T 1844/23 - Sufficiency of second medical use claim

Key points

• Filing date 15.03.20052025, revocation in opposition appeal on 02.12.2025, written decision 24.02.2026. Filing as a divisional application in March 2010 (just before the amendments of Rule 36, indeed).
• The Board, in machine translation: "The patent in suit lapsed in all contracting states during the appeal proceedings because the patent term of 20 years from the filing date, as defined in Article 63(1) EPC, expired on March 14, 2025. According to Article 76(1) EPC, the filing date is the filing date of the parent application. Following a corresponding notification from the Board, both the patent proprietor and several opponents requested, within the prescribed time limit, that the proceedings be continued in accordance with Rule 84(1) EPC."
• "Claim 1 of the patent is formulated in the form of a second medical use under Article 54(5) EPC and reads as follows: "Pharmaceutical composition comprising an effective content of antioxidants, for use in a method for protecting the skin from damage caused by infrared radiation, wherein the damage is caused by activation of the formation of matrix metalloproteinase-1."
• The alleged surprising insight is that IR radiation in sunlight, not only UV light, causes the formation of matrix metalloproteinase-1 through reactive oxygen species, as I understand it.
• The claim illustrates that a second medical use claim does not identify the compound by name or in any chemical way. It just says "antioxidant".
• The Board: "In the area of ​​patent claims formulated as medical use claims under Article 54(5) EPC, case law has developed such that the mere possibility of replicating the use is insufficient [under Article 83]. "
  "In the present case, it is therefore not sufficient if, as the appellant [proprietor] argues, the person skilled in the art could have achieved the claimed prophylactic effect more or less automatically on the filing date by applying a sunscreen conforming to the claim. Rather, it is required that, for the claimed invention to be sufficiently disclosed, the therapeutic or prophylactic activity of the substances or mixtures defined in the claim must be demonstrated or substantiated to the person skilled in the art in some way in the patent application itself. How exactly this is to be done—whether by direct experimental proof, by technically verifiable reasoning, or in another suitable manner—may then depend on the individual case. The reference made by the Opposition Division to the statements in point 77 of G 2/21 and the decisions of the Boards summarized therein is in any case justified."
• This body of case law also supports the novelty of some second medical use claims, even when a clinical trial directed to exactly the claimed medical indication had been published as prior art (albeit without results). 
• "This required proof or substantiation naturally refers to the therapeutic/prophylactic use defined in the claim as a whole, and not merely to parts of a mechanism postulated for the effect. This seems so self-evident that it is not even explicitly emphasized in the cited case law. In any case, the therapeutic effect mentioned in point 77 of G 2/21 obviously refers to the disease defined in the claim." 
• In the case at hand, the following mechanism was known: UV light → reactive oxygen species → MMP-1 → skin damage. However, the alleged link between IR radiation (as recited in the claim) and reactive oxygen species was not known, and this step constituted step (i).
• " Rather, proof or substantiation of a therapeutic or prophylactic effect of antioxidants in the skin damage defined in the claim must also relate to the fact that the entire postulated mechanism, i.e., also step (i), is actually present in the disease to be treated. "
• "Therefore, contrary to the appellant's submissions, the patent application does not disclose a technically comprehensible concept for the claimed further medical use of the antioxidants with regard to the claimed medical use. "
• "the appellant [proprietor] referred to various technical literature, scientific publications, test data, and advertising brochures concerning some of the products distributed by the opponents, in which the teaching described and claimed in the patent had subsequently been confirmed. 
• The Board: " The requirement of sufficient disclosure must, however, be met on the filing date. A lack of disclosure on the filing date cannot be remedied by subsequent information; see, for example, G 02/03, point 2.5.3 of the grounds for the decision. It was undisputed that, in the present case, subsequently submitted data cannot be used to remedy a deficiency in the disclosure of the patent in suit or the corresponding patent application that existed on the filing date. "

EPO 

The link to the decision is provided after the jump.

