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EPO Board of Appeal says no to Third Party Opinions filed during appeal proceedings which could and should have been filed earlier

In the recently issued decision of T 2255/15, three sets of third-party observations (TPOs) were filed during the appeal proceedings. As both Article 114(2) EPC and the Rules of Procedure of the Boards of Appeal (RPBA), primarily set out in Article 12, concern the timing of submissions made by parties to the proceedings, an interesting question arose: do the criteria set out in Article 114(2) EPC and Article 12 of the RPBA equally apply to observations by third parties. The Board of Appeal says yes.


The decision in more detail

In first instance proceedings concerning European patent EP1369037, the Opposition Division concluded as follows:

  • The subject-matter of claims 1 and 2 as granted was not novel in view of the disclosure of each of D1, D2 and D4.
  • The subject-matter of claims 1 and 2 according to AR1 was not novel in view of the disclosure of D2 and D4.
  • The subject-matter of claim 1 according to AR2 and AR3 was not novel in view of the disclosure of D4.
  • The claims according to AR4 met the requirements of the EPC.

Both the Proprietor and the Opponent appealed: the Proprietor argued that both the claims as granted and those of AR1, AR2 and AR3 are both novel and inventive whilst the Opponent argued that claim 1 of AR4 lacks clarity, contains added subject matter, lacks novelty and lacks inventive step.

TPOs with documents A006, A007, A012, A013, A014 and A015 were submitted during the appeal proceedings on 16 February 2016, 14 November 2018 and 31 May 2019. Novelty objections were submitted based on A006, D3a and A012. Inventive step of the claimed subject-matter was objected to in view of A006 and D3a. Reference was also made to A013.

During the appeal proceedings, the Proprietor requested that none of the aforementioned TPO, or indeed the documents and annexes referred to therein, be admitted into the proceedings on the basis that they were late filed.

In deciding on the admissibility of the TPOs, the Board recognised that in accordance with both Article 115 EPC itself and the case law of the EPO Boards of Appeal, observations by third parties can be filed during appeal proceedings. However, they asserted that Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings. In their opinion, as Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations filed by third parties. On the basis that the Rules of Procedure of the Boards of Appeal (RPBA) specify criteria (e.g. in Article 12(2) and 12(4)) for exercising this discretion during appeal proceedings with respect to the submissions of the parties, the Board concluded that these criteria must also apply to the submissions of third parties.

Applying these principles to the three sets of TPOs filed in the present case, the Board noted that none of the objections raised in the TPOs had been raised before in the opposition or appeal proceedings and none constitute a direct and timely response to facts, objections, arguments or evidence on which the decision under appeal is based. Furthermore, the Board noted that the objections contained in each set of TPOs could and should have been made in opposition proceedings.

As the purpose of appeal proceedings is to review the Opposition Division’s decision rather than to start a second opposition proceedings, the Board held both the TPOs, and the submissions made by the Opponent on the basis thereof, inadmissible.

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