T 0500/16 - Plausibility attack not admitted

Key points

•  Claim 1 is directed to the crystalline malate salt of the known pharmaceutical compound cabozantinib.
• As to novelty: “D29 [" EMEA; Committee for Orphan Medicinal Products; December 2008, Plenary Meeting Monthly Report"] (page 1) discloses cabozantinib (L)-malate for treatment of medullary thyroid carcinoma (a thyroid cancer). D29 only refers to the malate salt without stating whether it is crystalline. While D29 implicitly discloses that the salt is in a solid form, it cannot be deduced from D29 that the salt is crystalline. The subject-matter of claim 1 of the main request, referring to the crystalline form of a cabozantinib malate salt, is therefore not directly and unambiguously derivable from D29.”
• For inventive step: “The objective technical problem ... is the provision of a cabozantinib malate salt which, as a pharmaceutical formulation, has an improved dissolution profile under physiological conditions.”
• As to obviousness: “The above documents only show that crystalline forms of pharmaceutical solids are preferred. However, none of the above documents includes any teaching on how to improve the dissolution profile under physiological conditions of the cabozantinib malate salt. This is not disputed by the appellants. In the absence of such a teaching, the solution provided by claim 1 of the main request is thus not obvious.”
• This reasoning may be an illustrative example of the problem-solution approach being effect-centred. 
• “In the current case, it has been shown in annex 1 that the unexpected property of the claimed compound is an improved dissolution profile under physiological conditions. Thus, the case at hand does not correspond to the situation in case T 777/08 where no unexpected property was recognised.”
• The opponents argue that the found effect is a bonus effect (which hence does not provide for inventive step): “[The opponents] argued that the improved dissolution profile under physiological conditions of the crystalline form of cabozantinib (L)-malate was a mere bonus effect since the skilled person would have had ample motivation in view of the teachings of D3, D5, D7, D13, D14, D25, D26, A005 and A006 to select the crystalline form of cabozantinib (L)-malate, the compound disclosed in D29.”
• “The board does not agree. A "bonus effect" arises when the state of the art forces the skilled person to adopt a certain solution, the lack of alternatives leading to a "one-way street" situation. In such a situation, any additional effect does not necessarily contribute to inventive step (see e.g. T 405/17, reasons, 4.3.3). However, this situation does not apply in this case for the following reasons. [follows a detailed review of cited prior art] In view of the above disclosures and teachings, there is no indication in the prior art that in searching for an adequate solid form of the compound disclosed in the closest prior-art document D29, the skilled person would have been forced specifically to choose only the crystalline form of cabozantinib (L)-malate as required by claim 1 of the main request. Thus, the improved dissolution profile under physiological conditions of the crystalline form of cabozantinib (L)-malate, as shown in annex 1, cannot be considered a mere bonus effect.”
• The Board also rejects that the case at hand was an obvious-to-try situation.
  
