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T 1296/23 (Puff count/FONTEM) 18-12-2025

Catchword:

"Requests filed during the first-instance proceedings on which the department of first instance took no decision are not automatically part of the appeal proceedings."

Abstract:

In T1296/23, the Board of Appeal (BoA) of the European Patent Office continues a strict approach when not admitting auxiliary requests that have been raised in the proceedings of first instance but were not discussed in the decision under appeal and not expressly raised before oral appeal proceedings.

According to the BoA, such requests would not automatically be part of the appeal proceedings (A. 12(2) RPBA). Unless expressly maintained on appeal until the parties reply to the summons to oral proceedings, but raised for the first time in oral proceedings, such requests would constitute an amendment to the appeal case (A. 13(2) RPBA). The board further held that the mere believe of a party that such requests would be part of the appeal proceedings would not be an “exceptional circumstance” for admittance under A. 13(2) RPBA.

The board also held that admittance of such auxiliary requests in oral proceedings in this case would have contravened the principle of procedural economy due to alleged postponement of the oral proceedings or remittal to the opposition division.

Summary of the case:

European patent EP3071273 (Application Number: 14864703.5) refers to a method of logging smoking data. It was maintained in amended form according to auxiliary request 2 (AR 2) filed in opposition proceedings. Together with AR 2 further auxiliary requests 3 to 9 (ARs 3 to 9) were filed by the proprietor at the same time in the opposition proceedings.

In subsequent written appeal proceedings, the appealing opponent (appellant) requested the decision under appeal be set aside and the patent be revoked. The responding proprietor (respondent) did not raise express requests in the written proceedings but countered the appellant’s arguments.

In oral appeal proceedings, the BoA held that the subject matter of AR 2 would not be inventive. Subsequently, the respondent requested in the alternative of maintaining AR 2 that the patent be maintained on the basis of the claims according to AR 3 to 9.

However, the BoA decided not to take ARs 3 to 9 into account in the appeal proceedings as they would constitute an inadmissible amendment to the appeal case (A. 13(2) RPBA), because:

• The obligation of the BoA to review the decision under appeal would not extend to ARs 3 to 9, because the opposition division took no decision on those requests;

• Even if ARs 3 to 9 were admissibly raised and maintained in the opposition proceedings (A. 12(4) RPBA), this would be immaterial unless ARs 3 to 9 had also been expressly maintained on appeal, the latter not being the case;

• Even if the respondent disagreed with the BoAs finding that ARs 3 to 9 were not part of the appeal proceedings, they should have stated so in reply to the summons and had sufficient time before the oral proceedings;

• In view of the above, ARs 3 to 9 were first raised in the oral appeal proceedings and could not be admitted under exceptional circumstance, because respondent’s believe that ARs 3 to 9 were part of the appeal proceedings would not be such a circumstance;

• Admitting ARs 3 to 9 at the stage of the oral proceedings would contravene the principle of procedural economy (i.e. postponement of the oral proceedings or remittal to the opposition division).

Comment:

The BoA in T1296/23 confirms the established strict approach that opposition-appeal proceedings are not intended to carry out a general review of decisions at first instance (cf. Case Law of the BoA 11th edition 2025, section V.A.3.2.3.i)). The board also confirms that in the contrary it is the parties obligation to set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and they should specify expressly all the requests, facts, objections, arguments and evidence relied on (cf. Case Law of the BoA 11th edition 2025, section V.A.3.2.2).

T1296/23 is in line with the established case law that submissions made by a party during administrative proceedings are not automatically part of any subsequent appeal proceedings (cf. Case Law of the Boards of Appeal 11th edition 2025, section V.A.4.2.3.b)). The board adds in the present case that auxiliary requests admissibly raised in first instance proceedings that were not discussed in the opposition division’s decision are not automatically basis of the appeal under A. (1)(a) RPBA, and should have been expressely raised at the latest in an answer to the summons of the boards of appeal (A. 12(1)(d) RPBA).

Lastly, the board in T1296/23 seems to push the strict line of case law (cf. Case Law of the BoA 11th edition 2025, section V.A.4.5.1.e)) in that the “exceptional circumstances” under which an amendment to the appeal case could be taken into account (A. 13(2) RPBA) are to be interpreted narrowly, i.e. explaining that the mere believe auxiliary requests were part of the appeal proceedings would not be such a circumstance.

Practice note:

Opposition-appeal proceedings at the European Patent Office are not for the Boards of Appeal to revisit the facts and circumstances of the case as if it was in the first instance department's place. It is the parties obligation to timely and expressly specify all its requests that should be part of the appeal proceedings as they could otherwise be considered amendments to the appeal case. Exceptional circumstances for admittance of such amendments might be interpreted narrowly and are no safe harbor.