T 0944/24 - Main request rejected, appeal inadmissible

Key points

• In the case at hand, the opposition division decided that the patent proprietor's main request did not meet the requirements of Rule 80 EPC ...
• The proprietor appeals. What can go wrong?
• " ... [the OD] admitted the new main request and new auxiliary request 1 submitted by the patent proprietor during the oral proceedings into the proceedings, and considered that the new main request [was allowable]"
• "according to its reasons, the decision under appeal did not accede to the patent proprietor's initial main request. However, it is clear from the file, in particular from the cover page of the decision, point 9 of section I and section III of the decision and section 6.1 of the minutes of the oral proceedings, that the patent has been maintained in amended form based on the main request and the amended description submitted during the oral proceedings. The final main request of the patent proprietor was therefore granted. "
• The proprietor was therefore not adversely affected by the OD's decision, and its appeal was inadmissible.

EPO 

The link to the decision is provided after the jump.

T 0546/26 - Generating synthetic training data

Key points

• The application was filed in 2024, with a priority date in 2023. The refusal decision was issued on 26.03.2026, as a "decision according to the state of the file" not containing substantive reasons but referring to an earlier Communication, namely the Annex to the summons to oral proceedings (EPO Form 2061). The Notice of appeal, including the Statement of grounds, was filed the next day. The Board's decision was issued on 26.08.2026, so within five months.
• The Examining Division rejected this application, directed to "Generating synthetic training data", as lacking an inventive step.
• Regrettably, the Board does not decide whether the claimed method is inventive or whether the distinguishing features (relating to AI) are technical for the purposes of the Comvik approach.
• Indeed, the Board notes that the Examining Division had overlooked in the preliminary opinion (summons) one of the features that were added to the claims by the earlier amendment.
• This is a substantial procedural violation, and the case is remitted.
• Hiccups with Form 2061 were more frequent in the past (see here). 
• After receiving the summons, the applicant expressly requested a written decision (see the letter). The applicant, however, did not point out, at that time, that the ED overlooked one of the features in the Annex. 

EPO 

The link to the decision is provided after the jump.

T 0642/25 - AI is still not technical

Key points

• "The application relates to fraud detection in digital transaction data. A machine learning system is to be configured to produce, for a proposed transaction received as input, [an output] value [...] indicative of whether the proposed transaction represents an "anomaly"
• "Neither a machine learning model (or "system") nor the training (be it supervised or not) of such a model has per se a technical character. In the present case, the trained machine learning model serves the purpose of determining the likelihood that a transaction is an anomalous one, which is not a technical purpose. Consequently, achieving this purpose at a high degree of accuracy is not a technical problem"
• The claimed method comprised generating an "augmented labelled training set" and training a machine learning system with that data set.
• The Board: "Determining whether a (financial) transaction presents an "anomaly" is not per se a technical problem. Hence, it is not apparent that the trained supervised machine learning system, when used to measure a degree of anomaly for a given transaction, produces any "further technical effect". In particular, no technical effect is implied by the fact that the system has been trained with the augmented, labelled training set. Consequently, the "trained supervised machined learning system" has no technical character and, hence, its production does not represent or imply a technical effect."
• "In its preliminary opinion (point 13), the board additionally expressed doubts that the claimed method actually solved the problem formulated by the appellant (see point 5.2 above) over the whole scope of the claim, but this issue was ultimately left open."
• I'm still looking forward to a published decision where there is no doubt at that point, i.e., that the claimed method provides a better machine learning system (e.g., more hardware-efficient or energy-efficient). 

EPO 

The link to the decision is provided after the jump.

