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.
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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."
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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).
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• 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.

T 0561/23 - More on Rule 80

Key points

• Claim 1 of the auxiliary request at issue is amended by two alternative features that serve to make the claim novel. The features are taken from the dependent claims as granted.
• At issue is whether this complies with Rule 80.
• The Board, in machine translation: "According to the case law of the Boards of Appeal, it is generally permissible to replace a granted independent claim, which was deemed not novel or inventive in opposition proceedings, with several independent claims, provided that each of these is directed to subject-matter already defined in the granted dependent claims (see, e.g., T 1416/04, point 5.1; T 263/05, points 4.7 and 4.8; T 993/07, point 1.5; T 1679/09, points 4.2 and 4.3; T 1025/14, point 3.2; T 1191/22, point 2.4). The reason for this is that the patent proprietor must be able to maintain potentially allowable subject-matter already included in the granted set of claims."
• The phrase "provided that each of these is directed to subject-matter already defined in the granted dependent claims" seems a sufficient condition, but not necessarily a necessary requirement.
• "Granted independent claim 1 was deemed not to be novel within the meaning of Article 54(3) EPC during the opposition proceedings. It is therefore permissible to replace it with several independent claims relating to different embodiments of the blind system already defined in the granted dependent claims. "
• " The respondent [opponent] argued that alternatives (a) and (b) had to share a common general concept to comply with the requirements of Rule 80 EPC. "
• The Board does not agree: "Rule 80 EPC merely requires that an amendment be prompted by a ground for opposition, i.e., that it aims to overcome such an objection and thus prevent the patent from being revoked. While the lack of novelty in claim 1 may give rise to an objection of lack of unity, lack of unity does not constitute a ground for opposition. Furthermore, in opposition proceedings, the patent proprietor does not have the option of pursuing different inventions by means of divisional applications (see also T 1416/04, supra, point 5.1; T 263/05, supra, point 4.8). Under these circumstances, there is no reason to require the patent proprietor to choose between several dependent claims parallel to claim 1."
• The Board does not cite G 1/91, which is remarkable.
• The novelty-destroying document for the higher-ranking request was a prior right under Art. 54(3). However, "Documents cited under Art. 54(3) should be disregarded in the evaluation of unity of invention since they cannot anticipate the inventive concept of the application under examination." (Guidelines F-V, 3.1.1)

EPO 

The link to the decision is provided after the jump.

T 1899/23 - When the Board ceases to exist

Key points

• "On 1 September 2025, a new business distribution scheme (BDS) was adopted, according to which the IPC class of the patent underlying the decision under appeal (C11D) was to be allocated to Board 3.3.02 as of 1 December 2025 and the allocation of the technical and legal members of Board 3.3.06 terminated after 30 November 2025. "
• "On 4 November 2025, the case was transferred to Board 3.3.02 with effect from 1 December 2025 and the parties were informed accordingly. The composition of the Board in the present case remained unchanged." However, the three members of the Panel were not assigned to Board 3.3.02, but to different Boards.
• "In a submission dated 13 January 2026, the appellant raised an objection under Rule 106 EPC and requested "to cancel the oral proceedings and to hold oral proceedings with the Board 3.3.02 in a composition of the Board 3.3.02 in a composition meeting the requirements of the business distribution scheme dated September 1, 2025". It argued that the composition of the panel with members of previous Board 3.3.06 contravened the BDS of 1 September 2025 [27 June 2025] as none of the members belonged to Board 3.3.02, i.e. the Board the case was allocated to with effect from 1 December 2025. "
• "the appellant's final request ... implies that the panel would have to determine that members of Board 3.3.02 would have to continue the assessment of this case. The panel has no competence to decide accordingly (see Article 1(3) RPBA and Article 3, 4 BDS). [...] since the Chairman of Board 3.3.02 also did not meet the appellant's request to change the composition of the panel in this case but rather confirmed that its composition remained unchanged, there is no basis for continuing the case with members of Board 3.3.02 and its Chair or Vice Chair." (referring to G 1/21).
• " with respect to the objection under Rule 106 EPC, the Board considers, in any event, that the composition of the panel for this case was in accordance with the applicable provisions of the relevant business distribution schemes for the Technical Boards of Appeal."
• "The defects set out in Article 112a(2)(a),(b) and (d) EPC at least do not encompass a violation of the right to have the case decided by the lawfully designated judges in accordance with the business distribution scheme". However, a violation of the right to be heard is not excluded.
• " for the purposes of the present case, there is no need to decide whether a fundamental defect in the composition of the responsible panel could indeed be regarded as a violation of the right to be heard under particular circumstances (e.g. if the defect were so severe that the composition was entirely arbitrary) and what consequences this might have for the continuation of the proceedings. This is because the parties' interest to be heard by the lawfully designated judges (and, accordingly, the right to have fair proceedings) is not affected in the present case. Under these circumstances, the Board finds it appropriate to comment on the composition of the panel in this particular case."
• "The wording of Article 8 BDS of 27 June 2025 is as follows: "Cases in which before 1 January 2025 [sic] a communication has been sent or oral proceedings have been appointed shall not be affected by this business distribution scheme, nor shall those cases individually allocated in transitional provisions of previous business distribution schemes. This provision applies mutatis mutandis if the business distribution scheme is amended during the working year." (link)
• "Since both the Board's communication under Rule 15(1) RPBA and the summons to oral proceedings had already been issued before the new business distribution scheme of the Technical Boards of Appeal of 27 June 2025 entered into force, the composition of the panel as set out in the communication of 21 May 2025 had to be maintained pursuant to Article 8 BDS."
• How the Board goes from 1 January 2025 to 27 June 2025 as the relevant date, is not explained, though most likely the cut-off date was simply not updated in the June 2025 version of the BDS. 
• "The BDS does not define the measures to be taken if a Board loses its Chair and all its members and, for practical purposes, ceases to exist."
• "The Board considers that Article 8 BDS is to be applied analogously if the case is transferred to another Board because the previous Board effectively ceases to exist."
• "Hence, although the case was transferred to Board 3.3.02, the present panel, consisting of members not allocated to this Board, did not have to be replaced in the given constellation. Rather, the composition of the panel as set out previously could remain unchanged pursuant to an analogous application of Article 8 BDS, which was also confirmed by the Chair of Board 3.3.02 with communication of 15 January 2026."
• The Board finds that claim 1 involves added subject-matter and dismisses the appeal. 

EPO 

The link to the decision is provided after the jump.