T 1038/18 - (IV) Case amendment after summons

 Key points

•  To jump to the conclusion: “Consequently, the mentioned considerations constitute in the board's view cogent reasons justifying exceptional circumstances under which the board, in the exercise of its discretion under Article 13(2) RPBA 2020, considered appropriate to admit the appellant's arguments of lack of inventive step over document D1 into the proceedings.”
• So what are the exceptional circumstances? I think the Board is quite liberal but as noted below, the reasoning is a bit unclear as to what precisely the relevant procedural facts are.
• “The board notes that in [the preliminary opinion the Board expressed the view that]  that, contrary to the opposition division's view[,] D1 disclosed [features X and Y] and that, also contrary to the opposition division's view, document D1 did not disclose [feature Z]. Therefore, the board's preliminary opinion substantially deviated from the opposition division's assessment of novelty. In particular, the preliminary opinion was, on the one hand, favourable to the appellant's [opponent] submissions as regards the claimed feature [X and Y] but, on the other hand, the appellant was confronted with the board's preliminary opinion that [feature Z] would constitute, contrary to the opposition division's view, a distinguishing feature of the claimed device over document D1 and that this feature would constitute the sole distinguishing feature of the claimed device. ”
• “In the board's view these considerations justified, in the circumstances submitted by the appellant and mentioned above [see below], that the appellant [opponent], in reply to the preliminary opinion expressed by the board, submitted for the first time during the appeal proceedings arguments of lack of inventive step over document D1 in respect of a claimed feature that did not correspond to the features identified by the opposition division as new, but was subsequently identified in the board's preliminary opinion as the sole distinguishing feature over document D1. ”
• The opponent/appellant also submitted that “ with the statement of grounds of appeal the appellant submitted arguments in support of their view that the features of claim 1 identified by [the opposition division] as being new over document D1 were disclosed in document D1. In these circumstances - as already stated in the statement of grounds of appeal - there was, according to the established case law ([CLBA IV.C.3.4.2]), no need to present at that time arguments relating to inventive step.”
• As a comment, it is not clear to me if the patentee/respondent had defended feature Z as a distinguishing feature in its appeal reply brief, or that the Board identified the feature of its own motion as providing a difference with D1. In the former case, the appropriate time to submit inventive step arguments in reply would be the appellant's/opponent's rejoinder. In the latter case, this would be a regular reason to admit response submissions under Art. 13(2). So, in the former case, it is remarkable that the Board does not explain why the appellant/opponent was not expected to have submitted the attack already with its rejoinder. In the latter case, the  Board's extensive reasoning on admissibility seems superfluous. 

T 1038/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

3.2 Inventive step over the embodiment of Fig. 16a to 16c of document D1 as the closest state of the art

3.2.1 Amendment to the appellant's case after notification of the summons - Article 13(2) RPBA 2020

In the statement of grounds of appeal the appellant, in addition to raising an objection of lack of novelty of the device of claim 1 over document D1 and submitting arguments in support of the objection, also raised an objection of lack of inventive step of the mentioned device over document D1, without however submitting arguments in support of this objection. Subsequently, with a letter filed after notification of the summons to oral proceedings before the board, the appellant submitted substantive arguments in support of their view that the subject-matter of claim 1 did not involve an inventive step over document D1. These arguments constitute an amendment to the appellant's case in appeal within the meaning of Article 13(2) RPBA 2020.

The respondent objected that the appellant's arguments of lack of inventive step over document D1 were not, but could precautionarily have been, submitted with the statement of grounds of appeal, that the arguments were submitted at a late stage of the appeal proceedings, and that for these reasons these arguments of lack of inventive step should not be admitted into the proceedings.

T 1038/18 - (III) Fresh grounds in appeal

 Key points

•  “The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).”
• “The respondent [patentee] submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.”
• Art. 100(c) was not invoked in the Notice of opposition, nor introduced by the OD. Hence, G 10/91 applies.
• “The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 [headnote 3])”
• I recall that G 10/91 r.19 stated that: “In order to avoid any misunderstanding, it should finally be confirmed that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with the requirements of the EPC (e.g. with regard to the provisions of Article 123(2) and (3) EPC)”. 
• As this present decision illustrates, this must be applied in the same way as for G 3/14: does the amendment introduce a new (alleged) deficiency into the claims? See also T 0895/18 for a different (in my view, incorrect) approach. 

T 1038/18 

 

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

6.1.2 The appellant [opponent] submitted during the appeal proceedings that the subject-matter of claim 1 of auxiliary request 3 resulted in an unallowable generalisation of the content of the application as filed (Article 123(2) EPC).

The respondent submitted that the appellant's objection under Article 123(2) EPC amounted to the introduction of the ground for opposition under Article 100(c) EPC and that they did not give their consent to the introduction of this ground for opposition.

The board notes that the opposition was only based on the grounds for opposition under Articles 100(a) and 100(b) EPC (cf. point I above, second paragraph), that claim 1 only results from the combination of claims as granted (see point 6.1.1 above, first paragraph), and that therefore - as submitted by the respondent - the appellant's objection under Article 123(2) EPC amounts to an objection under Article 100(c) EPC in respect of the corresponding claims as granted and therefore to the introduction of a ground for opposition neither invoked by the appellant in the notice of opposition, nor introduced by the opposition division during the first-instance proceedings. In these circumstances, and in view of the fact that the respondent did not consent to the introduction of the ground for opposition under Article 100(c) EPC, the mentioned objection cannot be considered by the board (see G 10/91 (OJ EPO 1993, 420), point 3 of the Opinion).

T 1038/18 - (II) Art.83 and dependent claims

 Key points

• “The opposition division held in its decision that the requirement of Article 83 EPC was met because, first, the requirements were met by the corresponding independent claim 1 and a dependent claim only represented additional non-essential details of the invention and, second, any potential contradiction with claim 1 would represent a clarity issue, which was not a ground for opposition.
• The board, however, cannot follow the opposition division's arguments because the requirement of sufficiency of disclosure under Articles 100(b) and 83 EPC is not confined to the invention defined in independent claims and ... it also concerns the invention defined in dependent claims referring back to them. 
• In addition, the mere fact that the appellant's objection under Article 100(b) or 83 EPC is based on a possible contradiction and that a contradiction may give rise to an objection of lack of clarity under Article 84 EPC which does not constitute a ground for opposition does - contrary to the opposition division's view - per se not justify omitting consideration of the mentioned objection under Articles 100(b) or 83 EPC.”
• The Board: on the merits of the objection: “Therefore, only a strict literal reading of claims 1 and 7 of auxiliary request 3 without taking into account the limitations imposed by the technical features of the claimed subject-matter would lead to the contradiction alleged by the appellant [opponent].”
• In this case, if the objection would have had merits regarding dependent claim 7, cancelling dependent claim 7 would have addressed the issue, without any need to amend claim 1. 

T 1038/18

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

The opposition division held in its decision that the requirement of Article 83 EPC was met because, first, the requirements were met by the corresponding independent claim 1 and a dependent claim only represented additional non-essential details of the invention and, second, any potential contradiction with claim 1 would represent a clarity issue, which was not a ground for opposition.

