T 0981/23 - No functional or structural link between the features

Key points

• The question is whether, under Art. 123(2), a feature can be taken from a paragraph of the description without certain other features that are also taught in that paragraph.
• The Board: "There is no functional or structural link between the internal operations of power storage, power supply and activation of the controller and the fact that the remote control is suitable for controlling a "toilet device". The internal power management is not inextricably linked to the control functions assigned to the operating buttons either. Hence, the interaction with a toilet device and its functions can be omitted without infringing the requirement of Article 123(2) EPC."
• For a second amended feature: "Claim 1 specifies ... . The basis for these features is found in Figure 4 and the corresponding description on page 14, lines 4 to 7 of the application as filed. The respondent [opponent] submitted that claim 1 contained an unallowable intermediate generalisation because it did not specify the [a feature]  disclosed on page 14, lines 9 to 16, in .... In the Board's view, these additional features need not be explicitly specified. First, it is well known that a rectifier usually outputs currents flowing in only one direction ... . The inherent smoothing function of electric storage elements is also well known and thus implicit. Second, the generic term "rectifier" is not limited to a diode bridge ... "
• "This implies that the disclosed distribution of the functions of current inversion and smoothing between the rectifier and the electric storage element is not inextricably linked to the specification of a rectifier, electric storage element and voltage detector as disclosed in Figure 4 and incorporated in claim 1. Either way, omitting the more specific features from page 14, lines 9 to 17 does not extend beyond the content of the application as filed."

EPO 

The link to the decision is provided after the jump.

T 0193/23 - An undisclosed embodiment is now encompassed by claim 1

Key points

• At issue is Art. 123(2).
• "The appellant (patent proprietor) argued that the introduction of feature 1.4 in claim 1 as granted is supported by paragraph [0019] of the originally filed application. Under dispute is whether the omission in claim 1 of further features recited in paragraph [0019], namely that the openable cover ...  "is sealable by way of engagement of two halves of a zipper ..." results in an unallowable intermediate generalisation of the specific embodiment disclosed in the cited paragraph of the originally filed description [,] as concluded by the Opposition Division."
• "As correctly pointed out by the department of first instance and the appellant (opponent), the originally filed application does not indeed describe or even envisage an embodiment of the claimed luggage including an openable cover attached to the expansion body wherein these two elements are not sealable/openable by a zipper disposed along their perimeter. As a matter of fact, no embodiment can be found where a zipper is not present or replaced by another element. However, by omitting the zipper in feature 1.4, such an undisclosed embodiment is now encompassed by independent claim 1. "
• I wonder if this is the correct test. Any generalised claim includes embodiments that were not  "describe[d] or [...] envisage[d]". However, for most claims, if not all claims, one can probably construct an embodiment that falls under the claim yet is not mentioned in the description. Hence, the test cannot be if the opponent can construct an embodiment that falls under the claim but was not 'described or envisaged' in the application as filed.
• With this test, a generalisation is never possible, it seems. Is that desirable?
• "The argument of the appellant (patent proprietor) that since the functionalities of attaching the openable cover to the expansion body and of closing and sealing the article luggage by a zipper disclosed in paragraph [0019] were not inextricably linked [,] no unallowable intermediate generalisation arose, is not convincing either. In this respect, the Board concurs with the Opposition Division and the appellant (opponent) that a functional overlap between these functionalities exists. In fact and to a certain extent, means to attach the openable cover to the expansion body and the zipper to seal the luggage article are required for the functionality of the luggage according to the application as filed."
• I wonder if a 'functional overlap' between features is the same as "inextricably linked. 
• The Board does not elaborate further on how the zipper is 'to a certain extent' "required for the functionality of the luggage according to the application as filed".
• Cf. CoA UPC 2 October 2025, expert e-Commerce/Seoul Viosys - https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Decision%20764-2025%20774-2025%20EP698%20EN.pdf 
• 
  

EPO 

The link to the decision is provided after the jump.

