T 0955/24 - On offering a witness

Key points

• The opponent cites D3, a paper of a conference presentation, as prior art. The presentation was given by an independent third party. As supporting evidence, the opponent submits "D4 | Facebook excerpts from the FuturePack Conference, September 10, 2019 " and D12, a declaration of the speaker, Ms. Nilsen.
• The proprietor contests that the presentation was sufficiently proven, also in appeal. The proprietor is the appellant. 
• The Board, in translation: "The conference at which the lecture containing the disputed content was given was public. It was not organized by the opponents, and neither the speaker, Ms. Nilsen, nor Mr. Myhre, who also attended the lecture, were employees of the opponents. Thus, the situation differs from a case of manifest prior use, where all evidence is exclusively in the hands of the opponents. "
•  The Board, in translation: " In this context, it must be taken into account that the appellant [proprietor] expressly objected to the examination of the witnesses offered by Opponent 1 during the opposition proceedings [ ausdrücklich gegen eine Vernehmung der seitens der Einsprechenden 1 angebotenen Zeugen aussprach] and did not request such an examination in the appeal proceedings either. For the opposition proceedings, the appellant justified this by stating that it was not her task to fill gaps in the opponent's evidence. However, this argument misses the point. Given the circumstances of the present case, the patent proprietor could have attempted to refute the evidence presented by the opponent, for example, by examining witnesses not attributable to the opponent, such as Ms. Nilsen and Mr. Myhre. However, she did not avail herself of this opportunity. "
• "Furthermore, as already explained above, with regard to statement D12 [of Ms Nilsen], witness testimony was offered by Opponent 1, complementing D3, D4 and D12. This witness testimony was rejected by the appellant and not taken up by the Opposition Division. This request was conditionally maintained by the opponents in the appeal proceedings, but was not requested by the appellant in the appeal proceedings either. The Board considered the examination of these witnesses unnecessary due to the probative value of the written documents. "
• As a comment, I'm not entirely sure what it means to offer a witness, at least in terms of EPO proceedings. Perhaps it means a conditional request to hear a witness, with the condition being that the other party disputes the evidence and/or that the OD cannot accept the asserted facts as sufficiently proven based on the other (documentary) evidence. Any comments are welcome.

EPO 

The link to the decision is provided after the jump.

T 0977/25 - Input for G1/26

Key points

• Some of the questions pending in case G 1/26 have been essentially answered already by G 1/25. However, Question 3 in that case touches on an ongoing debate in the case law.
• "the Board considers that the term "it" in claim 12 is indeed ambiguous. Grammatically, it may refer either to the heater assembly or to the heater element. Furthermore, both possibilities are compatible with the technical context provided by the description and convey a clear technical teaching to the skilled person."
• Thus, claim 12 covers two technically reasonable scenarios: Either the heater assembly (scenario A) or merely the heater element (scenario B) extends across the opening of the housing.
• 28. Article 123(2) EPC requires a comparison between the "subject-matter" of the amended patent and the "content" of the application as filed. Evidently, therefore, whether amended claim 12 contains added subject-matter can only be decided once claim 12 has been interpreted.
• This seems entirely correct.
• 29. The original application directly and unambiguously discloses scenario B (see page 20, lines 3 to 7). Regarding scenario A, the application discloses the option that the heater assembly is fixed to the housing (page 22, line 22), but neither explicitly nor implicitly that the heater assembly extends across the opening.
• 30. The Board is aware that there are conflicting approaches as to how claim interpretation and the assessment of Article 123(2) EPC interact in the case of ambiguous claims. The Board is also aware of decision T 873/24, which referred pertinent questions to the Enlarged Board of Appeal. Neither party has, however, requested that the present appeal proceedings be stayed pending the decision in case G 1/26.
• 31. One of the mentioned approaches requires that all technically reasonable "interpretations" must comply with Article 123(2) EPC (see e.g. T 1791/16, Catch­word). Another appears to require that an ambiguity first be resolved by interpretation before compliance with Article 123(2) EPC can be assessed (see T 367/20, Reasons 1.3.9; T 847/24, Reasons 3.5). This Board does not agree with the latter approach. Specifically, it disagrees with its apparent implication that, in case of ambiguities, a claim must be interpreted in such a way that no violation of Article 123(2) EPC arises.[*] In other words, compliance with Article 123(2) EPC cannot be a precondition for the correct claim interpretation, but must instead be assessed after that interpretation has been established (see also T 2488/22, Reasons 21 and 22). Otherwise, this would contradict the underlying rationale of Article 123(2) EPC and the "gold standard" (G 2/10, OJ 2012, 376).
• *:  The implication is not apparent to me. 
• 32. At the same time, the Board does not share the view that leaving an ambiguity in a claim unresolved is tantamount to leaving its interpretation open (as was apparently assumed in the case considered in T 367/20, Reasons 1.3.9). Rather, an unresolved ambiguity may simply result in a broader interpretation.
• 33. In the present case, the Board interprets claim 12 as encompassing a situation in which either the heater assembly or the heater element extends across the opening of the housing, i.e. as equivalent to a claim which expressly states, in the relevant part, "fixing a heater assembly (30) comprising at least one heater element (36) to the open end of the housing so that [the heater assembly or the heater element] extends across the opening of the housing (24)".
• 34. Since this interpretation covers a scenario [*] which is not directly and unambiguously derivable from the application as filed, the Board judges that claim 12 infringes Article 123(2) EPC.
• *: Every claim includes embodiments that are more specific than what is mentioned in the application as filed, so this is correct. Suppose a claim recites 'a metal coating'; the application as filed mentions 'a metal coating' in the description; it is inconclusive to observe that the claim covers embodiments wherein the coating is gold or platinum. 

