Admissibility Of Requests During Opposition Proceedings

• Jurisdiction: European Union
• Law Firm: HLK
• Subject Matter: Intellectual Property, Patent
• Author: Mr Michael Ford and Magnus Johnston
• Published date: 28 March 2023

Recent EPO Board of Appeal decision T 1214/21 has confirmed that opposition divisions cannot arbitrarily restrict the number of claim requests to be considered during oral proceedings. Moreover, decisions on the admissibility and allowability of claim requests must be reasoned.

Background

During opposition proceedings before the EPO, it is common for patent proprietors to submit multiple claim requests for consideration by the division. Theses typically include a main request in which the proprietor argues for their most preferred outcome - usually maintenance of the patent on the basis of the claims as granted or with relatively minimal amendments - and auxiliary requests defining narrower fallback positions. The opposition division should examine each of the requests in the order presented by the proprietor until one of the requests is found to be allowable or no requests remain. If a particular request is found to be allowable, the division will not consider any subsequent requests.

The EPO sets some limits on how and when proprietors may submit requests in which the patent is amended. For example, amendments must be occasioned by at least one of the grounds for opposition specified in Article 100 EPC (Rule 80 EPC) or be required to deal with an earlier national right (Rule 138 EPC). Amendments must also comply with the requirements for clarity (Article 84 EPC, subject to Enlarged Board of Appeal decision G 3/14) and the prohibitions against adding subject-matter (Article 123(2) EPC) and extending the scope of protection after grant (Article 123(3) EPC).

The EPO will also specify a deadline (under Rule 116(1) EPC) for making written submissions in preparing for the opposition oral proceedings and proprietors may submit requests at any time between receipt of the notice of opposition and this cut-off date. The division has discretion to disregard requests filed after this cut-off (including during the oral proceedings) as being "late-filed". However, the division is required to admit late-filed requests necessitated by a change in the subject of the proceedings - for example, because the division has admitted new facts, evidence or grounds due to prima facie relevance, or because the division has changed its mind on a particular issue.

The division must assess all relevant factors when taking a decision on the admissibility of requests. This includes whether or not amendments are prima facie allowable, and whether the series of requests is "convergent"...