T 2842/18 - Verbatim statement is no basis Art. 123(2) in pharma case

Key points

• The post title oversimplifies the decision at hand but indicates the point of contention.
•  “Claim 1 is drafted as a second medical use claim pursuant to Article 54(5) EPC, thus attaining the claimed therapeutic effect is a functional technical feature of the claim.”
• Under Art. 123(2), the question is whether the claim has basis in Example 3 of the application as filed.
• “In a first line of argument the appellants [patentees] put forward that the requirements of Article 123(2) EPC were met because the language "preventing or slowing down the progression in structural joint damage and erosion caused by rheumatoid arthritis" was disclosed verbatim in the application as filed.”
• The Board: “Claim 1 was amended during opposition proceedings to include the therapeutic effect of "[medical effect, see above]" as a technical feature of the claim. As a consequence, for the purpose of assessing the requirements of Article 123(2) EPC, it has to be examined whether or not there is a disclosure in the application as filed from which it is directly and unambiguously derivable that this is the effect achieved when the treatment is carried out as claimed.”
• “Example 3 of the application describes a phase III randomised, double-blind, placebo-controlled multicenter study of retreatment with rituximab in subjects with rheumatoid arthritis (RA) receiving background methotrexate ”
• “No results of the envisaged retreatment study are reported.”
• “while the wording "preventing or slowing down (...) rheumatoid arthritis" is disclosed in the application, see point 43., the board concludes that the skilled person does not derive from page 129, lines 20 to 22, when read alone or in the context of Example 3 as a whole, a clear and unambiguous disclosure that the therapeutic effect of "preventing or slowing down the progression in structural joint damage and erosion caused by rheumatoid arthritis" is achieved when patients with active RA are retreated under the protocol described.”
• As a comment, I wonder how this analysis would work out if claim 1 at issue would have been included verbatim in the claims of the application as filed and was granted unamended.
• As a further comment, I do see that the concept of disclosure must be the same for novelty and Art. 123(2) and that for lack of novelty of second medical use claims, it is (under current case law) not sufficient that the cited prior art document verbatim discloses the claim wording if it does not make the medical effect plausible / demonstrate that the effect is actually achieved. 
• “The [pantentees submitted] that the board was wrong to include considerations of plausibility when assessing compliance with the requirements of Article 123(2) EPC. ...  the board's conclusion with respect to Article 123(2) EPC, see points 50. and 51., are not based on considerations of plausibility but on the established criteria for assessing the requirements of Article 123(2) EPC”

T 2842/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182842eu1.html

Claim construction

31. Claim 1 is drafted as a second medical use claim pursuant to Article 54(5) EPC, thus attaining the claimed therapeutic effect is a functional technical feature of the claim. The disease to be treated is "joint damage in a subject with rheumatoid arthritis (RA)", while the therapeutic effect achieved by the treatment is "preventing or slowing down the progression in structural joint damage and erosion caused by rheumatoid arthritis".

32. This was not disputed by the appellants.

Amendments (Article 123(2) EPC) - claim 1

33. This claim request was identical to the claim request of auxiliary request 14 in the proceedings before the opposition division. The opposition division held that the subject-matter of claim 1 derived "directly from Example 3" (see decision under appeal, page 23, point 4.1).

34. Respondents VI, VII, VIII contested this finding of the decision under appeal and submitted that the features "preventing or slowing down the progression in structural joint damage and erosion caused by rheumatoid arthritis", "at least one prior course of treatment with rituximab and (...) at least one further course of treatment with rituximab" and "wherein the treatment comprises administration of rituximab and methotrexate" of claim 1 were not directly and unambiguously derivable from the application as filed (see section VI. for the complete wording of the claim).

T 1888/18 - Rule 103(4)(c) again

Key points

• Rule 103(4)(c) specifies in relevant part: “if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings”
• The present Board indicates that it is not actually requirement that a “communication issued by the Board of Appeal in preparation for the oral proceedings” is issued. 
• “Since the [appellant's letter that they would not attend oral proceedings] was sent [after the summons but] before notification of a communication issued by the board of appeal in preparation for the oral proceedings, and no oral proceedings took place, the criteria are met for partial reimbursement of the appeal fee according to Rule 103(4)(c) EPC.”

https://www.epo.org/law-practice/case-law-appeals/recent/t181888eu1.html

10. The board notes however that the appellant's letter announcing that it would not attend the oral proceedings and requesting a decision according to the state of the file is equivalent to a withdrawal of any request for oral proceedings. Since the letter was sent before notification of a communication issued by the board of appeal in preparation for the oral proceedings, and no oral proceedings took place, the criteria are met for partial reimbursement of the appeal fee according to Rule 103(4)(c) EPC.

T 0172/17 - No absolute prohibition of taking late-filed submissions into account

 Key points

• “Article 13(2) RPBA 2020 does not remove a Board's discretion to admit an amendment of a party's appeal case either. The obligation expressed by "shall" is qualified by "in principle", and it is also up to the Board to assess whether "exceptional circumstances" exist.”
• “in the Board's view, at no stage of the convergent approach under the RPBA 2020 is there an absolute prohibition of taking late-filed submissions into account.”

T 0172/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t170172eu1.html

Although not specifically addressed in the proposed referral question, Article 13(2) RPBA 2020 does not remove a Board's discretion to admit an amendment of a party's appeal case either. The obligation expressed by "shall" is qualified by "in principle", and it is also up to the Board to assess whether "exceptional circumstances" exist. Moreover, under Article 114 EPC a Board may act of its own motion (paragraph 1) and may, i.e. has discretion to, disregard late-filed facts or evidence (paragraph 2). As the provisions of the EPC rank higher in authority than the provisions of the RPBA, the latter are to be interpreted in a manner which is in conformity with the former (cf. J 14/19, point 1.9 of the Reasons). This means that, in view of Article 114 EPC, Article 13(2) RPBA is to be interpreted as conferring a certain degree of discretion on the Board. This interpretation is also confirmed by the explanatory remarks on Article 13(2) RPBA 2020 (see CA/3/19, points 59 and 60, and the table setting out the amendments to the RPBA and the explanatory remarks), according to which the Board may decide to admit the amendment "in the exercise of its discretion". As to the criteria, the explanatory remarks say that "[a]t the third level of the convergent approach, the Board may also rely on criteria applicable at the second level of the convergent approach, i.e. as set out in proposed new paragraph 1 of Article 13".

Hence, in the Board's view, at no stage of the convergent approach under the RPBA 2020 is there an absolute prohibition of taking late-filed submissions into account.

The upcoming G 2/21 referral on plausibility

 As reported already on numerous other blogs, Board 3.3.02 intends to refer questions to the Enlarged Board in case T 116/18 (concerning EP2484209B1) regarding plausibility (file wrapper).

I personally find the article of Arnie Clarke (of Gill Jennings & Every), "Is Dasatinib Dead? – An Incredible Change to the Plausibility Threshold"  (4 May 2021) to be the most useful primer to the controversy, at least for European patent attorneys working in the chemistry/pharma field. 

"It is just over four years since Board 3.3.01 of the EPO Boards of Appeal delivered its much-anticipated decision in the Dasatinib case (T 488/16).

Having been closely involved in that case on behalf of one of the opponents, it was obvious to me that the decision represented a potential step-change in the EPO’s attitude towards the assessment of inventive step, and the concept of plausibility in particular. It appeared that the threshold for meeting the requirement of a plausible technical disclosure had been raised.

