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.