The board, however, cannot follow the opposition division's arguments because the requirement of sufficiency of disclosure under Articles 100(b) and 83 EPC is not confined to the invention defined in independent claims and - as submitted by the appellant - it also concerns the invention defined in dependent claims referring back to them. In addition, the mere fact that the appellant's objection under Article 100(b) or 83 EPC is based on a possible contradiction and that a contradiction may give rise to an objection of lack of clarity under Article 84 EPC which does not constitute a ground for opposition does - contrary to the opposition division's view - per se not justify omitting consideration of the mentioned objection under Articles 100(b) or 83 EPC.

T 1038/18 - (I) The respondent's rejoinder in appeal

 Key point

• The opponent appeals. 
• “ With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant [opponent] submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.”
• “The respondent [patentee] objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings.
• The Board, in a very important analsyis: “The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.”

• “It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant [opponent] could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. 
• “in particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant [/opponent] in the circumstances noted above to speculate at that point in time which lines of defence the respondent [/patentee] would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. 
• Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant [opponent] already submitted arguments in support of the mentioned objection in respect of dependent claims [in the first instance proceedings and in the SoG] does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.”
  
  
• The Board, in a further important remark: “It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.”
• I'm not sure if only changes of a party's appeal case which can be held inadmissible without violating Art. 113 (1) EPC, are amendments to the appeal case in the sense of the RPBA.

https://www.epo.org/law-practice/case-law-appeals/recent/t181038eu1.html

3.2 Inventive step over the embodiment of Fig. 16a to 16c of document D1 as the closest state of the art

3.2.1 Amendment to the appellant's case after notification of the summons - Article 13(2) RPBA 2020

In the statement of grounds of appeal the appellant, in addition to raising an objection of lack of novelty of the device of claim 1 over document D1 and submitting arguments in support of the objection, also raised an objection of lack of inventive step of the mentioned device over document D1, without however submitting arguments in support of this objection. Subsequently, with a letter filed after notification of the summons to oral proceedings before the board, the appellant submitted substantive arguments in support of their view that the subject-matter of claim 1 did not involve an inventive step over document D1. These arguments constitute an amendment to the appellant's case in appeal within the meaning of Article 13(2) RPBA 2020.

The respondent objected that the appellant's arguments of lack of inventive step over document D1 were not, but could precautionarily have been, submitted with the statement of grounds of appeal, that the arguments were submitted at a late stage of the appeal proceedings, and that for these reasons these arguments of lack of inventive step should not be admitted into the proceedings.

The appellant submitted that the issue of inventive step over document D1 as closest state of the art was already addressed during the first-instance proceedings and in particular by the opposition division in the decision under appeal, that the objection was already raised in the statement of grounds of appeal, and that with the statement of grounds of appeal the appellant submitted arguments in support of their view that the features of claim 1 identified by the opposition division's as being new over document D1 were disclosed in document D1. In these circumstances - as already stated in the statement of grounds of appeal - there was, according to the established case law ("Case Law of the Boards of Appeal", EPO, 9th edition (2019), section IV.C.3.4.2), no need to present at that time arguments relating to inventive step. Furthermore, the preliminary assessment of novelty presented by the board deviated substantially from that of the opposition division so that it was justified to react to the preliminary opinion of the board by submitting substantive arguments of lack of inventive step.

The board notes that in the communication annexed to the summons to the oral proceedings the board expressed the preliminary opinion that, contrary to the opposition division's view (see point 3.1.2 above, second paragraph), document D1 disclosed first and second microimage components having different colour densities and that, also contrary to the opposition division's view, document D1 did not disclose a coloured layer as claimed, and in particular a layer such that the second microimage components "appear in a colour dependent [...] on the [...] coloured layer" (see point 3.1.5 above). Therefore, the board's preliminary opinion substantially deviated from the opposition division's assessment of novelty. In particular, the preliminary opinion was, on the one hand, favourable to the appellant's submissions as regards the claimed feature relating to the microimage components having different colour densities but, on the other hand, the appellant was confronted with the board's preliminary opinion that the different colour of the claimed layer would constitute, contrary to the opposition division's view, a distinguishing feature of the claimed device over document D1 and that this feature would constitute the sole distinguishing feature of the claimed device.

In the board's view these considerations justified, in the circumstances submitted by the appellant and mentioned above, that the appellant, in reply to the preliminary opinion expressed by the board, submitted for the first time during the appeal proceedings arguments of lack of inventive step over document D1 in respect of a claimed feature that did not correspond to the features identified by the opposition division as new, but was subsequently identified in the board's preliminary opinion as the sole distinguishing feature over document D1. Consequently, the mentioned considerations constitute in the board's view cogent reasons justifying exceptional circumstances under which the board, in the exercise of its discretion under Article 13(2) RPBA 2020, considered appropriate to admit the appellant's arguments of lack of inventive step over document D1 into the proceedings.

[...]

5. Auxiliary request 2

5.1 Novelty

Claim 1 of auxiliary request 2 differs from claim 1 of the main request in that the claim further requires that the second microimage components are formed as a screened pattern. It was undisputed that this feature was new over document D1. Therefore, the device of claim 1 of auxiliary request 2 is new over the device of document D1 in the distinguishing feature already identified in point 3.1.5 above, and in that the second microimage components are formed as a screened pattern (Articles 52(1) and 54(1) EPC).

5.2 Addition to the appellant's case in appeal in reply to the respondent's reply to the statement of grounds of appeal - Consideration of Article 13(1) RPBA 2020

5.2.1 With the letter dated 1 March 2019 filed in reply to the respondent's reply to the statement of grounds of appeal the appellant submitted for the first time during the proceedings that the priority of the patent was not validly claimed in respect of the claimed invention, that consequently document D3 (publication date of 27 May 2010) considered during the first-instance proceedings as constituting state of the art within the meaning of Article 54(3) EPC constituted state of the art within the meaning of Article 54(2) EPC in respect of the patent in suit (filing date of 1 March 2011), and that the subject-matter of claim 1 of auxiliary request 2 did not involve an inventive step over document D1 as closest state of the art in combination with document D3.

The respondent objected that the appellant's submissions relating to the validity of the priority and the combination of documents D1 and D3 were submitted too late and could already have been submitted with the statement of grounds of appeal, especially in view of the fact that the claims of auxiliary request 2 corresponded to the claims of the third auxiliary request submitted during the first-instance proceedings. In addition, in the statement of grounds of appeal the appellant already referred to their first-instance submissions relating, among other issues, to the issue of novelty over document D3 under Articles 52(1) and 54(3) EPC and to the patentability of the dependent claims, and all these submissions were silent as to the validity of the priority and the new attack of inventive step. Therefore, the new appellant's submissions constituted a significant deviation from the case previously presented by the appellant and should not be admitted into the proceedings.

