T 1772/23 - More on Rule 80

Key points

• The Opposition Division had decided that the amendments leading to Auxiliary Request 2 did not meet the requirements of Rule 80 EPC. ... The set of claims of auxiliary claim 2 comprises four independent claims [by splitting claim 1]. 
• The proprietor appeals.
• The Board in translation: "The Board does not follow this view, but considers the amendments to be in conformity with Rule 80 EPC."
• "Rule 80 EPC stipulates as its sole condition for amendments that they must represent a bona fide attempt to overcome a ground for opposition and thus prevent the revocation of the granted patent."
• It must be noted that Rule 80 adds "even if that ground has not been invoked by the opponent".
• "In the present case, in all four independent claims of auxiliary request 2, the claimed method [of granted claim 1] is restricted by additional features from dependent claims, which is to be regarded as an attempt to distinguish the method claimed in the claims from the method known from E1."
• "The excessive use of and/or formulations in the dependent claims of a claim set can make it difficult to anticipate potential future withdrawal positions in the granted claim set. This can also, under certain circumstances, lead to questions as to whether the withdrawal positions were originally disclosed. However, these are questions that would have to be examined under the provisions of Articles 84 and 123(2) EPC and do not affect the assessment of the amendment under Rule 80 EPC."
• " Furthermore, the methods defined in the four independent claims of auxiliary request 2 do not necessarily have to be based on alternative, mutually exclusive embodiments. ... According to the settled case law of the Boards of Appeal, the existence of two alternative embodiments in the patent in suit may lead to the admissibility of using two independent claims if the scope of protection is limited. However, this does not imply that this criterion is mandatory, i.e., that only in the case of several alternatives mentioned in the patent in suit may these be pursued in independent claims. On the contrary, it has already been established in T0262/05 (Reasons in Section 4 to Rule 59a EPC, which corresponds to the current Rule 80 EPC) and T0123/22 (Reasons 3.12) that the replacement of a single granted independent claim with two independent claims is not only permissible in exceptional cases, but that in each specific case the amendments must be individually assessed to determine whether they constitute an appropriate and necessary response to avoid the revocation of the patent in suit on the basis of a ground for opposition."
•  " The Opposition Division is correct in asserting that the submission of more than 100 auxiliary requests can lead to an overload of the proceedings ... However, this is a question to be examined when these applications are admitted, not whether the respective amendments comply with the requirements of Rule 80 EPC. This must be clearly distinguished, as explained in detail, for example, in T0123/22 (see Reasons 3.7 and 3.10). The Board therefore sees no reason why the amendments leading to the claim set of auxiliary request 2 should not be in compliance with Rule 80 EPC and therefore does not follow the decision of the Opposition Division."
• The opponent had withdrawn the opposition during the appeal stage.
• The case is remitted back to the OD.
• 
  

EPO 

The link to the decision is provided after the jump.

T 1965/23 - Starting from wrong document, clueless choice

Key points

• Under the PSA, the CPA or starting point document must be a 'feasible' document. What happens if you try the PSA from a document that is not suitable?

• Claim 1 as granted defines: "A medical device containing a separately prepared freeze-dried cake composition comprising aripiprazole as an active ingredient in a storage container whose inner wall is treated with silicone, wherein there is a space between the inner wall of the storage container and the cake composition."

• "The patent addresses the specific issue of the agglomeration of aripiprazole following resuspension when it is provided as a cake composition in a storage container of a medical device, such as a syringe, of which the inner wall is treated with silicone"

• " The patent teaches in this context that by reducing the contact of the cake composition comprising aripiprazole with the silicone this agglomeration can be suppressed  ... . The patent presents experimental results in support of this teaching"

• "According to the established jurisprudence (see [CLBA] I.D.3.4) a central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the claimed invention; otherwise, it cannot lead the skilled person in an obvious way to the claimed invention. "

• "if an inventive step can be acknowledged starting from a particular prior art that is convincingly identified as the most promising starting point and therefore indeed constitutes the closest prior art, the attempt to deny an inventive step starting from a less promising starting point must fail"

• The concept of the closest prior art in the problem solution approach not only obviates the need to address repetitive lines of argument, it also allows for the due appreciation of specific effects in relation to the prior art that may be associated with the distinguishing features

• Document D2 describes the preparation of a formulation comprising aripiprazole by freeze-drying a suspension in a vial 

• "documents D12, D11 and D18 describe silicone-treated medical devices comprising freeze-dried formulations without mention of aripiprazole or problems resulting from the presence of silicone. Documents D12, D11 and D18 therefore do not address a similar purpose or effect as the patent. Arriving at the development of a freeze-dried composition comprising aripiprazole in a silicone-treated container of a medical device as disclosed in the patent starting from these documents would require the clueless choice of aripiprazole from all possible candidates of active ingredients, which the Board does not consider a reasonable proposition."

