Admissibility Of Requests During Opposition Proceedings

Recent EPO Board of Appeal decision T 1214/21 has confirmed that opposition divisions cannot arbitrarily restrict the number of claim requests to be considered during oral proceedings. Moreover, decisions on the admissibility and allowability of claim requests must be reasoned.

Background

During opposition proceedings before the EPO, it is common for patent proprietors to submit multiple claim requests for consideration by the division. Theses typically include a main request in which the proprietor argues for their most preferred outcome – usually maintenance of the patent on the basis of the claims as granted or with relatively minimal amendments – and auxiliary requests defining narrower fallback positions. The opposition division should examine each of the requests in the order presented by the proprietor until one of the requests is found to be allowable or no requests remain. If a particular request is found to be allowable, the division will not