5.2.2 The board notes, however, that document D3 was considered by the appellant during the first-instance proceedings in support of the ground for opposition of lack of novelty raised in respect of the patent as granted and that, as far as this ground for opposition is concerned, it was irrelevant at that time whether document D3 constituted state of the art within the meaning of Article 54(3) EPC or within the meaning of Article 54(2) EPC. In addition, in the present case the opposition was rejected by the opposition division, and the appellant was only required in the statement of grounds of appeal to substantiate why they considered non-convincing the reasons given by the opposition division in respect of the patent as granted. Consequently, there was no need at that time to consider whether the priority was validly claimed, i.e. whether document D3 constituted state of the art within the meaning of Article 54(2) EPC. The question of the validity of the priority and of the status of document D3 as state of the art became only pertinent when subsequently the respondent, in reply to the statement of grounds of appeal, filed auxiliary requests, and in particular the amended claims of the then auxiliary request 3 and now auxiliary request 2. Therefore, there was no need for the appellant to submit the issues under consideration already with the statement of grounds of appeal, and the submission of the mentioned issues in reply to the respondent's reply to the statement of grounds of appeal are, in the board's view, justified in the circumstances of the case.

It is also noted that the claims of auxiliary request 2 correspond to the claims of the third auxiliary request submitted during the first-instance proceedings, and that the appellant could precautionarily have filed submissions in respect of the mentioned claims with the statement of grounds of appeal. However, contrary to the respondent's view, there was no need for the appellant to have followed such an approach. In particular, as submitted by the appellant by reference to decision T 919/17 (point 1 of the reasons), it cannot be expected from the appellant in the circumstances noted above to speculate at that point in time which lines of defence the respondent would adopt, let alone to anticipate that the respondent, in reply to the appeal, would re-submit in appeal the same claims of auxiliary requests previously submitted during the first-instance proceedings. Analogous considerations apply to the respondent's submissions relating to the dependent claims and the facts that claim 1 of the present auxiliary request 2 results from the combination of claim 1 as granted with the feature of dependent claim 2 as granted and the appellant already objected in the opposition notice (section VII) and in the statement of grounds of appeal (point VIII.2) to the patentability of the features of the dependent claims. The fact that the appellant already submitted arguments in support of the mentioned objection in respect of dependent claims does, in the board's view, not imply that the appellant's case was then to be seen as complete as regards the features of the dependent claims or that the appellant's case was then subsequently necessarily confined to these submissions.

5.2.3 It follows from the above considerations that the submissions relating to the issue of the validity of the claimed priority and to the issue of inventive step in view of the combination of document D1 with document D3 were filed by the appellant in reply to the respondent's reply to the statement of grounds of appeal in the exercise of their right to be heard and to submit comments in respect of the amended claims submitted with the mentioned respondent's reply to the statement of grounds of appeal. In these circumstances, the board considers that the mentioned submissions, although constituting an addition to the appellant's case in appeal, do not constitute an amendment of their appeal case within the meaning of Article 13(1) RPBA 2020, i.e. an amendment that may be admitted only at the discretion of the board, because the submissions are, in the mentioned circumstances, part of the appellant's case in appeal and are to be taken into account in the proceedings - i.e. without a consideration of the mentioned submissions being subordinated to a discretionary decision of the board.

T 0031/18 - Imatinib and (no) plausibility

 Key points

• I missed this case when it was published in Feb. 2020.
• “The respondents [patentees] concur with the opposition division in the definition of the problem, namely the provision of imatinib tablets improving patients compliance, i.e incorporating the entire daily dosage of 400 mg imatinib in a single tablet of acceptable dimensions, or reducing the dimensions of a tablet comprising a 100 mg dose, wherein the tablets have acceptable properties, as regards hardness, and a disintegration time of 20 minutes or less.”
• “It has to be investigated whether there is sufficient evidence supporting the alleged effects. For this purpose, documents C76 and C70 were mentioned by the respondents [patentees] and discussed during oral proceedings in support of the existence of an effect.”
• “The use of document C76 was contested by [opponent] appellant 02. According to appellant 02, this document related to experiments on desired tablet properties which were carried out after the filing date and which referred to effects not plausibly shown to be achieved by the claimed tablets in the original application. There was no mention or evidence in the original application that an effect as regards hardness, abrasion resistance, friability or disintegration time had been plausibly achieved by the claimed tablets.”
• “The Board cannot share this view. This line of argumentation appears to be incompatible with the assessment of inventive step according to the problem-solution approach, ... Said technical effect or problem must either be explicitly mentioned in the application as filed or at least be derivable therefrom, but not necessarily originally supported by experimental evidence. It can indeed not be expected from a patent applicant to include an extensive number of experimental evidences corresponding to all technical features which can possibly be claimed in the application as filed and which can possibly constitute a future distinguishing feature over the closest prior art, since said closest prior art and its technical disclosure may not be known to the applicant at the filing date of the application.”
• “C76 has been filed with the intention to proof the [advantageous properties stated in the patent] reached by tablets [...] comprising cross-linked PVP in the claimed amount over the tablets obtained by wet granulation and comprising cross-linked PVP in an amount lower than 10% by weight. Hence, disregarding the tests of C76 which intend to demonstrate an improvement in the tablet properties over the closest prior art would be incompatible with the problem-solution approach.” 
• However, C76 is not a clear comparison with example 8 of the prior art document D7. “Accordingly, the experiment C76 cannot constitute evidence supporting the alleged effects.”
• This implies that the above remarks regarding the plausibility requirement being incompatible with the problem-solution approach is obiter, i.e. is also a point that Board 3.3.07 wanted to express in this decision.
• The difference was using wet granulation vs. dry compression to make the tablets, document C76A and C76B purportedly showing the same advantages but using direct compression, as in C7. However, these documents were not admitted as being late filed. 
• “Since it is not possible to establish the existence of an improvement over the prior art as regards the amount of cross-linked PVP, the technical problem must be formulated as proposed by [opponent] appellant 02, namely the provision of an alternative tablet comprising a high amount of compound I [imatinib].”
• After detailed analysis, “Accordingly, the claimed solution as regards the amount of 10-35% by weight of cross-linked PVP is obvious.”
• The patent is revoked.
• It was the 2nd appeal, after T 0571/11. The patent was granted in 2007, with PCT application filed in 2003. So the patentee managed to keep something pending for about 18 years, with the EPO needing 14 years to finally dispose of the opposition.
• Let me be clear: I think such a length of proceedings is generally unacceptable for the general public, not only but in particular for patents for medicaments.
  
  
• The Board, regarding partial problems: “The Board can however not follow this argument [of patentee, that the partial problem approach must not be used because the two distinguishing features are interrelated], since the application as filed is silent as regards this alleged interrelation or interdependence, which is also not implicitly derivable from the disclosure of the application as filed.” “the alleged interrelation between the amount of compound I of 30-80% by weight and of cross-linked PVP of 10-35% by weight does not find any basis in the application as filed and is also not implicitly derivable therefrom. The effect of each distinguishing technical feature has therefore to be considered separately.”

T 0031/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180031eu1.html

2.4 The respondents concur with the opposition division in the definition of the problem, namely the provision of imatinib tablets improving patients compliance, i.e incorporating the entire daily dosage of 400 mg imatinib in a single tablet of acceptable dimensions, or reducing the dimensions of a tablet comprising a 100 mg dose, wherein the tablets have acceptable properties, as regards hardness, and a disintegration time of 20 minutes or less.

Appellant 09 defines the problem as the provision of a tablet comprising a high drug load, that disintegrates within a certain amount of time and that employs a compound other than microcrystalline cellulose as a binder.

