T 1131/23 - Fee reduction for non-profit organisation

Key points

• The opponent, VRI-Verband der Reibbelagindustrie e.V., appeals.
• In machine translation: "The appellant [opponent] – a registered association under German law – argued in its appeal, using form 1011, that it was entitled to the reduced fee rate for non-profit organizations. It also paid only the reduced fee rate. To demonstrate that it does not pursue a profit motive, the appellant referred to its articles of association.
• The Board, in translation: " The question of whether the opponent is a non-profit organization and therefore only had to pay a reduced appeal fee when filing the appeal on 14 June 2023 is governed by Rule 6(4)(c) EPC in the version applicable until 30 April 2024 (Rule 6(4)(c) EPC old version).."
  • Obviously, Rule 6(4)(c) EPC applied only indirectly, namely through Art. 2(1).11 Rfees.
• The Board: " According to this provision, a non-profit organization is one which, by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income, profits or other financial benefits for its owners, or which, if a profit motive is permitted, is subject to a statutory/legal obligation to reinvest these profits in the interests of the organization (see: Official Journal EPO 2014, A23, point 8i; Examining Guidelines Part A Chapter X 9.2.1; the same wording is found in point 8 of the Notice of the European Patent Office of 25 January 2024 on fee-related support measures for smaller units, Official Journal EPO 2024, A8, in which Rule 6 EPC (old version) was replaced by Rules 7a and 7b EPC)."
  • The text about "by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income" cannot be found in Rule 6 (old) itself. OJ 2014 A23 is only a Notice from the EPO and does not bind the Board.
  • The Board indicates that it is not strictly bound by the OJ Notice, as follows: " From this definition, which the Board also bases its decision on [ Dieser Definition, die auch die Kammer zur Grundlage ihrer Entscheidung macht, ], it can be inferred that an organization is to be regarded as a non-profit organization if, due to its legal form, it is not permitted to engage in business activities aimed at generating profits."
• "In its assessment under the old version of Article 6(4) EPC, the Board follows the German case law on Section 21 of the German Civil Code (BGB), according to which limited economic activity within the scope of the so-called ancillary purpose privilege (see above, point 3) is permissible."
• "The opponent pursues the objective of the opposition proceedings it conducts to ensure that only those technical developments in the field of friction lining industry that are genuinely new, involve an inventive step, and fulfill the other requirements for patentability are granted a patent. This prevents the friction lining industry from being restricted from having unrestricted access to technical solutions that are already known and obvious from the prior art, and thus ultimately hinders further technical progress in this field. There is a general interest in this – not only, but also – of the friction lining industry, so these opposition proceedings are fundamentally suitable for promoting the objector's association's purpose."
• " Opposition proceedings do have economic consequences; however, these primarily affect the companies whose patent applications are being challenged. For an opponent who—like the opponent in these proceedings—does not manufacture or distribute any products, maintaining or invalidating a patent is neither economically advantageous nor disadvantageous. The costs of opposition proceedings, however, are considerable. Therefore, it cannot be assumed that the opponent intends to profit from conducting opposition proceedings."
  • The members of the association are, of course, the (German) companies active in the industry. The association may be set up for cost-sharing purposes.
• "In light of all the above, it must be concluded that the opponent is to be regarded as a non-profit organisation within the meaning of Rule 6(4)(c) EPC old version and that his appeal is therefore deemed to have been lodged, even though he has only paid the reduced fee rate."
  • The preliminary opinion was negative. Oral proceedings were held only for the topic of the correct payment of the appeal fee / whether the appeal was deemed to have been filed. Summons for second oral proceedings, on the merits, were issued shortly after the first oral proceedings (with the oral proceedings to be held two months after the summons).
  • This confirms that under the EPC, the Boards hold oral proceedings even if they consider that the appeal is deemed to not have been filed due to an incorrect payment of the appeal fee.

EPO 

The link to the decision is provided after the jump.

