Carry-over auxiliary requests in EPO appeals: Why early procedural planning can protect commercial value

When an EPO opposition turns on a small number of claim requests, procedure can become just as important as substance. #

For patent proprietors, auxiliary requests are often the difference between retaining protection and losing an important asset. Yet in many cases, the lower-ranked requests that were intended as fall-back positions are never actually discussed by the Opposition Division.

That may seem harmless at first. In appeal, however, those untouched requests can become highly vulnerable.

The question is simple, but the answer is not always. What happens to auxiliary requests filed in opposition but never considered by the first instance department? These are commonly referred to as carry-over requests. Their fate on appeal can have significant commercial consequences, particularly where the patent covers a core product, platform technology, or freedom-to-operate position of real strategic value.

Appeal is not a second chance to rebuild the case #

Since the 2020 revision of the Rules of Procedure of the Boards of Appeal, the EPO has adopted a more disciplined approach to appeal proceedings. The message is clear; appeal is not a forum for reshaping a case from the ground up. Parties are expected to present their case early, clearly, and in a procedurally sound way.

For patent proprietors, that means auxiliary requests should not be treated as a safety net to be refined later. If a request was not part of the decision under appeal, it will commonly face a real admissibility hurdle on appeal.

Why carry-over requests are at risk #

As a matter of principle, a request that the Opposition Division never considered is unlikely to form part of the case for the purposes of Article 12(2) RPBA. In practice, that usually means the request will be treated as an amendment under Article 12(4) RPBA. Admission then lies within the Board’s discretion, unless the proprietor can show that the request was admissibly raised and maintained in the opposition proceedings.

That distinction is critical. If a proprietor cannot demonstrate that the request was properly introduced below, there is a genuine risk that it will never be considered on its merits in appeal.

Clarity at first instance matters #

In many cases, whether a request was maintained should be clear. In practice, however, it is unwise to rely on assumption. Proprietors should make it expressly clear during first-instance oral proceedings that any lower-ranked auxiliary requests remain maintained, and that position should ideally be reflected in the minutes.

This is not simply procedural tidiness. A clean record can make the difference between a request being admitted and a request being lost before its substance is ever addressed.

The case law remains unsettled #

The Boards of Appeal have not yet settled on a single consistent approach to what makes a carry-over request “admissibly raised” in opposition.

In some decisions, the issue has not been examined in detail. Requests filed in opposition have been treated as admissibly filed without further analysis, including in T 0042/20 and T 0476/21.

Other decisions take a more permissive approach. In T 0924/22, Board 3.2.04 indicated that divergence between requests did not necessarily matter for admissibility, provided the requests were filed before the Rule 116 EPC deadline. The Board also noted that the requests had been substantiated to the required level in opposition, and that the brief substantiation on appeal was enough for the respondent and the Board to understand the proprietor’s position. On that basis, the requests were admitted.

By contrast, other Boards have taken a more demanding view. In T 1800/20, Board 3.4.02 considered several factors relevant to admissibility, including the filing date of the request, whether it was suitable to address the objections, whether it introduced new issues, and the degree of convergence with the requests discussed at first instance. On that approach, lack of convergence counted against admission.

Similarly, in T 0364/20, Board 3.3.02 suggested that the relevant question was whether the Opposition Division would have admitted the request if it had needed to decide the point. The Board referred to timeliness, complexity, procedural economy, the divergence of the claim set, and whether the amendments overcame existing objections without creating new ones. Even so, the Board appeared to accept that the threshold for admission at first instance is lower than the threshold on appeal.

Recent decisions underline the same practical risk #

More recent decisions point in the same direction. In T 1135/22, the proprietor argued that auxiliary requests filed in opposition had automatically become part of the appeal case because they were mentioned in the “Facts and requests” section of the opposition decision. The Board did not accept that. A bare reference to requests in the decision was not enough to show that they formed the basis of the decision under appeal. The proprietor also failed to demonstrate that the requests had been admissibly submitted and maintained. They were therefore treated as amendments, with admissibility left to the Board’s discretion.

T 1820/22 sends a similar message from the opposite direction. There, the proprietor filed a large number of new auxiliary requests for the first time in appeal, saying that the need for amendments only became apparent after a careful reading of the opposition decision. The Board was not persuaded. Nothing had changed in the underlying facts, and a late realisation by the proprietor did not justify holding the requests back until appeal. The requests were not admitted.

The practical point is clear. A request is safer if the record shows not only that it was filed, but also that it was clearly maintained, clearly tied to a particular objection, and properly brought into the debate at first instance.

T 0246/22 points in the direction of a more structured test #

The difference in approach was considered again in T 0246/22, where Board 3.5.03 rejected several of the more general formulations used elsewhere. The Board suggested a more structured test.

For a request to be treated as admissibly raised, the proprietor must show:

• that the request was filed in due time, usually before expiry of the time limit set by the Opposition Division under Rule 116(1) and (2) EPC; and
• that it was made clear, either expressly or by unambiguous implication, why the request was filed, namely, which objections it was intended to overcome and how it was said to do so.

In T 0246/22, the Board found that the proprietor had not clearly identified the purpose of the requests or explained in a concrete way how the objections were addressed. The requests, therefore, failed.

Whether this approach will be followed more widely remains to be seen. For now, it underlines a practical point of real significance. A request is much more likely to survive on appeal if the record clearly shows both when and why it was filed.

What this means in practice for proprietors #

The commercial lesson is simple. If a patent matters, the appeal strategy starts in opposition.

Lower-ranked auxiliary requests should be filed early and, in most cases, no later than the Rule 116 EPC deadline. More importantly, they should be substantiated at the time of filing. The record should make clear which objection each request is intended to address, how the amendment resolves that objection, and why the request fits within the overall claim strategy.

Generic or formulaic wording is unlikely to be enough. A request may be on file, but still vulnerable if the procedural record does not show why it was filed and what it was intended to achieve. T 0246/22 is a clear indication that substantiation is not a formality. It is part of preserving the request for later stages.

That substantiation should also be repeated at the earliest stage of appeal, whether in the statement of grounds or the response. Recent petition proceedings, including R 10/09 and the pending matters R 9/23 and R 19/22, show how problematic late or inadequate substantiation can be.

If a new request must be filed in appeal #

There will always be cases where a new request in appeal is unavoidable. If that happens, the proprietor should explain at the same time as filing the request why it could not have been filed earlier. If that explanation is delayed, it may itself create an admissibility problem.

The request should also be kept as focused and convergent as possible. The more directly it answers a specific objection, and the fewer new issues it raises, the stronger the case for admission. A carefully prepared request with a clear procedural purpose will usually be in a better position than a late, complex, or poorly explained amendment.

A further safeguard for commercially important cases #

In higher-value cases, it may also be sensible to keep a divisional application pending. That can provide an additional back-up if the desired amendments cannot be secured in opposition or appeal. While not a substitute for diligent procedural strategy, it can be an important portion in a broader portfolio risk-management approach.

Conclusion #

Carry-over auxiliary requests remain an area where procedural detail can have substantial commercial consequences. The Boards of Appeal continue to apply a strict approach to amendments in appeal, and the direction of travel is clear.

For patent proprietors, the message is not simply to file auxiliary requests. It is to file them early, maintain them clearly, and substantiate them properly. If a request may matter later, it should already be part of the case when it matters most. In the current procedural climate, waiting until appeal to clarify the position is rarely the best strategy.

If you are involved in an EPO opposition, early procedural decisions can have consequences well beyond the first-instance proceedings. Our European patent attorneys can help you develop an opposition and appeal strategy that protects your position and preserves the options that matter commercially. Talk to our team.