Introduction
In decision T0823/23, the Board of Appeal grappled with the limits of what constitutes an “amendment to a party’s case” on appeal and whether a particular line of argument had been “admissibly raised” in the proceedings before the Opposition Division (OD). This discussion revolved around Article 12(4) RPBA 2020, which gives the Boards the power to exercise discretion over whether a submission on appeal should be admitted if it was not “admissibly raised” in the first-instance proceedings.
In short, the case is a prime illustration of how the Boards distinguish between arguments that are legitimately carried over from the first instance and new lines of attack that require justification for their late introduction. Since additional new lines of attack or new requests can dramatically affect the scope and direction of the appeal, the Board's emphasis on the requirements of “admissibly raised” clarifies the nature of an amendment for both opponents and patentees alike.
The Patent and the Invention
The underlying patent (European Patent No. 2098309) relates to a method for temper rolling a steel strip. Temper rolling is a finishing process applied to a steel strip or sheet to improve certain mechanical properties and surface qualities. Key features of the invention aimed to achieve high-tensile steel with controlled mechanical properties through a specified rolling elongation percentage and certain work-roll roughness parameters.
- Temper Rolling Mill: The patent describes at least one roll stand equipped with work rolls having a center-line averaged roughness Ra within a prescribed range (e.g., 3.0 to 10.0 µm in the main request).
- Steel Properties: The steel strip subjected to temper rolling has certain yield strength or tensile strength thresholds—e.g., yield strengths of 490 MPa or more, or tensile strengths of at least 980 MPa, depending on the request.
- Manufacturing Steps: Some auxiliary requests include features specifying that the steel strip is cold-rolled or that it has undergone annealing and quenching steps before the temper rolling process, thereby impacting the final mechanical properties.
Because steel strips can have widely varying mechanical properties based on the combination of rolling parameters and pre-processing steps, the interplay between claimed features (yield strength, tensile strength, annealing or quenching treatments, etc.) became central to the discussion of added subject-matter (Article 123(2) EPC) and novelty or inventive step.
Decision T 0823/23: Major Points and Arguments
The Opposition Division initially revoked the patent but was overturned by a first appeal (T 1950/16). On remittal, the OD found the claims allowable (in amended form). Opponent 2 then appealed, continuing to challenge the patent on multiple grounds: novelty, inventive step, and also seeking to reintroduce or refine an objection about sufficiency of disclosure.
Below are key highlights of the Board’s analysis and the parties’ arguments.
Amendment to Case Under Article 12(4) RPBA
The core question: Whether an objection (in this instance, an objection under Article 100(b)/83 EPC) was “admissibly raised” in the first instance. If not, introducing it on appeal would qualify as an “amendment” that the Board could refuse to admit.
Opponent’s Position: The opponent contended it had already advanced the sufficiency objection during first-instance proceedings after the initial remittal. Hence, no new ground was introduced.
Patentee’s Position: The patentee insisted the sufficiency-of-disclosure objection was late-filed, had not been substantively decided by the OD, and thus was not part of the contested decision.
Board’s Reasoning on “Admissibly Raised”
Not Just Mentioned, but Admitted
The Board emphasized that merely bringing an objection up is not enough. It must have been raised early enough—and crucially, it must have cleared any discretionary hurdle at the first instance (i.e., the OD must have admitted it, or would have admitted it if forced to decide).
Perspective of a First-Instance Department
The Board explained that determining whether a line of argument was “admissibly raised” requires them to take the vantage point of the OD. If the OD had had to make a formal decision on the matter, would it—under the correct legal criteria—have admitted that line of argument?
Under Article 12(4) RPBA
Because the sufficiency objection was not part of the OD’s final decision, the Board effectively had to conduct a hypothetical exercise: if the OD were faced with admitting or refusing that objection, how would it have reasonably acted under the EPC framework and the Guidelines?
Outcome: The sufficiency-of-disclosure objection was deemed not “admissibly raised” at first instance since the OD had not formally admitted it—and the Board further concluded that, had a decision been required, the OD would likely have refused to admit. Therefore, raising it now at the appeal stage was an “amendment to the case” that the Board refused to admit.
