III. GEMEINSAME VORSCHRIFTEN FÜR DIE VERFAHREN VOR DEM EPA

The petition in R 16/23 concerned decision J 6/22 with which the Legal Board of Appeal (the "Legal Board") rejected the petitioner's request for re-establishment of rights and rejected the appeal as inadmissible. The petitioner argued that the Legal Board had failed, contrary to Art. 116 EPC, to arrange for the holding of oral proceedings requested by the petitioner, which represented a fundamental procedural defect within the meaning of Art. 112a(2)(d) EPC and R. 104(a) EPC. Furthermore, the decision was based on grounds or evidence on which the petitioner had not had any opportunity to comment, representing a fundamental violation of Art. 113(1) EPC within the meaning of Art. 112a(2)(c) EPC. The petitioner submitted, inter alia, that the conclusions in the decision under review that procedural economy had been a justification for denying the petitioner's right to an oral hearing were contrary to the established case law of the Boards of Appeal.

The Enlarged Board of Appeal (the "EBA") as composed under R. 109(2)(b) EPC held that, according to the wording of Art. 116 EPC, the aspect of expediency referred only to the first alternative, where oral proceedings take place at the EPO's own initiative. Thus, the department concerned with a request for oral proceedings made by a party to the proceedings had no discretion over whether oral proceedings take place.

The EBA also recalled that the right to request oral proceedings included the right for the party requesting them merely to present orally what it had already submitted in writing (see R 3/10). It held that Art. 116(1) EPC, taking into account the purpose of this provision, was thus intended to ensure that a party was entitled, upon request, to make oral submissions prior to a decision which adversely affected that party.

The EBA agreed with the decision under review in that the case law of the Boards of Appeal had established that, in specific situations which may be considered as covered by the wording of Art. 116(1) EPC, a decision taken without prior oral proceedings despite a request for oral proceeding having been made could be considered as not being in conflict with that provision. It found, however, that the situation underlying the decision under review did not fall under any of the categories established in the case law.

Furthermore, the EBA saw no indication that a dynamic interpretation could lead to the conclusion that Art. 116(1) EPC left room for weighing up, on the one hand, the petitioner's right to present the case orally before the adverse decision had been taken and, on the other hand, aspects relating to the expeditious conduct of the appeal proceedings, legal certainty or the prospects of success of the petitioner's appeal, or to a conclusion that the Legal Board had not been obliged to arrange for the holding of oral proceedings requested by the petitioner. The EBA was not persuaded that the considerations relied upon in the decision under review could lead to the result that the requested oral proceedings had not been mandatory under Art. 116(1) EPC, nor that the petitioner's right to oral proceedings could be balanced against considerations relating to the requirement of timely legal certainty or procedural economy.

The EBA concluded that the Legal Board's failure to arrange for the holding of the oral proceedings had been contrary to Art. 116 EPC and, in view of this, a fundamental procedural defect under Art. 112a(2)(d) EPC had occurred.

According to the EBA, in the case underlying the petition for review, the issues in relation to which oral proceedings had been requested and the final decision had been linked. Hence, the procedural defect of not arranging for the holding of oral proceedings, contrary to Art. 116 EPC, had been a fundamental one within the meaning of Art. 112a(2)(d) EPC in conjunction with R. 104(a) EPC. To arrive at this conclusion, the EBA, in particular, did not have to additionally assess whether the outcome of the decision under review could or would have been different if the procedural defect of not arranging for the holding of oral proceedings had not occurred. According to the EBA, this approach was in line with the case law of the Boards of Appeal, including the EBA (R 3/10).

As a fundamental procedural defect under Art. 112a(2)(d) EPC in conjunction with R. 104(a) EPC had been established, the petition for review was considered allowable. According to the EBA the further ground for the petition (fundamental violation of Art. 113(1) EPC) did not need to be addressed. The decision under review was set aside and the proceedings before the board re-opened.

In T 246/23 of 11 March 2026 the board rejected the objection under Art. 24(3) EPC and refused the opponent's request for cost apportionment.

During the oral proceedings in T 246/23 of 7 August 2025, when the debate on auxiliary request 5 was opened, the board in its original composition (the "original board") had informed the parties of its preliminary view that the request contravened the principle of no reformatio in peius. The patent proprietor (respondent) had then raised an objection of suspected partiality against all board members, arguing that an objection based on this principle could only be raised by another party, not by the board. It submitted that, since the board had raised the objection ex officio, it was "on the side" of the opponent (appellant) and thus suspected to be partial. The original board had found the objection admissible and the composition of the board was changed for the purposes of a decision on the objection under Art. 24(3) EPC (the board in its new composition in the following referred to as "the board").

The board noted that, on the substance of the objection, the respondent relied on two core arguments, neither of which was convincing: (1) that the specific nature of the prohibition of reformatio in peius prevented the board from raising it ex officio, and (2) that established case law supported this view.

On (1), the board stated that the prohibition of reformatio in peius is not so exceptional as to completely escape the board's powers under Art. 114 EPC. It noted that any objection raised by the board ex officio in an inter-partes procedure can be perceived as being in a certain contradiction with the board's obligation to remain neutral towards the parties. However, if the parties were free to raise the objection of suspicion of partiality in all cases where a board exercises its powers under Art. 114 EPC, such powers would be effectively eliminated. The board also rejected the argument that raising the prohibition ex officio contradicts the principle of party disposition. This principle concerned the substantive outcome of proceedings, i.e. the scope of the legal effects sought, and did not extend to the legal arguments raised by either the parties or the court for achieving the requested legal effects. In the present case, the opponent requested the revocation of the patent, and the original board's finding that auxiliary request 5 was not allowable, for whatever reason, was clearly within the scope of the appellant's appeal request for revocation.

On (2), the board pointed out that there was no settled case law forbidding the board from raising the objection ex officio. It added that this could not even be derived from cited decision T 1544/07. In its view, T 1544/07 only found that the deciding board had no obligation to raise the objection under the special circumstances of that case, where the opponent itself had explicitly waived the right to raise it. The decision did not state that a board is prevented from raising the objection ex officio as a question of principle. Rather, it appeared to suggest that a board may, but need not, raise it where the affected party renounces this defence. A far stricter position was taken in T 882/17, cited by the opponent, where the deciding board disagreed with T 1544/07 and unambiguously stated that the board not just may, but must take the prohibition into account, and also ex officio. This decision was followed by other decisions (T 1773/22, T 1472/21).

The board explained that, to decide the issue before it (i.e. the objection of suspected partiality) it was sufficient to establish that, contrary to the proprietor's argument, case law was far from settled. The mere existence of another line of case law, T 882/17, recognising the board's entitlement to raise the prohibition objection, was sufficient to establish that the original board could not be considered partial solely for raising the objection. According to the board, a board of appeal is always entitled and in fact obliged to examine the boundaries of its own powers to raise an ex officio objection. If necessary, it is also entitled to question findings of previous decisions on the same issue. The original board was under no obligation to seek the proprietor's permission or to maintain the objection only contingent on the opponent's intention to pursue it.

The board concluded that the objection under Art. 24(3) EPC was unsubstantiated. It also refused the opponent's request for cost apportionment, noting that it could not qualify the procedural conduct of the proprietor as an abuse of procedure.

In T 549/24, the board held that intentional deception by an assistant designed to bypass existing cross-check controls constitutes exceptional circumstances justifying re-establishment under Art. 122 EPC.

In the case under consideration, the application had been deemed withdrawn pursuant to R. 71(7) EPC, and no remedy had been pursued by the applicant within the time limit set by the communication under R. 112(1) EPC. The examining division had found the request for re-establishment of rights in respect of the time limit for requesting further processing, filed by the then newly appointed representative, to be admissible but not allowable. The examining division could not conclude that the applicant had acted with all due care required by the circumstances, as it found no evidence that the applicant had a satisfactory monitoring system for the activities of Mr R., the assistant in charge of the patent portfolio, nor an effective substitution system for Mr C., the company’s CEO and the person bearing ultimate responsibility, who was suffering from deteriorating health.

The board disagreed. It found that Mr C. was not entirely prevented from carrying out his professional duties. While his condition did limit his ability to perform certain tasks, it did not render him completely incapable. Mr R. had been working as Mr C.’s personal assistant when he was entrusted with responsibility for the applicant’s patents. Even during the most severe phase of his illness, Mr C. regularly contacted Mr R. by telephone and made occasional short visits to the office to inquire about the status of the applicant’s patents. The board considered that, in the circumstances of the present case, a complete substitution of Mr C. was not necessary to satisfy the required standard of due care. On the contrary, the board regarded this a reasonable arrangement in the case of illness of the responsible person, as it served to compensate for the limitations resulting from Mr C.’s medical condition and allowed him to remain in a position to continue performing his functions, thus complying with the applicable standard of due care.

With regard to the supervision of Mr R., the board considered, in view of the new evidence submitted on appeal, that the applicant did maintain a comprehensive monitoring system, as required by the case law in view of the size of the company, including an online spreadsheet editor for tracking the patent portfolio. This spreadsheet was regularly updated with action points and time-limit reminders. In addition, weekly face-to-face meetings were held with the responsible person whenever Mr C. was present, and, during the most severe phase of Mr C.’s illness, these took the form of regular phone calls and short office visits. The board was therefore satisfied that Mr C. had exercised all due care under the circumstances, including selecting, instructing and supervising his assistant. The board noted that Mr R. had deliberately concealed information, going so far as to create a private email account to bypass the company’s servers, and had either failed to update or had falsely marked IP records relating to renewal time limits. As a result, Mr C. had been kept unaware of certain time limits, despite having exercised all due care, since Mr R’s intentional deception was designed to also bypass the cross-check controls put in place by Mr C. Contrary to the examining division’s approach, which did not assess whether Mr R.’s behaviour justified re-establishment of rights, the board held that the disruption caused by Mr R.’s behaviour constituted exceptional circumstances justifying re-establishment under Art. 122 EPC.

The board observed that the circumstances of the present case differed meaningfully from those in T 516/09. By contrast, Mr C., acting in his capacity as the applicant’s CEO (and not as a professional representative), had implemented a system for tracking time limits using an online spreadsheet tool and actively monitored its operation. This system included cross-checks and regular updates with Mr R. Unlike the representative in T 516/09, Mr C.’s core responsibilities did not centre on patent administration, and he could not reasonably have been expected to detect deliberate deceptions designed to circumvent internal controls. The board therefore concluded that the present case did not present the supervisory deficiencies identified in T 516/09.