T 1057/24 - (II) Claim amendments after remittal

Key points

• "The board agrees with the parties that the case should be remitted to the opposition division for further prosecution.
• It does not, however, see any legal basis for [the opponent's] additional request that the further prosecution be limited to the claim request that was considered [by the Board] to comply with Article 123(2) EPC, [i.e. current] auxiliary request 5c."
• The Board gives an overview of the legal framework for the procedure after a remittal, which seems useful but not entirely complete. I cite it below, omitting the extensive case law references. See also the post on T 781/24.
• "The EPC contains no restrictions on the scope of examination following the remittal of a case by the board beyond those set out in Article 111(2) EPC [*]. This provision stipulates that, if the board remits a case [for] further prosecution to the department whose decision was appealed, that department is bound by the ratio decidendi of the board, in so far as the facts are the same. Findings of fact on which the board's decision rests are, thus, not open to reconsideration []. In opposition proceedings following the remittal for further prosecution, however, the factual basis underlying a decision on appeal may subsequently change [**], not only by the identification of further prior art, but also through amendments to the patent claims [***]. Such amendments are not precluded by the binding effect of Article 111(2) EPC, provided that they do not contravene the ratio decidendi of the remitting decision [].
• * - I don't think this is entirely correct: we also have the principle of res judicata and the continued application of the prohibition of reformatio in peius (the latter is not applicable in the case at hand since the proprietor had filed the appeal).
• ** - The meaning of the phrase "the factual basis underlying a decision on appeal" in this context is unclear to me. Was is clear, however, is that parties may, seek to introduce new assertions of facts after the remittal, and such factual allegations may or may not be admitted into the procedure. 
• *** - I don't think claim amendments are facts, see Art. 123(1) vs. Art. 114(2).
• "That is not to say that a patent proprietor should be free to redefine the claimed invention after remittal and have the opposition division examine any subject-matter that was not already settled by the appeal []). Further prosecution of a case after remittal should, as a rule, build upon the situation that existed at the end of the appeal proceedings that led to the remittal []). As was the case prior to the appeal proceedings resulting in the remittal, the opposition division has discretion to admit amended requests (Article 123(1) EPC, Rule 81(3) EPC) and may do so in application of established criteria, such as prima facie allowability, complexity of the amendments, procedural economy, the stage of the proceedings, and whether the amendments constitute a legitimate response to new developments in the proceedings []. Confining the further prosecution of a case after remittal to a particular claim request would, in effect, fetter that discretion thereby contravening the EPC."
• "In view of the above, it was decided to remit the case to the opposition division for further prosecution."

EPO 

The link to the decision is provided after the jump.

T 1057/24 - (I) Reasoning articulated only in the written decision

Key points

• The proprietor files a new auxiliary request with the Statement of grounds.
• "To correctly assess whether the claims of auxiliary request 5c should have been submitted in the proceedings before the opposition division it is necessary to take a closer look at the file history."
• "At the oral proceedings, the opposition division changed its view on feature 1.5 and concluded that the amendments to claim 1 of the patent as granted extended beyond the content of the application as filed."
• " In response thereto, the appellant [then the proprietor] filed nine sets of claims during the oral proceedings, including the claims of auxiliary request 5a "
• AR-5a was held not allowable.
• At that point in the oral proceedings, the appellant filed a further set of claims of auxiliary request 5b 
• "After discussion, the chairman announced that auxiliary request 5b was not admitted as it was not prima facie allowable in view of Article 123(2) EPC (point 10.7 of the minutes). Also the eight auxiliary requests filed during the oral proceedings together with auxiliary request 5a were not admitted."
• "Given that the appellant was afforded the opportunity to file, firstly, the claims of auxiliary request 5a and of eight further auxiliary requests and, subsequently, the claims of auxiliary request 5b, the board is in agreement with respondents I and II that also the claims of auxiliary request 5c could have been filed on either of those occasions during the oral proceedings."
• "Could" is not the relevant criterion, see Art. 12(6) RPBA.
• "Nevertheless, it should be borne in mind that the auxiliary requests filed at the oral proceedings were triggered by the opposition division's change in view on the allowability of the amendments to feature 1.5. Upon learning from the opposition division that the wording "in contact with" had a basis only in relation to an outer covering comprising a heating tape sublayer, the appellant sought to address this issue by filing nine sets of claims, ..."
• "To the extent that the rejection of auxiliary request 5a was predicated on the opposition division's view that it would be technically incongruous to install two different heating elements in the same hose, that objection concerned considerations of lack of clarity rather than compliance with Article 123(2) EPC. In any event, this reasoning was articulated only in the written decision effectively leaving the appellant with no opportunity to comment on it beforehand."
• This seems a substantial procedural violation. However, the Board approaches it differently.
• "[T]he board concludes that the circumstances of the appeal case justify admitting auxiliary request 5c into the proceedings (Article 12(6), second sentence RPBA)."
• Note, the phrase "the circumstances of the appeal case" is used in Art. 12(6) RPBA primarily to refer to developments in the appeal procedure, not evidently to circumstances of the procedure before the OD (to quote the explanatory remarks: "[The provision] allows for their admittance where the circumstances have changed at the appeal stage."
• The Board finds that the claims meet Art. 123(2).
• The Board also examines the claims for clarity (in line with G 3/14).
• The Board decides to remit the case for further prosecution.
• More on that aspect in a future post.