However, two recent decisions (T 2015/20 [Almirall; Board 3.3.07] and T 184/16 [Mitsubishi; Board 3.3.02, i.e. the presently referring Board) by different boards of appeal may signal a turning of the tide on what many in the pharmaceutical industry considered to be too great a burden on patent applicants to support their inventions. (...)

Dasatinib unquestionably raised the bar for the assessment of plausibility. It asked the positive question “Is there any verifiable information in this patent which allows a conclusion that the alleged contribution to the art is at least plausible? (...)

The Mitsubishi decision is arguably consistent with this approach. (...) 

Where the Almirall decision appears to shift radically is in posing a negative question, rather than a positive one – essentially, the board asks whether an effect is not implausible, rather than whether it is plausible. As long as a stated effect is not at odds with the prevailing technical opinion, it is deemed to pass the plausibility threshold. This is clear from the headnote which specifically sets the bar at avoiding patent protection for “propositions that are prima facie implausible”, rather than only awarding patent protection to inventions that are plausible. (...)

As much as Dasatinib raised the plausibility threshold, Almirall appears not just to return the bar to its previous position but significantly lowers it, if not quite removing it completely. As much as the pharmaceutical industry should be pleased to see a relaxation of the Dasatinib standard, the volte face by this EPO board of appeal could be a significant impediment to industry, with “not implausible” armchair inventions blocking legitimate innovation and development. Will other boards follow it? (...)"

D 0003/20 - No referral to EBA from DBA

 Key points

• I usually don't discuss EQE appeals to the DBA. However, one puzzle to solve is whether the AC has taken a decision in the sense of Rule 12c(6) EPC.  
• The DBA  indicates that at least in EQE appeals it can not refer questions to the Enlarged Board of Appeal. This is the same conclusion as arrived at in D5/82 hn.4 not cited in the present decision.
• My view currently is that the Disciplinary Board of Appeal is not a Board of Appeal in the sense of the EPC, in view of in particular D 5/82, and that no decision under Rule 12b(6) EPC was taken by the AC in the past. (edit 02.09.2021)
• Gunzel/Kinkeldey in Benkard EPU Art.112 no 3 also states that the DBA is not a Board of Appeal in the sense of Art. 15 and Art. 112 EPC. Idem Teschemacher in Singer/Stauder/Luginbuhl, Art.21 note 18, adding that Rule 12(c) would clarify that the DBA is merely administratively grouped together with the Boards.
• My analysis is that there is no EPC Article using the term ‘Board of Appeal’ in a meaning including the DBA. In other words, the DBA is not a Board of Appeal in the sense of any provision of the EPC.
• The Regulation setting up the DBA (OJ 1978, p.91) referred to Art. 134(8)(c) EPC 1973 but not to Rule 10(4) EPC 1973 (link, p.212 PDF) which stated that “The Administrative Council may allocate duties under Article 134, paragraph 8(c), to the Boards of Appeal.
• However, comments are welcome.
• Addendum 02.09.2021: Visser Art.21:1 also indicates that no decision under R.12b(6) has been taken (and said the same already in the 20th edition).
  
  
• The present decision: “ Zuständig für Beschwerden gegen Entscheidungen des Sekretariats ist gemäß Artikel 24 (3) Satz 2 VEP die Beschwerdekammer in Disziplinarangelegenheiten des EPA. Die hierfür anwendbaren verfahrens- und materiellrechtlichen Vorschriften ergeben sich aus den Vorschriften über die europäische Eignungsprüfung (VEP), den Ausführungsbestimmungen hierzu (ABVEP), der ergänzenden Verfahrensordnung der Beschwerdekammer in Disziplinarangelegenheiten (VOBKD) sowie, über die Verweisung in Artikel 24 (4) Satz 1 VEP, aus Teil IV (also Artikel 12 bis 25) der Vorschriften in Disziplinarangelegenheiten von zugelassenen Vertretern (VDV).  Dagegen finden auf das Verfahren vor der Beschwerdekammer in Disziplinarangelegenheiten die Vorschriften des EPÜ grundsätzlich keine Anwendung, sofern auf diese nicht explizit verwiesen wird. ”
• “Das EPÜ sieht gemäß Artikel 15 g) EPÜ als eines der Organe im Verfahren vor dem EPA die Große Beschwerdekammer vor; die möglichen Verfahren vor diesem Organ sind in Artikel 22 EPÜ in Verbindung mit den Artikeln 112 und 112a EPÜ geregelt. Keine der oben in Ziffer 7.3 genannten Vorschriften der VDV und VOBKD, welche auf das EPÜ verweisen, enthält jedoch einen Verweis auf die Artikel 15 g), 22, 112 oder 112a EPÜ.”

D 0003/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/d200003du1.html

7. Befassung der Großen Beschwerdekammer

7.1 Der Beschwerdeführer beantragte schließlich hilfsweise, gemäß den Vorschriften des Europäischen Patentübereinkommens (EPÜ) die Große Beschwerdekammer

T 2988/18 - Arguments pertaining to the interpretation of law

 Key points

• The Board indicates that it concurs with the view that “Arguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings”, following  T 247/20.
• The patentee's argument based on G1/93 regarding Article 123(2) is such an argument.
• “The appellant's argument based on G 1/93 is essentially that G 1/93 permits an undisclosed feature to be added to a claim in certain limited circumstances, and that these circumstances existed in the present case. In short: the principle set out in headnote 2 of G 1/93 applied to the present case. The Board is of the opinion that this argument is precisely what was meant by the passage of the explanatory remarks to the RPBA 2020 referred to above, because an argument about the interpretation of law will naturally concern how that interpretation applies to the facts of the case before the Board.”

https://www.epo.org/law-practice/case-law-appeals/recent/t182988eu1.html

Reasons for the Decision

1. Admission of late filed arguments

1.1 In its submissions dated 26 March 2021 the appellant presented two arguments to meet the objection that the amendment to claim 1 of the main request, whereby the amounts of uncrosslinked hyaluronic acids were amounts expressed in percent "by volume", did not comply with Article 123(2) EPC. The first one was that this amendment did not add new technical teaching. The second was that even if the feature was not derivable from the application as filed it would nevertheless comply with Article 123(2) EPC in view of decision G 1/93. It is this second argument that was objected to by the respondent 01. Respondent 01 requested that it was not admitted into the proceedings.

1.2 In the present case the Board issued the summons to oral proceedings in July 2020. Notification of the summons occurred before the appellant filed its argument based on G 1/93. This means that Article 13(2) RPBA 2020 is relevant (Article 25(3) RPBA 2020). That provision suggests that: "Any amendment to a party's appeal case made...after notification of a summons to oral proceedings shall, in principle, not be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned."

The Board concurs with the interpretation of Article 13(2) EPC given in decision T 247/20 (Reasons 1.3) as summarised below.

The test under Article 13(2) RPBA 2020 is a two-fold one. The first question is whether the submission objected to (the argument based on G 1/93) is an amendment to a party's appeal case. If that question is answered in the negative, then the Board has no discretion not to admit the submission. If, however, that question is answered in the positive, then the Board needs to decide whether there are exceptional circumstances, justified by cogent reasons, why the submission is to be taken into account.

