CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 655/21 – A board is not limited to the objections raised in the statement of grounds of appeal

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Brief outline of the case

D23 and D26 were not admitted by the OD under R 116(1).

The opposition was rejected and the opponent appealed.

The opponent’s late objection as regards lack of IS over D18 against claim 1 of the granted patent was admitted into the appeal proceedings.

The board decided that the claim 1 of the MR was lacking IS over D18.

AR1 was admitted by the board into the proceedings.

The board further decided not to admit D23, but to admit D26 into the proceedings.

The board remitted to the OD for further prosecution.

The case is interesting in that the board decided to review parts of the appealed decision other than those challenged by the opponent.

Restricted scope of the opponent’s appeal

The OD’s decision dealt with the issue of N of the granted claim 1 in view of no fewer than seven different prior-art documents.

In the board’s view, it would have been prudent for the opponent to address in its statement of grounds of appeal at least some of the appealed decision’s substantive aspects regarding added subject-matter or regarding patentability having regard to prior-art documents that were actually in the proceedings.

However, for whatever reasons, this was not the course of action pursued by the opponent. The statement of grounds of appeal only addressed the matter of N in a substantiated manner only in view of D26, which was not even admitted in the procedure by the OD, and hence not dealt with in the appealed decision.

This means that the scope of the appeal lodged by the opponent was uncommonly restricted.

Therefore, the board held that the present appeal presents “Exceptional circumstances“.  

The proprietor’s point of view

The proprietor submitted that the only ground on which the opponent had appealed was that claim 1 lacked N over D26.

Therefore, the board should not extend the scope of the appeal proceedings to documents and attacks which were part of the opposition proceedings but not of the appeal proceedings.

Instead, it was at least “appropriate for the board to confine the appeal proceedings to the grounds set out by the opponent in its grounds of appeal”.

The proprietor referred in that regard to the Case Law of the Boards of Appeal, Tenth Edition, 2022, V.A.3.2.3 i) and V.A.3.3.1, and in particular to decisions T 1799/08 and T 182/89.

By referring to Art 12(2) RPBA, the proprietor further argued that there “is no requirement for the Board to review any aspects of the decision outside the scope of the case put forward by the appellant”.

The board’s decision

The board disagreed with the proprietor’s conclusion that the board should or could not review parts of the appealed decision other than those challenged by the opponent.  

First reason not to limit the appeal proceedings

First, the board cannot see any legal basis for such a limitation, neither in the text of the EPC nor in the RPBA. Pursuant to Art 114(1), the EPO, and thus also the boards, shall not be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

Moreover, pursuant to Art 101(3), it should be fully examined whether the patent as amended complies with the EPC, cf. G 9/91 and G 10/91, Reasons 19.

According to the jurisprudence of the EBA, the only limitation for a board’s review of the decision under appeal is that it cannot introduce or admit a “fresh” opposition ground without the consent of the proprietor, cf. G 9/91 and G 10/91, Reasons 18. Also the RPBA cannot limit the powers and the duties enshrined in Art 114 in appeal proceedings. The board referred e.g. to T 862/16, Reasons 8.3.1.

Second reason not to limit the appeal proceedings

If there were a limitation on the board’s powers, this would arguably lead to the following contradiction:

  • On the one hand, the board could not review parts of the decision under appeal which were not challenged by the appellant.
  • On the other hand, if a party were to amend its case during appeal proceedings and, for example, supplement a novelty objection with an inventive-step attack, based on the same (or different) document(s), against the same (or different) claim request(s), a board would typically have the discretion to admit such an amendment to the party’s appeal case if, for instance, inventive step was also a ground for opposition relied upon by the opponent in the opposition proceedings.

The existence of this discretionary power has not been challenged by the proprietor. Such a discretionary power would, however, be clearly in tension with the proprietor’s assumption that the filed appeal would define – in a binding and definitive manner – the scope of the review which the board is supposed to conduct within the meaning of Art 12(2) RPBA.

