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• In this case, the applicant had withdrawn the designation of GB in the parent application by letter of 02.03.2017, after the Rule 71(3) Communication.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 The parent patent was revoked.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."
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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.

T 0538/24 - The photograph is in color for the Board

Key points

• The Board, in translation: "in the opposition proceedings, the object of the alleged prior use, Recaro, was inspected during an oral hearing held as a videoconference. The Opposition Division rejected the opponent's request for an in-person hearing, which was based on the planned inspection, because it considered the conditions for an in-person hearing, as defined in the decision of the President of the EPO (OJ EPO 2022, A103), to be not met."
• " The appellant argued that it had been virtually impossible to explain the mechanics of the object under consideration in a manner as adequate as would have been possible in a face-to-face event. This was also evident from the inadequate black-and-white photographs in the transcript of the taking of evidence provided to her, which were partly of poor quality and partly blurry."
• The appellant requests a new inspection of the device, in person.
• The Board refuses the request.
• The Board: "The alleged poor quality of the photographs taken during the inspection with a high-resolution camera does not relate to the inspection itself, but rather to its documentation and transmission to the parties. In fact, the Chamber has received the photographs in good quality and in color."
• It is strange, to say the least, that the Board looks at a different picture than the parties. The question is: how do you know what the Board is actually looking at, during vico oral proceedings? Perhaps it will be less of an issue now that documents are made visible in color in the public online file.
• The primary reason for refusing the request for a new inspection is that "As the respondent argued, there was agreement at the end of the inspection regarding the functionality of the prior use by Recaro"

EPO 

The link to the decision is provided after the jump.

T 0514/24 - Deleting from lists

Key points

• Claim 17 is directed to a chemical material and contains six lists of elements. In AR-2a, the proprietor deletes elements from every list.
• Three out of eight elements are deleted in list II, 3 of 10 elements in list III, two out of 5 elements in list IV, and four out of six elements are deleted in list IV.
• The Board, in translation, "Claim 17 combines an arbitrarily chosen subgroup of the possible compositions of the metal oxide layer with an equally arbitrarily chosen subgroup of the possible laser types, without specifying a basis for the remaining combinations. The compatibility of this multiple deletion with Article 123(2) EPC is not immediately apparent and should have been substantiated by the appellant (Article 12(3) RPBA)."
• The decision contains additional reasoning on Article 123(2) and amendments consisting of selecting alternatives from the claim, but the above point appears to be crucial. 
• This reasoning is, as such, unremarkable. However, the auxiliary request serves to make the claim novel over a prior right under Article 54(3) EPC.
• The difficulty for me is that an undisclosed disclaimer would have been possible in these circumstances, under G 2/03 and G1/16 (it seems to me). But deleting elements from the recited lists is not. 

• EPO 

The link to the decision is provided after the jump.

T 0832/18 - Post-published evidence and Art. 83

Key points

• The decision is dated 09.12.2024; by Board 3.3.04,  and the written decision was issued 30.10.2025. I assume there were exceptional circumstances, such as the illness of a Board member.
• The interesting point is the importance of a post-published document for the sufficiency of disclosure of an in vitro diagnostic method claim."
• ""1. A method for determining the likelihood of effectiveness of an EGFR tyrosine kinase inhibitor [a class of medicaments] to treat cancer [, the method] comprising: determining whether the erbBl gene obtained from a biological sample obtained from said patient comprises at least one nucleic acid variance, selected from [ a list of mutations] 

  wherein the biological sample is a sample of tissue or fluid isolated from the patient and wherein the presence of the at least one nucleic acid variance indicates that the EGFR tyrosine kinase inhibitor is likely to be effective;

• "Post-published document D132, ... shows that lapatinib, another EGFR-TKi inhibitor, is a better inhibitor of wild type EGFR (EGFR-wt) than of EGFR-L858R mutant ...  the board considers that ... that lapatinib has been shown to be less effective, or ineffective, in inhibiting EGFR-TK and in treating cancer in patients with a nucleic acid mutation according to claim 1(b) or (c), compared to patients who do not have such a mutation.
• "Documents D134, D132, D50 and D72 thus provide serious doubts based on verifiable facts that there is no increased therapeutic effectiveness of EGFR TKis in patients affected with cancer comprising at least one mutation as set out in claim 1. Some TKis, such as lapatinib or neratinib, do not have or have a lower effect on such patients in comparison with patients comprising a wild type EGFR. Hence, the subject-matter of claim 1 of the main request is not sufficiently disclosed (Article 83 EPC)."
• As a comment, it remains interesting that post-published documents cannot be used in some aspects of Article 83, also for functional features (such as second medical use claims), while such documents can be used in other aspects of Art. 83.
• G 2/21, r.77 : "the scope of reliance on post published evidence is much narrower under sufficiency of disclosure (Article 83 EPC) compared to the situation under inventive step (Article 56 EPC). In order to meet the requirement that the disclosure of the invention be sufficiently clear and complete for it to be carried out by the person skilled in the art, the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence.
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• EPO

The link to the decision is provided after the jump.