Decision (T1454/17) of the technical appeal board of the European Patent Office 29.03.2022

Genip Oy represented the proprietor/respondent in the opposition appeal proceedings before a technical appeal board of the European patent office.

The appellant had filed a written submission as late as in October 2021. The submission contained objections that the appellant had not presented during the prior proceedings. The technical appeal board ruled that even though the objection relates to the documents already discussed in the proceedings to interpret the same features of patent claims, but in an alternative line of argumentation, the submitting of the objection equals to a new grounds of appeal. Because the appellant failed to present cogent grounds for presenting the reasons after filing the statement setting the grounds for appeal, the appeal board refused to admit the objection into the proceedings. The appeal board admitted another part of the submission, finding it as refinement of the line of argument presented in the statement setting the grounds of appeal.

In our view, especially with regard to important patents, it is worth preparing any filing documents for opposition proceedings and possible appeal with so much care that there will be no need to try to add further objections afterwards. Any potential need of presenting new objections should be analyzed carefully and it is also important to explain the reasons, why it was not possible to present the objection earlier.

https://www.epo.org/law-practice/case-law-appeals/recent/t171454eu1.html