T 1950/23 - Plausibility and generic statement of advantages

Key points

• The Board has to decide on inventive step.
• "Claim 1 of the main request is distinguished from the composition of example 23 of D1 solely in the presence (in claim 1) of "a detergent selected from sulfonate, phenate, or a mixture thereof"."
• "It is undisputed that the patent does not disclose a technical effect specifically linked to this distinguishing feature."
• " The respondent [proprietor] submitted that the effect of the distinguishing feature was an improvement in extreme pressure performance. Evidence of this effect was provided by the appellant's experimental tests D16, submitted in opposition proceedings."
• " The appellant [opponent] did not contest that this effect was demonstrated in D16 as described above, but rather argued that it could not be derived from the application as filed. Therefore, in view of Enlarged Board of Appeal decision G 2/21, it could not be relied upon for inventive step, and hence also not in the formulation of the objective technical problem underlying claim 1."
• "Page 20, lines 15 to 22 ... states that the lubricating oil compositions may further comprise additives that can impart or improve any desirable property of the lubricating composition. Such additives are listed on page 20, lines 22 to 27 and include detergents. Detergents are mentioned in this list as one of many possible additives." In addition, "page 1, lines 20 to 22 states that the lubricating compositions of the invention exhibit both improved friction characteristics and extreme pressure performance"
• "However, further disclosures in the application as filed point to the specific importance of detergents in the claimed lubricating compositions: claim 7, which is dependent on claim 1, stipulates that the composition further comprises a detergent selected from sulfonate, phenate, or a mixture thereof. Claim 8 is the only other claim dependent on claim 1 and related to a further additive, namely a friction modifier. Since dependent claims are generally directed to preferred embodiments of the invention (Rule 43(3) EPC), this indicates a higher ranking for detergents and friction modifiers as additives over other additives listed in the application as filed. "
• "Furthermore, the lubricant compositions of all examples (table 1, page 31) comprise either a sulfonate or phenate detergent, and it is demonstrated for the inventive examples that adequate extreme pressure performance can be achieved ... . Therefore there is a link in the application as filed between the compositions of claim 7 and the effect of extreme pressure performance set out on page 1 as stated above.
• "it is not reasonable to expect patent applicants, at the time of drafting the application, to safeguard against the citation of then unknown prior art, for example in opposition proceedings, by providing comparative data showing an improvement for all potential distinguishing features over all potentially later cited closest prior art documents. Not only would this be unreasonably burdensome, it would also suffer from the shortcoming that not knowing the nature of the disclosure of the newly cited closest prior art, the information required to set up appropriate comparative tests representative thereof would not be at hand."
• " it would be an overly strict interpretation of G 2/21 to require that the application as filed demonstrate that the improvement of a technical effect disclosed in the application as filed and relied on by the patent proprietor is specifically attributed to the distinguishing feature. In such a situation, it would suffice for opponents to cite new prior art differing in the distinguishing feature compared to the prior art known when the application was drafted to invalidate the patent. More specifically, since relying on post-published data would be excluded under such a strict interpretation of G 2/21, such patents would be likely to face revocation."
• "Hence, this effect may be relied upon for inventive step, and consequently in the formulation of the objective technical problem underlying claim 1."

EPO 

The link to the decision is provided after the jump.

