In a previous blog entry of 03.08.2026, I presented this decision, T 0712/24, and my comments were rather critical.
Further thoughts about the case lead to further comments.
It is manifest that the present board showed a rather pedantic and apodictic view on the opposition procedure.
It is first worth reminding the board that R 116(1) provides expressis verbis the following: “At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 132 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed.”
It is further worth reminding that R 116(2) provides expressis verbis the following: “If the applicant or patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, they may be invited to submit, by the date specified in paragraph 1, second sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis.”
Requests filed before the date set under R116(1) can thus not be considered as being prima facie late. The same applies for requests filed during OP after a change of opinion of the OD, they cannot be considered prima facie late, see the last sentence of R 116(1).
It is manifest that not all requests submitted by the proprietor before the date set in accordance with R116(1) are automatically admissible. For example, they might not admissible if they are not conform with the requirements of R 80 or if they are not duly substantiated and cannot therefore be regarded as admissible and upheld under Art 12(6) RPBA.
What if the requests filed within the time limit set out in R 79(1) are not duly substantiated? Would the proprietor not be able to rectify the situation? I read something different in R 116(1) and (2).
If, during the OP, the OD changes their view in relation to the provisional opinion expressed in the annex to the summons, the OD must allow the filing of at least one new request. The OD may, of course decide that such requests are not admissible, but it must have good reasons for doing so.
Holding that only the time limit under R 79(1) counts when it comes to filing AR in opposition and “relative criteria” are to be ignored, blatantly ignore R 116(1) and (2) contrary to what the board alleges in Reasons 2.6 and 2.24-2.25 of its decision.
Last but not least, it seems important to note that the opponent has nine months to prepare his opposition, whilst the proprietor would only have four months to reply to it? In case of a plurality of opponents, the proprietor can at best have a two months extension of the time limit under R 79(1).
Where is the equality of arms between opponent(s) and proprietor? It is not serious for a board to ignore this reality, just for the sake of being able to save some work on purely formal reasons.
The board’s position is not tenable and a referral is necessary
The board’s very pedantic and apodictic position – that the only time the proprietor may file claims is within the time limit set out in R 79(1) – thus fundamentally misrepresents the reality of opposition proceedings. It is only after becoming aware of the OD’s position that the proprietor can form an idea of how best to defend his patent.
The present board effectively wants the opposition proceedings to become “front-loaded”, just as the appeal proceedings are. During examination, the applicant is also unable to know how to adapt their claims until they are aware of the ED’s position.
That in appeal what has not been discussed in first instance can be ignored is perfectly acceptable, cf. Art 12(4) RPBA. What is nevertheless required, is that the first instance proceedings have been correctly carried out and given a fair chance to the applicant/proprietor to defend his applicagtion/patent.
The question is certainly worth a referral to the EBA, but in matters of referral to the EBA boards are at the same time judge and party. In the event of a blockade by the boards, the president of the EPO should initiate a referral. This does however require a political will.
Comments
2 replies on “T 712/24-On the admissibility of AR in opposition-Addendum”
Rule 81(1) second sentence can also be cited: “Grounds for opposition not invoked by the opponent may be examined by the Opposition Division of its own motion if they would prejudice the maintenance of the European patent.”
@ Francis,
Thanks for your comment. R 81(1) is a further reason as to why the position of the board is not reasonable. A reply to such an objection cannot be late, although it cannot have been filed within the time limit under R 79(1). “Relative criteria” cannot be ignored.
It is manifestly absurd to focus solely on the time limit under R 79(1). It can be expected from a board to think matters thoroughly through and not cling to Rule 79(1) as if it were a lifeline.