• The Board therefore considers that documents D12, D11 and D18 do not represent reasonable alternative starting points in the assessment of inventive step, irrespective of the number of other features shared with the claimed subject-matter.

• Now, as a question: how could a national court assess inventive step over D12, assuming the court cannot disregard D12 as a starting point, as the Board did?

EPO 

The link to the decision is provided after the jump.

T 0981/23 - Review of positive admittance decisions (?)

Key points

• "Positive admittance decisions by departments of first instance are not regulated in Article 12(6), first sentence, RPBA. Having said this, in this Board's opinion such decisions are still subject to a board's limited power to review discretionary decisions of departments of first instance (see G 7/93, Reasons 2.6; for claim requests, see also T 1202/19, Reasons 39 to 43)."
• G7/93 r.2.6 is the well known remark about "in the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles as set out in paragraph 2.5 above, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion"
• T 1202/19 - blog post
• "In the case in hand, there was no error in the opposition division's exercise of discretion."
• See also T 0909/23: "Nach Ansicht der Kammer ist die Ausübung des Ermessens einer erstinstanzlichen Abteilung auch im Rahmen einer positiven Zulassungsentscheidung einer Überprüfung im Beschwerdeverfahren nach den in G 7/93 dargelegten Grundsätzen zugänglich"
• On the other hand, see T 1884/19 (24-10-2022): "D25 to D30 were not only admitted into the proceedings, but considered by the opposition division for assessing sufficiency of disclosure of claim 6 as granted. There is in such a case no legal basis for excluding documents D25 to D30 from the appeal proceedings (see also T 0487/16, point 3.1 of the Reasons for the decision, as well as the case law developed under RPBA 2007, e.g. T 0026/13, point 2 of the Reasons for the decision; T 1568/12, point 2.4 of the Reasons for the decision; T 2603/18 points 1.1 to 1.2 of the Reasons for the decision)."
• For a more recent case, see T 2036/22 (2024), and T 0189/23 (07-10-2025): "According to a number of decisions to which the present Board agrees (Case Law, V.A.3.4.3 and in particular T 617/16, point 1.1.1 of the reasons or T 2603/18, points 1.1 and 1.2 of the reasons), the EPC does not provide a legal basis for excluding documents, requests or evidence on appeal if the contested decision was based on them. In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA, such submissions are automatically part of the appeal proceedings". 
See also the extensive reivew of the issue in CLBA V.A.3.4.3 "Submissions admitted at first instance are part of the appeal proceedings"
• I wonder whether / how / when this divergence in the case law will be resolved. Can the Board unadmit documents or claim requests that were examined on the merits (and decided on) by the OD?

EPO 

The link to the decision is provided after the jump.

T 0456/24 - No review of decision to admit

Key points

• "The respondent [proprietor] argued that document D20 should not be admitted into the appeal proceedings, contending that the reasoning provided by the opposition division for admitting this document was insufficient, as late-filed documents should only exceptionally be admitted if there are reasons to suspect that such late-filed documents prejudice the maintenance of the patent in suit. 
• The board disagrees. According to established case law, since D20 was part of the opposition proceedings and the decision was based on D20, this document cannot be excluded from appeal proceedings (see Article 12(2) RPBA and the Case Law of the Boards of Appeal, 11th edition 2025, CLB in the following, V.A.3.4.3).
• This is because the aim of appeal proceedings is to review the decision under appeal in a judicial manner, which, in the present case, also inevitably requires a review of the findings drawn by the opposition division on the basis of D20."

• "In addition, no error in the use of discretion from the opposition division is apparent, because the appealed decision clearly shows that the opposition division decided to admit D20 after a prima facie review of the content of the disclosure of this document  ... ."

EPO 

The link to the decision is provided after the jump.

T 0508/24 - New public prior use after remittal

Key points

• "In the present case, the alleged prior use "Tulip-Oldenburg" was introduced for the first time after remittal of the case to the opposition division and was not directly related to the prior art already on file."
• "To assess whether feature e) of claim 1 was disclosed, the opposition division specifically analysed the videos D36 and D37. Their conclusion, that feature e) is not disclosed because the machine shown in the videos includes grippers which operate independently from the conveyor belts and are not connected thereto, clearly represents a technical assessment based on prima facie relevance examination which does not appear to violate the opposition division's discretionary powers.
• Based on the prima facie finding of the distinguishing feature e), which feature e) was also not disclosed in any of the cited documents, the opposition division assessed the prima facie relevance of the alleged public prior use with respect to inventive step for the outcome of the case."
• The OD did not admit the new attack based on an alleged public prior use. The Board sees no mistake in this decision.
• "The case law of the Boards of Appeal does not establish a fixed or uniform standard for how deeply an opposition division must examine late-filed evidence when assessing prima facie relevance. This means that an opposition division must exercise its discretion under Article 114(2) EPC according to the particular facts before it, and that boards of appeal should only intervene if that discretion was exercised on the basis of wrong principles, without taking account of the right principles, or in an arbitrary or unreasonable manner (CLB, V.A.3.4.1b)."

