5.1.7 Principles for the exercise of discretion by the opposition division
The case law of the boards of appeal has confirmed the following criteria (as set out in the EPC Guidelines E‑VI, 2.2.3 – April 2025 version) that the opposition division should take into account when properly exercising its discretion under Art. 114(2) EPC or R. 116(1) or (2) EPC: prima facie allowability, procedural expediency, abuse of procedure, and the question as to whether the opponents could be expected to familiarise themselves with the amendment in the time available (see e.g. T 491/09).
In T 500/15 the board noted it was undisputed that such a discretionary decision had to be taken by applying the criteria recognised in the practice of the EPO. In the case in hand, the board agreed with the additional criterion identified by the opposition division of "the complexity of the amendments", and noted that the applicability of the examined procedural criteria had to always depend on their actual substantive effect.
In T 2385/12 the board noted that instances where discretion may be exercised by a department of the EPO had not been formulated in a concrete manner since the particular way in which the discretion may be exercised was necessarily dependent on the specific circumstances of the case in hand.
In T 1930/14 the opposition division, having considered the timing of the filing of the auxiliary request (which could have been filed earlier), its complexity and its prima facie allowability, did not admit the auxiliary request into the proceedings. The board was satisfied that the opposition division had exercised its discretion according to the right principles and in applying these principles had not exercised its discretion in an unreasonable way.
In T 84/17 the board concluded that the opposition division had exercised its discretion in a reasonable way and had used the correct principles. The opposition division had correctly stressed that the auxiliary requests had been filed very late without appropriate justification. The underlying objections had been on file since the notice of opposition and their pertinence commented on in the annex to the summons. Moreover, the opposition division's decision not to admit the requests was not exclusively based on the unjustified lateness but also on the finding that the opponents could not be expected to deal with the specific restrictions of subject-matter introduced with these requests, i.e. the opposition division had also considered the substance of the amendments. In the board's opinion, if the arguments in the particular case showed that some criteria weighed so heavily that other criteria could not outweigh them, it was not necessary to discuss all criteria.
In T 1617/20 the board held that using the criterion of prima facie allowability under Art. 123(2) EPC, to object for the first time at oral proceedings to a feature of the late-filed claim request (auxiliary requests 2) that was already present in higher-ranking claim requests and had never been objected to before, not even when deciding on the allowability or admittance of those higher-ranking claim requests, went against the principles of fairness and good faith. The opposition division should have used the same criteria it had used when deciding on the admittance of auxiliary requests 1, which was also substantially identical to a previous request. Not doing so, and thus basing the decision as regards the two claim requests on different criteria, resulted in an inconsistent approach. The opposition division, had thus used the available criteria in an unreasonable way and its decision thus suffered from an error in the use of its discretion.
In T 1081/20 the board noted that the admittance of the auxiliary request in question was at the opposition division's discretion pursuant to Art. 123(1) EPC in conjunction with R. 79(1) EPC and/or R. 81(3) EPC. It stated that a board should overrule such a discretionary decision only if the wrong principles had been applied or if the decision had been taken in an unreasonable way. See also the settled jurisprudence in light of G 7/93 (OJ 1994, 775), in chapter IV.C.5.1.8 and chapter V.A.3.4.1.
- T 0691/24
In T 691/24, the board had to address the issue of the late filing of claim requests in opposition proceedings and whether the first instance had exercised its discretion correctly in not admitting them. The main request and the first auxiliary request were filed during the oral proceedings before the opposition division (as auxiliary request 9a1 and 9b, respectively) and were not admitted into the opposition proceedings for being late-filed and non-convergent (main request) and for having been filed "without prior authorisation" (first auxiliary request).
In the appeal proceedings, the patent proprietor contested the finding that the requests had been late-filed, arguing that they had been submitted in response to an objection under Art. 123(2) EPC that had been newly raised during the second oral proceedings before the opposition division, after it had departed from its previous preliminary opinion. The patent proprietor further argued that the opposition division should have applied the criterion of "prima facie allowability" instead of the "convergence criterion".
The board held that the requests had indeed been filed late, as they had not been submitted within the time limit set by the invitation under R. 79(1) EPC issued following opponent 2’s notice of intervention. The board stated that the opposition division had the discretion pursuant to Art. 123(1) EPC in conjunction with R. 81(3), 79(1) and/or 116(2) EPC not to admit them (R 6/19, T 256/19). This discretion existed independently of the provisions of R. 116 EPC and of whether the opposition division deviated from its provisional opinion (T 966/17). Nor could such a deviation as such justify an automatic admittance of a claim request (T 868/20, T 847/20). A positive preliminary opinion on auxiliary request 9a – already admitted into the proceedings at the opposition division's discretion – could not guarantee per se the admittance of a further filing of claim requests. Nor did such a positive opinion "reset" the application of the "convergence criterion".
As regards the use of the "convergence criterion" by the opposition division, the board noted that it is a well-established criterion that may legitimately be used by a first-instance department when exercising its discretion on the admittance of late-filed claim requests. The board agreed that the present main request was not convergent with auxiliary requests 5 and 6 and that the opposition division had indeed the discretion to use this criterion to not admit "auxiliary request 9a1", i.e. the present main request, into the opposition proceedings. The patent proprietor had noted that the criterion of "prima facie allowability" was used when considering admittance of other claim requests during the first-instance proceedings instead of the "convergence criterion". The board stated that the question of consistency in the application of criteria selected from the opposition division’s legal toolbox when assessing admittance had little bearing on whether, in the present case, the opposition division rightly relied upon a particular criterion in relation to a particular claim request.
The board accepted that the "convergence criterion" represents only an "indicator" that procedural economy may be affected and that whether this is actually the case depends on the circumstances of a particular case. However, in the present case, the opposition division indicated precisely in view of which higher-ranking claim request the then "auxiliary request 9a1" did not converge and why this claim request went in a different direction, i.e. which features were in fact replaced. Hence, the implications for procedural economy were therefore considered and balanced. As a consequence, the opposition division did not use the "convergence criterion" in an unreasonable or erroneous way when disregarding the present main request..
With respect to the first auxiliary request, and the opposition division’s decision not to allow it, the board found that there is no legal basis in the EPC for making a party’s submissions subject to prior approval by the deciding body and that the limitation to one further request – ex ante and without any consideration as to their substance – was arbitrary. The board therefore acknowledged that this constituted a procedural, though not substantial, violation, since the auxiliary request, being a continuation of the main request, must likewise be "non-convergent".
Consequently, the board did not admit the main request and the first auxiliary request into the appeal proceedings (Art. 12(6), first sentence, RPBA).