During opposition proceedings it is standard practice for the Patentee to file a range of auxiliary requests, to provide them with fall-back positions should their main request not be allowed. In many cases, some or all of these requests are never discussed by the Opposition Division, for example because the main request or one of the higher-ranked auxiliary requests is allowed.
In these circumstances, what becomes of these never-before-discussed auxiliary requests (often called “carry-over requests”) during an appeal? On this point, the EPO Boards of Appeal have some diverging opinions.
It seems to be established that these carry-over requests do not meet the requirement of Article 12(2) RPBA because they are not “requests, facts, objections, arguments and evidence on which the decision under appeal was based”. Article 12(4) RPBA then treats these requests as amendments, which are admitted only at the discretion of the Board, unless the party demonstrates that the requests were “admissibly raised and maintained in the proceedings”.
Whether or not a request is maintained should usually be clear. It is, however, best practice for the Patentee to make sure that their wish to maintain any lower-ranked auxiliary requests is made explicitly clear during the first instance oral proceedings and captured in the minutes.
Where the EPO Boards of Appeal diverge is what criteria should be considered when deciding whether carry-over requests can be deemed to have been “admissibly raised” in the first instance proceedings.
In some cases this point has seemingly not even been contested. Instead, any request filed during the opposition procedure has been taken to be “admissibly filed” without discussion (see T0042/20 and T0476/21).
In other cases the issue was discussed, but a relatively lenient approach was taken. For example, in T0924/22 the Board (3.2.04) submitted that divergence of the requests did not affect whether the requests were “admissibly raised” if they were filed before the Rule 116 EPC deadline. The Board also indicated that the requests in question were “substantiated to the required level in opposition”, and that “though their substantiation in appeal is very succinct, the Board considers it sufficient to allow all to understand the case the respondent proprietor is making for them”. These carry-over requests were therefore admitted into the appeal proceedings.
Other EPO Boards of Appeal have taken a stricter view. For example, in T1800/20 the Board (3.4.02) decided that whether a request was “admissibly raised” depended on factors including (a) the date of filing the request; (b) the suitability of the request to address the relevant objections; (c) whether the request raises any new issues; and (d) the convergence of the request with any requests discussed in the first-instance proceedings. In the case in question, the Board decided not to admit a carry-over request due at least in part to lack of convergence with the previous request.
In another recent case, T0364/20, the Board (3.3.02) suggested that they needed to decide whether the Opposition Division would have admitted the requests if they had needed to decide on this point. They proposed that factors which may determine whether an Opposition Division would have admitted a request included timeliness and complexity of the amendments, procedural economy, especially divergence of claim requests and suitability of the amendments to overcome previously raised objections without giving rise to new issues. However, the Board also indicated that there was a lower barrier for allowing requests into the proceedings in the first instance proceedings than in an appeal.
In a recent decision T0246/22 this divergence of approach has been discussed to some extent. In this decision, the Board (3.5.03) disagreed with many of the approaches discussed above, and suggested that for requests to be considered as “admissibly raised”, the Patentee must demonstrate:
(1) that they were filed in due time, typically before expiry of the time limit set by the opposition division under Rule 116(1) and (2) EPC, and
(2) that it was made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they try to overcome and how this is actually achieved.
In the case in question, it was decided that the Patentee had not clearly indicated for what purpose they were filed, i.e. how the objections were concretely addressed and why they would be overcome.
It remains to be seen whether the two-part test presented by the Board in T0246/22 will be adopted more widely, and whether this will ultimately provide parties with more guidance as to the expected fate of these carry-over requests. In the meantime some uncertainty must remain, and Patentees may be best served by filing their auxiliary requests as early and with as much substantiation as possible in the first instance proceedings.