T 1438/21 - Two meanings of the term invention

Key points

• "The heart of the invention defined in claim 1 consists in the finding that the generation of wrinkles remains acceptable as long as the liner thickness is equal to or greater than the "minimum liner thickness" t that can be computed from the outer pipe diameter DH and wall thickness tH, the reel radius R, and the [radial insertion gap] RIG g, using formula II (see point VIII. above)."
• According to the opponent, the RIG is an unclear parameter, and the claim is, therefore, insufficiently disclosed.
• "The considerations that led the opposition division to conclude that the claimed method is insufficiently disclosed for it to be carried out by a person skilled in the art are based on the definition of the RIG, which is needed for computing the minimum liner thickness using formula II. It is therefore necessary to examine whether this alleged deficiency hinders the skilled person from carrying out the claimed method."
• "It is important to understand that, in accordance with the established case law of the boards of appeal, the "invention" mentioned in Article 100(b) EPC is defined by the subject-matter of the claims of the patent. Although an invention is commonly understood to be a technical solution to a problem, the problem allegedly solved by the subject-matter of the claim is not part of the "invention" within the meaning of Article 100(b) EPC if it does not find any expression in the claim."
• I understand the phrase "a technical solution to a problem" to mean that an invention is provided by the combination of subject matter and the teaching that this subject matter solves a technical problem. 
• Cf. G 2/21, which requires that the technical effect is: "... embodied by the same originally disclosed invention" (r.94). I'm not entirely sure in which sense the Enlarged Board used the term 'invention' here.
• As an exercise for the reader: what does " invention " mean in Art. 54 and in Art. 56? 
• The Board refers to G2/03, r.2.5.2, about non-working embodiments.
• The Board considers the "invention" to be sufficiently disclosed. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0641/20 - Decisions to admit of the OD

Key points

• The proprietor appeals against the decision of the OD to revoke the patent.
• The proprietor complains about the decision of the OD to admit late-filed document E6 into the procedure and requests the reimbursement of the appeal fee on the ground that it is a substantial procedural violation.
• My comment is that a decision to hold a submission of a party inadmissible can violate that party's right to be heard under Article 113(1) EPC and that if the document is admitted, the right to be heard of the other party can be violated by giving that other party insufficient time to reply, i.e. by taking the decision on the merits too quickly, but not by the decision to admit a document. 
• The appeal decision does not indicate that the proprietor complains specifically about the OD giving him (them?) insufficient time to react to E6 in the first instance proceedings.
• The Board, in machine translation: "The question of whether a discretion was exercised correctly, for example taking the correct criteria into account, is a substantive question of a substantive legal nature and not a procedural law one. Therefore, a substantively incorrect discretionary decision, which was made with the correct application of the procedural rules of the EPC, does not constitute a procedural defect within the meaning of Rule 103(1)(a) EPC."
• "the [proprietor] argued that the E6 does not meet the criterion of prima facie relevance because it does not obviously anticipate all the features of claim 1 of auxiliary request 3 in a way that is detrimental to novelty. The approval was therefore an error of judgment on the part of the opposition division and consequently a substantial procedural violation.
• The Board, hence, sees no substantial procedural violation in how the OD handled document E6.
• Under Art. 12(1) RPBA, E6 is also part of the appeal proceedings. 
  
  
• The OD introduced document E4 into the procedure of own motion.
• "The E4 was introduced into the opposition proceedings ex officio by the opposition division in its decision of June 28, 2018 with reference to the principle of official investigation pursuant to Article 114(1) EPC."
• "[Ex officio] new submissions [by the OD] are possible if prima facie there are compelling reasons to suggest that they are relevant and would completely or partially conflict with the maintenance of the patent (see also T 1002/92, point 3.2 of the reasons)."
• The OD found E4 to be novelty-destroying.
• "The introduction of a new document by the opposition division cannot, in principle, constitute a procedural defect. This applies at least if the criterion of “prima facie relevance” is the basis for this introduction, as was also the case by the opposition division for the introduction of the E4 into the proceedings"
• The Board also examines whether the proprietor had sufficient time to react and finds that this was the case.
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• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 27890/17 - Sufficiency of second medical use claim

 Key points

 

• Claim 1 of the patent is a second medical use claim directed to: "1. Use of  an acid-beta-glucocerebrosidase (GBA) polypeptide ... in the preparation of a medicament for use in a method of treating a subject with a synucleinopathy, but not a clinically diagnosed lysosomal storage disease, wherein the polypeptide or polynucleotide is administered alone, and in an amount effective to reduce a level of alpha-synuclein in the subject's central or peripheral nervous system, or both."
• As a little exercise, what do you know about the filing date of the patent from the (formally allowable) claim wording alone?"
• "Examples of synucleinopathy conditions are listed in contested claim 3 and include certain types of Alzheimer's and Parkinson disease. "
• "As acknowledged in Enlarged Board of Appeal decision G 2/21 (Reasons for the decision, point 74, second paragraph), it is established case law that in a second medical use claim such as contested claim 1, the [recited] therapeutic effect, in the present case the treatment of a synucleinopathy with GBA polypeptide, or a polynucleotide encoding a GBA polypeptide, is a functional technical feature of the claim, so that the issue of whether it has been shown that this effect is achieved is a question of sufficiency of disclosure under Article 83 EPC."
• "[The appellant/opponent] argued that example 5 on which the respondent relied did not credibly demonstrate a causative relationship between GBA and a decrease in alphaS levels in the MES23.5 cell lines tested. In view of the absence of any further credible evidence that the effect had been achieved, the burden of proof lay with the respondent [proprietor], and had not been discharged. Furthermore, in view of the lack of credible evidence, post-published documents such as D17 and D23 could not be taken into account."
• These arguments were presented in 2017 (!).  By now, G 2/21 would permit to focus the arguments, as the further parts of the present decision illustrate.
• The Board goes into the details of the Western Blots to conclude that "in the absence of a credible explanation of these observations, a doubt arises as to the scientific validity of the Western blot results shown [in the application as filed], and whether any meaningful conclusions may be drawn therefrom."
• "Hence, according to the conclusions of example 7, stated in the application as filed as being a more reliable method than that of example 5, the expression of GBA does not significantly change alphaS levels.
•  Consequently, the functional technical effect mentioned in claim 1 is not credibly demonstrated on the basis of the data provided in the application as filed."
• Turning to post-published evidence as a possible remedy: "Fifth, insofar as the respondent relied upon post-published evidence D17 and/or D23 in support of the alleged technical effect (e.g. reply to the statement of grounds of appeal, 6.9, 6.12, 6.21, 6.22 and 6.23), the board notes that according to Enlarged Board of Appeal decision G 2/21, reasons 77:

"...the scope of reliance on post published evidence is much narrower under sufficiency of disclosure (Article 83 EPC) compared to the situation under inventive step (Article 56 EPC). In order to meet the requirement that the disclosure of the invention be sufficiently clear and complete for it to be carried out by the person skilled in the art, the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence."

 

• As set out above, even though experimental data is provided in the application as filed, it is not credible on the basis of this data that the claimed therapeutic effect is achieved. Hence, in the present case, post-published evidence D17 and D23 cannot be taken into account.

