T 2377/22 - Multiple independent claims in opposition

Key points

• The Board, in translation: "auxiliary request 2 contains - in contrast to the granted patent, which contains only a single claim  -  three independent claims, each directed to a cosmetic oil-in-water (O/W) emulsion (claims 1, 13, and 24). Independent claims 1, 13, and 24 were formed from granted claim 1 by incorporating the features of one of the dependent claims 2, 3, and 4, respectively."
• "The appellant  [opponent] referred to decision T 0181/02. Point 3.2 of that decision states that it is normally sufficient to amend an independent claim by incorporating one further feature in order to respond "in sachdienlicher und erforderlicher Weise"  to an objection of lack of novelty. Additional independent claims are only necessary in exceptional situations."
• "However, the same point in the cited decision also points out that this may be the case under certain circumstances, for example where two granted dependent claims (e.g., claims 2 and 3) are joined in parallel to a single independent claim (e.g., claim 1). In that case, the filing of two independent claims (e.g., containing the features of claims 1 and 2 and of claims 1 and 3) would be possible. This reasoning is essentially consistent with that in decisions T 0223/97 (point 2.2 of the Reasons) and T 0428/12 (point 3 of the Reasons). The board finds that this also applies to the present case and agrees with the interpretation of Rule 80 EPC that can be derived from those decisions."
• As a comment, the term "sachdienlich" comes from Rule 79(3) EPC. 

EPO 

The link to the decision is provided after the jump.

T 2049/23 - Watermelons and discoveries

Key points

• The opponents include "Keine Patente auf Saatgut! e.V.". The patent concerns a conventionally-bred watermelon.
• The opponent argued that "the transitional period created by opinion G 3/19 should not be taken into account and that it did not matter whether the patent applications were filed before or after July 2017."
• The present Board: "in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board of Appeal [in G 3/19] further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force"
• It seems that the opponent did not invoke Article of the AC decision that inserted Rule 28(2): "This decision shall enter into force on 1 July 2017. Rules 27 and 28 EPC as amended by Articles 1 and 2 of this decision shall apply to European patent applications filed on or after this date, as well as to European patent applications and European patents pending at that time" (OJ EPO 2017, A56). This is a pity, because the EBA did not expressly set aside that part of the AC's decision.
• On inventive step:  the appellants  [opponents] submit that the claimed watermelon plants having a bush growth habit constitute a discovery rather than an invention. The board understands this as an objection under Article 100(a) and Article 52(2)(a) EPC to the effect that the claimed subject-matter is not a patentable invention but a discovery.'" 
•  "According to the case law of the Boards, a substance which occurs in nature can be considered an invention when it is shown to give rise to a technical effect. This principle is reflected in Rule 27(a) EPC, according to which biotechnological inventions are patentable if they concern biological material which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature. 
• For example, if a microorganism is found in nature and shown to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. 
• Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy
•  "The board considers that the plants (and plant tissues) of claims 1 to 16 do not constitute a discovery." 
• "While the "home-garden diploid watermelon [with] an interesting growth type" mentioned in paragraph [0119] of the patent [] could be argued to be a discovery, it is not part of the claimed subject-matter. Instead, the mutated allele present in said plant has been transferred to other plants (i.e. those producing seedless fruit) and these have been shown to produce a technical effect: as set out in paragraph [0001] of the patent "this plant can be grown at a higher density in the field compared to traditional non-bush triploid watermelon hybrids, leading to a higher fruit yield per hectare compared to triploid hybrids with normal growth habit (having an average longest vine length of above 200 or above 300 cm)"."
• The appeal is dismissed. 

EPO 

The link to the decision can be found after the jump.

