T 0110/25 - (II) Deleting figure label violates Art. 123(2)

Key points

• The proprietor withdrew the main request after the Board had announced its conclusion that the amendment of Figure 6 (by deleting the label of the vertical axis) in the grant procedure violated Article 123(2). Nevertheless, the Board's reasons can be inferred from the decision, to a degree. 
• The Board, in translation: "39. The question of whether the deletion of the ordinate label in Figure 6 prior to the grant of the patent infringes Article 123(2) or Article 100(c) EPC or is permissible as a correction within the meaning of Rule 139 EPC and therefore does not lead to an inadmissible extension was the subject of the contested decision (point 11, pages 4 to 7) and was also raised again in the appeal."
• " In its appeal, the appellant [opponent] argued that the removal of the original ordinate label in Figure 6 violated the prohibition of inadmissible extension (Article 123(2) in conjunction with Article 100(c) EPC). Figure 6 was essential for assessing inventive step. The deletion did not serve as a correction but enabled alternative technical statements, which constituted an inadmissible technical extension and conferred an unfair advantage on the patent proprietor. The deletion eliminated the original reference of the diagram to the absolute histamine degradation capacity, but no correct indication replaced the deleted ordinate label. This enabled alternative statements in the eyes of a person skilled in the art"
• " In its appeal, the appellant argued that the removal of the original ordinate label in Figure 6 violated the prohibition of inadmissible extension (Article 123(2) in conjunction with Article 100(c) EPC). Figure 6 was essential for assessing inventive step. The deletion did not serve as a correction but enabled alternative technical statements, which constituted an inadmissible technical extension and conferred an unfair advantage on the patent proprietor. The deletion eliminated the original reference of the diagram to the absolute histamine degradation capacity, but no correct indication replaced the deleted ordinate label. This enabled alternative statements in the eyes of a person skilled in the art"
• The auxiliary request seeking to address the issue is not admitted, as it was filed late.
• "The [proprietor's] assertion that it has never been explained what new technical teaching was introduced by deleting the ordinate label in the original Figure 6 is also incorrect. As already stated several times, the appellant argued in its appeal that deleting the ordinate label in the original Figure 6 eliminated, rather than correcting, the reference to histamine degradation capacity. The bar chart without ordinate labels allows for several technical interpretations that differ from the original information because the figure descriptions on pages 10 and 19/20 are contradictory both internally and in relation to Figure 6. Specifically, the appellant argued that, contrary to their previous meaning, the groups "HIT" and "no symptoms" could be related to sensitivity, and the group "symptoms" to specificity. The respondent readily admitted that these alternative technical statements, arising from the interpretation of Figure 6, were relevant to the inventive step. However, the respondent denied these alternative interpretations of both the original and granted Figure 6, and thus also the existence of a "new technical teaching." It insisted that the original Figure 6, viewed in conjunction with the original application as a whole, allowed for only one interpretation. 
• Not mentioned, but likely highly relevant is G 2/21.

EPO 

The link to the decision is provided after the jump.

T 0384/25 - No need to adapt the description (this time)

Key points

• Board 3.3.09 on when to adapt the description, after G 1/25 (which was referred by Board 3.3.02).
• The Board finds that AR-5 is allowable. "Auxiliary request 5 only includes some of the product claims disclosed in the set of the granted claims." ... "the patent as granted includes claims directed to medical uses. "
• "paragraph [0001] sets out that the invention relates to whey protein micelles for use in the treatment or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient. "
• "The claims of auxiliary request 5 are directed to a product, which is defined by specified amounts of whey protein micelles, proteins including whey protein isolate or hydrolysed milk protein, lipids, carbohydrates and fibres."
• "A liquid meal replacement comprising whey protein micelles further comprising whey protein isolates, hydrolyzed milk proteins or any combination thereof, wherein the whey protein micelles are present in said meal replacement in an amount of at least 20 wt%. [sic] of total dry weight, comprising 25-50 wt% proteins, 10-15 wt% lipids, 25-50 wt% carbohydrates and 5-10 wt% fibers of total dry weight."
• "3.9 In the current case, the board could not identify that maintaining paragraphs [0001], [0012], [0013], [0022], [0023] and [0032] of the patent as granted unamended causes any inconsistency in the sense described above [i.e., G1/25] between the amended claims and the description. "
• "The claims of auxiliary request 5 leave no doubt, let alone a real doubt, as to what the claims mean and what falls within the claimed subject-matter. 
• "While the unamended description encompasses technical teachings and embodiments regarding medical uses, this as such is not to be considered an inconsistency within the meaning of G 1/25 and does not have to be removed from the description."
• The Board does not quote the description paragraphs concerned. I quote them below.  It seems that claim 1 of AR-5 is one of the granted independent claims, without further amendments. 
• [0001] The present invention relates to whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient. A further aspect of the invention is a meal replacement comprising whey protein micelles.
• [0012] Accordingly, the present invention provides in a first aspect whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient in need thereof, wherein the treatment or prevention does not include an additional exercise regimen, wherein the condition is muscle atrophy or sarcopenia, wherein the whey protein micelles are administered to the patient in combination with a meal, wherein the meal comprises whey protein isolates, hydrolysed milk proteins or any combination thereof; and wherein the whey protein micelles are administered to the patient in a daily dose of at least 20 g dry weight.
• [0013] That treatment or prevention does not require an additional exercise regimen to be effective. Hence, the treatment or prevention does not include an additional exercise regimen.
• [0022] The present invention pertains to whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient, wherein the condition is linked to a loss of muscle mass and/or strength. The hyper-aminoacidemia for a prolonged postprandial period of time provided by the inventive use of the whey protein micelles is most favourable for maximally stimulating muscle protein synthesis and therefore maintaining or even enhancing muscle mass.
• [0023] According to the present invention, the condition is muscle atrophy or sarcopenia. Both medical conditions are characterized by a loss of muscle mass and strength. The present invention is best adapted to providing a nutritional solution to patients suffering from either of those conditions, to reduce or stop loss of muscle mass and/or ultimately to build up again muscle mass and strength.
  