R 16/23 - On the right to oral proceedings

Key points

• This is the 13th successful petition for review, by my count. 
• The EBA corrects J 6/22, wherein the LBA had intentionally denied oral proceedings (and had dismissed the appeal), despite a valid request for oral proceedings of the applicant, in a case with a request for re-establishment for the late filing of the statement of grounds.
• Moreover, even though the underlying case is unusual, the LBA's reasoning was, though extensive on the legal points, quite generic and indeed suitable for copy/past in other (re-establishment) cases, as a TBA did in T 1874/23.
• The written reasoning of the LBA to deny the appellant's right to oral proceedings was extensive, and relied essentially on a purported 'dynamic' interpretation of Article 116, referring to the "substantial yearly number of appeals being filed and a considerable workload for the boards. Furthermore, the timely adjudication of cases has become a matter of increased interest to the stakeholders in the system, while it remains a challenge for the boards to carry out their function of effec­tively brin­ging justice to all parties within a reaso­nable time frame."
• The EBA holds, in the headnote, that "As oral proceedings had been requested by the appellant-applicant in the event that an adverse decision on the request for re-establishment of rights and on the appeal were taken, the [Legal Board of Appeal] should have arranged for the holding of oral proceedings pursuant to Article 116(1) EPC before taking any such adverse decision.
• " The failure to arrange oral proceedings constitutes a fundamental procedural defect within the meaning of Article 112a(2)(d) and Rule 104(a) EPC since, as a result, the appellant-applicant did not have the opportunity to present the case orally on the decisive issues of re-establishment of rights and the admissibility of the appeal"
• The EBA: "The second consideration referred to in the decision under review relates to aspects such as a timely adjudication of cases and the creation of legal certainty.  These are indeed aspects of great importance. The starting point is, however, that they are to be taken into account within the legal framework as provided by the legislator. In the view of the Enlarged Board, they are not sufficient on their own to justify a dynamic interpretation that would limit the scope of application of Article 116(1) EPC in such a way that a right to oral proceedings could be balanced against them."
• In addition, "As already stated in decision T 383/87, Article 116(1) EPC guarantees the right of any party to request oral proceedings, i.e. to argue its case orally before the relevant instance of the EPO. This includes the right for the party requesting oral proceedings merely to present orally what it has already submitted in writing (see also R 3/10, Reasons 2.11 confirming T 125/89, Reasons 7), without having to fear that, if it does so, the deciding body will order a different apportionment of costs for that reason alone (see also T 125/89, Reasons 7; T 383/87, Reasons 9)."
  
• The EBA's reasoning is extensive and clear. I recommend reading the entire decision. 

• The successful petitions are now: R 16/23; R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links). See also the list here.

EPO 

The link to the decision is provided after the jump.

R 11/23 - A new clarity issue raised in the written decision

Key points

• This is the twelfth successful petition for review, by my count. The decision was already published in July 2025. The blog post was kept in stock for some time by oversight. 
• The successful petitions are now: R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links).
• The patent application was filed in 2004 (as a PCT application). The grant was in 2017 (!). EP Entry in 2005, first action from the Examining Division in 2010, second Communication in 206 - we are looking back at the dark ages of the EPO. The decision of the TBA was T0532/20. 
• "Specifically, the petitioner [proprietor] argues that there were two distinct clarity objections against claim 1 of auxiliary request 8: The alleged lack of clarity what "maintaining currents in an allowable range" meant (the "allowable current range objection") and the alleged lack of information on which components were to be protected by the protective circuit (the "unspecified components objection"). The petitioner acknowledges that it was heard in the context of the "allowable current range objection" but it asserts that it was confronted with the "unspecified components objection" [and the Board's negative finding on that point] when reading the written decision only. Referring to pertinent case law of the boards of appeal, the petitioner argues that Article 113 EPC particularly meant that a party shall not be surprised by previously undisclosed reasons and evidence when studying the decision (pages 2 and 3 of the petition). "
• "The Enlarged Board also does not see any clear indication that the "unspecified components objection" was raised implicitly, for example as an aspect of an overarching clarity objection. During the written appeal proceedings, an objection was made that the critical feature (as quoted above in point VI.) defined a result to be achieved ("a protective circuit for maintaining currents within an allowable range") but not the technical measure of how to achieve it"
• "The "allowable current range objection" and the "unspecified components objection" are the aspects of the overall clarity or "result to be achieved" objection against the critical issue which were discussed in the decision under review. The objections were addressed separately (Reasons points 7.4 and 7.5), with a different outcome. The Board's finding that the "unspecified components objection" was justified in view of Article 84 EPC ultimately led to the revocation of the patent even though the "allowable current range objection" was not justified in the Board's view."
• On the burden of proof of the petitioner to show that an issue was not discussed during the oral proceedings before the BoA: "Since the Enlarged Board has no power or ability to investigate further whether other facts or indications might suggest that the petitioner could be aware that the Board had doubts about the specific aspect of clarity (namely, the "unspecified component" issue), it has to rely on the parties' submissions in this respect. In the absence of any such indication it is not for the party alleging a breach of its right to be heard to prove that there were no such facts or indications (see R 15/11, Reasons point 5). Any doubts remaining on whether a decision under review is based upon facts and considerations on which the parties had an opportunity to comment must be solved to the affected party's benefit (see R 2/14, Reasons point 10.3.4)."
• "The "unspecified components objection" which had not been discussed during the appeal proceedings eventually was the reason for the Board's finding that the patent was invalid. The Enlarged Board concludes that a fundamental violation of Article 113(1) EPC occurred."

