T 0561/23 - More on Rule 80

Key points

• Claim 1 of the auxiliary request at issue is amended by two alternative features that serve to make the claim novel. The features are taken from the dependent claims as granted.
• At issue is whether this complies with Rule 80.
• The Board, in machine translation: "According to the case law of the Boards of Appeal, it is generally permissible to replace a granted independent claim, which was deemed not novel or inventive in opposition proceedings, with several independent claims, provided that each of these is directed to subject-matter already defined in the granted dependent claims (see, e.g., T 1416/04, point 5.1; T 263/05, points 4.7 and 4.8; T 993/07, point 1.5; T 1679/09, points 4.2 and 4.3; T 1025/14, point 3.2; T 1191/22, point 2.4). The reason for this is that the patent proprietor must be able to maintain potentially allowable subject-matter already included in the granted set of claims."
• The phrase "provided that each of these is directed to subject-matter already defined in the granted dependent claims" seems a sufficient condition, but not necessarily a necessary requirement.
• "Granted independent claim 1 was deemed not to be novel within the meaning of Article 54(3) EPC during the opposition proceedings. It is therefore permissible to replace it with several independent claims relating to different embodiments of the blind system already defined in the granted dependent claims. "
• " The respondent [opponent] argued that alternatives (a) and (b) had to share a common general concept to comply with the requirements of Rule 80 EPC. "
• The Board does not agree: "Rule 80 EPC merely requires that an amendment be prompted by a ground for opposition, i.e., that it aims to overcome such an objection and thus prevent the patent from being revoked. While the lack of novelty in claim 1 may give rise to an objection of lack of unity, lack of unity does not constitute a ground for opposition. Furthermore, in opposition proceedings, the patent proprietor does not have the option of pursuing different inventions by means of divisional applications (see also T 1416/04, supra, point 5.1; T 263/05, supra, point 4.8). Under these circumstances, there is no reason to require the patent proprietor to choose between several dependent claims parallel to claim 1."
• The Board does not cite G 1/91, which is remarkable.
• The novelty-destroying document for the higher-ranking request was a prior right under Art. 54(3). However, "Documents cited under Art. 54(3) should be disregarded in the evaluation of unity of invention since they cannot anticipate the inventive concept of the application under examination." (Guidelines F-V, 3.1.1)

EPO 

The link to the decision is provided after the jump.

T 1899/23 - When the Board ceases to exist

Key points

• "On 1 September 2025, a new business distribution scheme (BDS) was adopted, according to which the IPC class of the patent underlying the decision under appeal (C11D) was to be allocated to Board 3.3.02 as of 1 December 2025 and the allocation of the technical and legal members of Board 3.3.06 terminated after 30 November 2025. "
• "On 4 November 2025, the case was transferred to Board 3.3.02 with effect from 1 December 2025 and the parties were informed accordingly. The composition of the Board in the present case remained unchanged." However, the three members of the Panel were not assigned to Board 3.3.02, but to different Boards.
• "In a submission dated 13 January 2026, the appellant raised an objection under Rule 106 EPC and requested "to cancel the oral proceedings and to hold oral proceedings with the Board 3.3.02 in a composition of the Board 3.3.02 in a composition meeting the requirements of the business distribution scheme dated September 1, 2025". It argued that the composition of the panel with members of previous Board 3.3.06 contravened the BDS of 1 September 2025 [27 June 2025] as none of the members belonged to Board 3.3.02, i.e. the Board the case was allocated to with effect from 1 December 2025. "
• "the appellant's final request ... implies that the panel would have to determine that members of Board 3.3.02 would have to continue the assessment of this case. The panel has no competence to decide accordingly (see Article 1(3) RPBA and Article 3, 4 BDS). [...] since the Chairman of Board 3.3.02 also did not meet the appellant's request to change the composition of the panel in this case but rather confirmed that its composition remained unchanged, there is no basis for continuing the case with members of Board 3.3.02 and its Chair or Vice Chair." (referring to G 1/21).
• " with respect to the objection under Rule 106 EPC, the Board considers, in any event, that the composition of the panel for this case was in accordance with the applicable provisions of the relevant business distribution schemes for the Technical Boards of Appeal."
• "The defects set out in Article 112a(2)(a),(b) and (d) EPC at least do not encompass a violation of the right to have the case decided by the lawfully designated judges in accordance with the business distribution scheme". However, a violation of the right to be heard is not excluded.
• " for the purposes of the present case, there is no need to decide whether a fundamental defect in the composition of the responsible panel could indeed be regarded as a violation of the right to be heard under particular circumstances (e.g. if the defect were so severe that the composition was entirely arbitrary) and what consequences this might have for the continuation of the proceedings. This is because the parties' interest to be heard by the lawfully designated judges (and, accordingly, the right to have fair proceedings) is not affected in the present case. Under these circumstances, the Board finds it appropriate to comment on the composition of the panel in this particular case."
• "The wording of Article 8 BDS of 27 June 2025 is as follows: "Cases in which before 1 January 2025 [sic] a communication has been sent or oral proceedings have been appointed shall not be affected by this business distribution scheme, nor shall those cases individually allocated in transitional provisions of previous business distribution schemes. This provision applies mutatis mutandis if the business distribution scheme is amended during the working year." (link)
• "Since both the Board's communication under Rule 15(1) RPBA and the summons to oral proceedings had already been issued before the new business distribution scheme of the Technical Boards of Appeal of 27 June 2025 entered into force, the composition of the panel as set out in the communication of 21 May 2025 had to be maintained pursuant to Article 8 BDS."
• How the Board goes from 1 January 2025 to 27 June 2025 as the relevant date, is not explained, though most likely the cut-off date was simply not updated in the June 2025 version of the BDS. 
• "The BDS does not define the measures to be taken if a Board loses its Chair and all its members and, for practical purposes, ceases to exist."
• "The Board considers that Article 8 BDS is to be applied analogously if the case is transferred to another Board because the previous Board effectively ceases to exist."
• "Hence, although the case was transferred to Board 3.3.02, the present panel, consisting of members not allocated to this Board, did not have to be replaced in the given constellation. Rather, the composition of the panel as set out previously could remain unchanged pursuant to an analogous application of Article 8 BDS, which was also confirmed by the Chair of Board 3.3.02 with communication of 15 January 2026."
• The Board finds that claim 1 involves added subject-matter and dismisses the appeal. 

