J 0006/23 - Non-existent proprietor

Key points

• In J 12/19,  the patentee went bankrupt during the first instance opposition proceedings and the proceedings were interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees, arguing that the insolvency proceedings were terminated by the patentee's dissolution, which is now non-existent. The opponent submits accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal."
• That decision of the Legal Board of Appeal was issued on 28.04.2021. 
• The Legal Division took a new decision almost two years later, issued on 01.02.2023. That decision was: "rejecting the opponent's request that opposition proceedings be resumed pursuant to Rule 142 EPC with the opponent as the sole party. " The LD intended to resume the procedure with the proprietor as a party. 
• The opponent appealed. The Legal Board issued the present decision on 05.06.2023.
• Meanwhile, the patent has lapsed in all states. 
• On the admissibility of the appeal: "the refusal in the decision under appeal to intend resumption with the opponent alone has no immediate legal consequence either. However, it creates the threat that the LD will proceed to set a date for resumption with the proprietor as well. The opponent strongly disagreeing with the latter way to proceed, it would be required to appeal such a future decision. Due to this threat, a legitimate interest in the present appeal cannot be denied."
• I don't know whether this requirement for a legitimate interest is additional to Article 106 and 107 EPC, or whether it is a way to test "adversely affected" (or "decision")
• At issue is the (releatively new) second sentence of Rule 142(2) EPC: "If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion."
• The LBA clarifies that "intends" should be read as: the EPO may set a date on which the proceedings are resumed.
•  " on the basis of the capacities that Transito NV has under Belgian law, it must be concluded that it fails both prongs of the "legal personality" test of G 3/99."
• G 3/99 r.9: "The legal personality of a named entity under the EPC is decided on the same basis as before national courts, namely the capacity to sue or to be sued in its own name and on its own account." (hello DABUS, by the way, see here)
• "It follows that Transito NV no longer exist under Belgian law."
• "It is a generally recognized principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings. Transito N.V. is thus not able to take part in resumed opposition proceedings. 
• "The only way to reconcile the spirit of Rule 142(2), 2nd sentence, EPC, which aims to avoid endless interruptions of proceedings in cases where no person authorized to represent the affected party can be identified, with the aforementioned principle that legal entities which do not exist cannot take part in proceedings, appears to be a resumption of the proceedings without the affected party. 
• "The Legal Board concluded above that, if the present opposition proceedings are to be continued, then they must be continued with the opponent only. The Board must therefore set aside the LD's decision expressing the view that the proceedings are to be continued with both the opponent and the registered patent proprietor Transito NV that has ceased to exist.

  It will be for the LD to exercise its discretion pursuant to Rule 142(2), second sentence, EPC in respect of a possible resumption of the opposition proceedings. If the LD exercises its discretion by resuming the proceedings, then the proceedings will take place with the opponent only until the opposition division in turn subsequently exercises its discretion pursuant to Rule 84(1) EPC. If the opposition division does so by maintaining the continuation of those proceedings, then the opposition division will be bound by the LD's decision to continue them with the opponent only."

• I don't think the LD can arbitrarily keep the procedure interrupted, but we may have to see if the opponent has to appeal on that point as well. 

• I assume the opponent has requested that the proceedings be continued under Rule 84. We will have to see if the OD accedes to this request, or if the opponent will have to file an appeal on that point as well. 

EPO 

The link to the decision is provided after the jump.

T 0592/24 - Effect of claimed embodiment over other embodiment

Key points

• " In any event, the Board holds that reliance on post-published evidence to demonstrate an improved technical effect of the claimed subject-matter over a further embodiment originally claimed does not normally change the nature of the invention, as long as the technical effect is derivable from the application as filed and the improvement is not in contradiction with the original disclosure."
• compare: T655/24: "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 (see G 2/21, Headnote, Reasons 67 and 72)."
• compare T 314/20: 

6.24 Summarising the above, the Board concludes that the technical teaching of the claimed invention that the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed, encompasses the following.

(a) Combination 97 (i.e. the currently claimed combinations) gives rise, inter alia, to an increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases.

(b) Combinations 165 to 168 (i.e. combinations of empagliflozin with sitagliptin, vildagliptin, alogliptin and saxagliptin, respectively), having the same level of preference, achieve the same increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases as combination 97.

6.25 By contrast, the purported technical effect relied upon by the respondent for inventive step is an increase in plasma levels of active GLP-1 which is stronger and more prolonged in time [in Combination 97 ] than the one achieved by combinations 165 and 166, i.e. combinations of empagliflozin with sitagliptin and vildagliptin, respectively (see point 6.9 above).