EPO

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 2143/21 - Snip and Sketch with the Board

Key points

• The appellant proprietor submits that the structure disclosed by Figure 2 of D1 does not satisfy the claimed proportions of 0.8D <= D1 <= 0.9D and L1 >= 0.06D. 
• The Board: "It is readily apparent when considering the figures of D1 in the context of the whole disclosure that the figures 1-3 of D1 are not mere schematic drawings (defined as "an illustrative figure which gives an outline or general scheme of an object" (OED))."
• " The Board is also not convinced by the appellant proprietor's arguments that the figures' measurements of D1 contradict the teaching of its description. Figure 2 shows a circle with a substantially constant radius and thus represents a "generally spherical-shaped exterior surface 132 having a single, constant radius", as is described in para [0022] of D1. The manual three point method using a compass to find the centre of circle used by the proprietor is not accurate enough to prove that this is so [i.e. that there is a contradiction]."
• " Using the Windows 10 Snip & Sketch tool, for example, a more accurate determination of the cross-sectional shape of exterior surface can be made and it is found to be circular as expected for a "generally spherical" surface as stated in D1, see screen-shot below. The figure in the screen-shot shows a circle fitting practically perfectly the cross-section of the spherical surface in Fig. 2. The Board adds that the Snip & Sketch tool is a standard, well known feature of the Windows operating system, and has been so at least from Windows 10 onwards.
• Snipping Tool seems to be the current name in Windows 11.
• " Insofar as the appellant proprietor is unfamiliar with the tool, instructions as to its use are freely available on the Internet. Insofar as the appellant proprietor's query at the oral proceedings before the board as to its functioning is meant to question or call into doubt its accuracy, such doubts, leaving aside the fact that they are late, constitute nothing more than unsubstantiated allegation and must fail.

  FORMULA/TABLE/GRAPHIC

  Using the same Snip&Sketch tool the angle theta of Figure 2 is found to be 83°. This again does not contradict para [0025] of D1 where it states "[F]or example... can be about 80 degrees" (emphasis added)."

• "the Board holds that, contrary to the conclusions of the opposition division, the subject-matter of upheld claim 1 does not involve an inventive step, Art 56 EPC."

EPO 

The link to the decision is provided after the jump.

J 0006/22 - (I) Treaty interpretation and Article 31(3)(c) VCLT

Key points

• The Legal Board in this case (about re-establishment) did not hold oral proceedings, even though properly and timely requested by the appellant, and rejected the appeal (even without preliminary opinion in advance). The substance of the decision will be the subject of another post, possibly.  
  
  
• As a preliminary point, the Legal Board develops the framework for interpretation of the EPC under the VCLT.
• " Under Article 31(1) Vienna Convention [on the Law of Treaties], the starting point for the interpretation of the terms used in a trea­­­­ty provision [...] is their ordinary meaning in their context in light of the provision's object and purpose (...). However, it is necessary to go beyond the mere grammatical (literal) interpretation when a wording only superficially has a clear meaning. At any rate, a literal interpretation must not contra­dict the purpose of a provision (...).
• "The jurisprudence of the boards has also reiterated the im­portance of a "dynamic" or "evo­lutive" interpretation of the EPC in light of its object and purpose, as de­rived from Article 31(1), in connection with Article 31(3) Vienna Convention. Article 31(3) (a) and (b) refer to subsequent developments, namely subsequent agreements and practice among the parties to a treaty, thus presupposing a forward-looking approach."
• The underlying point is that the Legal Board wishes to depart from about 40 years of established case law, that oral proceedings are also held in cases that the Board a priori (i.e., before the oral proceedings) considers hopeless. 
• It may be important to cite the relevant provisions in full here because Art.31(3)(b) does not refer to any 'practice among the parties' but to "any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation". As the EPC contracting states do not apply the EPC in a relevant context (only Art. 138), there can hardly be a practice of the EPC contracting states in the sense of paragraph (a) on Art. 116. Art.31(3)(a) refers to "any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions".
  
  
•  "Article 31(3)(c) adds: "There shall be taken into account, together with the context: any relevant rules of international law applicable in the relations between the parties."
• I believe this is the first time Art. 31(3)(c) VCLT is applied by the Boards. It is an interesting provision. 
• "These "relevant rules of international law" are commonly understood in the legal literature as referring to the law applicable at the time of interpretation."
• The Board cites: Linder­falk, On the Interpretation of Treaties (2007), 179 et seq., including references to the travaux prépa­ratoires to Article 31 Vienna Convention; 
• Linderfalk, p.180, bottom, discusses that during the discussion on Art. 31(3)(c), there was a proposal to add the words "in force at the time of conclusion of the treaty" and a proposal to add "in force at the time of application of the treaty". Neither proposal was adopted, and the question was left open. Linderfalk then proposes, on p.182, that what matters is whether the thing to be interpreted is "a generic referring expression with a referent assumed by the parties to be alterable". Hence, Linderfalk proposes a very nuanced analysis. 
• Gardiner, Treaty Interpretation, 2009, p.256 discusses the history of the provision in detail. It started as an attempt to address the issue of intertemporal application, but no consensus could be reached and the provision as adopted leaves it open.
• See also McLachlan, infra: "as Waldock tellingly put it in the Commissionís Explanatory Report, when explaining the omission of any more detailed rule about inter-temporality, the Commission abandoned the attempts to cover the point in the draft, realising that it would have involved entering into the whole relationship between treaty law and customary law".
• Polgári, The Role of the Vienna Rules in the Interpretation of the ECHR, 82 et seq.;
• This may refer to the following article: Polgári, "The Role of the Vienna Rules in the Interpretation of the ECHR", Erasmus Law Review, 2, (2021):82-95" doi:
  10.5553/ELR.000193, (open access)
  
• I don't see a relevant remark directly; the Legal Board does not identify the relevant page number in the article and does not quote the article. 
• Thimm-Braun, Evolutionary Inter­pretation and Other Developments of the Vienna Conven­tion on the Law of Treaties; 
• The Board: "on the dynamic/evolutive interpretation in general, see also, in­ter alia, International Law Commission, Conclusions of the Work of the Study Group on the Frag­mentation of Inter­national Law: Difficulties arising from the Diver­sification and Expansion of In­ter­national Law, pa­ragraph 478; 
• Note, this may be the following document with the same title and published by the UN: https://legal.un.org/ilc/texts/instruments/english/draft_articles/1_9_2006.pdf 
• This document does not have a paragraph 478. It contains the following remark, which seems the most pertinent:  "A treaty may convey whether in applying article 31 (3) (c) the interpreter should refer only to rules of international law in force at the time of the conclusion of the treaty or may also take into account subsequent changes in the law. "  (emphasis added)
• Arato, Subsequent Practice and Evolutive Inter­pretation: Techniques of Treaty In­terpretation over Time and their Diverse Conse­quences, The Law and Prac­­tice of International Courts and Tribunals 9 (2010), 443 et seq.).
• As a comment, the article following article seems to be frequently cited as an important contribution: McLachlan, The Principle of Systemic Integration and Article 31(3)(c) of the Vienna Convention,  International and Comparative Law Quarterly 54(02):279 - 320, open access at  https://www.researchgate.net/publication/231992295 : "This article starts from the proposition that Article 31(3)(c) expresses a more general principle of treaty interpretation, namely that of systemic integration within the international legal system. The foundation of this principle is that treaties are themselves creatures of international law. However wide their subject matter, they are all nevertheless limited in scope and are predicated for their existence and operation on being part of the international law system."
• Article 31(3)(c) VCLT, therefore, seems to provide an (additional) legal basis for considering the ECHR in proceedings before the EPO, as well as TRIPS (under the dynamic interpretation of the provision and under EPC2000). See also G 2/02. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0438/19 - (II) On the English travaux

Key points

• The referral decision in case G 1/23 refers to the "Proceedings of the 1st meeting of the Patents Working Party held at Brussels from 17 to 28 April 1961 (LT 234/82, Section 5, IV/2767/61-E)" and cites that document in English.
• This slightly puzzled me because, in 1961, English was no official language of the Working Party - England was no EU member then. However, it turns out that an English translation of the minutes of that meeting is contained in the "per article" collection of the travaux préparatoires to Article 54 EPC. Even though that translation can not be found in the "per document" travaux. Possibly, the translation was prepared in 1982?
• The document discussed at that meeting is the Haertel draft, which is available in German and French only (in the published travaux). I'm not aware of a published English version of it.
• Linking to the individual PDF  files of that travaux is no longer possible after the update of the EPO website, it seems. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 2735/19 - Post published evidence for sufficiency

Key points

• Claim 1 is a second medical use claims, "1. A cancer therapeutic drug, which is a composition comprising[ the compound FTD]  and [another compound] in a molar ratio of 1:0.5, for use in the treatment of cancer in a human patient in need thereof by orally administering the drug at a dose, as a dose of FTD, of 20 to 80mg/m**(2)/day twice daily.""
• The filing date was in 2006. (!)
• D11 is D11|Summary of clinical data filed on 19 March 2018 |
• "5. Sufficiency of disclosure - claim 1 of the main request
• 5.1 The appellants questioned whether the skilled person could carry out the subject-matter of claim 1 without undue burden. They argued that the use defined in claim 1 could not credibly treat every type of cancer, let alone at any dose within the range defined in claim 1. The Board disagrees.  ... Example 2 and Figure 2 (Trials 3 and 4) of the English translation of the application as filed showed that the oral administration of TAS-102 at a total daily dose of 60 or 50mg/m**(2) FTD, provided in two daily doses, effectively treated more than 70% of breast cancer patients for whom standard therapy had not worked. In this context, effectively treating meant that at least tumour progression was stopped and the disease remained stable. 

