T 0257/24 - Amended description, support under Art. 84

Key points

• A case with description amendments, Art. 123(2) and the support requirement of Art. 84. 
• This is an appeal against a decision to refuse a patent application.
• "The main request was filed with a letter dated 11 August 2021. It includes an added figure 4 which is based figure 3 as originally filed, but in which the parallel inductor/capacitor (LC) resonant circuit is modified to a series LC resonant circuit. The main request further includes amended pages 12 to 14 of the description in which, additionally, new figure 4 is described in a manner identical to originally filed figure 3, albeit replacing parallel LC resonant circuit with series LC resonant circuit."
• "The Board is not persuaded by the appellant's argument that page 13, lines 6 to 11 of the application as filed directly and unambiguously discloses, as an alternative to the embodiment of figure 3, a complete embodiment in which the resonant circuit comprises a capacitor and an inductor connected in series."
• "The Board also does not agree with the appellant that the original application contains an evident error in figure 3 and page 10 whose correction necessarily yields a resonant circuit comprising a capacitor and an inductor connected in series. "
• "It follows that the new figure 4 and description passages of the main request and of auxiliary requests 3, 6, 9, 13 and 14, as well as the claims of auxiliary request 12, insofar as they introduce a concrete series-LC embodiment, add subject-matter extending beyond the content of the application as filed.  
• "Auxiliary request 15 corresponds to the application documents as published. The objections under Article 123(2) EPC directed to added figure 4 and the amended description are therefore irrelevant for that request. However, the objections under Article 84 EPC [see below] remain valid. The published claims still define the grounding merely as comprising a "resonant circuit ... resonating at the first undesired frequency", without specifying the technical features necessary to delimit the claimed solution in a manner supported by the description. Since the description as published discloses only the specific parallel-LC embodiment, auxiliary request 15 likewise lacks support in the description and omits essential features. "
• Regarding Art. 84: "The Board agrees with the examining division that, in the context of the claimed invention, the broad term "resonant circuit" is not supported by the description and that essential technical features are missing from the independent claims, contrary to Article 84 EPC. The application as filed describes only one detailed embodiment of the resonant circuit, namely a circuit with a capacitor and an inductor arranged in parallel. No further concrete example of a resonant circuit at the claimed grounding location is disclosed. The claims, however, are not restricted accordingly and cover an unjustifiably broad range of possible resonant circuits. It is therefore not clear from the claim wording which specific circuit realisation is meant to solve the identified technical problem."
• "Nor can an unduly broad claim be rendered compliant with Article 84 EPC merely if the skilled person disregarded certain embodiments as unsuitable. The requirement of support by the description is not met where the claims extend far beyond what the description teaches as a concrete realisation of the invention."

EPO 

The link to the decision is provided after the jump.

T 1239/03 - and G 1/25

Key points

• In the run-up to the hearing on pending referral G 1/25 (hearing this Friday, 8 May, live stream link can be found here), the EBA issued a preliminary opinion on 11.03.2026 (indicating its intention to confirm the current practice of requiring description amendments) and invited the parties to comment by 17.04.2026. Several TPO's were filed by that date. One (anonymous) TPO drew attention to decision T 1293/03 (which was published on 02.01.2007).
• In that case, the proprietor deleted two examples from the patent during the oral proceedings before the |OD, seemingly by way of voluntary amendment. For the examination of whether this amendment complied with Art. 123(2), the Board considered it to be relevant that there was an ambiguity in the claims as granted. The Board reasoned that the skilled person would have to consult the description to establish the correct interpretation of the claim (i.e., in effect the same as under the current case law based on G 1/24). The Board also held that the two deleted examples were relevant in that context and that the skilled person would likely adopt a particular interpretation of the claim based on the information contained in those examples (which was, perhaps, precisely the reason why the proprietor wished to delete those examples). Therefore, the amendment deleting those examples was held to contravene Art. 123(2) EPC.
• Turning to the pending referral G 1/25, the EBA's preliminary opinion is to confirm the current practice that when the claims are limited, the description must be amended to conform. Suppose the EBA maintains this view in their final decision, it remains to be seen if this practice follows directly from the Articles of the EPC, or is of a more administrative nature such that the Administrative Council is competent to regulate the matter in the Implementing Regulations, and if the EBA in their decision gives a view on this point or leaves it open (disclosure: I submitted an amicus brief [link fixed] in which I discussed that Rule 48(1)(c) EPC is the pertinent provision).
• Perhaps the decision in case G 1/25 will not (and should not) be the last word on the balancing of the factors of quality (in terms of consistency), efficiency, and risks (under Article 123(2)/(3) EPC) that description amendments involve. 
• In the end, any rule under the EPC is legitimised not by being cast in stone but by being open to legislative debate and democratic political decision-making by the competent body - either the AC or a Diplomatic Conference.