  
• Then,  to plausibility: “With the statement of grounds of appeal, [opponent] submitted that it was not made plausible on the basis of the content of the application as filed that the claimed compounds achieved the effect shown in annex 1, namely the improved dissolution profile. Therefore, the post-published data of annex 1 were not to be taken into consideration in the formulation of the objective technical problem. This objection is referred to below as the "plausibility objection".”
• The patentee requested that this objection be not admitted. The opponents in turn “requested that the respondent's request for non-admittance of appellant 2's submissions on a lack of plausibility not be admitted into the proceedings.”
• “The board decided to admit the respondent's request [i.e. admissibility objection] into the proceedings [under Art. 13 RPBA 2007] for the following reasons [follows a consideration of factors such as procedural economy].
• The “plausibility objection” is not admitted under Art. 12(4) RPBA 2007. “In the proceedings before the opposition division, the parties had discussed the data presented in annex 1 as to their merits, i.e. the parties had proceeded on the basis that the data could be taken into account and the decision under appeal is based thereupon. ”
• The Board: “Admitting the objection into the proceedings would have given appellant 2 a new chance, after opposition proceedings which had been instituted by it and having been terminated, to object to inventive step based on an entirely new submission. The admittance of the plausibility objection would have led to an entirely fresh case regarding inventive step. More specifically, had the plausibility objection been admitted and found convincing, the post-published data in annex 1 would have had to be disregarded, and the effect relied upon by the respondent could not have been taken into account. The objective technical problem would thus have changed, and the obviousness as regards a different objective technical problem would have had to be considered for the first time during the appeal proceedings.”
• “[The opponent] argued that the submissions on plausibility did not constitute an allegation of fact but rather an argument and that the board did not have any discretion not to admit an argument.”
• “The board does not agree. The appellant's allegation was that the application as filed did not make it plausible that the claimed subject-matter resulted in an improved dissolution profile. Whether, on the basis of the application as filed, it can be concluded that a certain effect, here an improved dissolution profile, is plausible or not is based on a factual consideration rather than a mere argument. More specifically, numerous facts play a role in making this consideration, such as what is actually disclosed in the application as filed as regards the effect and what the technical relationship between the claimed compound and the effect is. Therefore, appellant 2's submissions on plausibility included an allegation of fact (see also T 1875/15, reasons, 2.3 to 2.4), and the board had under Article 114(2) EPC the discretion not to admit appellant 2's late-filed submissions.”
• The opponent further argues that plausibility was a new issue in the case law. The Board seem to accept that new case law can be a valid reason for admitting a submission, but finds that the issue of plausibility was in fact not new in 2013-2015 (proceedings before the OD) in view of T 415/11 (reasons, 50, 12 January 2012), T 1329/04 (reasons, 12, 28 June 2005). 

EPO - T 0500/16 

Link to the decision after the jump, as well as an extract of the decision text.

T 1287/18 - Devolutive effect of appeal

Key points

• The Board gives first a useful summary of the relationship between the principle of party disposition, the extent of appeal, and the devolution effect of appeal. 
• The Board: “In accordance with the principle of party disposition [...] the power of a board to decide a certain matter depends on the extent of the appeal and covers only that part of the impugned decision which is indicated in the statement of grounds as actually challenged by the appeal. The extent of an appeal is simultaneously the limit of the devolutive effect, the latter indicating that the first instance loses its competence for the further prosecution of the matter”
• Now the difficulty is, what do we mean with “that part of the impugned decision which is indicated in the statement of grounds as actually challenged by the appeal”?
• In the following paragraph of the present decision, the Board suggest that a “part” may refer to a part of the reasons. I'm not sure if that is the correct approach. 
• “In the present case, the decision has been appealed [by the opponent] in respect of novelty with regard to the finding of the opposition division that novelty over D1 was given ("extent of the appeal"). The opposition division found that the criteria for selection inventions apply and that the range 5-14 wt% of an ethylene/1-butene elastomer of claim 1 of auxiliary request V met those criteria. This finding has been impugned by the appellant [opponent] on the argument that the criteria for selection invention were not met. Since the Board was of the opinion that the opposition division did not apply the correct criteria for assessing novelty, it was within its power to mention it and to indicate which criteria should be applied.”
•  “Contrary to the appellant's [opponent's] argument, the Board in doing so is not carrying out a general review (de novo) of the first instance decision, regardless of what has been sought by the parties, in contrast to the teaching of G 8/91 (point 10.2 of the reasons). Indeed, considering that the appellant sought the review of the first instance decision to the extent that novelty over D1 was given, the Board has the power to review that part of the decision in full without any limitation. This is also in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (as now explicitly stated in Article 12(2) RPBA 2020), in the sense that they primarily serve to verify the correctness of the result of the decision under appeal, i.e. the legal effect of that decision.”
• G 8/91 is about withdrawal of appeals (finding that the appeal proceedings are immediately terminated if the sole appellant withdraws the appeal) and the cited paragraph 10.2 reads, in part: “As a matter of general principle, it is not the function of the Boards of Appeal to carry out a general review of decisions at first instance, regardless of whether such a review has been sought by the parties. On the contrary, the Boards' function is to consider appeals that are admissible and pending.”
• Returning to the question, what is the “extent of appeal”, it must be borne in mind that parties may not appeal if reasons are unfavourable. E.g. if the patent is revoked as novel but not inventive, the opponent may not appeal (and cross-appeal, i.e. an appeal in reply to an appeal by patentee is not possible); accordingly clearly the patentee can not limit the extent of appeal to the issue of inventive step only. In other words, the patentee appeals the decision to revoke in full. If there is a 2nd ancillary decision in the order of the first instance department (e.g. an apportionment of costs under Art. 104), the appellant can limit the appeal to one of the decisions in the order, see T 420/03. 
• Admittedly, in T 233/93 held that: “As appellant I [opponent] only objected to those parts of the impugned decision which relate to product claims the Board is not authorised to question the patentability of the process claims.”
• Turning to the present case, in my view, the appeal of the opponent is simply directed to the decision as specified in the order, that taking into account the amendments made by the patent proprietor, the patent and the invention to which it relates are found to meet the requirements of the EPC. 
• The Board writes that: “This is also in line with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (as now explicitly stated in Article 12(2) RPBA 2020), in the sense that they primarily serve to verify the correctness of the result of the decision under appeal, i.e. the legal effect of that decision.”
• As a comment, this touches on the key question: is the purpose of appeal proceedings to verify the correctness of the result of the decision of the appeal, or of the reasons for the decision under appeal? Note, that the first alternative would imply that new attacks in appeal should be considered: if the new attack prejudices the result of the impugned decision, e.g. the patent is maintained as granted, then the Board should consider any attack that can prejudice that result. 

