T 0967/23 - The absolute bar to fresh grounds vs the discretion of Art. 12 RPBA

Key points

•  The Board, in the headnote: "The question of whether a fresh ground of opposition has been raised - and, therefore, of whether the agreement of the patentee is required - has to be distinguished from the question of whether there has been an amendment to a party's appeal case. The admissibility of amendments represents a separate, independent issue and is subject to the discretion of the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• " In the contested decision, the opposition division held that claim 1 was novel over D1 as it did not disclose at least features 1.4 and 1.7. "
• "The board agrees with the contested decision... that D1 does not disclose ... feature 1.4."
• "The appellant [opponent] argued that, even if considered novel, claim 1 would still lack an inventive step over D1 combined with common general knowledge."
• " The appellant submitted that according to established case law and, in particular, to decision T 131/01, an inventive step attack is admissible on appeal even if only a novelty objection was raised during opposition proceedings, because the inventive step is not considered a fresh ground for opposition."
• I think T 131/01 shows that the case law based on G 10/91 is a hodgepodge of rules. G 10/91 did not identify what a 'ground of opposition' is, leaving that to G 7/95 to resolve.  G 7/95 decided that novelty and inventive step are different grounds (despite the structure of Article 100 EPC). T 0131/01 created an 'exception' in a case that was not even about a fresh ground of appeal (the OD had held the inventive step attack inadmissible; the Board reversed that decision, which is nowadays seen as outside the scope of G10/91). 
• If G 10/91 is about bright-line rules, then there should be no such complexity. If G 10/91 is about equitable considerations, then Article 12(4) and (6) RPBA appear to be, de lege ferenda, the way forward.
• The Board applies Art. 12(6) RPBA and does not admit the attack.
• "Under Article 12(6) RPBA, second sentence, the board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance."
•  In the present case, the patent proprietor's and the opposition division's position that D1 did not anticipate claim 1 was known to the opponent before the opposition oral proceedings (see e.g. annex to the summons to oral proceedings in opposition, point 2.2.1). Hence, the board takes the view that any inventive step attack based on D1 could and should have been filed at the latest during those oral proceedings. Moreover, the board cannot identify any circumstances which would justify the admission of such attack on appeal, nor did the appellant provide arguments in this respect."
• "Accordingly, the board decides not to admit the inventive step attack based on D1 into the appeal proceedings, Articles 12(4) and 12(6) RPBA."

EPO 

The link to the decision is provided after the jump.

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T 0216/26 - When the EPO forgets the drawings

Key points

• A Euro-PCT application
• "At no stage during the examination proceedings did the examining division suggest any amendment to the [seven original] drawing sheets, nor did the appellant request or propose any such amendment. The examining division thereafter issued the communication under Rule 71(3) EPC, in which only a single drawing sheet was included. "
• Hence, the EPO "forgets" the drawings. See also: https://justpatentlaw.blogspot.com/2025/11/t-071225-when-epo-forgets-drawings.html; 
• https://justpatentlaw.blogspot.com/2025/03/t-122424-when-epo-forgets-drawings-and.html
• https://justpatentlaw.blogspot.com/2025/03/t-042321-when-epo-forgets-drawings.html
• The applicant paid the grant fee and filed the translated claims.
• The applicant appeals within two months.
• The Board, on admissibility: "The appeal is admissible according to Articles 106 to 108 EPC and Rule 99 EPC; in particular, the appellant is adversely affected by the decision under appeal within the meaning of Article 107 EPC. The patent as granted does not correspond to the application documents filed with the request for entry into the European phase on 10 August 2023, which were never amended as regards the drawings."
• Nice to see the Board can decide this point so easily.
• "The legal consequence of Rule 71(5) EPC, i.e. the deemed approval of the notified text, only arises if the communication sent also complies with the substantive requirements of Rule 71(3) EPC, i.e. if it actually contains the text in which the examining division intended to grant the patent, on the basis of the documents filed by the applicant, possibly supplemented by individual marked amendments 
• " the Board is also satisfied that the text notified under Rule 71(3) EPC does not reflect the true intention of the examining division as regards the documents on which the patent was to be granted. Rather, the omission of drawing pages 2/7-7/7 represents a clear and unintentional omission from the text proposed for grant, in line with the considerations set out in decision T 0387/25 
• "The decision under appeal is therefore to be set aside."
• " the reimbursement of the appeal fee is not held equitable since the applicant made no use of opportunities to participate in the initial proceedings (J 4/09, Reasons 4), as the error made by the examining division was introduced already in April 2025 into the communication under Rule 71(3) EPC, and the applicant could and should have noticed it when checking the text of the communication under Rule 71(3) EPC, because the fact that part of the published drawing were omitted should have alerted it and should have prompted a double check."
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EPO 