  

Summary of the case

• The proprietor filed an auxiliary request wherein Examples 2 and 3 were deleted from the description. The OD decides to maintain the patent in amended form based on that auxiliary request. The opponent appeals.
• "[The opponent] argued that the deletions from the specification of the patent in suit carried out by the Patent Proprietor in the opposition proceedings, in particular the deletion of Examples 2 and 3 of the patent in suit, would have changed the meaning of Claim 1 which amounted to an extension of the patent in suit beyond the content of the application as filed and would, therefore, contravene Article 123(2) EPC, "
• "In view of the above arguments, statements and findings, the Board takes the view that (i), in order to understand the disclosure and teaching of the patent in suit, it has been necessary for the skilled reader to interpret the percentage range of the ethylene content in the elastomeric copolymer as defined in Claim 1 on the basis of the description, the general part of which was not, however, helpful in this respect, and, therefore more particularly, on the basis of the examples presented in the application as originally filed as describing preferred embodiments (page 12, line 16). He would have derived, namely from the disclosure in those Examples 1 and 3, that the patent application as filed lent a certain preponderance to interpreting the percentage value given for the ethylene content of component (b) as mol percent rather than weight percent, in particular since Example 3 did not comply with the interpretation of the percentage as being related to the weight (section VIII (4), above).
• "In addition to its explicit statement to this end (sections II (2) and VIII (3), above), the Respondent/Patent Proprietor has tried, by deleting Example 3 in particular, to give preponderance to an interpretation of the percentage value as weight percent. Although neither of the two interpretations can be made with certainty - be it before or after the amendment - there is a shift in the way the claim might be interpreted. Prior to the amendment, there was a preponderance for the interpretation "mol percent" (cf. sections VIII and 3.2.3, above) which due to the deletion of Example 3 has shifted towards "weight percent"."
• "In the Board's view, Article 123(2) EPC must be interpreted as referring to the patent (or application) as a whole rather than to the claims only. This finding proceeds directly from the clear wording of the Article. Hence, it is not crucial in which part of the patent (or application) an amendment has been carried out, but only whether the overall change in the content of the patent (or application) results in the skilled person being presented with information which is not clearly and unambiguously presented in the originally filed application, even when account is taken of matter which is implicit to a person skilled in the art."
• "It is clear, however, that the Patent Proprietor by deleting Examples 2 and 3 intended to have the percentage of ethylene content interpreted as weight percent. In such a case where it is certain that a shift in the interpretation of the claims has occurred, but uncertain if this would lead to an addition of subject-matter, the Board takes the view that it should be incumbent upon the Patent Proprietor or Applicant as the author of such amendment(s) to demonstrate that by making the amendment(s), the conditions of Article 123(2) EPC have been complied with."
•  "In the case at issue, the Patent Proprietor was, however, unable to demonstrate that before and after the amendments, the percentage value could have been consistently interpreted as "weight percent". Therefore, it must be concluded that the author of the amendments in the patent in suit, ie the Respondent, has not discharged the burden of proof which was on him."
• "the deletion of those two examples in order to exclude the possibility of interpreting the relevant percentage as mol percent provides a lateral shift of information corresponding to the extension of subject-matter beyond the content of the application as filed (Article 123(2) EPC). [...] it clearly shifts the gist of the patent in suit as defined in any one of Claims 1 to 13 [...], despite the fact that their wording has not been modified in this respect. In other words, the deletion of Example 2 and, in particular, of Example 3 amounts to the provision of an aliud."
• The proprietor was the respondent, and no auxiliary request was filed in the appeal that re-instated the two examples. The patent was revoked. 

EPO 

The link to the decision is provided after the jump.