T 0137/17 - Art. 123(2) and claim specifying combinations

Key points

• Claim 1 as granted is directed to a composition "comprising A, B1 and/or B2, and C1 and/or C2".
• Claim 1 as filed specified a composition comprising A, B, and C. Hence, during prosecution, B was limited to B1 and/or B2, and C was limited to C1 and/or C2.
• “The [opponent] argued that claim 1 required an explicit basis in the application as originally filed for each of the combinations arising from that feature, namely B1+C1, B1+C2, B1+C1+C2, B2+C1, B2+C2, B2+C1+C2, B1+B2+C1, B1+B2+C2 and B1+B2+C1+C2, and not every combination found the required basis.”
• The Board: “claim 1 does not individualise any of these combinations. This argument is thus not convincing.”
• The Board's reasoning seems rather remarkable in asserting that “claim 1 does not individualise any of these combinations”. On the other hand, it seems indeed straightforward that an Art. 123(2) objection can not be based on claim embodiments which are not "individualised" in the claim. However, when exactly is an embodiment "individualised"?
• There appears to be a connection with the two-list principle. 

 

T 0137/17  -

https://www.epo.org/law-practice/case-law-appeals/recent/t170137eu1.html

3. Amendments

3.1 Claim 1 as originally filed required a catalyst comprising

(A) a transition metal

(B) an organopolyphosphite, and

(C) an organomonophosphite ligand

T 1337/18 - Correction identity appellant

 Key points

• The Board finds the appeal admissible. The Board, in machine translation: “The board of appeal follows the established case law of the boards of appeal (see T 0875/06, T 97/98, G 1/12), which assumes that an incorrect or erroneous indication of the person of the appellant can be corrected or rectified. The prerequisite for such a correction is that it can be inferred with sufficient probability from the notice of appeal and the other contents of the file that the intention was to file the appeal on behalf of this person [i.e. the person requested to be entered as appellant], see T 875/06, r.3.” 
• The Board is convinced that the intention was to file the appeal in the name of the opponent and not in the name of the holding company.
• The requested correction was made by the registry of the board of appeal in line with T 875/06, r.4.
• 
  

T 1337/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t181337du1.html

Entscheidungsgründe

1. Die Beschwerde ist zulässig. Die Beschwerdekammer folgt der ständigen Rechtsprechung der Beschwerdekammern (siehe T 0875/06, T 97/98, G 1/12), die davon ausgeht, dass eine inkorrekte oder irrtümliche Angabe zur Person der Beschwerdeführerin korrigiert oder berichtigt werden kann. Voraussetzung einer solchen Berichtigung ist, dass aus der Beschwerdeschrift und dem übrigen Akteninhalt mit hinreichender Wahrscheinlichkeit entnommen werden kann, dass die Absicht bestand, die Beschwerde im Namen dieser Person einzulegen (siehe T 875/06, Entscheidungsgründe, Punkt 3.).

T 1511/15 - The first summons, for Art. 25(3) RPBA 2020

Key points

• This decision was published already 20.05.2021.
• From the headnote: “In a case where the Board has sent more than one summons to oral proceedings, it is normally the summons which was first sent which is "the summons to oral proceedings" within the meaning of Article 25(3) RPBA 2020”
• The same principle applies for Communications under Rule 100(2) EPC: the first Communication is relevant under Article 25(3) RPBA 2020.
• This decision is in line with T1156/15 issued 23.02.2021 not cited by the present Board: “it is immaterial for the application of Article 25(3) RPBA 2020 that further summons have been notified after the entry into force of the new Rules of Procedure merely replacing summons that were notified before that date. Therefore Article 13 RPBA 2007 is applicable”.
• The decision is also in line with T0950/16 r.3.2 published 13.11.2020.

Headnote:

 “In a case where the Board has sent more than one summons to oral proceedings, it is normally the summons which was first sent which is "the summons to oral proceedings" within the meaning of Article 25(3) RPBA 2020”

T 1511/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151511eu1.html 

3. Second auxiliary request: Applicable law

3.1 According to Article 25(3) RPBA 2020, where the summons to oral proceedings or a communication under Rule 100(2) EPC has been notified before the date of the entry into force of RPBA 2020, Article 13 RPBA 2007 shall continue to apply.

T 1112/19 - Whether a problem invention is compatible with the PSA

 Key points

• In this appeal against a refusal, the applicant argues that “In D1, there was no discussion or appreciation of the objective problem and no teaching to go towards the invention starting therefrom, which should be rather considered a "problem invention".”
• “First, the board recalls that the closest prior art does not have to disclose the "objective technical problem", which is only determined in the second step of the problem-solution approach ”
• “Third, regardless of the question whether a "problem invention" is compatible with the assessment of inventive step according to the problem-solution approach or to which extent it may generally justify the presence of an inventive step, the objective problem formulated above is typically apparent in [the computer technology at hand]”
• “With [certain technology considerations indicated by the Board] in mind, the skilled person would have deemed the objective technical problem likely to arise in the data network 106 of D1 as well, without any need to have it explicitly mentioned in the same document.”
• “ In conclusion, the recognition of that problem would have been obvious to the skilled person in the field of telecommunications and therefore cannot be a "problem invention" within the meaning of T 2/83.”

T 1112/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t191112eu1.html

2.1.9 The appellant [applicant, Goldman Sachs & Co. LLC]  submitted that even considering that the skilled person were to start with D1, there was no reason to require "replay" in the system of D1, which was directed to providing a summary of a stream. The summarised stream of D1 was not distributed over databases; there was no need for a particularly reliable playback of that stream. In D1, there was no discussion or appreciation of the objective problem and no teaching to go towards the invention starting therefrom, which should be rather considered a "problem invention".

2.1.10 This is not convincing.

First, the board recalls that the closest prior art does not have to disclose the "objective technical problem", which is only determined in the second step of the problem-solution approach on the basis of the technical effect(s) provided by those features which distinguish the claimed invention from that prior art (see e.g. T 698/10, Reasons 3.4; T 910/90; Reasons 5.1, last sentence).

T 2170/17 - Ice cream

Key points

• Claim 1 as granted reads: “1. Stabiliser system of natural ingredients for use in frozen confectionery characterised in that it comprises native rice starch, egg yolk as a natural emulsifier and citrus fibres.”
•  “The patent relates to an "all natural" frozen confectionery which can be manufactured without resorting to artificial ingredients. Standard stabiliser systems which comprise "E numbers" or chemically synthesised compounds can be dispensed with and organoleptic aspects such as creaminess are not compromised. The stabiliser system in the patent comprises native rice starch, egg yolk and citrus fibres. The citrus fibres may be expanded, i.e. processed so as to increase their surface area”
• About novelty over prior use: “However, it appears that this evidence, taken together, still does not allow to conclude that a sample (here: P1 to P3) includes rice starch, more particularly native rice starch. Similar considerations apply also for the (expanded) citrus fibres: O103 and O104 do not appear to show that apple fibres and citrus fibres are analytically distinguishable.”
• About inventive step" “Even if O80 [ a product information sheet, not dated] was considered prior art, in particular closest prior art, there appears to be no motivation or pointer for the skilled person to add citrus fibres to improve organoleptic properties such as creaminess of the ice cream.”
• The claims are considered to be inventive. 

