CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2537/22 – The number of requests already filed in first instance can be determining in appeal and lead to the non-admission of further ones

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EP 3 455 066 B1 relates to a  a method and an apparatus for producing multilayer films.

Brief outline of the case

The patent was revoked by the OD.

The MR filed during OP before the OD comprised added matter, cf. Art 123(2). AR1 lacked IS over D1=US 4,184,005 +D4=EP 2 085 218, both documents not mentioned on ISR established by the EPO.  

The proprietor appealed.

The board confirmed the revocation.

The new MR filed when entering appeal was not admitted in the procedure under Art 12(4+6). The same applied to AR2. The board confirmed the lack of IS of AR1ap=AR1op over D1+D4.  

The non-admissibility of the new MR in appeal

Claim 1 of the new MR differed from claim 1 of the MR decided upon by the OD

The proprietor had amended its MR three times during the opposition proceedings: twice during the written proceedings and once during the OP before the OD.

The board held that the MR filed with the statement setting out the grounds of appeal indeed addressed the objections raised against the previous MR.

However, the amendments to claim 1 result in an amendment to the party’s case under Art 12(4) RPBA.

The board considered that:

  • the proprietor was allowed to replace all its previously filed requests with new ones during the OP before the OD and that
  • the clarity and added subject-matter issues were essentially the same as those already discussed in the first-instance written proceedings.

The board therefore held that the proprietor should have addressed the OD’s negative finding by filing the new MR before the closure of the OP in first instance.  

Furthermore, the new MR contained new definitions which can only be found in the description. These definitions raise new issues concerning added subject-matter and clarity, which should have been discussed during the opposition proceedings.

The MR was thus not admitted under Art 12(4+6) RPBA.

The non-admissibility of the new AR2 in appeal

Claim 1 of AR 2 differs from claim 1 of AR 1 discussed in the decision under appeal in that the step specified in dependent claim 4 has also been included.

The proprietor has not provided any reason for filing this request only on appeal.

The board noted that AR 1 derives from a request which was filed on its own very late, namely during the OP before the OD. The OD’s finding that the subject matter of claim 1 of that late-filed request did not involve an IS over D1 and D4 could not have been surprising.

Claim 1 of that request was obtained by adding the features of dependent claim 5 as granted to claim 1 as granted. However, an objection against claim 5 as granted based on D1 and D4 had already been raised in the notice of opposition.

The filing of AR 2 on appeal therefore cannot be considered a response to an unexpected outcome of the proceedings. Furthermore, this request raises new issues of lack of clarity which were not discussed during the proceedings before the OD.

AR2 was thus not admitted under Art 12(4+6) RPBA.


Filing new requests during the OP before the OD is possible, they might be late but still admissible, In order to be admissible new requests, should simply not come as a surprise for the opponent, e.g. T 1098/05. A combination of granted claims cannot come as a surprise for the opponent. Limiting claims during OP by features from the description does clearly takes the opponent by surprise.

In appeal we have the three levels of convergence which put a clear halt to late filed requests. If Art 12(4+6) RPBA cannot be applied, Art 12(3+5) RPBA is the second barrage at the first level of convergence.

What the decision teach us is that file wrapper estoppel does not exist in European procedure, but the boards are looking at the behaviour of the proprietor during OP in first instance proceedings.  

It is worth remembering that in T 1617/08, Reasons 20, the board held that “The purpose of an oral hearing in appeal proceedings is to give the parties an opportunity to argue their case but not to give an appellant patentee the opportunity to repeatedly modify its requests until an acceptable set of claims is found. The board referred to  T 47/03; T 745/03; T 221/06 and R 11/08; T 565/07; T 1685/07 and R 5/11; T 1509/09.

The valid RPBA are much stricter, but the conclusions of T 1617/09 certainly apply mutatis mutandis before an OD.

T 2537/22

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