The link to the decision is provided after the jump.

T 0545/24 - New grounds held inadmissible by OD

Key points

• The OD decided to hold inadmissible a late-filed ground of opposition (or, more precisely, a new objection that introduced a new ground of opposition), namely insufficient disclosure (Art. 100(b) EPC). Can the Board review this decision? (in view of G 10/91)
• "It is however also established case law that this exercise of discretion by the opposition division is reviewed by the boards and may be overturned only if it is concluded that the opposition division exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (CLB, IV.C.4.5.2a, V.A.3.4.4)."
• "the opposition division, when deciding, clearly applied the correct principle, which requires that the late-filed ground must prima facie seem to prejudice the maintenance of the patent as granted.
• The minutes of the oral proceedings before the opposition division, page 1 show that, having discussed this issue with the parties, the opposition division reasonably concluded, as set out in the impugned decision, point II.3, last paragraph, that "Even without any further explanations the person skilled in the art would have no problem in realizing a manual replacement of a worn cutting blade by a new cutting blade". 

• Hence, the OD's decision is not overturned.

• The proprietor gave no consent to introducing the attack as a fresh ground of opposition in appeal. Hence, the Board cannot introduce the attack (notwithstanding Art. 12(4) RPBA).

• See e.g. T 0339/18 on the same topic: "it was sufficient for the board to establish that there was evidence that the opposition division had actually examined whether the ground was prima facie relevant and given reasons for its finding on this"
• The OD had maintained the patent as granted. The Board finds the claims as granted to lack basis in the application as filed. The same applies to AR-1 to 5.  
• The proprietor filed a new AR-6 (in reply to the SoG). AR-6 is admitted by the Board. 
• The opponent filed new prior art (with the SoG), which is also admitted. In particular: " The board therefore decides to admit documents D7 to D9 into the appeal proceedings as a matter of fairness to the appellant in view of the admission of the respondent's sixth auxiliary request into the proceedings (Article 13(3) RPBA). "
• The Board remits the case. 
• Question to readers: can the debate on Article 100(b) be reopened in connection with AR-6? Or is the OD's decision on Art.83 / 100(b) now res iudicata after the remittal?

