R 0006/24 - (II) A difficult case for the EBA

Key points

• The petitioner complains that the TBA did not consider some of its arguments (which were not rejected as inadmissible), thereby violating its right to be heard. The petitioner points out that the written decision of the TBA did not specifically address the arguments. As such, that is correct. However, the question is whether the lack of specific written reasoning refuting the arguments demonstrates that the TBA did not consider those arguments.
• The EBA, in machine translation:  "21. The EBA agrees with the petitioner insofar as it is not immediately apparent from the decision whether and how the Chamber addressed the three arguments A to C. However, it appears that the Chamber at least took note of them from [point 3.1 of the grounds for the decision].
• [The EBA] does not share the [petitioner's] view that the mere omission of allegedly relevant arguments suggests that the party was denied its right to be heard. This view would ultimately force the Board to mention all of a party's arguments in its decision without exception. The deciding Board must primarily determine whether an argument is relevant to the decision. Nevertheless, the Board may take note of an argument and classify it as irrelevant, even if this classification is objectively erroneous. However, correcting such an error by the EBA through a request for review under Article 112a EPC would constitute impermissible substantive review of the decision.
• 23. On the other hand, the question arises: How can a party determine from a decision whether an argument deemed relevant to the decision was consciously or unconsciously ignored by the Board, or whether the Board examined it and deemed it irrelevant, if the argument is not mentioned at all (or at least not in an immediately apparent way)? This issue was also raised in the cited decision R 10/18 (see point 2.1.1.2 of the Reasons). 
• Ultimately, in that case, the Enlarged Board of Appeal examined the entire contested decision and concluded that, as a whole, it was clear that the Board had considered the arguments in question. The Enlarged Board of Appeal also noted that the Board's conclusion need not necessarily be substantively correct or comprehensible or understandable to the parties involved. In particular, it is not necessary to answer every argument of the parties (see point 2.1.2.3 of the Reasons: "Whether not answering the petitioner's essential arguments violates the right to be heard"). 
• This approach of the Enlarged Board of Appeal also appears appropriate in the present case in order to determine whether there has been a serious violation of the applicant's right to be heard."
• "The Enlarged Board of Appeal confirms the principle that parties do not have an unrestricted right to an exhaustive analysis of every single argument they put forward in support of their case. This is all the more true since it is a subjective assessment by the party whether an argument has been addressed and addressed sufficiently so that the party can understand without further difficulty why it was not accepted or considered. It follows that a party may have to accept that a decision contains no discernible reasons why an argument was not addressed further or perhaps not even mentioned. In this respect, the decision R 10/18 and the case law of the Enlarged Board of Appeal based on it are confirmed. The applicant's argument that the mere fact that an argument was not addressed or mentioned should lead to a successful request for review is rejected."

Limited but non-zero power to examine facts and merits

32. "However, this again leads to the question raised in point 23 of the communication of the Enlarged Board of Appeal cited above. An effective right must also be enforceable, and its enforcement must ultimately be capable of judicial review. The court must therefore be empowered to examine whether the right to be heard has been observed. The right to be heard enshrined in Article 113(1) EPC, and the derived right to have a party’s relevant arguments taken into account, can be perceived as effective rights only if, in review proceedings, the Enlarged Board of Appeal is able to examine not merely formally, but also effectively, whether those rights have been granted. It follows that the Enlarged Board of Appeal must, in principle, have the power to carry out such an effective examination. In other words, the possibility of an effective examination of the petition is also in the petitioner’s interest.

33. This raises the question of the permissible scope of the review. Even if it were limited to examining a rebuttable presumption, namely whether the right to be heard is to be regarded as having been observed unless the contrary is proven, the power must at least extend to examining the facts which, in the party’s view, have the potential to rebut that presumption. Where, in a particular case, a substantive assessment of a party’s submissions is indispensable for determining whether the party’s right to be heard was observed, the Enlarged Board of Appeal is also entitled to carry out such an assessment. It must be emphasised, however, that this finding by the Enlarged Board of Appeal has no formal legal effect confirming or setting aside the relevant decision-making of the Board. To that extent, the Enlarged Board of Appeal’s lack of power in this respect is not called into question (Case Law of the Boards of Appeal, V.B.3.5.3)."