• The Board agrees with the respondent that, due to the direct action of FTD on DNA, TAS-102 could be expected to have a general effect on tumours and not to be limited to a single cancer type. Therefore, the consideration of the post-published evidence in document D11 confirming this effect on additional tumour types was in line with the principles established in G 2/21 (Reasons 77 and 93), namely that the purported effect is encompassed by the technical teaching of the application as filed and that it is embodied by the same originally disclosed invention."

• "The Board therefore concludes that the appellants did not raise serious doubts that the skilled person could carry out the subject-matter of claim 1 without undue burden. Consequently, claim 1 of the main request fulfils the requirements of Article 83 EPC."

• On inventive step: "In summary, the skilled person wanting to improve the efficacy and safety of the therapeutic indication disclosed in D4 would turn to D6. This combination would lead them to provide TAS-102 in multiple doses as an obvious solution. In particular, the skilled person would administer TAS-102 thrice daily, which is the regimen found in D6 to be optimum. The skilled person would have expected that administration twice daily, which was neither disclosed nor explicitly suggested in D6, would not be as good as thrice daily. It is even less likely that they would have expected twice daily administration to exhibit a comparable level of anticancer efficacy while considerably reducing the level of side effects. Therefore, the solution to the objective technical problem proposed in claim 1 was not obvious from the combination of D4 with D6. It constituted the selection of an undisclosed embodiment which was unexpectedly advantageous."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0460/21 - A negative feature for inventive step

Key points

• The Main Request is considered to be not novel.
• Claim 1 of auxiliary request 4 differs from claim 1 of the main request by the additional feature: "... whereby compositions consisting of sodium citrate (15-30%), sodium silicate (15-30%), sodium percarbonate (15-30%), sodium carbonate (5-15%), sodium gluconate (5-15%) and non ionic vegetal surfactants (<5%) are excluded from the scope.""
• The Board: "Claim 1 of auxiliary request 4 differs from claim 1 of the main request by the exclusion of the compositions disclosed in D4. "
• D4 = MINTEL GNPD 1418505 "Phosphate-Free Automatic Dishwashing Tablets", "Attitude" by Company "Bio Spectra", published 31 October 2010
• The Board, on clarity: "In the present case, the use of brackets does not render the claimed subject-matter unclear. The ranges given in each of the brackets after each of the compounds of the disclaimed compositions can only relate to the relative amount of the respective compounds in weight %. The disclaimer is also a verbatim copy of the disclosure of document D4."
• Does the amendment provide for inventive step?
• The OD referred to G 1/03 in their decision. Possibly, the added feature is a disclaimer in the sense of that decision.
• "The opposition division considered the bleaching and/or highlighting composition for keratin fibers according to claim 1 of the main request not to be novel in view of the disclosure of document D4."
• The proprietor argues that the dishwasher tablet of D4 is not suitable for bleaching keratin (i.e. hair) fibers.
• "The composition disclosed in document D4 is thus suitable for bleaching and/or highlighting keratin fibres."
• D1 is considered to be the closest prior art.  "Document D1 does not suggest that gluconic acid leads to an increase in bleaching intensity. "
• The claim is considered to be inventive.
• Possibly, claim 1 of the main request would be inventive over D4 in a way because, also for that claim, D1 is the closest prior art. 
• The alternative, that the disclaimer* would be relevant for inventive step, does not seem plausible either under G1/03.
• * =  disclaimer to the disclaimer: the feature seems a disclaimer to me, but I may overlook something in the file. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T1989/19 - Post-published data for inventive step

Key points

• Claim 1 of the patent is directed to "crystalline micronizate of tiotropium bromide" which is characterized by a certain particle size and a certain water content. The water content is higher than in the closest prior art D9.
• The proprietor submits that (post-filed) experimental reports D23 and D65 demonstrate that the distinguishing feature leads to improved storage stability. The Board concludes that the reports sufficiently demonstrate the advantage.
• The opponent submits that the experimental reports can not be considered because the application as filed contained no reference to improved storage stability.
• The present Board interprets G 2/21, in translation: "it is not a prerequisite that this claimed effect must be expressly mentioned or proven in the application as originally filed."
• The application as filed referred to an "objective of the present invention to provide a process which makes micronized tiotropium bromide available in a form that meets the high requirements placed on an inhaled active ingredient and thereby takes into account the specific properties of tiotropium bromide"
• The Board, in translation:"The application as originally filed therefore focuses on the use of the claimed micronisates as inhalation powders and teaches that a certain particle size range is required for administration by inhalation. Since a certain amount of time necessarily elapses between the production of a drug and its administration, it can be deduced from the application as originally filed that particle size stability (corresponding to the storage stability demonstrated in D23 and D65) is an essential prerequisite for the administration of the drug according to the application."
• "Furthermore, as stated by the respondent [proprietor] at the hearing, it was well known to the person skilled in the art before the priority date of the application that particle size stability is crucial for the administration of a drug by inhalation. As evidence of general specialist knowledge, the respondent referred to documents D1, D16a, D16b and D17."
• The Board reviews these documents.
• The Board: "Based on his above-mentioned specialist knowledge [Fachwissen] regarding the necessary particle sizes/particle size distribution when using inhalation powders for medical administration, the person skilled in the art would recognize, based on the originally filed version of the application, that the tiotropium bromide also has adequate stability due to the disclosed particle sizes and its intended use particle sizes. This stability corresponds to the technical effect of storage stability used by the respondent for the inventive step. The person skilled in the art would therefore draw direct conclusions about the storage stability of this product from the use of the claimed micronisate as an inhalation product described in the originally filed application. Nothing in the originally filed application or general technical knowledge casts reasonable doubt on the achievement of this storage stability by the subject matter of the claim, and no such doubt was expressed by the complainant. Therefore, it can be deduced from the originally filed application that this technical effect is covered by the technical teaching of the application and is embodied by the invention originally disclosed to it."
• "the board recognizes that the technical effect that can be derived from the originally filed application within the meaning of point 2 of the decision formula of G 2/21 is storage stability as such, while the effect shown by D23 and D65 is the improvement of this storage stability compared to the closest prior art cited. In the Board's view, as soon as the above-mentioned criterion of the derivability of a technical effect is met, this also applies to the improvement of this effect. "
• "Therefore, the fact that the technical effect cited by the respondent consists of a storage stability that is improved compared to the closest state of the art does not preclude its consideration in the light of decision G 2/21."
• The Board concludes that the claimed composition is inventive. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1076/21 - (II) Contesting facts in appeal