T 2170/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t172170eu1.html

VII. The claims that are relevant for this decision are claims 1, 2, 3 and 8 of the patent as granted (main request):

"1. Stabiliser system of natural ingredients for use in frozen confectionery characterised in that it comprises native rice starch, egg yolk as a natural emulsifier and citrus fibres.

...

2.2 The opponent agreed with the decision and argued that claims 1 and 2 also lacked novelty in view of P1 to P3. The patent proprietor contested the opposition division's decision.

2.3 One of the issues in dispute was whether the composition of P1 to P3 was analysable. Here, the question was whether it would have been possible to determine that P1 to P3 included native rice starch, (expanded) citrus fibres and egg yolk.

T 1802/17 - Applicant's relevant comments must not be ingored

Key points

• The Examining Division refused the application for lack of inventive step. The Board finds the claims to be inventive. The Board turns to the alleged substantial procedural violation.
• “the appellant argued that the examining division had not taken into account his arguments explaining the technical features of the claims, in particular the distinction between sensors and switches, and the definition of the technical problem to be solved.”
• “Summarising, the examining division never commented on the applicant's arguments regarding the definition of the technical problem to be solved but kept repeating its own formulation of the technical problem. The examining division was of course not obliged to accept the applicant's definition of the technical problem, but it should have at least explained why it regarded its own definition more appropriate. ... In addition, the examining division never discussed the issue of switches and sensors despite the applicant's repeated arguments on the differences between them.”
• “the examining division did not address the applicant's comments but kept repeating its own reasoning without taking into account the applicant's objections to it. 
• The Board here adds: “Moreover, the applicant's comments, which related to the interpretation of technical features in the claims and the closest prior art, as well as to the formulation of the objective technical problem (a fundamental step in the assessment of inventive step according to the problem-solution approach) were touching upon crucial points of the inventive step assessment and were thus relevant for the decision to refuse the application.”
• “By ignoring these comments which could have had an influence on the final decision, the examining division did not respect the applicant's right to be heard according to Article 113(1) EPC and committed a substantial procedural violation.”

T 1802/17

https://www.epo.org/law-practice/case-law-appeals/recent/t171802eu1.html

3.3 The board is thus persuaded that the application according to the Main Request and the invention to which it relates meet the requirements of the EPC and a European patent is to be granted (Article 97(1) EPC).

4. Reimbursement of the appeal fee

4.1 The appellant requested reimbursement of appeal fee on the ground that the examining division had committed a series of substantial procedural violations. The appellant argued that the examining division, among others, had made up its mind to refuse the application before (or without) giving due consideration to the technical features of the claims (see points [76] to [108] of the statement of the grounds of the appeal).

More specifically, the appellant argued that the examining division had not taken into account his arguments explaining the technical features of the claims, in particular the distinction between sensors and switches, and the definition of the technical problem to be solved.

4.2 The procedure in the first instance can be summarised as follows:

[...]

4.3 Summarising, the examining division never commented on the applicant's arguments regarding the definition of the technical problem to be solved but kept repeating its own formulation of the technical problem. The examining division was of course not obliged to accept the applicant's definition of the technical problem, but it should have at least explained why it regarded its own definition more appropriate.

T 1857/19 - Cancelling claim category

 Key points

• “In comparison with this former first auxiliary request, all apparatus claims were deleted [in the current request]. The claims are thus limited to the method claims, i.e. to the claim category which was the principal subject of the discussion.” Therefore this amendment is automatically admitted, either because it is not case amendment because the deletion of the claims does not change the factual and legal framework, or because the fact that it significantly enhances procedural economy by clearly overcoming existing objections without giving rise to any new issues could be seen as exceptional circumstances in the sense of Article 13(2) RPBA 2020 (the Board leaves open the precise legal basis).
• The fact that the claims are limited by the amendment to claim category which was the principal subject of the discussion in the appeal proceedings prior to the amendment, distinguishes the case “from those underlying decisions T 2222/15 (Reasons 29 to 30) and T 1569/17 (Reasons 4.3.4), where the deletion of a claim category shifted the case substantially, thereby giving rise to new issues to be decided upon”.
• 
  

T 1857/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t191857eu1.html

Reasons for the Decision

1. Article 13(2) RPBA 2020

1.1 The claims under consideration are the method claims of the former first auxiliary request of 9 June 2021, which was filed to address the objections under Article 123(2) EPC newly raised in the board's communication pursuant to Article 15(1) RPBA 2020; to be faced with new objections constitutes extraordinary circumstances in the sense of Article 13(2) RPBA 2020.

In comparison with this former first auxiliary request, all apparatus claims were deleted. The claims are thus limited to the method claims, i.e. to the claim category which was the principal subject of the discussion. The circumstances of the case are therefore similar to those in T 1480/16, Reasons 2.3, and T 995/18, Reasons 2, in which the deletion of the claims did not change the factual and legal framework and was thus not considered an amendment to a party's appeal case.

This distinguishes the case from those underlying decisions T 2222/15 (Reasons 29 to 30) and T 1569/17 (Reasons 4.3.4), where the deletion of a claim category shifted the case substantially, thereby giving rise to new issues to be decided upon.

Even if the deletion of a claim category were always to be considered an amendment, the fact that it significantly enhances procedural economy by clearly overcoming existing objections without giving rise to any new issues could be seen as exceptional circumstances in the sense of Article 13(2) RPBA 2020.

The request is thus taken into account.

Please disregard the earlier post about T 2558/18

Dear readers and followers of this weblog,

Please disregard the follow.it email notification of 14 November and first version of the post "T 2558/18 - The Board invokes Art. 164(2) EPC". It was an unfished draft prematurely published by mistake. I've immediately deleted the post when noticing that it was published. However, I can't undo the emails that were sent out by follow.it.

In fact, I had decided to first obtain an English translation of the decision before writing more comments about it, let alone publish the blog post I was working on (moreover, I wish to study if G 7/93 is perhaps relevant for the matter). I deeply regret that I published the post by mistake. 

The unusual formatting and the out-of-turn publication on Satdurday 13 November with email notification also out of turn on Sunday 14 November should confirm that the draft was prematurely published.

I apologize for the mistake and ask for your understanding and cooperation. I've already taken measures to better prevent such a mistake in the future.

Peter

T 2558/18 - The Board invokes Art. 164(2) EPC

 Key points

• Published currently without comments. 
• A draft version of this post was inadvertently posted by mistake. Please see the retraction notice and message here. 
• The post title refers to the following part of the decision: “Der Vorrang von Artikel 111 EPÜ in der obigen Auslegung gegenüber Regel 71 (6) EPÜ in Bezug auf Änderungen ergibt sich aus dem EPÜ. Artikel 164 (2) EPÜ bestimmt ausdrücklich: Bei mangelnder Übereinstimmung zwischen Vorschriften des Übereinkommens und Vorschriften der Ausführungsordnung gehen die Vorschriften des Übereinkommens vor. Daraus folgt auch, dass Regel 100 (1) EPÜ, nach dessen Wortlaut Regel 71 (6) EPÜ betreffend Änderungen anwendbar wäre, im Einklang mit Artikel 111 EPÜ einschränkend - und diese Anwendbarkeit ausschließend - auszulegen ist. ”

T 2558/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t182558du1.html

In the below, formatting is only partially reinstated, please consult the PDF version of the decision for the original formatting.