EPO 

T 0964/24 - Inventive polymorphs

Key points

•  This decision deals with novelty, namely a "counting to two" case, and inventive step of polymorphs.
• Claim 1 of the main request is directed to the citrate salt of the compound SCY-078. Novelty over D6 is at issue.
• The Board: "As set out above, claim 49 of D6 relates both to SCY-078 in its free-base form and to a pharmaceutically acceptable salt thereof. Furthermore, the passage quoted above [column 21, line 54 to column 22, line 21]  discloses citrate as a pharmaceutically acceptable salt. The board acknowledges that this disclosure is not made specifically in the context of SCY-078, but rather in relation to all the compounds of the invention of D6. However, since SCY-078 is one of those compounds, the skilled person would already derive directly and unambiguously from this disclosure that citrate also applies to SCY-078. "
• The passage is a list of pharmaceutically acceptable salts and includes citrate.
• Hence, citrate is one selection; a question is whether claim 49 / SCY-078 is a second selection, or at least the embodiment "pharmaceutically acceptable salt" of claim 49. 
• "even if one were to accept the respondent's [proprietor's] rather formal approach that, in addition to selecting citrate from the passage quoted above, a pharmaceutically acceptable salt of SCY-078 must be selected from claim 49 instead of the free base of SCY-078, D6 provides a clear technical link between these selections. Accordingly, D6 directly and unambiguously discloses SCY-078 citrate as defined in claim 1 of the main request."
• Claim 1 of the AR recites 10 crystalline forms of the citrate salts, each defined by an XRD pattern. Inventive step is at issue.
• "At the oral proceedings, the appellant [opponent] considered, inter alia, D6 as possible closest prior art. [The opponent] stated that it regarded the pharmaceutically acceptable salt of SCY-078 disclosed in claim 49 as the starting point for assessing inventive step. However, it did not start from the citrate of SCY-078 as disclosed in D6 (see assessment of main request above). To the benefit of the appellant [opponent] [*], it is assumed in the following that this is correct."
• *  see below, the selection of "citrate" is considered as the distinguishing feature that provides for inventive step. How this is to be reconciled with the Board's conclusion of lack of novelty of that feature in connection with the Main Request, and with Article 114(1) EPC in that respect, is not entirely clear to me.
• "table 18 of the application as filed shows that the Type A citrate crystal form exhibits superior kinetic solubility in fasted state simulated intestinal fluid (FaSSIF) and in fed state simulated intestinal fluid (FeSSIF) compared with other salts of SCY-078 (hippurate, fumarate, mesylate, phosphate). "
• "none of the documents in the proceedings teaches the use of citrate in order to increase bioavailability of a drug relative to other salt-forming options."
• The claims are held to be inventive. 

EPO 

The link to the decision is provided after the jump.

T 1174/24 - Correction unclear identity of opponent

Key points

• The opposition is filed in the name of   SPG GmbH & Co. KG" without giving an address.
• It turns out there are three legal entities with the same name (in Germany).
• Hence, the identity of the opponent is unclear (at the end of the opposition period).
• The opposition is therefore, in principle, inadmissible  (Rule 77(1)). 
• The Board allows a correction under Rule 139, however (as did the OD).
• " There is no plausible reason why the appellant would have intentionally omitted the address in the notice of opposition, thereby failing to provide a requirement for the admissibility of the opposition and thus incurring the risk of an inadmissible opposition. Furthermore, the authorized representatives would have had to act knowingly contrary to the EPC by doing so. The respondent's stated possible motivation for omitting the address due to security concerns appears contrived, given that the appellant's address can easily be ascertained from a commercial register extract. In this respect, the Board agrees with the Opposition Division's opinion that the probability of this being an oversight, rather than intentional, is already high."
• "The managing director of the appellant's personally liable partner stated in his affidavit, as set forth in Exhibit D24, that he had instructed the appellant's authorized representatives to file an opposition against the patent in suit on behalf of and by order of the appellant. The Board has no reason to doubt the validity of this statement. 
• "This statement is further corroborated by the affidavits of the appellant's two authorized representatives, as set forth in Exhibits D25 and D26, and by the email from the authorized representative dated January 5, 2023, at 10:47 a.m., submitted as Exhibit D22. The Board therefore cannot accept the respondent's objection that the evidence does not clearly establish who the opponent should be. Both authorized representatives also stated in their affidavits that "[t]he lack of further details concerning the person of the opponent pursuant to Rules 76(2)(a) and 41(2)(c) EPC [...] was due to an accidental omission." The Board has no reason to doubt the accuracy of this statement, especially since it confirms the plausible explanation for the omission of the address (see paragraph 2.10.1 above). 
• The OD had rejected the opposition.
• The Board revokes the patent. 

EPO 

The link to the decision is provided after the jump.

