CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 558/20 – The best way to jeopardise the admissibility in appeal of AR admissibly filed and decided in opposition

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Patent EP 2 886 363 B1 relates to a security element for security documents

Brief outline of the case

The OD decided that the new MR was lacking N over no less than 4 documents D1, D4, D6 and D9. The same applied to AR 1. AR2 was lacking N over D4, D6, D9 and AR3 was lacking N over D4.

The patent was thus revoked the proprietor appealed.

The board confirmed the lack of N over D1.

The board did not admit the AR under 12(3+5) RPBA for lack of substantiation.

The proprietor’s point of view

The proprietor request maintenance according to one of the requests filed in opposition.

For the proprietor  the MR does not lack N.

As AR 1 to 3 further restrict the scope of protection of the MR, their subject-matter – like that of the MR – is new and inventive.

The board’s decision

AR1-3 were not admitted under Art 12(3+5) RPBA as they were filed without any recognisable substantive justification.

Already in its communication under Art 15(1) RPBA, the board noted it was already established case law under Article 12(4) RPBA07 that AR filed without substantiation were not to be taken into account. The board referred to the Case Law of the Boards of Appeal of the EPO, 10th edition 2022, Chapter V.A.3.2.2, and especially to T 0706/17, T 2457/16, T 0412/18.

AR1-3 were already the subject of the contested decision. In this respect, it would have been expected that the appellant would have dealt with the grounds for the decision on the AR. The board referred to the Case Law of the Boards of Appeal of the EPO, 10th edition 2022,, Chapter V.A.2.6.3. e) and f) and V.A.4.3.5 b), and especially to  T 0220/83, T 0213/85, Chapter V.A.2.6.3. e) and f) and V.A.4.3.5 b), and especially to T 0220/83, T 0213/85.

Quite apart from the lack of discussion of the substantive grounds of the contested decision, the general reasoning put forward by the proprietor that the AR are more limited and therefore novel and inventive for the same reason as the MR is clearly not suitable to justify their allowability in the event that the board considered the MR to be unallowable. This reasoning is therefore tantamount to a complete lack of reasoning.

The bord noted that without prejudice to the question of the admissibility of the auxiliary requests, the board in its communication under Arti 15(1) RPBA expressed its opinion on novelty and concluded that, even if the requests had been allowed, the subject-matter of the respective claim 1 would not have been novel with respect to both D1 and numerous other documents.


One wonders why a proprietor does not more than lip service to the AR.

As the OD had decided that none of the AR were allowable for lack of N, it was not possible for the proprietor to refer to its submissions in opposition.

It was clear that with this kind of justification, the board could not admit those AR. The same would have occurred before an OD, even if AR1-3 would have been filed within the time limit under R 116(1).

One possible explanation is that, due to the German law on employee inventions,  the proprietor could not drop the whole patent after its revocation by the OD.

When it comes to lack of substantiation of requests in appeal, the situation has not changed with the present RPBA.

On the procedure

None of D1, D4, D6 and D9 were mentioned in the ESR.

As the new MR in opposition was already limited over the patent a granted, when claim1 of this request was deemed lacking N over no less than four documents, something appears to have gone wrong during the original search.  .

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