Key points

• The Board in the headnote: "The burden of proof regarding the facts, arguments and evidence on the substance (which initially lies with the opponent) does not shift to the proprietor just because the patent has been revoked due to an alleged insufficient disclosure."
• My analysis is as follows. 
• A decision of an opposition division consists of conclusions in law, findings of fact, and inferences about what the skilled person would do. 
• Both the appellant and the respondent may wish to contest one or more of the conclusions and findings in the appeal. For this purpose, the term 'complainant' could actually be useful to identify the party that tries to contest conclusions in law or findings of fact in appeal.
• The appellate review of conclusions in law is de novo (this is beyond doubt, I believe). Moreover, there is no burden of proof as to legal conclusions. 
• As to findings of fact, the complainant may wish to alter the factual basis of the decision by i) challenging the evaluation of the evidence, ii) presenting new evidence, and iii) introducing new facts. The latter two courses involve case amendments under Art. 12(4) RPBA, but admissibility is not the focus of the present post. 
• As to any new facts introduced by a party in appeal, this party has the burden of proof, following the general rule.
• As to challenging the OD's evaluation of the evidence, T 1138/20 provides a comprehensive framework. The gist is that the Boards, in principle, apply a deferential standard of review to factual findings of the OD that are based on evidence. This means that the complainant has the initial burden to contest those findings in a substantiated way, e.g. by attacking the reasoning of the OD about the evaluation of the evidence or by filing appropriate counter-evidence (without prejudice to the limitations of Art. 12(4) and (6)). 
• If the Board examines the evidence de novo (explicitly considered as a discretionary power of the Boards in T 1138/20, especially for documentary evidence), logically, the same rules of evidence as for the first instance proceedings apply (regarding the burden of proof).
• I expect that the Boards will not apply a deferential standard to inferences about what the skilled person does and knows as common general knowledge, except perhaps in the case that the OD based their inferences specifically on evidence submitted by the parties.
• Often, in appeal, the opponent repeats objections that the OD did not arrive at, and the proprietor may maintain auxiliary requests from the first instance proceedings and related factual assertions, e.g. about the technical effect. The examination of these issues, when done by the Board, is strictly speaking no review of the (reasoning) of the first instance decision, and the same rules of evidence apply as in the first instance proceedings. This applies broadly to any submission that benefits from the unless clause of Article 12(4) RPBA.
• In the decision at issue, the factual debate was about the sufficiency of disclosure.  
• "The decision under appeal revoked the patent because in the opposition division's view, the patent did not sufficiently disclose the claimed subject-matter. The examples were contradictory, and there was no guidance in the patent as to which parameter to adjust in order to obtain the desired coating weight for layers A and B and the tension ratio."
• I understand that the Board applied a de novo review in the sense of T 1138/20.  The opponent filed an expert declaration on the point, but it was late, and that evidence was not admitted.
• It might be observed that the Board will not necessarily give an express opportunity to file evidence to the parties once it decides to apply a de novo review of factual findings. However, where the OD's decision is not based on extensive consideration of evidence, parties should be prepared for a de novo review in appeal of factual findings under the current state of case law. 
• I will post a second post about the decision soon with quotes from the decision. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0345/21 - Advanced aspects of reformatio in peius

Key points

• The title is not a tautology. 
• "The patent proprietor lodged an appeal against the interlocutory decision of the opposition division finding that European patent No. 2 737 379 as amended according to auxiliary request 1A met the requirements of the [EPC]"
• "During the oral proceedings held before the opposition division, the sole opponent withdrew its opposition against the patent. The opposition division then continued the proceedings of its own motion in accordance with Rule 84(2) EPC."
• In the contested decision, the opposition division came to the conclusion that the ground for opposition under Article 100(c) EPC prejudiced the maintenance of the patent as granted, that the subject-matter of claim 1 according to auxiliary request 1 filed with letter dated 13 November 2020 was not novel over document SP06"
• This is a rare case where interlocutory revision was possible in an opposition appeal.
• "The [operative] second auxiliary request includes a total of four independent claims: claims 1, 2, 3 and 12. Independent claims 2 and 3 are identical to claims 1 and 2 of auxiliary request 1A on the basis of which the opposition division intended to maintain the patent. "'
• "Since the patent proprietor is the sole appellant in the present case, the maintenance of the patent on the basis of claims that are identical in wording to those of auxiliary request 1A, which the opposition division had found to comply with the EPC, may in principle not be challenged. Otherwise the sole appellant would be put in a worse situation than if it had not filed an appeal. This follows from the prohibition of reformatio in peius, as established in the decision of the Enlarged Board of Appeal G 9/92 "
• "Hence, the board can in principle not examine or object to independent claims 2 and 3 of the second auxiliary request without contravening the principle of prohibition of reformatio in peius. The same applies to dependent claims 4 to 6, 8 and 9 of the second auxiliary request, at least insofar as they depend on independent claims 2 or 3."
• The Board examines the novelty of claim 1.
• "the opposition division concluded that it lacked novelty over document SP06 (Reasons 4 for the decision under appeal). In particular, it was held that the embodiment of the low pressure gradient system ("Niederdruck-Gradientensystem") as shown in Figure 4.2 on page 65 of document SP06"
• "The opposition division's view on feature F1.2 seems to be based on the false premise that for concluding lack of novelty it is sufficient that all claim features are disclosed in the same prior art document. It is well-established in the case law of the Boards of Appeal that, unless there is a clear teaching combining different passages in a document, these passages may not be combined for the examination of novelty"
• "In view of the above, the subject-matter of claim 1 of the second auxiliary request is new over document SP06 (Article 54(1) and (2) EPC)."
• "The board exercised its discretion under Article 111(1) EPC to remit the case to the opposition division for further prosecution."
• "The board finds it fitting to add here that the prohibition of reformatio in peius prevails in principle until the final settlement of the opposition case and, therefore, also in opposition proceedings subsequent to a remittal under Article 111 EPC (T 1843/09, Reasons 2.3.3). The claims setting the framework for reformatio in peius are those according to auxiliary request 1A as held allowable by the opposition division in the decision underlying this appeal".

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1684/21 - To encourage the others

Key points

• The Board finds that claim 1 as granted does not meet Article 83 EPC.
• "In the Board's view the skilled person would not be able to implement feature (i) ("an air flow whose temperature has been regulated by an evaporator (4) and a heater (5)"), for the following reasons."
• The feature "requires that the evaporator and the heater regulate the temperature of the air flow. This means that both the heater and the evaporator are operated and controlled in such a way that a desired temperature variation occurs"
• The patent teaches in para. [0031] to use an air-mix damper to regulate the temperature. This unit is, however, not specified in the claim.
• "the skilled person would face the task of putting into effect an HVAC (according to claim 1) including feature (i) implying that the air flow temperature is regulated by the evaporator and the heater, not necessarily including an air-mix damper."
• "The skilled person, however, would not find in EP-B any indication, guidance or instruction as to how feature (i) is to be implemented when the air flow temperature is regulated only by operating and controlling an evaporator and a heater. The specific embodiment disclosed in EP-B and discussed above does not give the skilled person any suggestions or hints leading to a solution of this technical problem, the air-flow temperature regulation by means of an air-mix damper being based on entirely different principles as already noted hereinbefore."
• I can't judge the technical merits of the Board's reasoning. That's not the point of this post.
•  Claim 1 of auxiliary requests 4, 5, 6 and 7 differs from claim 1 of the main request, [by specifying]  "simultaneously so as to guide the temperature-regulated air to the side demister channels (31), and an air mix damper (6) arranged between the evaporator (4) and the heater (5)"."
• " The Board did not admit auxiliary requests 4 to 7 into the appeal proceedings, since these requests were filed at a late stage in the proceedings, i.e. after the communication of the Board pursuant to Article 15(1) RPBA 2020 (Rules of Procedure of the Boards of Appeal), and such late filed requests can only be admitted under exceptional circumstances (Article 13(2) RPBA 2020)."
• " the Respondent [proprietor] could and should have submitted auxiliary requests 4 to 7 at the latest with its reply to the statement of grounds of appeal. No exceptional circumstances can be identified and invoked in the present case".
• The patent is revoked.
  