Accordingly, the decision under appeal was set aside and the appellant’s rights were re-established.

Die mündliche Verhandlung vor der Kammer in T 77/23 fand in Abwesenheit der Beschwerdegegnerin (Patentinhaberin) statt. Vor der mündlichen Verhandlung hatte sie schriftlich hilfsweise beantragt, die Angelegenheit zur Behandlung der Hilfsanträge 2, 4 und 6 bis 8 an die Einspruchsabteilung zurückzuverweisen. Weiter hilfsweise hatte sie beantragt, das Patent in geänderter Fassung auf der Grundlage der Ansprüche eines der Hilfsanträge 1 bis 8 aufrechtzuerhalten.

Die Kammer beschloss, die Angelegenheit aus verfahrensökonomischen Gründen nicht an die erste Instanz zurückzuverweisen. Sie hatte zwar in ihrer Mitteilung gemäß Art. 15 (1) VOBK zur Zurückverweisung der Angelegenheit auf Basis der Hilfsanträge 2, 4 und 6 bis 8 an die erste Instanz nicht explizit Stellung genommen. Dennoch sah sie trotz Abwesenheit der Beschwerdegegnerin in der mündlichen Verhandlung das rechtliche Gehör der Beschwerdegegnerin aus den im Folgenden dargelegten Gründen hierzu für gewahrt an.

Die Kammer hatte in ihrer Mitteilung zu allen Hilfsanträgen Stellung genommen. Der Kammer zufolge wäre es unangemessen, zu den Hilfsanträgen Stellung zu nehmen, und dann die Angelegenheit zurückzuverweisen, da die Kammer mit ihrer vorläufigen Meinung die Einspruchsabteilung beeinflussen würde. Somit musste die Beschwerdegegnerin davon ausgehen, dass die Kammer ihrem Antrag auf Zurückverweisung an die erste Instanz nicht nachkommen würde..

Darüber hinaus hatte die Beschwerdegegnerin durch das Fernbleiben von der mündlichen Verhandlung von sich aus auf ihr rechtliches Gehör in dieser Hinsicht verzichtet. Der Kammer zufolge sollte somit die Beschwerdegegnerin von der getroffenen Entscheidung (keine Zurückverweisung) weder überrascht sein, noch ist ihr rechtliches Gehör diesbezüglich verletzt.

Zum weiteren hilfsweise gestellten Antrag der Beschwerdegegnerin, das Patent in geänderter Fassung aufrechtzuerhalten, stellte die Kammer fest, dass jeweils Anspruch 1 der Hilfsanträge 1-8 nicht neu gegenüber der Lehre des Dokuments E1 ist. Der Kammer war bewusst, dass der Einwand mangelnder Neuheit des Anspruchs 1 des Hilfsantrags 8 gegenüber dem Dokument E1 erstmalig in der mündlichen Verhandlung vor der Kammer erhoben wurde. Die Kammer konnte jedoch aus den im Folgenden erläuterten Gründen keine Verletzung des rechtlichen Gehörs der in der mündlichen Verhandlung abwesenden Beschwerdegegnerin erkennen.

Der schriftliche Vortrag beider Parteien zum Hilfsantrag 8 war im schriftlichen Beschwerdeverfahren kurz gehalten worden. Folglich musste die Beschwerdegegnerin damit rechnen, dass eine bis dato nicht erfolgte ausführliche Diskussion zur Neuheit und erfinderischen Tätigkeit erstmalig in der mündlichen Verhandlung geführt werden würde. Darüber hinaus hatte die Kammer in der Mitteilung gemäß Art. 15 (1) VOBK vorgetragen, dass sie die höherrangigen Hilfsanträge 1 bis 7 wegen mangelnder Neuheit gegenüber dem Dokument E1 für nicht gewährbar erachtet. Da Anspruch 1 des Hilfsantrags 8 auf Anspruch 1 des Hilfsantrags 6 basiert, musste die Beschwerdegegnerin der Kammer zufolge damit rechnen, dass, falls Hilfsantrag 8 in der mündlichen Verhandlung behandelt wird, bei der Neuheitsprüfung auch der Unterschied zum Dokument E1 herausgearbeitet werden würde. Somit kann es für die Beschwerdegegnerin nicht überraschend sein, dass der entsprechende Angriff erstmalig in der mündlichen Verhandlung vor der Kammer diskutiert wurde. Nach Ansicht der Kammer ergab sich dies aus einer logischen Fortführung der Prüfung geänderter Ansprüche auf ihre Gewährbarkeit.

Die Kammer betonte, dass eine erstmalige Beurteilung in der mündlichen Verhandlung der Neuheit oder erfinderischen Tätigkeit des beanspruchten Gegenstands gegenüber den im Verfahren diskutierten Druckschriften, welche allerdings nur zu höherrangigen Anträgen diskutiert worden waren, somit eine der mündlichen Verhandlung fernbleibende Partei nicht überraschen kann.

Darüber hinaus kam die Kammer zum Schluss, dass es nicht möglich sein sollte, dass die Beschwerdegegnerin durch ihre Abwesenheit den Umfang möglicher Einwände wesentlich vorgibt und durch ihr Fernbleiben mögliche Einwände exklusiv auf die des schriftlichen Verfahrens beschränkt. Wäre dies zutreffend, könnte die abwesende Partei wesentlich den Verlauf der mündlichen Verhandlung mitbestimmen, sodass der eigentliche Sinn einer mündlichen Verhandlung durch die Abwesenheit einer Partei ad absurdum geführt werden könnte.

Dans l'affaire T 1857/23 la procédure de recours ne concernait que la requête de l'opposante visant à faire supporter à la titulaire les frais engagés dans les procédures d'opposition et de recours.

Dans la (première) procédure de recours (T 8/16), la titulaire a expliqué en quoi une nouvelle requête subsidiaire différait de la requête subsidiaire non admise par la division d'opposition, sans toutefois produire cette dernière. Dans une notification, la chambre a indiqué qu'elle ne disposait pas du libellé de la requête subsidiaire non admise, car celle-ci ne figurait pas dans le dossier électronique, et elle a invité la titulaire à la déposer. Celle-ci a répondu qu'elle ne parvenait pas à retrouver ni d'exemplaire signé ni une copie de la "requête subsidiaire disparue". La chambre a annulé la décision contestée, renvoyé l'affaire à la division d'opposition, afin de poursuivre la procédure, et ordonné le remboursement de la taxe de recours. L'opposante n'avait pas présenté de requête visant à obtenir une répartition différente des frais.

Dans la (deuxième) procédure d'opposition réouverte, l'opposante a demandé que les frais de cette procédure d'opposition soient supportés par la titulaire. La division d'opposition a révoqué le brevet et rejeté la requête en répartition différente des frais. Seule la titulaire a formé un recours contre la (deuxième) décision de la division d'opposition. Dans ce cadre, l'opposante a demandé une répartition différente des frais liés à la procédure d'opposition et à la procédure du présent recours..

La chambre a conclu que la requête de l'opposante visant à une répartition différente des frais de la procédure d'opposition devait être rejetée comme irrecevable. Le fait de déposer une requête en répartition différente des frais comme seul objet d'un recours (qui en est donc irrecevable) ou de présenter cette requête en simple qualité de partie à la procédure de recours ne peut faire aucune différence. Si l'auteur d'une requête en répartition des frais ayant formé un recours ne peut obtenir gain de cause en vertu de la règle 97(1) CBE, cela s'applique a fortiori à l'auteur d'une telle requête qui n'a pas formé de recours..

Concernant les frais de la procédure de recours, la chambre a observé qu'en ce qui concerne la décision sur la répartition des frais, la première procédure d'opposition, la première procédure de recours, la deuxième procédure d'opposition et la deuxième procédure de recours devaient nécessairement être considérées comme une seule procédure. Le comportement fautif d'une partie dans l'une des phases de la procédure pouvait avoir des conséquences négatives sur les frais des phases suivantes.

La chambre a noté que dans la jurisprudence il y a lieu pour des raisons d'équité d'ordonner une répartition différente des frais si une partie n'a pas agi avec la vigilance voulue, c'est-à-dire lorsque les frais occasionnés sont imputables à une faute commise par négligence ou dans l'intention de nuire. En l'espèce, lors de la première procédure de recours, la titulaire a fondé sa requête en renvoi de l'affaire à la division d'opposition sur un jeu de revendications qu'elle n'avait pas présenté dans son mémoire exposant les motifs du recours. Comme déjà constaté dans la décision T 8/16, en maintenant une requête qui se fondait sur un jeu de revendications qu'elle n'était pas en mesure de produire, la titulaire n'a pas agi avec la vigilance voulue. La perte du jeu de revendications, quelles que soient les circonstances survenues dans la sphère de la titulaire qui l'ont provoquée, constitue une négligence de la part de la titulaire : elle touche à l'obligation essentielle de garantir la complétude des éléments sur lesquels une partie se fonde. Cette obligation découle du principe de diligence procédurale et ne peut être transférée à la division d'opposition. Bien que la division d'opposition ait également commis une faute qui a contribué au renvoi de l'affaire, la titulaire a défini l'objet de la procédure par ses requêtes et maintenu une requête que la chambre n'était pas en mesure d'examiner sans renvoi. Cette négligence a été déterminante, car le renvoi n'était, sans elle, pas garanti au terme de la procédure de recours, même en tenant compte de l'erreur de la division. Le comportement de la titulaire a donc entraîné une prolongation substantielle de la procédure ainsi que des frais supplémentaires pour l'opposante. La chambre a dès lors estimé qu'il était justifié d'imposer l'intégralité des frais exposés par l'opposante dans la présente procédure de recours à la titulaire.

La chambre a noté qu'il est possible que l'opposante ait été en possession de la requête perdue. Cependant, il n'appartient pas à une partie de remplir les obligations incombant à la partie adverse ni de contribuer à la réussite éventuelle de ses requêtes.

In case T 1876/23 beantragte die Beschwerdeführerin (Patentinhaberin) unter anderem, das Verfahren an die erste Instanz zurückzuverweisen, sowie die Neubesetzung der Einspruchsabteilung für das weitere Verfahren. Sie begründete dies damit, dass die Einspruchsabteilung befangen gewesen sei und die Kammer deshalb die neue Zusammensetzung anordnen solle.

