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.
• 
  
• EPO

The link to the decision is provided after the jump.

T 1898/23 - (II) Novelty based on patient group

Key points

• At issue is whether a claim is a valid second medical use claim.
• The Board: "4.1 As to whether the claimed use qualifies as a specific use in a method referred to in Article 53(c) EPC which is not comprised in the state of the art, the parties agree that the following three criteria mentioned in the decision T 1491/14 have to be fulfilled for the treatment of the same disease with the same substance in a specific group of patients to be considered a new therapeutic use: (i) the patient group is not disclosed in the relevant prior art; (ii) the patients belonging to the group can be distinguished from those of the prior art by their physiological and pathological status; (iii) there is a functional relationship between the characterising physiological or pathological status and the therapeutic treatment, and thus the selection of the patients is not arbitrary. [formatting added].
• "The Board agrees that a patient group fulfilling these three criteria would render the claimed subject-matter novel."
• As a comment, criterion (i) seems strange: a second medical use claim is no longer a valid second medical use claim if the feature is disclosed in the prior art? Is claim interpretation not a preliminary step before the comparison with the prior art?
• As a further comment, criterion (iii) seems more about inventive step? See T 1688/20 for selection inventions in general ("the Board concurs with the most recent decisions of the Boards of Appeal, including T 261/15, point 2.2.2 of the reasons, according to which this criterion of purposive selection is relevant for the question of inventive step rather than for novelty.")

EPO 

The link to the decision is provided after the jump.

T 1898/23 - Argon-containing plasma as medical composition

Key points

• Claim 1 of the main request reads as follows. "Cold atmospheric plasma for use in treating therapy-refractory actinic keratosis in a patient in need thereof, wherein the cold atmospheric plasma is an argon-containing plasma."
• Is this a valid second medical use claim?
• "it has to be considered: (a) whether claim 1 concerns a substance or composition within the meaning of Articles 54(4) and (5) EPC"
• The Board: "for the sake of argument and in the respondent's [proprietor's] favour, it is ... assumed that the alleged therapeutic effect is indeed caused by the parts of the claimed plasma that qualify as a substance or composition within the meaning of Article 54(5) EPC."
• The Board considers the claim to be obvious, even when assuming that is a valid second medical use claim.
• The Board, obiter, sets out the legal framework: - I omit the case law references from the quote:  "While this "subgroup of the larger group of 'products'" ... excludes medical devices ..., it does not seem justified to say that any product which does not qualify as a medical device because of e.g. a lack of shape automatically qualifies as a substance or composition within the meaning of Article 54(4) and (5) EPC ... . If that were so, any shapeless physical entity (e.g. electromagnetic radiation or ultrasound waves) could qualify as a substance or composition, regardless of whether it is a chemical entity. Having said this, the current Board agrees that whether something qualifies as a substance or composition within the meaning of Articles 54(4) and (5) EPC should be decided, in the first place, on the basis of what is claimed as such and not on the basis of its mode of action ... .
• The Board indicates it does not agree with T 1252/20.
• "In order to benefit from the notional novelty afforded by Article 54 (4) and (5) EPC, it must be a substance or composition - as opposed to other subject-matter not qualifying as such - which is used in a method referred to in Article 53(c) EPC,  ... . In the case at hand, where the method relates a treatment by therapy, it must thus be assessed whether the therapeutic effect can be ascribed to the chemical entities in the plasma or (only) to the other entities, such as the photons"

EPO 

The link to the decision is provided after the jump.

T 0077/23 - Absent proprietor, new attacks oral proceedings

Key points

• The Board in translation: "The Board is aware that the argument of lack of novelty of claim 1 of auxiliary request 8 in relation to document E1 was first raised during the oral proceedings before the Board. However, for the reasons explained below, the Board cannot conclude that this violated the right to be heard (Article 113(1) EPC) of the respondent [proprietor], who was absent from the oral proceedings. 
• Opinion G 4/92: "A decision [in inter partes proceedings] against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings." 
• See also point 1 of the reasons: ".... it is clear that the referred question relates to inter partes proceedings. "
• In G4/92, the divergence in the caselaw was that T 574/89 had held "that by choosing to stay away from oral proceedings the parties "had forfeited their right to present comments", and hence that "any arguments or evidence submitted by the parties present at oral proceedings" could "be used as a basis for the decision without it being relevant whether such evidence or arguments were already known to the absent parties from the written submissions or whether they could expect such evidence or arguments to be presented". On the other hand, "T 484/90 ... held that "a decision against a party duly summoned to but failing to appear at oral proceedings which is based on new evidence, such as a new document, on which that party has not had the opportunity to comment, may not be pronounced at the close of those proceedings without infringing that party's right to be heard, unless the absent party indicates that it is forfeiting this right"."
• Puzzling enough, the current Board does not cite or comment on G 4/92 and does not explain how the current decision complies with G 4/92 (viz, that the novelty attack does not involve new facts forward for the first time during the oral proceedings).
• As also noted by Daniel X Thomas on his weblog. 
• Possibly, G4/92 would be decided differently nowadays. However, as of yet, it is valid case law.

EPO 

The link to the decision is provided after the jump.

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.