T 0583/25 - Allowable AR in examination appeal

• This is an appeal against a refusal decision.
• The examining division held that the subject-matter of claim 1 of the main request (sole request) underlying the decision under appeal did not specify that the "polysilicon emitter" was a "P-type polysilicon emitter" and therefore contravened the requirements of Article 76(1) EPC, as this constituted an unallowable intermediate generalisation.
• In a communication pursuant to Rule 100(2) EPC dated 26 June 2025, the board preliminarily agreed with the examining division and provided reasons for its view.
• The applicant withdraws the main request, and the Board has to decide on the admissibility of the auxiliary request filed with the SoG.
• “The amendments made to claim 1 of the auxiliary request overcome the sole reason for the refusal of the application, because the omitted term "P-type" is added in amended claim 1”
• “The auxiliary request could and should have been submitted in the examination proceedings. According to Article 12(6) RPBA, the board shall not admit such requests, unless the circumstances of the appeal case justify their admittance.”
• "In the present case, the board admits the auxiliary request into the appeal proceedings. The fact that the amendment in claim 1 of the auxiliary request overcomes the examining division's objection is regarded as a justifying circumstance within the meaning of Article 12(6) RPBA."
• "In this context, the board also takes into account the fact that the only possibility to have the examining division's decision on the claims of the main request reviewed by the board was to uphold the main request. In other words, even if the appellant had filed the auxiliary request in the examination proceedings as an auxiliary request, the examining division would have decided to refuse the main request, and the appellant would have had to file an appeal against this decision to have it reviewed by the board."
• If the applicant had filed AR-1 in the examination proceedings and maintained it, the Ex Div would have issued an intention to grant. The only way to obtain a refusal decision would have been to withdraw AR-1 (by keeping to the Main Request in reply to the Rule 71(3) Intention to grant). Then, the ‘not maintained’ prong of Art. 12(6)(s.2) would have applied.

T 1260/23 - Clarity and preferred features

Key points

• Claim 5 as granted: "5. The method of claim 4, wherein the soil and/or moisture resistant formulation is an aqueous polymer dispersion comprising dispersed particles having average particle sizes ranging from about 50 to about 150 nanometers, preferably wherein the aqueous polymer dispersion comprises from about 10 to about 40 % by dry weight of resin particles or solids selected from the group of polyurethane resins, polyether-urethane resins, urethane-acrylic resins, and mixtures thereof." 
• Claim 4 as granted " The method of claim 1, wherein the soil and/or moisture resistant formulation is an aqueous formulation containing one or more thermoplastic resins selected from the group of resins having an ester bond, polyurethane resins, functionalized polyurethane resins, and copolymers and mixtures thereof."
• Is the preferred feature of claim 5 open to the examination of clarity in opposition?
• The OD considered claim 1, amended with the mandatory and the preferred feature of claim 5 (and the feature of claim 4), to be unclear.  " The objection was based on an alleged ambiguity arising from the definition of two lists of polymers in claim 1, with the first including a broad reference to "resins having an ester bond" [i.e., former claim 4], and the second focusing on more specific chemical groups [i.e., the preferred list of claim 5]. According to the decision, it was unclear whether the second list was intended to limit the scope of all the groups in the first list, or simply to propose specific forms for some of them"
• The Board:  "the introduction of certain features by means of the term "preferably" merely indicates that they are optional, thereby rendering the defined subject-matter equivalent to that of an additional dependent claim. As argued by the proprietor, this corresponds to the case described in Reasons 3(a) of G 3/14 (the so-called "Type A(i)" cases), and is therefore not open to clarity objections during opposition or opposition-appeal proceedings."
• It is nice that the Board treats preferred features as "equivalent to that of an additional dependent claim" for the purposes of G 3/14 because you don't have to pay claim fees for preferred features.

EPO 

The link to the decision is provided after the jump.

