T 0106/13 - Not submitting the article

Key points

• In this opposition appeal, the appealing opponent argued that the claims were not novel over D1 (published in 1985) read with common general knowledge of 2005 (the filing date of the opposed patent), as evidenced by N1. N1 is an article on a website, but only the abstract and URL was submitted by the opponent. The opponent explained that it had refrained from filing the complete article due to copyright issues. The article was easily accessible for the EPO, according to opponent (a large company represented by an employee). 
• The Board does not accept this. " Die Beschwerdeführerin hat von der Vorlage des gesamten Artikels abgesehen, da die ihrer Meinung nach damit verbundene Aufnahme des Artikels in den öffentlichen Teil der Beschwerdeakte ihr möglicherweise als Verletzung eines bestehenden Copyrights angelastet werden könnte. Dieser Grund ändert nichts an der Tatsache, dass der Artikel selbst nicht eingereicht wurde und daher keine Berücksichtigung im Verfahren finden konnte" 
• The Board also does  not accept that the missing feature of D1 is provided by N1. For novelty, a prior art document is to be read as on its publication date, according to established case law. 

EPO T 0106/13 -  link

X. Die Argumente der Beschwerdeführerin [opponent] lassen sich wie folgt zusammenfassen.

Anspruch 1 sei nicht neu gegenüber D1/N1. Der Fachmann lese das 1985 veröffentlichte Dokument D1 unter Berücksichtigung seines Fachwissens aus dem Jahr 2005, nämlich zum Zeitpunkt der dem Streitpatent zugrundeliegenden Anmeldung. Der Fachmann verstehe dann die in D1 nicht explizit genannten Merkmale, wie z.B. Abfangregelventile, in D1 als implizit offenbart, weil im Jahre 2005 in (fast) allen Dampfturbinenanlagen Zwischenüberhitzer und dazugehörige Abfangregelventile angeordnet seien.

N1 dokumentiere das allgemeine Fachwissen. Es sei rechtzeitig mit der Beschwerdebegründung genannt. Es sei klar identifiziert, so dass sein Inhalt der Beschwerdegegnerin und dem EPA zugänglich sei.

Entscheidungsgründe

2.2 In der Beschwerdebegründung hat die Beschwerdeführerin vorgetragen, dass der Gegenstand aller Ansprüche des Patents gegenüber D1 and N1 entweder nicht neu sei oder nicht auf erfinderischer Tätigkeit beruhe.

N1 wurde erstmals im Verfahren zusammen mit der Beschwerdebegründungvorgelegt.

Der Einwand mangelnder Neuheit gegenüber diesen Dokumenten wurde allerdings, wie auch von der Beschwerdeführerin in der mündlichen Verhandlung ausdrücklich zugestanden, in den Beschwerdegründen nicht substantiiert, sondern erst im Schreiben vom 4. November 2017 in Antwort auf die Kammermitteilung.

T 0330/14 - A kind of inescapable priority trap

Key points

• In this case, priority was claimed from US provisional, E10 which is identical to the application as filed. However, the applicant had filed a second US provisional E11, two day before E10, and forming the basis for Euro-PCT application E2. The content of the two priority documents is not exactly the same, but the applications are related. According to the opponent, either the present claims lack basis in the application as filed, or the claims have basis in the application as filed, and are then equally disclosed in E11, making E11 the "first application", the priority invalid and E2 a novelty destroying Article 54(3) prior right. 
• The Board recalls that " the Enlarged Board has stressed the importance of applying this "gold standard" as a uniform concept of disclosure with reference to Articles 54, 87 and 123 EPC". 
• The Board also states that it "has some sympathy with the [proprietor's] argument that a skilled person would not directly and unambiguously derive the subject-matter of claim 1 of the main request from E11 [because this involves a selection from three lists]. However, applying the gold standard to the disclosure of the application as filed the board comes to the conclusion that, as explained below, the subject-matter of claim 1 of the main request does not comply with Article 123(2) EPC" because it involves the selection of four features from the application as filed.

EPO T 0330/14 - link

III. The opposition division held that the subject-matter of claim 1 of the main request and the eleven auxiliary requests complied with Articles 123(2), 83 and 84 EPC.

Regarding Article 123(2) EPC, the opposition division found that the subject-matter of claim 1 of the main request and of all auxiliary requests was directly and unambiguously derivable from the application as filed, considered as a whole. Since the application as filed was identical to the priority document E10, the claimed subject-matter was directly and unambiguously derivable from E10 as well.

Reasons for the Decision

1. In the statement setting out the grounds of appeal, the appellant [patentee] argued that the method defined in claim 1 of the main request had been disclosed for the first time in E10 (the priority document of the patent in suit) and not in E11 (the priority document of E2). Therefore, the subject-matter of the claims of the main request could validly claim priority from E10, with the result that the relevant date for assessing novelty was 19 March 2004. Under those circumstances, E2 was not state of the art under Article 54 EPC.

T 1476/14 - Challenging witnesses

Key points

• The patentee appealed the decision revoking the patent. The OD had held a witness hearing about the alleged public prior use at a trade fair (of two witnesses), considering it proven and novelty destroying for the (then) main request. The patentee tries to challenge the witness hearing in appeal. The Board is not very open to the objections. The small inconsistencies between the testimonies of the two witnesses are not prejudicial. The fact that the witnesses had met with the representative of the opponent at the evening before the hearing, is neither prejudicial because the mere possibility of coordination of the testimonies is not sufficient. 
• The Board: "Wenn aber schon allein die bloße Möglichkeit einer vorherigen Abstimmung [between witnesses] genügte, um den Inhalt der späteren Aussagen zu disqualifizieren, könnte kaum je eine Zeugenaussage Berücksichtigung finden. Maßgeblich ist daher vielmehr, ob die Zeugenaussagen als solche einen konkreten Verdacht dafür liefern, dass die Zeugen sich zuvor untereinander abgestimmt haben." 
• Moreover, the patentee pointed out (in the appeal) an inconsistency in the earlier testimonies, but admitted that he had refrained from pointing it out during the witness hearing because the witnesses could then have adapted their testimony. The Board, in a rather German sentence: "Aus einem solchen eigenen Versäumnis kann die Beschwerdeführerin in der Beschwerdeinstanz jedoch schon zum einen deswegen nichts mehr für sich herleiten, weil sie sich insoweit freiwillig ihrer Rechte begeben hat, wohl auch weil sie mit einer derartigen Fragestellung sogar nach ihrem eigenen Verständnis eine Zeugenaussage herausgefordert hätte, die zu ihren eigenen Lasten gegangen wäre." 
• In addition, the Board does not admit a request (filed for the first time in appeal) with a feature that aims to provide novelty over the public prior use. In particular because this would necessitate a new witness hearing. 