EPO 

The link to the decision is provided after the jump.

T 0655/24 - Post-published evidence for inventive step

Key points

• In the opposition case at hand, it is unclear if the distinguishing feature provides "a" technical effect or an improvement over the closest prior art. The case is about antibodies, and the distinguishing feature is a mutation (D265A) at a certain position (265). 
• The proprietor  referred to additional data provided in post-published documents D25 and D26 as evidence that the effect of further reduced effector function was achieved by essentially all claimed subject-matter.
• "The board, however, notes that such evidence (data) can only be taken into account when the technical effect that it is purported to show is already credible from the disclosure in the application as filed itself."
• "Applying the principles of G 2/21, the board does not consider that an improvement of an effect, here further reduced effector functions mediated by the Fc region, is encompassed by the technical teaching and embodied by the same originally disclosed invention merely because the effect itself (but not the improvement), was shown to be achieved in the application as filed "
•  The board is aware that a different approach to this issue was taken in decisions T 1989/19, T 2716/19 and T 840/22 and makes the following observations (...)
• "the approach taken in decisions T 1989/19, T 2716/19 and T 840/22 would allow an applicant to solely rely on post-published evidence to establish inventive step by filing an application disclosing an effect that was already known from the prior art or formed part of common general knowledge and subsequently invoking an improvement of said effect as "implicitly derivable" from the application as filed. This scenario goes against the principle that patents should not be granted for subject-matter whose inventive contribution is identified only after their effective date. Such an outcome directly contradicts the "first to file" principle enshrined in the EPC and confirmed in decisions G 1/03 and G 2/10. It is also in evident tension with the framework established by decision G 2/21 "
• "The board therefore must turn to the disclosure in the application as filed to determine if the evidence for a further reduced effector function of the FEA variant compared to the FE variant reported in post-published documents D25 and D26 can be taken into account."
• "In conclusion, the board considers the improved effect of decreased CD69 release of the FEA variant compared to the FEFE variant to have been credibly disclosed in the application as filed. Thus, while it is not strictly necessary to consult the evidence in documents D25 and D26, it can be noted that their disclosure supports the improved effect shown in the application as filed. "
• The Board considers the claimed subject-matter to be non-obvious based on said technical effect.
• The Board indicates that it considers the claimed subject-matter also non-obvious as an alternative.
• Hence, the whole point about the interpretation of G 2/21 seems obiter.
• I think the Board's proposed approach is very strict, especially if the applicant was unaware of the prior art cited by the opponent. If you find your molecule has a good score for a certain property, is there really a necessity to carry out comparative testing before filing the patent application (and against which prior art?)

EPO 

The link to the decision is provided after the jump.