T 0618/23 - Pages 120-125 of the SoG do the job

Key points

• The OD decided to maintain the patent in amended form based on AR-25a. Both parties appeal.
• The Board, in machine translation: "the patent proprietor argued, among other things, that the opponent's statement of grounds of appeal, contrary to Article 12(3) of the Rules of Procedure of the Boards of Appeal, did not clearly and concisely explain why the contested decision should be set aside. Instead, it dealt with extraneous matters (such as the proceedings concerning the parallel German patent 10 2015 117 403 before the Federal Patent Court), addressed "an unmanageable number of different, partly equivalent lines of argument" and failed to provide a problem-solving approach for any of these lines of argument."
• "The Board notes, however, that the appellant has sufficiently explained, at least on pages 120 to 123 of the statement of grounds of appeal [ that had in total 134 pages], why the contested decision should be set aside and, in particular, why claim 1 of granted auxiliary request 25a, based on E7 in combination with E13, does not involve an inventive step. While the appellant's submissions are extensive, they are nevertheless sufficiently substantiated. The mere fact that the statement of grounds of appeal contains a number of irrelevant statements alongside the arguments relevant to the decision does not render the appeal inadmissible."
• In the statement of grounds (SoG), the opponent first attacked the patent as granted (p. 11), citing extensive prior art that was no longer relevant for AR-25a (as I understand it). The opponent then addressed AR-1 (p. 84) and all subsequent auxiliary requests, eventually arriving at AR-25a on p. 120.
• In the opponent’s SoG, an attack against requests ranked higher than the auxiliary request held allowable by the OD is indeed an "irrelevant statement", according to the majority line of case law (as I understand it).


• The Board first deals with the claim requests in the proprietor’s appeal and then turns to the set of claims held allowable by the OD (and contested in the opponent’s appeal)."The Board concludes that the subject matter of claim 1, starting from E7 in combination with E13 and the general technical knowledge, does not involve an inventive step."
• The Board then turns to lower-ranking requests, where novelty over E2 becomes an issue. I have not studied this part of the decision in detail.
• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

T 1285/23 - Fighting again before the ED

Key points

• Now that the discussion of the former designation fee per designated state has been removed from the 2026 edition of the Guidelines, this decision remains noteworthy. It was published in October 2025.
• In this case, the applicant had withdrawn the designation of GB in the parent application by letter of 02.03.2017, after the Rule 71(3) Communication. The decision to grant was issued on 16.06.2017, and the mention of the grant on 12.07.2017. The patent was opposed.  The OD decided to maintain the patent in amended form. The opponent appealed. The proprietor disapproved of the text of the patent. The parent patent was revoked. 
• The proprietor filed a divsional application on 05.07.2017. On 23.02.2018, the applicant submitted a letter about the designated states (after the application was published on 10.01.2018). The Receiving Section issued a decision on 22.05.2018 that GB is not designated, and made it open to appeal. The Board rejects the appeal in 
• The search report was also published on 10.01.2018. The examination fee was paid on 06.07.2018. Hence, on 22.05.2018, the Receiving Section was competent.
• The Board rejected the appeal against the decision of the Receiving Section (decision J 3/18, issued on 19.08.2020, identical to decision J 3/20 in a parallel divisional case (blog post).
• The Legal Board held that "an interpretation of Article 76(2) EPC in accordance with recognised rules of interpretation shows that only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional"
• Further, "During the oral proceedings the appellant presented submissions concerning the protection of its legitimate expectations which had not been presented before. ... In the case on file the board used its discretion not to admit the new submissions because the appellant could and should have presented the facts that form the basis for the alleged protection of legitimate expectations earlier in the proceedings."
• Examination starts on 09.09.2020, with an Intention to grant. On 20.10.2020, the applicant requests that the Examining Division consider GB to be designated.
• The ED decides on the matter on 21.03.2023 (decision). 
• The applicant appeals.
• "During the oral proceedings before the Legal Board of Appeal the appellant sought to rely for the first time on the principle of good faith. They stated that they had relied on the communication dated 10 August 2016 concerning the application which was eventually the subject of decision J 14/18. This case concerned the then co-pending application no. 16174992.4 ("the co-pending application"). In that communication the EPO had listed GB as one of the designated states."
• "The appellant did not dispute that a decision of a Legal Board of Appeal concerning a decision of the Receiving Section could in principle also have a binding effect, or an effect of res judicata, on an Examining Division when the application proceeded to that division. However, it argued that its request was now based on the principle of good faith. In J 13/18 the Legal Board of Appeal had never considered that line of argument in substance, but had based the dismissal of the appeal, and thus the refusal of the request to add GB as a designated state, solely on the interpretation of Article 76(2) EPC. There could thus not be a binding effect, under Article 111(2) EPC, of that decision on the Examining Division when they considered that request on a different legal basis, namely the principle of good faith. "
• "The Board disagrees. In J 13/18 the Legal Board of Appeal dismissed the appeal. By doing so it upheld the finding of the Receiving Section not to include GB as a validly designated state in the application. Decision J 13/18 became final when it was issued at the end of the oral proceedings. "
• "The subject-matter of decision J 13/18 was the determination of whether the Receiving Section's refusal to add GB as a validly designated state to the application was correct or had to be overruled. In its decision the Legal Board of Appeal considered whether Article 76(2) EPC could be interpreted such as to allow the appellant's request, and decided not to admit the lines of argument presented by the appellant based on the correction of errors and on the principle of good faith. By dismissing the appeal the Legal Board of Appeal issued a conclusive decision on the request of the appellant to include GB as a validly designated state in the application, rather than admitting the late filed lines of argument (including that of the principle of good faith) and remitting the case to the department of first instance for further prosecution."
• The Board considers the matter, hence, res judicata by J 13/18.
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• "For the reasons set out above, the Examining Division was not competent to decide in substance on the appellant's request to add GB as a validly designated state in the application. The decision is void and is formally to be set aside."
• "The Board concluded above that in view of the effect of res judicata emanating from J 13/18 the Examining Division was not competent to decide in substance on the appellant's request in question."
• "The Board is equally bound by this effect. As a consequence, the appellant's request to add GB as a validly designated state in the application is inadmissible."
• The Board hence decides, in the order of the decision, that "The decision under appeal is set aside. The request to add Great Britain as a validly designated state in the application is refused as inadmissible."
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• Hence, the Board did not apply Article 111(2) EPC to the case at hand.
• The Board sees no difference in facts that would suspend the binding effect under Article 111(2) EPC
  