T 1798/23 - Inconsistent indication of the opposed patent

Key points

• The opponent appeals against the decision to maintain the patent in amended form.
• "the respondent [proprietor] maintained their objection, already raised at opposition proceedings, to the admissibility of the opposition, due to a lack of the necessary information allowing the unambiguous identification of the opposed patent in the notice of opposition."
• It was submitted that while the notice of opposition indicated the correct European patent application No. 16 751 551. 9, the publication number was wrong with regard to the last digit (it indicates EP 3 332 023, whereas the publication number for the patent in suit is EP 3 332 028), as well as the title of the invention reading "Genetic testing for alignment-free predicting resistance of microorganisms against the antimicrobial agents" (this being the title of EP 3 332 023), instead of "Genetic resistance prediction against antimicrobial drugs in microorganism using structural changes in the genome" (this being the title of the patent EP 3 332 028).
• EP EP 3332023 exists, with indeed the title beginning with "Genetic test..."
• " The admissibility of an opposition must be assessed ex officio in every phase of the opposition and ensuing appeal proceedings (e.g. T 1178/04"
• "With [further] submissions dated 30 September 2021 [before the expiry of the opposition period], the notice of opposition was filed anew with the corrected title ("..."). The letter also contained the name of the patent owner (Ares Genetics GmbH), the European patent application No. 16751551. 9 and the patent's publication number EP 3 332 028, all as correctly indicated before in the first notice of opposition."
• From the European Patent Register, it can be derived that on 5 October 2021, the EPO issued a communication (Form 2302) indicating deficiencies under Rule 76(2)(b) EPC in the notice of opposition of 29 September 2021.
•  Irrespective of whether the submissions of 30 September 2021 were actually in reply to the EPO's communication of 5 October 2021, due to the opponent becoming aware of the deficiency in advance of the date indicated in that communication, or were filed by the opponent on its own motion, it is evident that the errors were corrected before expiry of the opposition period, as required by Rule 77(1) EPC.
• The opposition was hence admissible.
  
  
• The Board considers the claims to be not inventive. "It is established case law that the question of whether a skilled person would consider a modification of the prior art critically depends on the problem to be solved by the alleged invention. If the only contribution of the invention is to propose something different from the prior art (i.e. the provision of an alternative as in the present case), then it is usually appropriate to consider that the skilled person would take into account any common alternative known in the respective technical field (unless the closest prior art teaches away from it). In such cases it might not even be required to justify the selection of a particular solution, because it was assumed that an invention based on incorporating known features for the sole purpose of establishing novelty must be rendered obvious by a corresponding step of selecting any alternative known in the art"
• 
  

EPO 

The link to the decision is provided after the jump.

T 0691/24 - Review of decision to hold inadmissible

Key points

• The OD did not admit an auxiliary request filed during the oral proceedings. Should the Board admit it under Art. 12(6), first sentence, RPBA, on the ground that the OD's decision suffered from an error in the use of discretion?
• "These claim requests were not filed within the period set out in the opposition division's invitation pursuant to Rule 79(1) EPC [ ...] . Rather, the opposition division had the discretion pursuant to Article 123(1) EPC in conjunction with Rules 81(3), 79(1) and/or 116(2) EPC not to admit them (see e.g. R 6/19, Reasons 6 and 7; T 256/19, Reasons 4.7 [post] ). "
• "This discretion exists independently of the provisions of Rule 116 EPC and of whether the opposition division deviated from its provisional opinion as set out in the annex to the summons to the first-instance oral proceedings (see e.g. T 966/17 [post])"
• " In other words, a positive preliminary opinion on auxiliary request 9a - already admitted into the proceedings at the opposition division's discretion - cannot guarantee per se the admittance of yet a further filing of claim requests. Nor does such a positive opinion "reset" the application of the "convergence criterion" which the opposition division relied upon when taking its discretionary decision on admittance in the opposition proceedings."
• "Also the EPO Guidelines (in its version of March 2025) do not state that an opposition division's deviation from its preliminary opinion necessarily constitutes a "change of the subject of the proceedings" within the meaning of Rule 116(1), fourth sentence, EPC (cf. part E, chapter VI, section 2.2.2, board's emphasis: "The following are examples of what would normally constitute a change of subject of the proceedings: [...] the opposition division departs from a previously notified opinion."). 
• "Nor can such a deviation as such justify an automatic admittance of claim requests (see the decisions cited by the proprietor, i.e. T 868/20, Reasons 3.1.2 and T 847/20, Reasons 3.3.3). "
•  "The "convergence criterion" as regards claim requests is definitely a well-established criterion which can legitimately be used by a first-instance department when exercising its discretion as to admittance of late-filed claim requests (and this even before the expiry of the time limit set under Rule 116(1) EPC; see e.g. T 364/20, Reasons 7.2.10; see also EPO Guidelines, part E, chapter VI, section 2.2.3: "Convergence of requests is another of the relevant factors that the division may consider when exercising its discretion"). 
• The GL paragraph seems to refer to the case " if the opposition division states in the annex to the summons that the patent is likely to be revoked and the proprietor in response submits amendments after the final date set under Rule 116(1), possibly not until the oral proceedings, the division could, in principle, treat such requests as late-filed" (which is quite the opposite of the Board's analysis).
• "In view of the minutes of the two oral proceedings before the opposition division, the board agrees with the respondents that the discussions concerning auxiliary requests 5 and 6 had already taken a considerable amount of time. Moreover, through the replacement of features, those discussions became at once moot when the appellant moved on to "auxiliary request 10a""
  