Entscheidungsgründe

1. Mit der angefochtenen Entscheidung vom 4. Juni 2018 hat die Prüfungsabteilung den am 23. Februar 2018 eingereichten Anspruchssatz gemäß Regel 137 (3) EPÜ nicht zum Verfahren zugelassen, weil die Änderung in Anspruch 1 Artikel 111 (2) EPÜ widerspreche. Die deutliche Entscheidungsformel der Entscheidung der Beschwerdekammer in der Sache T 1891/12 vom 10. Juli 2017 habe zur Folge, dass die Unterlagen, d.h. Beschreibung, Ansprüche und Zeichnungen, res iudicata seien und nicht mehr angetastet werden könnten. Da der Hauptantrag nicht zum Verfahren zuzulassen sei und keine weiteren Anträge vorlägen, fehle ein im Verfahren befindlicher Anspruchssatz. Die Anmeldung erfülle daher nicht die Erfordernisse des Art. 78 (1) c) EPÜ. Deshalb könne ein Patent gemäß Artikel 97 (1) EPÜ nicht erteilt werden.

T 3071/19 - Youtube video used by ED no longer available

 Key points

• In this appeal against the refusal of a patent application, the refusal decision was based on D2 as prior art. D2 is D2:"Mac OS X Leopard Overview : Mac OS X Leopard Dictionary", YouTube, 9 July 2008, XP054978034, retrieved from the Internet: URL: https://www.youtube.com/watch?v=JskACcyZbMs 
• However, that youtube video is no longer available as of the date of the Board decision (26.10.2021). The board indicates that it seems that the video became unavailable in the course of the appeal proceedings.
• “In the present case, the web page corresponding to the URL indicated in the citation of document D2 is indeed no longer functioning (showing "Video unavailable"). The board therefore cannot review the correctness of the decision's reasoning in so far as it relies on what is shown in the YouTube video. Nor can it assess the appellant's argument that the video is not an enabling disclosure.”
• The Board decides that therefore the decision is not properly reasoned in the sense of Rule 111(2) EPC.
• “The examining division could have prevented it [the problem of D2 being no longer available], for example by using appropriate screenshots as evidence of what was shown in the video or by otherwise ensuring that a person inspecting the file could reliably access the cited evidence. Indeed, the approach taken by the examining division in the present case also appears to be problematic in view of the rights of third parties and the public to inspect the file under Article 128 EPC.”
• The case is remitted with reimbursement of the appeal fee: “it cannot be entirely ruled out that the examining division will refuse the application for a second time for similar reasons (but on the basis of less-ephemeral evidence), compelling the appellant to file a further appeal based on essentially identical grounds. The board therefore considers reimbursement of the appeal fee to be equitable.”
• The Board in the headnote: “A decision should [in view of Rule 111(2) EPC] not rely on evidence accessible only at a web page which is not guaranteed to remain accessible and unchanged. Rather, it should be ensured that a person inspecting the file can reliably access the cited evidence.”
• The present case is a clear instruction for the first instance departments to set up a system to store video's relied on as prior art in the file of the application (and not only traditional prior art documents).
• Note that the headnote puts emphasis on third parties inspecting the file, but I think that first of all the issue that the Board has no copy of D2 in the file, irrespective of whether that is in the public file or in the internal file. Whether or not D2, if stored in the file, would be excluded from file inspection for third parties, is a distinct and separate issue from the one at issue in the case at hand.

T 3071/19 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t193071eu1.html

Reasons for the Decision

1. The application relates to searching data on mobile wireless communications devices.

Appellant's reasons for requesting remittal

2. In support of its request for remittal of the case to the examining division for further prosecution, the appellant submitted that the examining division had introduced document D4 only at the stage of the summons to oral proceedings and documents D5 to D7 less than two weeks before the date of the oral proceedings. The appellant had not had any chance to respond to the introduction of these documents in the first-instance proceedings.

3. The board notes that the appellant reacted to the late introduction of documents D4 to D7 not by requesting postponement of the oral proceedings but by informing the examining division that it would not attend them and requesting that they be held in its absence. It therefore seems debatable that the request for remittal can be allowed for the reasons indicated by the appellant. However, this point need not be decided because the request for remittal has to be allowed for other reasons, as explained below.

T 0116/18 - (II) Referral G2/21 - Plausibility

 Key points

• As abundantly reported elsewhere, Technical Board 3.3.02 referred questions to the Enlarged Board about ‘plausibility’.
• The file wrapper is here.
• The TBA has carefully formulated questions, but let's approach the referral from a different angle in this blog post. The topic of ‘plausibility’ lends itself to a broad enquiry, but there is a point to resolve on a quite narrow issue where there is a divergence in the case law. 
• Perhaps at the outset, it must be noted that ‘plausibility’ is not a term used in the EPC and the mechanical Boards typically don't ‘do’ plausibility. Nevertheless, the issue of plausibility is by no means a priori restricted to the chemistry/pharma/biotech field. 
• The narrow issue is, as summarized by Arnie Clarke (link): “As much as Dasatinib [ (T 488/16 of Board 3.3.01] raised the plausibility threshold, Almirall [T 2015/20 ; Board 3.3.07] 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 [T 488/16] 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 [T2015/20/ Almirall]?”
• The present Board 3.3.02 identifies a third option, namely: "no plausibility requirement at all" based on T 0031/18 (Novartis; Board 3.3.07) and T 2371/13 (Board 3.3.10) (the latter decision taken before the written decision in T 488/16 was available).
• Plausibility, in this context, means the (supposed) rule that post-published documents can only be considered as evidence for a technical effect in the assessment of inventive step, if that technical effect is at least made plausible by the application as filed.
• The three referred questions basically present three options: 1 - Novartis (no plausibility requirement); 2 - Dasatinib (plausibility requirement) and 3 - Almirall (soft plausibility requirement of "not implausible"), in this order.
• The actually important difference between options 2 and 3 is that “under the ab initio plausibility line [i.e. question 2], it is the patent proprietor that has to prove plausibility while in the ab initio implausibility line [i.e. question 3] it is the opponent that has to show implausibility.”
• The referring Board also discusses the UK Supreme Court decision of 14.11.2018  Mylan v Warner-Lambert [2018] UKSC 56, and three articles in the literature: 
• C. Floyd, "Plausibility: where from and where to", GRUR, 2021, page 185 (Festschrift for Peter Meier-Beck - GRUR 2/2021), 
• R. Jacob, "Plausibility and Policy", Bio-Science Law Review 17(6), page 223, and 
• A.Slade, "Plausibility: a conditio sine qua non of patent law?", (2020) Intellectual Property Law Quarterly 180-203; open access copy as SSRN, also available via hdl.handle.net/2381/12410771.v1, 
• As a comment, I'm not sure why only English authors are cited by the referring Board. E.g.  Kutik and Renken in epi Information 2019/3 also discuss the topic (link). Other national courts have also discussed plausibility in the past (e.g. French Supreme Court,  6 December 2017, No. 15-19726 ; ECLI:FR:CCASS:2017:CO01514 ; link; (MSD/Teva)).
• A lot more can be said about the topic but of course the amicus curiae briefs will be available on the EPO website in due course.
• I recommend reading the entire decision (relevant part for the referral) either on the EPO website or below and as of yet refrain from making a bullet point summary of the Board's reasons.

