CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 974/21 – In case of remittal are previous objections maintained?

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The patent relates to an “Enhanced video metrology tool”.

Brief outline of the procedure

In T 2538/18, following a first appeal by the opponent, the board decided that the OD had committed a SPV. The case was remitted to the latter for further prosecution.

In a new decision, the OD decided maintenance according to a new MR filed in opposition. The opponent also appealed the second decision.

The board confirmed the maintenance as decided by the OD.

The case is interesting in view of the question whether previous objections under Art 123(2) were still part of the appeal procedure.  

The opponent’s point of view

With the statement setting out the grounds of appeal the opponent contested the OD’s assertion that he had not pursued its original objections of added matter and submitted that the objections first raised under Art 100(c) in respect of the patent as granted and then under Art 123(2) in respect of the previous AR1 (now MR) during the opposition proceedings leading to the previous decision had at no time been withdrawn and had been maintained in the statement of grounds of appeal submitted in the appeal against the first decision.

Therefore, the objections were not mentioned in the decision now under appeal, but they were still the subject of the present proceedings because the first appeal was still not decided upon in respect of the substantive issues and the mentioned objections had never been withdrawn.

The proprietor’s point of view

The proprietor submitted that the mentioned objections of added subject-matter were raised for the first time with respect to the amended claims in the statement of grounds of the first appeal and that this matter, as stated by the OD in the second OP, was already decided upon by the OD during the first first-instance OP.

Since there was no appeal in respect of the refusal of the then MR (patent as granted) and no objection of added subject-matter was raised during the first OP with respect to the then AR1 and now MR, this matter was precluded from forming part of the appellant’s case in the present appeal.

In any case, objectionson added matter had been raised after the remittal of the case to the OD and in particular during the second first-instance OP.

The board’s decision

The board noted that, inter alia, in the OD’s first decision, the latter

  • held that, while some features did not represent added matter, one feature infringed Art 123(2).
  • stated that the opponent had no objection under Art 123(2) in respect of AR1 and concluded that this request met the requirements of Art 123(2)

The opponent reiterated his objections under Art 123(2) when appealing the first decision. This decision was later set aside in view of a SPV.

The question arises in this context whether these objections are to be considered new objections raised for the first time in respect of the then AR1 with the statement of grounds of appeal of the first appeal or whether, on the contrary, these objections previously raised in respect of the patent as granted had been maintained in respect of the then AR1.

In the board’s view the objections of added subject-matter initially raised under Art 100(c) in respect of certain features of claim 1 as granted were, in its specific context, implicitly maintained as objections under Art 123(2) in respect of the corresponding features of amended claim 1 and, consequently, these objections constituted part of the appellant’s case in the first appeal under Art 12(1) RPBA07.

The first decision of the OD was set aside, with the consequence that it was no longer legally effective. In addition, neither the procedural status nor the substance of the appellant’s objections under Art 123(2) were addressed in T 2538/18, so that there was no issue decided by the board and relating to these objections that would have triggered any binding effect of the decision in the subsequent proceedings.

In addition, the board ordered the remittal of the case for further prosecution, and the further proceedings after the remittal were therefore to be regarded as a continuation of the original opposition proceedings, See, for instance, T 742/04, Reasons 3 and 5.2.

In the present case, the OD, instead of addressing the mentioned objections under Art 123(2) and, in particular, addressing any possible doubt on the procedural status of the objections, or at least inviting the parties to clarify whether their submissions made during the preceding appeal proceedings were maintained, only addressed in the communication annexed to the summons and also during the OP the issue of IS, and omitted consideration, during the subsequent first-instance proceedings and also in the decision presently under appeal, of the objections raised by the opponent under Art 123(2).

The board further noted that there is no record in the file that the opponent had withdrawn hus objections under Art 123(2) in the subsequent first-instance proceedings.

The mere fact that the opponent stated at the end of the second of the first-instance OP that ity had no “further remarks or comments” cannot be interpreted as an implicit withdrawal of objections previously raised in the statement of grounds of appeal of the first appeal and not addressed during the second OP.

The board also noted that the opponent could – and should – have drawn the attention of the OD to the pending objections under Art 123(2), even if he had been misled by alleged statements of the OD.

Therefore the objections under Art 123(2) under consideration constitute in the specific circumstances of the case part of the appellant’s appeal case to be taken into account in the present appeal proceedings, cf. Art 12(1) RPBA07 and 12(1) RPBA20.


When a decision is set aside and the file is remitted to the OD, the further discussion cannot be reopened on objections decided directly and unambiguously by the board, cf. Art 111(2).  

In principle, when a case is remitted after a SPV, all issues not discussed by the board are still open and the parties are put back in the situation of the beginning of the opposition procedure.

All previous facts, evidence, objections and requests not touched upon in the decision of remittal are thus still part of the opposition procedure.

To paraphrase another board we are then in presence of carry-over objections. Unless the objections are actually abandoned, they cannot be swept under the carpet by the OD.

Even if the OD might forget this point, the opponent could have drawn the attention of the OD that it was not acting correctly. The opponent’s silence on the objections on Art 123(2) could let suppose that he was hoping for a new SPV.

Even in the absence of a decision of the OD on added matter, the board discussed for the first time those objections in appeal. This allowed to obtain legal certainty and is to be put to the credit of the board.

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