EPO T 1476/14 -  link

Hauptantrag

2. Neuheit gegenüber der offenkundigen Vorbenutzung ANPIC

2.1 Von der Einspruchsabteilung wurde entschieden, dass der Gegenstand des Anspruchs 1 des Hauptantrags unter anderem im Lichte der Vorbenutzung "ANPIC" nicht neu sei. Bei dieser Entscheidung stützte sich die Einspruchsabteilung auf die während der mündlichen Verhandlung gemachten Zeugenaussagen der Herren Rodriguez Lee, Giorgianni und Fierro Rodriguez.

J 0007/81 - (Classic) Payment to bank account held by EPO

Key points

• By way of exception, today a post about an old decision: J 7/81. 
• Article 5(1) Rfees indicates that there are two methods of payment: " by payment or transfer to a bank account held by the Office" (next to those allowed under Article 5(2) Rfees, e.g. debit orders). 
• Article 7(3)(a) Rfees gives the rule that payment can be considered made in time if the payer " effected the payment through a banking establishment" before the end of the time limit (the other possibility is that the payer " duly gave an order to a banking establishment to transfer the amount of the payment" 
• Personally, I only use bank transfer (logging in on the bank's website and giving the transfer order). Being a millennial, I have wondered for some time what "payment to a bank account held by the Office" in Rfees 5(1) actually means.
• J 7/81 gives an answer: in the old days when the EPO had numerous bank accounts with numerous banks, you could go with some cash to a branch of the bank, and pay the sum in cash at the counter " for the EPO account" . The bank would take the cash, and credit the EPO account (kept by it) with the sum. 
• In J 7/81, the cash was accepted by one branch, but the EPO account was kept (on paper?) in another branch. The latter branch was informed of the payment only after some delay and after the expiration of the time limit, and credited the EPO account accordingly also after the time limit. In J 7/81, it was confirmed that the date of payment was the date the EPO account was credited, not the date of cash receipt. 

EPO J 0007/81 (J 7/81) - link

Summary of Facts and Submissions

I. The European patent application concerned (not published) was filed on 28 November 1980. On 2 March 1981 the sum of FF 5 290, paid by the applicant and covering the amount of FF 4 500 for the filing and search fees, was entered in the EPO account. It has been established that this sum was paid in cash on 29 December 1980 by the applicant at the counter of the Auxerre (Yonne) branch of the Banque Nationale de Paris (BNP) marked "for the EPO account". This banking establishment's agency in Paris, "France étranger", claimed however not to have received the necessary instructions to credit the EPO until 2 March 1981.

Reasons for the Decision

4. The date of the payment in suit could not be that stated on the "cash receipt" given by the bank to the debtor: 29 December 1980, but the date on which the sum was credited to the EPO: 2 March 1981. This is clear from Article 8 of the Rules relating to Fees which leaves no room for uncertainty in interpretation. [...] A cash payment to a bank in the national currency of the country in which the bank is located [...] constitutes a payment to a bank account held by the Office, which is therefore not deemed to be made until the date on which the sum is entered in that account.

T 0282/12 - Reverse application of partial priority

Key points

• In this appeal, novelty of claim 1 had to be decided of novelty over the claimed "dosage form" over a public prior use in the priority interval. The priority document D1 and claim 1 both included a range of 3 - 33%. However, D1 was a continuation in part, and there was an earlier filed patent application D22 relating to the same "dosage form" as claimed, but with 5 - 33% as range. 
• The Board decides that "in respect of the sub-range 5% to 33% D1 is not the first application within the meaning of Article 87(1) EPC. It follows that the part of claim 1 of the main request concerning the dosage forms wherein the gap width is between 5% to 33% of the length of the dosage form is not entitled to the priority date of D1". 
• Hence, the priority is partially invalid. However, this leads to lack of novelty over the public prior use (if the prior use is proven). "This part of claim 1 of the main request is the relevant one in relation to the alleged prior use since, [the public prior use had 17% according to the opponent] ". Accordingly, the case is remitted.

EPO Headnote

For reasons of consistency, the rationale of decision G 1/15 (concept of partial priority) must also apply in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Article 87(1) EPC. Indeed, just as a priority application and a patent claiming priority therefrom may partially relate to the same invention, the priority application and an earlier application filed by the same applicant may also partially relate to the same invention. In that case, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application (see points 2.1 to 2.7).

EPO T 0282/12 / EPO T 282/12 - link

Reasons for the Decision

Main request

1. The appellant challenges the novelty of claim 1 on the basis of the public prior use of the product "Extra Strength Tylenol Rapid Release Gels". In its statement setting out the grounds of appeal it explains that this product is a coated oral dosage form of acetaminophen characterised inter alia by the presence of two gelatinous coatings that form a gap through which a subcoating is exposed, this gap having a width which is approximately 17% of the length of the dosage form.

Since the public prior use of this product allegedly occurred during the priority interval, it is necessary to assess the validity of the priority date claimed in order to establish whether the prior use forms part of the prior art pursuant to Article 54(2) EPC.

2. Assessment of priority

2.1 The dosage form of the main request comprises a first and a second gelatinous coating that do not abut or overlap with one another, thereby forming a gap through which a sub-coating is exposed.

In claim 1 of the main request this gap is set as being 3% to 33% of the length of the dosage from. The same range 3% to 33% is disclosed in the priority document D1 (paragraph [0109]). By contrast D22, an earlier application of the appellant relating to the same kind of gelatinous coated dosage forms, recites a range of 5% to 33% (paragraph [0107]).

2.2 It is not disputed by the parties, that the priority application D1 discloses the subject-matter of claim 1 of the main request.

The appellant contests, however, the validity of the priority claim on the basis of the argument that document D1 is not the first application, within the meaning of Article 87(1) EPC, disclosing the subject-matter of the main request. In its view, the first application is document D22, of which D1 is a continuation-in-part.

