The recent decision in T 892/24 is the latest contribution to the ongoing debate concerning the application of Article 12(6) RPBA 2020 and, in particular, the admissibility of claim requests filed for the first time in appeal proceedings. The decision has already attracted commentary suggesting that the Boards of Appeal have adopted irreconcilable approaches, turning admissibility into a matter of chance rather than principle.
A closer examination of the emerging case law suggests a more nuanced picture. While there are undoubtedly different strands of jurisprudence, the decisions may be better understood as reflecting differing views as to when a party is under an obligation to preserve fallback positions during first-instance proceedings. Rather than demonstrating a fundamental inconsistency, the recent decisions may be asking a common question: When does a party’s failure to file a fallback request become a procedural choice that it must live with on appeal?
The facts of T892/24
The patent in suit concerned an illuminated vehicle emblem. Claim 1 as granted required an emblem that was “preferably” suitable for both interior and exterior automotive use. The Opposition Division rejected the opposition and upheld the patent as granted, including finding that the patent’s priority claim was valid.
On appeal, however, the Board reached a different conclusion. The Board held that the priority document disclosed an emblem suitable for both interior and exterior automotive use, but did not disclose that this characteristic was merely preferred. As a result, claim 1 as granted was not entitled to priority. The priority document therefore became prior art under Article 54(2) EPC and destroyed the novelty of the granted claim.
The proprietor responded to the priority objection on appeal by filing an auxiliary request deleting the word “bevorzugt” (“preferably”) from the claim. This amendment restored entitlement to priority and thereby overcame the novelty objection arising from the priority document. However, the opponent argued that the request was prevented from being admitted into the appeal proceedings under Article 12(6) RPBA because the priority objection had been raised in the notice of opposition and the proprietor could and should therefore have filed the request making that amendment during the opposition proceedings.
In contrast, the proprietor maintained that there had been neither any reason nor any procedural need to do so. According to the proprietor, an intention to file auxiliary requests had been raised during the oral proceedings before the Opposition Division, but the matter was not pursued because the Opposition Division considered the priority claim valid and ultimately rejected the opposition. Ultimately, the Board admitted the request and upheld the patent. In doing so, the Board expressly stated that it followed the reasoning of T 141/20, which held that the mere existence of an objection during opposition proceedings does not automatically mean that a corresponding auxiliary request necessarily should have been filed at first instance. The decisive question was whether there had been a genuine procedural need to file the request. Since the Opposition Division never questioned the validity of the priority claim, the Board concluded that no such need had arisen.
When does a request become one that “should have been submitted”?
To understand the significance of T 892/24, it is useful to compare it withT 217/23 and T 45/22.
T217/23: The consequences of deliberate non-filing
In T 217/23, objections of insufficiency and inventive step had been raised from the outset in the notice of opposition. The proprietor chose to address those objections through argument alone and filed auxiliary requests only in relation to a separate Article 123(2) EPC issue. On appeal, however, the proprietor sought to introduce new auxiliary requests directed specifically to the insufficiency and inventive-step objections that had existed throughout the opposition proceedings.
The Board refused to admit those requests. In that case, the Board emphasised that parties are expected to present their complete case as early as possible and rejected the argument that a favourable preliminary opinion from the Opposition Division justified withholding fallback requests until appeal. The Board regarded the requests as ones that could and should have been submitted during the first-instance proceedings and therefore concluded that Article 12(6) RPBA required that they not be admitted.
The decision reflects a strong commitment to procedural front-loading and to the principle that parties should present their complete case before the Opposition Division. Once a relevant objection has been raised and the proprietor has a realistic opportunity to formulate fallback positions, the proprietor may be expected to place those positions on file rather than reserve them for appeal.
T0045/22: A change of mind?
T 217/23 can be understood as a case where the proprietor chose to rely on argument rather than fallback requests. T 45/22 presents a slightly different factual situation.
In T 45/22, some of the independent claims originally pursued by the proprietor were found to contain added matter. In response, during oral proceedings before the Opposition Division, the proprietor filed a single auxiliary request deleting the offending claims from the proprietor’s main request, which was subsequently found to be allowable by the Opposition Division. On appeal, however, the proprietor sought to combine that successful amendment with other auxiliary-request structures that had existed during the opposition proceedings but had not previously been pursued in that combination.
In contrast to T 892/24, in T 45/22, the Board considered that additional fallback positions, later filed for the first time on appeal, could and should also have been filed during the first-instance proceedings and were not admitted into the proceedings.
What makes T 45/22 particularly significant is that the proprietor had already begun constructing a hierarchy of fallback positions before the Opposition Division. The Board’s criticism was therefore not merely that a request was absent, but that the proprietor had effectively chosen where to stop.
Viewed this way, T 45/22 is arguably not simply a front-loading case. Rather, it is a case about procedural choice. The Board considered that the proprietor had already been required to make strategic decisions regarding fallback requests and later sought to revisit those decisions on appeal.