T 0698/24 - Disapproval text by proprietor/appellant

Key points

• The proprietor filed an appeal against the decision to revoke the patent.
• "VI. With letter dated 15 May 2026, the appellant declared that they did no longer approve the granted text of the patent, that all requests were thereby withdrawn, including the request for oral proceedings and that they also did not intend to file any other text for amendment of the patent in the present proceedings. "
• Is the appeal fee to be reimbursed in part?
• " The present Board follows the analysis in T 2684/18 and agrees with the second approach. It is established case law that a request for withdrawal of an appeal should only be accepted without question if it is completely unqualified and unambiguous (Case Law of the Boards of Appeal, 11th edition 2025, V.A.7.3.5). If the patent proprietor, instead of withdrawing the appeal (which would involve a partial refund of the appeal fee), does not choose this path but declares a non-approval of the text of the patent in any form, this is in the view of the Board a deliberate choice and can thus not be interpreted as an unambiguous withdrawal of the appeal. "
• The patent is revoked without oral proceedings.

EPO 

The link to the decision is provided after the jump.

T 0847/24 - (II) Schrodinger's method claim

Key points

• The post title is not meant as criticism of the Board's decision. 
• Claim 1 as granted describes, in effect, a preparation method that yields product A. The description discloses an additional step of converting A into B. The proprietor wishes to amend claim 1 by adding that step of converting A into B. Is this permitted?
• In the case at hand, A is a digital design of an implant and B is the physical implant, but that should not distract us.
• The Board agrees that claim 1 as amended "confers protection not only to the claimed method but also, pursuant to Article 64(2) EPC, to the implant directly obtained by that method, i.e. to a physical implant produced in accordance with the method defined in claim 1 of auxiliary request 1."
• The issue is Art. 123(3).
• "the Board also agrees, that a method comprising all the steps of claim 1 as granted and, in addition, a step of producing the implant also falls within the scope of claim 1 as granted, even though claim 1 as granted does not comprise any production step. This is because the added production step merely limits the method defined in claim 1 as granted."
• "carrying out the method of claim 1 as granted results only in the configuration of an implant, i.e. in data defining such a configured implant. It does not result in a physical implant. The appellant [proprietor] argued that, since a method including an additional production step fell within the scope of claim 1 as granted, the product directly obtained by that more limited method was also covered by the protection conferred by claim 1 as granted, by virtue of Article 64(2) EPC. "

• "The Board does not consider this persuasive. Pursuant to Article 64(2) EPC, if the subject-matter of the patent is a process, the protection conferred by the patent extends to products directly obtained by such a process. This provision therefore requires that the product in question be "directly" obtained by the claimed method. The Board understands this to mean that the protection conferred by a process claim does not, as a rule, extend to products obtained only by carrying out further steps which are neither defined in that claim nor implied by it."

• "The product protection conferred by Article 64(2) EPC is different from, and additional to, the protection conferred by a process claim as such. Hence, if a part of the patent's scope of protection is, in view of Article 64(2) EPC, extended because of the amendment, Article 123(3) EPC is infringed. In such a situation, it does not matter whether the patent's scope of protection is partly also, with regard to the process claim as such, more limited than before the amendment. Generally speaking, this is comparable to how an aliud partly extending and partly limiting the scope of protection also infringes Article 123(3) EPC."

• 6.7 Hence, if a granted claim defines [a method of making product A], amending the claim such that it additionally includes the step of [converting A into B] in view of Article 64(2) EPC, not allowable under Article 123(3) EPC." (generalisation in square brackets is mine).

• I don't know if this point has been decided before. The amendment of adding a method step to a preparation step does not seem very unusual to me.

• The background is that Article 64(2) EPC codifies a judicial stopgap from German case law to prevent imports of chemical compounds from Switzerland at a time when German patent law did not allow product claims for chemical products (and claims for the preparation method were used instead). (see, generally, Uhrich, Stoffschutz, 2010). The exclusion of chemical products from patentability in turn was a lesson learned from an early French case about a patent with a product claim for a dye, fuchsine (see e.g. here; and this article, p.19 of the PDF) 

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EPO 

The link to the decision is provided after the jump.