Unter Verweis auf die Rechtsprechung der Großen Beschwerdekammer erinnerte die Kammer daran, dass keine tatsächliche Befangenheit des Organs des EPA vorliegen muss. Es genügt, wenn eine begründete Besorgnis der Befangenheit besteht (G 1/05). Erfüllen nicht alle Mitglieder einer Abteilung das Erfordernis der Unparteilichkeit, so ist bei der Besetzung der Abteilung ein Verfahrensfehler begangen worden, der die Entscheidung in der Regel nichtig macht. Es fällt eindeutig in die Zuständigkeit der Beschwerdekammern, zu entscheiden, ob diese Anforderung erfüllt worden ist (G 5/91)..

Die Beschwerdeführerin führte zahlreiche Gründe auf, die die Befangenheit der Einspruchsabteilung belegen sollten. Insbesondere wurde die Verzögerung bei der Zustellung der Niederschrift und der Entscheidung gerügt, die zu knappe oder fehlende Begründung der Entscheidung, falsches Ausüben des Ermessens, falsche Entscheidungen, neue Einwände während der mündlichen Verhandlung, unberücksichtigte Tatsachen in den Bescheiden vor der Verhandlung, keine Ausführung eines obiter dictum, Verweigerung der Zulassung neuer Hilfsanträge trotz neuer Argumente und insbesondere die Gesamtheit all dieser Gründe.

Die Kammer konnte einerseits bei keinem Einzelnen der oben aufgeführten Gründe an sich einen schweren Verfahrensfehler feststellen, der als stichhaltiger Beweis für eine Befangenheit der Abteilung ausreichend wäre. Andererseits merkte die Kammer an, dass die Einspruchsabteilung Hilfsanträge während der Verhandlung nicht zugelassen hatte. Wenn aber neue Argumente während der mündlichen Verhandlung vorgebracht werden, muss der Kammer zufolge gemäß Art. 116 EPÜ der betroffenen Partei die Gelegenheit gegeben werden, auf diese Argumente zu reagieren.

Der Kammer zufolge hätte die Einspruchsabteilung der Beschwerdeführerin deshalb die Gelegenheit geben müssen, mindestens einen neuen Hilfsantrag als Reaktion auf die neuen, während der mündlichen Verhandlung vorgebrachten Einwände und Argumente einzureichen, bzw. hätte die neu eingereichten Hilfsanträge zumindest prima facie prüfen müssen. Dies wertete die Kammer als schweren Verfahrensfehler. Die Einspruchsabteilung scheint die Absicht gehabt zu haben, der Patentinhaberin nicht die notwendige Möglichkeit zu geben, die Einwände unter Art. 123(2) EPÜ auszuräumen. Dies erweckte bei der Kammer einen begründeten Zweifel an der Unparteilichkeit der Einspruchsabteilung. Außerdem hätte ein objektiver Betrachter angesichts der hohen Anzahl, Summe und Gesamtheit der genannten Einwände begründete Zweifel an der Unparteilichkeit der Einspruchsabteilung im vergangenen Verfahrensabschnitt und insbesondere für das weitere Verfahren. Die Kammer war daher der Meinung, dass eine begründete Besorgnis der Befangenheit der Einspruchsabteilung vorlag. Wenn eine solche Besorgnis der Befangenheit festgestellt werden kann, betrifft dies der Kammer zufolge auch die Entscheidung über den Hauptantrag. Deshalb war die Kammer der Meinung, dass alleine wegen der Besorgnis der Befangenheit auch schon bei der Entscheidung über den Hauptantrag ein schwerer Verfahrensfehler vorlag. Die Besorgnis der Befangenheit hat sich für einen objektiven Betrachter erst bei der Nichtzulassung weiterer Hilfsanträge trotz neuer Einwände manifestieren können..

Die Kammer hob die angefochtene Entscheidung auf und verwies die Sache an eine neu zusammen zu setzende Einspruchsabteilung zurück. Sie begründete dies damit, dass die Einspruchsabteilung im bisherigen Verfahren zumindest den Anschein der Befangenheit erweckt und durch Verletzung des rechtlichen Gehörs einen Verfahrensfehler begangen hat. Abschließend merkte sie an, dass sie selbst nicht über die Befugnis verfügt, die Ersetzung der Mitglieder anzuordnen und die Zusammensetzung der Einspruchsabteilung zu bestimmen.

In case T 2615/22, the parent application of the contested patent was filed on 10 March 2015, i.e. more than twelve months after the filing dates of the priority applications P1 and P2. Upon a request for re-establishment of rights by the then applicant of the parent application, the Receiving Section decided on 14 January 2016 to restore the priority period.

The opponent-appellant argued that the patent was not entitled to the priority of P1 and P2. It considered that the Receiving Section was not competent to take that decision and that it did not correctly apply the all-due-care criterion in its decision. It contended this decision in the application proceedings should be set aside in the opposition appeal proceedings.

The present board did not see any reason to deviate from T 1482/21 (relating to the patent granted on the parent application) according to which the Receiving Section was competent to take the decision of 14 January 2016, and that this decision was final and that this prevented other departments of the EPO such as an opposition division or a technical board of appeal which decide on questions of priority in other, subsequent proceedings from reviewing and overturning the Receiving Section's decision. In accordance with these conclusions, the present board agreed that the opposition division had to acknowledge the Receiving Section's decision to grant the request for re-establishment of rights in respect of the priority period.

As to whether a positive decision of the Receiving Section on re-establishment of rights was open for review in subsequent opposition/appeal proceedings, the board did not consider convincing the opponent’s arguments. As set out in T 1482/21 if the Receiving Section grants a request for re-establishment of rights in respect of the priority period, the applicant is not adversely affected under Art. 107 EPC. As the applicant is the only party to the proceedings before the Receiving Section, a favourable decision on such a request is not appealable and becomes final immediately..

The nature of opposition proceedings and the case law on res judicata were discussed in detail during the oral proceedings before the board. The board recalled that opposition proceedings are not designed to be a continuation of examination proceedings (G 3/14). This also meant that, legally speaking, opposition proceedings must not be understood as any kind of appeal proceedings in relation to the proceedings before the Receiving Section and the examining division. Accordingly, an opposition division does not have the power to review and set aside a procedural decision taken in these proceedings. Opposition is not a legal remedy in the classical sense and it does not have the effect of transmitting the case to a superior tribunal. Not all possible irregularities in an application can be reviewed in opposition proceedings, not even all substantive ones, but only those which are listed as grounds for opposition in Art. 100 EPC. An examination of the same substantive patentability requirements – which qualify as grounds for opposition – may be undertaken by different departments in different proceedings, and there is indeed no binding effect in that regard. The Receiving Section's decision on re-establishment of rights does not concern the assessment of a substantive requirement which qualifies as a ground for opposition. It concerned a purely procedural matter decided in ex parte proceedings in the then applicant's favour.

The fact that a purely procedural matter may have ramifications on whether a patent exists, does not change its qualification as a procedural matter. This may result in a patent coming into existence which may otherwise not have been granted. Nevertheless, such possible irregularities in the patent grant procedure do not qualify as a ground for opposition and therefore cannot be reviewed in opposition proceedings or subsequent opposition/appeal proceedings.

In T 1262/22, the respondents (patent proprietors) alleged that the appeal was inadmissible because the notice of appeal was filed by a professional representative (K) who was not authorised at the time of filing.

Under Art. 1(1) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations, in the version as applicable at the time the notice of appeal in question was filed, a professional representative was required to file a signed authorisation only in the circumstances set out in Art. 1(2) and (3) of said decision. This was the case if a change of professional representatives had occurred without the EPO being notified that the previous representative's authorisation has ended.

In the case in hand, while representation during the opposition proceedings had been undertaken by professional representative B, the notice of appeal was signed by new professional representative K. Since B had not informed the EPO of the termination of its authorisation, it was still deemed authorised before the EPO, as provided for by R. 152(8) EPC. Hence, the board found there was nothing unusual in the fact that the EPO continued to communicate with B, nor could it be concluded on this basis that K was not authorised, as submitted by the respondents. From the legal framework, pursuant to R. 152(1) EPC and the said Decision of the President of 2007, the new representative K had to file an authorisation granted by the opponent/appellant; it did so of its own motion on 5 April 2022, the authorisation having been granted by the opponent on 25 March 2022..

In accordance with R. 152(2) EPC, filing the authorisation on 5 April 2022 remedied the deficiency concerning the representation of the opponent/appellant before the relevant period for filing an appeal under Art. 108 EPC expired, i.e. 12 April 2022. Therefore, the consequence indicated in R. 152(6) EPC, according to which if the required authorisation is not filed in due time any procedural step taken by the representative is deemed not to have been taken, did not materialise. The notice of appeal was thus validly filed.

This conclusion was not affected by the fact that at the time the notice of appeal was filed, B was also acting as the professional representative for this case, since the system of representation before the EPO permits representation by several representatives, as long as the applicable rules mentioned are respected. Nor was this conclusion affected by the fact that K's authorisation bore a signature which was dated 25 March 2022, i.e. after the filing of the notice of appeal. Contrary to the respondents' submissions, the EPC does not express a requirement that the authorisation be signed before the filing of the notice of appeal; this would even be inconsistent with R. 152(2) EPC, which allows for a deficiency to be remedied. An authorisation is an internal legal relationship between the representative and the party. Accordingly, the question of whether an authorisation was in existence at the time the notice of appeal was filed is irrelevant for the EPO, as long as any deficiency concerning the party's representation is remedied within the time limit under Art. 108 EPC.

The respondents further submitted that the EPO's letter dated 11 April 2022, with which K was asked to confirm whether they intended to take over representation of the opponent, showed that there were doubts about the effectiveness of the authorisation filed on 5 April 2022. The respondents concluded that K did not actually take over representation until the reply of 3 May 2022, meaning that they clearly were not authorised when filing the notice of appeal. The board did not agree. The EPO's letter was aimed merely at clarifying if B was still a representative in addition to K, or whether K had taken over as the sole representative. K’s reply of 3 May 2022 could also not be understood as an actual taking over of representation for the first time. Such a conclusion would disregard the fact that K had already filed an authorisation granted by the opponent/appellant on 5 April 2022. Nothing more was actually required.

According to the board, the decisions cited by the respondents were not applicable.

The notice of appeal was therefore validly filed.

In R 11/23 the petition was based on Art. 112a(2)(c) EPC, i.e. the fundamental violation of Art. 113(1) EPC. It was alleged that the clarity objection against auxiliary request 8, which had led to the board's finding that said request had been unallowable, had never been discussed, neither in the written nor in the oral proceedings, but had been brought forward only in the board's written decision..

