An inappropriate use of discretion leads to ping-pong (T0688/16)

The revised Rules of Procedure of the Boards of Appeal (RPBA) will come into force on 1 January. The EPO asserts that the purpose of the revised rules is to increase the efficiency of the Boards of Appeal so as to reduce the appeal case back-log. Towards this purpose, the revised RPBA are significantly stricter on the admissibility of new amendments, facts and evidence during appeal. However, as discussed in a recent CIPA seminar, many EPO practitioners expect that this will lead to an increase in arguments over the whether appeals submissions are new or not ("arguments about arguments") (IPKat post here). A recent Board of Appeal decision (T0688/16) foreshadows the kind of arguments that we might soon expect to see far more often.

T0688/16 related to an appeal of a decision from the Opposition Division to revoke a patent belonging to the German dishwasher manufacturer, Meiko. The patent (EP2053959) related to a method of assessing dishwasher performance. The patent was opposed by rival German dishwasher manufacturer, Winterhalter. Despite a positive preliminary opinion form the Opposition Division, Meiko's main request was rejected at opposition oral proceedings for added matter. The first auxiliary request was rejected for lacking novelty in view of a previous Meiko patent application, "D10".

Meiko's second and third auxiliary requests filed at opposition oral proceedings were considered late filed by the Opposition Division, and were not admitted to proceedings. According to the case law of the Boards of Appeal, late filed requests should only be submitted to proceedings if they prima facie address the objections lodged against the patent (T 0320/15). The Opposition Division did not consider the requests as prima facie overcoming the novelty objection based on D10.

Checking the dishwasher
Following the opposition decision, Meiko filed an appeal based on the third auxiliary request (AR3) (i.e. one of the requests that were not admitted to proceedings during opposition). The opponent argued that Meiko's appeal was inadmissible and unsubstantiated. In particular, the opponent argued that the statement of the grounds of appeal was not directed to the issue of why the Opposition Division should have used their discretion to admit AR3 to proceedings. The statement of grounds merely provided arguments for the novelty of AR3 in view of D10.

Arguments about arguments

The Board of Appeal (3.2.04) did not agree with the opponent's arguments, and argued that the opposition had applied the incorrect law in not admitting AR3 to opposition proceedings. The Opposition Division had cited Article 114 EPC as providing the legal basis for their discretion in not admitting AR3. However, the Board of Appeal pointed out that Article 114 EPC does not relate to the submission of amendments and requests, such as AR3. Article 114 EPC, in fact, only relates to the admissibility of late filed evidence and facts:

Article 114 EPC
(2) The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned. 

The Board of Appeal indicated that the appropriate legal provision for the admissibility of requests and amendments is Rule 116 EPC. In particular, Rule 116(2) EPC states that any amendments or requests should be submitted prior to oral proceedings. However, and this is where things get interesting, Rule 116 EPC includes an important proviso. According to Rule 116 EPC the deadline for submitting amendments prior to oral proceedings only applies when there has been a negative communication from the EPO prior to the date for oral proceedings. Therefore, as the Board of Appeal summarized, "the discretion [to admit requests filed at oral proceedings] is conditioned by a communication stating that there are grounds for refusing to uphold the patent" (r. 2.1).

In the case in question, there had been no negative preliminary opinion of the Opposition Division. On the contrary, the Opposition Division had issued a preliminary opinion that the patent was valid. As pointed out by the Board of Appeal, without a negative preliminary opinion, Rule 116 EPC did not apply. Furthermore, because the Opposition Division changed their minds at oral proceedings, the patentee had the right to respond with further amendments. As such, AR3 should not have been considered late filed and should have been admitted to proceedings.

Consequently, the Board of Appeal concluded, the opponent's arguments that Meiko's appeal had not been properly substantiated were not relevant. The Board of Appeal reasoned that Meiko did not need to argue why the Opposition Division should have used their discretion to admit AR3 (e.g. because it prima facie addressed the objections). The Opposition Division did not have the discretion to not admit AR3. Arguments for why the Opposition Division should have exercised discretion in Meiko's favor were therefore not needed (r. 2.3). The Board of Appeal therefore accepted the appeal as admissible.


As part of the effort to improve EPO efficiency, another aim of the revised RPBA is to reduce the occurrence of so-called ping-pong between the different divisions. Particularly, an aim of the revised RPBA is to ensure that remittal from the Boards of Appeal to the departments of first instance is very much the exception. According to the revised RPBA, the Boards of Appeal shall not remit a case to the department of first instance, unless there are "special reasons" for doing so (Article 11). These "special reason" may be fundamental deficiencies in the proceedings before the department of first instance. However, as highlighted at the recent CIPA seminar on the revised RPBA, some clarity is needed as to the meaning of "fundamental deficiencies" (IPKat post here).

