CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 925/21 – Ex-officio examination of all AR by a board

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The patent pertains to electronic hearing aids and methods for their use.

Brief outline of the case

The joint opponents appealed the decision of the OD to reject the opposition.

The board revoked the patent, since all requests on file were infringing Art 123(2).

The case is interesting in that the board decided to examine ex-officio all requests, although the opponent had not challenged the admittance or the allowability of some AR.

The proprietor’s point of view

The proprietor argued that the board should not question the compliance of the present AR with the EPC, since the opponent had not challenged the admittance or the allowability of those AR. The proprietor filed a total of 18 AR.

The opponent’s point of view

The opponent challenged claim 2 of the MR, which was, for instance, included already in claim 1 of AR 1.

The board’s decision

In order for a patent to be maintained in amended form, it must satisfy the requirements of the EPC, cf. Art 101(3,a).

It follows from this provision that the board must, at least, consider whether the objections raised against claim 1 of the MR are overcome in the amended form of the opposed patent.

Similarly, the board has discretion to consider or disregard late-filed claim requests – whether or not a party to the appeal proceedings has objected to their admittance.

However, for reasons of procedural economy, even if all the AR in question represent an “amendment” to the respondent’s appeal case, the board will, in the case at hand, focus on their allowability.

For the board, the amendments underlying claim 1 of all AR on file, specifically features (i) to (m), cannot provide a remedy for all of the issues raised against the MR.

The board concluded that claim 1 of all of the AR on file likewise does not comply with Arti 123(2).


From the present decision, it can be concluded that it is enough for the board to examine all AR if the opponent has challenged the validity of a claim of the MR, and that he has shown that a least one of the claims of a validly filed AR shows the same defect.  

One could also conclude that, should the opponent declare that he has no objection against one of the requests, then the board still has to verify which of the requests satisfy the requirements of the EPC as provided for in Art 101(3,a). That unity of invention and clarity do not have to be examined in opposition is the result of G 1/91 and G 3/14. The board will however not do the job of an opponent.

I would however take bets that, in such a case, the board will rather remit to the OD for further prosecution, be it only due to the production objectives set to the board.

In the present case, it was easy to decide on the other AR as the same objections arose.

It is also not infrequent that in case of a plurality of AR, they can be dealt with at once the same objection under Art 123(2) applies to all requests validly filed. In one of the cases I had to instruct, 134 AR went at once.

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