T1620/23 - Inventive step as new ground (?)

Key points

• The Board, in translation: "The ground for opposition of lack of inventive step pursuant to Article 100(a) in conjunction with Article 56 EPC was mentioned in the notice of opposition dated 30 August 2021, but not substantiated in accordance with Rule 76(2)(c) EPC. Rather, the opponent reserved the objection of lack of inventive step for a later stage of the proceedings, should this objection become relevant due to new requests (notice of opposition, page 11). Accordingly, no statement was made regarding the question of the lack of inventive step in claim 1 as granted."
• The claim was attacked as not novel, I understand.
• The OD found the claims to be not novel. "the opponent did not make any statements regarding the lack of inventive step of the granted patent in the further course of the opposition proceedings."
• The Board finds the claim to be novel (contrary to the OD). The opponent would like to attack the claim for lack of inventive step.
• "The opposition ground of lack of inventive step under Article 100(a) in conjunction with Article 56 EPC – which, according to the decision of the Enlarged Board of Appeal G 7/95, is to be distinguished from the opposition ground of lack of novelty – was therefore not effectively raised by the opponent. The Opposition Division also did not introduce this opposition ground into the proceedings pursuant to Article 114(1) EPC. In particular, the Opposition Division's decision on claim 1 of the granted version of the patent was limited to the lack of novelty of the subject-matter. If the opposition ground is neither asserted and substantiated in the notice of opposition nor introduced into the proceedings by the Opposition Division, a "new opposition ground" exists according to G 1/95 and G 7/95, in each case reason 5.3. In appeal proceedings, such a new opposition ground may, according to decision G 10/91, only be examined with the consent of the patent proprietor."
• "The patent proprietor refused to consent to the examination of this ground for opposition. The ground for opposition of lack of inventive step may therefore not be examined in the appeal proceedings (G 10/91, principle 3). 
• Cf. T 131/01, published in the OJ: "In a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated pursuant to Rule 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee"
• As discussed in  Visser's Annotated EPC, Rule 76(2):4.3.3, incidentally. 

EPO 

The link to the decision is provided after the jump.

T 1789/22 - Two opponents, one appeals, attacks submitted by the other

Key points

• Decision of 12.12.2024, written decision issued on 19.12.2025 (Board 3.3.04, no communication under Art. 15(9) RPBA visible in the online file).
• There were two opponents. Opponent 1 appeals. Opponent 2 and the proprietor do not appeal. Opponent 1 maintains only some of the attacks in their Statement of grounds. Opponent 2 is a party as of right and uses its 'reply' to the appeal to submit additional attacks.
• "The submissions of the party as of right-opponent 2 included objections under lack of novelty in view of document D27 and lack of inventive step where documents D6 and D31 were taken to represent the closest prior art. Since the opposition division took a decision on these lines of attack in favour of the respondent, an appeal should have been filed to have these findings reviewed [*], rather than merely contesting them in the reply to the statement of grounds of appeal. However, as indicated above, the appeal of the appellant did not contest the decision in these respects, therefore these objections are outside the legal and factual framework for review by the board. Their consideration is in principle not excluded but is subject to the discretion accorded to the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• The Board's exercise of its discretion is intertwined with its decision on the subsequent letter of the appellant (opponent 1) that it agreed with the attacks (objections) of opponent 2.
• " The board notes that the appellant provided no justification for not having raised these objections with the statement of grounds of appeal, and the board cannot see any either. Moreover admitting these several additional attacks would be detrimental to procedural economy and unfair for the respondent, who relied on these parts of the appealed decision not having being contested. Accordingly, the objections filed by the appellant with this letter were not admitted into the appeal proceedings. The same applies to the corresponding objections filed by the part as of right."
• * - Note that this point is a bit tricky. Had the OD revoked the patent as novel over D1 but not inventive over D2, the opponent could not have appealed on the ground of the unfavorable reasoning on novelty (the requirement of being adversely affected of Art. 107 is determined by reference to the order of the decision, not the reasons). 
• By the same token, had the proprietor appealed as well, opponent 2 as a respondent could have submitted the attacks validly in their reply to the appeal.
• 
  
• Furthermore, opponent 1 had attacked only some of the independent claims of the set of claims held allowable by the OD in its statement of grounds, but did not attack independent claim 5 in its statement of grounds.  
• The Board holds a later-filed attack against claim 5 to be inadmissible: " As set out above, the statement of grounds of appeal defines the framework of the appeal and in the present case it did not include novelty of claim 5 of the request held allowable by the opposition division (see points 2., 5. and 5.1). Accordingly, novelty of claim 1 of the main request is not open for review by the board in this appeal proceedings."
• The Board first recalled the principle of the 'extent of the opposition'. The Board then reasoned that: "2. With regard to opposition appeal proceedings, in addition the statement of grounds of appeal determines the object of the appeal proceedings and the legal and factual framework for the review of the appealed decision by the board. In other words, the statement of grounds of appeal determines the extent to which amendment or cancellation of the appealed decision is requested (see e.g. G 9/92, Reasons 1)."
• G 9/92 r.1: "...  Proceedings under the EPC in respect of European patent applications and patents are, with some exceptions, initiated by a party. The initial "request" determines the extent of the proceedings. This is known as the principle of party disposition (ne ultra petita). The present case concerns the question whether the extent of the initial appeal, i.e. the statement in the notice of appeal, affects the extent of the subsequent proceedings, and this has to be examined systematically in conjunction with procedural law under the EPC." (emphasis added)
• G 9/92 is about reformatio in peius, i.e. the subject-matter of the patent (as amended), i.e. the order of the decision and not the reasons for the decision (there is quite some case law on this point). Opponent's 1 request in its notice of appeal was to revoke the patent in its entirety (link).  The TBA acknowledges that G 9/92 does not directly support its reasoning by citing it as 'see ... G 9/92').
• The Board's reasoning seems new to me.
• I also wonder how to reconcile it with the case law that there is no concept of partial inadmissibility of an appeal in the EPC.  
• The Board's headnote 1 is as follows: "1. ... The provisions of Article 107, second sentence, EPC guarantee a non-appealing party the right to participate to pending appeal proceedings. However, they do not provide it an autonomous right to have requests which go beyond the scope of the appeal as defined by the appellant's statement of grounds of appeal, decided by the board (as a direct consequence of G 2/91, Headnote)."
• This headnote puts it too strongly, in my view.
• The case is about a non-appealing opponent, not about a proprietor submitting claim requests. Furthermore, G2/91 is about the termination of the appeal if the appellant withdraws his appeal (heandnote 1) and the refund of the appeal fee (headnote 2).
• I think the 'reply' of the non-appealing second opponent should be treated as a case amendment under Article 13(1) RPBA, similar to the case where a respondent/appellant uses his reply under Art.12(1)(c) to the appeal of the other appellant as a supplement to his own statement of grounds (treated as an appeal case amendment under Art. 13(1), see T 2701/19).
• See also T 250/20 about cross-party reliance, referring to "established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings". This suggests that Opponent 2 can rely on the Statement of grounds of Opponent 1 and then submit any further attacks as case amendments under Art. 13(1).
• "By not filing an appeal, a non-appealing party has not contested the findings of the opposition division, beyond the framework of the appeal filed by the appellant."
• This does not seem correct, to the extent that it suggests the opponent as a respondent cannot introduce objections against the broader claims (sought by the proprietor as appellant) that were not decided on in the impugned decision. 

EPO 

The link to the decision is provided after the jump.