Novelty Over the Prior Art
The main request covered a method with particular elongation percentages and work-roll roughness. The opponent attacked novelty based on certain paragraphs of D1. The patentee insisted that multiple selections from D1 were needed and that D1 never unequivocally disclosed all relevant ranges. However:
The Board found that D1 indeed disclosed a range or an overlapping range for elongation (0.1% or more) and a suitable roughness (1.0 to 4.0 µm or possibly up to 4.0 µm).
- No extensive “picking and choosing” was required; the Board concluded that the invention’s parameters were inherently included in a single passage.
- 2.3 Auxiliary Requests and Added Subject-Matter
Auxiliary requests introduced features specifying “tensile strength of 980 MPa or more” or additional manufacturing steps like annealing/quenching. The Board carefully checked the original application for direct and unambiguous support. In short:
Auxiliary Requests 1 & 2: The Board found the addition of “980 MPa or more” was only originally disclosed in contexts that included specific further steps (annealing/quenching/tempering). Omitting those steps gave rise to an unallowable intermediate generalization. Hence these requests failed Article 123(2) EPC.
Auxiliary Request 3: Now included the relevant manufacturing steps (quenching, tempering, etc.) to produce the 980-MPa steel. The Board considered this combination to have been properly supported in the application.
The Final Outcome: Admittance and the Road to Article 12(4) RPBA
When a First-Instance Department Did Not Decide
If a new ground or line of argument is raised but never formally decided upon, the Board has to check if that line would have been admitted or refused under the OD’s legitimate discretion. If likely refused, it is not “admissibly raised.”
No Blanket Right to Re-Litigate
The boards will not re-litigate new or additional issues not decided by the OD unless the scenario meets the “admissibly raised” standard. This ensures that parties present their full arguments as early as possible, preventing undue expansions of the case at a late stage.
Same Standard for Grounds and Arguments
As the Board explained, the same logic covers brand-new lines of attack (like a fresh ground under Article 100(b) EPC) or previously known but belated arguments about novelty or inventive step.
Lessons to Be Learned
The Importance of “Admissibly Raised”
For an opponent or any party wanting to raise new lines of argument:
Doing so promptly is crucial.
- If an OD never admitted the line of argument, it remains subject to the Board’s scrutiny under Article 12(4) RPBA.
- Demonstrating that the OD would have admitted it if forced to decide is key to survival on appeal.
Have a Clear Procedural Tactic
If a new argument is critical, the opponent should request a formal OD decision on its admittance. That way, the OD’s stance is established. If the OD denies admission, that can be appealed. If the OD accepts, it becomes part of the final contested decision. But if no decision is made, the argument remains in a procedural gray zone on appeal.
Late Submission: High Relevance Needed
Even if properly “carried over,” the submission can be excluded if insufficiently relevant or if other justifications for denial (lack of timeliness or efficiency) outweigh the potential relevance. The Board is not obligated to consider belated arguments absent exceptional reasons.
Conclusion
Decision T 0823/23 underlines the significance of Article 12(4) RPBA in shaping a party’s appeal case. Even if a ground or argument was “raised” at first instance, the Board must verify if it was truly “admissibly raised”—meaning the first-instance department would have accepted it under a correct exercise of discretion. Failing that, the argument is considered an amendment, which can be refused on appeal if no exceptional circumstances justify its late introduction. For both patentee and opponent, the procedural lessons are clear: ensure all lines of argument or grounds of opposition are timely and explicitly decided upon. Otherwise, they risk being blocked at the appellate stage.
Furthermore, the Board’s approach to dealing with newly added or re-focused arguments—especially around novelty and inventive step—shows that carefully identifying direct and unambiguous disclosure or synergy with the original technical context is paramount. Where the requested combination of features is derived only in certain manufacturing sequences, omitting them often leads to an unallowable intermediate generalization. The Board’s refusal to remit the case underscores that the entire requests can be assessed in a single sweep on novelty, inventive step, or added subject-matter once it is recognized that the factual scenario does not present “special reasons” for remittal.
Ultimately, T0823/23 serves as a powerful reminder that the Board expects robust, well-structured submissions from the start. Properly raising and having an objection admitted in first-instance proceedings is the gateway to ensuring that the argument is recognized as part of the final “decision under appeal.” Anything else leaves the argument on uncertain ground, vulnerable to the Board’s discretionary refusal to entertain it at the next stage.
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.