European Patent Office: Frontloaded proceedings at the Boards

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23 June 2017

One of the EPO's Technical Boards of Appeal has recently reminded the community of the front-loaded nature of inter partes opposition proceedings. In proceedings leading to decision T 2193/14 dated 14 March 2017 and made publicly available on May 11 2017, the opponent was deprived of the possibility of having certain prior art citations considered which purportedly were relevant for the assessment of non-obviousness. The Board of Appeal denied the admissibility into the proceedings of the aforementioned citations, which were submitted by the opponent on appeal only, and eventually confirmed the patentability of the claimed subject-matter without having considered the citations in question on their substantive merits.

The opposed patent included three dependent claims. One month ahead of oral proceedings in the first instance proceedings in 2014, the patentee had filed an auxiliary request based on the combination of granted dependent claims 2 and 4. Following a minor amendment to the request made during the oral proceedings, the subject-matter defined by the combination of claims 2 and 4 had been held allowable. With its subsequent statement of grounds of appeal, the opponent had submitted five fresh prior art citations which had not been filed in the first-instance proceedings. These citations were, in the opponent's view, relevant for the assessment of non-obviousness of the request held allowable by the first-instance department, and they were said to have been filed in response to the findings of the first-instance department.

In its decision the Board of Appeal, however, refused to consider the fresh citations on their substantive merits. Referring to Enlarged Board of Appeal decision G 9/91, which in essence lays down that the legal and factual framework of opposition proceedings is in principle defined by the originally filed notice of opposition, and that appeal proceedings before the EPO are to be considered as a judicial procedure which by nature is less investigative than an administrative procedure, the Board exercised its discretionary powers to not admit the citations into the proceedings. The thrust of the Board's reasoning in this regard was that the opponent could and should have submitted them in the first-instance proceedings.

The decision emphasises the general aspiration of the EPO, notably the Boards of Appeal, to frontload opposition proceedings, and opponents are well advised to present a complete case from the outset.