• There is also a point about an argument that was, according to the other party, manifestly bound to fail and, for that reason, validly not expressly addressed in the TBA's written decision.
• The EBA, in point 43, citing from the EBA's preliminary opinion: "34. The question here arises as to what extent the Board of Appeal may and should examine the merits of an argument in order to determine whether it is manifestly unfounded and the Board could therefore leave it unanswered. Such power to examine the (at least prima facie) correctness of a party's submissions appears to contradict the fundamental prohibition against examining the correctness of the decision. However, if the EBA did not have such power, this would inevitably lead to the conclusion that it would have to find a violation of the right to be heard without exception if any objection were left unmentioned in the decision. The EBA considers this outcome untenable." (emphasis added)
• This means the EBA has competence to review whether an argument is manifestly bound to fail (on the merits). 

• 
  
• EPO 

The link to the decision is provided after the jump.

T 0847/24 - (I) Non-technical CAD method

Key points

• Claim 1 as granted is directed to "A computer-implemented method for configuring a surgical guide".
• "The Board considers that, in the context of the method defined in claim 1, the expression "computer-implemented" requires the method, i.e. all steps of the method, to involve a computer."
• "feature 1.6, interpreted as set out in point 5.2.4 above, is the only feature distinguishing the subject-matter of claim 1 of the main request from the method disclosed in D2. 
•  "It is common ground that feature 1.6 is non-technical when considered in isolation since it merely corresponds to the generation of abstract data representing a 3D structure for an implant. "
• The question is whether the method has a further technical effect, as required by G 1/19 for inventive step under the Comvik-approach.
• "Contrary to the appellant's view [proprietor's view], it is not decisive that the data produced by the claimed method, in defining the 3D structure of the configured implant, may reflect the properties of a physical object that may exist at some later point, namely the implant once manufactured. Rather, this physical object remains purely hypothetical as long as an implant having this structure is not manufactured. Hence, in the absence of a manufacturing step in claim 1, the data remains, first and foremost, mere data, which can be used in many different ways (see G 1/19, Reasons 98)."
• "The Board acknowledges that manufacturing the implant is a possible use of this data. As also pointed out in the decision under appeal (see Reasons 33.8.3), this may even be regarded as a probable use of the data. However, a possible, or even probable, technical use is not sufficient for the data to contribute to the technical character of the claimed method. What is required, in accordance with G 1/19, Reasons 137, is that the technical use be at least implicitly specified in the claim.
• "the Board agrees with the respondent [opponent] and the opposition division that although manufacturing the implant is a possible and even probable use of the 3D implant structure determined in accordance with feature 1.6, other uses which do not have any technical effect can also be realistically envisaged. ... For example, a user may simply want to compare the configured implant with existing implants, such as off-the-shelf implants. At least in such a case, no impact on physical reality would result from carrying out the claimed method."
• Compare T 799/24, not cited in the present decision.
• " It follows that feature 1.6 does not contribute to the technical character of the claimed method, certainly not over substantially the whole scope of claim 1. This feature thus cannot support the presence of an inventive step starting from D2."
• The above discussion was not specifically about feature 1.6. G 1/19 seems to consider whether the claimed method as a whole provides a 'further technical effect'.  Feature 1.6 is "determining a monolithic three-dimensional structure for the implant"  and could also be done mentally (it seems to me).
• The TBA includes the statement that "A feature that is non-technical as such may, however, still contribute to the technical character of the claimed invention as a whole (see G 1/19, Reasons 32; see also order of the UPC Court of Appeal of 17 April 2026 in Abbott v. Sinocare, UPC_CoA_901/2025, Headnote 1 and Reasons 112). A central issue is therefore whether this feature contributes to the technical character of the method defined by claim 1. Only if this is the case, and only to this extent, can it be considered for inventive step, following the COMVIK approach (see G 1/19, Reasons 84).".
• It may be observed that feature 1.6 does not contribute to the technical character of the claimed method as required by Article 52 (Article 52 is complied with by the claim reciting "computer implemented" in a different feature).
• 
  

EPO 

The link to the decision is provided after the jump.