T 2016/12 - Opponent status lost in merger

Key points

• In this case, the opponent had filed the appeal. The opponent was Alstom Technlogy Ltd, the patentee was GE Company. Alstom's power business was aquired by GE, but " a part of Alstom's business, namely that relating to Alstom's newer gas turbines and those still under development () was to be divested to the Ansaldo Energia group" (for EU competition law reasons).   The business relating to older generation turbines remained with GE. The question therefore was raised who the appellant was and whether the opposition had been transferred with the business assets. 
• " The Board cannot follow the argument presented by [the purported appellant] in the oral proceedings, that the opposition evidently related to the turbines GT26 and GT36 which constituted newer technology, in contrast to the older gas turbines GT13 which were acquired by the GE group and remained with it. It is not apparent to the Board that the patent in suit relates specifically to these turbines developed by the opponent and former competitor of the patent proprietor. " 
• " In case a transfer is not unequivocally proven, the original party to the proceedings would normally continue to be considered as the appellant."  However, the evidence on file shows that the original opponent, Alstom Technlogy Ltd, had also been subject to a demerger / separation. 
• " Under these circumstances, the Board cannot reliably establish, who is the owner of the business assets to which the present opposition and appeal belong. Consequently the Board cannot continue the proceedings, which therefore have to be terminated." 

EPO T 2016/12 -  link

Summary of Facts and Submissions

I. The opponent, Alstom Technology Ltd (in the following also abbreviated to "ATech Ltd"), filed an appeal against the interlocutory decision of the opposition division dated 13 July 2012, in which it was held that the European patent no. 1 079 071 in amended form met the requirements of the EPC.

II. With letters of 1 April 2016, 9 May 2016, 22 November 2016 and 5 September 2017, sent by a company named "General Electric Technology GmbH" (in the following also abbreviated to "GETech GmbH"), located at the same address as the above-mentioned opponent/appellant, the Board was informed that, as a result of the acquisition of Alstom's power business by the General Electric (GE) group, the business sector and business interests to which the present opposition and appeal related were transferred to "Ansaldo Energia Switzerland AG" (in the following abbreviated to "AES AG"). The former opponent/appellant, ATech Ltd, nevertheless still existed after a purported change of name under its new name GETech GmbH.

T 0796/12 - Dissolved opponent

Key points

• " The Proprietor, for the first time in a letter [] that reached the Board at 16.30 hours on the day before the oral proceedings, raised the objection that the company [Opponent] GmbH, which was registered as the Appellant, had been dissolved as a result of a bankruptcy procedure before the appeal was filed. " 
• The Board can refer to G 1/13 (about restoration of existence of UK Ltd. company which was opponent), for the summary of German company law therein. The Board concludes that the Opponent as GmbH had continued to exist because it would have at least one asset, namely the opponent status.  
• " the Board therefore holds that the Appellant-Opponent keeps being a party to these proceedings, and the appeal is thus admissible." 

Summary of Facts and Submissions

VIII. The arguments of the parties insofar they are relevant for the decision can be summarized as follows:

(a) On the admissibility of the appeal

The Proprietor, for the first time in a letter of 25 October 2017 that reached the Board at 16.30 hours on the day before the oral proceedings, raised the objection that the company Zenergy Power GmbH, which was registered as the Appellant, had been dissolved as a result of a bankruptcy procedure before the appeal was filed. Hence, the Opponent had ceased to exist as a legal person before the filing of the appeal and could not file the appeal or be the appealing party in the opposition-appeal proceedings. This was further argued during the oral proceedings. Further, the Proprietor based on information available on the internet alleged that the relevant department of the opponent that dealt superconductors had been taken over by the BASF New Business GmbH and would thus not be entitled to further pursue these proceedings.

The Opponent stated that it had become aware of these issues on the day of the oral proceedings and was not in a position to respond.

Reasons for the Decision

1. Admissibility of the appeal

The inadmissibility of the appeal as argued by the patentee in its last submission dated 25 October has two prongs: either because the opponent was no longer registered at the date the appeal was filed, or because the opponent was subsequently taken over by a different entity without this change having been notified.

Whether an opponent to an ongoing opposition/appeal case can validly be regarded as a legal entity and act in these proceedings is a matter of national law of the state where the company is incorporated, see decision G 1/13 (OJ EPO 2015, A42) at point 6 of the reasons:

"The Enlarged Board considers that the starting point should be the clearly established principle under the EPC that national law should be referred to in order to determine whether a legal entity exists or has ceased to exist, and has capacity to act."

T 0643/15 - Brief and concise

Key points

• This decision in opposition appeal (of Board 3.2.01) is rather brief (only 3 paragraphs). The appeal was also disposed of quickly (Notice of appeal 25 March 2015, oral proceedings Board 10 November 2017). The Board disagrees with one novelty attack and one inventive step against the claims as granted (these presumably being the reasons for the OD to revoke the patent). The Board remits the case for consideration of the ground of opposition of Article 100(c) EPC. The OD had apparently not considered that ground (even though the opposition had started already in 2011). 
• update: Even shorter is  T 1700/15. Just 156 words to decide on A83 and A13(2) in an opposition appeal.
  
  

  EPO T 0643/15 -  link
  

Reasons for the Decision

1. The appeal is admissible.

2. The subject-matter of claim 1 is new over A3, for the aforementioned feature (i) (i.e. "said upper panel assembly and each of said upper spar chords being mutually connected and formed from a metal material") is not known from A3 (Article 54 EPC). The Board takes the view that the term "formed from a metal material" (in the given context of claim 1) cannot be construed as encompassing metallic composite materials as alleged by the Respondent. For the purpose of assessing novelty and inventive step, the terms of the claim should be given their broadest meaning, at least insofar as a technically sound and sensible interpretation is thereby obtained. Nevertheless, the claim's construction should not be incompatible or be at odds with the general teaching of the invention as resulting from the overall disclosure in the patent specification (EP-B). In the present case it is explicitly stated in (or clearly derivable from) several passages in EP-B that the invention relates to "aircraft wings having both composite and metal panels" (paragraphs [0001], [0002], [0003], [0004], [0005], [0012]). In paragraph [0005] it is further specified that the wing assembly includes an "upper panel ... formed from a metal material" and a "lower panel ... formed from a composite material", wherein the metal material is stated to be "aluminium, titanium or any other suitable material", and the composite material is stated to be "a carbon fiber reinforced plastic (CFRP) material or other suitable composite material". It ensues from these quotations that the terms "composite material" and "metal material" are used in EP-B as constituting opposed and mutually exclusive alternatives, in agreement with the general teaching of the invention, i.e. to reduce weight (employing specific composite materials where appropriate) and save costs (by replacing composite material panels primarily subjected to compression load with metal panels having better compression performance (EP-B, [0002], [0013])). For these reasons, bearing in mind that a patent should be construed by a mind willing to understand, it would run contrary to the teaching of the invention to construe the term "formed from a metal material" as encompassing metallic composite materials.