BoA Report 2025

Key points

• A bit hidden on the EPO website, the Boards' annual report for 2025 was published.
• "The number of pending cases older than 24 months decreased from 729 at the end of December 2024 to 234 at the end of December 2025." In 2020, there were 4208 pending cases older than 24 months. The share of backlog cases (older than 24 months) decreased from ~ 50 % in 2021 to 10.5% in December 2025.
• "The technical boards of appeal received 1,477 cases in 2025 (20 fewer than in 2024) and settled 2,646 cases". The number of incoming cases was stable.
• The improvement in timeliness and the backlog clearance is absolutely impressive. 
• "In the context of his reappointment, the PBoA outlined the following priorities for what will be his third term: addressing the challenges arising from the incoming workload level, ensuring the smooth relocation of the BoA to the centre of Munich, modernising the BoA's case management system and fostering the harmonisation of procedural and patent law."
• "The PBoA has mandated a task force to propose timeliness objectives applicable as of 2027. The task force is composed of members and chairpersons of the BoA, as well as representatives from Administrative Services"
• I hope that user organisations will be involved in a later stage. 
• For example, it may be good to set a target for clearing cases older than 24 months, e.g., that all cases older than 30 or 36 months are individually monitored at the BoA management level for progress. 
• The report contains no information about the pendency's starting point. It may be the receipt of the respondent's reply in inter partes opposition cases, but I don't know for sure. 
• The report contains only a brief statement about the EBA's handling of petition for review cases: more cases were cleared than were received. That was indeed quite an achievement last year. 
• On a separate note, 4.0% of cases are in French, and about 20-25% are in German.

EPO 

The link to the document is provided after the jump.

R 0013/25 - Decision TBA to hold AR inadmissible

Key points

• The EBA considers a petition for review inadmissible because no timely objection was raised under Rule 106 EPC.
• The EBA, in the German original:  "Gemäß dem Protokoll der mündlichen Verhandlung wurde die Entscheidung der Beschwerdekammer, die Hilfsanträge 9-11 nicht in das Verfahren zuzulassen, während der mündlichen Verhandlung verkündet, bevor die Ausführbarkeit der Erfindung gemäß Anspruch 1 des Hilfsantrags 5 diskutiert wurde (Seite 3 des Protokolls). Bereits zu diesem Zeitpunkt, spätestens aber vor Ende der mündlichen Verhandlung, hätte die Antragstellerin die angebliche Verletzung des rechtlichen Gehörs rügen müssen."
• As a comment, suppose the TBA announces a "decision" (as opposed to a conclusion) to hold a submission admissible in the course of oral proceedings. Can the TBA subsequently change its decision if a party thereafter -  but still during the oral proceedings -  raises an objection under Rule 106? 
• I admit that the text of Rule 106 does not clearly distinguish between these situations. It requires that "an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal". That is, of course, still possible, even if the orally announced decision to hold the submission inadmissible is already res judicata.
• Of course, a TBA may also announce a "conclusion" that a submission is not admitted during oral proceedings (the difference being that after a conclusion, the debate may still be reopened in certain circumstances).

EPO 

The link to the decision is provided after the jump.

T 0257/24 - Amended description, support under Art. 84

Key points

• A case with description amendments, Art. 123(2) and the support requirement of Art. 84. 
• This is an appeal against a decision to refuse a patent application.
• "The main request was filed with a letter dated 11 August 2021. It includes an added figure 4 which is based figure 3 as originally filed, but in which the parallel inductor/capacitor (LC) resonant circuit is modified to a series LC resonant circuit. The main request further includes amended pages 12 to 14 of the description in which, additionally, new figure 4 is described in a manner identical to originally filed figure 3, albeit replacing parallel LC resonant circuit with series LC resonant circuit."
• "The Board is not persuaded by the appellant's argument that page 13, lines 6 to 11 of the application as filed directly and unambiguously discloses, as an alternative to the embodiment of figure 3, a complete embodiment in which the resonant circuit comprises a capacitor and an inductor connected in series."
• "The Board also does not agree with the appellant that the original application contains an evident error in figure 3 and page 10 whose correction necessarily yields a resonant circuit comprising a capacitor and an inductor connected in series. "
• "It follows that the new figure 4 and description passages of the main request and of auxiliary requests 3, 6, 9, 13 and 14, as well as the claims of auxiliary request 12, insofar as they introduce a concrete series-LC embodiment, add subject-matter extending beyond the content of the application as filed.  
• "Auxiliary request 15 corresponds to the application documents as published. The objections under Article 123(2) EPC directed to added figure 4 and the amended description are therefore irrelevant for that request. However, the objections under Article 84 EPC [see below] remain valid. The published claims still define the grounding merely as comprising a "resonant circuit ... resonating at the first undesired frequency", without specifying the technical features necessary to delimit the claimed solution in a manner supported by the description. Since the description as published discloses only the specific parallel-LC embodiment, auxiliary request 15 likewise lacks support in the description and omits essential features. "
• Regarding Art. 84: "The Board agrees with the examining division that, in the context of the claimed invention, the broad term "resonant circuit" is not supported by the description and that essential technical features are missing from the independent claims, contrary to Article 84 EPC. The application as filed describes only one detailed embodiment of the resonant circuit, namely a circuit with a capacitor and an inductor arranged in parallel. No further concrete example of a resonant circuit at the claimed grounding location is disclosed. The claims, however, are not restricted accordingly and cover an unjustifiably broad range of possible resonant circuits. It is therefore not clear from the claim wording which specific circuit realisation is meant to solve the identified technical problem."
• "Nor can an unduly broad claim be rendered compliant with Article 84 EPC merely if the skilled person disregarded certain embodiments as unsuitable. The requirement of support by the description is not met where the claims extend far beyond what the description teaches as a concrete realisation of the invention."

