Tuesday, 6 October 2020

T 1188/16 - Request filed in appeal is too late


Another case showing that filing new requests with the appeal can be a perilous undertaking. In first instance proceedings, the proprietor amended claims by including a 'fluid delivery interface' disclosed in paragraph 44 of the description. The opposition division objected that this was added matter since the amendment failed to include a 'reduced pressure interface' which was shown together with the former interface. In appeal, an auxiliary request is filed that addresses this objection, but the board will not allow it. 

The proprietor considered that the request  should be admitted, since it is responsive to objections first raised during oral proceedings. However, the board finds that the problem was unambiguously indicated at the oral proceedings, so that the appellant could have filed a request including the omitted feature then.

The appeal was dismissed. 

Reasons for the Decision

1. Admittance - Article 13(1) RPBA 2020

1.1 According to the first two sentences of Article 13(1) RPBA 2020:

'Any amendment to a party's appeal case after it has filed its grounds of appeal or reply is subject to the party's justification for its amendment and may be admitted only at the discretion of the Board.

Article 12, paragraphs 4 to 6, shall apply mutatis mutandis.'

The second sentence of Article 12(6) RPBA 2020 states:

'The Board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance.'

1.2 With the present main request having been filed with letter of 2 July 2020, its admittance pursuant to the transitional provisions of Article 25 RPBA 2020 is subject to Article 12(6) RPBA 2020. A factor for the Board to consider in exercising its discretion is whether the main request should have been filed already before the opposition division, in which case the request shall not be admitted unless the circumstances of the appeal case justify its admittance.

1.3 During the oral proceedings before the opposition division, on delivering the added subject-matter finding with respect to the then main request, the chairman announced inter alia that para. [0044] of the application as filed 'only discloses a fluid delivery interface in combination with further features which are however not present in claim 1' (see point 2.2 of the minutes, particularly the first point on page 2). The Board finds this to be an unambiguous indication that the super-absorbent dressing assembly and/or the reduced-pressure interface was/were missing from claim 1 since the remaining features in para. [0044] were already included in claim 1 at that time (i.e. the fluid delivery interface and the super-absorbent layer). Thus, contrary to its arguments presented, at the latest at that juncture the appellant was in a position to file requests including the omitted features from para. [0044] in response to the added subject-matter finding of the opposition division.

1.4 The appellant's argument that the notice of opposition and the opposition division's preliminary opinion failed to provide an indication of which features needed to be added to claim 1 of the then main request in order to overcome the added subject-matter objection is not persuasive to find that the present request should not have been filed sooner. Even if the precise amendment required to overcome the objection had not been evident in the written submissions, at the very latest during the oral proceedings a clear indication was orally given. The disclosure of a very limited number of features in para. [0044] placed the appellant, at the time the chairman announced the opposition division's finding, in the position of being able to respond in a substantive manner to overcome the objection. The appellant's contention that the necessity of including the reduced pressure interface in claim 1 not being apparent is thus not accepted. The failure to do so at that juncture, when the objection had been made abundantly clear, leads the Board to conclude that the present main request could and should have been filed before the opposition division. It should be noted that the appellant was also given an opportunity during those proceedings to consider its requests in view of the opposition division's finding (see the minutes of those oral proceedings, point 2.2, last sentence). Lastly, it may be added, although it was not argued to be the case, that no circumstances of the present appeal case itself can be seen as giving rise to cause to alter the opposition division's finding.

1.5 The Board thus exercised its discretion not to admit the main request (Article 13(1) RPBA 2020) as the request should have been filed in the proceedings leading to the decision under appeal (Article 12(6) RPBA 2020).

1.6 Asked by the Chairman, the appellant confirmed that it did not wish to file a further request. Since the only request of the appellant is not admitted into the proceedings, the appeal must be dismissed.


For these reasons it is decided that:

The appeal is dismissed

This decision T 1188/16 (pdfhas European Case Law Identifier:  ECLI:EP:BA:2020:T118816.20200910The file wrapper can be found here. Photo by Steve Buissinne (stevepbobtained  via PixaBay under the Pixabay license (no changes made).


  1. Thank you for highlighting this case as it shows how stringently some Boards of Appeal are applying their discretion. I think (and I will admit to being potentially partial as I represented the Appellant) the Decision rather over-states the detail provided by the Opposition Division. Particularly relevant is the statement in the Minutes that, when asked for further details of the 123(2) finding, "In order to respect fairness and impartiality towards the parties, the chairman stated that enough explanation had already been given and more guidance could not come from the OD. The chairman mentioned that a full reasoning would be provided in the written decision". That is, the OD expressly declined to provide information on the new finding on which a new request could have been formulated. Also, the preliminary opinion in its comments on the relevant paragraphs & features did not mention this problem, but instead focused on different aspects of that disclosure, so this was a clear change of direction at the oral proceedings. The Boards are clearly willing to read a lot into what happened and what we "could and should" have done based on the exceedingly brief minutes (2.5 lines in this case). The key take-away is file every conceivable request you can think of, as early as possible.

  2. Thanks.

    As decisions like this become more common, it may lead to parties heavily frontloading their cases for fear of missing the possibility to file a request later. I can imagine that not all cases would benefit from that.

  3. I do not know the details of the case, but if the request including the "reduced pressure interface" was materially allowable, this decision would be a perversion of justice in my books.

    1. On the other hand, assuming that it was clear in first instance oral proceedings that the problem lay in section 0044, then it would have been fairly straightforward to guess what needed to be done, as the relevant section is three lines.