Specifically, the petitioner argued that there had been two distinct clarity objections against claim 1 of auxiliary request 8: the alleged lack of clarity regarding what "maintaining currents in an allowable range" meant (the "allowable current range objection") and the alleged lack of information on which components were to be protected by the protective circuit (the "unspecified components objection"). The petitioner acknowledged that it had been heard in the context of the "allowable current range objection" but it asserted that it had been confronted with the "unspecified components objection" only when reading the written decision.

The Enlarged Board held that it did not see any clear indication that the "unspecified components objection" had been raised implicitly, for example as an aspect of an overarching clarity objection..

The Enlarged Board agreed with the petitioner in that it was not sufficient for a relevant specific aspect such as the "unspecified components" to be covered or encompassed by a broader clarity objection that had been discussed if the parties had not been aware of the specific aspect during the discussion. In this context, opponent 2 had referred to paragraph [0018] of the patent which had been mentioned in point 7.4 of the decision under review. The Enlarged Board could not see that such a reference implied that the "unspecified components objection" had been discussed. Furthermore, it did not regard the wording of point 7.5 of said decision as evidence that the "unspecified components objection" had been discussed, because it was not clear whether the phrase "as the appellants and the infringer [sic] correctly argue" was linked to the "unspecified components objection".

According to the Enlarged Board, since it had no power or ability to investigate further whether other facts or indications might suggest that the petitioner could be aware that the board had had doubts about the specific aspect of clarity (namely, the "unspecified component" issue), it had to rely on the parties' submissions in this respect. In the absence of any such indication, it was not for the party alleging a breach of its right to be heard to prove that there had been no such facts or indications (see R 15/11). Any doubts remaining on whether a decision under review was based upon facts and considerations on which the parties had had an opportunity to comment must be solved to the affected party's benefit (see R 2/14).

For these reasons, the Enlarged Board concluded that the "unspecified components objection" had not been discussed during appeal proceedings and its use in the written decision had therefore come as a surprise to the petitioner.

As in the appeal case underlying R 2/14, a broader objection had been discussed during appeal proceedings in the present case but not the specific aspect encompassed by the broader objection that turned out to be decisive for the case. In such cases, the "grounds" as referred to in Art. 113(1) EPC may have a more specific meaning than a broader objection like "lack of clarity" or "insufficiency of disclosure". In the present case, it was irrelevant that the broader clarity objection had been discussed. The critical aspect, namely the question of which components needed to be protected, had not been discussed during the appeal proceedings and the board's conclusion on this aspect had come as a surprise to the petitioner.

The "unspecified components objection" which had not been discussed during the appeal proceedings eventually was the reason for the board's finding that the patent was invalid. The Enlarged Board concluded that a fundamental violation of Art. 113(1) EPC had occurred. The decision under review was thus set aside and the proceedings before a board reopened..

On the latter, the Enlarged Board, referring to Art. 112a(5) and R. 108(3) EPC, explained that the board responsible for the reopened proceedings was not automatically the board which had issued the decision underlying the review proceedings. Rather, the allocation of the reopened proceedings had to be determined in accordance with the business distribution scheme as applicable when the proceedings were reopened.

In T 412/24 the appellant (patent proprietor) had contested the admissibility of the (first) opposition relying on the following points concerning the (first) opponent: (i) the opponent's professional representative could not represent the company since he was simultaneously managing the legal entity he represented; (ii) the identity of the opponent could not be unequivocally determined; (iii) the opponent could not act as such because carrying out activities reserved to professional representatives without the necessary qualifications circumvented the principles of representation; and (iv) the opponent's change of name affected the admissibility of the opposition.

Concerning the representation, Mr N, the representative of the (first) opponent, a French company in the form initially of a société simplifiée unipersonnelle (SASU) then of a société à responsabilité limitée (SARL), was the president of the SASU and also a professional representative.

The board stated that – contrary to the proprietor’s allegations – Art. 133 and 134 EPC together with R. 152 EPC and the Decision of the President of the EPO of 12 July 2007 on the filing of authorisations (OJ SE 3/2007, 128) constituted a complete and self-contained set of rules on representation in proceedings established by the EPC. A legal person having its seat in an EPC contracting state is not obliged to be represented by a professional representative (Art. 133(1) EPC). Furthermore, persons whose names appear on the list of professional representatives are entitled to act in all proceedings established by the EPC (Art. 134 EPC). A legal person having its seat in an EPC contracting state can act in proceedings before the EPO through its legal representatives. At the time the opposition was filed, Mr N in his capacity as president of the SASU was entitled to represent the SASU since under French law (Art. L. 227 Commercial Code) he was entitled to act on behalf of the legal person in all circumstances. As a professional representative, Mr N would have been entitled to act not only as the president of the SASU, but also as a professional representative appointed by that legal person.

For the sake of completeness, the board explained why neither the references to French and German law, nor the reference to general principles under Art. 125 EPC could lead to the conclusion that the company was prevented from appointing Mr N as its professional representative before the EPO. At the oral proceedings before the board, the appellant referred to the order of UPC_CoA_563/2024. The board noted that the conclusion in that case rested on the specific provisions of the UPCA, in particular Art. 48(1) UPCA (mirroring Art. 19 of the Statute of the CJEU) and R. 8(1) UPCA, which require that both natural and legal persons be represented. The CJEU had identified as one of the objectives of mandatory representation in CJEU proceedings ensuring that the representative of a legal person is sufficiently distant from the party represented (C-515/17 P and C-561/17 P). According to the board, however, even if this were regarded as a general principle of the EPC contracting states, it could not be transposed to the EPC framework. Principles of procedural law under Art. 125 EPC may be invoked to fill gaps, but not to modify the EPC framework. Introducing a corollary of the prohibition of self-representation into a system that expressly allows it would however amount to such a modification.

On the identity of the opponent, the board held that the opposition was clearly filed on behalf of SARL Cabinet NÜ. The only uncertainty, based on the submissions of the proprietor itself, concerned whether Mr N was representing the opponent as a European patent attorney or in his capacity as the president of that company. Nonetheless, this alleged ambiguity could not raise any doubt about the identity of the opponent. As regards the change of the opponent’s name, the board observed that there had been no change of the identity of the opponent.

The alleged circumvention of the law was also rejected. The board noted that this would occur if a person not entitled to act as a professional representative performed all the activities typically carried out by professional representatives while assuming the role of a party, in order to circumvent the prohibition on unqualified representation, but Mr N was a qualified professional representative.

In line with T 1893/22, which related to the earlier application, the board concluded that the (first) opposition was admissible. The appeal was dismissed.

In T 1127/23 the respondent (patent proprietor) argued that the appeal of appellant 1 (company Y GmbH) was inadmissible because the transfer of the opposition from company X OG (original opponent 1) to company Y GmbH (its universal successor) was invalid. Appellant 1 admitted that it had been acting as a straw man on behalf of a third party. Since that third party had paid for the opposition, the opposition had been a business asset in the third party's books according to the general principles of bookkeeping. Therefore, the opposition had not been an asset of company X OG which could be transferred to Y GmbH as part of the universal succession. Moreover, only the third party who paid for the opposition could have instructed X OG to withdraw the opposition and take other procedural steps regarding the opposition proceedings..

The board did not agree with the respondent. The status of opponent cannot be freely transferred (G 2/04). In G 4/88 the Enlarged Board distinguished between two cases in which the status of opponent may however be transferred: (i) in the case of universal succession of the opponent or (ii) when a relevant part of the opponent's business has been transferred, in which case the transfer or assignment of the opposition to a third party must be made as part of the transfer or assignment of the opponent's business assets together with the assets in the interests of which the opposition was filed. The board explained that in view of G 4/88 the status of opponent is validly transferred in the case of universal succession without further requirements having to be fulfilled. This implied that, in the case of universal succession, there was no need to make any further distinction between the opponent acting as a straw man or in its own interests, nor was it necessary to examine whether the opposition that had been filed could have been considered as an asset of the opponent, to determine whether the status of opponent had been validly transferred. Such a distinction would add an additional condition to those provided for in point 4 of the Reasons in G 4/88, which was not foreseen therein. Only when part of the opponent's assets had been transferred, was it necessary to examine whether the opposition related to the opponent’s business assets and could therefore have been transferred at the same time as those assets. In the present case, since a universal succession had taken place, the opposition had been validly and automatically transferred to the universal successor in law of company X OG from the date of the effective succession, regardless of whether X OG had acted as a straw man.

According to the board, the payment of the opposition costs by a third party and the general principles of bookkeeping were not relevant in the context of a universal succession since it was not necessary to examine whether a particular asset, and the opposition relating to it, had been transferred. Furthermore, accounting rules could not have any bearing on a party's status. The status of opponent was purely procedural, and the basis on which it was obtained was a matter of procedural law governed by the EPC. For the same reasons, the question of who had control over opposition proceedings and could decide, among other things, to withdraw the opposition, was not relevant for determining who could act as opponent. A person who fulfils the requirements of the EPC for filing an opposition becomes a party to the opposition proceedings (Art. 99(3) EPC), and in these proceedings, only the procedural acts performed by this party are relevant, regardless of the instructions they may receive from a third party.

Finally, the board pointed out that the respondent acknowledged that there was no abuse of procedure in the present case. The board did not see how the possibility of such an abuse occurring in other situations could be a valid ground for deciding that, in this case, appellant 1 did not have the status of opponent and appellant, and for declaring its appeal inadmissible.

The board concluded that company Y GmbH was entitled to act as opponent and appellant in the present case and that its appeal was admissible.

In case T 0387/25 the patent proprietors had appealed the examining division's decision to grant a patent because the drawings had been omitted in the supporting documents indicated in the communication pursuant to R. 71(3) EPC.

The board noted that in the present case the drawings clearly formed part of the application as originally filed, and also of the application documents on which the European regional phase was to be based. The appellants explicitly maintained the "drawings as presently on file" in their submissions during examination proceedings when filing amended claims. They never agreed to the omission of the drawings, and in particular did not expressly agree to the text intended for grant in the communication pursuant to R. 71(3) EPC. This distinguishes the present case from the situations underlying T 2277/19 and T 2864/18.