6.26 It follows from the analysis made in points 6.20 to 6.24 above that the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would not derive the increase in plasma levels of active GLP-1 relied on by the respondent (see point 6.25 above) as being encompassed by the technical teaching of the claimed invention and embodied by the same originally disclosed invention.

EPO 

The link to the decision is provided after the jump.

T 1176/24 - Rule 137(5)

Key points

• Cases about Rule 137(5) were more frequent in the past (see my article in epi Information 2018/2).
• The EPO was ISA and requested an additional search fee for claim 93. The applicant did not pay. Operative claim 1 is based on the features of original claim 93.
• "The Examination Division [sic!] concluded not to admit the Main Request under Rule 137(5) EPC since the amendments to the claims of the Main Request were based on original claim 93 that was found to be non-unitary during the international search phase."
• The Board: "the Examination Division erred in its application of Rule 137(5) EPC by merely finding that original claim 93 did not meet the requirements of unity when assessed a posteriori. This criterion is irrelevant in the present context when applying Rule 137(5) EPC."
• The Board's analysis is correct; the correct legal basis in G 2/92 (for Euro-direct applications at least). See GL H-II 6.2 (2025): "Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the [additional search fee]."
• The Board does not explicitly state the legal basis for the current Euro-PCT application (I would say: G 2/92 mutatis mutandis), but analyses that claim 93 had unity of invention with a searched claim.
• "The Board is therefore convinced that claim 1 of the Main Request merely constitutes a restriction to a particular embodiment of the subject matter as claimed in the original claim 90 (with reference to original claim 1) and can be subordinated to the original general inventive idea."
• "The decision under appeal is therefore to be set aside."
• "The Board stresses that a supplementary search concerning the aspects arising from the original claim 93, now reflected in claim 1 of the Main Request, would be in accordance with due process should the Examining Division deem it necessary. Moreover, such supplementary search appears to be highly appropriate in the light of the Examining Division's findings set out in point 12.2 of the grounds for the decision under appeal."

EPO 

The link to the decision is provided after the jump.

T 0011/25 - Fresh ground in appeal

Key points

• With the statement of grounds of appeal, the opponent raised for the first time an objection under Article 100(c) EPC. 
• In the appellant's [opponent]s' view, the objection should be admitted as it was closely linked to the objection of sufficiency of disclosure discussed before the opposition division (see point 1.3.1 above). Originally the features were disclosed in the order Fl-F2-F4-F5-F3 but in granted claim 1 the order was Fl to F5. This resulted in an aliud that did not find basis in the original application.
• The Board: 2.2 Even assuming that the objection of added subject-matter is linked, in substance, to the objection of sufficiency of disclosure, still the ground for opposition under Article 100(c) EPC was not submitted and substantiated in opposition proceedings, as acknowledged by the appellant (opponent). It thus constitutes a fresh ground for opposition. As the respondent (patent proprietor) explicitly did not approve the introduction of the new ground for opposition, the objection under Article 100(c) EPC can not be considered in appeal proceedings pursuant to G10/91.
• The Board, under sufficiency: "As the claim does not specify when steps F4 and F5 are executed (before or after the automatic uncoupling), the opposition division correctly stated (decision, 2.1.5) that this objection is rather a clarity objection, and clarity is not a ground for opposition."
• Suppose the proprietor argues, for the first time in appeal,  that in claim 1 the order of the steps was undefined, and because of that, the claim met Art. 83 (and suppose the argument is admitted). Suppose the opponent wishes to point out that the application as filed only provides a basis for the steps in a specific order, and that the opponent was initially unaware that the pre-grant amendment changing the order of the steps changed the meaning of the claim. Can the objection under Art. 123(2) be admitted (independent of the consent of the patentee)?

EPO 

The link to the decision is provided after the jump.

T 0644/24 - Amendments and new grounds of opposition

Key points

• The Board, in the headnote, in translation: "If the grounds for opposition under Article 100(b) EPC and Article 100(c) EPC were not raised in the opposition proceedings and the patent proprietor does not consent to their examination in the appeal proceedings, the patent may not be examined in its entirety for insufficient disclosure and added subject-matter in the appeal proceedings if the patent is amended in the opposition or appeal proceedings, but only insofar as the amendment brings about the insufficient disclosure or added subject-matter".
• This concerns the details of G10/91 hn. 3 about new grounds of opposition in appeal. 
• As far as Art. 100(c) is concerned, the current headnote is the same as the holding of T 693/98.
• Concerning Art. 110(b), the point is obiter, it seems. Still, the point seems valid, and the Board's reasoning is interesting (very German in the degree of detail, but good).

EPO 

The link to the decision is provided after the jump.