Viewed together, T 217/23 and T 45/22 suggest that Article 12(6) RPBA is increasingly being used to police procedural choices made during opposition proceedings. Once a proprietor has decided either not to file a fallback position at all, or to stop at a particular level of fallback protection, Boards increasingly consider that such a choice cannot be revisited on appeal.
The reasoning in T 45/22 also finds support in T 1456/20. In that case, the Board held that a proprietor could not reintroduce on appeal subject-matter the examination of which had been deliberately foregone during the opposition proceedings. The proprietor had chosen a particular route for overcoming a novelty objection before the Opposition Division and later sought to pursue a different route on appeal. The Board considered this to be inconsistent with the judicial review function of appeal proceedings and concluded that the alternative amendment route should already have been pursued at first instance. In doing so, the Board emphasised that reintroducing subject-matter whose examination had been deliberately avoided in the proceedings below is generally contrary to Article 12(6) RPBA.
The relevance of the proprietor’s conduct in T0892/24
An interesting feature of T 892/24 is the proprietor’s assertion that it had indicated an intention to file auxiliary requests during the opposition oral proceedings but was informed by the chair of the Opposition Division that this was unnecessary because the patent would be maintained.
The written decision does not suggest that the Board regarded this as an independent legal basis for admission. The formal reasoning remained focused on the absence of any procedural need to file the request before the Opposition Division.
Nevertheless, it is difficult to ignore the practical significance of this factual background. The proprietor’s conduct appears inconsistent with any attempt to reserve fallback positions for appeal. Instead, the proprietor maintained that it had indicated a willingness to file auxiliary requests but had been given no reason to believe that such requests were required.
This helps explain why the Board may have regarded the case differently from T 217/23 and T 45/22. In those cases, the Boards considered that the proprietors had consciously decided not to preserve available fallback positions and then sought to revisit that choice on appeal. In T 892/24, by contrast, the Board was persuaded that no such procedural choice had been made.
A possible reconciliation
The apparent conflict in the case law may therefore be less dramatic than it first appears.
A common thread can be identified if the focus shifts from the mere existence of an objection to the procedural choices available to the party at the time.
An interesting feature of the case law is that Boards often appear to ask an implicit question:
“Would it have been reasonable to expect this exact request to have been before the department of first instance?”
Where a request represents the natural consequence of the case as it emerged from the first-instance proceedings or the decision under appeal, admission may be easier to justify. By contrast, where the request represents an alternative amendment strategy that could equally well have been pursued during the first-instance proceedings, Boards are increasingly inclined to regard its omission as a conscious procedural choice. In those circumstances, the request is more likely to be viewed as one that “should have been submitted” before the department of first instance.
On this view, a request becomes one that “should have been submitted” when the relevant party has reached a point in the first-instance proceedings at which it can reasonably be expected to decide whether to preserve the relevant position, but consciously chooses not to do so.
This rationale provides a coherent explanation for all these decisions. In T 217/23, the proprietor chose to rely on argument rather than fallback requests. In T 45/22, the proprietor chose where to stop building its fallback hierarchy. In T 1456/20, the proprietor chose one amendment path and deliberately forewent examination of another. In T 892/24, by contrast, the Board was persuaded that no equivalent procedural choice had arisen because the priority objection had never become a live issue before the Opposition Division.
Seen in that light, the apparent divergence between T 217/23, T 45/22 and T 892/24 may be less about competing interpretations of Article 12(6) RPBA and more about differing assessments of whether the proprietor had already been required to make, and had in fact made, a procedural choice regarding the relevant fallback position.
Conclusion
T 892/24 does not eliminate the uncertainty surrounding Article 12(6) RPBA. The decision sits within an ongoing debate between a more permissive approach that focuses on whether there was a genuine need to file a request at first instance and a stricter approach that emphasises the obligation to file all fallback positions at the earliest opportunity.
However, the case law may not be entirely incoherent. A more persuasive explanation is that the Boards are increasingly concerned with whether a party made a conscious procedural choice not to file or maintain a fallback position when it had the opportunity and procedural need to do so. Where such a choice can be identified, admission on appeal becomes difficult or impossible. Where it cannot, as in T 892/24, Boards may be prepared to conclude that the request was not one that “should have been submitted” during the proceedings leading to the appealed decision.
For practitioners, the lesson is stark. A proprietor who wishes to rely upon a fallback position should assume that it must actively be filed before the Opposition Division if it is to be relied upon later. Decisions such as T 217/23 and T 45/22 indicate a growing willingness on the part of the Boards to treat the failure to file a fallback position as a conscious procedural choice. Once that choice has been made, an attempt to introduce the omitted request on appeal may be viewed not as a legitimate reaction to the appealed decision, but as an impermissible change of case. T 892/24 demonstrates that exceptions remain where no genuine need to file the request arose at first instance. Nevertheless, the prudent assumption is that any fallback position not filed before the Opposition Division is lost forever.