An amendment to a party's appeal case is a submission which is not directed to the requests, facts, objections, arguments and evidence relied on by the party in its statement of grounds of appeal or its reply. In other words: it goes beyond the framework established therein. As there was no argument based on G 1/93 in the statement of grounds of appeal the question arises whether this argument is an amendment to the appellant's appeal case. The Board considers that it is not for the reasons set out below.

1.3 There is no definition of the term "argument" in the RPBA 2020. In G 4/92 the Enlarged Board contrasted arguments to grounds or evidence and suggested that arguments "are reasons based on the facts and evidence which have already been put forward" (Reasons 10). This leaves open the question whether the type of argument made by the appellant, namely one where the Enlarged Board interpreted Article 123(2) EPC (the argument based on G 1/93), also falls under the ambit of Article 13(2) RPBA 2020.

1.4 Arguments pertaining to the interpretation of law are arguments generally accepted at any stage of the proceedings (see e.g. for German nullity proceedings Hall/Nobbe in Benkard, PatG, 11**(th) edition, § 83 Rz. 14 and Voit in Schulte, Patentgesetz mit EPÜ, 10**(th) edition, § 83 PatG, Rz. 20, for German civil proceedings Saenger, Zivilprozessordnung, Nomos, 8**(th) edition, § 282, Rz.12; for English civil proceedings Pittalis v Grant [1989 QB 605], at p.611). This has been recognised in the explanatory remarks to the RPBA 2020 according to which submissions of a party which concern the interpretation of law are not an amendment (Supplementary publication 1, OJ EPO 2020, p.218). The Board concurs with this view.

Respondent 01 submitted that the argument based on G 1/93 was not limited to a reference to the case law, but that a new argument had been developed on the basis of this case law. This constituted a new line of argument which amounted to an amendment to the appellant's appeal case. The Board is not convinced. The appellant's argument based on G 1/93 is essentially that G 1/93 permits an undisclosed feature to be added to a claim in certain limited circumstances, and that these circumstances existed in the present case. In short: the principle set out in headnote 2 of G 1/93 applied to the present case. The Board is of the opinion that this argument is precisely what was meant by the passage of the explanatory remarks to the RPBA 2020 referred to above, because an argument about the interpretation of law will naturally concern how that interpretation applies to the facts of the case before the Board.

T 0987/17 - Burden of proof technical effect on patentee

 Key points

• The OD found claim 1 to be obvious in view of D3. The patentee submits comparative results with the Statement of grounds allegedly showing an improvement.
• “As D3 was not acknowledged in the application from which the patent at issue was granted, this prior art document was not considered when formulating the technical problem to be solved originally. ”
• “Thus, the technical problem invoked by the appellant [patentee] in its statement and at the oral proceedings has been formulated for the first time in appeal proceedings. ”
• “The board notes that it is established case law (see e.g. T 1188/00 of 30 April 2003) that a formulation of a more ambitious technical problem first alleged in the opposition/appeal proceedings cannot be used to substantiate inventive step unless it is plausibly demonstrated that the alleged improved effect could be achieved across the whole scope of the claim. The burden of proof however lies with the proprietor in this respect.”
• After considering the facts and evidence, “ the board has strong reservations that the problem is effectively solved across the breadth of claim 1 at issue”. In the end the claims are found to be obvious.

T 0987/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t170987eu1.html

2.3 Technical problem

In its grounds of appeal, the patent proprietor formulated the technical problem to be solved over D3 as "to provide multilayer tubes having improved mechanical properties and improved (inter-layer) adhesion" in particular in view of the results in the comparative tests D9.

At the oral proceedings, on the basis of the results shown in D9, the appellant invoked only "good (inter layer) adhesion" in addition to "improved mechanical properties".

2.4 Solution

As a solution to the problem underlying the alleged invention, the patent as granted provides the multilayer tube according to claim 1, which is in particular characterised by the presence of

[...]

2.5 Success of the solution

2.5.1 As D3 was not acknowledged in the application from which the patent at issue was granted, this prior art document was not considered when formulating the technical problem to be solved originally. As apparent from [0003] and [0006] of the patent, as well as from the comparison in the original examples over a tube made of two layers of PA-11, the technical problem was simply formulated as to provide a multilayer tube having good mechanical properties such as pressure resistance, vibration resistance, and flexibility, with good impact behaviour when cold and at high temperature, as well as good resistance to engine lubrication oils and fuels. There is however no mention of an improvement, let alone of an improved adhesion.

Visser's Annotated EPC 2021 book

 I'm glad to announce that the new 2021 edition of Visser's Annotated EPC is being shipped.

You can order your copy at:

https://lrus.wolterskluwer.com/store/product/visser-s-annotated-european-patent-convention-2021-edition/

T 2481/19 - Length of proceedings

Key points

• “In its examination of the appeal case, the board identified some deficiencies in the proceedings before the examining division and in the decision under appeal.”
•  “deficiency concerns the excessive length of the proceedings. The application, which claims priority from a Korean application filed on 23 November 2002, was filed as a European application on 24 November 2003 and refused at the oral proceedings on 13 November 2018. Between the applicant's letter of 22 March 2010 and the summons to oral proceedings eight years later on 8 May 2018 the examining division did not issue any office actions. ”
• “In line with a number of decisions of the Boards of Appeal, including T 823/11 of 21 December 2015, T 2377/17 of 3 December 2018 and T 2707/16 of 11 December 2018, such delays may constitute a procedural violation.”
• “According to decision T 2707/16, "a reimbursement of the appeal fee in view of unreasonable delays in first-instance proceedings should be regarded as equitable only where the applicant has made clear by some action that [it] did not tacitly agree with the stagnation of the proceedings" (Reasons 36).”
• “During the long examination proceedings, it did not request accelerated processing of the application or otherwise protested against the long duration of the examination.”
• “Since [the above mentioned] criterion is not met in the case in hand, it is irrelevant whether the unreasonable examination delays constituted a substantial procedural violation.”

T 2481/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t192481eu1.html

6. In its examination of the appeal case, the board identified some deficiencies in the proceedings before the examining division and in the decision under appeal.

[...]

6.3 Another deficiency concerns the excessive length of the proceedings. The application, which claims priority from a Korean application filed on 23 November 2002, was filed as a European application on 24 November 2003 and refused at the oral proceedings on 13 November 2018. Between the applicant's letter of 22 March 2010 and the summons to oral proceedings eight years later on 8 May 2018 the examining division did not issue any office actions. In line with a number of decisions of the Boards of Appeal, including T 823/11 of 21 December 2015, T 2377/17 of 3 December 2018 and T 2707/16 of 11 December 2018, such delays may constitute a procedural violation.

