T 0633/24 - Removing dental plaque is medical method

Key points

• Claim 1 as granted reads: "Use of a whitening dentifrice composition for whitening a tooth surface in a human or animal, wherein the whitening dentifrice composition comprises: a blue dye; [and] a zinc salt, wherein the whitening dentifrice composition provides a greater whitening benefit to a tooth surface in comparison to a dentifrice composition that does not contain the zinc salt; and an orally acceptable vehicle." 
• "Independent claims 1 and 8 as granted relate to the use of a whitening dentifrice composition for whitening a tooth surface in a human or animal."
• The question is whether use claim 1 is prohibited by Art. 53(c) (note, according to G 5/83, hn.1, Art. 53(c) applies equally to claims written as use claims).
The Board: "[the] mere whitening effect resulting from the deposition of the blue dye [...] in the dentifrice appears to represent a purely cosmetic effect, which is not necessarily linked to any therapeutic or related prophylactic effect.". The Board also agrees with the patentee that "any inherent antibacterial activity of the zinc salt comprised in the composition does not necessarily result in a therapeutic effect"
• However, "[the] whitening dentifrice composition [specified in the claim] is defined in an open manner to comprise a blue dye and a zinc salt. The defined uses of this whitening dentifrice composition [therefore] encompass embodiments in which the whitening effect, defined as the purpose of the claimed uses, results at least partially from the removal of plaque [...]. In such embodiments, the defined whitening effect is inseparably linked to the therapeutic or prophylactic effect of plaque [] removal conventionally associated with the use of a dentifrice composition, as indeed foreseen in the patent [...] These embodiments are not excluded from the scope of granted claims 1 and 8, which therefore encompass subject-matter excluded from patentability under Article 53(c) EPC."
• A bit more explanation would have been useful.  I infer that the Board considers that a dentrifice composition implicitly comprises a third component, besides the dye and the zinc salt, and that this third component provides for plaque removal in use. 
• See  T 0290/86 ( "removal of plaque from human teeth may also be considered to be a method excluded from patentability"). See also T 2071/15: "The [dental care] product's capacity of preventing acid formation achieves the therapeutic effect of preventing [...] caries and tooth erosion."
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• The auxiliary requests inserting the term "cosmetic" are not admitted under Art. 13(2) RPBA. The Board adds that: "In any case, the introduction of the term "cosmetic" is not equivalent to a disclaimer excluding therapeutic methods as envisaged in G 1/03. It is not apparent that the mere introduction of the qualification "cosmetic" is apt to overcome the objection under Article 53(c) EPC, since it does not exclude embodiments in which the whitening effect results from plaque or tartar removal."
• Possibly, the disclaimer "non-medical use" would be held unclear under Article 84.

Art. 123(3)

• The further auxiliary request with product claims has a problem under Art. 123(3): "the claims of auxiliary requests 7-11 define products for use in a method which is not directed exclusively to a therapeutic effect and may therefore not qualify as purpose-limited product claims within the meaning of Article 54(5) EPC. They are therefore directed to products, with the consequence that the manufacture of the defined products falls within their scope of protection, unlike the granted claims. Accordingly, and in line with T 1635/09 (Reasons 15.1), auxiliary requests 7-11 contravene Article 123(3) EPC."
• However, see G 2/88 hn.1: "A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered." 
• I do not find G2/88 hn.1 very easy to understand when it instructs that national law is not to be considered. Applied to the present case: how do we know that the manufacture of the product is within the "scope of protection" of a product claim, if we are not allowed to consult national patent laws? (see e.g. Art. 25(a) UPCA) ?

EPO 

The link to the decision is provided after the jump.

T 1168/24 - Prohibition of reformatio in peius

Key points

•  This is the second appeal. In the first appeal decision, the Board found a violation of the opponent's right to be heard in connection with AR-1 filed during the first oral proceedings before the OD, set aside the first OD decision to maintain the patent in amended form, and remitted the case. In particular, the OD had decided on the wrong version of claim 1 of AR-1 by assuming that it contained a feature that was not actually recited in the claim.
• The current decision does not really explain the relevant facts, but it appears that the proprietor filed amended claims after the remittal that were broader than the set of claims upheld by the OD in the first decision. Moreover, the proprietor had withdrawn its appeal in the first appeal procedure, thereby becoming the respondent. The OD therefore did not admit the amended claims, based on the prohibition of reformatio in peius. 
•  The question is whether the prohibition of reformatio in peius applied.
• "The proprietor has argued that PRP does not apply in the second first instance proceedings if the board finds that the first instance decision suffered from a substantial procedural violation and remits the case back to the first instance department. It based this argument upon T 727/19 and T 2086/13."
• "The Board does not agree that PRP does not apply in this case. The exception recognised in T 727/19 arose in fundamentally different circumstances from those of the present case: there was an objectively justified suspicion of partiality on the part of the opposition division (T 727/19, Reasons 2.18). A finding of partiality undermines the legitimacy of the entire earlier decision making process and accordingly justifies an exceptional departure from PRP. 
• "By contrast, in the First Board Decision, the substantial procedural violation was a violation of the right to be heard with respect to auxiliary request 1 submitted at the oral proceedings before the opposition division (see T 505/20, Reasons 14). This violation of the right to be heard, while serious, does not undermine the legitimacy of the entire earlier decision making process. 
• The Board, obiter: "Even if it is assumed that the present case falls into one of the exceptions to PRP, the Board notes that a proprietor is first expected to attempt to comply with PRP by filing restricted claims according to the following scheme [the three steps, as set out by G 1/99]
• G 1/99 indeed specifies the three steps for the event of an "objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment". 
• "The principles of G 1/99 are of general applicability, thus the Board does not see any reason to limit the above principles, which derive from G 1/99, solely to the fact situation of G 1/99."
• I am not sure if the three steps of G 1/99 should also apply in a case of suspected partiality (e.g.  T 727/19 said that the PRP principle did not apply at all after the remittal). At any rate, the present decision is obiter on that point. 

EPO 

The link to the decision is provided after the jump.

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