Following decisions T 2081/16, T 1003/19, T 408/21, T 1823/23 and T 1224/24, the board held that the legal consequence outlined in R. 71(5) EPC (the deemed approval of the notified text) did not apply in the present case. According to the board, it is not sufficient that an applicant, having received a communication formally referring to R. 71(3) EPC, pays the required fee and files the required translations. The legal consequence of R. 71(5) EPC only arises if the communication sent also complies with the substantive requirements of R. 71(3) EPC, i.e. it actually contains the text in which the examining division intends to grant the patent, on the basis of the documents filed by the applicant, possibly supplemented by individual marked amendments..

The present board noted that the strict approach to the mechanism of R. 71 EPC advocated in T 265/20, in which the competent board did not follow the approach taken in T 1003/19 and T 2081/16, was not applied in the later decisions T 408/21, T 1823/23 and T 1224/24. In addition, the circumstances of the case at hand differed even more from the situation underlying T 265/20. In the present case, the appellants had in fact brought the relevant error, i.e. the omission of all the drawing sheets by the EPO – over which they had no influence – to the EPO's attention when it first occurred. In this case, the formalities officer's reply led them to understand that the drawing sheets would be taken into account in the event of a B1 publication. It followed that the decision to grant was based on an application in a text which was neither submitted nor agreed by the applicants, so the requirements of Art. 113(2) EPC had not been complied with. Hence, the board decided that the appeal was admissible and the decision under appeal was to be set aside.

According to the board, it has been established case law since T 1003/19 that an examining division's error in compiling the documents intended for grant in a communication under R. 71(3) EPC that makes a clearly unintentional omission of part of the documents proposed by the applicant for grant as indicated in the applicant's last request can still be corrected if the applicant files an appeal against the subsequent grant of the patent within the time limit under Art. 108 EPC, at least if the applicant did not explicitly consent to the incorrect compilation. T 265/20 did not support that case law; but this remained a single decision and was not followed by other boards..

The board held that the present decision did not deviate from G 1/10. It found that a referral to the Enlarged Board of Appeal was not required either to ensure uniform application of the law or to align the case law and Guidelines (see points 3.1 to 3.9.5 of the Reasons).

The board noted that the Guidelines, e.g. in H-VI, do not properly distinguish between cases where a mistake was already contained in an applicant's request or was explicitly approved by an applicant, and cases like the one at hand: where an examining division, by mistake and unintentionally, deviated from the appellant's latest request when listing the documents intended for grant in a communication under R. 71(3) EPC and this was neither pointed out to the applicant nor explicitly acknowledged by it. However, a divergence between the Guidelines and the case law of the boards is not necessarily a reason for a referral to the Enlarged Board. Rather, Art. 20(2) RPBA assumes that under normal circumstances it is enough to state sufficient grounds to enable the decision to be readily understood, such that the Guidelines may be adapted where necessary.

In ex parte Fall T 535/21 Im ex parte Fall T 535/21, richtet sich die Beschwerde gegen die Entscheidung der Prüfungsabteilung, die Anmeldung mangels erfinderischer Tätigkeit zurückzuweisen. Die Kammer teilte der Beschwerdeführerin mit der Ladung zur mündlichen Verhandlung ihre vorläufige Meinung mit, dass die Entscheidung zu bestätigen sein würde. In Reaktion darauf legte die Beschwerdeführerin in der mündlichen Verhandlung vor der Beschwerdekammer einen Auszug aus einem Dialog der Beschwerdeführerin mit dem "Microsoft Copilot" vor (Auszug als A1 bezeichnet).

Die Beschwerdeführerin und die Prüfungsabteilung waren sich darüber einig, dass sich Anspruch 1 durch drei Merkmalsgruppen von D3 unterschied. Die Beschwerdeführerin vertrat aber die Ansicht, dass die Unterscheidungsmerkmale mit D3 die synergetische Wirkung hätten, die Gerätesicherheit zu erhöhen.

Was den ersten Unterschied betrifft, hatte die Beschwerdeführerin offengelassen, in welchem Sinne ein Mikrocontroller zur Sicherheit beiträgt.

Zu dieser Frage führte die Beschwerdeführerin aus, dass Mikrocontroller als sichere Steuerung für industrielle Prozesse fungierten, und dass sie echtzeitfähig und aufgrund ihrer geringen Komplexität zuverlässig seien. Die Beschwerdeführerin bezog sich in dieser Hinsicht auf A1. In der dort dargestellten Antwort des Microsoft Copilot auf die Frage "Bewirkt ein Mikrokontroller eine höhere Sicherheit als ein Mikroprozessor oder sind sie gleich bezüglich Sicherheit", wies die Beschwerdeführerin selbst allerdings auf den Warnhinweis in A1 hin, dass "KI-generierte Inhalte [...] falsch sein" könnten.

Die Kammer bemerkte zunächst, dass die in A1 enthaltenen Aussagen per se richtig sein mochten, dass aber A1 kein geeignetes Beweismittel für diese Aussagen war. Zum einen, weil, wie A1 selbst warnte, "KI-generierte Aussagen [...] falsch sein" können. Die Aussagen hätten daher noch durch unabhängige Quellen überprüft werden müssen. Ob sich die in A1 angegebenen Quellen dafür eigneten, falls sie denn überhaupt existierten, hätte ebenfalls geprüft werden müssen. Die Kammer ließ diese Fragen offen, da der Vortrag der Beschwerdeführerin sogar dann nicht überzeugt hätte, wenn der Inhalt der A1 nicht bestritten worden wäre.

Selbst unterstellt, dass Mikrocontroller gegenüber Mikroprozessoren Sicherheitsvorteile hätten, bliebe offen, in genau welchem Sinne die Steuerung des beanspruchten Umrichters durch den verwendeten Mikrocontroller "sicherer" werde. So blieb undefiniert, welches Signal für einen Umrichter sicherheitsrelevant sei oder was im Einzelnen der Benutzer prüfen könnte oder sollte. Die behauptete Synergie war schon deshalb nicht erkennbar.

Das Vorbringen der Beschwerdeführerin reichte nicht aus, um eine Synergie der Unterschiedsmerkmale nachzuweisen. Die Kammer war weiter der Ansicht, dass die Unterschiedsmerkmale für den Fachmann ausgehend von D3 nahe lagen.

In T 483/23 wies die Patentinhaberin (Beschwerdegegnerin) zu Beginn der mündlichen Verhandlung vor der Kammer darauf hin, dass die mündliche Verhandlung nicht im öffentlichen Online-Kalender der mündlichen Verhandlungen der Beschwerdekammern eingetragen war. Die Öffentlichkeit habe sich daher nicht darüber informieren können, dass in der vorliegenden Sache am 19. März 2025 eine mündliche Verhandlung stattfinden würde. Zur Öffentlichkeit gehöre nicht nur die "interessierte Öffentlichkeit", die sich ohnehin für den vorliegenden Fall interessiere und daher möglicherweise durch die Online-Akte über den Termin der mündlichen Verhandlung informiert worden sei, sondern "jedermann".

Der Patentinhaberin zufolge hat die "allgemeine Öffentlichkeit" mangels der erforderlichen Information nicht an der mündlichen Verhandlung teilnehmen können, da die mündliche Verhandlung auch nicht gesondert am Eingang des Gebäudes in Haar angekündigt worden war (sondern nur gemeinsam mit vier weiteren mündlichen Verhandlungen der Patentinhaberin) und nicht einmal am Eingang zum Verhandlungssaal ausgeschildert gewesen war. Dies stelle einen Verstoß gegen den Öffentlichkeitsgrundsatz dar, der Teil des Rechts auf rechtliches Gehör nach Art. 113 (1) EPÜ sei, wonach das Verfahren unter der Kontrolle der Öffentlichkeit stattfinden müsse. Dieses wichtige rechtliche Erfordernis sei nicht dadurch erfüllt, dass der Termin der mündlichen Verhandlung in der öffentlichen Online-Akte zu finden gewesen sei. Der Öffentlichkeit könne nicht zugemutet werden, sich durch alle anhängigen Akten "durchzuklicken", um festzustellen, dass am 19. März 2025 eine mündliche Verhandlung in der vorliegenden Sache stattfinde.

Die Kammer teilte die Ansicht der Patentinhaberin nicht. Sie betonte, dass der Verhandlungstermin für die Öffentlichkeit problemlos in der Online-Akte einsehbar gewesen sei. Der Kammer zufolge wurde man am Empfang im Gebäude der Verhandlungssäle auf den Saal verwiesen, in dem diese Verhandlung stattfand. Durch die Einstellung des Verhandlungstermins in die Online-Akte habe die Öffentlichkeit ausreichend die Möglichkeit gehabt, sich über die Durchführung der Verhandlung zu informieren, insbesondere darüber, dass die Verhandlung am 19. März 2025 stattfindet. Dies allein genüge nach Einschätzung der Kammer dem Grundsatz der Öffentlichkeit. Nach Auffassung der Kammer sei die Aufnahme eines entsprechenden Hinweises in den Online-Kalender der mündlichen Verhandlungen der Beschwerdekammern keine Voraussetzung für die Wahrung des Grundsatzes der Öffentlichkeit der mündlichen Verhandlungen gewesen.

Dementsprechend wies die Kammer den Einwand der Verletzung des Öffentlichkeitsgrundsatzes der Patentinhaberin zurück. Mit Verweis auf dieselbe Begründung wies die Kammer auch den Einwand der Patentinhaberin zurück, mit dem diese einen Verfahrensmangel nach R. 106 EPÜ wegen eines schwerwiegenden Verstoßes gegen Art. 113 EPÜ aufgrund einer Verletzung des Öffentlichkeitsgrundsatzes beanstandete.

In T 553/25 the applicant had, on 31 January 2025, filed a notice of appeal and paid the appeal fee for persons referred to in R. 7a(2)(a) to (d) EPC as provided for in Art. 2(1), item 11 RFees. By communication of the Examining Division dated 6 February 2025 (the "Communication"), the applicant was informed that the initial formal check of the appeal revealed that the reduced fee had been paid but a declaration that the appellant was a natural person or an entity according to R. 7b EPC had not been filed. Failure to file such declaration within the time limit under Art. 108 EPC would result in the appellant not being eligible for the reduced fee.

The board noted that the Communication relied, inter alia, on the notice from the EPO dated 18 December 2017 (the "Notice") concerning the reduced fee for appeal for an appeal filed by a natural person or an entity referred to in R. 6(4) EPC, now R. 7a and 7b EPC. The Notice introduced a formal requirement for the valid payment of the fee for appeal and thereby also an additional requirement for lodging an appeal. However, there was no legal basis in the EPC for such a requirement, nor was the board aware of any provision empowering the EPO to adopt such regulations, even less so at the level of a notice. Art. 2(1), item 11 RFees referred to R. 7a(2)(a) to (d) EPC, to define the persons and entities eligible to pay the reduced fee for appeal. This had no legal implications beyond giving a definition of who is eligible for the reduced fee for appeal.