EPO 

The link to the decision can be found after the jump.

T 0821/24 - Essential features and permitted generalisation

Key points

• The patent application was refused. The applicant appeals. The question is whether claim 1 is clear or lacks essential features.
• The Board: "The Board acknowledges that generalisation in claim drafting is permissible. However, even in a generalised form, an independent claim must still include all features essential to solving the (subjective) technical problem addressed by the application and to achieving the technical effect relied upon, across the whole breadth of the claim. If the claim, by virtue of its general wording, encompasses embodiments that do not achieve that effect or solve the problem, its scope is not clear. In line with established case law of the Boards of Appeal, the claim does not meet the requirements of Article 84 EPC "
• I'm not entirely sure in what sense the term 'technical effect' is used here.
• "The overarching principle is that the applicant is entitled to protection only for the invention disclosed. "The invention", however, is necessarily linked to the solution of a technical problem with reference to the pertinent background art as addressed in or at least understandable from the application, as required by Rule 42(1)(c) EPC. Accordingly, claim generalisation cannot extend to embodiments that do not solve that problem or achieve the stated technical effect, since such embodiments do not belong to "the invention" and thus cannot be the subject-matter of a claim. This basic principle sets the permissible limits for generalisation."
• "The Board notes that a claim must also be clear in itself. If the skilled person must rely on the description merely to work out, within a broadly generalised claim, which features actually achieve the technical problem with which the application is concerned, this indicates a lack of clarity under Article 84 EPC."

EPO 

The link to the decision is provided after the jump.