EPO 

The link to the decision is provided after the jump.

T 0200/25 - Various aspects of admissibility

Key points

• The OD revoked the patent. The proprietor appeals.
• The proprietor submits a test report D22 with the SoG. D22 is filed to support its earlier test report D21, which the proprietor had filed in the procedure before the OD.
• The Board, in translation: "D21 was filed in due time, albeit on the last day of the time limit set by the Opposition Division in the summons to oral proceedings for the filing of written submissions and/or documents (see EPO Form 2310Z of 29 January 2024) [*]. In light of this, it is understandable that the Opposition Division first formulated its criticism of D21 in the contested decision. Therefore, the filing of D22 with the statement of grounds of appeal constitutes a direct response to the contested decision."
• *: Compare T 0712/24.
• D22 is admitted.
• The opponent/respondent replied with a test report D23. "Although D23 was not filed together with Respondent 2's reply to the appeal, it was filed shortly thereafter (see Sections VII and VIII: 7 August 2025 vs. 10 September 2025). The Board therefore considers D23 to be an immediate response to the filing of D22."
• D23 is admitted.
• The opponent submitted D24 (standard DIN EN 1943:2002) after the Board issued its preliminary opinion.
• "Since D24 is expressly mentioned in both the patent in suit and granted claim 15, the Board further considered that the content of D24 – despite its filing at a very late stage of the proceedings – must have been known to the appellant. Its admission could therefore not have surprised her. In light of these exceptional circumstances, the Board did not consider it justified to disregard D24 under Article 13(2) of the Rules of Procedure of the Boards of Appeal."
• The opponent also filed D25, at the same time as D24, i.e., after the preliminary opinion.
• "D25 is a book excerpt on photoinitiators for acrylates"
• "in the Board's view, evidence relating to general technical knowledge is subject to the same provisions that apply to the admissibility of other evidence. The question, which was controversially discussed between the parties during the oral proceedings before the Board, as to whether D25 actually demonstrates general technical knowledge, is therefore not relevant to the decision on its admissibility and can remain open. "
• D25 is not admitted.
• The Main request is not novel over D1.
• AR-2 is held to be novel and inventive.