T 0883/23 - Plausibility and priority

Key points

• In this appeal, the Board found the second medical use claim to be valid (novel and inventive and sufficiently disclosed in the patent). Still, the Board - obiter it seems - held that the priority was invalid because, whereas the application as filed contained the results of a clinical trial, the priority document contained only the protocol for that study (without the results).
• Hence, the 'plausibility' or credibility requirement of G 2/21 r. 74 and r.77 for second medical use claims applies by analogy to the priority application, it seems.
• The Board's headnote formulates it differently: "The Enlarged Board of Appeal determined in G 2/98 that it is a condition for the compliance with the requirement of "the same invention" that the claimed subject-matter is directly and unambiguously derivable from the earlier application. However, the Enlarged Board did not conclude that the requirement of "the same invention" is necessarily satisfied if this condition is fulfilled, irrespective of any technical information associated with the claimed subject-matter, which is only described in the subsequent patent application."

EPO 

The link to the decision can be found after the jump.

T 1847/23 - Plausibility and common technical problems in the technical field

Key points

•  For inventive step: "The opposition division considered that the technical information provided by Annex 3 had to be taken into account for the assessment of an allegedly unexpected effect. In its decision, the opposition division explained that it was convinced that the problem of stability is a common technical problem in the technical field of pharmaceutical compositions comprising an active pharmaceutical compounds. This view is also shared by the respondent. The Board however disagrees with this conclusion."
• The Board recalls G 2/21.
• "In the present case, the technical effect shown in Annex 3 is not derivable from the application. The reasons are the following:
•  the application as filed does not contain any observation in relation to the stability of the claimed compositions, even less at specific low or very low temperatures or after freeze/ thaw cycles; none of theses aspects are mentioned or derivable from the original application.
•  the preparation and/or storage of a drug composition at low or very low temperatures is neither systematic nor widely practiced. Indeed, there is no indication in the application as filed or in the prior art that the compositions comprising maropitant have to be prepared and/or stored under these conditions. Hence, the preparation and/or the storage at extremely low temperatures, as well as the behaviour of the claimed compositions at these temperatures does not appear to constitute a property tipically sought by a person skilled confronted with the problem of preparing this class of compositions.
• This is confirmed in particular by the teaching of other documents such as D10 which indicates that the [particular type of] injectable formulation is to be stored at controlled room temperature of 20 to 25°C (see D10, page 3), or D40 which recommends to not freeze the commercial injectable product comprising maropitant (see page 6).

• Consequently, the behaviour of compositions comprising maropitant under low or very low temperatures cannot be considered as a common problem as argued by the opposition division in its decision.

  In view of the above, the Board considers that the skilled person would not derive the effects considered in the experiments of Annex 3 as being encompassed by the technical teaching and embodied by the originally disclosed invention. Thus, these effects cannot be relied upon in light of decision G2/21."

• However, "Examples 5 and 6 of the contested patent show convincingly a good injection site tolerance and antimicrobial efficacy. Accordingly, the problem is the provision of an alternative composition comprising maropitant suitable for administration to veterinary animals which leads to a low level of pain on injection."

• The claim defines a range of 7-18 mg/mL for a certain compound; the prior art teaches 20 mg/mL. The interested reader may read the entire decision to find out why the Board considers the claim to be inventive.

• 
  

EPO 

The link to the decision can be found after the jump.