T 0867/24 - A very lengthy reply

Key points

• The Board: "The respondent's [opponent's] reply extends over 143 pages, is overly repetitive, poorly structured, and burdened with irrelevant or tangential arguments."
• "The respondent's submissions restate at length the EPC legal standards and basic case law principles, in several instances without a clear link to the actual discussion of the case at hand, and accumulate numerous citations of Board of Appeal decisions in an unspecific way " 
• "Objections of lack of novelty and inventive step in view of D28, D19 and D21 are unnecessarily duplicated by the citation of family members (respectively D30/D2, D1 and D5) with the same relevant content"
• "Regarding inventive step, the respondent's plethoric case includes objections combining D13 (or D12a, D12b, D12c) with any of D46, D28, D2, D5, D10, D16, D23, D39a-e, D40a-f, D17, D32, D19, D9, D41, D37, D34, D7 and D35 (see pages 72-78 of the reply). Page 79 adds or repeats objections combining D12a, D12b, D12c, D13 or D44a/D44b with D19/D1, D21/D5, D10, D16 and D22. Further objections are raised: - starting from D34, D35 or D46 in combination with D7, D8, D36 and D41, or - starting from D46, D35, D44a/D44b, D28, D19, D21, D10, D31 in combination with any of ... 
• "Article 12(5) RPBA provides that the Board has discretion not to admit any part of a submission by a party which does not meet the requirements of Article 12(3) RPBA.
• ... in the case where the submission lacks clarity and conciseness to the point that the Board and the other party or parties cannot assess its merits without undue burden, the discretionary power applies generally to all parts of the submission affected by the lack of clarity and conciseness. It is in such circumstances not for the Board or for the opposing party or parties to identify, within the host of objections raised with varying levels of substantiation, which objections are the most compelling and should be given emphasis."

•   For the above reasons, the Board did not admit the objections of lack of inventive step starting from any documents other than D13 (and D12a/D12b/D12c), or involving combinations with documents other than D22, D8, D19/D1, D21/D5 or D10."

• Did the opponent/respondent lose the appeal?  No.

• "The subject-matter of the main request does not involve an inventive step."

• The appeal of the proprietor is dismissed. 

   

• The point about the admissibility of the other attacks is, hence, obiter.  

•  T 0867/24 - A very lengthy reply 

EPO 

The link to the decision is provided after the jump.

R 0010/24 - Review of decision to hold inadmissible

Key points

• The EBA took some time to draft its decision (7 months), but the result does not disappoint.
• The petitioner complains of the TBA's decision to hold a submission inadmissible.
• The EBA, in the translated headnote: "Because of the severity of the interference caused by the non-admission of amended submissions under the provisions of the RPBA, i.e. Articles 12 and 13 thereof, the interpretation and application of those provisions, which qualify the right to be heard, are subject to substantive review and not merely to review for arbitrariness. In this respect, the right to be heard is infringed, for example, also where such provisions are applied in a manifestly incorrect manner. "
• On the admissibility:  "According to the petitioner, an objection concerning the first ground for review — procedural defects under ... Article 113(1) EPC... — could not have been raised during the oral proceedings before the Board of Appeal, since, following the rejection of the auxiliary request, the Board had been bound by that decision. In this respect, the petitioner relies on R 10/08 and R 3/10."
• "It was undisputed that a formal decision had been announced on the main request, which had prevented the Technical Board of Appeal from reopening the debate on that request when [if?] the objection [under Rule 106] was raised ( "als der Einwand erhoben worden sei")."
• According to the minutes, no objection under Rule 106 was raised. 
• "In R 3/10, at point 1.4.1, it was held as follows: since a Board of Appeal is bound by a substantive “decision” once it has been issued and can no longer rectify it subsequently, and since the purpose of the obligation to raise an objection under Rule 106 EPC is to give the Boards of Appeal the opportunity to remedy the defect before a decision is issued, an objection under the first alternative of Rule 106 EPC can no longer be validly raised after the decision has been issued (R 10/08 of 13 March 2009, point 3).
• "To the extent that the petitioner relies on decision R 3/10 as establishing an exception to the obligation to raise an objection under Rule 106 EPC, the EBA is inclined, in relation to the present case, not to dismiss the petition for review as manifestly inadmissible solely on account of the failure to raise such an objection." 
• The EBA appears to see a difference with point I.2.2 of  R 5/19.
• The EBA examines the case file in some detail and concludes that the opponent had raised the relevant objection in the appeal. Moreover, the objection was included in the OD's decision. Hence, the proprietor should have filed the responsive auxiliary request before the Board gave their preliminary opinion. 

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EPO R 10/24