3. The subject-matter of claim 1 is not rendered obvious for the skilled person by prior art A2 and A1. The skilled person, starting from A2 and aiming at reducing costs while optimizing weight and compression load performance, would retain A1, which proposes manufacturing the wing's upper panel from metal (e.g. aluminium, titanium; see upper shell 6, figure 2, column 3, lines 20-30) and the lower panel from a composite material (column 3, lines 30-36). However, even on the assumption that the skilled person would combine A2 and A1, this would not directly lead to the subject-matter of claim 1, for A1 does not disclose or suggest forming the upper spar chords from metal too (see feature (i)). Moreover, the person skilled in the art would not obviously or necessarily form the upper spar chords from metal, compression loads affecting primarily and mainly the upper shell or upper panel assembly (see A1, upper panel 6; column 3, lines 25-27) and, like tensile loads, being anyway effectively countered by the wing's support structure, which is usually made of metal. Also, depending on the composite material used for the upper spar chords, a weight reduction is usually advantageously obtained as compared to upper spar chords made of metal (even though at greater costs). For these reasons the Board considers that the Respondent has not provided convincing arguments that for the skilled person feature (i) (including upper spar chords made of metal) would result in an obvious manner from the combination of A2 and A1 (Article 56 EPC).

4. The Board decided to remit the case to the department of first instance for further prosecution (Article 111(1) EPC). The appealed decision is exclusively based on the Opponent's objections under Article 54 EPC and Article 56 EPC, the ground of opposition under Article 100(c) (as submitted by the Opponent during opposition proceedings) having not been considered. This ground of opposition was not discussed by the Appellant during written appeal proceedings either, the Appellant having concentrated in its submissions on the confutation of the reasoning in the appealed decision, seeking a review of the decision. Consequently, it was deemed not to be appropriate to start a new debate on a completely different issue during oral proceedings at a very late stage in appeal proceedings.

Order

For these reasons it is decided that:

The decision under appeal is set aside.

The case is remitted to the department of first instance for further prosecution.

T 1176/13 - Need to refute inadmissibility

Key points

• In this examination appeal, the ED had held a number of auxiliary requests inadmissible under Rule 137(3) EPC, because they were filed shortly before the oral proceedings and were not clearly allowable. With the Notice of appeal, the applicant argued that the claims of these request were novel etc., but "did not [] give any reasons why the board should set aside the examining division's discretionary decision under Rule 137(3) EPC not to admit these requests".
• " Following T 573/09 [], since it was neither immediately apparent to the board upon reading the decision under appeal and the statement of grounds of appeal nor argued by the appellant at any point that the examining division exercised its discretion in an unreasonable way or based it on the wrong principles, the board saw no reason to overrule the way in which the examining division had exercised its discretion." 

EPO T 1176/13 -  link

2. First to fourth auxiliary requests: admissibility (Article 12(2) and (4) RPBA)

2.1 Claims 1 of the first to fourth auxiliary requests are identical to claims 1 of auxiliary requests 1 to 4, respectively, as submitted during the examination proceedings. Auxiliary requests 1 to 3 had been late filed, i.e. two days before the oral proceedings before the examining division, and auxiliary request 4 had been filed one month before these oral proceedings. The examining division did not admit these requests into the proceedings under Rule 137(3) EPC, []

2.3 In the present case, as already pointed out in the board's communication annexed to the summons to oral proceedings, in the statement of grounds of appeal the appellant did not, contrary to the requirements of Article 12(2) RPBA, give any reasons why the board should set aside the examining division's discretionary decision under Rule 137(3) EPC not to admit these requests. The statement of grounds of appeal contained arguments only as to why the subject-matter of the claims of the main request and the first, second and fourth auxiliary requests was novel, claim 1 of the first auxiliary request complied with Article 123(2) EPC and the independent claims of the third auxiliary request met the requirements of Article 84 EPC.

Nor did the appellant in its reply to the board's communication comment on the issue of admissibility of the first to fourth auxiliary requests as raised in this communication.

Following T 573/09 (see point 2 of the reasons), since it was neither immediately apparent to the board upon reading the decision under appeal and the statement of grounds of appeal nor argued by the appellant at any point that the examining division exercised its discretion in an unreasonable way or based it on the wrong principles, the board saw no reason to overrule the way in which the examining division had exercised its discretion.

Further, the board, exercising its own discretion under Article 12(4) RPBA (cf. T 0556/13, points 2.1.5 to 2.1.7) saw no reason to not hold the first to fourth auxiliary requests inadmissible.

2.4 The board therefore decided to hold the first to fourth auxiliary requests inadmissible.

T 1227/14 - Revised description prepared by OD

Key points

• The first decision published in 2018 with publication code [C]. 
• During oral proceedings, the OD had decided to maintain the patent in amended form, with a description to be revised. After the oral proceedings, the OD prepared a revised description and issued the appealable decision. According to the minutes of the oral proceedings, patentee had left it to the OD to make the revised description. Nevertheless, issuing the decision without giving the patentee an opportunity to comment, violated Article 113(2) EPC (decision can only be taken on a text submitted or approved by patentee in opposition) because he had no opportunity to comment on the revised description.
• As a comment, Article 1113 is titled "Right to be heard and basis of decisions", possibly "right to be heard" refers to Article 113(1) and " basis of decision" to Article 113(2). 

EPO T 1227/14 - link

6.2.3 Aufgrund der oben stehenden Erwägungen kommt die Kammer zum Schluss, dass der Gegenstand von Anspruch 1 nach dem Hilfsantrag 10 im Hinblick auf die vorgelegten Beweismittel auf einer erfinderischen Tätigkeit im Sinne von Artikel 56 EPÜ 1973 beruht.

7. Antrag auf Rückerstattung der Beschwerdegebühr

7.1 Die Beschwerdeführerin I trägt vor, dass sie nicht, wie in der Niederschrift über die mündliche Verhandlung (vgl. Punkt 13.9) festgehalten, die Anpassung der Beschreibung an die Einspruchsabteilung übertragen habe. Vielmehr habe sie für die Anpassung der Beschreibung die Überleitung ins schriftliche Verfahren beantragt, was nicht in der Niederschrift vermerkt sei.

7.2 Diesbezüglich stellt die Kammer zunächst fest, dass die Beschwerdeführerin I zwar die Richtigkeit der Niederschrift der mündlichen Verhandlung vor der ersten Instanz bestreitet, jedoch keinen Antrag auf Korrektur der Niederschrift durch die Einspruchsabteilung gestellt hat. Ohne einen derartigen Antrag und vor dem Hintergrund, dass die Kammer selbst keine Kenntnisse über den tatsächlichen Verlauf der mündlichen Verhandlung hat, ist nach der Rechtsprechung der Beschwerdekammern (Rechtsprechung der Beschwerdekammern des Europäischen Patentamt, 8. Auflage 2016, III.C.4.9.3) davon auszugehen, dass die Niederschrift die verfahrenswesentlichen Aussagen und Handlungen korrekt wiedergibt und die Beschwerdeführerin I die Anpassung der Beschreibung in der Tat an die Einspruchsabteilung übertragen hat.

