CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2440/16 – Decision of maintenance in amended form in the absence of any reasons given by the board why the patent can be maintained in this form

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The patent relates to a “Method and device for producing film composites”

Brief outline of the procedure

The OD rejected the opposition because it was not convinced that a public prior use had taken place before the priority date. The OD did not hear the witnesses offered by the opponent.

The opponent appealed the rejection of the opposition.

The board decided to hear the witnesses and eventually that the patent could be maintained according AR2, after the proprietor had withdrawn its MR=as granted and AR1.  

When consulting the minutes of the OP, excluding the hearing of witnesses, it appears that the board confirmed the public prior use and that claim 1 as granted lacked N in view of the public prior use.

According to the minutes, claim 1 of AR1 lacked IS in light of the public prior use.

What is interesting is that the BA gave no reason as to why the patent could be maintained according to AR2.

The board’s reasoning

At point 2 of the reasons the board states:

At the OP, the opponent stated that it had no objections against AR2.

For its part, the board sees no reason to examine of its own motion whether the request meets the requirements of the EPC. An adaptation of the description was not requested either.

Thus, the patent can be maintained on the basis of the claims of AR2 as well as the description and the drawings as granted.


The case is already remarkable in that it is rather infrequent that a board summons and hears witnesses for the first time in appeal.

What is even more remarkable is that the board did not give any reasons why it considers that maintenance in amended form complies with the EPC.

The board does even not see any reason to examine of its own motion whether the request meets the requirements of the EPC.

I would have thought that if the opponent has no objection against AR2 and the proprietor only maintains AR2 as its sole request, this does not mean that this AR2 is necessarily in accordance with the EPC.

After all, an opposition has an effect also vis-à-vis of third parties and the patent as maintained is meant to have existed in this form since the filing of the application.

I am at a loss to understand why the board did not find it necessary to give, even in a short form, the reasons as to why it considers AR2 meets the requirement of the EPC.

The deliberation about AR2 lasted 10’ and after the deliberation the board announced that the patent could be maintained according to AR2. The board must have had good reasons why it came to this conclusion. It is therefore hard to understand why it did not give any reasons.

The minutes of the OP are silent about the reasons why AR2 is in conformity with the EPC, so that Art 15(7) RPBA20, which provides that the decision of the board can be given in abridged form, even in the minutes, does not apply. As there was no decision of first instance with respect of the maintenance according to AR2, the possibility of an abridged decision pursuant Art 15(8) RPBA20 was also not given.

Let’s hope that this decision will remain a one-off.

That the backlog of the boards is still important, cannot be a reason not to motivate a decision, even if proprietor and opponent agree on the text in which the patent can be maintained.

As witnesses were heard, the board was enlarged to 5 members. One legal member dealt with the hearing of the witnesses and the second legal member drafted the minutes.

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2 replies on “T 2440/16 – Decision of maintenance in amended form in the absence of any reasons given by the board why the patent can be maintained in this form”


Strange… does not Art.101(3) EPC require not only the EPO authority in first instance but also the second instance in appeal to examine the amended patent for compliance with the EPC ex officio, without any explicit request of the opponent thereto?
Or is this a new measure to enhance the efficiency of the Boards? If so, please amend the RPBA to include “the Board shall not examine any request of any party beyond the explicit counter arguments given by an opposite party and shall only assess whether any arguments are prima facie convincing”?

Avatar photoDaniel X. Thomassays:

The decision is indeed strange. This is the more so since there were two legal members involved in the decision. They could however have ben outvoted by the three technical members.

Opposition proceedings normally end up with a reasoned decision of either the OD in the absence of an appeal, or with a reasoned decision of a BA in case of appeal.

If an OD would have decided the way the present board has decided, the decision would have been set aside in no time at all as it is absent of any reasoning under R112. That the opponent and the proprietor are happy with the result does not mean that third parties will be happy with said result.

Efficiency of the boards should however not go as far as to agree with what the parties in opposition have agreed.

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