against different claim as in appeal – Implicit abandonment of objections by the opponent

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Brief outline of the case

For the OD, the invention defined in claim 1 of the main request (= as granted) was not sufficiently disclosed. The set of claims according to AR 1 was found allowable.

The OD maintained the patent on the basis of AR 1 and in particular, considered claim 1 of AR1 to involve an IS over D10 (not in the ISR/EPO) as CPA.

The opponent appealed the decision to maintain the patent in amended form according to AR1.

The board confirmed the decision of the OD.

With the statement of grounds of appeal, the opponent submitted further IS objections starting from:

  • the common general knowledge referred to in the patent, paragraph [0005] as CPA;
  • D2 as CPA;
  • D6 to D8 as CPA; and
  • D9 or D11 as CPA.

The opponent considered that those objections were part of the appeal procedure and should be discussed in appeal.

The further objections filed with the opponent’s statement of grounds of appeal had initially been submitted with the notice of opposition at the outset of opposition proceedings that is against claim 1 of the granted patent, which was the basis for the MR before the OD.

The board decided not to admit the objections under Art 12(4) RPBA07.

The opponent’s position

During OP before the board, the opponent confirmed that the further objections raised previously against the then MR had not been verbally reiterated during OP before the OD when dealing with the then AR1.

For the opponent, this did not mean that they had been abandoned. Rather, it was standard procedure at the outset of OP for the chair of the OD to request that the parties not repeat their written submissions.

The opponent added that abandonment of the further objections would have required an express statement to that effect. Hence, it should have been clear to the OD that the further objections were maintained.

The board’s position

The board noted that according to the minutes of OP before the OD, that the chair of the OD having announced that claim 1 of AR1 was novel, the discussion was going over to IS

IS was only discussed with D10 as CPA.

According to the minutes, before the deliberation on IS, the chair of the OD asked the parties if they had further submissions. The answer was negative.

The board drew two conclusions

  • At the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way
  • Following the discussion and before deliberation the parties have indicated that they have nothing more to add.

For the board this can only mean that the further objections that had previously been raised against the then MR, were not pursued or raised against the then AR1.

The OD did not take any decision on said further objections. they were nevertheless submitted with the statement of grounds of appeal.

The board held that the opponent effectively avoided a decision by the OD on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance.

For the board, the objections raised in appeal, had been raised before the OD against a different request and not against the MR (=AR1 in opposition) in appeal.

The board thus decided not to admit the further objections under Art 12(4) RPBA07 (=Art 12(6) RPBA20).


Neither ODs nor BAs are happy when a party merely repeats its written submissions. There should be an added value brought by the OP.

On the other hand, simply repeating in appeal objections raised in opposition does not help. In the meantime there has been a decision and not referring to it is not taking a position on the decision. Hence the boards refuse to consider such arguments.

In the present case the situation is different. The opponent did not take up during the OP before the DO the objections of lack of IS raised against claim 1 as granted over to claim 1 of AR1. He even declared after the discussion on IS based on D10 that he had nothing to add.

The opponent argued before the BA that he had not expressly abandoned said further objections and that they therefore formed part of the appeal proceedings. This was alas not the case.

Implicit abandonment of requests

The assumption that the objections raised against claim 1 as granted remained valid for claim 1 of the AR1 was the opponent’s representative mistake.

By stating he had nothing to add after the discussion with D10 as CPA, he gave up the objections and hence the possibility to raise further objections. As a consequence, the OD never took a decision on those further objections. 

The opponent’s attitude corresponds to that of a proprietor who indicates at the end of the OP that the last discussed AR becomes his sole request. In this case, all previous requests have been abandoned and can no longer be reintroduced in appeal. See for example T 1063/02. In such a case, an amendment of the minutes cannot be obtained either.

Duty of diligence of a deciding body

In cases were a request of a party is unclear there a duty for a deciding body to clarify the situation before deliberation.

If the requests correspond to the intention of the party, there is no need to ask for clarification.

This is the case when the requests are read out by the chairman before deliberation and the party does not intervene, cf. R 14/10 + T 147/09.

As the opponent’s statement in the OP before the OD was perfectly clear, the OD had no obligation to ask for clarification.

Duty of diligence for a party

If it is not clear for a party what the procedure is or how it will continue, it is up to said party to ask for clarification of the matter especially if no unclarity is apparent either to the other party or to the EPO.

In such a situation it is not possible to request reopening of the discussion, alleging a violation of the right to be heard. See for example T 71/06, Point 5.2 and 5.3 of the reasons.

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