T 0293/25 - Oral submissions that are too complex

Key points

• "The respondent did not respond in writing to the preliminary opinion, but rather contested the conclusion mentioned above at the oral proceedings before the board. In particular, they provided detailed oral submissions as to why it was not possible to derive from a comparison of example 1 and comparative example 4 [of the patent] that features (C), (G) and (H) contributed to achieving [a technical effect]"
• "the experimental section of the patent spans 20 pages and covers not only a great number of examples and comparative examples, but also various intermediate products, with multiple parameters for each of them being presented in 8 different tables"
•  "The respondent's oral submissions lasted for about 45 minutes and mostly, if not entirely, consisted of multiple comparisons of the properties of various examples and comparative examples and pairs thereof, which had not been presented in writing before. This submission of entirely new information was so extensive and complex that it was not possible for either the board or the appellant to take detailed note of, and to understand it sufficiently to form an informed opinion thereon."" '
• "In a case where new, technically complex information is provided in oral submissions lasting 45 minutes, the challenge of taking accurate note of what is said in itself prevents the other party from adequately responding thereto. Therefore, taking the new submissions into consideratidon would have violated the appellant's right to fair proceedings. In addition, postponing the oral proceedings until a later date would have gone against the principle of procedural economy, in particular because the situation could have easily been avoided, had the respondent filed their submissions in writing in due time (cf. the principles of fair proceedings and procedural economy, which are cornerstones of the proceedings (including) before the boards, and which have to be properly balanced, according to Articles 12 et seq of the RPBA, e.g. T 2920/18, T 339/19, T 1857/19, T 1800/21)."
• "For these reasons, it was not possible to consider the new submission."
• We don't have a transcript of the hearing, but I wonder if the opponent was warned during their 45 minutes by the Board that their submissions were too complex.
• 
  

EPO 

The link to the decision is provided after the jump.

T 1471/24 - No two-part form, application refused

Key points

• Rule 43(1) provides that "where appropriate" claims shall contain a preamble and a "characterised in that"  part (two-part form).
• "The examining division found that D1 represented the closest prior art to the claimed invention and that the subject-matter of claim 1 was both novel and involved an inventive step over the cited art (see page 5 of the decision). It nonetheless found that the requirements of Rule 43(1) of the Implementing Regulations were not fulfilled since claim 1 was not drafted in the two-part form, despite this being appropriate  ...."
• "It is noted that the purpose of the two-part form of claim is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. It is established practice before examining divisions not to insist on the two-part form if it is sufficiently clear from the indication of prior art made in the description which features of the claim under examination are known therefrom (see also Guidelines for Examination, F-IV, 2.3.2). "
• "However, this proviso regarding the features known from the prior art, as found by the examining division in point 21.4 of its decision, has not been satisfied in the present application. D1 is indeed acknowledged on page 1 of the description (dated 15 December 2022) yet this acknowledgement fails to identify which specific features of the claim 1 under examination are known from D1. Fundamentally, therefore, in view of the two-part form not having been used in the independent claim, a resultant requirement for the content of the description to include an indication of which features of claim 1 were known from the prior art was not fulfilled."
• "The appellant further argued that the proposed two-part form was incorrect insofar as D1 discloses a set of various flat mirrors rather than, as proposed by the examining division for inclusion in the preamble of claim 1, merely a set of various mirrors. Herein lies a misunderstanding of the appellant. The preamble of a claim drafted in the two-part form should include those features of the claim known in combination from the prior art (Rule 43(1)(a) EPC). In the present case, a set of various mirrors is indeed known from D1, albeit in D1 the various mirrors of this set are flat. That the mirrors of D1 are flat is however irrelevant; D1 without doubt does disclose a set of various mirrors, such that this feature can be included in the preamble of a two-part form of claim."
• The applicant raised an argument based on Article 123(2), which is very interesting, although it was rejected by the Board. "The appellant's further contention in this regard that the generalisation of 'flat mirrors' of D1 to merely 'mirrors' in the preamble of claim 1 offended Article 123(2) EPC is also based on a misunderstanding of this provision of the EPC. Article 123(2) EPC prohibits a European patent application being amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. How the claimed subject-matter, or even the features included in the preamble of a claim, differs from a prior art document is irrelevant for the consideration of meeting the requirement of Article 123(2) EPC. Similarly, as it is the subject-matter of a claim as a whole which is considered when evaluating compliance with Article 123(2) EPC, novel information derivable alone from the preamble of a claim does not give rise to objections under this article; it is the subject-matter of the claim as a whole for which the prohibition of extension beyond the content of the application as filed applies."
• The applicants are two natural persons, not represented by a professional representative. The current applicants are the heirs of the original applicant/inventor, who has deceased. 
• The applicant did not request oral proceedings. The Board issued the decision without oral proceedings or advance communication. 
• There was no auxiliary request with the claim in two-part form, and the appeal was dismissed. The examining division's refusal decision has, hence, become final. This is remarkable, as there was novel and inventive subject-matter.  
• 
  
EPO

The link to the decision is provided after the jump.