T 0336/23 - Filing a new main request

Key points

• The proprietor files a new main request, with limited claims, before the OD. The OD revokes the patent. The proprietor appeals. Can the proprietor defend the claims as granted in the appeal?
• "The impugned decision was based on an amended 'main request' (items I.8 and I.9 of the decision under appeal) as the sole request. It does not additionally deal with the patent as granted. That the patent as granted was discussed extensively during the oral proceedings before the opposition division does not change this fact.
• The appellant [proprietor] was also of the view that the patent as granted had never been expressly withdrawn. However, a request can be withdrawn implicitly and there is an implicit withdrawal when the circumstances leave no doubt that the party did not intend to pursue a request
• "Parties are generally required to file requests in a clear order [], implying that there normally cannot be two requests of the same rank. It is therefore not objectionable that the opposition division understood the filing of the amended "main request" as replacing the previous sole and thus "main" request. The term "main request" might not be precise where there is only a single request, but it is frequently used in such a case. Similarly, the appellant used the term "main request" also in relation to their sole request during the appeal proceedings."
• It is not clear whether the opposition division did - as it should have done - clarify the parties' final requests before closing the debate. The minutes of the oral proceedings do not report that the parties were asked to confirm their final requests. Nevertheless, as outlined in T 52/15 (Reasons 1.7), "if a procedural act performed by a party is clear and there are no reasons to suggest that its intentions were not correctly understood, e.g. on account of subsequent actions and/or statements, that party cannot expect not to have to bear the consequences of that procedural act". 
• "the opposition division stated [during the oral proceedings] that "the ground of opposition according to Art. 100(c) EPC prejudices the maintenance of the patent as granted", as reported in the minutes (pages 1-2). However, contrary to the appellant's view, this statement does not form an intermediate decision which automatically forms part of the final decision. It is the consistent view of the boards of appeal that the minutes of oral proceedings are not decisions within the meaning of Article 106 EPC"
• Indeed, oppositions and opposition appeals are no longer a very forgiving game.

EPO 

The link to the decision can be found after the jump.

T 0405/24 - G 1/24 and Art. 123(2)

Key points

• The proprietor: "Thus, when applying the conclusions of G 1/24, i.e. in particular that the description and the drawings shall always be "consulted" to interpret a claim, to the present case, the skilled person in the field of data communications would have understood that such "forwarding" was providing a basis for the "routing" action of feature 1.7. In other words, [the proprietor argued that], if multiple technically sensible interpretations of a certain claim feature exist, the one which is supported by the patent description should prevail.
• The Board: "This argument is flawed right from the outset. First, even if the Order of the G 1/24 (related to assessing compliance with Articles 52 to 57 EPC only) could indeed be extrapolated to the assessment of compliance with Article 123(2) EPC, there is no indication in G 1/24 that "consulting" or "referring to" the description and drawings could translate to adopting a claim interpretation which ensures that the disputed feature is originally disclosed and thus necessarily complies with Article 123(2) EPC. 
• Such an approach which inherently assumes that there may be only one "correct" interpretation of a claim feature, namely the one derivable from the original description as its intended meaning (which is apparently advocated e.g. by T 367/20-3.2.03, Reasons 1.3.9 and 1.3.16 in the event of "mutually exclusive" interpretations or by the recent decision T 2048/22-3.3.02, Reasons 1.2.1 and 1.2.2 in the case of claim ambiguities), would not lead to an objective assessment of compliance with Article 123(2) EPC and thus jeopardise legal certainty. It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise. 
• Rather, there is a significant body of case law holding that all technically reasonable interpretations of a disputed claim feature are to be taken into account when assessing compliance with Article 123(2) EPC (see e.g. T 945/20-3.4.02, Reasons 2.4; T 470/21-3.3.05, Reasons 2.1; T 2034/21-3.3.04, Reasons 11; T 193/22-3.3.06, Reasons 3.5)."
• As a comment, adding the number of the Board when citing a decision is not always done, but it can be helpful in specific contexts.
• Secondly, it would be good if there were more unity in the case law.
• Thirdly,  I'm not sure if I fully understand the Board's reasoning that "It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise." 

EPO 

The link to the decision is provided after the jump.

R 0017/23 - Parties must pre-emptively raise "questions" under Rule 106 (?)