7.3 Jedoch hat die Einspruchs­abteilung die angefochtene Zwischenentscheidung über die Fassung, in der das einspruchsbehaftete Patent aufrechterhalten werden könnte, erlassen, ohne diese Fassung, einschließlich der von ihr angepassten Beschreibung, vorher der Patentinhaberin vorzulegen. Damit hat sie den im Artikel 113 (2) EPÜ 1973 verankerten Grundsatz des rechtlichen Gehörs verletzt. Nach diesen Bestimmungen muss sich das Europäische Patentamt bei den Entscheidungen über das europäische Patent an die von der Patentinhaberin vorgelegte oder gebilligte Fassung halten. Damit wäre die Einspruchsabteilung selbst unter der Annahme, dass sie von der Patentinhaberin zur Anpassung der Beschreibung beauftragt war, verpflichtet gewesen, ihr die der Zwischenentscheidung zugrunde liegende Fassung des Patents zur Billigung vorzulegen. Auch und gerade in dem Fall, dass die Anpassung der Beschreibung an ein Organ des Europäischen Patentamts übertragen wird, kann es von dieser Verpflichtung nicht entbunden werden.

T 0046/15 - Indeed no more the essentiality test

Key points

• As a bit of housekeeping, this decision is still to be discussed.
• The Board (3.2.04) agrees (expressly) with T 1852/13 wherein the Board " even stated that the essentiality test as such could not replace the application of the gold standard, and that if in some cases it could give a useful indication, the gold standard was still the only relevant test" 
• Board 3.2.04 has said the same in T 1472/15 in [2.3]. 
• See also T 2095/12, [2.7] : " The Board concurs with the findings in recent decisions, cf. for example T 1852/13 [], that the "essentiality test" of T 331/87 may not always be suitably applicable. This in particular holds true in case of intermediate generalisations, cf. T 2311/10. Generally, the "essentiality test" is an aid that can in certain circumstances be used to assess the allowability of amendments. However, it cannot replace the need to answer the question what a skilled person derives directly and unambiguously from description, claims and drawings of an European patent application on the date of filing, the so-called "Gold Standard" (directly and unambiguously derivable), []." 

EPO T 0046/15 - link 

2.8.1 The essentiality test has been elaborated in the decision T0331/87. The Board held that the replacement or removal of a feature from a claim might not be in breach of Art. 123(2) EPC 1973 if the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve, and (3) the replacement or removal required no real modification of other features to compensate for the change.

As to the applicability of this test the Board first notes that the decision T0337/87 primarily concerned the removal of a feature. Since in the present case a specific device "CSTC" has been generalised by defining a more generic "device", the present Board is not convinced that the test's use is appropriate in the present case.

More particularly, having regard to the assessment of the generalisation at hand, the Board refers to, e.g., T 2311/10, where the essentiality test has been found not applicable in the case of (intermediate) generalisations.

In the more recent decision T 1852/13 the Board even stated that the essentiality test as such could not replace the application of the gold standard, and that if in some cases it could give a useful indication, the gold standard was still the only relevant test (see point 2.2.7.a)).

Both decisions have therefore concluded that the "essentiality test" could not replace the need to answer the question of what a skilled person would objectively have derived from the description, claims and drawings of a European patent application on the date of filing known as the "gold standard". The present Board concurs with these decisions, and as exposed here above already came to the conclusion that the amendment does not pass the gold standard.

2.8.2 Even if the essentiality test was used as an examining aid to determine the allowability of the present amendment, the Board would not reach the same result as the appellant.

T 0699/12 - No medical method

Key points

• The claim is directed to a method "for enabling quantification of dose delivery in radiotherapy treatment" and includes as a step " using said relationship information during verification of the treatment of the patient". The question is whether this is a medical method excluded under Article 53(c) EPC. The Board finds that " when carefully considering the wording of the claims, there is no basis for identifying a step like an "intermediate treatment of irradiating the patient for therapeutic purposes" that is de facto not claimed." 
• The Board recalls that " Art. 53(c) EPC [] does not exclude methods from patent protection that are used during a therapeutic or surgical treatment of a human or animal body" . The Board concludes that the method at issue " only monitors the actual treatment. The medical practitioner is free to choose the next steps of treatment of a patient and is not hindered in performing his therapeutic tasks." Therefore, the method is not excluded from patentability. 

EPO T 0699/12 -  link

XII. Claim 1 of the patent as granted according to the patentee's main request reads:

"1. Method for enabling quantification of dose delivery in radiotherapy treatment, characterized in that it comprises the steps of:
- irradiation of a phantom following a treatment plan of a patient,
- measurement of the irradiation in said phantom,
- collecting information regarding the irradiation by information means arranged between the phantom and the radiation source, wherein said measurements are divided in time-intervals,
and
- analysing the measurements for obtaining information regarding the relationship between the measurements in the phantom and measurements in the information means between the phantom and the treatment source at each time-interval,
- using said relationship information during verification of the treatment of the patient."

Appellant's main request

3.1 Interpretation of claim 1

3.1.1 A main issue at dispute concerns the interpretation of the last feature of claim 1, i.e. "using said relationship information during verification of the treatment of the patient".

3.1.2 According to the Merriam-Webster online dictionary 2017 "to verify" means "to establish the truth, accuracy or reality of". Taking further into account the introduction of claim 1, i.e. "method for enabling quantification of dose delivery in radiotherapy treatment", the last feature of claim 1 should be interpreted as meaning that "the verification of the treatment of the patient" relates to the mentioned "quantification of dose delivery in the radiotherapy treatment of the patient".

3.1.3 It should be noted, however, that neither the actual irradiation of the patient nor any adaptation of a possible further irradiation based on the quantified dose delivery is part of the method of claim 1.

3.1.4 In the decision under appeal (cf. Reasons, section 2.) the opposition division interpreted the claim differently, i.e. "When attempting to interpret said claim in the light of the description, the skilled person finds numerous passages in said description such as paragraphs 9, 13-14 and 17 of the patent specification as well as page 11, lines 6-26 of the A-publication, which reveal that said dose delivery quantification actually pertains to in vivo dose verification, wherein irradiation of the patient is implicitly required in order to verify the dose during the treatment.

