T 1900/23 22-10-2025

1. Main request - patent as granted

In the decision under appeal, the opposition division decided to reject the oppositions and maintain the patent as granted. At the oral proceedings before the board, the respondent however withdrew its main request (patent as granted).

As the decision is based on a request which no longer forms part of the proceedings, the decision under appeal must be set aside.

2. Admittance of new auxiliary request 2 - Article 13 RPBA

2.1 The respondent filed new auxiliary request 2 at the oral proceedings before the board. Both appellants requested that this request not be admitted into the appeal proceedings.

2.2 The respondent argued that under Article 13(3) RPBA it had the right to respond to the change of appellant 2's appeal case regarding the objective technical problem to be solved. The amendments to claim 1 of the new auxiliary request 2 consisted only of the introduction of features from dependent claims as granted and overcame the lack of inventive step objection raised for the withdrawn main request and auxiliary request 1.

2.3 According to appellant 1, irrespective of whether the request should be regarded as a late-filed request or not, it did not prima facie overcome the objection of lack of inventive step and should not be admitted for that reason.

In appellant 2's view, the request was filed late and should not be admitted. For appellant 2 it was made clear in the board's communication under Article 15(1) RPBA, point 8.7.5, that the objective technical problem to be solved was to be discussed at the oral proceedings such that there was no justification for filing new requests that late at the oral proceedings, in particular after having waited for the board to give its conclusion on the admittance of the new objective technical problem and lack of inventive step of the subject-matter of claim 1 of the main request and auxiliary request 1.

2.4 The board notes that when a new set of claims, which did not form part of the decision under appeal or the opposition proceedings leading to that decision, is filed for the first time at the oral proceedings before the board, this represents an amendment to the proprietor's appeal case. The admittance of such amendments is at the discretion of the board and is to be considered according to the third level of convergence set out in the RPBA, namely Article 13(2) RPBA (see Case Law of the Boards of Appeal, 11th edition 2025 (CLB), V.A.4.2.1 and V.A.4.5.1a)).

2.5 According to Article 13(2) RPBA, an amendment to a party's appeal case will, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

In the present case, the board had admitted (at the oral proceedings) a new objective technical problem formulated by appellant 2 with respect to the main request.

The justification for the admittance of this amendment was that the board itself had given a preliminary opinion that none of the objective technical problems formulated by the parties appeared to be fully correct (see Article 15(1) RPBA communication, point 8.7, in particular point 8.7.5; see also point V above).

The board is of the view that the rejection in its preliminary opinion of all the previously posed objective technical problems, together with the admittance of the amendment to appellant 2's appeal case, could be considered to be an exceptional circumstance and the filing of a new request was a justified response to this circumstance.

In this respect the board cannot find any convincing reason why the respondent should have filed a new request before the discussion which was to take place at the oral proceedings, as announced by the board in its communication under Article 15(1) RPBA. This is all the more true since the board's preliminary opinion was in favour of the respondent, albeit based on the previously formulated objective technical problems. At the oral proceedings the discussion on the formulation and admittance of the new objective technical problem and on inventive step of the subject-matter of claim 1 of the main request and auxiliary request 1 was performed without interruption, such that the respondent was able to file a new request only after the board announced its conclusion on said requests.

As the board is of the view that exceptional circumstances exist in the present case, it is unnecessary to consider the respondent's reliance on Article 13(3) RPBA. In any case, the respondent was legitimately entitled to react on the basis of this legal basis, which it did.

2.6 However, the existence of exceptional circumstances is not the sole criterion for admittance of an amendment at the third stage of convergence, it is rather only the first hurdle. A board, when exercising its discretion, may also apply the criteria applicable at the first and second levels of convergence in Articles 12(4) to 12(6) and 13(1) RPBA (see CLB, V.A.4.5.4e)).

2.6.1 Regarding the criteria of Articles 12(4) to (6) RPBA, the board notes that the opposition division rejected the oppositions. There was therefore no possibility for the respondent to have filed further auxiliary requests, which were also admitted by the opposition division, in the opposition proceedings.

Further, the parties did not indicate that the objective technical problem raised by appellant 2 formed part of the opposition proceedings and the board cannot find any reference to this problem in the written submissions. Therefore the respondent could not have filed requests in reaction to this specific issue during the opposition proceedings.

2.7 Regarding the criteria to be considered under Article 13(1) RPBA, these include whether the amendment prima facie overcomes the issues raised without giving rise to new objections; whether the amendment is detrimental to procedural economy; and the complexity of the amendment (see CLB, V.A.4.4.5).