EPO - T 1287/18

Link to the decision after the jump, as well as an extract of the decision text.

T 2713/17 - Cancelling independent claims no case amendment

Key points

• This decision provides yet a further contribution to the debate between the Boards about the question of whether cancelling independent claims constitute a case amendment.
• In recent decision T 2091/18 issued in writing 15.12.2021, Board 3.2.05 found that: “Für den Rückschluss, dass die Streichung von Ansprüchen das Beschwerdevorbringen nicht ändere, insofern sich dadurch keine geänderte Sachlage (T 995/18, T 981/17, T 1792/19, T 1857/19) bzw. keine (völlige) Neugewichtung (T 995/18, T 981/17) ergebe, findet sich nach Ansicht der Kammer in der Verfahrensordnung keine Stütze.”
• So Board 3.2.05 found it to be a case amendment.
• The present Board 3.2.06, in a decision taken 30.11.2021: “By submitting the new main request, the respondent's [patentee's] action did not give rise to any new issues requiring discussion but, on the contrary, merely restricted its requests then on file to subject-matter which had already been discussed and on which the Board had already given its conclusions [ that this claim fulfilled the requirements of the EPC]. ... The Board concludes that under these special circumstances, the submission of the new main request does not constitute an amendment to the party's appeal case in the sense of Article 13 RPBA 2020. The requirement for exceptional circumstances of Article 13(2) RPBA 2020 to exist is therefore not applicable. This is also in line with a body of case law developed by the Boards, see e.g. T1480/16 (Reasons 2) and T981/17 (Reasons 3).”
• The request is admitted.
• The new clarity objection is not admitted.
• The Board finds the claim to be allowable. “The Board thus avails itself of its power under Article 111(1) EPC to remit the case to the opposition division for the description to be adapted to the amended claim.”

EPO -  T 2713/17 - 

Link to the decision after the jump, as well as an extract of the decision text.