EPO 

The link to the decision is provided after the jump.

T 1239/03 - and G 1/25

Key points

• In the run-up to the hearing on pending referral G 1/25 (hearing this Friday, 8 May, live stream link can be found here), the EBA issued a preliminary opinion on 11.03.2026 (indicating its intention to confirm the current practice of requiring description amendments) and invited the parties to comment by 17.04.2026. Several TPO's were filed by that date. One (anonymous) TPO drew attention to decision T 1293/03 (which was published on 02.01.2007).
• In that case, the proprietor deleted two examples from the patent during the oral proceedings before the |OD, seemingly by way of voluntary amendment. For the examination of whether this amendment complied with Art. 123(2), the Board considered it to be relevant that there was an ambiguity in the claims as granted. The Board reasoned that the skilled person would have to consult the description to establish the correct interpretation of the claim (i.e., in effect the same as under the current case law based on G 1/24). The Board also held that the two deleted examples were relevant in that context and that the skilled person would likely adopt a particular interpretation of the claim based on the information contained in those examples (which was, perhaps, precisely the reason why the proprietor wished to delete those examples). Therefore, the amendment deleting those examples was held to contravene Art. 123(2) EPC.
• Turning to the pending referral G 1/25, the EBA's preliminary opinion is to confirm the current practice that when the claims are limited, the description must be amended to conform. Suppose the EBA maintains this view in their final decision, it remains to be seen if this practice follows directly from the Articles of the EPC, or is of a more administrative nature such that the Administrative Council is competent to regulate the matter in the Implementing Regulations, and if the EBA in their decision gives a view on this point or leaves it open (disclosure: I submitted an amicus brief [link fixed] in which I discussed that Rule 48(1)(c) EPC is the pertinent provision).
• Perhaps the decision in case G 1/25 will not (and should not) be the last word on the balancing of the factors of quality (in terms of consistency), efficiency, and risks (under Article 123(2)/(3) EPC) that description amendments involve. 
• In the end, any rule under the EPC is legitimised not by being cast in stone but by being open to legislative debate and democratic political decision-making by the competent body - either the AC or a Diplomatic Conference.

  