  
• The appeal fee is reimbursed. "By issuing a decision on a matter in respect of which it was not competent, the Examining Division committed a substantial procedural violation. Whilst the appellant did not obtain the full legal redress sought by its appeal, the Board nevertheless had to set aside the impugned decision."
• "the Board concurs with the body of case law according to which reimbursement of the appeal fee may be ordered based on the principle of good faith, even if the appeal was not allowed and thus one of the conditions of Rule 103(1)(a) EPC was not met (CLB, V.A.11.14)."

EPO 

The link to the decision is provided after the jump.

T 0441/23 - Respondent withdraws request for oral proceedings

Key points

• This decision was published already in February 2025.
• In Visser's Annoted EPC, 2025 edition, we write: "According to T488/18 and T598/19, partial reimbursement of the appellant’s appeal fee can also be based on the withdrawal of a request for oral proceedings by another party to the appeal proceedings (e.g. a respondent) because R.103(4)(c) refers to ‘any request’. However, T777/15 and T795/19 have come to the opposite conclusion, i.e. that the appellant must have timely withdrawn its own request for oral proceedings to benefit from partial reimbursement."
• The present decision:  "Since the respondent's withdrawal of the request for oral proceedings was made within one month of notification of the communication issued by the Board in preparation for the oral proceedings, both conditions of Rule 103(4)(c) EPC, that any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings and no oral proceedings take place, are met  [and the appeal fee is reimbursed in part to the appellant]. It makes no difference that the withdrawing party and the appealing parties are not the same (cf. T 517/17, reason 6; T 488/18, reason 8). Hence, 25% of the appeal fee is to be reimbursed to each appealing party."
• 
  

EPO 

The link to the decision is provided after the jump.