T 2002/19 - Forfeiture of attacks

Key points

•  This decision touches on a rather subtle point of waiver though more precisely, perhaps, forfeiture of objections (in the sense of the RPBA 2020, i.e. of attacks).
• The opponent presented new inventive step attacks with the Statement of grounds against AR-2 filed during the oral proceedings before the OD. The Board does not admit these attacks under Art. 12(4) RPBA, under the prong that they should have been filed earlier, which in turn raises the question if the opponent was reasonably expected to submit the attacks during the first instance proceedings. The opponent submitted some other attacks against AR-2 before the OD; the Board considered the merits of these attacks and found them not prejudicial to the claims at issue. 
• The Board, in machine translation: “The then opponent and current appellant expressly did not deny the admissibility of the then auxiliary request 2 and the current main request and did not criticize its late submission at the oral hearing, so that this request was not a surprise and consequently the new objections do not constitute an appropriate response to a surprising submitted request”
• “At the end of the inventive step discussion, the chairman [of the OD] made sure that no party would like to comment further on the subject”, i.e. the chair of the OD enquired if the opponent wished to present further inventive step attacks.
• The question here is: what exactly is the link between these observations of the  Board, and the phrase “should have been submitted ... in the proceedings leading to the decision under appeal” in Art. 12(6)(s.2) RPBA 2020? Why exactly is it relevant that the opponent did not protest against the admissibility of AR-2?
• Possibly, by not protesting against the admissibility of AR-2, the opponent waived/forfeited the argument that it was not in a position to fully discuss inventive step of AR-2 during the oral proceedings before the OD. Possibly by indicating that it did not wish to present further attacks, when asked by the chair, the opponent waived/forfeited the argument that the course of the oral proceedings had prevented it from presenting the attacks during the oral proceedings. 
• I use the terms ‘waiver’ and ‘forfeiture’ as in USA appellate procedure (link) "Forfeiture and waiver are two concepts that U.S. courts apply in determining whether reversible error has occurred. Waiver is the voluntary relinquishment, surrender or abandonment of some known right or privilege. Forfeiture is the act of losing or surrendering something as a penalty for a mistake or fault or failure to perform, etc.". Hence, forfeiture seems to apply to the present case. 

EPO - T 2002/19

Link to the decision after the jump, as well as an extract of the decision text.

T 1786/16 - Art. 13(2) RPBA and Art. 113(1)

Key points

• The patentee complains that the Board did not admit an auxiliary request under Art. 13(2) RPBA.
• The Board, on the relation between Art. 13(2) RPBA and Art. 113(1) EPC, in translation: “Article 13 (2) RPBA 2020 does not contradict the parties' right to be heard enshrined in Article 113 (1) EPC, even if the modified submissions of a party in the appeal proceedings are not taken into account. With this provision in the Rules of Procedure of the Boards of Appeal, the legislature has made it clear that a submission in appeal by a party who does not fulfill his obligation to promote the proceedings can be wholly or partially disregarded at a later stage in the proceedings. Article 13 (2) RPBA 2020 does not limit a participant's right to be heard. According to Article 113 (1) EPC, a party must in any case be given an appropriate opportunity to bring his case before him. Therefore, Article 13 (2) RPBA 2020 also provides that if there are exceptional circumstances, such as a new objection raised for the first time in the communication of the Board or in the oral proceedings before the Board, the strict approach of this provision is not adhered to should be. However, the party involved must not have failed to use the opportunity given to them to make a statement as early as possible for reasons for which the party is responsible. 
• “In addition, the parties involved in inter partes proceedings should be given the opportunity to make statements under comparable conditions. The admission of subsequent case amendments of a party must therefore not lead to the other side being surprised or disadvantaged in their right to comment, for example because they can only insufficiently exercise this right in the time available (see also Article 13 (3) RPBA 2020).”
• As a comment, the opportunity to comment is not necessarily given only after the Board decides to admit the submission. Rather, parties are supposed to reply on the merits prior to the Board deciding on the admissibility, as the present decision in fact also illustrates (patentee should have filed the auxiliary request before the Board decided on the new Art. 123(2) attack submitted by the opponent with the Statement of grounds). 

EPO 

Link to the decision after the jump, as well as an extract of the decision text.