Insufficiency

• There was an objection of insufficient disclosure regarding AR-2. The Board must decide whether the objection is admissible.
• "Although the ground for opposition under Article 100(b) EPC had not been raised in the respondents' notices of opposition, the parties agreed that objections under Article 100(b) EPC against the present auxiliary request 2 had already been raised several times by both respondents in the opposition proceedings and in the first appeal proceedings [T 1973/19]. The appellant had also expressly addressed these objections (respondent 2's reply to the appeal: section 4.1; respondent 1's brief of 24 March 2026: section I.2; appellant's brief of 29 June 2023, pages 4 and 5, and of 14 December 2023, section 2.b). However, since the Opposition Division had concluded that auxiliary request 2 (then auxiliary request 3) did not involve an inventive step, it did not address the issue of sufficient disclosure. Although the admissibility of this ground for opposition was addressed in the preliminary opinion of the Opposition Division of 29 January 2024 (page 10, first paragraph), no formal decision was made on this matter. Therefore, the present appeal proceedings had to first decide on the admissibility of this ground for opposition."
• "Objections under Article 100(b) EPC were already raised in the opposition proceedings. Therefore, this is not a ground for opposition raised for the first time in the appeal proceedings. The Board therefore agrees with Respondent 1 that the strict requirements laid down in G 10/91 for considering a ground for opposition raised for the first time in the appeal proceedings – in particular the requirement of the patent proprietor's consent – ​​are not applicable in the present case "
• " the admission of a ground of opposition that was not already raised in the notice of opposition but was raised during the opposition proceedings is a discretionary decision (see case law, supra, IV.C.4.1 and IV.C.4.5). This decision rests either with the Opposition Division or with the Board itself, within the powers conferred upon it by Article 111(1) EPC (i.e., in the exercise of its functions within the jurisdiction of the Opposition Division). In the present case, the Board considered it appropriate to exercise its power under Article 111(1) EPC and to decide on the admission of the ground of opposition itself, pursuant to Article 100(b) EPC."
• "the Board concluded that the ground for opposition under Article 100(b) EPC is prima facie relevant and could potentially be decisive for the outcome of the case (G 10/91: Section 2 of the Headnotes"
• "the Board is of the opinion that the objection of [insufficient disclosure] was only raised at a later stage of the proceedings by the specific wording of granted claim 15 and by the amendment to the claim made in auxiliary request 2. In particular, the Board cannot see that the belated raising of the ground of opposition under Article 100(b) EPC could be considered an abuse of procedure."
• "the Board has therefore decided to exercise its discretion to admit the ground of opposition raised by the respondents under Article 100(b) EPC into the proceedings."
• The Board remits the case. 
• The Notice of opposition was filed in 2017.

EPO 

The link to the decision is provided after the jump.

T 1239/24 - No need for pre-emptive attacks on carry-over requests

Key points

• The OD rejected the opposition. The opponent appeals.
• "Any consideration of auxiliary requests in the appeal necessarily presupposes that such claims have become the subject of the appeal proceedings in a permissible manner. However, this could not have been the case at the time the grounds of appeal were filed. The auxiliary requests at issue were not part of the decision under appeal. It is not incumbent upon the appellant-opponent to address, in its grounds of appeal, the auxiliary requests submitted in the opposition proceedings, without knowing whether they will be maintained in the appeal proceedings. 
• The patent proprietor responding to the appeal, on the other hand, is expected to set out ("clearly and concisely", see Article 12(3) RPBA) in its response to the appeal the reasons why the subsidiary claims overcome the objections raised in the grounds of appeal against the main request (see Case Law Book of the Boards of Appeal, 11th edition, V.A.4.3.5.b) and, for example, T 1041/21, Reasons 5.1.4; and T 1690/22, Reasons 2.12). 
• It is in response to a well-substantiated submission of auxiliary requests by the respondent that an appellant is obliged to submit a substantiated response with respect to the issue of inventive step."
• This refers to the rejoinder to be filed by the appellant. 

EPO 

The link to the decision is provided after the jump.