T 0282/18 - Standard textbook CGK not admitted

Key points

• “ With the statement of grounds of appeal the appellant [opponent] filed document D7 as evidence of the properties of color-shifting coatings, and submitted in support of its admissibility into the proceedings that document D7 constituted a standard textbook in the technical field of optical security features and therefore evidence of the common general knowledge in this field.”
• “ The appellant further submitted with reference to decision T 1641/11 that such evidence could be submitted at any time, and that the document was filed in reaction to the appealed decision.”
• The decision does not indicate that the patentee disputed that D7 indeed is a standard textbook. 
• The Board does not admit the document.
• The Board “[in T 1641/11] the board admitted the documents in the exercise of its discretion and, contrary to the appellant's submissions, there is no support in the mentioned decision [T 1641/11] that evidence of common general knowledge submitted by a party at any time shall be admitted into the proceedings - let alone into contentious inter partes appeal proceedings. In addition, as submitted by the respondent with reference to decision T 85/93 (point 1.1 of the reason), evidence of common general knowledge, like any other evidence in support of a party's case, should be filed at an early stage of the proceedings before the opposition division, and may be rejected as inadmissible in the board's discretion if filed for the first time during appeal proceedings.”
• After reviewing the course of the first instance proceedings: “It follows that document D7 could - and should - already have been presented during the first-instance proceedings within the meaning of Article 12(4) RPBA 2007”

T 0282/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180282eu1.html

3. Document D7 - Admission

3.1 With the statement of grounds of appeal the appellant [opponent] filed document D7 as evidence of the properties of color-shifting coatings, and submitted in support of its admissibility into the proceedings that document D7 constituted a standard textbook in the technical field of optical security features and therefore evidence of the common general knowledge in this field. The appellant further submitted with reference to decision T 1641/11 that such evidence could be submitted at any time, and that the document was filed in reaction to the appealed decision.

3.2 The board first notes that there is no element in the decision under appeal that would justify filing, in reaction thereto, document D7 in the appeal proceedings. In particular, the appellant submitted that they were surprised by the opposition division's conclusion in the decision under appeal that the optical variable layer disclosed in document D3 did not constitute an optically variable color-shifting coating as defined in feature 1.7 of claim 1, and that document D7 was filed in reaction thereto. However, as acknowledged by the appellant in the statement of grounds of appeal (sentence bridging pages 3 and 4), feature 1.7 of claim 1 already turned out to be essential during the first-instance opposition proceedings and, therefore, the appellant, during the first-instance proceedings, already had the opportunity to comment on - and, in particular, to file new evidence in respect of - the technical significance of the feature under consideration. It follows that document D7 could - and should - already have been presented during the first-instance proceedings within the meaning of Article 12(4) RPBA 2007 (which applies in the present case according to Article 25(2) RPBA 2020).

As regards decision T 1641/11 referred to by the appellant, the board notes that this decision concerned an ex parte case in which the applicant, with the statement of grounds of appeal, filed two documents as evidence of common general knowledge and that these two documents were admitted into the proceedings by the board deciding on the case (see decision T 1641/11, point 3.6 of the reasons, second and third paragraphs, together with point III of the summary of facts). However, the board admitted the documents in the exercise of its discretion and, contrary to the appellant's submissions, there is no support in the mentioned decision that evidence of common general knowledge submitted by a party at any time shall be admitted into the proceedings - let alone into contentious inter partes appeal proceedings. In addition, as submitted by the respondent with reference to decision T 85/93 (point 1.1 of the reason), evidence of common general knowledge, like any other evidence in support of a party's case, should be filed at an early stage of the proceedings before the opposition division, and may be rejected as inadmissible in the board's discretion if filed for the first time during appeal proceedings.

3.3 In view of these considerations, and since according to Article 12(4) RPBA 2007 the board has discretion not to admit facts and evidence which could have been presented in the first instance proceedings and, in addition, according to Article 12(2) RPBA 2020 (which applies in the present case according to Article 25 RPBA 2020) "a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based", the board decided, in the absence of reasons for doing otherwise, not to admit document D7 into the proceedings.

T 0222/16 - Incorrect application Rule 116 by OD

 Key points

• The Board admits a request filed initial appeal submissions into the proceedings under Article 12(4) RPBA 2007 in this opposition appeal even though the claims are in substance the same as a request held inadmissible by the OD.
• The OD had not admitted the request AR-3 filed during the oral proceedings “on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.”
• “In the present case it is the board's conviction that the opposition division exercised its discretion in an unreasonable way for the following reasons”
• “A new objection under Article 123(3) EPC was raised by the opponent for the first time on the final date for making submissions set under Rule 116 EPC, namely on 7 September 2015. As the requests then pending could not have taken into account this new objection, the proprietor should have been given at least one opportunity to file a new request, which was not the case.”
• “the board notes that Rule 116(2) EPC states that new documents filed by the proprietor after the final date for making submissions need not be considered unless admitted on the grounds that the subject of the proceedings has changed. In the present case, the new objection under Article 123(3) EPC represented a change of the subject of the proceedings and, given the very late timing of the objection, it was evidently impossible for the proprietor to file a response before the final date set under Rule 116 EPC.”
• “the Board notes that according to the established jurisprudence, the relevant criterion for deciding on the admissibility of late filed requests is their prima-facie allowability in view of the objection under discussion. This criterion is fulfilled in the present case since the amendment in claim 1 is clearly suitable to overcome the objection under Article 123(3) EPC, ” (italics added)
• “For the board, the convergence criterion relied upon by the division is of secondary importance in the context of objections under Article 123(3) EPC, because while a novelty objection can be overcome by limiting a claimed subject-matter even further in a convergent way, this is not necessarily the case for an objection under Article 123(3) EPC.”
• “It goes without saying that the non-validity of the priority claim is an unsuitable criterion”

T 0222/16 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t160222eu1.html

4. Third auxiliary request

Vis-à-vis claim 1 as granted, in claim 1 of this request the upper limit of the PIB molecular weight has been amended in to 1500.

4.1 Admissibility

The Board exercised its discretion under Article 12(4) RPBA 2007 not to hold inadmissible this request, because apart from the deleted dependency of claim 5 to claim 2, the claims of this request are identical to those of the third auxiliary request filed during the first instance oral proceedings but not admitted by the opposition division, on the grounds that it did not constitute a convergent development with auxiliary request 2 and that granted claim 2, on which claim 1 of the third auxiliary request was partly based, was not disclosed in the priority document.

T 1771/17 - New request, no new attack

Key points

• AR-2B is filed in this opposition appeal after the summons and in reply to the Board's preliminary opinion. The Board raised an Art. 123(2) objection against AR-2A in the preliminary opinion. That objection was new in the appeal (it was not relevant that the same objection was mentioned in the OD's preliminary opinion because the OD's decision did not reflect the objection). 
• The opponent raises a novelty objection against claim 1 of AR-2B based on D5. The claims of the main request and AR-1 were found to be not novel over D5 by the Board. The Board does not admit the novelty attack against AR-2B.
• The amendment of AR-2B compared to AR-2A was only small. "It follows that any novelty objection raised against claim 1 of auxiliary request 2B would apply equally to claim 1 of auxiliary request 2A.
• The [opponent] appellant, which in the written procedure did not raise any objection against auxiliary request 2A (or against the other auxiliary requests on file), did not provide any cogent reasons why the novelty objection raised against auxiliary request 2B had not been raised earlier against auxiliary request 2A."
• Therefore the request is not admitted.

T 1771/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171771eu1.html

Contrary to the respondent's argument, the subject-matter of claim 1 of the second auxiliary request is therefore not directly and unambiguously derivable from the original disclosure, contrary to the requirements of Article 123(2) EPC.

4.2 Since claim 1 of auxiliary request 2A uses the same combination of articles, the objection also applies to this request.