T 0129/24 - Not paying the opposition fee

Key points

• The opponent filed an opposition in August 2020 using Form 2300E, but did not specify a debit order or fee payment method in that form. The reasoned statement of opposition did not indicate a (purported) debit order or a statement about an attached debit order.
• The OD decided that the opposition was deemed not filed for not paying the prescribed fee in time (after holding oral proceedings which lasted two hours, see the minutes.
• The opponent appeals. The Board summons for oral proceedings, but these are cancelled after the appellant (opponent) announces that it will not attend the hearing.
• The appeal is dismissed.
• The most interesting points are the following. First, the OD / formalities officer first issued an invitation on 03.09.2020 to reply under Rule 79 to the proprietor (supposedly, the OD / formalities officer declares the opposition inadmissible ex officio / in the ex parte procedure of Rule 77(1). The formalities officer then issues a notice of loss of rights to the opponent (03.09.2020). The opponent then requests re-establishment (which is not available for the opponent for non-payment of the opposition fee). 
• On 21.05.2021, the formalities officer issued a letter stating "for the opposition division" that "Opposition was filed with EPO Form 2300 on 20.08.2020. However, the method of payment was not specified on the mentioned form. Having regard to the circumstances including technical aspects, the EPO has come to the conclusion that the opposition fee is considered deemed to have been paid due in time, i.e. on 20.08.2020."
• The formalities officer then issues a new invitation to the proprietor to reply to the opposition (18.06.2021).
• The proprietor contests the validity of the payment of the opposition fee.
• The OD is enlarged with a legal member, and summons are issued.
• The OD issued summons. The preliminary opinion was negative on the validity of the payment. The OD noted that at the relevant time, OLF (old), in the then applicable version 5.12, did give a warning if the payment method was left 'not specified'). The OD also qualifies the letter of 21.05.2021 as a preliminary view.
• The opponent in appeal inter alia argues that the EPO's letter of 21.05.2021 created legitimate expectations that the opposition fee was considered to have been paid.
• The Board: "The principle of the protection of legitimate expectations is a general principle well established in EU law and generally recognised in the EPC contracting states and boards of appeal case law (see CLB III.A.1). The protection of the legitimate expectations of users of the European patent system has two main principles. It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO. ... In the present case no legitimate expectations were created because the above conditions were not fulfilled as will be explained in the following paragraphs.
• "contrary to how the appellant has argued, the opposition division did not conclude (communication of 21 May 2021) that the opposition fee was "in fact paid on time". Rather it concluded that the "opposition fee is considered deemed to have been paid due in time, i.e. on 20 August 2020". In other words the opposition division merely treated the fee as if it had been paid on 20 August 2020 which was the last day of the 9 month opposition period. The appellant does not otherwise dispute the opposition division's statement of fact in its decision (facts and submissions, 5) that the opposition fee was paid on 9 October 2020 together with a fee for re-establishment of rights under Article 122 EPC. Indeed the appellant confirmed this in its appeal grounds (page 1, second bullet point), thus it appears indisputable that in fact the opposition fee was paid late, several weeks after the end of the nine month opposition period."
• "he Board takes the view that T595/11 [blog post] is not relevant to the present case. In that case, a formal check that the correct appeal fee had been paid had not been carried out four years after the filing of the appeal (see reasons point 1.7 and 1.8), and the board in that case considered that after such a long time, since the issue had not already been raised, a legitimate expectation that the fee had been correctly paid was created.
• The present case is not comparable in that the formal check that the opposition fee had been paid was not delayed but timely carried out at the start of the opposition proceedings and the opponent correctly notified of the result that it had not been paid (see communication noting loss of rights of 29 September 2020). The Board also does not see that any legitimate expectations comparable to those considered in T595/11 were created by the opposition division's communication of 21 May 2021, informing the opponent that the opposition fee was deemed to have been paid. This is because the issue had already been raised and the opponent was aware that the proprietor had not commented on the matter at that stage of the proceedings. Indeed, the proprietor questioned the correctness of the information in the communication of 21 May 2021 at its earliest opportunity (27 October 2021) about five months after the communication. This position was taken up by the opposition division in its annex to the summons of 9 December 2022. "

• Compare T 0130/19 for a similar case, but with crucial factual differences.

EPO 

The link to the decision is provided after the jump.

T 0729/24 - A case with a letter rogatory

Key points

• A rare case with a letter(s) rogatory.
• The opponent had filed emails, as alleged prior art, that the original applicant sent to third parties. The original applicant was summoned as a witness by the OD. The witness, an Italian national, requested to be heard by the competent national court
• The EPO sent a letter to the Italian authorities requesting that the competent Italian court hear the witness (the document refers to an attached letter rogatory, but I've not found that in the public file wrapper. The EPO's letter uses 'letter rogatory', though customarily it is always plural (I understand).
• The transcript of the hearing by (and before) the Italian court (attended by the chair and the legal member of the OD), and the English translation of the transcript, can be found here.
• The OD concluded that the emails and documents at issue were not public, except for one email (D18) with attachments (see the OD's decision). D18 was sent to a prospective customer a couple of days before the filing date of the patent (and the priority is only partially valid). 
• The Board's preliminary opinion was that the claims as granted lacked basis in the application as filed, and that D18 was prejudicial to inventive step of most of the auxiliary requests.
• The proprietor then withdraws all auxiliary requests on file. The Board finds, as the OD, that the claims as granted lack basis in the application as filed.
• See T 2893/18 for an earlier appeal in this opposition case.

EPO 

The link to the decision is provided after the jump.