  
• This seems a strict but not unusual application of Article 13(2) RPBA. Probably, admitting the request would have necessitated a whole round of debate on novelty and inventive step late in appeal. 
  
  
  
• Incidentally, claim 1 reads - note the very long preamble: "A vehicle heating ventilation and air conditioning unit (1) that is configured so as to selectively blow out an air flow whose temperature has been regulated by an evaporator (4) and a heater (5) mounted in an air channel from a DEF blowing channel (17), a face blowing channel (16), and a foot blowing channel (18), which are provided downstream of the evaporator (4) and the heater (5), into a cabin by opening and closing a DEF damper (8), a face damper (7), and a foot damper (9), the vehicle heating ventilation and air conditioning unit comprising: side demister channels (31) ... and plate-like baffle ribs ". 
• The functional feature was hence located in the claim preamble and not a functionality of the claimed air conditioning unit itself but of the "surrounding" heater and evaporator (as I understand it). 
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1329/21 - Errors and admissibility

Key points

• The Board, on the admissibility of documents filed by the proprietor/appellant (namely, experimental reports): (untranslated) "Die diesbezüglichen Argumente der Beschwerdegegnerin betreffen eher die Frage, ob der Vortrag der Beschwerdeführerin überzeugend ist oder nicht, als die Frage der Zulassung. Die tatsächliche Offensichtlichkeit des angeblichen Fehlers und dessen Berichtigung sowie die wiederholten Fehler in den Angaben der Beschwerdeführerin im erstinstanzlichen Verfahren sind für die Frage der Zulassung der Eingabe der Beschwerdeführerin gemäß Artikel 13 (1) und 13 (2) VOBK 2020 nicht relevant."
• "Die Kammer ist daher der Auffassung, dass der Fachmann tatsächlich die Wasserangabe in D25 als einen offensichtlichen Fehler, dessen Berichtigung ebenfalls offensichtlich sei, betrachten würde."
• So, obvious errors in the experimental report D25 were no factor in the admissibility of the experimental report under Art. 13(1) RPBA.
• The patent is about a cosmetic formulation with cellulose particles having a certain size, wherein the particles are derived from vegetable cellulose.
• On the credibility of the technical effect: (in translation) "The respondent [opponent] also argued during the oral hearing that the granted claim 1 was broadly worded. In particular, particles of different sizes and cellulose from a very wide variety of sources are claimed. Any woody plant would actually be suitable as a source according to claim 1. In contrast to this variety of claimed particles, only one type of particle was tested in D25, namely "Ultrafine Cellulose Arbocel M8". A single example is therefore not sufficient to make the alleged effect credible for the entire breadth of claim 1".
• "[The proprietor] replied that bacterial, fermentatively produced celluloses such as those from Example 2 of D11 would have a fibrillar ... structure. The fibrils would then form MCC-like networks. In contrast, native celluloses obtained from plant fibers would have a cross-linked structure. Thus, the claimed celluloses would have a uniform structure that would distinguish them from bacterial celluloses and MCC."
• The Board considers the technical effect credible over the whole scope of the claim.
• The Board also considers the subject matter inventive. "The objective technical task based on D11 is accordingly to provide another cosmetic formulation containing glycerin and cellulose with improved sensory properties when distributed on the skin"
• "None of the documents D1, D3, D7, D14 or D19 cited by the respondent indicate replacing the cellulose component from D11 with native cellulose obtained from plant fibers in order to improve the sensory properties when distributed on the skin. The respondent did not raise any argument regarding evidence of such an improvement in the prior art. "
  
  
  
• The Board formulates the objective technical problem as: "Die objektive technische Aufgabe ausgehend von D11 besteht dementsprechend in der Bereitstellung einer weiteren Glycerin- und Cellulose-haltigen kosmetischen Formulierung mit verbesserter Sensorik beim Verteilen auf der Haut."
• I find this a bit curious because the provision of alternatives is usually used as the objective technical problem if there is no improvement. However, I've not studied the decision in great detail on this point. 
• 
  
• EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0248/22 - Pre-emptive auxiliary requests and Art. 12(4) RPBA

Key points

• This decision seems important. The proprietor submitted a new auxiliary request with the Statement of grounds. Admissibility under Art. 12(4) RPBA is to be considered.
• "When exercising its discretion whether to admit an amendment to a party's case, the board has to consider whether the amendment is suitable for addressing the objections raised (Article 12(4) RPBA). In the current case, the proprietor argued that the amendments remedied an objection which is not part of the decision under appeal [...]. Any reasons why an amendment overcomes an unraised objection do not constitute valid reasons for admitting an amended request in view of Article 12(4) RPBA, second paragraph."
• Hence, in the Statement of grounds, the proprietor does not need to file auxiliary requests to address objections that could be raised by the opponent as respondent but are not part of the impugned decision.
• The decision is, however, difficult to follow on the specific facts as the Board also states that the auxiliary request addressed an objection under Art. 123(2) that "was presented for the first time during the oral proceedings before the opposition division". The objection was, therefore, not an "unraised objection". However, it seems that according to the Board, what matters is whether the objection is in the appealed decision.
• If the opponent as respondent introduces (or reintroduces) the objection in the reply to the appeal, the proprietor should file a rejoinder to address it with an appropriate auxiliary request. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1484/18 - Reformatio in peius

Key points

• This decision is older but still interesting.
• The opponent appeals the decision to maintain the patent in amended form of the OD.
• The Board finds the claims to be insufficiently disclosed.
• "Claim 1 of the main request incorporates the features of granted claim 7 that requires that "the dose dial button (10) is releasable coupled to scale drum (20)" (feature 1.13). Granted claim 7 was objected under Article 83 EPC during opposition proceedings and dealt with in the contested decision under point 15.4. [The opposition division found that]  the concept of a releasable coupling was well known in the art and that the exemplary disclosure of a one-way ratchet (paragraph [0016]) was sufficient to enable a skilled person to put the invention into practice.  The board does not agree for the following reasons."
• "The only hint in the patent about how to realize feature 1.13 is by means of any kind of one-way ratchet mechanism (paragraph [0016]). However this general disclosure of a releasable coupling does not specify how the desired functionality might be obtained, in particular as neither the dial button nor the scale drum moves axially"
• Hence, the feature added to claim 1 during the proceedings before the OD makes claim 1 insufficiently disclosed.
• Turning to auxiliary request 1: " The appellant (opponent) submitted that the deletion of feature 1.13 in claim 1 of the auxiliary request I was not allowable in view of the prohibition of the reformatio in peius."
• "In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, G 1/99 (see headnote) allows an exception to this principle in order to meet an objection put forward by the opponent/appellant during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the opposition division in its interlocutory decision.
• "In the present case, it is undisputedly not possible to restrict feature 1.13 by introducing one or more originally disclosed limiting features in order to overcome the lack of sufficient disclosure. The board thus takes the view that the deletion of feature 1.13 is the only possibility for the respondent (proprietor) to overcome the deficiency due to the amendment introduced into the version of the patent as maintained by the opposition division but which does not comply with the requirements of the EPC (see G 1/99, point 15)."
• "Hence the Board considers the amendment made in accordance with auxiliary request I is appropriate and necessary even if, as a result, the situation of the appellant (opponent) is worsened."
• The case is remitted:  "Feature 1.13 is no longer present in claim 1 of auxiliary request I and the latter is further amended by introducing other features." "This leads to a substantially different situation as compared to the one underlying the decision under appeal."
• This case illustrates that the 'reformatio in peius' issue is not limited to particular grounds why the claim is not allowable (the kind of 'objection put forward by the opponent/appellant during the appeal proceedings'): the issue can be added subject-matter, clarity, sufficiency, probably also loss of priority by the amendment, and possibly even novelty or inventive step as such.
•  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 2395/19 - Review of facts, public prior use