Key points

• Decision dated 24.02.2025. Written decision issued on 17.10.2025, about nine months later. However, there is no time limit for the EBA, Art. 15(9) RPBA does not apply to petition for reviews.
• 
  
• From the minutes of the oral proceedings before the TBA, one of the points discussed was the "necessity of a referral of two questions to the Enlarged Board of Appeal (EBA) for ensuring uniform application of the law, in particular in view of the allegedly diverging decisions T 2273/10 and T 1621/16; relevance of the proposed questions."
• Still from the minutes of the oral proceedings before the TBA: "The parties repeated their initial requests. The Chairman asked the parties if they had any further comments or requests. There were none. The Chairman then declared the debate closed. After deliberation the chairman declared that the appeal was to be dismissed. The appellant raised an objection under Rule 106 EPC. The appellant confirmed that they were able to present their case on the question whether the proposed questions should be referred to the EBA. However, due to the decision not to refer those questions to the EBA, the appellant is deprived of the possibility to present their case there. Thus, their right to be heard (by the EBA) is allegedly violated. The appellant referred to R 8/11, R 7/13, R 17/14. The text of the objection was read out to the parties and agreed by the appellant. The objection was then discussed with the parties. The Board interrupted the proceedings for deliberation on the objection under Rule 106 EPC. After deliberation by the Board, the following decision was given: The appeal is dismissed. The Chairman then closed the oral proceedings."
• The EBoA: "The objection under Rule 106 EPC was thus (*) not raised in a timely manner by the petitioner, as noted in the decision, under Reasons 4.2 (p. 21), even though the objection was discussed with the parties before the decision to dismiss the appeal was announced. "
• The TBA, in their decision: "Regarding a merely formal issue, the appellant raised the objection after the end of the debate, i.e. once the substantive debate had already ended and when the board had announced the conclusion of its (final) deliberation (see the minutes, page 2, penultimate paragraph). Before the end of the debate, each party was explicitly asked about their requests and whether they had any further comments. Requests cannot be deemed filed in a timely manner if a party waits for the board to announce its opinion and then complains if its requests have not been granted."
• * - As a comment, regarding the 'thus': the preceding paragraphs consist of a purely factual overview of the events during the oral proceedings before the TBA, without any analysis or reasoning of the EBoA.
• "in the view of the Enlarged Board, when the parties were asked if they had further comments or remarks before the closure of the debate, the petitioner could then have raised, at least provisionally, a question under Rule 106 EPC, in case the Board dismissed its request for referral of questions to the Enlarged Board. However, according to the minutes, it did not."
• "question under Rule 106 EPC" is the term used by the EBA.
• The EBA here instructs is to precautionarily submit  "question(s) under Rule 106 EPC" if there is any risk that the TBA will announce an adverse conclusion (or decision) when the parties are asked for their final requests.
• The EBA uses 'could'. However, the EBA sanctions the petitioner for failing to make use of that opportunity (partial inadmissibility of the petition for review), so the term means 'should'.
• The EBA does not explain how such a "question" should be worded by the parties, but the instruction to representatives is clear.
• The EBA: "in the view of the Enlarged Board, the fact that the chair announced, after this closure, that the appeal was dismissed, without reference to a possible referral, clearly shows that such a referral was not allowed. In addition, the decision under review (Reasons, 4.2 last paragraph, p. 21) states that "Even if the arguments had been put forward in time, they would not have been successful", which shows that the Board nevertheless regarded the Rule 106 EPC objection as late."
• It is not entirely clear to me to which moment the EBA refers with the phrase "the fact that the chair announced, after this closure, that the appeal was dismissed" given that the oral proceedings before the TBA wer closed twice (from the minutes: "The Chairman then declared the debate closed. After deliberation ...  [Rule 106 objection raised and discussed] After deliberation by the Board, the following decision was given: The appeal is dismissed. The Chairman then closed the oral proceedings".
• The above points are not obiter in the decision of the EBA: "Therefore, the petition is clearly inadmissible, insofar as it is based on sections II.1 to II.6 of the petition, concerning the argument that refusal to refer questions to the Enlarged Board of Appeal infringed the petitioner's right to be heard."
• Compare: R 11/21: an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".

EPO 

The link to the decision can be found after the jump.