T 1906/13 - Dependent claim in examination

Key points

• In this examination appeal, a request based on dependent claim 5 as filed is not admitted under effectively article 12(4) RPBA (should have been filed in first instance proceedings).
• "The board notes that in the first instance proceedings, at the end of the oral proceedings, the applicant confirmed that he had no further requests. It was therefore clear that the applicant did not wish to submit any further amendments or requests in the examination procedure, including a request based on the subject-matter of original claim 5. If the request were admitted now, the board would be forced either to examine the claim itself with respect to D1 and the other documents on file, or to remit the case for further prosecution." 

EPO T 1906/13 -  link

4. Third auxiliary request - claim 1 - admissibility

4.1 This auxiliary request was filed shortly before the oral proceedings before the board. It is thus an amendment to the appellant's case within the meaning of Article 13(1) RPBA.

In accordance with Article 13(1) RPBA, any amendment to a party's case after it has filed its grounds of appeal may be admitted and considered at the board's discretion. Following T 361/08 (point 13 of the reasons) and T 144/09 (point 1.17 of the reasons), in exercising its discretion under Article 13(1) RPBA, the board considers it appropriate to take into account the provision of Article 12(4) RPBA, which reads: "Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extend it relates to the case under appeal and meets the requirements in (2).".

4.2 The amendments made to claim 1 (see point XII above) include features which were part of dependent claim 5 as filed and which relate to a correction of the contact point according to a flexure of the robot, estimated by the detected force in the pushing direction.

4.3 The board notes that in the first instance proceedings, at the end of the oral proceedings, the applicant confirmed that he had no further requests. It was therefore clear that the applicant did not wish to submit any further amendments or requests in the examination procedure, including a request based on the subject-matter of original claim 5.

4.4 If the request were admitted now, the board would be forced either to examine the claim itself with respect to D1 and the other documents on file, or to remit the case for further prosecution. The first option would run contrary to the purpose of appeal proceedings (see G 10/93, OJ EPO 1995, 172, point 4 of the reasons), which is essentially to examine the correctness of the first instance decision rather than to give a ruling on substantive matters which have not previously been examined (this indeed being essentially the reason why the boards are empowered under Article 12(4) RPBA to not admit requests not presented before the first instance). The second option would run entirely contrary to the requirement for procedural efficiency.

4.5 The appellant argued that the added features were disclosed in a claim on file from the beginning, that the request was neither surprising nor complicated, and that the board was in a position to deal with it.

The board disagrees. The feature of correcting the contact point based on the flexure of the robot is a substantial amendment relating in general to robot mechanics. It is not intrinsically tied to the detection and removal of burrs and leads the discussion of inventive step in a completely new direction.

4.6 Consequently, the board decided to not admit the third auxiliary request (Article 12(4) RPBA).

5. Conclusion

As there is no allowable request, it follows that the appeal must be dismissed.

Order

For these reasons it is decided that:

The appeal is dismissed.

T 1682/15 - No abusive disclosure

Key points

• The patentee submitted an argument that a prior art document D28 had to be disregard under Article 55(1)(a) EPC (disclosures due to evident abuse are non-prejudicial). The Board does not admit the argument (should have been raised before the OD), but still gives some comments on the merits.
• The patentee's argument, that the OD would not have departed from G 3/98, that the non-prejudicial disclosure must be no earlier than six months preceding the filing date (not the priority date), is no reason for admitting the argument under Article 12(4) RPBA. In particular, the opponents were now "confronted with the fact that [D28] might not be taken into consideration for the first time in appeal proceedings." 
• The Board also considers it no so clear that D28 was due to evident abuse, in particular because of lack of evidence about the details of the confidentiality obligation of the author of D28.

EPO T 1682/15 - link

Reasons for the Decision

1. The appeal is admissible.

2. Oral proceedings were held and continued in the absence of the duly summoned respondent 4 in accordance with Article 15(3) RPBA and Rule 115(2) EPC.

4. Admission of submissions relating to Article 55(1)(a) EPC

4.1 In accordance with Article 12(4) RPBA, the board has the discretion to hold inadmissible facts, evidence or requests which were presented in the statement of grounds of appeal, but which could have been presented in the first instance proceedings.

4.2 With the statement setting out its grounds of appeal the appellant, for the first time, requested that document (28) be disregarded, since its disclosure was due to an evident abuse within the meaning of Article 55(1)(a) EPC. In this context the appellant also requested a re-referral to the Enlarged Board of Appeal. In the appellant's view the Enlarged Board, in its decision G 3/98 (OJ EPO 2001, 62), erroneously established that, for the calculation of the six-month period referred to in Article 55(1)(a) EPC, the relevant date was the date of the actual filing of the European patent application, and not the priority date.

T 0327/17 - Letter not received by EPO

Key points

• In this case, a Notice of appeal was sent by registered letter from Spain and was not received by the EPO. The proprietor requested re-establishment of rights, but withdraws this request. The Board order refund of the appeal fee (according to established case law, T 1325/15).
• The rapporteur is in the preliminary opinion quite strict about due care in case of a registered letter, enquiring about who exactly delivered the notice of appeal to the post office at what point in time. The rapporteur also indicates that sending the notice of appeal by a simple letter " would implicate negligence" . 
• Interestingly, the appeal fee was paid in time and by debit order by another attorney of another  firm. However, " mere payment of an appeal fee however also does not constitute a valid means for lodging an appeal" 

EPO T 0327/17 - link

Summary of Facts and Submissions

I. This appeal procedure is concerned with a decision of the opposition division revoking the European patent No. 2 412 517. The decision was dispatched on 18 October 2016.

II. The patent proprietor paid the appeal fee on 19 December 2016. The statement setting out the grounds of appeal was received on 17 February 2017 but a notice of appeal had not been received before at the EPO.

III. Following a communication of the board noting that the mere payment of an appeal fee did not constitute a valid means for lodging an appeal, the patent proprietor argued in its letter of 25 April 2017 that a notice of appeal had been filed on 12 December 2016 through registered mail (annexed as DOCUMENT No.1). On 4 May 2017 it filed a request for re-establishment of rights accompanied by the notice of appeal dated 12 December 2016, which had allegedly been sent to but not received by the EPO.

IV. The board summoned the parties for oral proceedings and sent a communication setting out its preliminary opinion about the circumstances regarding the request for re-establishment of rights. After having received this communication the patent proprietor withdrew its requests for re-establishment of rights and for oral proceedings and further requested reimbursement of the appeal fee. The oral proceedings were then cancelled.

