CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 965/22 – The fact that certain claims were already presented in opposition is not a guarantee of their admissibility in appeal

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The patent relates to a scroll pump and a method for operating as scroll pump.

Brief outline of the case

The OD decided maintenance according to AR 1.

The opponent appealed.

The board held that the only admissible AR lacked IS over E1=US 2014/0271233, classified as X in the ESR.  

The case is interesting in view of the fact that the MR as well as AR 1-5, 6a, 8-10, 23 were not admitted under Art 13(2) RPBA.

The proprietor’s point of view

The proprietor justified the submission of the MR as well as AR 1-5, 6a, 8-10, 23  with the argument that they only contain claims that were already filed with the submission in response to the statement of grounds of appeal. In its view, the requests include facts already in the proceedings that were “reorganised” in response to the preliminary opinion of the board found in the communication under Art 15(1) RPBA.

The proprietor further argued that that the amendments in these requests “prima facieovercome the objections to the allowability of the amendments, or that the late filed requests serve procedural economy.

In the following, the MR and all AR filed after the summons are considered late filed and designated as such.

The board’s decision

The board understood the proprietor’s argumentation to mean that the filing of the MR and, in particular, AR 1-5, 8-10 and 23 does not constitute an amendment to the proprietor’s submissions within the meaning of Art 13(2) RPBA.

The board did not agree with the proprietor.

Although claim 1 of the late filed MR and AR 1-5 is identical to the single independent device claim of AR 6 as filed in reply to the appeal, claim 1 of late filed AR 8-10 and 23 also contains a further feature.

However, AR 6 filed in reply to the appeal contained only a single independent device claim, whereas now the late filed MR and AR 1-3 and 23 contain three independent device claims, and late filed AR 4 and 5 each contain two independent device claims. Late filed AR 8-10 in turn contain only one independent device claim.

For the board, this undisputedly shows an amendment compared to the version of the requests filed in reply to the appeal.

Unlike the deletion of (independent or dependent) claims or alternatives in claims in a single request, which might not be considered an amendment, in the present case the independent claims from many previous requests are extensively rearranged to create several new requests, see the table on page 5 of the patent proprietor’s letter filed after the summons.

It may be that the individual independent claims were already contained in other contexts in previous requests. However, it is readily apparent that these multiple amendments do not lead to a simplification of the discussion of the points in dispute and thus to a settlement of the proceedings, but rather significantly change the framework and sequence of the discussion.

Even if the question of an amendment to the submission is not considered in a formalistic manner, but rather in terms of content, the scope of protection changes in a way that shows a certain complexity.

For the board, these amendments do not constitute unambiguous fall-back positions which were already predetermined when the patent was granted in such a way that only further dependent claims would have been included in the independent claim. Rather, they are “rearrangements” and “adaptations” which change the subject-matter of the proceedings as determined by the patent claims, without having been the subject-matter of the proceedings in this way before. They are therefore to be regarded as an amendment of the proprietor’s submissions.

Under Art 13(2) RPBA amendments are only taken into account if there are exceptional circumstances, justified with cogent reasons.

The proprietor has not put forward valid reasons for the existence of exceptional circumstances for any of these requests. The board is also unable to recognise any surprising twist in the case.

In its assessment that claim 1 of the MR (maintained version according to auxiliary request 1) and AR 1-5, 8-10 and 23 filed in reply to the appeal, the board found that it contains not allowable amendments.

The board followed an objection of the opponent which was already raised in the statement of grounds of appeal, i.e. more than ten months before the summons to OP before the board was notified.

Whatever the reason for the proprietor’s failure to respond to the opponent’s objection – e.g. by timely filing AR with an amended claim 1 in response to this objection with its reply to the grounds of appeal or before the summons to OP – there would have been sufficient time to do so.

The fact that the board agreed with an opponent’s argument is neither surprising nor unforeseeable in this respect, but is in the nature of a legal determination process entrusted to a deciding instance.

Whether corresponding claims were already filed during the opposition proceedings or in reply to the grounds of appeal, the amendments in these requests may “prima facieovercome the objection to the allowability of the amendments, or that the late filed requests serve procedural economy, are all criteria which have no relevance to the present case, as they are not mentioned in Art 13(2) and therefore do not need to be examined.

AR 6a was submitted during the OP before the board following its negative finding on the inventive step of AR 6. The proprietor’s arguments for justifying the very late filing of AR6a were dismissed by the board. In its assessment that claim 1 of AR 6 was not based on IS, the board again followed an objection of the opponent which had already been raised in the statement of grounds of appeal.


The present decision illustrates once more that any submissions filed after the summons will be scrutinised very carefully by the boards. After three years of RPBA20/21, the message should have been received loud and clear.

Why are some representatives still trying to bring in amendments at such a late stage? It might be possible under some national court systems, but not at the EPO.

Even under the RPBA07, case law was already very clear: an annex to the summons or a communication of a board is not to be considered as an invitation for filing further submissions, especially requests.

Going from one independent claim in one category as granted to two or more independent claims in opposition/appeal is only allowable when the granted broad independent claim is not patentable and a lack of unity ensues. This is rather rare.

Claiming that a plurality of independent claims of the same category is a proper reply to a statement of grounds of appeal and improves procedural economy is a bad joke.

The fact that the board agrees with an opponent’s argument is neither surprising nor unforeseeable for the proprietor. It is part of the game!

Last but not least, even if a request might be admissible under Art 13(2) RPBA, Art 13(1) can still render this request not admissible.

Boards can be criticised with some of their procedural decisions, but in the present case, the procedural decision of the board is the right reply to the way the proprietor conducted its reply to the appeal.

Filing such a large number of requests reminds of an ancient decision in which the board came to the conclusion that the proprietor was playing a not acceptable game of pick and mix features.

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