• [0032] According to the invention, the whey protein micelles for use according to the invention are administered to the patient in combination with a meal. Most meals comprise proteins from a milk, plant and/or animal source and hence upon consumption lead to a postprandial aminoacidemia increase, i.e. an elevated concentration of amino acids in the plasma of the consumer. It is now an advantage, to combine the administration of whey protein micelles in combination with such a meal. Thereby, the postprandial plasma amino acid peak resulting from the proteins present in the meal adds up to the postprandial amino acid peak resulting from the whey protein micelles which are delayed by ca. 30 min in respect to the first amino acid peak. Thereby, the overall resulting hyper-aminoacidemia is extended and prolonged in time. This in return is most favourable for maximally stimulating muscle protein synthesis, reducing muscle protein breakdown and therefore maintaining or even enhancing muscle mass.
• 
  

The link to the decision is provided after the jump.

T 0110/25 - (I) SME status

Key points

•  The Board, in translation: "the Board finds that, with regard to the basis for determining whether an undertaking is a micro, small or medium-sized enterprise within the meaning of Rule 7a(2)(a) and (b) EPC, which may file an appeal by paying the reduced appeal fee [under Article 2(1), point 11 of the Rules on Fees], an unintended gap exists following the amendments to the Implementing Regulations by decision of the Administrative Council CA/D 16/23 of 14 December 2023 (OJ EPO 2024, A3). In the Board's view, this gap should be closed in accordance with the repealed Rule 6(5) EPC, i.e., by the integral application of Recommendation 2003/361/EC."
• "SME status for a current financial year is derived from the last approved annual accounts for the previous year. Article 2 of the Annex to Recommendation 2003/361/EC provides no basis for a change in SME status during a financial year or for a retrospective loss of SME status."
• Rule 7a(6), which provides that "The eligibility criteria laid down in paragraphs 1 to 3 shall be fulfilled on the date of the payment of the fee concerned," must probably be interpreted accordingly. 
• The Board notes " an error in the German version of Article 4(2) of the Annex to Recommendation 2003/361/EC, which refers only to "the headcount or financial ceilings stated in Article 2". However, the English and French versions, which refer to "the headcount or financial ceilings stated in Article 2" and "des seuils de l'effectif ou des seuils financiers énoncés à l'article 2" respectively, make it unequivocally clear that all the financial ceilings listed in Article 2(1) of the Annex to Recommendation 2003/361/EC must be exceeded before SME status is lost. This was not the case for the applicant in the 2024 financial year.
• "Apart from that, a company only loses its SME status if it exceeds the employee threshold and/or both financial thresholds in two consecutive financial years (Article 4(2) of the Annex to Recommendation 2003/361/EC). "
• "The category of micro, small and medium-sized enterprises (SMEs) comprises undertakings that employ fewer than 250 persons and either have an annual turnover not exceeding EUR 50 million or whose annual balance sheet total does not exceed EUR 43 million."

EPO 

The link to the decision is provided after the jump.

T 1089/24 - Oral proceedings and remittal

Key points

• In reply to the written opinion of the Board, the appellant in this opposition case wrote, inter alia, that "Oral proceedings were requested, should the Board not intend to remit the case to the opposition division."
• "Oral proceedings were cancelled and the parties informed accordingly."
• The Board remits the case. 
• "6. Since the appellant's withdrawal of the request for oral proceedings [*] was made within one month of notification of the communication issued by the Board in preparation for the oral proceedings, both conditions of Rule 103(4)(c) EPC, that any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings and no oral proceedings take place, are met. Hence, 25% of the appeal fee is to be reimbursed to the appellant."
• [*] - the withdrawal of the request for oral proceedings is the modification of the request. 
• This is in line with T 2285/19. 