T 1199/25 - Inevitable results

Key points

• G 2/88, point 10 (in the context of second non-medical use claims): "in some cases, the information which the written description actually contains, teaching the carrying out of a process for example, also makes available further information which is the inevitable result of carrying out such teaching [see T 12/81]."
• The EBA continued: "In each such case, a line must be drawn between what is in fact made available, and what remains hidden or otherwise has not been made available."
• Turning to the present case: the opponent argued that "The opposition division had erred in treating the PEG molecular weight as "hidden information". The relevant question was not whether D23a identified the PEG molecular weight as an essential parameter, but whether that feature was objectively and necessarily implied by the disclosure. A feature was part of a disclosure if it was the inevitable consequence of what was expressly described, irrespective of whether the skilled person's attention was specifically directed to it."
• The Board: "the presence of a PEG moiety having an average molecular mass of 1-3 kDa is disclosed because such a liposome is the inevitable consequence of carrying out the method disclosed at page 20, lines 14 to page 21, line 16 and ..."
• "The calculation made by the respondents that the liposome produced comprises PEG of average molecular weight of 2 kDa ... was not disputed by the appellant[,] and the board considers that it is correct."
• Evidence of inherent properties does not need to be prior art. 
• This does not mean that D23a gives basis, in the sense of Art. 123(2) EPC, for specifying a PEG moiety having an average molecular mass of 1-3 kDa as a feature (if D23a is a patent application).
• "For these reasons, D23a, and therefore D23, directly and unambiguously discloses a liposome falling within the definition of claim 1, encapsulating RNA encoding an immunogen."
• I explored the topic in my article in epi Information 4/2020. As discussed therein, the phrase "falling within" distinguishes the test for novelty from the test for Art. 123(2); the phrase "directly and unambiguously discloses" expresses the common element of those two tests.

EPO 

The link to the decision is provided after the jump.

T 0733/24 - Killed by own subsequent patent application

Key points

•  This is a case about sufficiency.
• "The claim is directed to a method for the identification of microbial and non-microbial infectious pathogens in whole blood by mass spectrometry. The pathogens are cultured in the whole blood by incubation and afterwards are centrifuged into pellets and subjected to mass spectrometric identification. In order to remove the particles contained in the body fluid, i.e. in the whole blood, the method further includes "additional steps in order to destroy and remove the body fluid particles". These steps are not further defined in the claim.

  8. In order to carry out the claimed method, the skilled person must hence know, inter alia, with which additional steps the recited destruction and removal of the blood particles can be achieved such that an identification of any microbial and non-microbial infectious pathogen possibly present in the whole blood by mass spectrometry can be achieved."

• "[the application] contains a single hypothetical example in which the sample is whole blood infected by microbes (paragraph [63] of the earliest application). There, it is proposed to destroy and remove the blood particles by firstly separating the pathogens together with the blood particles by centrifugation and then dissolving the pellet in distilled water to destroy the blood particles by osmosis while leaving the microbes intact. 

• "However, this method does not work, as evident from document D9, which discusses, in paragraphs [19] to [22], the teaching in the earliest application. 

• "paragraph [22] of D9 [mentions that] "experiments carried out in the applicant's laboratory with this method of adding distilled water did not succeed in providing sufficiently clean centrifuge deposits, even when the washing and centrifuging processes were repeated a few times. Even if the deposits did not retain a slightly reddish color, superimpositions with human protein signals always interfered with the microbial protein signals from these deposits to such an extent that an identification becomes uncertain" (paragraph [22] of D9)."

• "Therefore document D9 is evidence that the single hypothetical example described for the claimed method in paragraph [63] of the earliest application is unsuitable to identify microbes in infected whole blood, let alone any microbial and non-microbial pathogens in a whole blood sample. In view of this and in the absence of any evidence that the skilled person could have remedied this deficiency by common general knowledge, it must be concluded that the skilled person could not carry out the claimed method without undue burden at the effective filing date of the application."

• D9 is a post published patent application. The proprietor of the patent in suit is the same as the applicant of D9. 

EPO 

The link to the decision is provided after the jump.

T 0195/25 - Partial priority and the shield effect of priority (?)

