T 0842/24 - No reversal of decision OD to admit

Key points

• The Board, in the headnote: "There is no legal basis for reversing in appeal a decision by the opposition division to admit new evidence into the opposition proceedings and thus to retroactively reject in appeal specific facts which had been admitted into the appeal proceedings if that evidence formed the basis of the decision taken on substantive grounds. It cannot be derived from G 7/93 that the criteria stated therein for overruling the way in which a department of first instance has exercised its discretion also apply to the case where evidence was admitted and the decision taken on substantive grounds was based thereon. "
• This approach seems correct to me. However, the Board still reviews for a fundamental procedural deficiency (which would justify a remittal under Art. 11 RPBA).
• "it is concluded that under the present circumstances the Board is not empowered to review the way the opposition division used its discretion to admit D29 into the proceedings. D29 is therefore in the proceedings. [D29 was filed by the opponent]. 
• "The patent proprietor submits that there was insufficient time to reasonably address, i.e. to familiarize themselves and react to the issues arising from D29,  ... The patent proprietor concludes that the timing of the filing of D29 caused them an unfair disadvantage 
• The Board: "the admittance of a new evidence, even if its filing was not justified, does not in itself result in unequal treatment of the parties. Rather, it is the absence of a proper opportunity for the other party to respond to the new evidence and submissions based thereupon once it has been admitted that leads to unequal treatment of the parties, which is in essence the patent proprietor's opinion,"
• Follows a detailed review of the events leading up to the OD decision. 
• "Deciding against the patent proprietor on the basis of a new objection raised during the oral proceedings, in the light of an experimental report filed just two days earlier, without postponing or holding second oral proceedings could be regarded as unfair to the patent proprietor. "
• "neither the minutes of the oral proceedings nor the impugned decision refer to an explicit request by the patent proprietor not to admit document D29 into the proceedings."
• In some cases, the right to complain may indeed be waived (or forfeited) by failing to request that a document not be admitted. However, generally, the party filing the document should request that it is admitted, and the other party (non-movant) only has to object to the admissibility (I know the custom is now different). Furthermore, if it is clear that the OD will decide on the admissibility of a late submission anyway, any request of the non-movant party for such a decision will be superfluous. Hence, one cannot derive too much from this point. 
• At point 38 of the reasons for the decision, the opposition division found that the patent proprietor was in a position to interpret without undue burden the calculations made in document D29. This document was discussed and understood by all parties at the oral proceedings and, for this reason, was admitted into evidence.
• Understanding a calculation does not necessarily mean you are able to refute it. Refuting the reasoning may need more time. 
• "However, it is also noted that the patent proprietor took position on the objection and, most importantly, did not request for oral proceedings to be postponed, or for more time to respond to this separate objection of lack of novelty, even after the opposition division had announced their preliminary opinion that the subject-matter of claim 1 was not novel over Figure 4 of D10 (minutes, section 2, last paragraph). "
• As a comment, the point about "did not request for oral proceedings to be postponed" is perhaps in line with the current case law, but I doubt if it is correct, especially in cases where the opponent is the non-movant party and the party that challenges the status quo.
• "Furthermore, a decision by the opposition division on substantive issues, based on evidence which has been admitted into the proceedings, can still be challenged in substance, on the ground that this evidence lacks relevance or probative value."
• In fact, the non-movant party complaining about a violation of its right to be heard, should probably also submit a substantive rebuttal in appeal. If the non-movant party has no substantive arguments to challenge the OD's finding, the procedural point is moot (or harmless).
• The proprietor filed D31 with the SoG. "Its filing constitutes therefore a genuine attempt to address in a timely manner the objection of lack of novelty over the particles shown in Figure 4 of D10 in the light of D29 which was raised for the first time during the oral proceedings before the opposition division. In these circumstances the Board exercises its discretion pursuant to Article 12(4) RPBA by admitting D31 into the proceedings."
• Note, the conclusion that D31 constitutes a genuine attempt to rebut D29 is an examination for prima facie relevance. 
• "the assessment of the patent proprietor's submissions based on experimental report D31 when examining the opponent's lack of novelty objection over the particles shown in Figure 4 of D10 in the light of D29 amounts to a fresh case on novelty. This in itself constitutes a special reason within the meaning of Article 11 RPBA justifying to remit the case to the opposition division."

Sufficiency / procedural violation

• "The opponent raised two separate objections of lack of sufficiency of disclosure of the subject-matter of claim 1 [in the procedure before the OD] , namely one relating to the measurement of the surface smoothness and one relating to the absence of use of a plasticizer. Both objections are based on a ground of opposition not addressed during the period to file an opposition. The opposition division only dealt with the first objection in the contested decision. [The OD] Not dealing with the second objection while maintaining the patent in amended form amounts to a substantial procedural violation, as explained in the following.