In the present case, the board did not have to take a final position on the relationship between the decision of an opponent to limit the appeal to a specific part of the impugned decision and the board’s powers as well as the public interest in the revocation of invalid patents.

Indeed, following the board’s communication under Art 15(1) RPBA, the opponent had amended its appeal case.

The board did thus examine the lack of IS over D 18, admitted D26 and remitted to the OD for further prosecution.


The present board is to be welcomed as it raised a fundamental question: the relationship between the decision of an opponent to limit the appeal to a specific part of the impugned decision and the board’s powers as well as the public interest in the revocation of invalid patents. In the present case the board considered that it did not have to answer this question.

The present decision is also to be welcomed as it somehow reestablishes the hierarchy of norms. The EPC, here Art 101(3) and Art 114(1), takes precedence over the RPBA.

One possible conclusion is the following: if an opponent files an appeal when its request for revocation has been denied by an OD, the board cannot maintain the patent without having, at least prima facie, checked ex-officio, in the limits of G 9/91, G 10/91, G 1/91 and G 3/14, whether the patent can be maintained in the form decided by the OD. This also entails to revise the discretion exercised by the OD in admitting or not late filed submissions of the opponent or of the proprietor.

The role of the EPA is indeed not to maintain patents which have no raison d’être. Hiding behind the RPBA as some boards do, in order to increase their production/productivity, is not fulfilling this role.

On the other hand, if an opponent is not successful, he can still resort to nullity actions before a national court or the UPC. This is perfectly acceptable if the opponent was not diligent enough during opposition or appeal. If the proprietor was not diligent he might however lose its patent.   

There is a reasonable balance to be found between the strictness introduced by the three levels of convergence of the RPBA and the non-maintenance of invalid patents. Maintaining invalid patents clogs up courts having to deal with such patents.

The present board commented on the situation in which an objection of lack N could be followed by an objection of lack of IS on the basis of the same document. It was established practice, to admit such a change of objection, e.g. T 710/15 and T 184/17.

In T 1042/18, commented on this blog, the board held that the new objection was not a new ground of opposition, but was not admitted under Art 13(2) RPBA as it should have been filed earlier. The problem is that an objection of N and IS based on the same document is not coherent, cf. e.g.  T 131/01, the predecessor of T 710/15 and T 184/17.

If during OP, the board decides that N is given, it should admit an objection of lack of IS based on the same document and not simply dismiss it for production/productivity reasons and hiding behind Art 13(2) RPBA. If the board is not minded to examine IS during the OP, it should then at least remit to the OD under Art 111 or Art 11 RPBA.  

It is therefore possible to consider that in T 1042/18, the board merely ignored Art 114(1) and it should have checked that it does not maintain an invalid patent, or remit to the OD.  

The present decision is an important decision, as it has tried to strike a proper balance between conflicting interests, on the one hand, the board’s powers and on the other hand, the public interest.

It shows however that in procedural matters, the boards have no coherent approach. In the long run this not good.

Last but not least, the opponent was ill advised in basing its appeal on a document, D26, which was not even admitted by the OD. It was not guaranteed whatsoever that the board would at all infirm the non-admission of D26 by the OD. The client’s wishes have to be taken seriously, but not at the price to not deal fully in substance with the decision at stake. This behaviour of the opponent and of its representative was rather risky.

At least some of the reasons brought forward in the OD’s decision should have been discussed in the statement of grounds of appeal. With another board, the appeal could have been dismissed at once as not dealing with the appealed decision, but on the point of admissibility of a late filed document. .

It is only following the communication of the board under Art 15(1) RPBA that the opponent took over the objection of lack IS over D18 raised by the board in said communication, but still insisted on the lack of N over D26.

When looking at the proprietor’s submissions in appeal, showing that D26 was easily retrievable, it is surprising that the original search did not find D26.

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