EPO Appeal case establishes that requests to delete dependent claims late in the proceedings can be inadmissible
Case Law | 18.02.2025
The EPO Boards of Appeal are well known to take a strict approach to admissibility of new requests filed late in the appeal proceedings, but generally permit deletion of invalid dependent claims. Elisabeth Engelhard’s opposition appeal case T 2229/19 has gained recognition for demonstrating for the first time that in some circumstances, the Board will not admit such requests.
In this case in first instance, the relevant dependent claims had been objected to as adding matter. The OD did not agree, but did revoke the Main Request for insufficiency. In the early stages of the appeal process, patentee maintained their Main Request but did not file any requests dealing with the added matter objections against the dependent claims. The opponent represented by Hoffmann Eitle maintained their arguments against these dependent claims.
As often occurs during EPO appeal proceedings, the Board’s preliminary opinion did not follow the opposition division decision and concluded that the dependent claims did add matter. Patentee responded at this late stage of the appeal proceedings by filing new auxiliary requests deleting these dependent claims.
Opponent requested that the new requests not be admitted as late filed, referring to the RPBA which establish that requests filed at this stage should only be admitted in “exceptional circumstances”. While the Boards of Appeal have generally permitted such late-stage deletions previously, in this case they decided that the requests could not be admitted into the proceedings.
The reasoning of the Board is given at items 25 – 30. As argued by the Opponent they first took the position that the filing of a new set of claims is to be regarded as an amendment of the appeal case and its admittance is therefore subject to the board's discretion, even if only dependent claims were deleted. This much is in line with several previous decisions. But additionally, the Board accepted the proposition from Opponent that while the amendment introduced with the auxiliary requests overcomes the added matter objection, the objection of lack of sufficiency remained. The OD had revoked the patent for this reason and the Board followed their decision in the preliminary opinion. As such, without actually taking a decision on insufficiency, the Board still found that the auxiliary requests were not suitable to resolve issues of admissibly raised in the appeal proceedings as required by the RPBA. The Board also noted that a favorable decision of the OD in first instance on added matter does not allow the patentee to rely on this decision and not address objections raised in the original opposition.
Thus, as all requests on file contained the offending dependent claims, the patent was revoked because no request deleting these claims had been timely filed.