Key points

• An example of the new style review of findings of facts, by Board 3.2.01.
• "The Board confirms the conclusion of the opposition division that the appellant (opponent) has convincingly and sufficiently proven that a public prior use of a coated cutting tool type "Tiger-Tec WAK1O" manufactured by Walter AG took place before the priority date of the contested patent (December 2004). 
• "To the extent that there is no error in the application of law, in principle a Board has no reason to set aside the evaluation of evidence of a deciding body of the first instance and supersede it by its own unless the deciding body of first instance recognizably failed to consider essential aspects, included irrelevant considerations, or violated the rules of logic, such as when logical errors and contradictions are detected by the Board in the reasoning of the decision (see also T1418/17, point 1.3 of the Reasons, T 42/19, point 3.4 of the Reasons)."
• " The burden is on the party challenging a fact on appeal to demonstrate that the first-instance department erred in its finding of fact. In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous (T 1138/20, point 1.2.5 of the Reasons)."
• On the standard of proof: "The Board also considers that it has been proved beyond any reasonable doubt (see affidavits D26, D26a and D49) that coated cutting tools of type "Tiger tec" with grades WAKl0 manufactured by Walter AG were available on the market as a "mass product" to everyone - hence also to the appellant (patent proprietor) - at least from July 2004, i.e. before the priority date of the contested patent (December 2004)."
• The fact that the specific test specimen was tested in house, does not raise the standard of proof to "up to the hilt".
• "It appears to be normal that a party submits their own experimental data be it produced within their company or an affiliate company. This may lead to a need of the other party to run comparative tests and submit the results if they shed doubt on the other party's data. But it does not lead to a shift of the standard of proof since both parties are free to run their own tests on standard products available on the market. Should the other party contest the comparative results based on the fact that material properties may change within a series of products they would be under an obligation to provide a specimen out of the toolbox acquired by them for further inspection by the other party or by an expert appointed by the opposition division. "
• This is the EPO-appointed expert of Art. 117(1)(e) EPC. Does anyone know of a case (appeal or application number) where one was appointed? (asking for study and teaching purposes)
• "The credibility of the declaration signed by the employees of TaeguTec was questioned by the appellant (patent proprietor) ..."
• As a comment, if signed declarations are timely (contested before the OD (in a substantiated way), the declarant should normally be offered as a witness by the party filing the declarations. The decision indicates that the opponent did offer witnesses. 
• "As a consequence of these findings, the taking of evidence in the form of a hearing of the witnesses Mr. Na and Mr. Lee offered by the appellant (opponent) was not required." (by the OD)
• E-IV, 1.2: "If the alleged facts are contested by the other party, the opposition division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the opposition division and the parties to put questions to the witness and thus enables the opposition division to establish the facts on the basis of that person's testimony." (see also T0474/04)
• 
  
• "The complaint of the appellant (patent proprietor) that they were not able to carry out counter-tests of the same specimens tested by Mr. Lee and Mr. Na is not justified either because, as confirmed by the appellant (opponent), no request in this sense was submitted by the appellant (patent proprietor) to the appellant (opponent) and the contrary has not been proven by the appellant (patent proprietor). The Board also observes that the appellant (patent proprietor) did not make any attempt to purchase and counter-test specimens of "Tiger-tec WAK1O" coated cutting tools which were available on the market at least as from the year 2024 in order to confute the results presented in the affidavits under discussion."
• The Board considers and rejects numerous other objections to the evidence by the proprietor.
• "The subject-matter of claim 1 according to the main and to the auxiliary request 1 thus lacks novelty over the public prior use, whereby irrespective of the further issues raised by the appellant (opponent) these requests are not allowable as correctly stated by the opposition division."
• The patent is maintained in amended form: "The Board agrees with the appellant (opponent) that the solution recited in claim 1 defines an alternative to the known "Tiger-tec WAK1O" coated cutting tool because the advantageous technical effect claimed by the appellant (patent proprietor) is neither mentioned in the contested patent nor was this technical effect demonstrated by the appellant (patent proprietor). However, the Board considers that the elevate number of parameters at stake and the complexity of their interactions which, as it is well known, characterizes this kind of composite products, suggests to the person skilled in the art to apply extreme caution when considering to replace a component of a very well working composite material as the coatings of the "Tiger-tec WAK1O" cutting tool with a different one. Therefore, the Board agrees with the appellant (patent proprietor) that the person skilled in the art has no motivation to replace the material of the third coating of the public prior use cutting tool with the materials suggested in claim 1, whereby the subject-matter of claim 1 results in an non-obvious alternative to the solution known from the prior art."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0638/21 - A non-novel second non-medical use

Key points

•  Claim 1 of the patent is directed to: "1. Use of N-n-butylpyrrolidone as a non­-reprotoxic solvent."
• The prior art discloses the use of N-n-butylpyrrolidone (NBP) as a solvent but does not mention non­-reprotoxicity.
• "The board notes that D1 (page 1, lines 1-7) discloses compositions intended for topic application, with the solvent used (for example NBP) facilitating the absorption by the skin of ingredients having cosmetic or medical properties. In the board's view, such solvated compositions were implicitly held non-toxic at the filing date of D1, since they were supposed to be absorbed by the skin." 
• "Since NBP was moreover not classified as being reprotoxic at the publication date of D1, the skilled reader would at this date have understood from D1 that the solvent used was also inherently non-reprotoxic and could be commercialised without any warning label and freely used by any possible group of users. " 
• "The present case thus differs from a new therapeutic application wherein an unknown therapeutic effect can be discovered by clinical trials. This conclusion in line with established case law, for example T 1523/07, reasons 2.4, according to which "implicit disclosure means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content".
• "differently from the uses considered in decisions G 2/88 and G 6/88 that clearly concerned a technical effect (namely friction reduction and fungi control, respectively) different from those already known for the substance in question, and wherein the known chemical substance was purposively applied to achieve the new technical effect, the use of NBP as a non-reprotoxic solvent, even if considered to be a purposive application, underlies that already disclosed in D1."
• "This conclusion is supported by case law, for example that in T 892/94 (OJ 2000, 1, notes II) which concluded that "... a newly discovered technical effect does not confer novelty on a claim directed to the use of a known substance for a known non-medical purpose if the newly discovered technical effect already underlies the known use of the known substance."
• "the board concludes that the label of the use of NBP as "non-reprotoxic" solvent is merely an explanation of the non-toxicity already inherently known from D1 by means of its use for absorption by human skin, which use cannot distinguish the claimed use from the known one."
• The patent is revoked.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1598/20 - New objections in the decision

Key points

• The applicant appeals against the refusal. 
• On the admissibility of the amended claims: "As explained by the appellant in the statement of grounds of appeal, the amendments made in the new main request filed on appeal clearly address the objection of added subject-matter raised by the examining division, for the first time, in the decision under appeal." emphasis added. 
• The amendments overcome the objections under Art. 123(2).
• The Board " points out that, in such circumstances, the examining division should have considered the appeal admissible and well founded and, consequently, should have rectified the decision under Article 109(1) EPC. "
• The case is remitted.
• The appeal fee is not reimbursed (or more precisely: there is no order to do so in the decision).
• If the ED raises new objections  "for the first time in the decision under appeal" this is a violation of the right to be heard, and the appeal fee is (normally) reimbursed under Rule 103(1)(a) EPC ex officio.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0543/20 - (II) Art. 12(4)(s.4) RPBA bites

Key points

• Auxiliary request 2 (renumbered from AR-5) is a carry-over auxiliary request.