J 0011/25 - Inadmissible appeal parent, status divisional

Key points

• In T 1385/24, the applicant filed an appeal against a refusal decision dated 18.07.2024. The notice of appeal was filed in time, and the appeal fee was paid, but the Statement of grounds was filed late. No remedy was applied for. The appeal was rejected as inadmissible by a decision dated 20.02.2025 (issued in writing and notified on 26.02.2025).
• A divisional application was filed on 05.12.2024. Was the parent application pending on that day?
• The Board, in machine translation: " The Board is therefore of the opinion that the view expressed in J 22/13 should no longer be followed. "
• J 22/13: "Since the divisional application was filed only after the time limit for filing the statement of grounds of appeal in the parent application had already expired, the Board considered the parent application to be no longer pending at that point: there was no longer any possibility of carrying out a substantive examination of the parent application. After the expiry of the time limit for filing the statement of grounds of appeal, no ordinary legal remedies existed, and the decision became final"
• "if – as in the present case – an appeal that was initially validly filed subsequently becomes inadmissible because the statement of grounds of appeal is not filed or is filed only after the expiry of the prescribed time limit, this is not a sufficient reason to make an exception to Article 106(1), second sentence, EPC and to consider the suspensive effect that initially took effect as having been lifted as soon as the time limit for filing the statement of grounds of appeal expired. Rather, the suspensive effect ends only with the conclusion of the appeal proceedings, in the present case, that is, after the Board of Appeal has determined the inadmissibility of the appeal by decision. This termination has no retroactive effect with regard to divisional applications that were filed while the suspensive effect was in force. "
• "it follows from the decision of the Enlarged Board of Appeal G 2/19 that it is very problematic to adopt a general concept of a manifestly inadmissible appeal. [The EBA] therefore declined to answer question 1, which used this concept. The  question, with its criterion of an "appeal that is inadmissible at first glance," relieD on an indeterminate legal concept that does not originate in the EPC and for whose specification no further indications can be found therein (Reasons A.IV)."
• G 2/19, question 1: "1. In appeal proceedings, is the right to oral proceedings under Article 116 EPC limited if the appeal is manifestly inadmissible?"
• It may be noted that German national law (national patent law) has the concept and dispenses with hearings in such cases. However, the details of the German practice are unclear to me.
• The published decision is anonymised because the divisional application (EP24217722.8) is not yet published.
• The Legal Board seems to suggest that a timely appeal by the applicant/proprietor against a grant decision may open the possibility of filing a divisional application, following J 1/24 and disagreeing with T 700/25, but leaves that issue open.
• The Legal Board recalls that a late-filed appeal (notice of appeal and/or payment of the appeal fee) is not inadmissible but is deemed not to have been filed (G 1/18) and explains that, hence, such an appeal does not open the possibility of filing an appeal. 

EPO 

The link to the decision is provided after the jump.