New argument in reply to late development before OD

• The reverse engineering argument [was filed by the proprietor with its reply to the opponent's appeal and] is an amendment to the patent proprietor's case within the meaning of Article 12(4) RPBA. This argument constitutes a relevant and direct response to the surface smoothness measurement insufficiency objection raised [by the opponent]  two months before the oral proceedings [before the OD] and admitted into the proceedings by the opposition division. Its filing became necessary, only once the opponent had filed an appeal and contested again that the measurement of the surface smoothness gave rise to an insufficiency objection. For this reason, the Board exercises its discretion pursuant to Article 12(4) RPBA by admitting the reverse engineering argument into the proceedings.

Objection not discussed in OD's decision

• "the opponent submits that the plasticizer insufficiency objection was not taken into account by the opposition division, which would constitute a violation of their right to be heard  "
• "the patent proprietor's opinion that the plasticizer insufficiency objection was not actively maintained throughout the first instance proceedings can apparently be based solely on the fact that the minutes of the oral proceedings do not indicate that this objection was discussed and therefore not repeated by the opponent. However, the minutes do not indicate either that this objection was withdrawn. In the Board's view, not addressing an objection submitted in writing during the oral proceedings does not necessarily imply that the objection is withdrawn. This is because written submissions form the basis of the EPO proceedings and are complemented where necessary by an opportunity for a party to present and argue its case orally (G 4/95, Reasons 4 (c) and G 1/21, Reasons 40). Parties have the opportunity to repeat or expand upon some of the written submissions they consider necessary for defending their case. However, they are under no obligation to address all written submissions orally. "
• "nothing from the debates during the oral proceedings implies that the opponent had not maintained the plasticizer insufficiency objection.
• 10.5 On that basis, the failure of the opposition division to give due consideration to the plasticizer insufficiency objection which from the opponent's submissions is an essential aspect of the alleged insufficiency disclosure of the subject-matter of claim 1, constitutes a substantial violation of their right to be heard in contravention of Article 113(1) EPC. This procedural violation is a fundamental procedural deficiency in the first-instance proceedings "

• See also R 6/24. 

EPO 

The link to the decision is provided after the jump.

T 0873/24 - Pending G 1/26 - The patent family

Key points

• This new referral regarding claim interpretation has already received considerable attention.
• Let's discuss another aspect of it. 
• There are 107 auxiliary requests. I don't know if that is a normal number of ARs nowadays, but the Board doesn't seem to consider it unusual.
• "The patent proprietor/appellant 1 requests that the decision under appeal be set aside and that the opposition be rejected, or in the alternative, that the patent be maintained in amended form based on auxiliary requests 1-85, filed with the grounds of appeal, or based on one of auxiliary requests 86-103, filed by letter dated 24 July 2025, or based on one of auxiliary requests 104-107, filed by letter dated 16 January 2026."
• The patent is opposed by POSCO.
• It has a divisional application and two parents.
• The grandparent was granted in 2017 and was opposed by 5 opponents (not including POSCO). The patent was maintained in amended form.
• The parent was opposed by three opponents (not including POSCO) and maintained in amended form.
• The filing date is 30.10.2006. 
• The divisional application is still pending. I'm not sure whether the EPO will be able to complete the divisional grant procedure or the current opposition procedure before the end of the patent term. 

EPO 

The link to the decision is provided after the jump.

T 0840/24 - Opponent's prior use and confidentiality of sale

Key points

• The opponent is Siemens. D1 is "Company publication "Desiro Class 380", Siemens AG". The opponent asserts public prior use based on D1, i.e. public prior use by the opponent, namely a sale of the vehicle by the opponent to a customer. 
• The Board, in translation: "The Opposition Division concluded that the sale had made the prior use of "ScotRail Desiro Class 380" freely available to the public and that there were no specific circumstances that would justify the existence of a confidentiality obligation"
• "Documents D1 and D2 show that before the priority date of the patent, 4 July 2017, Desiro Class 380 rail vehicles were sold and delivered by the respondent [= the opponent] to the Scottish railway company ScotRail in July 2010."
• "In connection with the possible existence of a confidentiality agreement, the Opposition Division has already referred to decision T 2037/18 (point 4 of the headnote), according to which there is no fundamental presumption of confidentiality between manufacturers of railway vehicles and railway operating companies with regard to delivered and accepted vehicles.
• "Furthermore, each party must present and prove the facts favorable to its case. Therefore, in accordance with the principle "negativa non sunt probanda" recognized in the case law of the Boards of Appeal, any binding effect of a confidentiality agreement on the part of the recipient must be presented and proven by the patent proprietor (see case law, IV.C.2.2.8i))."
• As a comment, the principle "negativa non sunt probanda" is generally correct (but not a hard rule, I would add). In this case, all the evidence was in the sphere of the opponent, and the opponent must prove the alleged public prior use up to the hilt (I know that rule was 'abolished' in the GL 2026, but still).
• The Board's reasoning is obiter because the Board holds that the prior use lacks a feature of the claim. Hence, the claim is novel over it. There were no other objections, and the Board sets aside the impugned decision and maintains the patent as granted.
• 
  

EPO 

The link to the decision is provided after the jump.