T 0528/25 - DABUS (II)

Key points

• The applicant essentially wishes to designate an AI tool as the inventor in this examination appeal.
• The  Board: "the EPC requires that a legally capable person is named as the inventor"
• Just as a note, the Board does not say "natural person" or "human" but refers to "legally capable persons" (as in J 8/20). Let's suppose that this choice of words is intentional. Then, considering that in legal English, the term "person" is the genus of the species "natural persons" and "legal persons" (companies etc.), the phrase ""legally capable persons"" is not limited to human persons. Perhaps, one day, if a national law treats an AI agent as capable of some legal transactions (and/or if a national law recognises an AI agent as a proprietor of some rights, i.e. as a valid holder of a bitcoin wallet or bank account), it may turn out that J 8/20 left a small door open. 
• "It must be considered that patent protection for an invention that was essentially developed using artificial intelligence (AI) would be impossible under the EPC, if natural persons were excluded from being regarded as inventors of AI-generated inventions, since, as indicated above, the EPC requires that a legally capable person is named as the inventor. "
• "the provisions on patentability under Article 52 ff. EPC do not rule out patent protection for AI-generated inventions. An invention involves an inventive step under Article 56 EPC if it is not obvious to a person skilled in the art in view of the prior art, which may also be the case for inventions developed by using artificial intelligence (AI). If an invention is developed using an AI-machine, this also requires some human input or influence, so that it is in principle not excluded to identify one or more natural persons to whom a causal contribution to the invention is attributable, and who can therefore be regarded as inventors within the meaning of the EPC.
• The Board thus concludes that, in principle, the designation of an inventor under the EPC is also possible for inventions developed using artificial intelligence (AI)."
• The appeal is dismissed.
• A divisional application has been filed already. 

EPO 

The link to the decision is provided after the jump.

T 0299/24 - Correcting errors in amended claims

Key points

• Claim 1 of the former main request reads: "(a) "Headrest (10), in particular headrest for vehicle seats, (b) comprising a bone conduction two-way sound transmission system (1), which in turn comprises at least one bone conduction loudspeaker (5) and at least one bone conduction microphone (7), ..."
• "With its written reply to the board's [preliminary opinion], the applicant filed a corrected main request, replacing the phrase "in particular headrest for vehicle seats" in claim 1 with the wording "headrest for vehicle seats" []. It framed this submission as a correction of an error under Rule 139 EPC."
• The Board: "Under Rule 139, second sentence, EPC, if a request for correction concerns the claims, the "correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction". According to the established jurisprudence of the Boards of Appeal (see G 3/89, Reasons 5 and 6; G 11/91, Reasons 6), a two-step approach applies in this regard. It must first be established that it is obvious that an error is in fact present in the document filed with the EPO, the incorrect information having to be objectively recognisable by the skilled reader using their common general knowledge. Secondly, the correction of the error must be obvious."
• My analysis is that Rule 139, second sentence, is an implementation of Article 123(2) EPC and hence provides a rule for determining when a purported correction has sufficient basis in the application as filed (i.e., does not extend beyond the content of the application as filed). This follows directly from G 3/89, hn. 1, in my view ("Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC."
• In the present case, the amended claim had an undisputed, explicit basis in the application as filed. The issue was not whether the application as filed contained an error. Hence, I don't think the second sentence of Rule 139 applied.
• Instead, the case concerns a case amendment, in particular one under Article 13(2) RPBA. Depending on the facts of the case, if a "subsequently filed document" (i.e., a document filed after the filing date of the patent application) contains an error, the party concerned may correct that error later in the procedure. The evident nature of the error and the correction (or lack thereof) are among the factors the board must consider when deciding whether to admit the correction. At any rate, a correction of an amended claim 
• Credit to Mr Thomas for flagging the decision on his weblog.
•  The Board does not admit the amended set of claims (with reasoning that would also apply under Art. 13(2) RPBA, in my view): " Crucially, nowhere in the statement of grounds of appeal does the appellant base any argument on the headrest being exclusively limited to a "headrest for vehicle seats". The appellant neither stated that claim 1 was restricted to overcome a specific objection, nor did it rely on the specific vehicle-seat environment to establish an inventive step. Because the appellant's technical arguments apply perfectly and seamlessly to the broader claim wording ("in particular headrest for vehicle seats") that was actually filed, the skilled reader reviewing the statement of grounds of appeal alongside the claims would find a coherent, self-consistent appeal case. There is thus no logical disconnect that would alert the skilled reader to a mistake.
• "Since the request for correction under Rule 139 EPC has been refused, the "corrected" main request constitutes an "amendment" of the appellant's appeal case. However, leaving the question of admittance aside, the board considers the "corrected main request" not to comply with Article 56 EPC. In this regard, the board endorses the examining division's assessment of inventive step set out in Reasons 10 of the appealed decision, for the following reasons."
• This makes the whole discussion of Rule 139 moot (or obiter), it seems to me.

EPO 

The link to the decision is provided after the jump.