CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 3241/19 – A word of warning to applicants appealing a decision of refusal

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The patent relates to an arrangement for subsea cooling of power electronic cells.

Brief outline of the case

At the end of the OP before the ED, the latter decided that a patent could be granted on the basis of AR2. The ED issued a corresponding communication under R 71(3) in which it was explained why the higher ranking requests were not allowable.

The applicant disagreed with the text and requested a grant according to a MR.

As the ED could not agree, it issued a decision of refusal which was appealed by the applicant.

The ED decided that the former MR and the former AR3 and 4 did not meet the requirements of Art 83 and that the subject-matter of the former AR1 lacked IS.  

In its decision, the ED noted that its proposal to grant a patent on the basis of AR2 was not accepted by the applicant.

None of the requests on file were allowable resp. admissible, so that the application was refused for good.

The board’s decision

Main Request

For the board, the disclosure of the invention does not allow the skilled person to perform, without undue burden, essentially all the embodiments covered by the claimed invention. The MR was thus not allowable. The corresponding decision of the ED was confirmed.

Auxiliary Request 3

AR 3 was not admitted under Art 13(1) RPBA as the amendments over the MR did not overcome the objection under Art 83.

Auxiliary Request 1

For the applicant, AR1 was prima facie allowable and should be admitted. While the applicant admitted that AR1 could have been filed before the ED, it had not been able to come up with this wording at that time, also in view of the several possible options to address the objections raised by the ED. There was also a change of representative.

For the board, the applicant could and should have filed AR1 already during OP or at the latest with its reply to the ED’s communication under R 71(3), in order to overcome the objection under Art 83.

AR1 was thus not admitted under Art 12(4) RPBA07.

Auxiliary Request 2

Claim 1 of AR 2 is based on a combination of claims 1, 10 and 12 as originally filed, with a further limitation stemming from the description.

For the applicant, IS had to be acknowledged as decided by the ED.

For the board, the subject-matter of claim 1 according to AR2 did not involve an IS. The corresponding decision of the ED was thus set aside.

The warning from the board

The board set out that, should the applicant wish to use the appeal to pursue a higher-ranking request which has not been granted, it must be aware of the risk that the board might refuse the application in toto, whereas the first instance had considered the lower-ranking AR2 to be allowable.

As per G 10/93, OJ EPO 1995, 172, Headnote, in an appeal from a decision of an ED in which a European patent application was refused the board of appeal has the power to examine whether the application or the invention to which it relates meets the requirements of the EPC.

The same was true for requirements which the ED did not take into consideration in the examination proceedings or which it regarded as having been met. If there is reason to believe that such a requirement has not been met, the board should include this ground in the proceedings.


It should not come as a surprise, that in appeal after examination, the board can raise objections which were not raised by the ED. Not only G 10/93 is perfectly clear abut this possibility, Art 111(1) provides that: “The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution”.

In opposition, a board is more limited in its possibilities as it cannot introduce new grounds of opposition without the approval of the patentee, cf. G 10/91, OJ 1993, 420.

Whilst the primary object of the appeal proceedings to review the decision under appeal in a judicial manner, cf. Art 12(2) RPBA, a board of appeal has, within the legal and factual framework of the appeal procedure and the decisions of the EBA, the competence to review any decision of a first instance deciding body.

The present decision is to be seen as a booster vaccination.

Explaining that a change of representative occurred, is the worse excuse for an applicant trying to file new requests.

The decision makes it also clear that, in examination, the best moment to file an AR is during the OP before the ED. The last possibility to file an AR is when replying to the communication under R 71(3). In both cases such a late filed request might not be admitted, cf. R 137(3), but at least the applicant was pro-active. With the present RPBA, filing a request when entering appeal, has little chances to be admitted.

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