T 0779/24 - Double patenting in opposition

Key points

• How to deal with double patenting (G 4/19) in opposition? In the same manner as clarity (G 3/14), according to this decision.
• "2. ... opponent 8 maintained their objection of double patenting under Article 125 EPC raised during the opposition proceedings, because claim 1 of the main request would be identical in scope with claim 1 of the patent EP 3 744 326, filed as a divisional application of the present patent and granted on 6 December 2023. 
• In the impugned decision, the opposition division considered that double patenting was not a ground of opposition and that the amendments to the present main request were not causative of the potential objection of double patenting. Consequently, in line with G 3/14, the issue of double patenting was not to be examined in the opposition proceedings.
• 2.3 [ ] opponent 8 did not provide any arguments why the opposition division's reasoning regarding the non-admittance of the objection was not correct. The objection of double-patenting does therefore not form part of the appeal proceedings."

EPO 

The link to the decision is provided after the jump.

T 1077/24 - Cannot take advantage of its own late filing

Key points

• The OD decided to maintain the patent in amended form based on the set of claims that AR-4 in the appeal. 
• The proprietor had filed AR-4 eight days before the oral proceedings before the OD.  The opponent appeals and files documents A21 and A22 with the SoG in response to AR-4. A21 and A22 demonstrate that the added feature of AR-4 was obvious.
• The proprietor files AR-4a with its appeal reply. 
• The Board finds AR-4 to be obvious. 
• The Board does not admit AR-4a. "The patent proprietor's further argument that auxiliary request 4a was a reaction to A21 and A22 only being filed on appeal is irrelevant. However, even if this argument is taken into consideration, it cannot succeed. As set out above, opponent 2 filed A21 and A22 as a reaction to auxiliary request 4 only being filed shortly before the oral proceedings before the opposition division. The patent proprietor cannot take advantage of its own late filing of an auxiliary request in order to have the opportunity to file yet another request later on appeal."
• The above reasoning is given obiter. The supporting reason is: "Admitting auxiliary request 4a would have created a fresh case on inventive step, to be discussed for the first time on appeal. This would have increased the complexity of the case and been detrimental to procedural economy (Article 12(4) RPBA). Therefore, the board decided not to admit auxiliary request 4a pursuant to Article 12(4) and (6) RPBA."

EPO 

The link to the decision is provided after the jump.

T 0443/24 - Different term, same thing, not novel

Key points

• " whether D9 anticipates that the aortic section has "diamond-shaped cells" depends on how this term is interpreted. As set out in the Order of G 1/24, the description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention. 
• "The contested patent neither defines a diamond shape nor explicitly states what is meant by "diamond-shaped cells". However, it refers to cells that are essentially identical in shape to those in the top row of cells in Figure 1 of D9 as "diamond-shaped cells" (see, for example, the cells in Figure 1 of the contested patent and the corresponding description in column 3, lines 41 to 43; compare with the shape of the cells in the top row in Figure 1 of D9). Accordingly, the term "diamond-shaped cells" in feature 1.4 of the contested patent is construed as encompassing cells such as the cells of the top row of cells in Figure 1 of D9. 
• "This conclusion is not altered by the fact that D9 uses the term "onion-shaped cell structure" (page 20, line 12) rather than "diamond-shaped cells" to describe the shape, as anticipation does not require the same literal term to be explicitly disclosed."
• 
  

EPO 

The link to the decision is provided after the jump.

R 0005/24 - Successful petition for review

Key points

• This is the 14th successful petition for review. It was published on 01.04.2026. 
• In the opposition appeal, the proprietor had filed amended claims (namely, AR-2). Full substantiation of the amendments, i.e. complete arguments for the admissibility of the amendment, followed only after the Board's preliminary opinion, with a letter of 19 May 2023.
• The TBA decided to hold the amended claims inadmissible (and revoked the patent). However, the Board's reasoning regarding the inadmissibility of AR-2 does not consider at all the arguments advanced by the proprietor in its letter of 19 May 2023.
• The EBA finds this a violation of the proprietor's right to be heard. The Board notes that if the TBA considered the proprietor's letter of 19 May 2923 inadmissible, it should have included a reasoned decision to that effect in its written decision. 
• The EBA is brief on admissibility, but the point is interesting. The proprietor had raised an objection under Rule 106 after the Board had announced that the amended claims at issue (AR-2) were not admitted. However, at that point, the proprietor did not know that the Board was disregarding or overlooking the proprietor's argument in the letter of 19 May 2023. The proprietor objected to the decision to hold AR-2 inadmissible as such. Would the petition have been admissible without the objection under Rule 106? 
• That question was answered in R 6/24 (after the time of writing this post).
• 
  
• 
  
• The successful petitions are now: R 5/24, 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.