EPO 

Pending R 11/26 - swift handling

Key points

•  A very quick post to flag that this petition for review was filed on 07.09.2026. 
• The panel was established on 08.09.2026, and the notification of the commencement of the proceedings was issued on 09.09.2026.
• This makes for quite a change from past practice. 
•  To cite the Explanatory Remarks to the EPC 2000, Article 112a EPC, from OJ 2007 Special Edition 4 (link): 
• 12. "The possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties. "
• 18. "In the interest of a quick and effective screening of petitions for review which are clearly inadmissible or not allowable, special procedural provisions apply to the three-member panel of the Enlarged Board established under Article 22(2), second sentence, and Rule 109(2) EPC 2000 (see explanatory remark n° 4 to Article 22 EPC). "
• "The proceedings before this panel shall be as simple and short as possible."
• "Therefore, this body shall decide in written* summary proceedings without the involvement of other parties and on the basis of the petition (see Rule 109(3) EPC 2000). A quick screening procedure at the outset of review proceedings to sort out petitions which clearly cannot be successful is essential in order to avoid an inappropriate prolongation of legal uncertainty for third parties. It is also of great importance to counteract effectively intentional prolongation of proceedings by filing a petition for review." (* - but with oral proceedings on request; the text is imprecise on that point)

EPO 

The link to the decision is provided after the jump.

G 1/25 - Additional rules for claim interpretation

Key points

• The EBA in G 1/25 essentially said that inconsistencies between the description and the claims sometimes must be removed from the application (by amending the description and/or the claims).  The debate on when precisely is lively (see the IPKat blog, the blog of Mr Thomas, and LinkedIn). I have nothing to add to that debate on this weblog for now.
• The debate concerns the interpretation of the order/headnote of G 1/25: "If the claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with, it is necessary to adapt the description, including any drawings, to the amended claims so as to remove that inconsistency."
• The EBA gave some additional rules for claim interpretation. 
• These additional rules help to apply the instruction of G1/24 that "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC". 
• The EBA, in G 1/25: "G 1/24 is not to be understood as establishing a sequential method under which the claim wording is first construed in isolation and the description and drawings are consulted only at a later stage if uncertainty remains." Instead, "claim interpretation is the result of reading the claims, the description and drawings as a unitary process ("holistic approach")."
• Note, the rejected sequential method involves two aspects: using two steps, and carrying out the second step " only ... if uncertainty remains" after the first step. I'm not so sure what is wrong with proceeding step-by-step, provided you always carry out the second step.  
• "The description and drawings may affect the meaning which the skilled person attributes to the claim wording, but they cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis."
• "In line with this approach, a person skilled in the art reading the claim in the context of the description and drawings will try to take a definition found in the description at face value. As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and drawings, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects" (approving of T 439/22, points 3.4 and 6)
• "G 1/24 was concerned with claim interpretation when assessing patentability under Articles 52 to 57 EPC. Its reasoning nevertheless identifies general principles of claim interpretation applied by the Boards of Appeal." (including Art. 123(2))
  
  
• Separately: "38. If, for example, a claim has successfully been amended to meet the requirement of non-obviousness in Article 56 EPC, but a statement in the description, including any drawings, expresses a technical teaching reflecting the claim before this amendment, and this statement thus conflicts with the fulfilment of the requirement of non-obviousness, this inconsistency in the description, including in the drawings, has to be removed."
• I don't know why the EBA does not use the term "inventive step". Non-obviousness sounds American to me. 

EPO 

The link to the decision is provided after the jump.