T 2796/18 - Rule 28(2) after all

Key points

•  The AC decided, under the former President, that Rule 28(2) was to apply also retroactively to applications already pending on 01.07.2017. The present decision concerns an appeal against the refusal of such an application on the sole ground that "the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC"  because the claimed plants were exclusively obtained by means of an essentially biological process, which was not disputed.
• The Enlarged Board in G 3/19 did not opine on the validity of Rule 28(2) at all. Rather, the Enlarged Board changed their interpretation of Article 53(b) EPC. That new interpretation does not apply to applications already pending on 01.07.2017, the Enlarged Board held. This leaves open to some extent whether Rule 28(2) and Article 3 of that AC decision (OJ 2017 A56) is valid. 
• The Technical Board of Appeal in the present decision: "as the present application was filed before 1 July 2017, and is still pending (see section I), the new interpretation of Article 53(b) EPC adopted in opinion G 3/19 (supra), does not apply. Furthermore, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal (supra), does not exclude the subject-matter of the main request from patentability. In view of the above considerations, the board concurs with the appellant that the subject-matter of the claims is not excluded from patentability pursuant to Article 53(b) EPC in conjunction with Rule 28(2) EPC." 

EPO T 2796/18 - 

Link to the decision after the jump, as well as an extract of the decision text.

T 0325/16 - (II) New crystalline form inventive

 Key points

•  Patents direct to salt forms, solvate forms, and polymorphs are commercially rather important in the pharma field. T 777/08 held that "in the absence of any technical prejudice and in the absence of any unexpected property, the mere provision of a crystalline form of a known pharmaceutically active compound cannot be regarded as involving an inventive step." This decision is generally seen as raising the bar for this kind of "follow up" pharma patents.
• “pharmaceutical polymorphs provide an excellent way for a company to further protect a small molecule drug in order to recoup the billions of dollars that go into research and development, thereby enabling further research and development” (link, emphasis added) 
• In the present case, the Board finds the claimed crystalline forms to be inventive.
• " The [opponent] respondent also relied on T 777/08 in its inventive-step analysis. In this decision, the board held that the skilled person, starting from the amorphous form of an API as the closest prior art, would have gained a clear expectation from the common general knowledge that a crystalline form of it would have provided a solution to the problem of providing a product having improved filterability and drying characteristics. This expectation was considered reasonable because, although it could not be assumed that every single crystalline form would solve the problem, it could be assumed that many of these crystalline forms would. In view of this, the board considered the provision of a specific polymorph from the group of equally suitable candidates to be arbitrary and not involving an inventive step (T 777/08, point 5.2 of the Reasons)." 
• The Board: “The current case differs not only in that the closest prior art discloses a crystalline rather than an amorphous API, but also in that the skilled person would not have gleaned from it a reasonable expectation of success in solving the problem of providing crystal forms of CNDAC-HCl that are more stable than others. This is because the mere suggestion to look for more stable forms cannot be considered a reasonable expectation to find a specific solution, let alone a pointer.”
• “ the board essentially accepts the appellant's submission based on decision T 1684/16” thereby finding that “Only if the prior art either contains a clear pointer that the claimed subject-matter solves the objective technical problem or at least creates a reasonable expectation that a suggested investigation would be successful, can an inventive step be denied. ”
• “ It is true that it is in the common general knowledge of the skilled person to screen for polymorphs of an API to find one having improved properties such as an improved stability. However, this alone is not sufficient to deny inventive step to a solution by which this improvement is achieved.”
• “In the case at hand, there is no disclosure in the cited prior art creating any expectation, let alone containing any pointer, that the type I or type II crystals of CNDAC-HCl defined in claims 1 and 2 of the main request could be more stable than other crystalline forms of CNDAC-HCl. There is no suggestion that the crystal types I and II of CNDAC-HCl are more stable than others. While D3 mentions the solvent system EtOH-Et2O to be used for crystallisation, it gives no details on the stability of the crystal form obtained. The mere mention of the solvent system in D3, therefore, would not have given a reasonable expectation to the skilled person, let alone a pointer, that its use would have led to crystalline forms of CNDAC-HCl which are more stable than others.”
• The present decision seems to suggest that any polymorph with good or improved properties is inventive, since it can not be predicted in advance which crystalline form in particular will have good properties.