2.7.1 Appellant 1 argued that new auxiliary request 2 did not prima facie overcome the inventive step objection regarded as prejudicing maintenance of the patent as granted, as the subject-matter of claim 1 of new auxiliary request 2 was still not inventive.

2.7.2 In the board's view, it is not possible to conclude prima facie that the objection would not be overcome. The board and the parties would have for the first time to consider a combination of features which did not form part of the decision under appeal. They would have to consider whether these amendments further distinguished the claimed subject-matter from the closest prior art D1, i.e. were additional to the distinguishing features M4 (in view of M2-2) and M7, as set out in the board's preliminary opinion (see communication pursuant to Article 15(1) RPBA, point 8.6), and confirmed by the board with respect to the withdrawn main request. It might then need to be considered whether these features required a reformulated objective technical problem.

Although in general the onus is on the patent proprietor to demonstrate that its amendment overcomes the issues raised by the other parties (see CLB, V.A.4.4.5b), first paragraph), the board in the present case was of the view that a prima facie assessment could not be done in order to formulate an appropriate objective technical problem based on possible new distinguishing features still to be decided upon, i.e. that the assessment should instead be done thoroughly so as to arrive at a sound decision.

2.7.3 Further, although the admittance of the request could be regarded as detrimental to procedural economy, the board is of the view that in the present case, the respondent had to be given the opportunity to react to the amendment to appellant 2's appeal case in order to ensure fairness between the parties.

The board is also of the view that the amendment itself is not complex since it concerns a further specification of the configuration of cavities and nozzles which has been part of the discussion throughout the proceedings.

3. Remittal (Article 11 RPBA)

3.1 Article 111(1) EPC sets out that a board, after examining the allowability of an appeal, may decide by either exercising any power within the competence of the department which was responsible or by remitting the case to that department. Which of these two options a board chooses will depend on the facts of the case and is at the discretion of the board (see CLB V.A.9.1.1).

According to Article 11 RPBA, a board should not remit a case unless special reasons present themselves for doing so.

3.2 In the present case, the respondent and appellant 2 requested remittal of the case for further prosecution, whereas appellant 1 requested that the case not be remitted.

3.3 The board decides to remit the case for further prosecution in line with the requests of two of the three parties for the following reasons.

As set out in Article 12(2) RPBA, the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner. New auxiliary request 2 and the amendments made to claim 1 did not form part of the decision under appeal.

The introduction of these new features, together with the admittance into the appeal proceedings of the new objective technical problem formulated by appellant 2, changed the framework of the proceedings. Although there is no absolute right to have every matter examined at two instances, it is established case law that parties should, where possible, be given the opportunity to discuss important elements at two instances (see CLB, V.A.9.2.1, second paragraph).

The board takes the position that in the present case, the burden on the parties and the board to consider and deal with the new issues raised, including all objections and reactions to any new objections, outweighed any possible detriment to procedural economy and it was therefore justified to prolong the procedure in order to allow all parties the right to fully consider and react to the new request.

4. Request of appellant 2 to record statement of the respondent in the minutes

4.1 During the discussion on admittance of new auxiliary request 2 at the oral proceedings before the board, appellant 2 requested the inclusion in the minutes of the oral proceedings of a statement made orally by the respondent regarding whether certain embodiments of pouch design could be considered to be within the scope of the independent method claim.

4.2 The board notes that Rule 124(1) EPC requires that the minutes contain the essentials of the oral proceedings and the relevant statements made by the parties. What is "essential" or "relevant" lies within the discretion of the minute writer. It is to be determined by reference to what the board has to decide, and is thus what is essential or relevant for the decision to be taken (CLB, III.C.8.10.1; T 263/05, Reasons 8).

Statements which may be essential or relevant are, for example, an objection under Rule 106 EPC (R 14/09, Reasons 4); the requests of the parties on which a decision is required; and a relevant statement of surrender or abandonment of subject-matter (T 263/05 Reasons 8.5 to 8.8). By contrast, the arguments of the parties on patentability, including the interpretation of the scope of protection of a claim, are usually not recorded. If such statements are relevant for a decision, they would in any case be apparent from the written decision. In addition, there is no right of a party to have oral submissions recorded in the minutes (see, for example, T 1690/22, Reasons 4.12 with reference to several decisions). In the present case, the alleged statement made by the respondent was neither a request nor was it a statement of surrender or abandonment of subject-matter. It occurred in the context of the discussion on admittance and reflected the respondent's opinion on the scope of protection of the amended claim. The board cannot see that this is essential or relevant within the meaning of Rule 124(1) EPC. Therefore, appellant 2's request to have a statement of the respondent regarding the scope of protection of claim 1 of new auxiliary request 2 recorded in the minutes of the oral proceedings is refused.