Summary of the case

• The proprietor filed an auxiliary request wherein Examples 2 and 3 were deleted from the description. The OD decides to maintain the patent in amended form based on that auxiliary request. The opponent appeals.
• "[The opponent] argued that the deletions from the specification of the patent in suit carried out by the Patent Proprietor in the opposition proceedings, in particular the deletion of Examples 2 and 3 of the patent in suit, would have changed the meaning of Claim 1 which amounted to an extension of the patent in suit beyond the content of the application as filed and would, therefore, contravene Article 123(2) EPC, "
• "In view of the above arguments, statements and findings, the Board takes the view that (i), in order to understand the disclosure and teaching of the patent in suit, it has been necessary for the skilled reader to interpret the percentage range of the ethylene content in the elastomeric copolymer as defined in Claim 1 on the basis of the description, the general part of which was not, however, helpful in this respect, and, therefore more particularly, on the basis of the examples presented in the application as originally filed as describing preferred embodiments (page 12, line 16). He would have derived, namely from the disclosure in those Examples 1 and 3, that the patent application as filed lent a certain preponderance to interpreting the percentage value given for the ethylene content of component (b) as mol percent rather than weight percent, in particular since Example 3 did not comply with the interpretation of the percentage as being related to the weight (section VIII (4), above).
• "In addition to its explicit statement to this end (sections II (2) and VIII (3), above), the Respondent/Patent Proprietor has tried, by deleting Example 3 in particular, to give preponderance to an interpretation of the percentage value as weight percent. Although neither of the two interpretations can be made with certainty - be it before or after the amendment - there is a shift in the way the claim might be interpreted. Prior to the amendment, there was a preponderance for the interpretation "mol percent" (cf. sections VIII and 3.2.3, above) which due to the deletion of Example 3 has shifted towards "weight percent"."
• "In the Board's view, Article 123(2) EPC must be interpreted as referring to the patent (or application) as a whole rather than to the claims only. This finding proceeds directly from the clear wording of the Article. Hence, it is not crucial in which part of the patent (or application) an amendment has been carried out, but only whether the overall change in the content of the patent (or application) results in the skilled person being presented with information which is not clearly and unambiguously presented in the originally filed application, even when account is taken of matter which is implicit to a person skilled in the art."
• "It is clear, however, that the Patent Proprietor by deleting Examples 2 and 3 intended to have the percentage of ethylene content interpreted as weight percent. In such a case where it is certain that a shift in the interpretation of the claims has occurred, but uncertain if this would lead to an addition of subject-matter, the Board takes the view that it should be incumbent upon the Patent Proprietor or Applicant as the author of such amendment(s) to demonstrate that by making the amendment(s), the conditions of Article 123(2) EPC have been complied with."
•  "In the case at issue, the Patent Proprietor was, however, unable to demonstrate that before and after the amendments, the percentage value could have been consistently interpreted as "weight percent". Therefore, it must be concluded that the author of the amendments in the patent in suit, ie the Respondent, has not discharged the burden of proof which was on him."
• "the deletion of those two examples in order to exclude the possibility of interpreting the relevant percentage as mol percent provides a lateral shift of information corresponding to the extension of subject-matter beyond the content of the application as filed (Article 123(2) EPC). [...] it clearly shifts the gist of the patent in suit as defined in any one of Claims 1 to 13 [...], despite the fact that their wording has not been modified in this respect. In other words, the deletion of Example 2 and, in particular, of Example 3 amounts to the provision of an aliud."
• The proprietor was the respondent, and no auxiliary request was filed in the appeal that re-instated the two examples. The patent was revoked. 

EPO 

The link to the decision is provided after the jump.

T 0618/23 - Pages 120-125 of the SoG do the job

Key points

• The OD decided to maintain the patent in amended form based on AR-25a. Both parties appeal.
• The Board, in machine translation: "the patent proprietor argued, among other things, that the opponent's statement of grounds of appeal, contrary to Article 12(3) of the Rules of Procedure of the Boards of Appeal, did not clearly and concisely explain why the contested decision should be set aside. Instead, it dealt with extraneous matters (such as the proceedings concerning the parallel German patent 10 2015 117 403 before the Federal Patent Court), addressed "an unmanageable number of different, partly equivalent lines of argument" and failed to provide a problem-solving approach for any of these lines of argument."
• "The Board notes, however, that the appellant has sufficiently explained, at least on pages 120 to 123 of the statement of grounds of appeal [ that had in total 134 pages], why the contested decision should be set aside and, in particular, why claim 1 of granted auxiliary request 25a, based on E7 in combination with E13, does not involve an inventive step. While the appellant's submissions are extensive, they are nevertheless sufficiently substantiated. The mere fact that the statement of grounds of appeal contains a number of irrelevant statements alongside the arguments relevant to the decision does not render the appeal inadmissible."
• In the statement of grounds (SoG), the opponent first attacked the patent as granted (p. 11), citing extensive prior art that was no longer relevant for AR-25a (as I understand it). The opponent then addressed AR-1 (p. 84) and all subsequent auxiliary requests, eventually arriving at AR-25a on p. 120.
• In the opponent’s SoG, an attack against requests ranked higher than the auxiliary request held allowable by the OD is indeed an "irrelevant statement", according to the majority line of case law (as I understand it).


• The Board first deals with the claim requests in the proprietor’s appeal and then turns to the set of claims held allowable by the OD (and contested in the opponent’s appeal)."The Board concludes that the subject matter of claim 1, starting from E7 in combination with E13 and the general technical knowledge, does not involve an inventive step."
• The Board then turns to lower-ranking requests, where novelty over E2 becomes an issue. I have not studied this part of the decision in detail.
• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