EPO 

The link to the decision is provided after the jump.

J 0002/25 - (II) On online filing problems and burden of proofs

Key points

• The Legal Board has a point to make about online filing methods.
• "The appellant correctly argued that the EPO strongly encourages applicants to use online services and filing tools whenever possible to benefit from the business validations and the accelerated processing of submissions that originate from these tools."
• The Legal Board:   "However, if it does so, the EPO must also have proper safeguards in place including clear information to the users about these, in order to avoid irreparable losses of rights."
• "It must also have adequate and transparent investigation means to establish and prove which means of electronic filing are actually unavailable. This is particularly important if the application of the safeguards in certain cases exclusively depends on the fact that the malfunction can be attributed to the EPO, ..."
• I assume that this also applies to current Rule 134(1), second sentence, i.e. the extension of a period in case "one of the means of electronic communication" has an "outage", to use the terminology of the EPO Notice in OJ 2020 A 120, point 14. The EPO's view, as expressed in that Notice, is that "The occurrence of such an outage is determined by the EPO's technical services [*]. Not every technical problem qualifies as an outage attributable to the EPO, so not every technical problem will lead to the extension of a period [**] under Rule 134(1), second sentence, EPC." The part in italics, [*],  is almost an invitation to the Boards of Appeal to correct: the EPO's technical services don't take decisions in patent grant proceedings (similarly to how the EPO's accounting department does not decide whether a fee is validly paid with a debit order). The second part ([**]) ties the holding of the Legal Board in this case about the filing of a divisional application to normal periods.
• Just to be clear, Notices in the OJ do not bind the Boards and are in a way just information about how the EPO interprets and applies the provisions of the EPC. In this particular case, however, the legal intention of the term "shall apply mutatis mutandis" in the second sentence of Rule 134(1) may have been to authorise the EPO to make detailed rules in a Notice (not exactly a standard way of delegation; OJ 2026 A27 requires a Decision of the EPO President as of 01.04.2027).
• The Legal Board: "Particularly because online filing means have gradually become the only available means of filing [*], as argued by the appellant in the present case, an applicant cannot be deprived of the possibility of filing an application because this has been made impossible for technical reasons, if there are no legal remedies available [**]."
• [*]  I am unsure about what the LBA means here. Filing on paper is possible, and will remain so even after 01.04.2027 (OJ 2026 A27).
• [**] This part is unclear to me. 
• " In the Board's view, the mere statement that the RS has not been made aware of any circumstances that had prevented the applicant from filing the divisional application via the EPO CUS on that date is not sufficient to rebut the appellant's facts, evidence and arguments on the lack of technical availability of Online Filing, OLF 2.0 and CUS. The RS did not indicate that the appellant did something wrong or overlooked other requirements that should have been accomplished when attempting filing the application online. Nor did it question whether the CUS had been performed correctly by the appellant."
• I think that in practical terms, the RS must include in the file some evidence that the filing method was working during the relevant period, e.g. that applications/documents in other cases (from other parties) were correctly received by the EPO during the relevant hours.
• In this respect, I don't think it is up to the EPO to prove "which means of electronic filing are actually unavailable". Rather, any negative decision under Rule 112(2) is based on a finding, substantiated by evidence, that the relevant filing method was working. 
• Because the decision is anonymised (and the application is not yet published), we don't have access to the file, and we don't know what evidence the applicant has filed regarding the alleged CUS outage. The decision mentions that "The same [error] message was received when trying to sign-in using the smart card for Online Filing 2.0 and to sign-in with the EPO Contingency Upload Service. VIII. When attempting to use two-factor authentication (2FA) for the same electronic filing methods, another error message was received."
• Note, for normal periods, Rule 134 is clear: "The first sentence shall apply mutatis mutandis if documents filed by one of the means of electronic communication [...] cannot be received". However, Rule 134 does not apply to the filing of divisional applications. The applicant therefore sought to rely on the statement in point 31 of the Notice, that "Users who are unable to file a document ... should contact the EPO's Customer Services.4 If it is confirmed that the unavailability of the service is attributable to the EPO, they will not suffer any adverse consequences." This part of the Notice does not clearly say "at least one means of electronic filing" (it is in point 12 of the Notice). The LBA judges that unavailability of one means of electronic filing is enough to create the legitimate expectation of "not suffer any adverse consequences".
• Please always check for any updates or clarifications from the EPO on the issue. 

J 0002/25

EPO 

The link to the decision is provided after the jump.