Reasons for the Decision

1. After the withdrawal of the request for re-establishment of rights by the patent proprietor the only issue left to be decided is the reimbursement of the appeal fee which is to be decided in favour of the patent proprietor for the following reasons.

2. The time limit to file the notice of appeal of two months according to Art. 108 EPC against the decision of the opposition division was not observed. It expired on 28 December 2016, i.e. 2 months and 10 day after notification of the decision. The EPO did not receive a notice of appeal within that time limit but only on 25 April 2017 and 4 May 2017. That was without any doubt too late. The mere payment of an appeal fee however also does not constitute a valid means for lodging an appeal (see decision J 19/90 of 30 April 1992, decision R 2/10 of 3 November 2010). If no notice of appeal is (deemed to have been) filed in due time, then no appeal comes into existence (following decision T 1325/15 of 7 June 2016, points 34 to 42 of the reasons). Thus in the present case the appeal is deemed not to have been filed and, consequently, the appeal fee is to be reimbursed in full.

Order

For these reasons it is decided that:

1. The appeal is deemed not to have been filed.

2. The appeal fee is to be reimbursed.

T 0389/13 - An unwarranted advantage

Key points

• Patenting olefin polymer compositions is a world of its own because the claims often consist (like the one at issue) of a quite general chemical feature (" A polyethylene composition") followed by a number of parameters for the achieved properties.
•  The Board finds the combination of parameter of claim 1 at issue to lack basis. The Board makes an interesting connection between Article 123(2) EPC and selection inventions of third parties. 
• " Allowing those various restrictions without there being any - even implicit - indication in the application as filed that the specific combination of newly introduced parametric ranges [] was envisaged would be unfair to third parties. It would give an applicant [] who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of parameters and their ranges of values encompassed by said broad original claim, as such type of selection invention is in principle patentable and even rather usual in the present field of technology. " 

EPO T 0389/13 -  link

3.8 The underlying idea of Article 123(2) EPC is that an applicant or patent proprietor shall not be allowed to improve his position by defining subject-matter not disclosed in the application as filed, since so doing would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (G 1/93, OJ EPO, 1994, 541, point 9 of the reasons for the decision).

3.9 The polyethylene composition of claim 1 was defined on filing in a broad manner, its definition including a few structural features (a LMW ethylene homopolymer and a HMW ethylene copolymer) resulting in a bimodal molecular weight distribution, as well as two ranges of parametric values (polydispersity of the LMW component and ductile-brittle transition temperature Tdb of the overall composition), with an indicationin the rest of the application as filed ofpreferences for said structural features and a definition of additional parameters which might be used to characterize the composition, a well as corresponding ranges of values. Subsequently introducing some limits into claim 1 on the basis of said preferences or on the basis of said additional parameters and corresponding ranges of values for the purpose of overcoming grounds of opposition based on prior art revealed in proceedings before the EPO, is allowable in view of the requirements of Article 123(2) EPC subject to the condition that the application as filed reveals, at least implicitly in a direct and unambiguous manner the resulting specific combination of features.

T 2247/12 - Explanatory Notes to the RPBA

Key points

• The Board refers to "the explanatory notes to Article 15(3) RPBA"  as providing (part of) the legal basis  for the decision. These Explanatory Notes are (also) cited in T 1704/06 as "CA/133/02 dated 12 November 2002, available at the EPO web site". As of yet I can not find them. 
• The document is also cited in CLBA IV.E.4.1.1. I am not sure if the document is (still) publicly available. 

EPO T 2247/12 -  link 

Reasons for the Decision

1. The appeal is admissible.

2. The duly summoned appellant did not attend the oral proceedings. In accordance with Rule 71(2) EPC 1973, however, the proceedings continued without it. In accordance with Article 15(3) RPBA, the board relied for its decision only on the appellant's written submissions. The board was in a position to decide at the conclusion of the oral proceedings since the case was ready for decision (Article 15(5) and (6) RPBA), and the voluntary absence of the appellant was not a reason for delaying the decision (Article 15(3) RPBA). The principle of the right to be heard pursuant to Article 113(1) EPC was observed since, by absenting itself from the oral proceedings, a party gives up this opportunity to be heard (see the explanatory notes to Article 15(3) RPBA cited in T 1704/06, not published in OJ EPO).

T 1704/067.3 The explanatory notes to this Article state the following (CA/133/02 dated 12 November 2002, available at the EPO web site):
"This provision does not contradict the principle of the right to be heard pursuant to Article 113(1) EPC since that Article only affords the opportunity to be heard and, by absenting itself from the oral proceedings, a party gives up that opportunity".

T 1252/13 - Not a disclaimer but still violating Art 123(2)

Key points

• In this case, the claim was amended to include the feature " wherein said at least one type of collagen alpha chain and said human P4H are devoid of an ER retention sequence". This is a negative feature, but not a disclaimer. The application as filed disclosed that "the at least one type of a collagen alpha chain is devoid of an ER targeting or retention sequence". Following G 1/16, this is a negative feature ([12]) and not a disclaimer ([13]) because it "contributes to the technical teaching". 
• The Board finds the claim as amended to lack basis, because the negative feature is combined with other features in such a way that the combination adds subject-matter. In particular, in the examples, the ER targeting sequence was removed and nothing was said about the ER retention sequence. The patentee's argument that the gene at issue is "is naturally devoid of an ER retention sequence", is found not convincing because the application discloses that  " the at least one type of a collagen alpha chain is devoid of an ER targeting or retention sequence". 

EPO T 1252/13 - link

VII. Oral proceedings before the board took place on 4 and 5 July 2017. In the course of the oral proceedings appellant I withdrew all pending claim requests except for auxiliary request 32.

Claim 1 of auxiliary request 32 reads:

"1. A genetically modified plant or isolated plant cell comprising an exogenous polynucleotide sequence encoding at least one type of a collagen alpha chain and an exogenous polynucleotide sequence encoding human P4H, each of said at least one type of collagen alpha chain and said human P4H being attached to a vacuole transit peptide, wherein said at least one type of collagen alpha chain and said human P4H are devoid of an ER retention sequence and wherein said at least one type of collagen alpha chain is accumulated in a vacuole devoid of endogenous P4H activity."

Reasons for the Decision

Auxiliary request 32 (sole claim request)

Article 123(2) EPC - claim 1

1. The subject-matter of claim 1 is directed to a genetically modified plant or isolated plant cell comprising an exogenous polynucleotide sequence encoding at least one type of a collagen alpha chain and an exogenous polynucleotide sequence encoding human prolyl-4-hydroxylase (P4H), wherein the collagen and human P4H are each attached to a vacuole transit peptide and are devoid of an endoplasmic reticulum (ER) retention sequence.