5. Auxiliary request 2B

5.1 Admittance of the request

Auxiliary request 2B was filed after the summons had been notified and in reaction to the Board's communication indicating its preliminary opinion that the expression "an inner surface of the arm" in the second auxiliary request appeared to be in breach of Article 123(2) EPC. The admission of this request into the proceedings is therefore subject of Article 13(2) RPBA 2020.

T 2249/18 - No request OP still partial refund

 Key points

• In this examination appeal, the applicant did not request oral proceedings. The Board nevertheless summoned for oral proceedings. In response, the applicant in effect filed a new allowable main request. Oral proceedings are cancelled. Even  though there was no request for oral proceedings and no withdrawal of a request for oral proceedings, the Board still gives a partial refund of the appeal fee.
• The Board, on the partial refund of the appeal fee: “The oral proceedings have been cancelled in consequence of the appellant's [applicant's] request [of 14 May 2021] that the auxiliary request filed with letter dated 20 April 2021 be considered as main request. In the case at issue, the decision to hold oral proceedings has been made by the board rather than requested by the appellant. For the purposes of Rule 103(4)(c) EPC, the board likens this case to the one where a request for oral proceedings has been made by the appellant, though, as also in the case at issue conducting oral proceedings has become unnecessary by an act of the appellant, namely to file a request that overcomes the objections raised by the board. Hence, the appeal fee shall be reimbursed at 25% in an analogous application of Rule 103(4)(c) EPC.”
• As a  comment, it seems quite remarkable that the appeal fee is reimbursed in this case based on analogous application of Rule 103(4)(c) EPC, i.e. not actually based on Rule 103(4)(c) EPC but based on some unwritten analogous rule. 
• The last summons was dated 26.04.2021 (rescheduling).

T 2249/18
https://www.epo.org/law-practice/case-law-appeals/recent/t182249eu1.html

Summary of Facts and Submissions

I. This appeal was filed by the applicants (hereinafter, the appellants) against the decision of the examining division to refuse European patent application 14728578.7, because the subject-matter of the claims according to then pending sole request was obvious in view of the prior art disclosed in D1 (WO 2012/175987 A1) or in view of the combination of D1 with D2 (WO 2009/156317 A1).

II. The board summoned the appellants to oral proceedings.

III. In response to the Board's communication in preparation for oral proceedings, with letter dated 20 April 2021, the appellants filed two sets of amended claims labelled as main request and auxiliary request, replacing the requests previously on file.

IV. With a further communication of 12 May 2021, the board informed the appellants, inter alia, that (only) the auxiliary request appeared both admissible and to comply with the EPC and, therefore, that the oral proceedings would be cancelled if the appellants made the auxiliary request filed with letter of 20 April 2021 their only claim request.

V. With letter of 14 May 2021 the appellants requested that the auxiliary request filed with letter dated 20 April 2021 be considered as their new main request.

VI. The set oral proceedings were therefore cancelled.

[...]

Reasons for the Decision

[...]

5. The oral proceedings have been cancelled in consequence of the appellant's [applicant's] request that the auxiliary request filed with letter dated 20 April 2021 be considered as main request. In the case at issue, the decision to hold oral proceedings has been made by the board rather than requested by the appellant. For the purposes of Rule 103(4)(c) EPC, the board likens this case to the one where a request for oral proceedings has been made by the appellant, though, as also in the case at issue conducting oral proceedings has become unnecessary by an act of the appellant, namely to file a request that overcomes the objections raised by the board. Hence, the appeal fee shall be reimbursed at 25% in an analogous application of Rule 103(4)(c) EPC.

Order

For these reasons it is decided that:

The decision under appeal is set aside.

The case is remitted to the examining division with the order to grant a patent with claims 1 to 5 of the main request (filed as auxiliary request with letter dated 20 April 2021) and a description to be adapted thereto.

The appeal fee shall be reimbursed at 25%.

T 1345/18 - Bone adhesive not a second medical use substance

Key points

• Claim 1 is directed to (in translation) a bone adhesive comprising calcium phosphate ... for use in a method of treating bone lesions, i.e. in a dental method.
• The question is whether this is a valid second medical use claim, in particular whether the recited compound is a substance or composition in the sense of Art. 54(5) EPC.
• The Board, in translation: “The question of what falls under the terms substance or composition within the meaning of Article 54 (5) EPC was the subject of several decisions by the boards of appeal (see in particular T 1758/15, Reasons 5.2; T 2136/15, Reasons 1; T 2003 / 08, reasons 17, 18). In summary, the boards came to the interpretation that it must be a substance or a composition that has an effect in the claimed method, which is new as such. The effect must be brought about by the substance or the mixture of substances itself, not by a macro-structure created from the substance or the mixture of substances.”
• In the present case, there is a direct and an indirect medical effect. The direct medical effect is the adhesive effect. The Board: “However, this effect corresponds to the well-known effect of any such bone glue. For this reason alone, this effect cannot produce any novelty in the sense of a second medical use.”
• I think this reasoning is quite remarkable.
• The indirect effect is sealing plug effect. However, “the sealing plug consists of a substance or composition, as can also be the case with any other product. However, it is not the substance or the composition that has the effect, but the macro-structure formed from this substance or composition”
• Thereby the second medical use format does not lend novelty to the claim.

T 1345/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181345du1.html

1.6 Die zweite Voraussetzung für die Anwendung des Artikels 54(5) EPÜ besteht darin, dass es sich bei dem beanspruchten "Knochenkleber umfassend Kalziumphosphatzemente und deren Granula" um einen Stoff oder ein Stoffgemisch im Sinne dieses Artikels handeln muss.

1.7 Die Frage, was unter die Begriffe Stoff oder Stoffgemisch im Sinne von Artikel 54(5) EPÜ fällt, war Gegenstand mehrerer Entscheidungen der Beschwerdekammern (vgl. insbesondere T 1758/15, Entscheidungsgründe 5.2; T 2136/15, Entscheidungsgründe 1; T 2003/08, Entscheidungsgründe 17, 18). Zusammenfassend kamen die Kammern zu der Auslegung, dass es sich dabei um einen Stoff oder ein Stoffgemisch handeln muss, das in dem beanspruchten, als solches neuen Verfahren eine Wirkung entfaltet. Dabei muss die Wirkung durch den Stoff bzw. das Stoffgemisch selbst bewirkt werden, nicht durch eine aus dem Stoff bzw. dem Stoffgemisch entstandene Makrostruktur.

1.8 Der Beschwerdeführer brachte vor, dass der beanspruchte Knochenkleber ein unmittelbare und eine mittelbare medizinische Wirkung auf den Zahnhalteapparat entfalte.

1.8.1 Die unmittelbare medizinische Wirkung des Knochenklebers sei darin zu sehen, dass er Knochenläsionen fixiere.

Diese Wirkung entspricht jedoch der wohlbekannten Wirkung eines jeden derartigen Knochenklebers. Diese Wirkung kann somit bereits aus diesem Grund keine Neuheit im Sinne einer zweiten medizinischen Verwendung herstellen.

1.8.2 Die mittelbare Wirkung beruhe auf der Ausbildung einer Verblockung im Sinne eines Verschlusstopfens. Die Positionierung des Verschlussstopfens im apikalen Bereich verhindere, dass das nachträglich eingebrachte Wurzelfüllmaterial aus dem Wurzelkanal in apikaler Richtung austreten könne. Dadurch würden Reizungen und Infektionen prophylaktisch verhindert.