There was no reference in Art. 2(1), item 11 RFees to R. 7b(1) EPC, which establishes a requirement to declare eligibility to a reduction in fees, in a different context. According to R. 7b(1) EPC, such a declaration is required if persons or entities according to R. 7a(2)(a) to (d) EPC wish to avail themselves of a reduced fee according to R. 7a(1) or (3) EPC. These provisions concern fees to be paid for patent applications up to the grant of a patent. R. 7b EPC does not apply to the payment of the reduced fee for appeal, be it directly or by way of reference. Even less can R. 7b EPC apply to the fee for appeal by way of a mere analogy.

According to the board, it followed that there was no legal basis for a prior declaration of eligibility as a prerequisite for a valid payment of the reduced fee. A declaration of eligibility might be seen as a form of evidence supporting a payment of the reduced fee for appeal. Indeed, when examining the admissibility of an appeal, a board may require appellants who pay a reduced fee to provide evidence that they fall into one of the categories of persons and entities listed in R. 7a(2)(a) to (d) EPC. However, the EPO has no power to define what is to be accepted by the boards as evidence, and even less to limit such evidence to a declaration as set out in the Notice.

The board also failed to see any reason why evidence as to an appellant's status with respect to R. 7a(2)(a) to (c) EPC could not be filed after expiry of the time limit for filing the notice of appeal under Art. 108, first sentence, EPC. An appeal was only deemed to be filed if the fee for appeal had been paid within said time limit. The time limit for payment was, in turn, deemed to have been observed only if the (applicable) full amount of the fee had been paid in due time. Moreover, the difference in amount between the regular and the reduced fee for appeal was more than 30%, which could not reasonably be considered a minor underpayment that could be overlooked within the meaning of Art. 8, fourth sentence, RFees. However, this did not preclude an assessment of whether the time limit for payment of the appeal fee had been observed on the basis of evidence provided after its expiry. While it was true that it was the facts as they stood at the end of the period that were relevant, evidence for those facts may be submitted at a later stage, in particular in response to a communication by the competent board under R. 112(1) EPC, before a decision was taken on whether the appeal was deemed to have been filed. Indeed, this view was reflected in Art. 7(3) RFees.

In the present case, the application was filed by one of the inventors, who undoubtedly was a natural person within the meaning of R. 7a(2)(c) EPC. The fact that the applicant was a natural person was not questioned by the Examining Division during examination and there was no apparent reason to doubt this. The applicant was thus entitled to pay the reduced fee for appeal provided for in Art. 2(1), item 11 RFees. The applicable amount for the reduced fee for appeal was paid on 31 January 2025, i.e. within the time limit for filing the notice of appeal pursuant to Art. 108, first sentence, EPC.

In T 617/20 the board summoned the parties to oral proceedings in person for 10 October 2024. With a letter dated 1 October 2024 the patent proprietor (sole appellant) withdrew its appeal, which was communicated to the respondent opponents on 2 October 2024. The board cancelled the oral proceedings on 4 October 2024 and informed the parties about the termination of the appeal proceedings on 10 October 2024. Opponent 3 submitted a request for apportionment of costs together with the supporting evidence on 12 November 2024, i.e. about one month later.

The patent proprietor argued that according to the relevant case law such a request was only admissible as long as the proceedings were not closed. Only exceptionally may a request be admissible after the termination of the proceedings (T 1556/14). However, in the present case opponent 3 was timely informed and therefore was not prevented from submitting the request before the closure of the proceedings.

The board held that the wording of Art. 16 RPBA, Art. 104(1) or R. 88(1) EPC did not support the proposition that requesting cost apportionment after the closure of the proceedings should be normally excluded as a question of principle, contrary to the findings of T 1556/14 (seemingly also approved by T 1484/19). At least since R 3/22 it had become clear that proceedings before a board of appeal may well come into existence also after the formal closure of the appeal proceedings. Decision T 695/18 found that the Enlarged Board's decision implied that such ancillary proceedings, though not re-opening the original appeal proceedings in substance, did in fact come into existence through a request submitted after the closure of the appeal proceedings (there a request for correction under R. 139 EPC). The same approach was confirmed in T 433/21.

In the board's opinion, there was no apparent reason why the same findings would not be transferable to the present issue. Thus, a request for apportionment submitted after the closure of the appeal proceedings would open ancillary proceedings, and there was no apparent reason why such ancillary proceedings would not be suitable to resolve also the issue on the merits, i.e. to decide whether a cost apportionment was equitable in the circumstances. Hence, the board concluded that the request was not inadmissible for the sole reason that it had been filed after the closure of the appeal proceedings.

Moreover, the board found that the request for apportionment of costs had been filed within a reasonable time. In this respect the board noted that it seemed sufficient to orient the expected reasonable time limit for filing a request for apportionment along the usual time limits applicable to proceedings before the EPO, namely the standard two months of R. 132(1) EPC. Questions should be asked only if the request is submitted after a reasonable period of time.

According to the board, beyond the general obligation to inform the other parties as soon as possible, a party had no formal obligation to take more active steps merely to avoid such costs which were already foreseen by the other parties. At most, in procedural situations such as the present case, the parties must endeavour to avoid additional costs, typically by informing the other parties as soon as the firm decision to withdraw the appeal has been taken. To recognise such a formal obligation (i.e. to take active steps already before the decision to withdraw has been taken, in order to avoid costs for the other party) seemed to place an unrealistic burden on parties to proceedings before the EPO.

For these reasons, the board concluded that the parties were to bear their own costs (Art. 104(1), first half-sentence, EPC). The request for a different apportionment of costs was not belated but there were no apparent reasons of equity that would justify a different apportionment.

In T 449/23, regarding claim 1 of auxiliary request 1 (claims 1 and 2 being identical to claims 2 and 3 of the main request, after claim 1 of the main request was deleted following a finding of lack of inventive step over D5), the board came to the conclusion that the alleged effects of the distinguishing features were not credible, contrary to the arguments of the patent proprietor. Hence, any alleged effects arising from this comparison could not be taken into account in the formulation of the objective technical problem. The patent proprietor also argued that the burden of proof lay with the opponent to demonstrate that the alleged technical effects were not present. The board disagreed, stating:

(a) that the legal burden of proof was the duty of a party to persuade the deciding body of allegations of facts on which the party’s case rested. In principle, a party must prove alleged facts (assertions) from which it infers a legal consequence, i.e. which establish the basis for the party's legal claims. Thus, the allocation of the burden of proof depends on a party’s substantive case.

(b) that to discharge its legal duty of persuasion, a party must prove the alleged facts by appropriate evidence to the required standard of proof. The party with whom the legal burden of proof lies therefore bears the risk that the alleged facts remain unproven, and thus that the deciding body will decide against that party and reject its legal claims. Thus, the legal burden of proof requires the production of appropriate evidence to persuade the deciding body to the required standard.

(c) that in principle the legal burden of proof does not shift. References in the case law to a shift of burden of proof relate to the so-called evidentiary/evidential burden of proof (see for this distinction T 741/91), the notion of which relates to the state of the evidence produced in the course of proceedings. Once the party bearing the legal burden of proof has adduced sufficient evidence to support its allegations of facts to the required standard of proof, the onus is on the adverse party to rebut the asserted facts with appropriate evidence. Otherwise, the adverse party risks that the deciding body is persuaded of the existence of the facts and allows the claims. Thus, if the party having the legal burden of proof has made a "strong case" by filing convincing evidence, the onus of producing counter-evidence shifts to the adverse party. However, this does not mean that the legal burden of proof is on the adverse party to prove the non-existence or the contrary of asserted factual allegations. It is sufficient that the adverse party raises substantiated doubts that prevent the deciding body from being persuaded of the existence of the alleged facts.

(d) that in opposition and opposition-appeal proceedings, each of the parties carries the legal burden of proof for the asserted allegations of facts on which their respective substantive case rests. As regards an alleged lack of inventive step, the burden is on the opponent to adduce appropriate prior art which – when following the established substantive test, i.e. the problem-solution approach – persuades the opposition division or the board of the obviousness of the solution provided by the subject-matter claimed. On the other hand, if the patent proprietor asserts that, in comparison to the prior art, there is an advantage or effect giving rise to a more ambitious formulation of the objective technical problem than that presented by the opponent and hence to an inventive step, the burden of proving this advantage or effect to the required standard of proof is on the patent proprietor. The mere assertion in the patent specification of an advantage or effect cannot be regarded as evidence of such an assertion.

The board listed a number of decisions (T 97/00, T 355/97, T 1097/09, T 1392/04), in which the underlying circumstances were comparable, confirming these principles. The board also observed that T 1797/09 submitted by the patent proprietor remained a singular decision not followed. The subject-matter of claim 1 of auxiliary request 1 lacked inventive step.

In T 733/23 the opposition division had concluded that there had been insufficient evidence to prove that the data sheets D2, D4, and D7 to D9 had been made available to the public before the filing date. Rather than concluding that, as a result of the data sheets not being considered state of the art under Art. 54 EPC, the subject-matter of the claims was novel, the opposition division decided not to admit them into the opposition proceedings. The board concluded that not admitting these data sheets, filed in due time, constituted a substantial procedural violation (see details as from point 4 of the Reasons including discussion on D19, an affidavit).

The board, in support of its decision, presented some key considerations on public availability of advertising brochures and data sheets, as well as the standard of proof to be applied. The board stated that when a document was clearly intended to be publicly distributed, as was the case with advertising or commercial brochures, the absence of a specific publication or distribution date, a situation quite common in this type of document, was not in itself sufficient to conclude that the document did not constitute prior art. As with any other type of evidence, the key question was not whether the exact date of publication could be determined, but whether it could be established that the relevant subject-matter was made available to the public before the priority or filing date.

Data sheets often represent an intermediate case between internal documents and advertising brochures. Where no publication date is present, the board held it should first be assessed whether the document was intended for public distribution. If so, additional sources must be examined to establish whether the relevant subject-matter was publicly accessible before the patent’s filing or priority date. Here, the opposition division had failed to provide a reasoned decision on public availability, giving no weight to the dates printed on their front pages.

As to the standard of proof, the present board concurred with the position in T 1138/20 that there is only one standard of proof: the deciding body must be convinced, based on the underlying circumstances.