Admissibly raised before OD

• The first question is whether the unless-clause of Art. 12(4) RPBA applies, particularly whether it was admissibly filed before the OD.
• The Board, in translation: "Auxiliary request 5 was submitted in the opposition proceedings after the time specified in the summons to oral proceedings, up to which pleadings and/or documents can be filed under Rule 116 EPC, and was therefore filed late in the opposition proceedings (see, for example, the second guidance sentence in T 1776/18 and Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.4.3.2 and IV.C.5.1.4). Its admission and consideration was therefore at the discretion of the opposition division. For this reason alone, auxiliary request 5 cannot per se be viewed as being submitted in an admissible manner. The current auxiliary request 2 is therefore an amendment in accordance with Article 12(4) RPBA, the approval and consideration of which is now at the discretion of the Board."
• "The respondent's [proprietor's] opinion cannot be accepted in this respect, according to which auxiliary request [5] was a response to an objection raised by the [opponent] in the written statement filed [before the OD] under Rule 116 EPC [...]. It had already been argued in the notice of opposition that document D2 disclosed a liquid detergent which contained the R99E protease variant and the phosphonate HEDP, and that the claimed subject matter was not new via this disclosure or only differed from it [by an obvious feature] (see pages 3 and 4, the first two complete paragraphs on page 6 and the last paragraph on page 9 of the notice of opposition)."
• "Auxiliary request 2, which [specifies a difference with ] document D2, could therefore have already been filed in response to the notice of opposition in order to address the objections raised therein under novelty and inventive step ."
• It may be wise for proprietors to take the first opportunity to file a reply to a Notice of opposition seriously.

Requirement to indicate the basis

• The proprietor had, as respondent, not indicated the basis for the amendment in its appeal reply brief. Therefore, Art. 12(4)(s.4) is not met, and the request is not admissible on that ground. The Board considers that the requirement of indicating the basis of claim amendments is, in translation, "a further essential prerequisite".
• " Weitere essentielle Voraussetzung für die Berücksichtigung nach Artikel 12(4) VOBK ist, im Falle einer Änderung der Patentanmeldung oder des Patents, die Angabe der Grundlage der Änderung in der ursprünglich eingereichten Fassung der Anmeldung, sowie die Anführung der Gründe, warum mit der Änderung die erhobenen Einwände ausgeräumt werden."
• Some further requests are not admitted either, and the patent is revoked. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0943/22 - Withdrawal opposition by respondent

Key points

• The OD maintains the patent in an amended form, finding that the claims as granted lack basis in the application as filed. Both parties appeal. The opponent withdraws the opposition in the course of the appeal.
• The Board finds that the claims as granted do have basis in the application as filed.
• Under Article 111(1) EPC, " The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution".
• Under Rule 84(2) EPC, the EPO may continue the opposition of its own motion if the opposition is withdrawn.
• In T 0228/16, the board remitted the case after the withdrawal of the opposition, in an appeal of the proprietor. The proprietor had successfully argued that the (amended) claims were sufficiently disclosed, thereby overcoming the grounds of the impugned decision.
• The OD after the remittal considered inventive step of the operative set of claims in an interlocutory decision (link) that the patent could be maintained in amended form. 
• The present Board: "While Rule 84(2) EPC (Rule 60(2) EPC 1973) provides that, after withdrawal of an opposition, the European Patent Office may continue the opposition proceedings of its own motion, this option to continue the proceedings after withdrawal of the opposition does not apply in appeal proceedings (G 8/91, OJ EPO 1993, 346, point 7 of the Reasons [*]). The Enlarged Board of Appeal concluded in G 8/93 (OJ EPO 1994, 887) that the withdrawal of the opposition by an opponent who is the sole appellant immediately and automatically terminates the appeal proceedings, even if in the board's view the requirements under the EPC for maintaining the patent are not satisfied. In this case, the opponent was not the sole appellant, and therefore the appeal proceedings had to be continued in view of the still-pending appeal by the proprietor; however, after allowing the proprietor's appeal, taking into account the above-quoted principles established by the Enlarged Board of Appeal, the board may not assess the remaining grounds of opposition raised by the former opponents/interveners. The board's finding that the ground for opposition under Article 100(c) EPC does not preclude the maintenance of the patent as granted implies that the patent is to be maintained as granted."
• *: G 8/91 is really only about a withdrawal of an appeal, and para. 7 of it should be understood in that context, as is clear from the immediately preceding paragraph 6, which speaks of "the withdrawal of the appeal".
• Finally, the order of the decision is that the patent is maintained as granted. As a comment, I understand that under Rule 84(2) the decision (of the OD) is that the opposition is terminated or that the opposition is terminated without a decision. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1569/19 - From novelty to inventive step, late

Key points

• " The opponent had always argued during the opposition procedure that D6 disclosed all the features of claim 1 of the patent", in addition to inventive step attacks starting from other documents. 
• " In appeal, [the opponent] presented a new [inventive step] objection based on the fact that D6 did not disclose feature [1.3](c)."
• " The board takes the view that the content of the disclosure of D6 (or any prior art document in general) is generally to be considered a fact. D6 as a prior art document constitutes evidence but which parts of D6 disclose which features of claim 1 as granted constitute facts (see e.g. T 1914/12, Reasons 7.1 and in particular 7.1.4, T 603/14, Reasons 7.3, T 482/18, Reasons 1.2.5, also referring to T 1914/12)." 
•  " This [that D6 did not disclose feature [1.3](c)] is a new fact and not merely a new argument. A new argument would relate e.g. to the technical effects provided by this distinguishing feature, whether the skilled person would consider other documents, if it would be obvious to combine them with D6, etc. All these arguments would, however, be based on the new fact regarding the disclosure of D6." 
• The fact/argument distinction is a rather subtle one. The distinction is, however, important because new arguments that do not involve new facts might not be covered by Art. 114(2) EPC. The decision treats the admissibility under Art. 12(4) RPBA 2007, and "the board agrees with the opponent that Article 12(4) RPBA 2007 does not relate to arguments." 
• "Summarising, the board considers that the opponent's objection of lack of inventive step starting from D6 relates to new facts presented for the first time in appeal that could and should have been presented in the first instance opposition proceedings. Exercising the power under Article 12(4) RPBA 2007, the board does not admit this objection into the appeal proceedings." 
• As a comment, the appeal decision also notes that: "the proprietor pointed out that the opponent had agreed with the opposition division that D6 was not suitable as closest state of the art (see the middle of page 13 of the reasons for the impugned decision: "The opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). 
• As a comment, it is unclear to me how this - D6 does not disclose feature 1.3.c - could be a new fact presented for the first time in appeal, given the remark in the minutes that "the opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). "
• The impugned decision and the minutes are a part of the basis of the appeal under Art.12(1)(a) RPBA 2020.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1103/21 - 15 minutes oral proceedings

Key points

•  The proprietor files amended claims in appeal.
• The proprietor had filed no reply at all in the first instance proceedings and the patent was revoked without oral proceedings and without preliminary opinion of the OD.
• The proprietor does not invoke a substantial procedural violation, so probably they had received the notification of the notice of opposition.
• The Board: " Throughout the appeal proceedings, the appellant has not indicated any specific circumstances of the appeal case that could justify the admittance of the new requests into the appeal proceedings within the meaning of Article 12(6) RPBA. In its communication pursuant to Article 15(1) RPBA, the board had already announced the expected non-admittance of the main request and the auxiliary request (see paragraph III above and the respective communication of the board under point 11). However, the appellant did not provide any justification either in writing or at the oral proceedings."
• Hence, the appeal is admissible, but all requests are inadmissible.
• 
  
• The oral proceedings before the Board lasted 15 minutes and were held by vico. Both parties attended.
• The possibility of holding short oral proceedings seems a great advantage of vico. In this way, it is unambiguously clear that the proprietor was aware of the appeal and had nothing to add and the right to oral proceedings was complied with in the most efficient manner.*
• (* - without prejudice to the possible right to in-person oral proceedings outside pandemics). 
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0433/21 - Retraction withdrawal appeal