Referred questions

If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):

1. Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?

2. If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?

3. If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?

T 0116/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180116ex1.html

11. Referral - Introduction

11.1 After acknowledgement of sufficiency of disclosure and novelty, the next point to be assessed was inventive step. During this assessment, it turned out that questions needed to be referred to the Enlarged Board of Appeal on whether evidence not public before the filing date of the patent in suit and filed after that date ("post-published evidence") can be taken into consideration in view of the plausibility case law of the boards.

11.2 For a referral to be admissible, it is generally considered necessary that the decision on the referral questions be decisive for the outcome of the referral case.

As is clear from the above, the appellant's objections as regards sufficiency and novelty were not successful. Whether an inventive step can be acknowledged will therefore be decisive for the outcome of this case.

T 0116/18 - (I) Prior rights under Art.54(3) EPC 1973

 Key points

• This decision T 0116/18 also includes referral G 2/21 about plausibility, but let's discuss another point first.
• “The patent in suit originates from European patent application No. 12002626.5 which is a divisional application of European patent application No. 05719327.8”; the parent was a Euro-PCT application
• So the present divisional application was "filed" in 2012 and has the filing date of the parent in 2005; the parent having an international filing date in February 2005.
• “D8 [WO 2005/048711 A1] was published on 2 June 2005 and thus after the filing date of the patent in suit (21 February 2005). Compared to the European patent application/the European patent (published as EP 1 686 857) emanating from D8, the patent in suit additionally designates IS and LT. ”
• The question is whether Article 54(3) EPC 2000 applies for the present application (designated states irrelevant) or whether Article 54(3) and (4) EPC 1973 applies (prior right effect only for designated states of the earlier application). The cut-off date under the transitional provisions is 13.12.2007 but is the filing date (in 2005) decisive or the date of receipt of the divisional application (2012)?
• The best legal basis we had, as of yet and as far as I know, is the document "Implementation of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000" (in English only) now (again) available on the EPO website, which says that “Note in this context, that for European divisional applications the relevant date, for Art. 54(4) and Rule 23a EPC 1973 to apply or not, is the date of receipt of the divisional application at the EPO and not the attributed filing date of the parent application. This means that under the EPC 2000, parent and divisional applications may be treated differently as regards the application of Art. 54(3) EPC.” (para. 10.1). (underlining added)
• The legal status of that document is not entirely clear to me.
• The present Board decides that D8 is “not prior art for the set of claims for the contracting states IS and LT ”, i.e. Art. 54(4) EPC 1973 applies ("Paragraph 3 shall be applied only in so far as a Contracting State designated in respect of the later application, was also designated in respect of the earlier application as published.).
• So the above-cited para. 10.1 is incorrect and the filing date of the parent is decisive.
• The Board refers to: “see the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, Article 1, No 1 in connection with Article 54(4) EPC 1973, Article 158(1) and (2) EPC 1973, and Rule 107(1)(d) EPC 1973”
• See for the details that the parent was a Euro-PCT application and the effect on Article 54(4) EPC 1973, this post.
• The patent was granted with two sets of claims, one for IS and LT and one for the other designated states, as permitted under Rule 87 EPC 1973. 

T 0116/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180116ex1.html

Summary of Facts and Submissions

I. This decision concerns the appeal filed by the opponent (appellant) against the decision of the opposition division (decision under appeal) to reject the opposition against European patent No. 2 484 209 (patent in suit).

The patent in suit originates from European patent application No. 12002626.5, which is a divisional application of European patent application No. 05719327.8.

[...]

Reasons for the Decision

[...]

10.1 Novelty objection based on D8

10.1.1 D8 [WO 2005/048711 A1] was published on 2 June 2005 and thus after the filing date of the patent in suit (21 February 2005). Compared to the European patent application/the European patent (published as EP 1 686 857) emanating from D8, the patent in suit additionally designates IS and LT. Therefore, D8 is:

- not prior art for the set of claims for the contracting states IS and LT (see the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, Article 1, No 1 in connection with Article 54(4) EPC 1973, Article 158(1) and (2) EPC 1973, and Rule 107(1)(d) EPC 1973)

- prior art pursuant to Article 54(3) EPC for the set of claims for the contracting states AT, BE, CH, DE, DK, ES, FR, GB, GR, IT, LI, LU, MC, NL and SE (see, however, point 10.1.4 below)

T 0139/18 - Counting to two with the Board

Key points

• At the EPO, we have the principle that a selection from two lists constitutes novelty (nowadays only a tool, no longer a rule). In the present opposition appeal the question is novelty over D4, a prior right under Art.54(3). In particular, whether arriving at the claimed subject-matter involves only one selection or two selections.
•  “The respondent's [opponent's] arguments, where relevant to the present decision, can be summarised as follows: Document D4 anticipated the subject-matter of claim 1 of the main request because only one selection was required to arrive at it.”
• The patentee argued that “To arrive at the subject-matter of claim 1 it was necessary to make at least two selections: a macromolecular compound as the active ingredient and a gel containing 1-4 %(w/v) of hyaluronate component as the delivery vehicle.”
• The Board: “ the question of whether the subject-matter of claim 1 of the main request is anticipated by D4 boils down to assessing whether D4 discloses a composition in which the anti-angiogenic component is a macromolecule and the polymeric hyaluronate component is present in an amount of 1-4 %(w/v). In D4, the compositions containing 1-4 %(w/v) of polymeric hyaluronate component are associated with the formation of high-viscosity gels that are advantageously marketed in pre-filled syringes ”
• “Considering that the choice of a macromolecule as the active component already involved one selection, the issue of novelty hinges on whether the choice of the second embodiment on page 22, lines 16-24 constitutes an additional selection. For the reasons explained below, the board concurs with the respondent that, in view of the general teaching of D4, the embodiment relating to 1-4 %(w/v) hyaluronate component was preferred and did not require a selection to be made.” 
• After a detailed review, “ the board holds that the second embodiment on page 22, lines 16-24 of D4 is preferred and that its choice does not constitute a selection.” 
• “as a result of a single selection, the therapeutically active ingredient [for that second embodiment] is a macromolecular TKI, i.e. a macromolecular anti-angiogenic component which is a VEGF inhibitor.”
  
• I note that the topic pops up quite often in practice: what to take as the starting point in the prior art document for the one remaining selection to arrive at the novelty-destroying embodiment.

T 0139/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t180139eu1.html

4. Novelty over D4 - claim 1 of the main request (Article 54(1) and (3) EPC)

4.1 Document D4 is an international patent application which validly entered the regional phase before the EPO. It was published after the filing date of the contested patent, but its filing and priority dates are earlier than the respective dates of the contested patent.