According to the present board, this did not imply that all cases were to be treated identically, as in practice the degree of proof required to establish credibility (i.e. to persuade the board) might vary depending on the specific circumstances. In other words, it was not the standard of proof that adjusted with the circumstances, but rather the credibility of the arguments made by the different parties. For example, when the evidence was exclusively controlled by one party, any gaps in the relevant information might significantly undermine that party's credibility. Conversely, when the information was equally accessible to both parties but only one party submitted evidence, merely raising doubts might not be sufficient to challenge the credibility.

In the present case, the conclusions of the opposition division suggested that the standard of proof "up-to-the-hilt" was applied to determine the public availability of the data sheets. Even if the board agreed that different standards should be applied, this would not be justified in the case in hand, as the relevant information to prove the public availability of the data sheets was not within the exclusive sphere of the appellant (opponent). In this instance, the relevant information would more likely be within the sphere of the patentee. Therefore, there was no basis for applying the strict standard of "up-to-the-hilt" or for questioning the credibility of the appellant (opponent) solely on the grounds that some information was missing.

The patentee argued that, when in doubt, the patent should be upheld. The board disagreed. Fact-finding boiled down to a binary exercise: either something had been proven, or it had not. In addition, there was no presumption of patent validity in proceedings meant to re-assess the validity of this very patent.

In T 2463/22 the opposition division had held that the prior uses had not been proven beyond reasonable doubt (up to the hilt), in particular with regard to whether the products of the prior uses had actually been delivered. The parties before the board focused on which standard of proof had to be applied in view of G 2/21 and T 1138/20 and whether the applicable standard had been met. In the respondent-proprietor’s view, T 1138/20 was an isolated decision, not compatible with G 2/21.

On the required standard of proof, the present board observed that G 2/21 recognised that different concepts as to the standard of proof had been developed in the case law. According to T 1138/20 only one standard should be applied, namely "the deciding body must be convinced, taking into account the circumstances of the case and the relevant evidence before it, that the alleged fact occurred".

In the present board's view, under the principle of free evaluation of evidence, it was always decisive in the evaluation of evidence that the members of the deciding body were personally "convinced". Moreover, they had to always be convinced of whether, as stated in T 1138/20, "the alleged fact has occurred". The board stated this was true regardless of which standard of proof was applied. The standard of proof refers to the nature or degree of conviction that the members of the deciding body must have to be satisfied that an alleged fact occurred (see T 832/22).

According to the board, and with reference to a UK House of Lords decision, two important aspects had to be stressed. Firstly, that the standard of proof is related to the required degree of conviction of the members of the deciding body. Secondly, that it is not related to what is evaluated by the deciding body. Hence, also when a lower standard of proof such as the balance of probabilities is applied, the deciding body must assess whether or not the alleged fact indeed occurred. In other words, also when such a standard of proof is applied, the question is not whether the alleged fact might have occurred with some probability. The board considered G 2/21 (points 31 and 45 of the Reasons) consistent with this understanding.

The more specific question as to whether there was only a single standard of proof or more than one could be left unanswered according to the board. The board held that if the deciding body was convinced beyond reasonable doubt that an alleged fact had occurred, there was no need to decide how many standards of proof there were and which one was applicable (see T 832/22).

The board then gave some consideration to the assessment of factual allegations using the beyond reasonable doubt standard of proof. The European Patent Organisation being an independent international organisation, the board stated the standard had an autonomous meaning within this autonomous legal order. Secondly the board agreed with T 832/22 that it seemed expedient to focus on the term "reasonable".

The board then considered the prior uses, focusing especially on prior use relating to the sale of product 5 (sample of a powder mix from a specific lot number), the content of the sample and whether it was available to the public. In view of all the information (including invoices, affidavit, emails, test report, excerpt from database), which also involved evidence provided by a third party (the buyer), the board was convinced beyond reasonable doubt that product 5, with a specific lot number, was sold prior to the effective date of the patent. Since it had also been shown that product 5 disclosed all features of claim 1, lack of novelty prejudiced the maintenance of the patent as granted. Concerning the third auxiliary request, product 5 was suitable for use as closest prior art. The board referred to the reluctance sometimes in the case law to treat an object of a prior use as the closest prior art. Often, there was neither information on what the object did and what properties it had in the technical environment in which it was applied nor on how the process for its manufacture could be modified. These considerations indeed spoke against regarding a prior use as a suitable starting point for assessing inventive step. In the case in hand however, the skilled person was faced with a different situation. The board concluded that the third auxiliary request did not involve an inventive step. The decision of the opposition division was set aside and the patent revoked.

In T 1249/22 the application related to the development – including the training – of an analytical model (e.g. a machine learning model) and the deployment of the trained analytical model on a "compute engine" so as to process live incoming data. The examining division found that the independent claims of the main request lacked an inventive step in view of common general knowledge evidenced by D5.

D5 was a book comprising a collection of individual papers on grid computing, all from different groups of authors, referred to as "chapters" by the editors of the book. The appellant argued that D5 was not evidence of common general knowledge and that each of the chapters of D5 represented a separate piece of prior art; the examining division combined several distinct elements from these chapters without providing any reasoning. The board agreed with the appellant that each of the "chapters" represented a separate piece of prior art, as they appeared to be self-contained papers which did not build on each other, unlike chapters of a textbook. Definitions given in one of these papers did not necessarily apply to the others. D5 rather resembled a conference proceedings volume including a collection of separate papers on a common topic. The mere fact that the papers were published in the same book with a single ISBN did not imply that the whole content of the book formed a single piece of prior art.

As to whether D5, or its individual chapters, were generally suitable as evidence for common general knowledge, the board noted that an allegation that a teaching was common general knowledge might be supported by specific evidence. The deciding body evaluates such evidence by applying the principle of free evaluation of evidence on a case-by-case basis (G 2/21). The board explained that while it might be relevant that the cited evidence was a "book" or a "textbook", this could not, on its own, be decisive, as no firm rules dictate which types of evidence are convincing.

The board further observed that information often appears in a textbook because it was common general knowledge when the book was drafted. However, this did not mean that all textbook content necessarily was common general knowledge or became so upon publication. In the decision under appeal, the examining division referred to Part G, Chapter VII, 3.1 of the Guidelines, in which it was stated that "[i]nformation does not become common general knowledge because it has been published in a particular textbook, reference work, etc.; on the contrary, it appears in books of this kind because it is already common general knowledge (see T 766/91). This means that the information in such a publication must have already become part of common general knowledge some time before the date of publication". The board noted however, that the cited decision T 766/91 only described what is "normally" accepted and what is "usually" the case. In a statement according to Art. 20(2) RPBA, the board explained that the Guidelines had lost this nuance when saying "must" in the passage cited above.

Regarding the examining division's reliance on chapters of D5 as evidence of alleged common general knowledge, the board considered the examining division's reasoning to be insufficient regarding what alleged common general knowledge it was relying on (R. 111(2) EPC). For instance, the examining division referred merely to the "known paradigm of message-based grid computing" without indicating which features of this paradigm were considered to be common general knowledge, despite appearing to rely on more than the knowledge of the existence of that paradigm when considering that all the features relating to the processing pipeline "form part of the common general knowledge of the skilled person".

Thus, the board concluded that the first-instance decision was not sufficiently reasoned within the meaning of R. 111(2) EPC. The case was remitted to the examining division for further prosecution under Art. 111(1), second sentence, EPC and Art. 11 RPBA and the appeal fee was reimbursed under R. 103(1)(a) EPC.

In T 1841/23 the board had accelerated the appeal proceedings due to parallel infringement proceedings before the Unified Patent Court. The board summoned the parties to oral proceedings to be held on 11 December 2024. According to its preliminary opinion, the patent was most likely to be revoked on the ground of added subject-matter. A notice of intervention was filed ca. three weeks before the arranged oral proceedings and the patent proprietor quickly requested their postponement. By communication of 26 November 2024 the board invited the proprietor and opponent 1 to file observations on the notice of intervention by 4 December 2024. Oral proceedings were held on 11 December 2024 as originally scheduled.

According to the board, the proprietor's argument, in effect invoking the right to be heard, that two weeks was an insufficient period to fully respond to the notice of intervention, had no bearing on the question of the date for oral proceedings as governed by Art. 15(2) RPBA. The same applied to its complaint that new arguments were put forward in the notice of intervention, and that the discussion had developed into an intertwined tripartite debate. As the proprietor's core concern was the right to be heard, and since oral proceedings served to protect that very right by providing another opportunity for parties to present their comments, the continuation of the oral proceedings before the board did not adversely affect the parties to the appeal proceedings.

The board also disagreed with the proprietor's suggestion, invoking decision T 1961/09, that continuing the oral proceedings before the board could only be fair to the proprietor if the intervener did not make any submissions at all. The implications of an intervention filed shortly before the arranged oral proceedings had to be determined on a case-by-case basis. In the board’s view, there seemed to be no appreciable disagreement between the two boards in methodological terms. In the present case, unlike the one underlying T 1961/09, the notice of intervention did not raise any further objections or new issues, but only argued on old topics.

The board then moved on to the added subject-matter objections against the patent and concluded that all claim requests were unallowable under Art. 123(2) EPC. After the board reached this conclusion but before any decision was announced, the proprietor submitted a written objection under R. 106 EPC.

The board observed that the proprietor's right to be heard was at the heart of the R. 106 objection. At issue was the decision to revoke the patent because recurring feature F3 was not originally disclosed, thus contravening Art. 123(2) EPC. The board noted that this ground and evidence had been around since the beginning of the opposition proceedings, and the evidence was entirely by the proprietor's own hand. It could not agree with the proprietor's view, namely that any late-refining or further developing of the arguments on the same old ground and evidence would raise concerns with respect to the right to be heard. The board recalled that a first indication of what the board found particularly relevant in this case had already been given in the preliminary opinion, in which the added-matter objection was one of merely two substantive objections addressed. The notice of intervention was evidently never considered relevant as a basis for the decision on the appeal, since an objection being most likely prejudicial to the opposed patent's maintenance was already in the proceedings. The proprietor could not have been taken by surprise by the grounds and evidence forming the basis of the present decision. Moreover, the proprietor had an opportunity to present its comments on them.