Der Verschlussstopfen besteht zwar aus einem Stoff- bzw. Stoffgemisch, so wie das auch bei jedem anderen Erzeugnis der Fall sein kann. Es ist jedoch nicht der Stoff bzw. das Stoffgemisch, welches die Wirkung aufweist, sondern die aus diesem Stoff bzw. Stoffgemisch gebildete Makrostruktur (vgl. dazu: T 2136/15, Entscheidungsgründe 1.1 ff und insbesondere 1.6 sowie T 2003/08, Entscheidungsgründe 17, 18).

Insbesondere liegt die vom Beschwerdeführer geltend gemachte Neuheit speziell in der Länge des Verschlussstopfens von maximal 1/10 der Wurzelkanallänge. Dies stellt ebenfalls keine stoffliche Eigenschaft des Knochenklebers dar.

Die mittelbare Wirkung der Verblockung ist daher im Sinne der oben wiedergegebenen Auslegung keine Wirkung des Stoffs bzw. des Stoffgemisches und kann nicht als Basis dafür dienen, dem beanspruchten Knochenkleber umfassend Kalziumphosphatzemente und deren Granula Neuheit gemäß Artikel 54(5) EPÜ zuzuerkennen.

1.9 Der Gegenstand des Anspruchs 1 gemäß Hauptantrag ist daher nicht neu.

T 2607/17 - Virtual testing of virtual welding (after G1/19)

 Key points

• “In G1/19 the EBoA concluded that, for the purposes of assessing inventive step of a computer-implemented simulation, it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process”
• “Compared to [] a notoriously well-known personal computer, the system of claim 5 differs in that it can ("is operable to") execute coded instructions including a rendering engine configured to render a 3D virtual weldment and an analysis engine configured to perform simulated testing and inspection of the 3D virtual weldment for pass/fail conditions and/or defect/ discontinuity characteristics. In addition, the display device can display the 3D images of the weldment and the user interface allows the user to move the displayed images around ("manipulating an orientation").”
• As a comment, for software invention the 'suitable for' rule for novelty does not apply, neither for the novelty-like analysis to determine the distinguishing features under inventive step. Hence, it does not matter if a normal computer can execute coded instructions (as further defined in the claim). 
• “the board notes that the claimed system carries out computer-simulated testing and inspection of a virtual weldment, i.e. of a computer-simulated weldment and not of a physical, i.e. "real life", weldment.”
• So double simulation in a way.
• “In the board's opinion [...]  the claimed system carries out image processing. Images of weldments are rendered, manipulated and displayed. That the images represent weldments or that the manipulations represent testing and/or inspection of those weldments is, in the general manner claimed and described in the application, the result of the cognitive content (information) of the displayed images. It is the user who perceives the images as weldments and the manipulation of those images as testing and/or inspection. Such cognitive information ("what" is displayed) is not related to any technical problem or technical constraints. [...] It is established case law that the cognitive content of a displayed image ("what" is displayed) is in principle not a technical feature ”
  
  
• “Following the established case law and practice in the formulation of the technical problem, these non-technical features will be given to the skilled person (a computer programmer expert in image processing) for implementation. The objective technical problem can thus be formulated as how the skilled person would implement these non-technical features in the notoriously well-known general purpose computer. In other words, how the skilled person would configure the notoriously well-known general purpose computer to render, process, and display 3D images of the virtual weldment, before, during and after the virtual testing and determine a pass/fail condition based on them.”
• “The claimed system solves this problem by using a "rendering engine" and an "analysis engine". [...] The application describes what the rendering and the analysis engines do but does not provide any information as to how they do it [...] There is no information in the application about any particular technical constraints or considerations regarding the implementation (programming) of the rendering engine, so the board's conclusion is that a skilled person would be able to program such a rendering engine only applying their common general knowledge.”
• The claims are found to lack an inventive step.

T 2607/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172607eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. The claimed invention

The claimed invention relates to virtual (computer-simulated) testing and inspection of virtual (computer-simulated) weldments.

As a start, 3D images of virtual weldments are rendered. It is to be noted that the virtual weldments are generated using a virtual reality arc welding system, which is described in detail in the application.

Once the 3D images of the weldments are rendered, one or more computer-simulated tests are carried out on them. These computer simulated tests correspond to tests carried out on "real-life" weldments in order to assess their quality and identify possible defects. Images and animations of the virtual weldments after the test are rendered and displayed. The user can then inspect the tested weldment(s) by moving the image(s) around in a display.

The invention is conceived for a training context, in which trainees generate virtual weldments, which are then tested and the result of the test can be used as criterion for passing or failing an examination.

3. Main Request

3.1 Claim 1 defines a method comprising a series of steps: rendering a weldment, subjecting the rendered weldment to a computer-simulated test, rendering the virtual weldment after the test and carrying out a computer-simulated analysis of the weldment and data related to the test so as to determine a pass/fail condition with respect to at least one characteristic. The board notes that claim 1 does not provide any details about how the defined method steps are to be carried out.

G 1/21b - The Business distribution scheme

 Key points

• “The appellant alleges that when recomposing the panel to deal with its first objection and again after the decision to replace the Chairman and a further member, Article 2(2) and 2(3) Business distribution scheme have not been applied correctly and the Enlarged Board is therefore not correctly composed. As a result the right of the appellant to have its case heard by lawfully designated judges and its right to be heard have been violated. ”
• “the provisions of [Article 2 of the Business distribution scheme of the Enlarged Board] do not indicate a competence for a panel as composed by the Chairman to change its own composition. Only the Chairman is given a role in changing a given composition of a panel. It would appear that an incorrect application of the provisions of the Business distribution scheme should thus be corrected by the Chairman of the Enlarged Board and not by the panel as composed by him. ”
• “For the reason of lack of competence the Enlarged Board as presently composed refrains from commenting on the alleged incorrect application of Article 2(2) and 2(3) of the Business distribution scheme of the Enlarged Board.”
• I prefer to refrain from commenting on the passage above.

https://www.epo.org/law-practice/case-law-appeals/recent/g210001eu2.html

34. With procedural requests 7 and 8 the appellant requests to change the composition of the Enlarged Board in this case. The appellant alleges that when recomposing the panel to deal with its first objection and again after the decision to replace the Chairman and a further member, Article 2(2) and 2(3) Business distribution scheme have not been applied correctly and the Enlarged Board is therefore not correctly composed. As a result the right of the appellant to have its case heard by lawfully designated judges and its right to be heard have been violated. This is a substantial procedural violation.