T 0439/22 - Deleting statement from description in opposition

Key points

• This is the appeal that led to case G 1/24. After the remittal, the TBA now decides on the patent.
• The Board considers claim 1 to be not novel because a term in the claim is given a broad definition in the description. The definition given in the description is broader than the normal meaning of the term in one aspect. Under the broader definition, the claim is anticipated by a prior art document. Hence, the definition in the description is considered and adopted as decisive under Art. 54 by the Board. 
• Although the definition is broadening in one aspect, in other aspects it narrows the scope of the claim compared to the term's normal meaning. 
• In AR-1, the proprietor deletes the paragraph from the description. This causes an issue, namely an extension of the scope of protection under Article 123(3). 
• The Board: "Claim 1 contains neither explicit nor implicit features that necessarily limited the claimed aerosol-forming article to a rod-shaped configuration or, as a consequence, required the tobacco sheet to be gathered by being compressed or constricted substantially transversely to the cylindrical axis of a rod. In the absence of the definition formerly provided in paragraph [0035], claim 1 also encompasses aerosol-forming articles that are not rod-shaped, i.e. not substantially elongated in one direction and, if they are, sheets that are folded and gathered not substantially transversely to but along the cylindrical axis of the rod, like a bellows, thus extending the scope of protection compared with claim 1 of the main request." 
• "For the reasons above, the auxiliary request does not comply with the requirement of Article 123(3) EPC, and is therefore not allowable."
• In the case at hand, the definition may have been included in the description from the outset. However, the present case also serves to illustrate that if the description is amended in the pre-grant procedure, it may not always be possible to revert to the original text after grant, nor to simply delete the relevant passages of the description. 

EPO 

The link to the decision is provided after the jump.

T 0487/23 - Withdrawal request oral proceedings

Key points

• The opponent and the proprietor both appeal. The Board issues a communication (that contains the preliminary opinion). The proprietor withdraws its request for oral proceedings within one month of the communication. The opponent withdraws its request for oral proceedings more than one month of the communication (by announcing it will not attend the oral proceedings). The oral proceedings are then cancelled.
• Is the opponent's appeal fee reimbursed at 25% under Rule 103(4)(c)??
• The Board: "As no oral proceedings took place, both conditions of Rule 103(4)(c) EPC, that "any request for oral proceedings is withdrawn ... within one month ..." and "no oral proceedings take place" (emphasis by the Board), are met(Case Law of the Boards of Appeal 11th Edition (2025), V.A.11.12, e.g. T 488/18). 3. 
• Consequently, both appeal fees are to be reimbursed at 25%."
• Rule 103 EPC is a gift that keeps on giving for bloggers and handbook writers.
• I don't think the decision is correct, by the way. According to CA/80/19, point 82, "If a request for oral proceedings is withdrawn in good time before the oral proceedings, the Board may be able to use this freed-up capacity to schedule oral proceedings in another appeal case. Such withdrawals will also allow interpretation to be cancelled in sufficient time to reduce or eliminate interpreting costs."
• In the present case, the oral proceedings could be cancelled only after the opponent withdrew its request for oral proceedings, which was more than one month after the communication. The incentive for any appellant who had requested oral proceedings should be to withdraw its request for oral proceedings within one month of the Board's communication. 
• On the other hand, the AC document is from 2019, before Vico oral proceedings became the rule. Hence, there may be less of a need for an early withdrawal of the request for oral proceedings.

EPO 

The link to the decision is provided after the jump.

T 0749/23 - Any embodiment as starting point (Mite composition)

Key points

• Claim 1 of AR-3 at issue  “is for a composition comprising (i) a population of individuals from a Phytoseiid mite species, (ii) a food source for the mite individuals selected from rearing prey from the suborder Astigmata and (iii) stacked carrier elements selected from millet husks, where the carrier elements comprise shelters for mite individuals”
• Documents D3/D9 describe five mite compositions comprising, as equal alternatives, the carrier elements wheat bran, buckwheat husks, rice husks, saw dust and corn cob grits”
• “The patent proprietor contended that the composition comprising rice husks of documents D3/D9 was not a suitable starting point for the assessment of inventive step for various reasons. First, they argued that buckwheat husks, rather than rice husks, should be taken as the starting point since buckwheat husks were used in the examples of documents D3/D9 and were therefore highlighted.”
• The Board: “The starting point for assessing inventive step is normally a set of features disclosed in combination in a document, typically in the form of an embodiment or example.”
• “the board considers that each of these embodiments [of the five compositions] can be used as the starting point for assessing inventive step. All embodiments are presented as suitable, and there is nothing in documents D3/D9 that would disqualify any of them. Since each embodiment can be used, the board also agrees with the opponents that the assessment of inventive step can be based on a mite composition containing rice husks as carrier elements as the starting point.”
• “the board does not concur with the patent proprietor's view [that the rice husk embodiment of D3 is not a starting point].  First, Article 56 EPC requires that an invention, having regard to the state of the art, not be obvious to a person skilled in the art. The state of the art for the purpose of considering inventive step is the entire state of the art as defined in Article 54(2) EPC, without any ranking or distinction (T 2140/22, Reasons 1.9.1).”
• “if inventive step is to be acknowledged, the claimed subject-matter must be inventive starting from any starting point in the prior art. Conversely, if the invention is obvious to the skilled person from at least one starting point, an inventive step is lacking (Case Law, I.D.3.3). Neither the EPC nor the case law of the boards stipulate that the starting point for assessing inventive step must be the entire disclosure, an example, or a preferred embodiment in the prior art. Rather, the starting point may be any disclosure in the prior art.”
• Still, it may not be obvious to a skilled person to develop a non-preferred embodiment.
• “There is also no requirement that an embodiment must be exemplified for it to be considered in the assessment of inventive step. There is, likewise, no requirement that the prior art contain any pointer, suggestion or incentive to select a particular embodiment for further development for this embodiment to qualify as the starting point in the problem solution approach”.
• “as a matter of principle and in agreement with T 2001/23 (Reasons 3), that if the subject-matter of a claim is found to lack an inventive step starting from a particular disclosure, as is the case here (see below), it is not possible to establish inventive step by proposing that the assessment be started from a different starting point.”
• The Board then distinguishes T 1126/19 on the facts.
• “Third, G 1/23 does not support the patent proprietor's argument that the skilled person is the relevant point of reference in selecting the starting point for the inventive step analysis. Points 93 to 95 of decision G 1/23 are concerned with the impact on novelty and inventive step of accessible but not fully reproducible products which the Enlarged Board of Appeal accepted as being part of the prior art. According to these considerations, the relevance of such a product for assessing inventive step, namely its suitability as a starting point or secondary source of information, depends on the available information associated with the product, i.e. it depends on what is disclosed to the skilled person.”
• “ The Enlarged Board of Appeal [in G 1/23] did not make any finding that the choice of starting point in the problem-solution approach requires motivation by the skilled person. In the case in hand, all carrier elements disclosed in documents D3/D9 are available, and all can be used. Indeed, the patent proprietor never argued that rice husks would be obviously defective or not enabled.”
• In view of T 2759/17: “In the case in hand, as correctly noted by opponent 2, the starting point for assessment of inventive step, namely a composition comprising rice husks, is disclosed for the same purpose as the compositions comprising other carrier materials disclosed in documents D3/D9, namely the rearing of predatory mites, which is also the purpose to which the patent is directed. The board concludes that in the case in hand, a composition comprising rice husks would also be a realistic starting point under the approach set out in T 2759/17.”
• “The patent proprietor's assertion that documents D3/D9 did not disclose a list of equal alternatives to the skilled person is based on the results in Example II of the [opposed] patent, in which millet husks performed better than bran. Since the closest prior art must be assessed from the skilled person's point of view on the day before the filing or priority date valid for the claimed invention, the assertion must be rejected for this reason alone.”
• One would expect that, starting from the embodiment of D3 with rice husk as the carrier element, the distinguishing feature would lie in the other components of the composition. However, the difference is that the patent claims the use of millet husk as the stacked carrier elements. The Board does not acknowledge any technical effect of that difference. “the patent describes that millet husks have a sheltering effect in comparison with the non-sheltering carriers wheat bran and vermicullite (paragraphs [0005] and [0006], experiments I and II). The patent does not indicate any advantageous effect of millet husks over rice husks.” A post-published document was not admitted, as filed late (namely, in appeal).
• The patent is revoked.
• “The objective technical problem is the provision of alternative carrier elements for a mite composition comprising a population of a phytoseiid predatory mite species and a factitious host population which comprises at least one species selected from the family of the Carpoglyphidae.”
• I think a key question could have been whether the OTP was indeed simply providing an alternative, given that the advantages of risk husk were unrecognised in the prior art document D3.
  