T 0325/16 -

T 2327/18 - Deleting disclaimer violates Art.123(3)

 Key points

• In this opposition case, the application was a divisional application. In the (divisional) application as filed, claim 1 includes a disclaimer (negative feature).
• In the parent application as filed, the same disclaimer had been submitted in an auxiliary request in order to restore novelty over an Art. 54(3) prior right.
• Claim 1 as granted in the present case does not include the disclaimer; claim 1 as granted is novel over the prior right document by virtue of other features of the claim. Hence, the disclaimer was deleted from claim 1 by an amendment made during prosecution. According to the opponent, this amendment violates Art. 123(2).
• The Board considers the amendment to violate Art. 123(2) and points to G2/10, r. 4.5.5, penultimate paragraph, last sentence: "If by contrast, an embodiment is presented in the application as filed as not being part of the invention, but e.g. as belonging to the state of the art or as a comparative example, then it cannot be claimed at all."
• See the comment below. Note that Enlarged Board hence in effect said: If by contrast, an embodiment is presented in the application as filed as not being part of the invention, then it cannot be claimed at all.
• The patentee also makes an argument that it is an analogous case to G 1/03, but the Board does not accept that argument. 
• The patentee also based an argument on G1/05. The Board, in translation: “It is therefore not the case that a divisional application which, as originally filed, goes beyond the subject matter of the parent application as originally filed can be amended in such a way that it complies with Article 76 (1) EPC but not the requirements of Article 123 (2) EPC fulfilled.”
• The Board then turns to auxiliary requests. The amendments at issue are not entirely clear to me, but the Board notes, in machine translation: “Therefore, these auxiliary requests also show a certain extension of the claimed subject-matter compared to the version originally filed and thus also do not meet the requirements of Article 123 (2) EPC."
• I think it is quite unusual to see a quasi "extension of scope of protection" test to pre-grant amendments, because that test is Art. 123(3). 
• The Board in the original German: "Daher weisen auch diese Hilfsanträge eine gewisse Erweiterung des beanspruchten Gegenstandes im Vergleich zur ursprünglich eingereichten Fassung auf und erfüllen somit die Erfordernisse von Artikel 123(2) EPÜ ebenfalls nicht."
• See also the Board in r.8.2: "führt im vorliegenden Fall das Streichen des bereits offenbarten Disclaimers zu einer zumindest teilweisen Erweiterung des Anspruchsgegenstandes"
• The above point was edited by me on 20.01.2022.
• As a further comment, the take-home message could be: don't try circumventing G2/03 by including the disclaimer as a negative feature in the application as filed.
• G 1/93 is not cited in the present decision.