While an admissible intervention was to be treated as an opposition (Art. 105(2) EPC), its filing shortly prior to the oral proceedings before a board did not generally excuse the proprietor, and in particular it did not hand them a voucher for more time. Its concrete implications for opposition appeal proceedings were rather to be determined on a case-by-case basis, under the provisions of the EPC and the RPBA. Nor were opposition appeal proceedings designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement. They were rather an existential challenge to the title, on the basis of which enforcement was pursued in the infringement proceedings, and parameters such as legal certainty and procedural economy were also involved. Any difficulties for the proprietor in drafting auxiliary requests that also provided the best scope of protection, considering the ongoing infringement proceedings, were not a reason to delay the opposition appeal proceedings.

For these reasons, which also translated into a lack of "special reasons" under Art. 15(6) RPBA, the board did not refrain from deciding on the appeal on a ground for opposition that appeared also in the notice of intervention. As a result, the objection submitted by the proprietor under R. 106 EPC was dismissed.

In T 1874/23 the board refused the request for re-establishment of rights and, as a consequence, rejected the appeal as inadmissible. The appellant’s request for oral proceedings was found to be obsolete.

The board recalled R. 136(1) EPC and noted that it corresponded to the principle of "Eventualmaxime" under which the request for re-establishment of rights must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage. Only if this requirement for immediate and complete substantiation within the time limit has been fulfilled, it might be permissible to complement the facts and evidence in later submissions, and provided that they do not extend beyond the framework of the previous submissions (e.g. J 19/05). According to the board, this was not the case for the request for re-establishment in the proceedings at hand. As a consequence, no further procedural steps were permissible, notably no further communication by the board and no appointment of oral proceedings. Neither would serve any legitimate purpose. It was not the purpose of oral proceedings in the context of proceedings for re-establishment to give the appellant a (further) chance to substantiate their factual assertions or to provide evidence despite the absence of factual assertions (e.g. J 11/09).

The board stated that it was undisputed that the right to oral proceedings as guaranteed by Art. 116(1) EPC was a cornerstone of proceedings before the EPO. The jurisprudence of the boards generally even followed the assumption of an "absolute" right to oral proceedings upon request as a rule, without room for discussion by the board, and without considering the speedy conduct of the proceedings, equity or procedural economy. However, even this "absolute" right to oral proceedings upon a party's request was subject to inherent restrictions by the EPC and procedural principles generally recognised in the contracting states of the EPO (Art. 125 EPC and J 6/22). Limits to the "absolute" right to oral proceedings had also been recognised in the jurisprudence of the boards (e.g. G 2/19, T 1573/20). Moreover, the boards' jurisprudence had repeatedly emphasised that the requirement of timely legal certainty, in particular in the context of intellectual property rights, was also recognised as a fundamental principle of the EPC. The parties' rights to a fair hearing within a reasonable time, in the context of the RPBA, had also been explicitly underlined by the boards' jurisprudence. In summary, where, as in the present case, oral proceedings served no legitimate purpose, the need for legal certainty in due time trumped and even prevented a board from appointing oral proceedings (J 6/22).

As to the interpretation of Art. 116(1) EPC, the board noted that the jurisprudence of the boards had reiterated the importance of a "dynamic" interpretation of the EPC in light of its object and purpose. In this context, the board referred, among others, to the development of the case law of the ECtHR on Art. 6(1) ECHR, where the ECtHR had also identified occasions where oral proceedings could or even should be dispensed with in pursuit of a party's right to a fair trial. In the board’s view, a literal interpretation of Art. 116(1) EPC conflicted with the legislature's aims when oral proceedings would serve no purpose and thus only prolong proceedings to no one's avail. A literal interpretation of Art. 116(1) EPC thus had to make way for a dynamic and evolutive understanding instead, in light of the provision's object and purpose. The very purpose of Art. 116(1) EPC could be summarised as providing for the essential right to be heard in oral proceedings only in so far as these served a legitimate purpose and thus did not run counter to the need for legal certainty in due time, as a further essential element of a fair trial for all parties.

The board concluded that, at least in the specific circumstances of the case in hand, legal certainty in due time, just as procedural economy, as further essential cornerstones of a fair trial, had to prevail (for essentially the same circumstances see J 6/22). In light of the principles of a fair trial and legal certainty in due time, there was no absolute right to oral proceedings under all circumstances (J 6/22). No oral proceedings had to be appointed in re-establishment proceedings where the "Eventualmaxime" principle would deprive oral proceedings of its very function as a further cornerstone of a fair trial and even run counter to it.

In T 1544/22 the patent proprietor (respondent) submitted a letter, relating inter alia to auxiliary request 2, only two working days before the oral proceedings. They argued that this letter was a direct response to the board's preliminary opinion, which deviated from the impugned decision. According to the patent proprietor, the arguments presented in the letter only elaborated in more detail arguments that had already been presented before. Its aim was to facilitate discussing these arguments during the oral proceedings. Even if the letter had not been filed, its content could have been presented and discussed orally during the oral proceedings. The appellant (opponent 2) took the view that the letter contained a completely new set of arguments, which constituted an amendment to the patent proprietor's appeal case. This amendment would have necessitated contacting a technical expert, which was not possible due to the extremely late submission of the letter.

The board concurred with the patent proprietor that the part of the letter referring to auxiliary request 2 related to arguments considered in the decision under appeal and submitted by the patent proprietor during the written phase of the appeal proceedings (with its reply to the grounds of appeal of opponent 2). In fact, the patent proprietor had already addressed the issues explained in the letter, namely the technical effect of a certain feature and how it was advantageous over the prior art. The late-filed letter merely elaborated these arguments in more detail, as submitted by the patent proprietor. The board held that such a refinement of previously submitted arguments which further illustrated a party's position had to be allowed, especially when, as in the case at hand, the refinement of arguments concerned points where the board's preliminary opinion differed from the impugned decision. Otherwise, the parties could only repeat their arguments put forward in the statement of grounds of appeal and the reply thereto. The board agreed with T 247/20 that oral proceedings, to which the parties had an absolute right under Art. 116 EPC, would serve no purpose if such refinements were not allowed.

The board concluded that the arguments discussed in the late-filed letter relating to auxiliary request 2 were not new arguments and did not represent a fresh case, contrary to opponent 2's submissions. Instead, they concerned further refinements of arguments already addressed in the impugned decision (Art. 12(2) RPBA) and previously presented during the appeal proceedings (Art. 12(3) RPBA). Thus, they did not constitute an amendment to the appeal case as referred to in Art. 12(4), 13(1) and (2) RPBA. Therefore these (very late) submissions had to be considered in the case at hand.

However, the board also stressed that the preliminary opinion of the board had been communicated to the parties more than four months prior to the oral proceedings. Given that the letter in question had been submitted/received in practical terms only two days before the oral proceedings (i.e. on Monday 3 February 2025), the board agreed with opponent 2 that it had been filed extremely late. In addition, the board was of the opinion that the patent proprietor could and should have presented the arguments contained in the late-filed letter earlier in the proceedings. By submitting late-filed arguments with such a high level of detail at such a short notice – two days before the oral proceedings – the patent proprietor had unfairly put opponent 2 in an unnecessarily unfavourable position.

In view of this particular situation, the board had given opponent 2 the opportunity to request an adjournment of the oral proceedings and indicated that it was favourably disposed towards such a request. After opponent 2 had not requested an adjournment of the oral proceedings but preferred to continue them, the board did not consider it necessary to discuss the original accusation of abuse of procedure submitted by this party.

In the proceedings leading to the decision under appeal in T 1588/22, the examining division had issued a communication on 27 July 2021. The last paragraph of the communication had read as follows: "The applicant may choose to amend the claim set as previously proposed by the examining division (see the text intended for grant dated 01.06.2021) and thereby lead to the grant of the present application. They may also choose to submit further arguments along with a new claim set satisfying the requirements of EPC. In the latter case the applicant is kindly reminded that the examination procedure would continue with oral proceedings for the sake of efficiency and better communication." On 6 November 2021 the applicant (appellant) had filed a reply to the communication and a new set of claims. On 24 November 2021, the applicant had filed a new set of claims identical to the set of claims filed on 6 November 2021. Upon an enquiry by the applicant as to when the EPO would deliver the next communication, the examining division had issued on 7 December 2021 a communication and stated that it would issue a communication within two months. On 5 January 2022, the examining division issued a decision refusing the application based on the claims filed on 24 November 2021.

The board recalled that in line with the established case law of the boards, the principle of the protection of legitimate expectations applied in proceedings pursuant to the EPC. Its application to procedures before the EPO implied that measures taken by the EPO should not violate the reasonable expectations of parties to such proceedings (G 2/97). It required that communications addressed to applicants be clear and unambiguous, i.e. drafted in such a way as to rule out misunderstandings on the part of a reasonable addressee (J 3/24).

According to the board the examining division's announcement in its communication of 27 July 2021, that the appellant "may also choose to submit further arguments along with a new claim set satisfying the requirements of EPC. In the latter case the applicant is kindly reminded that the examination procedure would continue with oral proceedings for the sake of efficiency and better communication" appeared nonsensical or at least misleading in the given circumstances. The only way for the appellant to make sense of this statement was to assume that it referred to a situation where a new claim set was filed that would not meet the requirements of the EPC, in which case the proceedings would be continued with the holding of oral proceedings. This created the legitimate expectation on the appellant's part that, after having filed a new set of claims on 6 November 2021 (refiled on 24 November 2021), these would either be found allowable or oral proceedings would be held and that, in the latter case, the appellant would have the opportunity to provide, during the oral proceedings, submissions on the allowability of this set of claims. The appellant could not have expected as the next action of the examining division that a decision refusing the patent application would be issued. According to the board, this was exacerbated by the communication of 7 December 2021 informing that the examining division would "supply a communication within 2 months".

The board inferred from these events that instant issuance of the decision refusing the application had been a surprise for the appellant. Thus, the principle of the protection of legitimate expectations had not been observed in the case at hand.

The board concluded that in view of the legitimate expectations created by the examining division, the appellant had had to assume that she would be given a further opportunity to provide counterarguments or submit amendments prior to any decision to refuse her application. The board held that the issuance of the decision refusing the patent application without holding oral proceedings or issuing a further communication as announced had thus had the effect of depriving the appellant of any such further possibility to provide comments. Consequently, the appellant's right to be heard had been violated (Art. 113(1) EPC). The examining division's decision to refuse the application thus constituted a substantial procedural violation.

The board decided to set aside the appealed decision and to remit the case to the examining division for further prosecution. Furthermore, it considered reimbursement of the appeal fee under R. 103(1)(a) EPC equitable.