  
• Partiality of the OD?
• “opponent 2 submitted that the chairman of the opposition division stated during oral proceedings that in coming to the conclusion that auxiliary request 3 was inventive over document D9 as the closest prior art, it was also taken into account that the claims were restricted to particular mites and that, from the perspective of a work-around, there were sufficient possibilities.”
• The Board dismisses the objection on the ground that the reasoning about the workaround is not part of the OD’s written decision. Furthermore, “an objection on the ground of suspected partiality before the department of first instance can be disregarded if it is not raised immediately after the party concerned becomes aware of the reason for the objection (G 5/91, Reasons 4 [...]”

EPO 

The link to the decision is provided after the jump.

T 1396/23 - 2nd medical use claim for foodstuff

Key points

• Claim 1: “Composition comprising polysaccharides and whey protein micelles [provided as a complex, a so-called WPM complex] for use in the treatment or prevention of ... diabetes ...  in a subject;  .."
• “The appellant [opponent] did not contest that claim 1 defined a therapeutic method of treatment pursuant to Article 54(5) EPC. It argued, however, that the effect induced by WPM complexes described in the opposed patent was not therapeutic. The claimed complexes provided nutrition but were unsuitable to prevent the claimed conditions, even less so to treat them."
• The Board: “The patent explains that, prior to the filing date, whey protein isolates were considered not only to be essential nutrients [*] but also to be beneficial in reducing the risk of, and treating, metabolic diseases associated with high-fat diets and/or elevated postprandial insulin levels, such as diabetes (see paragraphs [0005] and [0006] and the references cited in those paragraphs). On this basis alone, it is reasonable to assume that the claimed WPM complexes, which contain whey proteins, could likewise induce these effects.”
• • Here, the Board finds that it was known that whey protein isolates were ‘beneficial’ in “treating ... diabetes”, and that on this basis, it is credible that the claimed composition that comprises whey proteins meets the requirement of Art. 83 for the recited second medical use of treating (or preventing) diabetes.
  • It is unclear to me what the Board means by the statement that whey protein isolatesare ‘essential nutrients’. I assume humans can live without a regular intake of whey protein isolates, or even without a regular intake of whey proteins, for that matter. Whey proteins may contain amino acids, including essential amino acids, but that is not the same.
• The Board notes that additionally, “the patent teaches that using the claimed WPM complexes rather than conventional whey proteins is beneficial for subjects who are at risk of or suffer from the diseases indicated in claim 1. ... The tests in example 3 of the patent show that meal D - [with the WPM complex] - induces a substantially lower insulin response compared with isocaloric and isonitrogenous control meals A and B, which comprise uncomplexed WPM or whey protein isolates ... This indicates that less insulin is required to clear glucose from blood after ingestion of meals comprising the WPM complexes” - than with whey protein isolate, I understand.
• The Board: “It is immaterial what the underlying mechanism of action is ... - the skilled person would appreciate that the claimed WPM complexes are intended to be incorporated into a nutritional composition in place of whey proteins in order to achieve the stated therapeutic effect. In the context of the invention, the claimed compositions comprising WPM complexes can thus be regarded as "a substance or composition" within the meaning of Article 54(5) EPC that is used to carry out the claimed therapeutic method.”
• This leads the Board to the following headnote: “A substance or composition that induces a therapeutic effect when used to replace a known essential nutrient in a nutritional composition may be considered a "substance or composition" within the meaning of Article 54(5) EPC”
• “It is undisputed that optimising the insulin response by improving the body's sensitivity to insulin is a cornerstone of diabetes therapy. A reduction in insulin demand following a meal is beneficial in patients affected by or at risk of developing insulin resistance, type 2 diabetes and other associated metabolic diseases. Accordingly, the results of the tests described in the patent make it credible that the claimed composition is suitable for treating and preventing the diseases indicated in claim 1.
• • The headnote seems to pertain only to the second argument of the Board, not to the argument based on the known therapeutic effect of the (prior art) whey protein isolates.
  • Possibly, the view of the Board is that WPM complex is a substitute for the known whey protein (isolate), that the known whey protein is a nutrient with a lower insulin response, i.e. with a beneficial effect for diabetes patients (quite comparable to replacing sucrose/glucose with artificial sweeteners, it seems to me) and that beneficial effect on the health of diabetes patients of the known whey protein is sufficient to support a second medical use claim of the substitute WPM complex.
  • See also e.g. T 2036/21 about "omega-3 fatty acids selected from DHA, DPA and EPA, uridine, choline, and vitamin B12 and folate for preventing dementia".

The link to the decision is provided after the jump.

T 1601/22 - More than a year for the written decision

Key points

• This decision (by Board 3.3.04) was taken during oral proceedings on 10.10.2024. The written decision was issued on 23.12.2025. Two communications under Art. 15(9) RPBA were issued, in January and July 2025, indicating ‘the current workload’ as the reason for the delay in the issue of the written decision.
• • Hence, Article 15(9) RPBA was complied with, so we can’t complain about that. Whether taking more than a year to write the decision is sound caseload management is not something for me to speculate about. But it is remarkable that the Board chose to delay this decision for so long.
• “According to claim 1, IL-2, which may be either human IL-2 or aldesleukin, is the active agent responsible for the therapeutic effect of treating systemic lupus erythematosus in a human subject.” Claim 1 also specifies  “to be administered at a dose of between 1 MIU/day and 3 MIU/day”.
• "D5 [a patent application] discloses two case studies reporting a therapeutic effect of IL-2 administered intravenously at a dose of "500 U" for 14 days in the treatment of SLE"
• " In view of the early filing date in 1987 [of D5], it cannot be confirmed that the doses disclosed in D5 were established according to the WHO standard for IU."
• " The subject-matter of claim 1 differs from the disclosure in document D5 in the dosage of between 1 and 3 MIU/day of IL-2, which is not derivable from D5."
•   The claimed dosage range of between 1 and 3 MIU/day provides dosages below 3 MIU/day. This range is not selected arbitrarily, because the administration of higher IL-2 doses (not excluded by the teaching of D5) also stimulates Teffs, which is an undesirable effect"
•  "While D5 provides isolated case studies of the treatment of two patients having SLE with IL-2, these do not prove statistical significance, and furthermore, the dosage used is not apparent from the information provided in D5.
• Moreover, D5 does not provide any rationale that might guide the person skilled in the art in selecting a suitable dosage. The general range of 35 to 2000 units proposed in D5 (column 6, lines 40 to 56) is very broad. The use of un-standardised "units" and the vague description of the dosage regimen applied in the reported clinical cases does not permit any conclusions with regard to the dosage levels proposed, or the actual dosages used in the clinical cases."
• The Board considers the claim to be allowable.
• See also T1108/22 - 3.3.04 - 18.11.2024 - 22.12.2025 (no Art. 15(9) communication visible) - 9 opponents, case remitted to OD for further prosecution (so the delay in the written decision actually matters for the actual decision on the allowability of the claims!).
• See also T 1048/21, 10.10.2024 - 22.12.2025 - 3.3.04.

EPO 

The link to the decision is provided after the jump.