In the dishwasher appeal case, the Board of Appeal confirmed that, at the moment, "remital to the opposition division under Article 111 (1) EPC is to be considered in cases where the opposition division has based its decision on a patentability requirement (novelty), but has not ruled on further objections raised (here admissibility of changes, clarity, feasibility and inventive step)". Following their decision to admit the appeal, the Board of Appeal found that the claims submitted on appeal were novel in view of D10. However, the Opposition Division had, of course, not admitting the claims in question to proceedings. The Opposition Division therefore had not ruled on the objections raised by the opponent that these claims added matter, introduced a clarity issue and lacked inventive step. Following a request from the parties, the Board of Appeal therefore referred the case back to the Opposition Division.

Would the Board of Appeal have decided differently if the revised RPBA were already in force? Were there "fundamental deficiencies" in the first instance proceedings in this case? It would not appear to be in line with the purpose of the Boards of Appeal as a review body to consider issues that have not been considered by a department of first instance. We can but wait and see how the Boards of Appeal will proceed in similar cases after the introduction of the revised RPBA. Watch this space!
An inappropriate use of discretion leads to ping-pong (T0688/16) An inappropriate use of discretion leads to ping-pong (T0688/16) Reviewed by Rose Hughes on Sunday, September 15, 2019 Rating: 5


  1. The present decision is correct and well understandable. Please allow a comment: at the EPO there are no Opposition Boards but Opposition Divisions.

    There is a long line of case law according to which requests filed by the proprietor within the time limit under R 116(1) cannot be considered as late filed as long as an explanation is provided as to the merits and/or purpose of these requests.

    Waiting Oral Proceedings to give explanations about such requests, even if they are submitted within the prescribed time limit, means that they are in principle not admissible. The opposing party should not be taken by surprise.

    If a late document is declared admissible at the beginning or during the oral proceedings, then the proprietor has the right to defend himself and file requests once the document is actually admitted into the procedure.

    The same applies if, due to the discussions during OP, the opposition division goes away from the provisional opinion given in the annex to the summons. Here again, the proprietor must be given a chance to defend himself. This rule was violated in this case. Hence the remittal after the BA had decided on novelty.

    It is always better to file auxiliary requests before an OD, as there is no guarantee that the OD's decision will be confirmed by the BA. In the case at stake the proprietor had however no reason to file auxiliary requests as the provisional opinion was favourable to him.

    As far as Art 11 NRPCR is concerned, it is clear that this rule has been forced upon the boards by the judicial members of the Board of Appeal Committee.

    Those having been at the conference on December 5th 2018, will certainly remember the reason given by the member of the German Federal Court (BGH) sitting on the BOAC – we do not have technical members, you have, and hence there is no reason for the BA to remit. Mr Birss nodded his approval. It is clear that the members of the BA, other than those sitting on the drafting committee, are not happy with this rule, and it will be interesting to see how it will be applied.

    Remitals cannot be limited to substantial procedural violations. There are other cases when a remittal is unavoidable. If a division of first instance considers that a claim offends Art 123(2), it is not possible to compare it with any prior art, as this claim has no right to exist.

    During the same conference voices have been heard claiming that a division should decide on all points, so that an appeal can be decided on all the possible points. If in case of added matter a division would decide, what would be the effective date of the claim? Should the division apply the case law of the BGH, and ignore the added features when deciding on novelty and inventive step? All solutions of this kind would simply negate the decisions of the EBA with respect to added matter.

    In case of lack of sufficiency of the disclosure the same reasoning applies mutatis mutandis. Here it would be welcome that the EBA decides that in the absence of a measurable parameter it is a question of clarity or a question of sufficiency. Depending which BA is in charge the proprietor and opponents are like in a lottery. That is not good.

    I cannot speak in the name of the BA, but I do not feel wrong when I say that the new Art 11 would not have changed the position of the BA. It should not be forgotten that the BA have to decide on decisions, not on obiter dicta or opinions brought in the decisions by divisions of first instance.

    That in UK such a pot-pourri of decisions/obiter dicta/opinions is acceptable, does not mean it should become the rule on the continent. This is the more so, since ED and OD are taking an administrative decision, which can be checked by a judicial authority, i.e. the BA.


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