CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2202/21 – No need to file AR when the opposition is rejected - Need of substantiation when AR are filed in appeal

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The patent relates to “Methods and systems for managing content subscription data”.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board set aside the OD’s decision and considered claim 1 as granted as lacking IS.

AR1-2 were filed for the first time when entering appeal. AR1-2 were not admitted under Art 12(4) RPBA. The board held that they represented a fresh case as they lacked any substantiation.

The patent was thus revoked.

The proprietor’s point of view

According to the proprietor’s written reply to the appeal, claim 1 of the present AR was based on granted system claim 4 in AR 1-2 and granted system claim 5 in AR2. Those claims correspond to method claims 11 and 12 as granted, respectively. The proprietor further submitted that:

“None of the prior art addresses a choice of subscription and/or a confirmation of validation of the user account.”, as far as AR1 was concerned.  

“None of the prior art addresses using a central (trusted) server to request content that is then that is then [sic] connected directly to the user equipment device.”, as far as AR2 was concerned.   

The proprietor argued that, since the absence of features cannot be proved, this reasoning should suffice. And, at any rate, filing these claim requests before the OD would not have made any difference, because the OD’s preliminary opinion had consistently been in favour of the rejection of the opposition.

The opponent’s point of view

The opponent objected that the AR could and should have been filed already during the opposition proceedings. This would have given the opponent the possibility to react much earlier. Providing reasons during the OP before the board could hardly cure the fault in the written reply to the appeal. For this would force the opponent to build its case at a very late stage.

The board’s decision

The proprietor’s case presented in its written reply with respect to the newly filed AR is based on the presence of additional limitations which were never addressed by the OD, as can be seen from the annex to the summons, the minutes of the first-instance OP and the decision under appeal.

The proprietor merely asserted that “none of the prior art” – presumably the prior art cited in the opposition proceedings – addressed those additional limitations.

During the OP before the board, the board explained its position in regard of insufficiently substantiated claim requests. Namely that the requirement of presenting a complete case stipulated by Arti 12(3) and 12(4), third sentence, RPBA is not merely a rule of administrative convenience, but the expression of a fundamental principle of court proceedings. The board referred to T 108/20, Reasons 4.1, addressing procedural justice in discourse-based court proceedings).

Applied to the presnt case, the board tends to agree with the proprietor that a filing of AR in opposition proceedings was not necessarily called for, as these requests would not have been dealt with during the first-instance OP or in the decision given that the patent was maintained as granted.

With the opponent’s appeal, new arguments were put on the table, thus calling for counter-arguments by the proprietor. Counter-arguments can also consist of the filing of new claim requests where these are accompanied by corresponding arguments addressing why the alleged shortcomings of the MR would be overcome by the newly filed claim requests, cf. Art 12(3) RPBA.

Where, as in the case at issue, lack of inventive step is argued, the patentee in filing new requests has not only to explain the further differences to prior art, but also why these differences are considered inventive, e.g. by applying the problem-solution approach, by arguing synergy between the additional features, etc..

It is not the task of the opponent to make the proprietor’s case of inventive step in order to provide arguments against a case of inventive step that has not even been made, and neither is it the task of the board.

The proprietor’s reasoning that there were even more “distinguishing features” may provide a complete case for novelty, because novelty requires no more than one distinguishing feature. But novelty was never a ground for opposition in these proceedings.

Absent any explanations as to inventive step, the discourse thus cannot move forward because no argument in that regard has been provided. Consequently, no counter-argument can be expected and the board, as the deciding body, cannot be expected to deal with this issue. The board is therefore within its discretion not to admit the insufficiently substantiated auxiliary requests, and in the case at hand decided just so.

Besides, the new sets of claims constitute “fresh cases” whose admittance would necessitate an entirely new assessment by the board in regard of compliance with at least Art 52(1) or even a remittal to the OD for further prosecution which would in turn be clearly detrimental to procedural economy.


When looking at recent case law of the boards, different boards have specified different requirements when it comes to AR filed in opposition, but not dealt with there.

Some boards require the opponent to deal with all of them, even not knowing whether they will all be resubmitted in appeal. Other do not require this, and the opponent can wait to react when AR are filed in appeal.

Some require the proprietor to already file ARs in opposition, as it never sure that the board will follow the OD. This is as bad as a board requiring from an opponent to deal with all AR filed in opposition, even if those AR will not have been subject of the OD’s decision.  

In the present instance, the board accepted that the proprietor did not have to file AR in opposition. It could be acceptable that ARs are filed in reply to the opponent’s appeal.

The quid pro quo for this leniency is that the proprietor does not simply has to show, even indirectly, that the subject-matter of the independent claims of the AR is new, but also why it presents the required inventive step.

This position appears quite reasonable, but by stating that those requests are actually representing a “fresh case”, the present board shuts the door it had just opened.

If the board accepts that the proprietor waits for the opponent’s appeal to file AR, he should not be surprised that those AR represent a “fresh case”. Should the decision of the ED be set aside, the board has then the possibility to remit for further prosecution.

The board is however to be followed, when it requires that the new AR should be substantiated not only for N, but with respect to all other patentability requirements, especially IS. In the absence of proper substantiation, the AR could not be admitted.

It remains however a dangerous game for a proprietor not to file any AR in opposition. Some boards, dismiss at once requests only filed when entering appeal.

On the procedure

The OD rejected the opposition. The board held that the OD’s formulation of the OTP, was not based on any particular technical effects associated with the distinguishing features over the CPA=D2=US 8 843 736.    

By applying the well-established COMVIK approach, the OTP would be properly based on the differences with respect to the CPA.

As the differences concerned administrative, and hence non-technical, aspects, the subject-matter of the MR was lacking IS.

D2=US 8 843 736 was not mentioned in the ISR established by the EPO, which mentioned only 3A documents. D2 and the patent have two classification units in common, H04L 29/06 and H04N 21/258.

Looking at the outcome of the appeal procedure, the present patent should never have been granted.


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