CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 641/20 – Exercising discretion is a question of substantive nature and not a procedural one – A change of paradigm?

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The patent relates, inter alia, to a module unit with a sensor device for actuating a movable part, in particular a flap of a motor vehicle.

Brief outline of the case

The patent was revoked and the proprietor appealed the decision.

The OD had decided that claim 1 of the patent as granted and of AR 3 and 4 were lacking N.

AR 1, 2, 5 and 6 were not admitted in the procedure by the OD.

In appeal, the proprietor requested

cancellation of the contested decision and remittal to the OD due to substantial procedural violations, as well as reimbursement of the appeal fee,

– maintenance of the patent in the granted version,

– in the alternative, maintenance in accordance with one of the auxiliary requests 1, 2, 3, 4, 11 or 35.

The appeal was dismissed and the revocation confirmed.

The case is interesting due to the way the board dealt with the exercise of its discretion by the OD.

The proprietor’s point of view

The proprietor alleged that the OD had committed various substantial procedural violations with regard to the following points:

  1. The admission of the late-filed E6 into the proceedings

For the proprietor E6 did not fulfil the criterion of prima facie relevance, since it did not anticipate all the features of claim 1 of AR so as to deprive it from N.

2. The Opposition Division’s introduction of E4 into the proceedings

The OD introduced E4 ex-officio. For the proprietor it has “exercised its discretion under Article 114(1) in disregard of the correct criteria and thus exceeded the discretion it had been granted”. The OD based the assessment of the prima facie relevance of E4 on an erroneous assessment of its disclosure.

3. The reference by the OD in the communication annexed to the summons, cf. point 7, according to which it would pay attention in the further proceedings to whether future requests constitute a convergent development

The proprietor argued that this indication limited the possibility of amending the patent to a convergent development at an early stage of the proceedings, which constituted a violation of the right to be heard and a violation of the principles of equal treatment and fair procedure.

4. The lack of reasoning in the communication annexed to the summons

The proprietor argued that the OD, in its annex to the summons, had considered all AR filed up to that point as not patentable, whereby the assessment had in part only been made in general terms and in part had not been substantiated.

5. The non-admission of auxiliary requests 1, 2, 5 and 6 into the proceedings.

The non-admissibility of AR 1 was not substantiated. AR 2, 5 and 6 had been filed during the OP before the OD in response to a completely unexpected procedural development of the case and were therefore not late filed.

The board’s point of view

  1. The admission of the late-filed E6 into the proceedings

The question of whether a discretion has been exercised correctly, e.g. taking into account the correct criteria, is a question of a substantive nature and not a procedural one. Therefore, a substantively incorrect discretionary decision which has been taken by correctly applying the procedural provisions of the EPC does not constitute a procedural violation justifying the reimbursement of the appeal fee.

2. The Opposition Division’s introduction of E4 into the proceedings

When exercising the power under Art 114(1), it must be borne in mind, on the one hand, that opposition proceedings are contentious proceedings between parties who generally represent opposing interests but who are entitled to equal treatment, cf. G 9/91, point 2, last sentence of the reasons.

On the other hand, the provision of Art 114(1) is intended to prevent invalid European patents from being maintained. Therefore, according to the case law of the Enlarged Board of Appeal, an OD may, in application of Art 114(1), raise a ground for opposition not invoked by the opponent on its own G 9/91, point 16 of the Reasons.

3. The reference by the OD to the convergence of future requests

In principle, a procedural violation could exist if the proprietor is de facto prevented from filing new requests, so that the possibility of amending the patent in suit is unreasonably restricted. However, the indication given by the OD is not such an obstacle.

On the contrary, the OD announced that it would pay attention to the convergence criterion in the further applications still to be filed. However, the proprietor was at liberty to file further requests and, if necessary, to submit arguments on their convergence or even on their admissibility for other reasons.

4. The lack of reasoning in the annex to the summons

A communication annexed to the summons already fulfils the requirements of R 116(1) if it merely refers to the questions which the OD considers to be in need of discussion for the decision to be taken. There is therefore no obligation to give reasons for the decision in such a communication.

5. The non-admission of auxiliary requests 1, 2, 5 and 6 into the proceedings

The non-admissibility of AR1 was not substantiated and can be left aside.

The preliminary opinion of the OD regarding the requests of the proprietor was negative and remained negative during the OP. Consequently, the proprietor was not confronted with an unexpected development of the proceedings at the OP. Therefore, AR 2, 5 and 6 were late filed and their admission was at the discretion of the OD. The board repeated that the exercise of its discretion by an OD is a question of substance and not a procedural issue.  


The present decision is interesting in that it has made clear that the exercise of its discretion by a body of the EPO is a question of substance and not a mere question of procedure.

Reducing the admissibility of a late submission to a mere procedural aspect could, in my humble opinion, always be put into question. After all, when deciding or not to admit a late submission, it is the substance of the submission which primarily matters and only in a secondary manner that it can influence the way the procedure takes.

This decision is to be welcomed and it is to be hoped that it will not stay as a one-off decision.

It will also to be seen whether the EBA acting under Art 112a will continue to consider a discretionary decision of a board as a purely procedural decision and not a decision as to its substance, cf. R 6/20, commented in this blog.

On the other hand, the EBA acting under Art 112a has always made clear that only procedural defects can be subject to a review procedure and questions of substance excluded from petitions to review.

In principle an OD has a duty of neutrality vis-à-vis the parties to an opposition procedure. Citing new prior art or introducing new grounds of opposition, should remain the exception.

The annex to the summons is mainly there to indicate to the parties the most important issues to be discussed. If the OD expresses an opinion upon the patentability of the claims on file, this opinion is not binding for the OD.

When replying to an opposition, that is before the end of the time limit under R 116(1), the proprietor should be allowed to file divergent requests as it should be able to try various options in order to maintain its patent. The situation changes when requests are filed after the time limit under R 116(1), as then the requests will be late-filed and not automatically admitted in the procedure. Then they better be convergent.

On the procedure

The patent should never have been granted in the form it was. The ISR established by the EPO mentioned no less than 8 documents of the category X,Y. The board held that claim 1 as granted lacked N over E6=WO 2009 132766, a document not mentioned in the ISR. The same applied to all claims 1 of the admissible requests.

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