Fixed Deadlines Over Subjective Events: T 0712/24 on the Discretion to Admit Late Requests
When an opposition division changes its preliminary opinion during oral proceedings, does it lose the discretion to reject new claim requests? T 0712/24 clarifies the strict boundaries of Article 114(2) EPC.
Picture defending a European patent in oral proceedings before the opposition division. The division unexpectedly reverses its preliminary positive opinion on novelty, prompting you to file a new main request on the spot. Does the division have the discretion to simply refuse this new request as late, or does their change of heart guarantee your right to amend?
Why did the Board reject the proprietor's argument on discretion?
In T 0712/24, the patent proprietor argued that the opposition division lacked the discretion to reject newly filed requests because they were a direct reaction to the division's changed opinion on novelty. The Board of Appeal firmly rejected this premise. The panel held that whether a submission is late, thereby triggering discretion under Article 114(2) EPC, depends exclusively on fixed time limits, specifically the deadline under Rule 79(1) EPC (reasons 2.7). The reason for the late filing, such as a shift in the division's preliminary opinion, does not negate the existence of discretion. Instead, it only plays a role in how that discretion is exercised (reasons 2.8).
How did the Board resolve the conflicting case law on late amendments?
The proprietor relied on older decisions, notably T 0688/16, which suggested that a division loses its discretion if it changes its preliminary opinion. The Board explicitly dismissed this as an isolated minority view. Relying on the need for legal certainty, the panel confirmed that making the existence of discretion dependent on subjective criteria contradicts the predictability required in proceedings (reasons 2.17). The Board aligned with the majority view, stating that the expiration of the Rule 79(1) EPC deadline universally triggers discretion, and the division correctly exercised it by finding the new use claims prima facie unallowable under Article 53(c) EPC.
Why did the Board find the dimensional limitation novel over D2?
Moving to the substance of the admitted Auxiliary Request 3, the claim required a first part insertable into a body and a second part dimensioned and shaped such that it cannot be inserted when the first part is inserted. The opponent argued that D2 disclosed this because the device was simply too long to be fully inserted. The Board disagreed, finding that the claim requires the first and second parts to be structurally differentiated by geometry and dimension. Because D2 did not disclose a second part distinctively shaped to prevent insertion, the feature was novel (reasons 5.3).
Why did the omitted shape feature not create an unallowable intermediate generalisation?
The opponent also attacked Auxiliary Request 3 under Article 123(2) EPC, arguing that extracting the circumferential sealing feature without the original requirement that it corresponds to the shape of the opening was an unallowable intermediate generalisation. The Board rejected this objection. The panel noted that the sealing effect does not depend on the sealing device having the exact same shape as the opening of the pressure chamber. The functional relationship did not mandate keeping the features tied together, meaning the amendment was allowable (reasons 6.2).
What must practitioners change when reacting to a shifted opinion after T 0712/24?
When the opposition division changes its mind at oral proceedings, patent proprietors cannot assume an automatic right to have new requests admitted. Because the division retains full discretion under Article 114(2) EPC, any reactive amendment must be prima facie allowable. In this case, converting a device claim to a use claim introduced a prima facie issue regarding therapeutic methods, justifying the non-admission. Proprietors must ensure that robust fallback positions are filed within the Rule 79(1) EPC period, rather than relying on the division's preliminary opinion as a procedural safety net.