Key points

• The Examining Division refused the application. The applicant appeals.
• After a " rather negative" communication of the Board: " In a submission dated 29 December 2022, the then appellant wrote the following: "In the name and on behalf of the applicant, Phoslock Pty Ltd., our appeal filed on February 9, 2021 against the decision of the examining division of December 1, 2022 is hereby withdrawn"" 
• Oral proceedings were cancelled, and fees were refunded.
• " With a submission dated 20 January 2023, the appellant who henceforth is referred to as "the petitioner" made the following requests: "1. Es wird beantragt, den im Schreiben vom 29. Dezember 2022, eingereichten Antrag auf Basis der Regel 139 EPÜ oder aufgrund allgemeiner Rechtsgrundsätze nach Art 125 EPÜ, dahingehend zu korrigieren, dass dieser als Antrag auf eine Teilanmeldung verstanden wird, wie er mit Aktenzeichen 23152685.6 am heutigen Tage beim EPA eingereicht wurde.
• The petitioner submitted that: "it had always been the intention of the petitioner to file a divisional application rather than to withdraw the appeal".
• The Board: "an error caused by miscommunication between the applicant and the representative or by an incorrect recollection of the applicant's instructions [cannot] be regarded as an error under Rule 139 EPC", hence there is no correctable error if the document filed with the EPO is deemed to express the representative's intention at the time of filing"
• The Board is of the view that it has to decide on the request for retraction of the withdrawal. This procedure, however, does not reopen the appeal as such if the retraction is not accepted. 
• The Board disagrees with T 0695/18 that a correction of a withdrawal of an appeal is never possible. I think the position of the present Board is reasonable. 
• The Board introduces a difference in legal status between a same-day retraction and a later retraction. Same day would be possible because "one day is the smallest temporal unit" in the context of the EPC.
• I am not entirely sure if one day is the smallest temporal unit for written proceedings before the EPO in all contexts, see T1946/21 (though that decision  may be largely obsolete after G1/22)
• "Only a withdrawal made during oral proceedings becomes immediately effective. This is nonetheless based on procedural reasons, and not on substantive ones, since either the oral proceedings are declared closed with the effect of res iudicata, or (in the case of appeal and cross-appeal) a subsequent retraction still during oral proceedings would have to be examined in the same way as a late-filed request. "
• The Technical Board: "The public would be ill-served by well-meant, yet ill-explained exceptions to seemingly strict rules in order to do justice to individual cases. Such case-specific exceptions invariably lead to uncertainty and entice litigation. The above considerations apply all the more since the typical users of the European patent system are professional representatives (mandatory for applicants not resident in [a contracting state of the EPC]) who have passed a qualifying examination and do not need special protection for inexperienced users."
• "In the case at issue, the petitioner declared a withdrawal of the appeal, yet in fact had received instructions to file a divisional application and withdraw the appeal. Although the petitioner first argued that the withdrawal was meant to be the filing of a divisional application, during oral proceedings it was submitted that the declaration to withdraw the appeal was not erroneous, but incomplete, and the error was the omission to (additionally) file a divisional application, as if one page of the document as submitted on 29 December 2022 had gone amiss."
• Note that evidence must be available of the true intent at the relevant time.
• "the Board finds that in the present case the representative made an error by omission, but not an omission concerning the content of the document that was actually filed, but an omission to carry out the client's instructions. The omission of a procedural act cannot in itself be regarded as a correctable error under Rule 139 EPC, because it does not fall within the scope of an error or mistake in a "document filed with the European Patent Office" as required by that Rule, but rather constitutes an error or mistake in the run-up to the filing of the document. This narrow interpretation of the concept of "error" not only conforms to the wording of Rule 139 EPC, but also alleviates the concerns highlighted in decision T 695/18, i.e. that applying Rule 139 EPC to such cases as the current one would compromise legal certainty."
• The Board finds the approach of T 2474/19 to be "particularly helpful": "it is the acting person's error which must be considered, i.e. the error of the person who actually filed the document to be corrected".
• The request for correction/ retraction is refused. The meanwhile filed divisional application is not validly filed, as I understand the Board; the Board does not say this with so many words. Perhaps the status of the divisional will be the subject of an appeal in the case of the divisional application.  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0543/20 - The appropriate starting point

Key points

•  The Board, in translation: "[in the proprietor's] opinion, this teaching in example 13, especially in connection with the R99E protease variant, was not a "realistic" starting point (as in point 4.1.2 of T 1379/11) for the task without a retrospective perspective for the person skilled in the art. solution approach, since the focus of document D2 was on other protease variants that were actually examined, in particular the "F49" variant. The expert lacked motivation in the sense of the so-called "could-would approach" to choose example 13 among all 21 examples of document D2 in the light of their entire teaching with a focus on another protease variant, and within example 13 then an R99, and of these to “select” the R99E protease variant mentioned only in claims 2 and 6 as the starting point for the inventive step."
• The Board: "This line of argument is apparently based on a misunderstanding of how the "selection" of the closest prior art is made. It is true that a starting point for determining an inventive step should be realistic in the sense of the criteria developed by the boards of appeal in this context described in point 4.1.2 of T 1379/11. According to these criteria, it should describe an object that serves the same purpose or pursues the same aim, describes a similar use or concerns the same or a similar technical problem, or at least comes from the same or a closely related field as the claimed invention. A second possible criterion is the number of common features. The fact that a teaching could not realistically have been the basis for an invention is not the case, for example, if the teaching comes from an unrelated field that is too distant."
• " The fact that document D2 contains additional examples and describes a number of other protease variants in more detail than the R99E protease variant is therefore irrelevant to the question of whether Example 13 with the R99E protease variant can serve as a starting point for the problem-solution approach. The further, more detailed examples and the alleged focus in document D2 on other protease variants that have actually been examined with regard to their cleaning performance cannot change the technical disclosure of Example 13 and therefore have no influence on the question of whether this is a realistic starting point for the task -solution approach can be."
• "The criteria for selecting a realistic starting point set out in point 4.1.2 of T 1379/11 are met for example 13 of document D2. Document D2, like the patent in suit, provides suitable or improved subtilisin protease variants for use in a detergent or cleaning agent, and all protease variants disclosed in document D2, including those mentioned in Example 13, are intended for this use, as is that in Example 13 liquid cleaning agents described. In this respect, the use of Example 13 as the closest prior art does not constitute a discrepancy with the procedure described in point 4.1.2 of T 1379/11."
• "The difference between the claimed subject matter and the disclosure in Example 13 of document D2 lies in the concentration of the phosphonate. In order to determine the task to be solved, it is necessary to assess whether there is a technical effect associated with this distinguishing feature. This is not the case for the phosphonate concentration range cited in the claim. "
• Example 13 is silent on the concentration of the phosphonate that is used.
• " is therefore no technical effect associated with the difference between the claimed use and the teaching in document D2. Since no concentration for the phosphonate is given in Example 13 of document D2, the problem to be solved can therefore only be seen in the provision of a suitable concentration for the phosphonate in the enzymatic liquid cleaning agent described in Example 13 of document D2."
• The Board: " The use of a HEDP concentration, which falls within the range specified in the claim, was therefore obvious from the teaching in document D2 alone for the person skilled in the art who would like to put example 13 of document D2 into practice."
• " It was therefore obvious to the person skilled in the art to select a concentration for the phosphonate in the liquid cleaning agent described in Example 13 of document D2 from the concentration range specified in the claim. There is therefore no inventive step associated with the subject matter of claim 1 of the main request (Article 100(a) EPC in conjunction with Article 56 EPC).
• As a comment, I'm not entirely sure if all national courts would apply the PSA in the same way. The decision seems predicated on the rule that the CPA is an embodiment, not an entire document, see e.g. T 1287/14.
• See also T 0787/17. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

G 7/93 - r.2.6 Review of decisions to hold inadmissible

Key points

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• "2.6. It may be added that if an Examining Division has exercised its discretion under Rule 86(3) EPC [1973] against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. "
•  "If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [...], or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion."
• The holding concerned a decision of an examining division to hold inadmissible amended claims filed late in the grant procedure. The holding of the  Enlarged Board has been extended to opposition proceedings and to other types of submissions (namely, evidence and allegations of facts) but not to decisions of opposition divisions to admit submissions.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.