R 0006/24 - (I) When to object under Rule 106

Key points

• The EBA holds that a petitioner was not required to raise an objection under Rule 106 with respect to certain grounds for the petition. This is, of course, highly interesting, even more so because the petitioner's complaint is not about surprise reasoning in the Board's decision, but on the Board's (alleged) failure to address certain arguments of the petitioner (opponent). 
• The EBA, in translation: " the petitioner [opponent] raises a total of seven essentially independent objections alleging a violation of her right to be heard, which are summarized under the following three "aspects": (1) The Chamber did not properly consider several arguments put forward by the applicant concerning the interpretation and disclosure of [certain claim features].  (2) The Board also failed to address certain arguments  [of the petitioner/ opponent] ..."
• The EBA finds the first two aspects admissible even without a corresponding Rule 106 EPC objection.
• "a [Rule 106 objection ]was not already prompted by the communication to the Board of Appeal pursuant to Article 15(1) RPBA".
• "a distinction must be made between procedural acts of the Board that are still pending and those that are demonstrably completed, such as a procedural measure or an admission decision that has a direct (procedurally relevant) legal consequence. An objection under Rule 106 EPC during the ongoing proceedings can only be expected for the latter."
• The EBA here seems to depart from R 17/23 (blog post).
• " The petitioner is correct in asserting that Article 113(1) EPC, and consequently also Article 112(2)(c) EPC, refers to the final decision on the merits by the body competent to decide the case, and not to its preliminary opinions. The petitioner is also correct in asserting that it is unreasonable to expect a party to raise a formal objection during the proceedings with regard to every single statement made by the Board, in the expectation that this objection will be reflected unchanged in the decision and perhaps serve as grounds for a petition for review. Such a practice unduly delays the proceedings, since the Board must not only take note of an objection under Rule 106 EPC, but also address and decide upon it [CLBA V.B.3.7.2.5] ... Therefore, the grounds for the application relating to the first two aspects are admissible with regard to Rule 106 EPC."
• Regarding 'decide upon it':  this follows from Rule 106: "only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except ..." (see also R 6/22: the party raising the objection must also check if the Board explicitly dismisses it and if not, raise the objection more clearly). 
• The EBA does not explicitly apply these general statements to the facts of the case. This makes the decision difficult to understand. The TBA had, in the preliminary opinion, referred to Art. 13(2) RPBA in connection with any submissions the opponent wished to file afterwards. The opponent indeed filed a letter after the preliminary opinion. I understand that the arguments presented in that letter were (allegedly) not dealt with in the preliminary opinion. It may be inferred that since there was no decision to hold the letter inadmissible under Art. 13(2) RPBA, the opponent could assume that the TBA would consider the arguments in that letter on their merits in the written decision. 
• The EBA holds that Rule 106 objections are only required for procedural measures or admissibility decisions that have a direct (procedurally relevant) legal consequence (and not for any statements in the preliminary opinion).
• It remains to be seen how a TBA deals with a valid Rule 106 objection after the procedural decision has been announced during oral proceedings. May the TBA reverse the procedural decision?

 EPO 

The link to the decision is provided after the jump.

T 0080/24 - Request to hold a request inadmissible

Key points

• "At the oral proceedings before the board, the opponent requested that auxiliary request 13 not be admitted into the appeal proceedings due to a belated substantiation of this request." 
• "The opponent argued that auxiliary request 13 had not been substantiated when it was first filed in opposition proceedings as auxiliary request 1 in the patent proprietor's reply of 16 December 2022 to the notice of opposition. The request had also not been substantiated when it was re-filed as auxiliary request 13 with the patent proprietor's reply to the opponent's appeal."
• "The patent proprietor requested that the opponent's request not be admitted into the appeal proceedings as it was late-filed and there were no exceptional circumstances justifying its admittance at such a late stage of the proceedings."
• "the opponent argued that [the objection against the auxiliary request] had been raised at a late stage for tactical reasons. If it would have requested the non-admittance of auxiliary request 13 immediately after it was filed with the patent proprietor's reply, there would have still been an opportunity for the patent proprietor to then substantiate the request before the notification of the board's communication. For this reason the opponent decided to wait until the oral proceedings to make the request not to admit the auxiliary request."
• The Board finds AR-13 to be allowable.
• As a comment, there is a tension. On the one hand, I understand that the admissibility of submissions is examined by the Board ex officio, also in inter partes cases. On the other hand, the opponent's tactical behaviour is not to be rewarded. The Board does not indicate whether it examined the requirement of Art. 12(3) RPBA. Perhaps it was self-evident how the feature added to the claim in the AR was suitable to provide for an inventive step.

EPO 

The link to the decision is provided after the jump.

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.