Key points

• The Board, in the headnote: "When a claim of a patent enjoys partial priority for a specific embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority".
• Compare G 3/93: "1. A document published during the priority interval, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed. 2. This also applies if a claim to priority is invalid due to the fact that the priority document and the subsequent European application do not concern the same invention because the European application claims subject-matter not disclosed in the priority document."
• Hence, the headnote in T 195/25 is surprising because it appears to introduce the 'shield theory' of priority, which was rejected in G 3/93 (as I understand that case). 
• See my blog post of 01.09.2017 (link). 
• See also T 2466/13, issued in 2018, wherein, in translation: "The chamber uses [priority] document Prio01 as a starting point to examine the inventive step of subdomain B of claim 1.") (link)
• Turning to the case at hand, D12 is the PhD thesis of one of the inventors and was published during the priority year, 
• The present Board: " The appellant considers the examples in PhD thesis D12, ... an alternative starting point for assessing inventive step. "
• "Since D12 was published after the filing date of D11, D12 has no impact on the priority date of the patent.
• "However, when a claim of a patent enjoys partial priority for an embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as a starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority.
• This is a new statement of the law, I think.
• "3. ... It has not been contested that the priority is at least partially valid (see G 1/15), i.e. as far as the examples of the patent are concerned 
• The examples are the same between the priority document and the application. Implicitly, the examples are also embodiments of the claim under examination.
• Importantly, the cited examples in D12, the PhD thesis, are the same as in the priority document.
• "In the case in hand, the subject-matter of the examples of non-patent document D12 does not belong to the state of the art within the meaning of Article 54(2) EPC since D12 was published after the priority date of the patent (see point 3. above)."
• This statement departs from the established case law.  Under G 1/15, the priority is "entirely" valid for one part of the claim and "entirely" invalid for the other part of the claim, just as when the claim explicitly recites two alternative embodiments, one with priority and one without ( G2/98)
• The Board: "4.3 This finding is in line with the principles of e.g. T 2073/22 (Reasons 9.6.3 and 9.6.4), T 1482/21 (Reasons 2.4.2) and T 211/06 (Reasons 4.1 and 4.2)."
• Let's check the references.
• T 2073/22: ", the board notes that, as pointed out by the respondent, the appellant explicitly stated in its grounds of appeal (page 30, point 10.96) that it "made no inventive step objection to phenols specifically".  ...  " Therefore, D1 is prior art under Article 54(3) EPC for the subject-matter of claim 1 as granted objected to by the appellant. ". The Board did not examine the patentability of the other subject-matter of the claim of its own motion.
• T 1482/21: "in view of the Board's conclusion on the partial validity of priority as set out above and the limitation of the claimed subject-matter in the new auxiliary request to subject-matter for which priority can be validly claimed...  D24/D27 are not prior art for this subject-matter, since they were published after the filing date of P1 and P2."
• T211/06: "the starting points applied to in the decision under appeal for the purposes of Article 56 EPC are based either on internal art or on a practice argued by the examining division to be known to the skilled person, for which there is no evidence on file that it was available to the public before the priority date." "According to the impugned decision another starting point was based on a so called "laboratory practice" or "common industrial practice" ...  "There is however no evidence on file at all that this "laboratory practice" was made available to the public and concerns state of the art under Article 54(2) EPC. This would be using a subjective starting point, which cannot be objectively assessed, since it is not based on reliable technical information based on evidence as required by Article 54(2) EPC. "
• None of the three cited decisions seems to address the point or support the present Board's position.
• The present Board: "By contrast, T 307/22 (Reasons 3.4.1, 3.4.4 and 3.5.4 to 3.5.5) concerned an embodiment disclosed both in D7, a document published in the priority year, and in priority document D8. It held that the embodiment of D7 could be used as the starting point for assessing inventive step. This is not indicated in the circumstances of the present case. For the reasons given above, only the subject-matter of the prior art within the meaning of Article 54(2) EPC can be used for an inventive-step attack."
• See my post on T 307/22.
• The current Board's remark that "This is not indicated in the circumstances of the present case" seemingly means that T 307/22 is wrong because the current Board analyses the effect of priority differently. 
• The present decision does not refer to G 3/93.

EPO 

The link to the decision is provided after the jump.