R 0002/25 - Length of procedure

Key points

• This decision dismissing a petition for review was taken by a three-member panel during oral proceedings held on 29.09.2025.  The decision was issued in writing on 10.02.2026.
• There is no public or official target for how long decision writing in R cases should take.  Given that in three-member panel decisions, the decision is to unanimously reject the petition as being clearly unallowable and/or clearly inadmissible, the writing of the decision should not be very difficult - it can't be a borderline case. Given the President of the BoA being the Chair in this case, and considering the legislative purpose of  Rule 102 EPC - see especially Rule 102(1) EPC, I'm still surprised it took more than three months. 
• " The petition for review concerns decision T 0314/20 ... dated 16 November 2023 (the decision under review). The decision was notified on 20 December 2024."
• It was Board 3.3.04 that needed more than a year to write the decision. This is, of course, well beyond the period of three months specified in Art 15(9). It also caused a significant delay in the petition for review procedure by more than a year. 
• One of the parties had filed a request for acceleration of the appeal proceedings after the oral proceedings and after the oral decision had been taken. The TBA denied the request and replied that "In light of the above, the Board will issue the written reasons for its decision at a time that is consistent with its members' workload, and in any event not before March 202[4]." Of course, the Board needed until December 2024.
• If we infer from this remark that the delay was not due to, e.g., a Board member's illness, but to 'workload', we may observe a broader 'management' issue under Board 3.3.04 (at that time).  
• I'm not sure whether Board 3.3.04 currently better meets the target of Art. 15(9) RPBA.
• To be clear, I think it is also the responsibility of the Board of Appeals Unit's management to monitor whether any TBA is overloaded or experiencing exceptional circumstances (e.g., board members being unavailable due to health reasons).
• The opposition was filed in 2017. The entry into the EP phase was in 2009.

EPO 

The link to the decision is provided after the jump.

T 0639/23 - Lapse of patent and continuation opposition

Key points

• This decision was published in December 2025.
• The OD decided to maintain the patent in amended form. Both the opponent and the proprietor appealed. 
• The Board, in machine translation: "By letter dated October 14, 2025, the patent proprietor withdrew his appeal and his request for oral proceedings. At the same time, he declared that the patent had lapsed in all contracting states in which it would have been effective (DE, FR, AT, IT) by declarations of renunciation." 
• "In a communication under Rule 84(1) EPC dated 3 November 2025, the Board considered the documents submitted with the letter of 31 October 2025 to be sufficient to clearly demonstrate the effective waiver in all Contracting States in which the patent was last in force. The appeal proceedings could therefore be continued at the request of the opponent, provided that such a request was filed within two months of service of this communication."
• "By letter dated 10 November 2025, the opponent requested the continuation of the appeal proceedings."
• "By letter dated 17 December 2025, the patent proprietor commented on the opponent's letter of 10 November 2025". The proprietor submitted arguments that the proceedings should be terminated without a (substantive) decision.
• "The patent proprietor contested the opponent's arguments and, in its letter of December 17, 2025, asserted that the opponent had failed to sufficiently demonstrate a concrete, seriously threatened infringement and thus a concrete interest in legal protection. "
• " According to Decision T 598/98, Guidelines 1 and 2 and Reasons 1.6 to 1.8, in addition to the (in this case disputed, see above) existence of a legitimate interest of the opponent in the retrospective revocation of the patent, the Board's discretionary decision under Rule 84(1) EPC may also take into account ...."
• I still think T 598/98 conflated German national practice with the EPC, or too readily assumed that German practice in cases of lapse of the German patent is to be applied equally under the EPC.
• I don't think Rule 84 gives the OD discretion to continue the opposition procedure if the opponent requests that the OD take a written decision on the merits. In particular, if Rule 84 is interpreted to give the OD to discretionarily terminate the procedure against the request of the opponent (in case of a lapse), then Rule 75 EPC is meaningless ("An opposition may be filed even if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States."). Rule 84 must be interpreted (also) using the systematic method of interpretation.
• See my extensive comments on T 598/98 in this blog post.
• The Board decides to continue the procedure. "The "legal added value" of a decision on the merits, as demanded by the patent proprietor, compared to the mere discontinuation of the proceedings, is also present if the proceedings are continued, since, unlike discontinuation, the effect of a patent that is not valid is eliminated retroactively. Finally, the patent proprietor's argument that there is no concrete impact on a third party in this case is also unconvincing. Such a thing is not decisive for the continuation of the proceedings, since the objection (appeal) procedure is by its nature a review procedure for which a concrete impact on the objector or third parties is not necessary."
• The Board decides to revoke the patent.
• I don't know why the proprietor did not disapprove of the text. It could have been related to the mutual requests for a different cost apportionment (the Board refused both, though likely Rule 84 does not preclude a decision under Art. 104). Teva/Copaxone should also be considered, of course. 

EPO 

The link to the decision is provided after the jump.