T 1902/23 - Twelve documents as the CPA

Key points

• “The [proprietor/respondent] argued that D11 should be considered as the closest prior art for assessing inventive step, contrary to the [opponent’s/appellant’s] position that all documents D2-D12 and D16 were suitable alternatives to be taken as the closest prior art [...]. Using twelve documents as [the] closest prior art constituted an impermissible "shotgun" approach. Reference was made to the Guidelines for Examination (G. VII. 5.1) and decision T 320/15 (point 1.1.2 of the reasons), which established that multiple starting points were only permitted when documents were equally valid springboards, and that opposition proceedings should not become a forum for unlimited inventive step attacks.”
• “ the Board concurs with the appellant for the following reasons: (a) Firstly, on the question of whether only one piece of prior art should be selected for the purpose of assessing inventive step, it is settled case law that there are often several reasonable starting points, each offering a different route that might lead to the invention without the need of hindsight”
• “In practice, the number of suitable prior art documents may also depend on the breadth of a claim, so that a broad claim may lead to a situation where several documents are equally valid starting points. The same is true in a highly competitive technical field where many closely related prior art documents have been published. However, as mentioned above, the fact that several documents are proposed as the closest prior art is per se not incompatible with the problem-solution approach.”
• “In any event, although the [opponent] started from 12 different documents for their objections of lack of inventive step, it is clear from their arguments that these objections actually boil down to two main lines of attack: ...”
• Claim 1 is found to be obvious over D2. None of the auxiliary requests is admissible and allowable over D2.

EPO 

The link to the decision is provided after the jump.

T 1909/23 - 2nd medical use claim for individualized RNA cancer vaccine

Key points

III. Claim 1 of the patent reads as follows:

"1. An individualized cancer vaccine for use in a method of treating a cancer patient, said method comprising the steps:

(A) providing the individualized cancer vaccine by a method comprising the steps:

(a) identifying cancer specific somatic mutations in a tumor specimen of the cancer patient to provide a cancer mutation signature of the cancer patient, comprising

(aa) ...  and

(b) providing an RNA vaccine featuring the cancer mutation signature obtained in step (a), wherein the RNA vaccine comprises RNA encoding a recombinant polyepitopic polypeptide comprising mutation based neo-epitopes; and

(B) administering the individualized cancer vaccine to the cancer patient."

• Claim 1 of the present patent [is very similar to] claim 1 of EP 2 714 071, dealt with in decision T 2168/21, [and differs from it] in the addition of steps (aa), (bb) and (cc) and in the absence of the further characterisation of the RNA vaccine as "featuring the mutation signature of the patient".
• T 2168/21 was published in June 2024. I missed it back then.

No cross-case res judicata effect

• "The decision in case T 2168/21 is formally not binding on the present board due to the independency of the proceedings between parent and divisional application(s). Neither has it an effect of res iudicata for the present proceedings due to the lack of identity of facts and claimed subject-matter (cf. e.g. T 1270/20, Reasons 3.8.2; T 2084/11, Reasons 1.3; see also Benkard, EPÜ (4th edition), Art. 76, Rn 10). However, in view of the very similar wording of claim 1 of both patents, the conclusions drawn in the present case and the reasoning of this decision are similar to those of T 2168/21."

Medicine preparation steps limiting

• “The claim relates to a purpose-limited product in the sense of Article 54(5) EPC. Both method steps (A) and (B), including the sub-steps (a) and (b), constitute characterising and limiting features of the claimed subject-matter because they form an integral part of the method of treating a patient, which is a method referred to in Article 53(c) EPC. Without these steps, the claimed "individualized cancer vaccine" cannot be implemented and would not be defined.”
• “The patient to which an individualised cancer vaccine is administered is therefore the same patient from which a tumour specimen for the identification of cancer-specific mutations originated giving rise to a cancer mutation signature of this very patient. Since these steps are mandatory to obtain the individualised cancer vaccine under consideration, the legal fiction of a purpose-limited product in accordance with Article 54(5) EPC applies at least to step (A), including the sub-steps (a) and (b), and step (B) of the method, which are thus limiting on the claim.”
  
  
  
• I wonder how infringement of this kind of claim will be evaluated. It seems to me there will not be any generic supplier of the vaccine? 

EPO 

The link to the decision is provided after the jump.

T 1571/23 - No harmless error rule?

Key points

• The OD revoked the patent. The proprietor appeals and requests that the impugned decision be set aside because of an alleged substantial procedural violation.
• The Board, in translation: "In the Board's view, it is immediately apparent from the grounds of appeal that the patent proprietor wishes to have the contested decision set aside due to procedural defects, in particular a violation of the right to be heard, and to have the matter remanded to the Opposition Division. In view of the alleged procedural defects, it is irrelevant whether the appeal can also be considered sufficiently substantiated with regard to the key grounds of the decision, namely the inadmissible extension and the lack of clarity concerning the requests admitted by the Opposition Division (see Case Law of the Boards of Appeal of the European Patent Office, 11th edition, 2025, V.A2.6.7.c; T 1020/13, Reasons 1)."
• • As a comment, there could also be a rule that the procedural error must not be harmless, i.e., that it could have influenced the outcome of the case.
  • CLBA V.A.2.6.7.c cites only one decision, namely T 1020/13.
  • I think a distinction should be made between procedural errors that vitiate the entire decision (i.e., wrong composition of the OD, lacking signature to the decision) and a violation of the right to be heard. In the latter case, there should be at least a prima facie argument made why the substantive reasoning was wrong on the point affected by procedural error, and how the outcome of the case could have been different with correct reasoning (to deal with the case that there are two alternative grounds for refusal, only one of them being affected by the alleged violation of the right to be heard). 
  • The decision is in line with T 0898/24.
• The Board finds no procedural error concerning the main request.
• AR 1 to 91 were not substantiated in the appeal and were not admitted.
• The proprietor's appeal against the decision revoking the patent is dismissed.

EPO 

The link to the decision is provided after the jump.

T 1113/24 - OD should have heard witnesses

Key points

• The opposition is based on an alleged public prior use. The OD rejected the opposition. The opponent appeals. The OD had refused to hear two witnesses (as requested by the opponent) in connection with the public prior use. The opponent had substantiated the public prior use with documents, including technical drawings and diagrams.
• The OD had reasoned as follows: "The witnesses had been offered to confirm that the filling and cleaning installation according to the prior use "Adelholzener" anticipates all the features of claim 1 of the contested patent. However the documentary evidence supporting the alleged prior use D21 to D39 was of such a low quality that a skilled person would not be able to read any technical information from the diagrams of documents D23, D24, ..., and thus would not be able to identify whether some of the claimed features ... were disclosed in these documents or not."
• The Board: "The appellant [opponent] convincingly demonstrated that a substantial procedural violation took place in the opposition proceedings for the following reasons."
• "the [opponent] offered witnesses specifically to corroborate and explain the technical details of the circulation paths that were visible in the diagrams (but required expert interpretation). This means that the witnesses have not been offered to introduce new facts into the proceedings, but merely to confirm the facts alleged in the notice of opposition."
• "According to the established jurisprudence (CLBA, III.G.3.1.1), if the evidence offered as proof of contested facts essential to the settlement of the dispute is decisive, the body hearing the case must, as a rule, order that it be taken."
• "The opposition division also incorrectly based its decision on the prior use on an assumption about what the witnesses would say, thereby pre-empting the evidence's evaluation."
• "Additional clarifications provided by a witness to close a potential gap in the documentary evidence on file cannot be considered per se, even before hearing the witness, as new facts; hearing a witness would otherwise be futile (CLB, point III.G.2.4.1)."
• " The absence of written declarations by the offered witnesses is also not a reason to suspect that their testimony would exclusively introduce new facts, and also does not justify the decision of not hearing them."
• "This is because, according to the established jurisprudence it is a party's choice to present whatever means of evidence it considers to be suitable, and it is an opposition division's duty to take its decision on the basis of all the relevant evidence available rather than to expect the presentation of more preferred pieces of documentary evidence, and to speculate on the reasons for and draw conclusions from their absence "
• "While it is correct that oral evidence of a witness should only be taken when required to clarify matters decisive for the decision, the opposition division should have heard the witnesses before deciding what the alleged prior use was, and was not, disclosing, as the witnesses were offered to corroborate decisive facts already alleged in the notice of opposition."
• "By refusing to hear the proposed witnesses before deciding on the allegation of prior use, the opposition division has in fact proceeded to assesDat is evidence that had not yet been completely established thereby incurring a substantial procedural violation ..."
• The impugned decision is set aside, and the case is remitted to the OD. The Board does not decide on any other points.

