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)
• 
  

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.