T 1285/23 - Fighting again before the ED

Key points

• Now that the discussion of the former designation fee per designated state has been removed from the 2026 edition of the Guidelines, this decision remains noteworthy. It was published in October 2025.
• In this case, the applicant had withdrawn the designation of GB in the parent application by letter of 02.03.2017, after the Rule 71(3) Communication. The decision to grant was issued on 16.06.2017, and the mention of the grant on 12.07.2017. The patent was opposed.  The OD decided to maintain the patent in amended form. The opponent appealed. The proprietor disapproved of the text of the patent. The parent patent was revoked. 
• The proprietor filed a divsional application on 05.07.2017. On 23.02.2018, the applicant submitted a letter about the designated states (after the application was published on 10.01.2018). The Receiving Section issued a decision on 22.05.2018 that GB is not designated, and made it open to appeal. The Board rejects the appeal in 
• The search report was also published on 10.01.2018. The examination fee was paid on 06.07.2018. Hence, on 22.05.2018, the Receiving Section was competent.
• The Board rejected the appeal against the decision of the Receiving Section (decision J 3/18, issued on 19.08.2020, identical to decision J 3/20 in a parallel divisional case (blog post).
• The Legal Board held that "an interpretation of Article 76(2) EPC in accordance with recognised rules of interpretation shows that only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional"
• Further, "During the oral proceedings the appellant presented submissions concerning the protection of its legitimate expectations which had not been presented before. ... In the case on file the board used its discretion not to admit the new submissions because the appellant could and should have presented the facts that form the basis for the alleged protection of legitimate expectations earlier in the proceedings."
• Examination starts on 09.09.2020, with an Intention to grant. On 20.10.2020, the applicant requests that the Examining Division consider GB to be designated.
• The ED decides on the matter on 21.03.2023 (decision). 
• The applicant appeals.
• "During the oral proceedings before the Legal Board of Appeal the appellant sought to rely for the first time on the principle of good faith. They stated that they had relied on the communication dated 10 August 2016 concerning the application which was eventually the subject of decision J 14/18. This case concerned the then co-pending application no. 16174992.4 ("the co-pending application"). In that communication the EPO had listed GB as one of the designated states."
• "The appellant did not dispute that a decision of a Legal Board of Appeal concerning a decision of the Receiving Section could in principle also have a binding effect, or an effect of res judicata, on an Examining Division when the application proceeded to that division. However, it argued that its request was now based on the principle of good faith. In J 13/18 the Legal Board of Appeal had never considered that line of argument in substance, but had based the dismissal of the appeal, and thus the refusal of the request to add GB as a designated state, solely on the interpretation of Article 76(2) EPC. There could thus not be a binding effect, under Article 111(2) EPC, of that decision on the Examining Division when they considered that request on a different legal basis, namely the principle of good faith. "
• "The Board disagrees. In J 13/18 the Legal Board of Appeal dismissed the appeal. By doing so it upheld the finding of the Receiving Section not to include GB as a validly designated state in the application. Decision J 13/18 became final when it was issued at the end of the oral proceedings. "
• "The subject-matter of decision J 13/18 was the determination of whether the Receiving Section's refusal to add GB as a validly designated state to the application was correct or had to be overruled. In its decision the Legal Board of Appeal considered whether Article 76(2) EPC could be interpreted such as to allow the appellant's request, and decided not to admit the lines of argument presented by the appellant based on the correction of errors and on the principle of good faith. By dismissing the appeal the Legal Board of Appeal issued a conclusive decision on the request of the appellant to include GB as a validly designated state in the application, rather than admitting the late filed lines of argument (including that of the principle of good faith) and remitting the case to the department of first instance for further prosecution."
• The Board considers the matter, hence, res judicata by J 13/18.
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• "For the reasons set out above, the Examining Division was not competent to decide in substance on the appellant's request to add GB as a validly designated state in the application. The decision is void and is formally to be set aside."
• "The Board concluded above that in view of the effect of res judicata emanating from J 13/18 the Examining Division was not competent to decide in substance on the appellant's request in question."
• "The Board is equally bound by this effect. As a consequence, the appellant's request to add GB as a validly designated state in the application is inadmissible."
• The Board hence decides, in the order of the decision, that "The decision under appeal is set aside. The request to add Great Britain as a validly designated state in the application is refused as inadmissible."
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• Hence, the Board did not apply Article 111(2) EPC to the case at hand.
• The Board sees no difference in facts that would suspend the binding effect under Article 111(2) EPC
  
  
• The appeal fee is reimbursed. "By issuing a decision on a matter in respect of which it was not competent, the Examining Division committed a substantial procedural violation. Whilst the appellant did not obtain the full legal redress sought by its appeal, the Board nevertheless had to set aside the impugned decision."
• "the Board concurs with the body of case law according to which reimbursement of the appeal fee may be ordered based on the principle of good faith, even if the appeal was not allowed and thus one of the conditions of Rule 103(1)(a) EPC was not met (CLB, V.A.11.14)."

EPO 

The link to the decision is provided after the jump.