EPO 

The link to the decision is provided after the jump.

T 0700/25 - Appealing the grant, filing a div

Key points

• A patent is granted. The proprietor appeals against the grant and files a divisional application. The EPO deletes the mention of the grant (that is to say, publishes a new statement in the Bulletin that the first mention of the grant is deleted). The proprietor withdraws the appeal before filing the Statement of grounds. The proprietor requests the refund of the appeal fee, and requests "that the application go back to its granted state, and that a communication informing them of the new date of the mention of the grant be issued"
• The Board sees an issue: "the appeal fee is also reimbursed if it was paid for no valid reason, e.g. if the appeal is deemed not filed (see G 1/18 ). This second basis for reimbursement takes precedence over the first [i.e., Rule 103(10(b) EPC], because ... . Therefore, preliminary to the reimbursement of the appeal fee under Rule 103(1)(b) EPC, the Board has to assess whether an appeal was validly filed or not."
• The actual question is, of course, whether the divisional application was validly filed.
• "The Board is of the view that an appeal of the Examining Division's decision to grant a patent, in order that the application again become "pending", within the meaning of Rule 36(1) EPC, is manifestly inadmissible and does not provide a valid reason for the payment of the appeal fee. The Board follows, in this regard, the rationale of decision J 28/03, and not that of decision J 1/24. In the Board's view, there is no basis for the appellant's contention that the more recent of the two decisions necessarily takes precedence. As will be explained below, the Board's view is also in line with the rationale of decisions G 2/19 and G 1/09"
• "One of the two conditions giving rise to an entitlement to appeal is that the appellant is adversely affected by the contested decision. However, an applicant is not adversely affected by a decision to grant that accedes to the applicant's requests. Therefore, such an applicant is not entitled under Article 107, first sentence, EPC to appeal such a decision."
• "Contrary to decision J 1/24, an appeal of a decision to grant cannot be assumed validly to exist. An application proceeds to grant only on condition that the applicant has agreed to the text, under Article 113(2) EPC (Rule 71a(1) EPC; [...]). Consequently, an applicant appealing a decision to grant must justify their entitlement to appeal and set out why that decision is not in conformity with the applicant's requests or why it otherwise negatively affects them. Therefore, there is a presumption, that an applicant is not entitled under Article 107, first sentence, EPC to appeal a decision to grant, if their appeal is withdrawn before the filing of any statement of grounds of appeal, since no reasons have been given justifying their entitlement to appeal. Moreover, the appeal being withdrawn, the decision to grant becomes effective. Therefore, a withdrawal of an appeal of the decision to grant, before the filing of a statement of grounds of appeal, confirms that the appeal was filed by an applicant not entitled to appeal under Article 107, second sentence, EPC. Hence, such an appeal is manifestly inadmissible and filed without legitimate reason.
• "The filing of an appeal of a decision to grant a patent based on the earlier application attempts to circumvent the deliberate lack of a legal remedy for restoring the pending status within the meaning of Rule 36(1) EPC. Such an appeal is a clearly inadmissible means of redress and has no suspensive effect (G 2/19, point 6)."
  • Evidently, the Board used the opportunity to opine on the validity of the divisional application lest the Examining Division happily grant it.
  • The Boards may have to decide in the near future on he modified case wherein the applicant files a Statement of grounds and shortly thereafter withdraws the appeal.
  • The Board departs from J 1/24 ,  see above.'

EPO 

The link to the decision is provided after the jump.

T 2048/23 - Inherent or intrinsic properties

Key points

• The opposed patent contains in Table 1 the results of measurements of a certain parameter of  existing, commercially available, absorbent articles. The claim defines a range overlapping with the measured values.
• The Board: "Even if the parameter measurements on the articles seen in Table 1 were never performed publicly or at least were never made available before the priority date, these are intrinsic properties of the articles which are thus considered to have been made publicly available, see for example G 1/23, items 73, 90 and 91, or G 1/92, items 1.4, 2 and 2.1."
  • G 1/92: "There is no support in the EPC for the additional requirement (...) that the public should have particular reasons for analysing a product put on the market, in order to identify its composition or internal structure. ... The introduction of such an additional requirement would remove a commercially available and reproducible product from the public domain. "
  • Suppose the proprietor had invented a new measurement device that enables measurement of a (new) parameter that could not be measured using prior art measurement technologies. Suppose the claim specifies a range for the new parameter, and that the commercial prior art products (which were commercially available on the filing date) are found to exhibit a value of the parameter in the claimed range. Does it matter that the parameter was not analysable on the filing date?

EPO 

The link to the decision is provided after the jump.

T 1131/23 - Fee reduction for non-profit organisation

Key points

• The opponent, VRI-Verband der Reibbelagindustrie e.V., appeals.
• In machine translation: "The appellant [opponent] – a registered association under German law – argued in its appeal, using form 1011, that it was entitled to the reduced fee rate for non-profit organizations. It also paid only the reduced fee rate. To demonstrate that it does not pursue a profit motive, the appellant referred to its articles of association.
• The Board, in translation: " The question of whether the opponent is a non-profit organization and therefore only had to pay a reduced appeal fee when filing the appeal on 14 June 2023 is governed by Rule 6(4)(c) EPC in the version applicable until 30 April 2024 (Rule 6(4)(c) EPC old version).."
  • Obviously, Rule 6(4)(c) EPC applied only indirectly, namely through Art. 2(1).11 Rfees.
• The Board: " According to this provision, a non-profit organization is one which, by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income, profits or other financial benefits for its owners, or which, if a profit motive is permitted, is subject to a statutory/legal obligation to reinvest these profits in the interests of the organization (see: Official Journal EPO 2014, A23, point 8i; Examining Guidelines Part A Chapter X 9.2.1; the same wording is found in point 8 of the Notice of the European Patent Office of 25 January 2024 on fee-related support measures for smaller units, Official Journal EPO 2024, A8, in which Rule 6 EPC (old version) was replaced by Rules 7a and 7b EPC)."
  • The text about "by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income" cannot be found in Rule 6 (old) itself. OJ 2014 A23 is only a Notice from the EPO and does not bind the Board.
  • The Board indicates that it is not strictly bound by the OJ Notice, as follows: " From this definition, which the Board also bases its decision on [ Dieser Definition, die auch die Kammer zur Grundlage ihrer Entscheidung macht, ], it can be inferred that an organization is to be regarded as a non-profit organization if, due to its legal form, it is not permitted to engage in business activities aimed at generating profits."
• "In its assessment under the old version of Article 6(4) EPC, the Board follows the German case law on Section 21 of the German Civil Code (BGB), according to which limited economic activity within the scope of the so-called ancillary purpose privilege (see above, point 3) is permissible."
• "The opponent pursues the objective of the opposition proceedings it conducts to ensure that only those technical developments in the field of friction lining industry that are genuinely new, involve an inventive step, and fulfill the other requirements for patentability are granted a patent. This prevents the friction lining industry from being restricted from having unrestricted access to technical solutions that are already known and obvious from the prior art, and thus ultimately hinders further technical progress in this field. There is a general interest in this – not only, but also – of the friction lining industry, so these opposition proceedings are fundamentally suitable for promoting the objector's association's purpose."
• " Opposition proceedings do have economic consequences; however, these primarily affect the companies whose patent applications are being challenged. For an opponent who—like the opponent in these proceedings—does not manufacture or distribute any products, maintaining or invalidating a patent is neither economically advantageous nor disadvantageous. The costs of opposition proceedings, however, are considerable. Therefore, it cannot be assumed that the opponent intends to profit from conducting opposition proceedings."
  • The members of the association are, of course, the (German) companies active in the industry. The association may be set up for cost-sharing purposes.
• "In light of all the above, it must be concluded that the opponent is to be regarded as a non-profit organisation within the meaning of Rule 6(4)(c) EPC old version and that his appeal is therefore deemed to have been lodged, even though he has only paid the reduced fee rate."
  • The preliminary opinion was negative. Oral proceedings were held only for the topic of the correct payment of the appeal fee / whether the appeal was deemed to have been filed. Summons for second oral proceedings, on the merits, were issued shortly after the first oral proceedings (with the oral proceedings to be held two months after the summons).
  • This confirms that under the EPC, the Boards hold oral proceedings even if they consider that the appeal is deemed to not have been filed due to an incorrect payment of the appeal fee.

