Late requests allowed in EP appeal proceedings; conditions apply

In its Decision T 1311/13 of 17 January 2018 (re: EP 1 224 299), the EPO’s Board of Appeal has provided clarification as to late-filed requests in appeal proceedings. Novagraaf’s Charles-Henri Bertaux explains the implications.

European Patent (EP) 1 224 299 is a patent claiming a method for preserving a sample from Gram-negative contamination, comprising adding to said sample a polypeptide selected from a defined group of sequences, a purification/ detection process of Gram negative bacteria using said sequences, or some coupled to other proteins/peptides.

In the latest action (following an initial opposition and appeal), the Board of Appeal summoned the patent proprietor to oral proceedings. In a communication annexed to that summons, the Board expressed a provisional, non-binding opinion on the issues of the case. The patent proprietor filed a new main request and first auxiliary request in response to that summons. Following that notification, the board identified the items which seemed to be of particular importance and/or made observations which could help to concentrate the oral proceedings on essential items.

The new main request corresponded to the one filed with the earlier appeal, with the exception of a sequence in a claim that had been deleted. The auxiliary request corresponded to the main request filed in the appeal except with the deletion of two claims.

Too late to stand?

These requests could be considered as late filings, in that they were filed after the date of the oral proceedings had been fixed. An evaluation of their eligibility was thus carried out, namely: as the filings came in late should they be refused?

As a general rule, the Boards of Appeal examine and admit modifications and amended main/auxiliary requests after the date of the oral proceedings has been fixed, if: (1) their late filing can be said to be justified; (2) it does not extend the scope of the discussion defined by the grounds of appeal and answers, and (3) the request is prima facie relevant.

In its decision, the Board of Appeal, exercising its discretion (Article 114 (2) EPC), admitted these late filing elements/requests, on the grounds there were:

• a direct reply to an objection (under Article 123 (2) EPC) issued in its notification, and
• did not, by their nature, change the object of the appeal nor raise new considerations/objections.

It appears that under certain conditions, therefore, requests/amendments filed late in an appeal procedure, in particular prior to oral proceedings, could be accepted and used to defend the patentability of the invention. It is worth considering such actions, if required, during EP procedures.

For further information or support on the patent prosecution process, including techniques to ensure the smooth running of examination, opposition and appeal procedures, please speak to your patent attorney or contact us below.

Charles-Henri Bertaux is a Patent Attorney at Novagraaf in Paris