In the decision under appeal (section 5.3.2), the opposition division held that D4 was prior art under Article 54(3) EPC. This aspect of the decision was not contested by the appellant (see statement of grounds of appeal, page 2, penultimate paragraph), therefore it is not part of these appeal proceedings.

4.2 D4 discloses (page 5, paragraph 2) anti-angiogenic compositions for intra-ocular injection comprising a TKI and a hyaluronic acid component. The TKI is a VEGF inhibitor and constitutes the anti-angiogenic component (page 7, line 25 and following paragraphs). The hyaluronic acid component is the viscosity inducing component (page 11, lines 12-14). As in the contested patent, the viscosity values in D4 are in relation to a shear rate of 0.1/second at 25°C (page 6, lines 25-26). These values range from 10 to 300 000 cps, but viscosities of at least 70 000 cps are particularly preferred (page 11, lines 26-29 and page 20, lines 26-29).

Having regard to the above, the question of whether the subject-matter of claim 1 of the main request is anticipated by D4 boils down to assessing whether D4 discloses a composition in which the anti-angiogenic component is a macromolecule and the polymeric hyaluronate component is present in an amount of 1-4 %(w/v). In D4, the compositions containing 1-4 %(w/v) of polymeric hyaluronate component are associated with the formation of high-viscosity gels that are advantageously marketed in pre-filled syringes (page 22, lines 21-24; page 61, lines 15-20; page 62, lines 10-14).

4.3 Regarding the anti-angiogenic component, the respondent referred to the passage bridging pages 10 and 11 of D4. The passage discloses that the TKI component includes a macromolecule, such as a protein, peptide, nucleic acid, modified nucleic acid or a peptide nucleic acid. Therein, it is stated that "[a]dditionally, or alternative, the TKI component may comprise an organic molecule other than a macromolecule". Non-macromolecular TKI components are also referred to as "small molecules".

Thus the passage bridging pages 10 and 11 of D4 presents a choice between macromolecular and small anti-angiogenic components (or their combination); choosing the macromolecular component involves one selection.

4.3.1 On this point, the appellant noted that D4 extensively discloses small molecules (pages 29-51) and that the compositions in the examples contain only small molecules. Therefore macromolecular components had to be considered as being less preferred than small molecules, and their selection went against the general teaching of D4.

4.3.2 The board disagrees. The paragraph bridging pages 10 and 11 discloses macromolecules and small molecules at the same level of preference, and there is no specific disclosure in D4 giving greater preference to small molecules. The fact that D4 describes more examples of small molecules does not necessarily mean that they are generally more preferred. In fact, the passage on page 10, lines 10-34 also recites several examples of macromolecules, including proteins and nucleic acids. Therefore the board does not see that the selection of a macromolecule from the choices presented in the paragraph bridging pages 10 and 11 is precluded.

4.4 With respect to the concentration of the polymeric hyaluronate component, the parties referred to the two embodiments disclosed on page 22, lines 16-24 of D4. The passage reads as follows (emphasis added by the board).

"In one embodiment, the present compositions include a polymeric hyaluronate component in an amount in a range about 0.05% to about 0.5%(w/v). In a further useful embodiment, the hyaluronate component is present in an amount in a range of about 1% to about 4%(w/v) of the composition. In this latter case, the very high polymer viscosity forms a gel that slows particle sedimentation and diffusion of dissolved solutes upon injection in the eye. Such a composition may be marketed in pre-filled syringes since the gel cannot be easily removed by a needle and syringe from a bulk container."

Considering that the choice of a macromolecule as the active component already involved one selection, the issue of novelty hinges on whether the choice of the second embodiment on page 22, lines 16-24 constitutes an additional selection. For the reasons explained below, the board concurs with the respondent that, in view of the general teaching of D4, the embodiment relating to 1-4 %(w/v) hyaluronate component was preferred and did not require a selection to be made.

4.4.1 First of all, the board notes that the language of the text introducing the embodiments is not the same in both cases. The composition with the lower hyaluronate content is referred to as "an embodiment" while the composition with the higher hyaluronate content is "a further useful embodiment". Although the board does not necessarily concur with the respondent that this automatically means that the second embodiment is preferred, it certainly points towards a difference of appreciation between the two embodiments.

4.4.2 As indicated above (point 4.2), D4 describes compositions with viscosities in the range 10-300 000 cps, but viscosities of at least 70 000 cps are particularly preferred (page 11, lines 26-29 and page 20, lines 26-29). It is generally known that higher concentrations of viscosity inducing agent produce higher viscosities. Hence it is reasonable to assume that the embodiment containing higher concentrations of hyaluronate component would provide compositions within the higher (i.e. preferred) range of viscosities.

4.4.3 In that respect, the appellant argued that D4 does not disclose a correlation between viscosities above 70 000 cps and hyaluronate concentrations in the range of 1-4 %(w/v). It then referred to the passage on page 21, lines 15-20, which states that the specific amount of viscosity inducing component employed depends on several factors, e.g. the molecular weight of the viscosity inducing component. This means that, in theory, hyaluronate components of high molecular weight could provide viscosities beyond 70 000 cps at concentrations within the range of 0.05-0.5 %(w/v) and, conversely, hyaluronate components of low molecular weight might not achieve a viscosity of 70 000 cps at concentrations within the range of 1-4 %(w/v).

The board accepts that molecular weight and other factors have an influence on the amount of hyaluronate component that needs to be added to the composition to achieve a given viscosity. However, the board concurs with the respondent that the appellant's argument cannot counter the clear teaching in D4 that viscosities above 70 000 cps are preferred and that these are achieved by hyaluronate concentrations within the range of 1-4 %(w/v) rather than 0.05-0.5 %(w/v). This teaching may be derived from the following sections of D4:

Examples 2-8 show that compositions comprising 0.05-0.5 %(w/v) of a sodium hyaluronate with an average molecular weight of 0.6 million daltons have a viscosity of 20-500 cps. However, the same sodium hyaluronate used in examples 9-13 at concentrations of 2.0-3.0 %(w/v) produces viscosities of 100 000- 300 000 cps. These results are in line with the teaching in the paragraph bridging pages 13 and 14, which associates viscosities of 80 000-300 000 cps with hyaluronate concentrations of 2-3 %(w/v). In addition, the passage on page 22, lines 16-24 states that the compositions containing 1-4 %(w/v) hyaluronate exhibit very high polymer viscosity.

4.4.4 Consequently, the board holds that the second embodiment on page 22, lines 16-24 of D4 is preferred and that its choice does not constitute a selection.

4.5 In summary, D4 discloses a preferred embodiment which is a gel composition for intra-ocular injection having a viscosity of at least 70 000 cps at a shear rate of 0.1/second at 25°C and comprising 1-4% (w/v) of a polymeric hyaluronate component. It also discloses that, due to its high viscosity, this preferred composition is to be marketed as a pre-filled syringe.

In addition, as a result of a single selection, the therapeutically active ingredient is a macromolecular TKI, i.e. a macromolecular anti-angiogenic component which is a VEGF inhibitor.

Hence D4 discloses the combination of features in claim 1 of the main request. The claim therefore does not meet the requirements of Article 54(1) and (3) EPC.