EPO 

The link to the decision is provided after the jump.

T 1950/23 - Plausibility and generic statement of advantages

Key points

• The Board has to decide on inventive step.
• "Claim 1 of the main request is distinguished from the composition of example 23 of D1 solely in the presence (in claim 1) of "a detergent selected from sulfonate, phenate, or a mixture thereof"."
• "It is undisputed that the patent does not disclose a technical effect specifically linked to this distinguishing feature."
• " The respondent [proprietor] submitted that the effect of the distinguishing feature was an improvement in extreme pressure performance. Evidence of this effect was provided by the appellant's experimental tests D16, submitted in opposition proceedings."
• " The appellant [opponent] did not contest that this effect was demonstrated in D16 as described above, but rather argued that it could not be derived from the application as filed. Therefore, in view of Enlarged Board of Appeal decision G 2/21, it could not be relied upon for inventive step, and hence also not in the formulation of the objective technical problem underlying claim 1."
• "Page 20, lines 15 to 22 ... states that the lubricating oil compositions may further comprise additives that can impart or improve any desirable property of the lubricating composition. Such additives are listed on page 20, lines 22 to 27 and include detergents. Detergents are mentioned in this list as one of many possible additives." In addition, "page 1, lines 20 to 22 states that the lubricating compositions of the invention exhibit both improved friction characteristics and extreme pressure performance"
• "However, further disclosures in the application as filed point to the specific importance of detergents in the claimed lubricating compositions: claim 7, which is dependent on claim 1, stipulates that the composition further comprises a detergent selected from sulfonate, phenate, or a mixture thereof. Claim 8 is the only other claim dependent on claim 1 and related to a further additive, namely a friction modifier. Since dependent claims are generally directed to preferred embodiments of the invention (Rule 43(3) EPC), this indicates a higher ranking for detergents and friction modifiers as additives over other additives listed in the application as filed. "
• "Furthermore, the lubricant compositions of all examples (table 1, page 31) comprise either a sulfonate or phenate detergent, and it is demonstrated for the inventive examples that adequate extreme pressure performance can be achieved ... . Therefore there is a link in the application as filed between the compositions of claim 7 and the effect of extreme pressure performance set out on page 1 as stated above.
• "it is not reasonable to expect patent applicants, at the time of drafting the application, to safeguard against the citation of then unknown prior art, for example in opposition proceedings, by providing comparative data showing an improvement for all potential distinguishing features over all potentially later cited closest prior art documents. Not only would this be unreasonably burdensome, it would also suffer from the shortcoming that not knowing the nature of the disclosure of the newly cited closest prior art, the information required to set up appropriate comparative tests representative thereof would not be at hand."
• " it would be an overly strict interpretation of G 2/21 to require that the application as filed demonstrate that the improvement of a technical effect disclosed in the application as filed and relied on by the patent proprietor is specifically attributed to the distinguishing feature. In such a situation, it would suffice for opponents to cite new prior art differing in the distinguishing feature compared to the prior art known when the application was drafted to invalidate the patent. More specifically, since relying on post-published data would be excluded under such a strict interpretation of G 2/21, such patents would be likely to face revocation."
• "Hence, this effect may be relied upon for inventive step, and consequently in the formulation of the objective technical problem underlying claim 1."

EPO 

The link to the decision is provided after the jump.

T 0583/25 - Allowable AR in examination appeal

• This is an appeal against a refusal decision.
• The examining division held that the subject-matter of claim 1 of the main request (sole request) underlying the decision under appeal did not specify that the "polysilicon emitter" was a "P-type polysilicon emitter" and therefore contravened the requirements of Article 76(1) EPC, as this constituted an unallowable intermediate generalisation.
• In a communication pursuant to Rule 100(2) EPC dated 26 June 2025, the board preliminarily agreed with the examining division and provided reasons for its view.
• The applicant withdraws the main request, and the Board has to decide on the admissibility of the auxiliary request filed with the SoG.
• “The amendments made to claim 1 of the auxiliary request overcome the sole reason for the refusal of the application, because the omitted term "P-type" is added in amended claim 1”
• “The auxiliary request could and should have been submitted in the examination proceedings. According to Article 12(6) RPBA, the board shall not admit such requests, unless the circumstances of the appeal case justify their admittance.”
• "In the present case, the board admits the auxiliary request into the appeal proceedings. The fact that the amendment in claim 1 of the auxiliary request overcomes the examining division's objection is regarded as a justifying circumstance within the meaning of Article 12(6) RPBA."
• "In this context, the board also takes into account the fact that the only possibility to have the examining division's decision on the claims of the main request reviewed by the board was to uphold the main request. In other words, even if the appellant had filed the auxiliary request in the examination proceedings as an auxiliary request, the examining division would have decided to refuse the main request, and the appellant would have had to file an appeal against this decision to have it reviewed by the board."
• If the applicant had filed AR-1 in the examination proceedings and maintained it, the Ex Div would have issued an intention to grant. The only way to obtain a refusal decision would have been to withdraw AR-1 (by keeping to the Main Request in reply to the Rule 71(3) Intention to grant). Then, the ‘not maintained’ prong of Art. 12(6)(s.2) would have applied.

T 1260/23 - Clarity and preferred features

Key points

• Claim 5 as granted: "5. The method of claim 4, wherein the soil and/or moisture resistant formulation is an aqueous polymer dispersion comprising dispersed particles having average particle sizes ranging from about 50 to about 150 nanometers, preferably wherein the aqueous polymer dispersion comprises from about 10 to about 40 % by dry weight of resin particles or solids selected from the group of polyurethane resins, polyether-urethane resins, urethane-acrylic resins, and mixtures thereof." 
• Claim 4 as granted " The method of claim 1, wherein the soil and/or moisture resistant formulation is an aqueous formulation containing one or more thermoplastic resins selected from the group of resins having an ester bond, polyurethane resins, functionalized polyurethane resins, and copolymers and mixtures thereof."
• Is the preferred feature of claim 5 open to the examination of clarity in opposition?
• The OD considered claim 1, amended with the mandatory and the preferred feature of claim 5 (and the feature of claim 4), to be unclear.  " The objection was based on an alleged ambiguity arising from the definition of two lists of polymers in claim 1, with the first including a broad reference to "resins having an ester bond" [i.e., former claim 4], and the second focusing on more specific chemical groups [i.e., the preferred list of claim 5]. According to the decision, it was unclear whether the second list was intended to limit the scope of all the groups in the first list, or simply to propose specific forms for some of them"
• The Board:  "the introduction of certain features by means of the term "preferably" merely indicates that they are optional, thereby rendering the defined subject-matter equivalent to that of an additional dependent claim. As argued by the proprietor, this corresponds to the case described in Reasons 3(a) of G 3/14 (the so-called "Type A(i)" cases), and is therefore not open to clarity objections during opposition or opposition-appeal proceedings."
• It is nice that the Board treats preferred features as "equivalent to that of an additional dependent claim" for the purposes of G 3/14 because you don't have to pay claim fees for preferred features.

EPO 

The link to the decision is provided after the jump.