  
• "Concerning the present first auxiliary request, and as a matter of principle, the board takes issue with the opposition division's announcement to "permit one further request and no more" (see point 97 of the minutes of the second oral proceedings) and its subsequent decision to "not look at the auxiliary request" (see Reasons 38 of the decision under appeal). This is because, firstly, the board sees no legal basis in the EPC to make submissions from a party - irrespective of their content - being subject to prior approval from the deciding body. Secondly, the limitation to "one further request and no more" - ex ante and without any consideration as to their substance - appears to be purely arbitrary."
• See also T 1241/21 (post) and T 756/18, but see also T 350/19 (post)

EPO 

The link to the decision is provided after the jump.

T 2010/23 - Secrecy on the side of the supplier

Key points

• Claim 1 of the main request reads as follows: "A pigmented aqueous inkjet ink set for manufacturing decorative panels comprising: b) a red aqueous inkjet ink containing a red pigment selected from the group consisting of C.I. Pigment Red 254, C.I. Pigment Red 176 and mixed crystals thereof; c) a yellow aqueous inkjet ink containing a pigment C.I Pigment Yellow 150 or a mixed crystal thereof; and d) a black aqueous inkjet ink containing a carbon black pigment; wherein the aqueous inkjet inks contain a surfactant."
• In case you wonder what the invention is about: "example 2 of the patent demonstrated that true reproduction of wood colours could be obtained with the inkjet set of claim 1. The objective technical problem was therefore how to manufacture decorative surfaces with high productivity by not requiring complex inkjet printers and image processing software for a true reproduction of wood colours."
• The opponent alleges public prior use.
• "The public prior use represented by documents D7 to D15 concerns the sale of certain inks from the respondent (Arcolor AG) to the company Schattdecor. "
• "Invoice D9 discloses a list of inks ordered by Schattdecor, ... in the interest of simplicity, the board refers exclusively to D9 in the context of the issue of public availability."
• "In the declaration, Mr Breuer [of the buyer] explicitly states that the ... D9 concerned a normal sale without any obligation to confidentiality ... This declaration is evidence that there was no implicit confidentiality agreement, and the board finds it more convincing than the appellant's unsupported circumstantial allegations to the contrary."
• I wonder if this is correct. If the buyer selects three pigments in combination in a purchase order, is the seller really free to share that information with others? E.g. with a competitor of the buyer? Can the seller S say to a competitor P  'hey, look, another company buys our product X often together with product Y, perhaps you can try it as well in your company'?
• Of course, the witness of the buyer declared that it was a 'normal sale' and 'without any obligation to confidentiality'. However, a technical person may simply mean that no NDA was signed for the sale. Mr Breuer was not heard as a witness. 
• Sales under confidentiality, as encountered in the case law, usually involve the buyer's obligation, imposed by the seller, to keep information obtained from the seller secret, it seems to me. 
• The Board found the claim obvious over the prior use. No other claim requests were allowable and admissible.

EPO 

The link to the decision is provided after the jump.