2. It is undisputed between the parties that the claimed combination of features - that the collagen and human P4H are each attached to a vacuole transit peptide and are devoid of an ER retention sequence - is not explicitly disclosed in the application as filed.

3. At issue is thus whether or not the claimed combination of features can be derived directly and unambiguously, using common general knowledge, from what is explicitly disclosed in the application as filed, i.e. whether the combination is implicitly disclosed.

4. Appellant I indicated a basis in the application as filed for the modifications of the collagen alpha chain, i.e. attached to a vacuole transit peptide and devoid of an ER retention sequence, and submitted that the application as filed disclosed that the same modifications were to be made to both the collagen and the P4H protein (see section VIII above). Therefore, in the following analysis the board will focus first on the modifications in the context of the collagen alpha chain.

"attached to a vacuole transit peptide"

5. The present invention aims at expressing at least one type of a collagen alpha chain and exogenous P4H in a plant so as to enable accumulation of the collagen alpha chain and exogenous P4H in a subcellular plant compartment devoid of endogenous P4H activity (see page 3, fourth paragraph of the application as filed).

[...]

T 1287/14 - CPA is an embodiment, not entire document

Key points

• In this opposition appeal, the opponents submitted that the entire document D5 was the closest prior art, not only Example 1 thereof.
• " The board agrees with the [opponents] only insofar as example 1 of D5, when taken as a starting point for assessing inventive step, should not be considered in isolation but rather in the overall context of D5. The specific starting point for assessing inventive step is however normally a set of features disclosed in combination in a document, e.g. an embodiment or example. [] For assessing inventive step it is therefore necessary to establish the distinguishing features over that specific starting point and to assess whether it was obvious to arrive at the claimed subject-matter when starting from that specific point." The Board adds that D5 can be " also referred to as "the closest prior art" in a more general sense". 
• This post was published earlier on 24.12.2017 for a short time.

EPO T 1287/14 - link

5. Main request - inventive step

5.1 The invention concerns a gas treatment article.

5.2 The parties and the board agree that D5 is the closest prior art. The respondents [opponents] have also submitted arguments for lack of inventive step starting from D7, should the appellant [patentee] regard the latter document as the closest prior art. As this is not the case, it is not necessary to address inventive step based on D7 as the closest prior art.

5.2.1 The [opponents] were of the opinion that the closest prior art was the disclosure of D5 in its entirety, not a single embodiment such as its example 1. The board agrees with the respondents only insofar as example 1 of D5, when taken as a starting point for assessing inventive step, should not be considered in isolation but rather in the overall context of D5. The specific starting point for assessing inventive step is however normally a set of features disclosed in combination in a document, e.g. an embodiment or example, the latter document being also referred to as "the closest prior art" in a more general sense (see for instance T 888/96, reasons 5, T 507/98, reasons 5.1.1 to 5.1.3; T 319/08, reasons 8.2; T 99/10, reasons 3.2). For assessing inventive step it is therefore necessary to establish the distinguishing features over that specific starting point and to assess whether it was obvious to arrive at the claimed subject-matter when starting from that specific point.

T 0790/11 - Preliminary results clinical trial not prejudicial

Key points

• The compound sorafenib was known for treatment of cancer. The Board finds a claim directed to a composition of sorafenib tosylate with a cytotoxic agent or a cytostatic agent to be novel. The Board considers the subject-matter to involve selections from three lists, firstly of the compound sorafenib from a list, secondly of the tosylate salt form, and thirdly of the presence of  an additional ingredient.  
• The Bard acknowledges that combination therapy is known in cancer treatment. Still the claims is considered non-obvious, even directed to combination therapy with sorafenib tosylate in general (not restricted to specific additional active ingredients) because advantageous effects are shown for " the results provided in the examples of the patent in suit which demonstrate improved efficacy and acceptable tolerability of sorafenib with a variety of different cytostatic or cytotoxic compounds in a number of different types of cancer "
• A separate inventive step attack was based on announcement of clinical trials. The document reports on preliminary results of an ongoing phase I clinical pharmacokinetic and pharmacodynamic study of a compound BAY 43-9006. BAY 43-9006 is described as a potent raf-kinase and, based on first preliminary results, so far appears to be effective and well-tolerated. 
• The key reason of the Board "irrespective of whether the structure of BAY 43-9006 was known to be sorafenib free base, in the board's judgement, based on the limited preliminary results of a still ongoing clinical study, no conclusion can be drawn as to the potential behaviour of this compound or any of its salts in combination therapy. Based on the available information, the skilled person could not have reasonably expected that sorafenib tosylate in combination with cytostatic/cytotoxic agents would exhibit such a good balance between efficacy and tolerability."

EPO T 0790/11 -  link

Summary of Facts and Submissions

Claim 1 of auxiliary request 2 reads as follows:

"1. A composition comprising an aryl urea compound which is a raf kinase inhibitor and (a) a cytotoxic agent or (b) a cytostatic agent (c) or a pharmaceutically acceptable salt of (a) or (b) wherein said aryl urea compound is a tosylate salt of N-(4-chloro-3-(trifluoromethyl)phenyl-N'-(4-(2-(N-methyl-carbamoyl)-4-pyridyloxy)phenyl)urea." (hereinafter sorafenib tosylate)

IX. At the beginning of the oral proceedings before the board, appellant 1 withdrew the main request and auxiliary request 1 (see point III above). Auxiliary request 2 (see point III above) was its new main request, and auxiliary request 3 (see point VIII above) was the sole auxiliary request. That the version as considered allowable by the opposition division had become appellant 1's new main request amounted to a withdrawal of appellant 1's appeal and to a change of its main procedural request into the dismissal of appellant 2's appeal (for practical reasons, the designation of the parties as appellant 1 and 2 was maintained).

Reasons for the Decision

1. The appeal is admissible.

2. Admission of documents (14) to (21) - Article 12(4) RPBA

[...] 2.3 Hence, the board decided to admit documents (14) to (21) into the proceedings pursuant to Article 12(4) RPBA.

Main request

[] 4. Novelty (Article 54 EPC)

4.1 In the decision under appeal, the opposition division decided that the subject-matter of auxiliary request 2 was novel over document (1). This finding was challenged by appellant 2.

4.2 Claim 1 of the main request is directed to a composition comprising a tosylate salt of sorafenib and a cytotoxic or cytostatic agent or pharmaceutically acceptable salts thereof. The claimed compositions are useful in the manufacture of medicaments for the treatment of cancer (see claims 12, 25 and 26).