T 1798/23 - Inconsistent indication of the opposed patent

Key points

• The opponent appeals against the decision to maintain the patent in amended form.
• "the respondent [proprietor] maintained their objection, already raised at opposition proceedings, to the admissibility of the opposition, due to a lack of the necessary information allowing the unambiguous identification of the opposed patent in the notice of opposition."
• It was submitted that while the notice of opposition indicated the correct European patent application No. 16 751 551. 9, the publication number was wrong with regard to the last digit (it indicates EP 3 332 023, whereas the publication number for the patent in suit is EP 3 332 028), as well as the title of the invention reading "Genetic testing for alignment-free predicting resistance of microorganisms against the antimicrobial agents" (this being the title of EP 3 332 023), instead of "Genetic resistance prediction against antimicrobial drugs in microorganism using structural changes in the genome" (this being the title of the patent EP 3 332 028).
• EP EP 3332023 exists, with indeed the title beginning with "Genetic test..."
• " The admissibility of an opposition must be assessed ex officio in every phase of the opposition and ensuing appeal proceedings (e.g. T 1178/04"
• "With [further] submissions dated 30 September 2021 [before the expiry of the opposition period], the notice of opposition was filed anew with the corrected title ("..."). The letter also contained the name of the patent owner (Ares Genetics GmbH), the European patent application No. 16751551. 9 and the patent's publication number EP 3 332 028, all as correctly indicated before in the first notice of opposition."
• From the European Patent Register, it can be derived that on 5 October 2021, the EPO issued a communication (Form 2302) indicating deficiencies under Rule 76(2)(b) EPC in the notice of opposition of 29 September 2021.
•  Irrespective of whether the submissions of 30 September 2021 were actually in reply to the EPO's communication of 5 October 2021, due to the opponent becoming aware of the deficiency in advance of the date indicated in that communication, or were filed by the opponent on its own motion, it is evident that the errors were corrected before expiry of the opposition period, as required by Rule 77(1) EPC.
• The opposition was hence admissible.
  
  
• The Board considers the claims to be not inventive. "It is established case law that the question of whether a skilled person would consider a modification of the prior art critically depends on the problem to be solved by the alleged invention. If the only contribution of the invention is to propose something different from the prior art (i.e. the provision of an alternative as in the present case), then it is usually appropriate to consider that the skilled person would take into account any common alternative known in the respective technical field (unless the closest prior art teaches away from it). In such cases it might not even be required to justify the selection of a particular solution, because it was assumed that an invention based on incorporating known features for the sole purpose of establishing novelty must be rendered obvious by a corresponding step of selecting any alternative known in the art"
• 
  

EPO 

The link to the decision is provided after the jump.

T 0691/24 - Review of decision to hold inadmissible

Key points

• The OD did not admit an auxiliary request filed during the oral proceedings. Should the Board admit it under Art. 12(6), first sentence, RPBA, on the ground that the OD's decision suffered from an error in the use of discretion?
• "These claim requests were not filed within the period set out in the opposition division's invitation pursuant to Rule 79(1) EPC [ ...] . Rather, the opposition division had the discretion pursuant to Article 123(1) EPC in conjunction with Rules 81(3), 79(1) and/or 116(2) EPC not to admit them (see e.g. R 6/19, Reasons 6 and 7; T 256/19, Reasons 4.7 [post] ). "
• "This discretion exists independently of the provisions of Rule 116 EPC and of whether the opposition division deviated from its provisional opinion as set out in the annex to the summons to the first-instance oral proceedings (see e.g. T 966/17 [post])"
• " In other words, a positive preliminary opinion on auxiliary request 9a - already admitted into the proceedings at the opposition division's discretion - cannot guarantee per se the admittance of yet a further filing of claim requests. Nor does such a positive opinion "reset" the application of the "convergence criterion" which the opposition division relied upon when taking its discretionary decision on admittance in the opposition proceedings."
• "Also the EPO Guidelines (in its version of March 2025) do not state that an opposition division's deviation from its preliminary opinion necessarily constitutes a "change of the subject of the proceedings" within the meaning of Rule 116(1), fourth sentence, EPC (cf. part E, chapter VI, section 2.2.2, board's emphasis: "The following are examples of what would normally constitute a change of subject of the proceedings: [...] the opposition division departs from a previously notified opinion."). 
• "Nor can such a deviation as such justify an automatic admittance of claim requests (see the decisions cited by the proprietor, i.e. T 868/20, Reasons 3.1.2 and T 847/20, Reasons 3.3.3). "
•  "The "convergence criterion" as regards claim requests is definitely a well-established criterion which can legitimately be used by a first-instance department when exercising its discretion as to admittance of late-filed claim requests (and this even before the expiry of the time limit set under Rule 116(1) EPC; see e.g. T 364/20, Reasons 7.2.10; see also EPO Guidelines, part E, chapter VI, section 2.2.3: "Convergence of requests is another of the relevant factors that the division may consider when exercising its discretion"). 
• The GL paragraph seems to refer to the case " if the opposition division states in the annex to the summons that the patent is likely to be revoked and the proprietor in response submits amendments after the final date set under Rule 116(1), possibly not until the oral proceedings, the division could, in principle, treat such requests as late-filed" (which is quite the opposite of the Board's analysis).
• "In view of the minutes of the two oral proceedings before the opposition division, the board agrees with the respondents that the discussions concerning auxiliary requests 5 and 6 had already taken a considerable amount of time. Moreover, through the replacement of features, those discussions became at once moot when the appellant moved on to "auxiliary request 10a""
  
  
• "Concerning the present first auxiliary request, and as a matter of principle, the board takes issue with the opposition division's announcement to "permit one further request and no more" (see point 97 of the minutes of the second oral proceedings) and its subsequent decision to "not look at the auxiliary request" (see Reasons 38 of the decision under appeal). This is because, firstly, the board sees no legal basis in the EPC to make submissions from a party - irrespective of their content - being subject to prior approval from the deciding body. Secondly, the limitation to "one further request and no more" - ex ante and without any consideration as to their substance - appears to be purely arbitrary."
• See also T 1241/21 (post) and T 756/18, but see also T 350/19 (post)

EPO 

The link to the decision is provided after the jump.

T 2010/23 - Secrecy on the side of the supplier

Key points

• Claim 1 of the main request reads as follows: "A pigmented aqueous inkjet ink set for manufacturing decorative panels comprising: b) a red aqueous inkjet ink containing a red pigment selected from the group consisting of C.I. Pigment Red 254, C.I. Pigment Red 176 and mixed crystals thereof; c) a yellow aqueous inkjet ink containing a pigment C.I Pigment Yellow 150 or a mixed crystal thereof; and d) a black aqueous inkjet ink containing a carbon black pigment; wherein the aqueous inkjet inks contain a surfactant."
• In case you wonder what the invention is about: "example 2 of the patent demonstrated that true reproduction of wood colours could be obtained with the inkjet set of claim 1. The objective technical problem was therefore how to manufacture decorative surfaces with high productivity by not requiring complex inkjet printers and image processing software for a true reproduction of wood colours."
• The opponent alleges public prior use.
• "The public prior use represented by documents D7 to D15 concerns the sale of certain inks from the respondent (Arcolor AG) to the company Schattdecor. "
• "Invoice D9 discloses a list of inks ordered by Schattdecor, ... in the interest of simplicity, the board refers exclusively to D9 in the context of the issue of public availability."
• "In the declaration, Mr Breuer [of the buyer] explicitly states that the ... D9 concerned a normal sale without any obligation to confidentiality ... This declaration is evidence that there was no implicit confidentiality agreement, and the board finds it more convincing than the appellant's unsupported circumstantial allegations to the contrary."
• I wonder if this is correct. If the buyer selects three pigments in combination in a purchase order, is the seller really free to share that information with others? E.g. with a competitor of the buyer? Can the seller S say to a competitor P  'hey, look, another company buys our product X often together with product Y, perhaps you can try it as well in your company'?
• Of course, the witness of the buyer declared that it was a 'normal sale' and 'without any obligation to confidentiality'. However, a technical person may simply mean that no NDA was signed for the sale. Mr Breuer was not heard as a witness. 
• Sales under confidentiality, as encountered in the case law, usually involve the buyer's obligation, imposed by the seller, to keep information obtained from the seller secret, it seems to me. 
• The Board found the claim obvious over the prior use. No other claim requests were allowable and admissible.

EPO 

The link to the decision is provided after the jump.