EPO 

The link to the decision is provided after the jump.

T 0781/24 - Case amendments after remittal

Key points

• The Board in the first appeal remitted the case for further prosecution (i.e., not finding a set of claims to be allowable). Next, the proprietor changed their auxiliary requests. The OD did not admit the claim requests. The proprietor contests this finding in the second appeal.
• The proprietor argued that: "these requests were submitted after the case had been remitted to the opposition division for further prosecution and before the opposition division summoned for oral proceedings after remittal, therefore before the final date set under Rule 116(1) EPC. "
• The Board: "Whether or not amended sets of claims presented after the expiry of the time limit set under Rule 79(1) EPC should be considered in opposition proceedings does not merely depend on their filing within the time limit under Rule 116 EPC, but also on the specific circumstances of the case. If all new submissions received within the time limit according to Rule 116 EPC were automatically to be considered timely, the time limit set according to Rule 79(1) EPC would be rendered meaningless. Therefore, when determining whether amended requests, such as the main request and auxiliary requests 1 to 7, submitted within the time limit set under Rule 116 EPC, were filed in due time, it has to be taken into account whether these requests were submitted in direct and timely response to a change in the subject of the proceedings (see also T 364/20, reasons 7.2.4 and 7.2.6)."
• I think this approach is too strict for first-instance proceedings in general; it describes the procedural framework of Art. 13 RPBA for appeals. However, first instance proceedings are of a different, more administrative nature. Having said that, the Board correctly recalls that the time limit of Rule 79(1) EPC should not be meaningless.
• "The case at hand deals with the judicial review of a decision in post-remittal opposition proceedings. The board is convinced that, in exercising its discretion in such post-remittal proceedings, the opposition division generally should have due regard to the framework defined in the first appeal proceedings which resulted in the remittal. This requirement serves to safeguard the legitimate interests of other parties and the public."
• The point of case amendments after remittal is interesting, and does not come up in the case law very often. I don't recall the GL discussing it specifically either. The Board's discussion of the topic is extensive, and I recommend reading it entirely.
• "Although the board agrees that a patent proprietor is generally not barred from submitting requests that are consistent with the principles of res judicata and ratio decidendi, the patent proprietor is not at absolute liberty to file amended claim requests in opposition proceedings subsequent to a remittal without constraint, even though the order of the first appeal proceedings' decision in T 423/18 merely states that the "[T]he case is remitted to the opposition division for further prosecution", i.e. does not specify on which set(s) of claims this further prosecution is to be performed."
• "The board is of the view that further prosecution of a case after remittal must proceed, as a rule, on the basis of the situation prevailing at the conclusion of the first appeal proceedings that gave rise to the remittal (see also T 383/11, Reasons 1.4). This principle should be observed in post-remittal proceedings when assessing the admissibility of a party's submissions, notably where, as in the present case, the appellant-patent proprietor seeks to justify such requests as constituting a reasonable redefinition of fallback positions."
• I think the proposed criterion is "whether these requests were submitted in direct and timely response to a change in the subject of the proceedings after the Board's decision in the first appeal"

EPO 

The link to the decision is provided after the jump.

T 0981/23 - No functional or structural link between the features

Key points

• The question is whether, under Art. 123(2), a feature can be taken from a paragraph of the description without certain other features that are also taught in that paragraph.
• The Board: "There is no functional or structural link between the internal operations of power storage, power supply and activation of the controller and the fact that the remote control is suitable for controlling a "toilet device". The internal power management is not inextricably linked to the control functions assigned to the operating buttons either. Hence, the interaction with a toilet device and its functions can be omitted without infringing the requirement of Article 123(2) EPC."
• For a second amended feature: "Claim 1 specifies ... . The basis for these features is found in Figure 4 and the corresponding description on page 14, lines 4 to 7 of the application as filed. The respondent [opponent] submitted that claim 1 contained an unallowable intermediate generalisation because it did not specify the [a feature]  disclosed on page 14, lines 9 to 16, in .... In the Board's view, these additional features need not be explicitly specified. First, it is well known that a rectifier usually outputs currents flowing in only one direction ... . The inherent smoothing function of electric storage elements is also well known and thus implicit. Second, the generic term "rectifier" is not limited to a diode bridge ... "
• "This implies that the disclosed distribution of the functions of current inversion and smoothing between the rectifier and the electric storage element is not inextricably linked to the specification of a rectifier, electric storage element and voltage detector as disclosed in Figure 4 and incorporated in claim 1. Either way, omitting the more specific features from page 14, lines 9 to 17 does not extend beyond the content of the application as filed."

EPO 

The link to the decision is provided after the jump.