T 2232/17 - New subgroup but no special therapeutic effect

 Key points

• “Independent claim 1 of the main request reads: "1. Use of natalizumab or an immunologically active fragment thereof for the preparation of a medicament to be administered to a human subject in a steroid sparing effective amount to reduce and/or eliminate a need for steroid treatment in the human subject with a disease selected from the group consisting of inflammatory bowel disease, asthma, multiple sclerosis, graft versus host disease, host versus graft disease, spondyloarthropathies, and combinations thereof, wherein the human subject is under treatment with steroids."”
• “the board considers that "to reduce and/or eliminate a need for steroid treatment", does not define a different clinical situation to that in which this feature would be absent. This is because reducing the need for treatment only defines a situation which may or may not lead to a difference in treatment. The underlying medical use defined in claim 1 is therefore not different from the administration of natalizumab in the absence of any considerations about the need for steroid treatment. In other words, the feature "to reduce and/or eliminate the need for steroid treatment" does not limit the subject-matter of the claim.”
• In AR-2, claim 1 additionally specifies that: “ that the human subject to be treated is further defined as "refractory, intolerant or dependent on steroids" ”
• “It is established case law of the boards of appeal that the use of the same compound in the treatment of the same disease for a particular group of subjects can represent a new therapeutic application, provided that it is carried out on a new group of subjects which is distinguished from the known group by its physiological or pathological status (see e.g. T 19/86, OJ EPO 1989, 24, point 8 of Reasons; T 893/90, point 4.2 of Reasons; T 1399/04, point 35 of Reasons and T 734/12, point 24 of Reasons). In the present case, the board has seen no evidence that patients suffering from MS and who are "dependent on steroids" differ in their physiological or pathological status from the general group of MS patients, in particular with respect to their suitability for being treated with natalizumab. The patent contains no data on the treatment of MS patients with steroids and/or natalizumab. Moreover, even if the patent was taken as disclosing a sub-group of "steroid dependent" patients, no special therapeutic or pharmacological effect of natalizumab in this sub-group is disclosed in the patent. Thus, even if the patients disclosed in document D4 were not considered to be dependent on steroids, this feature would not establish novelty.”
  
  
• The OD did not admit an auxiliary request. “As a further reason, the opposition division referred to the long duration of the oral proceedings and the late point in time (21:35 hours) when the appellant attempted to file the sets of claims of alternative auxiliary requests 3 to 5 (see point 27.1 of the decision). The board however notes that the appellant had attempted to replace all auxiliary request at an early stage of the oral proceedings (see minutes, point 4., "New Main Request") which was not permitted by the opposition division. Also this reason is therefore not considered pertinent.”
• Also the other reasons given are not convincing for the Board. “In view of the above, the board considers that the opposition division exercised their discretion in an unreasonable way, preventing the appellant from pursuing alternative auxiliary claim requests 3 to 5 which were intended to address issues with regard to sufficiency of disclosure, novelty and inventive step.”
• The case is remitted.

T 2232/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172232eu1.html

Independent claim 1 of the main request reads:

"1. Use of natalizumab or an immunologically active fragment thereof for the preparation of a medicament to be administered to a human subject in a steroid sparing effective amount to reduce and/or eliminate a need for steroid treatment in the human subject with a disease selected from the group consisting of inflammatory bowel disease, asthma, multiple sclerosis, graft versus host disease, host versus graft disease, spondyloarthropathies, and combinations thereof, wherein the human subject is under treatment with steroids."

Reasons for the Decision

Main request and auxiliary requests 1 and 2, all submitted with the statement of grounds of appeal

Admission in the appeal proceedings (Article 12(4) RPBA 2007)

1. Pursuant to Article 12(4) RPBA 2007, the board has the power to hold inadmissible requests which could have been presented in the proceedings before the opposition division even though they have been submitted with the statement of grounds of appeal. In the board's opinion, the provision applies a fortiori to requests which were presented in opposition but subsequently withdrawn because, as in the cases explicitly addressed in the provision, the opposition division was likewise prevented from taking a decision on these requests.

T 2773/18 - Sufficiency in the mechanical field

Key points

• [The opponent's insufficiency argument] fails to convince the Board, not least because it misapplies case law developed in the field of chemistry, where a claimed invention resides in a compositional range or other range of values but the associated effect may not be proven or plausible for large parts of that range, to a claimed invention in the mechanical field, even if it claims no ranges.
• “By its very nature a claim in this field, which - often in functional or other generic terms - attempts to capture the essence of some concrete machine or mechanical structure (or its operation), is schematic allowing for some breadth of interpretation. It may be that on clever construction subject-matter can be found to be covered within that breadth that may not solve the problem or achieve the desired effect. However, this is normally not an issue of lack of disclosure, but rather of claim construction.”

T 2773/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182773eu1.html

3. Sufficiency of disclosure - Article 100(b) EPC

3.1 The contention of lack of sufficiency of disclosure concerns the expression "upper part of the tower" that according to paragraph 022 of the patent is defined as the part of the tower located above the sea spray zone. The appellant argues that the claim is neither limited to an offshore wind turbine nor is the dimension of the lower and upper parts limited to a minimum size or height. The scope of claim 1 thus covers embodiments where the inlet is located quite low above sea level and therefore unable to achieve the technical effect of drawing outside air with a low water and salt content as explained in paragraphs 008 to 010 of the patent.

3.2 This argument fails to convince the Board, not least because it misapplies case law developed in the field of chemistry, where a claimed invention resides in a compositional range or other range of values but the associated effect may not be proven or plausible for large parts of that range, to a claimed invention in the mechanical field, even if it claims no ranges.

T 0547/17 - Two, the same, partial problems

 Key points

• The claim at issue has two distinguishing features.
• The Board: “In conclusion, both distinguishing features are aimed at maximising the flux linkage but without influencing each other because the flux linkages at the pole claw roots and at their tips are independent of each other. The Board therefore agrees with the appellant, that there is no synergy. It follows that the first and second partial technical problems addressed by the two distinguishing features are both to maximise the output current.”
• “Since there is no synergy, the solutions to the partial problems can be assessed separately.”

T 0547/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t170547eu1.html

decision text omitted

T 1221/19 - Clarity and amendments in the description

 Key points

• In this opposition appeal, “the board considers that the description of the patent may also be examined for compliance with Article 84 EPC only when, and then only to the extent that, the amendment introduces non-compliance with Article 84 EPC. This is in accordance with both decisions, G 9/91 and G 3/14.”

T 1221/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t191221eu1.html

20. In the decision G 3/14 (OJ EPO 2015, A102), the Enlarged Board stated that the requirements of Article 84 EPC are part of the requirements of the European Patent Convention within the meaning of Article 94 EPC that have to be fulfilled on grant, and that Article 94 EPC requires that the application and the invention to which it relates, i.e. the whole content, must be examined for compliance with the requirements of the EPC (G 3/14, supra, points 48, 49 and 54 of the Reasons). In this decision, the Enlarged Board of Appeal stated that in considering whether, for the purpose of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with Article 84 EPC only when, and then only to the extent that, the amendment introduces non-compliance with Article 84 EPC (Order of the decision) (in italics by the board).

21. In line therewith, the board considers that the description of the patent may also be examined for compliance with Article 84 EPC only when, and then only to the extent that, the amendment introduces non-compliance with Article 84 EPC. This is in accordance with both decisions, G 9/91 and G 3/14. Thus, it is for the board to assess whether the amendment introduced on page 6 of the description on 24 September 2014 introduces non-compliance with Article 84 EPC.