T 0143/24 - (II) Sold product as prior art

Key points

• For some reason, I've found a second post about this decision in my stock. This second post has a slightly different angle. I decided to publish it as well. 
• The opponent alleges a public prior use, based on the sale of a polymer. The polymer sold was not reproducible.
• The Board, in translation: "If prior public use is claimed to be the sale of an item and its delivery to a customer, the recognizable features of the item sold generally become publicly accessible if the item is transferred without a confidentiality agreement and can be analyzed by a person skilled in the art. Contrary to the patent proprietor's view, reproducibility is not necessary for a product that is freely accessible and analyzable on the market to be considered prior art under Article 54(2) EPC (G 1/23, Reasons 73, 74)."
• As a comment, I think that for novelty, the product is prior art for all its properties, even those that cannot be measured. If you invent a new device that is able to measure a newly-developed property and carry out the measurements on known materials (say, water, graphene), a claim defining that material in terms of the new property is not novel, in my view. The exception for second medical use claims (drafted as product claims under EPC2000) in fact confirms the rule. 
•  "However, free access on the market is lacking if the product is sold subject to confidentiality agreements. "
• I think we have to be precise about what we mean by 'confidentiality'. Linguistically, confidentiality refers to information, and a physical product is not information. Do we mean a non-analysis clause? A clause that the sold product (e.g., apparatus) may not leave the premises of the buyer? Should the sold apparatus be hidden from visitors' view? 
• In this case, the documents submitted by the opponent regarding the sale indicate that the general terms and conditions of the seller applied. The opponent was the seller. 
• The Board: "In the present case, the opponent has neither submitted the terms and conditions mentioned in the contract documents it has provided, nor has it presented specific details regarding their concrete content or individual agreements relating to the respective sales. In such a case, the opponent cannot generally evade its burden of proof by merely asserting in general terms that no confidentiality agreement was concluded between the contracting parties. It is also not possible to deny the opposing party's statements on this matter with mere lack of knowledge, as this would only be permissible if the patent holder were subject to the burden of proof."
• "Confidentiality agreements are frequently included in so-called "General Terms and Conditions," the content of which is not individually negotiated for each legal transaction but pre-formulated for an indefinite number of cases. At least when the public accessibility of a product is based on a sales transaction which—as in this case—was based on general terms and conditions, according to the appellant's submissions and the documents presented, the appellant [opponent ] must therefore generally also present information on the content of these general terms and conditions in order to meet its burden of proof."
• The proprietor had submitted the general terms and conditions of the same seller (from a different transaction). These read as follows: "12. - Confidentiality - All technical, commercial, economic, or other information or data relating to the supplier's business, including but not limited to its formulas, product specifications, services, plans, programs, processes, products, costs, operations, and customers, which the buyer, its affiliates, officers, or employees become aware of in the performance of the contract, shall be treated as the supplier's confidential property, and the buyer is obligated not to use such information or data unless it benefits the supplier in the performance of the contract, and the buyer may only use such information or data for the benefit of the supplier in the performance of the contract." 
• It may require careful analysis to determine whether this clause prohibits the buyer from analysing the product after the buyer has paid and performed under the contract.
• More generally, I wonder if the Board's focus on confidentiality is consistent with G 1/23. If the seller is willing to sell the product to anybody upon payment of the price and (tacit) acceptance of the general terms and conditions, can the seller then later patent the product (cf. G 1/23, r.75)
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EPO 

The link to the decision is provided after the jump.

T 0143/24 - Interpreting G 1/23

Key points

• The opponent alleges three prior uses. The prior uses concern sales by companies within the Ashland Group. Furthermore, the opponent also belongs to that group of companies. Hence, it is an alleged public prior use in the opponent's own sphere.  
• The Board, in machine translation: The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge.
• If the sale of an item and its delivery to a customer are claimed as prior public use, the recognisable features of the item for sale will generally become publicly accessible if the item for sale is handed over without an obligation of confidentiality and can be analysed by a person skilled in the art. Contrary to the patent proprietor's view, reproducibility is not necessary for a product that is freely available and analyzable on the market to be considered as prior art under Article 54(2) EPC (G 1/23, Reasons 73, 74). However, there is no free accessibility on the market if the product is sold with confidentiality agreements. Contrary to the opponent's view, decision G 1/23 does not lead to a different conclusion, as it relates to products that are on the market and accessible to the public. This requirement is not met if the product is marketed only subject to confidentiality agreements.
• In other words, if a product is marketed under confidentiality agreements, it does not become part of the state of the art, even if it can be analysed and reproduced.
• Furthermore, the Board holds, obiter, that under G 1/23, a product becomes prior art (part of the state of the art) (at least) if it is sold, is handed over to the customer, and the sale is without an obligation of confidentiality and can be analysed by a person skilled in the art (as cumulative requirements). 
• In the present case, the terms and conditions of the sales invoked by the prior uses provided for a confidentiality agreement, which is why the products sold were not available to the public and therefore do not form part of the state of the art within the meaning of Article 54(2) EPC.
• The opponent had offered two witnesses, who were heard by the OD. The witness did not fully support the opponent's case, it seems: "Mr. [G] also confirmed in his testimony during the oral proceedings before the Opposition Division that the composition of [the product] Magnaset was an internal matter and, to his knowledge, that customers were not supposed to know this composition. ... Witnesses G and A also stated that the manufacturing instructions and the production process were confidential (see the transcript ... ). The witness statements therefore confirm that there was no intention to disclose the composition of the Magnaset binder to customers."
• The Board concludes that the alleged public prior use is not proven to have been public. 
• "The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge."
• In such a case (public prior use by the opponent, wherein the prior use is moreover 'intra-company'), the standard 'beyond doubt' is indeed correct. The standard 'beyond doubt' was never abolished in the case law, in my view. It is the specific implementation of the general standard 'is convinced' in the case where the evidence is exclusively in the sphere of the opponent (the party asserting the fact). 

EPO 

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

T 0491/25 - Omitting the co-applicant

Key points

• The professional representative (solo practitioner, it seems) files a Notice of appeal using the annotations field in Form 1038, referring to 'the appellant' (with automatic debiting). The entire text is as follows:
• 
• After the filing of the statement of grounds, the Board's registry issues an invitation to state the name and address. On the same day, the representative provides the applicant's name and address.
• However, the application was filed by joint applicants (two human persons) and the representative stated the name of only one of the applicants (the first-named applicant) in his reply.

• The second named applicant is a natural person with address in Russia. 

• Five months later, the Board issues a communication.
• In reply (again consisting of Form 1038 and using the annotations field), the representative files a request under Rule 139, first sentence, to the effect that the correct appellants are the two persons jointly.
• "The request for correction merely asserts that the notice of appeal was actually and truly intended to be filed on behalf of the joint applicants and that one of the two co-applicants had been [...] omitted due to a mistake. It is not accompanied by any evidence of this true intention or by arguments explaining why this alleged true intention was "immediately apparent" in spite of the contrary indication given in the letter of 4 April 2025."
• "In its letter of 4 April 2025, the appellant confirmed that the (only) appellant was [person X]. This is an explicit indication that it had in fact been the true intention to file the appeal on behalf of [person X] as the sole appellant, rendering it no longer "immediately apparent" (cf. G 1/12, Reasons 37) that the appeal had been intended to be filed on behalf of both co-applicants. For example, the representative may have truly believed that [person X] was the only applicant, which would mean that the notice of appeal did not contain a mistake in the sense of an expression deviating from the representative's actual intention (see J 7/19, Reasons 6 and 7; T 2474/19, Reasons 2.6.2 and 2.7.1; and T 71/21, Reasons 6.4.2), or he may for some other reason have decided to file the appeal on behalf of [person X] only."
• "The board concludes that the applicants have not shown that the requested correction of the notice of appeal introduces what was originally actually intended, even less so according to the "heavy burden of proof" referred to in [G1/12]".
• In view of the above, the request for correction of the notice of appeal under Rule 139, first sentence, EPC is to be refused, and the appeal is to be rejected as inadmissible (Article 107 and Rule 101(1) EPC).
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EPO 

The link to the decision is provided after the jump.