J 0002/25 - (I) A remedy for a late-filed divisional

Key points

• The title is not an oxymoron. 
• The answer is the principle of protection of legitimate expectations, first prong: users can rely on communications from the EPO. In the case at hand, a Notice from the EPO indicated that, in the event of the type of IT issue that happened the night before, there would be no adverse consequences for the applicant.
• "If a public authority such as the EPO issues a promise or statement on how to act in a given area, the principle of legitimate expectations requires that promise or statement to be honoured unless there is good reason not to do so (J 10/20, Catchword)."; see also G 2/97 r.4.1, first sentence.
• The current Board: "It would constitute a disproportionate and unjustifiable burden to the users of the European patent system if they could not rely on the publications by the EPO and if they could lose rights irreversibly when doing so."
• "At the same time, it cannot be disregarded that the principle of protection of legitimate expectations does not give carte blanche to the person relying on it, so that parties in proceedings before the EPO must act in good faith (G 2/97, Reasons 4.2; R 4/09, Reasons 2.3.2; T 861/12, Reasons 4.5) and must take all necessary procedural actions to avoid a loss of rights (J 3/24, Reasons 3.2.3 citing J 4/23)." 
• "The Notice concerning the procedures and safeguards applicable in the event of outages of means of electronic filing has been published on the EPO's website and in the Official Journal of the EPO (OJ EPO 2020, A120). It is therefore clearly a source of legitimate expectations"
• " Not every expectation held by a person is automatically a legitimate one within the meaning of this principle. It must be an expectation on which a person could, on an objective basis, legitimately rely (e.g. J 4/23, Reasons 2 and 4). The Board finds that in the present case, on an objective basis, it was reasonable for the appellant to have relied on the information provided in the Notice and it is reasonable to assume that the appellant was misled by it."
• The Board orders that "2. The communication noting of loss of rights pursuant to Rule 112(1) EPC of 10 January 2024 is set aside and the application EP XX XXX XXX.X filed on 29 November 2023 is processed as a divisional application. 
• Before the appeal decision, the legal status was that "European patent application EP XX XXX XXX.X was not processed as a European divisional application". For that reason, the application was not published (it seems), and the appeal decision is published in anonymised form.
• There is more to the decision; stay tuned! 

EPO 

The link to the decision is provided after the jump.

J 0010/25 - (II) Correcting the drawings in limine

Key points

• The Receiving Section sent an invitation under Rule 58 to correct the drawings on 10.10.2024, with a two-month time limit.
• "The appellant did not respond within the time limit under Rule 58 EP"
• The Receiving Section issued a refusal decision on 22.01.2025, but  "it was not possible [for the EPO] to prove that this [decision] had been delivered to the [applicant] "
• This is an application of Rule 126(2), second sentence. 
• " The appellant then filed the following drawings: A set of drawings filed on 19 March 2025"
• On 01.09.2025, the Receiving Section issued the (appealed) refusal decision.
• At that time, the corrected drawings were on file. Could the refusal decision still be issued?
• J 11/20: "The deficiency having been remedied late and no [request for re-establishment] having been filed, the Receiving Section was empowered to issue the refusal decision at expiry of the time limit given under Rule 58 EPC (see in particular J 1/18, Reasons 5)."
• Is an appeal sensible?  Yes: J 11/20:  "as clarified in decision J 18/08 (Reasons 4 and 6), when an application is refused under Article 90(5) EPC, if an appeal is filed against such a refusal, the board of appeal has to examine whether the deficiency noted has been corrected or not. Thus the deficiency on which the decision under Article 90(5) EPC is based can be corrected at the appeal stage."
• Interlocutory revision should have been granted, assuming that the new drawings are formally correct. J 11/20: "The practice of the Receiving Section, based on this procedure and following the cited case law, has been to rectify its decision refusing an application under Article 90(5) EPC, if an appeal is filed and the deficiency is remedied at the appeal instance ..."
• It seems that you can file the drawings shortly after the time limit set under Rule 58, but that you can only file the appeal and pay the appeal fee once the refusal decision is issued. Normally, however, that does not take long.
• In this case, the Board does not decide on whether the drawings are acceptable and/or whether they are correctly repaired with the appeal, but remits the case to the Receiving Section for procedural reasons (see the previous blog post). I infer from this choice of the Legal Board of Appeal that it wished to make its point about the Receiving Section's use of standard forms. 
  
  
• As a result, the application, presumably filed on 22.05.2024, has not yet been published (as of August 2026), and the decision of the Legal Board of Appeal is published in anonymised form. I wonder whether, if you wish to keep an invention secret for more than 18 months and only desire a European patent, you can use deficiencies in the drawings to delay the publication. 

EPO 

The link to the decision is provided after the jump.