T 2371/18 - No duty to monitor the online file

 Key points

• “For the purposes of Article 113(1) EPC, parties and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (cf. R 4/17, point 4 of the reasons)”
• “In the case at hand, auxiliary request I was filed before the expiry of the deadline the opposition division had set under Rule 116(1) EPC. It was therefore not filed late by the patent proprietor. Auxiliary request I also addressed deficiencies which had been identified by the opposition division, and the opposition division gave the opponent the opportunity to comment on the admittance of auxiliary request I (see point 7 of the minutes of the oral proceedings before the opposition division).”
• The Board does not comment on the Rule 79 response period.
• “The opposition division further stated in its written decision that three weeks [between receipt of the AR by the opponent and the oral proceedings] were sufficient for the opponent to analyse the new request. In this context, it referred to the extent of the amendments carried out and to the aid provided by the patent proprietor's comparison table (see points 15.1 and 16.1 of the decision under appeal), as well as to carrying out a search if deemed necessary by the opponent []. Thereby, the opposition division applied the correct principles and addressed the opponent's main arguments. The Board thus concludes that the opposition division exercised its discretion with regard to the request for postponement neither according to the wrong principles nor in an unreasonable way which would have exceeded the proper limits of its discretion. In this context, it is not for the Board to say whether a longer period of preparation - which could have been achieved by setting an earlier final date for making written submissions under Rule 116(1) EPC - may have been more appropriate in the given circumstances.”
• I note that it seems this Board assesses alleged substantial procedural violations by the OD in a deferential way. The Board does not examine whether the 3 weeks were actually sufficient to satisfy the opponent's right to be heard, only that the OD said so and gave reasons. 

T 2371/18
https://www.epo.org/law-practice/case-law-appeals/recent/t182371eu1.html

6. Right to be heard and reimbursement of the appeal fee

6.1 In essence, the opponent argued that three weeks between having been informed of the contents of auxiliary request I on 13 February 2018 and the oral proceedings on 7 March 2018 had not been a sufficient time to react to auxiliary request I, in particular in view of the complexity of the amendments contained therein. Therefore, the opposition division should have either not admitted auxiliary request I into the proceedings or postponed the oral proceedings. The failure to do neither constituted a violation of their right to be heard under Article 113(1) EPC.

T 0041/19 - Appellate review of findings of fact (III)

 Key points

• Board 3.2.01 sticks with its earlier decision T1418/17 that the Board should only review the OD's evaluation of the evidence for clear error. The Board does not comment on T 1604/16 of Board 3.2.02.
• The present Board also considers that a “eidesstattliche Versicherung” (written signed witness declaration) is also valid as evidence, even if the party submitting that evidence does not offer the witness for hearing. Rather the other party must formally request a hearing of the witness (and bear the costs), according to the present Board.

T 0041/19

epo.org/law-practice/case-law-appeals/recent/t190041du1.html

2.2 Aus Sicht der Kammer ist es nicht Aufgabe des Beschwerdeverfahrens, die Beweiswürdigung erneut vorzunehmen, sondern die Beweiswürdigung der Einspruchsabteilung zu überprüfen. Die Entscheidung über die Beweiswürdigung der ersten Instanz wird nur dann aufgehoben, wenn sie nicht rechts- oder logikfehlerfrei ist (siehe hierzu auch T 1418/17, Entscheidungsgründe 1.3).

2.3 Die Kammer konnte in der Entscheidung der Einspruchsabteilung bei der Beurteilung der von den Parteien vorgelegten Beweismitteln jedoch kein fehlerbehaftetes Vorgehen erkennen.

[...]

2.3.2 Das in diesem Zusammenhang von der Beschwerdeführerin (Patentinhaberin) vorgetragene Argument, eine eidesstattliche Versicherung dürfe nur dann berücksichtigt werden, wenn parallel dazu die die eidesstattliche Versicherung abgebende Person als Zeuge befragt werden könne, kann nicht gefolgt werden.

T 0482/18 - Clarity objection as assertion of fact

 Key points

• The opponent raises new objections under Art. 123(2) and Art. 84 during the oral proceedings before the Board, regarding a term in the claim not previously attacked on those grounds (the debate before the OD regarding Art. 123(2) concerned other features). The Board does not admit the attacks. In particular, the Board finds that the opponent's new submissions on Articles 123 (2) EPC and 84 EPC 1973 are [based] on the assertion a new fact according to which a particular subject matter of the patent, or a particular feature of the claims of the patent, is not clear and contains information that goes beyond the content of the original application. This even though it is based only on the patent as granted and the application as filed, which are part of the proceedings.
• The Board reviews the case law “Both decisions [T 1914/12 and T 701/97] are clearly based on the assumption that the content of the application in the version originally filed and of the granted patent are to be regarded as facts that are always and in full in the proceedings. New arguments on novelty (T 1914/12) or original disclosure (T 701/97) must therefore always be taken into account, since they do not introduce any new facts into the proceedings.”
• The Board does not share the view of those decisions.
• “ administrative proceedings before the EPO boards of appeal [are] based on factual submissions, i.e. the assertion of facts [by the parties]. It is alien to the character of judicial proceedings to name only the one legal reason for a claim, which has already been introduced and based on certain facts, and then leave it to the court to pick out the appropriate facts from the large pool of facts available. This also applies in the case of the principle of ex officio investigation in inter partes proceedings before the boards of appeal of the EPO. Here, too, the appellant must specifically present the individual facts on which he is basing himself in the proceedings. If this happens within the time limits set by the EPC, these facts are in principle in the proceedings, otherwise they need not be taken into account as being too late under Article 114 (2) EPC 1973 and in particular the RPBA specifying this legal norm.”
• “According to the above considerations, the introduction of new arguments requested by the opponent regarding the original disclosure and clarity of the term "rod-shaped" in feature M1.1 would necessarily include new [factual] submissions [" Sachvortrag" ], ie the introduction of new facts.”
• “The opponent's new submission on Articles 123 (2) EPC and 84 EPC 1973 is therefore not only based on the facts generally mentioned above by the opponent (original ground for opposition; wording of the claims; original application), but also on the assertion a new fact according to which a particular subject matter of the patent, or a particular feature of the claims of the patent, is not clear and contains information that goes beyond the content of the original application. Since the alleged fact is not already in the appeal proceedings, the opponent's new submission on Articles 123 (2) EPC and 84 EPC 1973, including possible arguments to prove the assertion, is not to be admitted to the proceedings.”

T 0482/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180482du1.html

Translation

Reasons for decision

1. Main request - Articles 123 (2) EPC and 84 EPC 1973

The claims of the main request are identical to those of auxiliary request 1, on the basis of which the opposition division maintained the patent.

The subject matter of independent claims 1 and 4 of the current main request meets the requirements of Article 123 (2) EPC and claims 1 and 4 those of Article 84 EPC 1973.

1.1 The objections raised by the opponent in the first instance under Article 123 (2) EPC and 84 EPC 1973 with regard to the features of claims 1 and 4 of the present main request were rejected by the opposition division. See the contested decision, pages 5 and 6 on the amended feature M1.7 in claims 1 and 4 of the main request at the time as well as pages 9 and 10 regarding the fulfillment of the requirements of Articles 123 (2) and 84 EPC after the addition of feature M1.1 in Claim 1 of the current main request (at the time auxiliary request 1) with the term "rod-shaped". In the statement of grounds of appeal, the opponent did not challenge the decision of the opposition division in this respect. As in the notice attached to the summons to the oral hearing, points 6.1 and 6.2,Having already provisionally expressed, the board also has no concerns that the subject-matter of Claims 1 and 4 meet the requirements of Article 123 (2) EPC and Claims 1 and 4 meet the requirements of Article 84 EPC 1973.

1.2 Admission of the opponent's new presentation

The board does not allow the announced new submission of the opponents with regard to objections under Article 123 (2) EPC and 84 EPC 1973 in the proceedings (Article 13 RPBA 2020).