T 2327/18 - 

T 2610/18 - Rule 82(1) case

 Key points

•  Rule 82(1) is rarely applied in practice because most often parties request oral proceedings in opposition. However, in this case, no oral proceedings were requested and the OD issued the interlocutory decision that taking into account the amendments made by the proprietor, the patent and the invention to which it relates meet the requirements of the EPC. This decision was issued in writing about 10 months after the proprietor's response was forwarded to the opponent, without oral proceedings. No oral proceedings were requested (by the opponent; the patentee's amended main request was granted).
• The opponent appeals.
• The Board finds the above to be a substantial procedural violation, in particular of Rule 82(1) EPC.
• " The Board finds that the issuing of a communication under Rule 82(1) EPC was required in that specific situation. Rule 82(1) EPC reads as follows: "Before the opposition division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text." Rule 82(1) EPC ensures that the right of the parties to be heard is respected in opposition proceedings before any decision is taken. In the present case, no objection against the amended main request was raised by the opponent and - evidently - the opposition division had no such objection either. However, contrary to the stipulations of Rule 82(1) EPC, the parties had not been informed of the opposition division's intention to maintain the patent on the basis of the amended main request and on the description and drawings as contained in the specification. Furthermore, the parties were not invited to comment on that text within a specified period as also foreseen in Rule 82(1) EPC."
• As a comment, the purport of Rule 82(1) is not very clear to me, except for the case where the OD proposes amendments of their own motion in written proceedings.
• Van Empel, para. 480, explain the original idea as follows: “It may also be, however, that the Opposition Division finds that the patent can be maintained, provided it is amended to some extent. Normally this amendment takes form progressively in the course of communications between the Opposition Division and parties concerned. However, at a certain moment the former should make up its mind and state that it is of the opinion that the patent as amended in the indicated way can be maintained. However, again the basic principle of Article 113(2) comes into play, and thus the Opposition Division must submit the envisaged text of the amended patent to the patentee for approval [].* Curiously, in this regard a similar position has been given to opponents. According to Rule 58(4) [EPC 1973], they also are requested to state their observations on the text which is envisaged by the Opposition Division."
• * = This obviously refers to the second alternative in Art. 113(2), i.e. to amendments proposed by the OD of own motion: " The European Patent Office shall examine, and decide upon, [] the European patent only in the text submitted to it, or agreed, by [] the proprietor of the patent", because if the patentee submitted the text, no further approval of the text by patentee is required under Article 113(2) EPC. 
• That's why the Rule 82(1) EPC communication can be dispensed with if the text is the one decided by the patentee and the opponent has been given the opportunity to comment. See G1/88, r.6: "Accordingly, Rule 58(4) EPC does not need to be applied when the patent proprietor has already given his express approval of the text in which the Opposition Division intends to maintain the patent in accordance with Article 102(3) EPC. Irrespective of this, the opponent must have had - or be given - sufficient opportunity, according to the circumstances, of commenting on the new text. He can be given this opportunity, especially where the written procedure is being used, through the application of Rule 58(4) EPC." 
• The Board is also critical that the OD had assumed that the description was not to be amended, even though patentee had not expressly stated so. This may indeed be an issue of Article 113(2) EPC. However, the patentee did not appeal and it find it not so clear whether an opponent can invoke a violation of Article 113(2). 

T 2610/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182610eu1.html

Summary of Facts and Submissions

I. An appeal was filed by the opponent against the interlocutory decision of the opposition division dated 22 August 2018 in which the opposition division found that European patent No. 2 958 461 in an amended form met the requirements of the EPC.

J 0006/21 - Computer says no, Legal Board says yes

 Key points

•  According to the Examining Division, a fee was not paid (incidentally, the fee for restoration of the right of priority payable to the EPO in the regional phase).
• The issue is that automatic debit orders in six unrelated applications were revoked by the account holder on the same day as the filing of the debit order for the payment of the fee in the present case. Moreover, on the same day the account was replenished as well and fees for those other applications were deducted.
• “ [The automatic debit order] revocation notice was received at 15:23 CET. The electronic receipt confirming the revocation indicated that "[t]he automatic debit order for the following application [...] ceased to be effective on the date of receipt of your instruction revoking it." Seven application numbers were mentioned on this receipt notice. However, at this point in time, according to the competent EPO department, "the EPO system could not react in time to prevent debiting of fees". The fees relating to six of the seven application numbers were therefore debited on 2 June 2020”
• “the appellant was informed that the revocation took effect on the same date as the request for revocation was received. This information is in line with ADA, points 6.2. and 6.3: the execution date of the debit orders was 2 June 2020 and the notice of revocation was received on 2 June 2020. Only if the notice of revocation were received after the execution date, would it be not effective. Accordingly, the appellant could assume that the automatic debit orders, which were revoked on 2 June 2020, would not be executed on that day. Decisively, had the six (of the seven) fees, which pertained to these wrongly executed automatic debit orders, not been debited on 2 June 2020, the account would have contained sufficient funds for the debit order mentioned above under (b).”
• “In these circumstances, it must be deemed in the appellant's favour that the deposit account had sufficient funds for the relevant fee on 2 June 2020, so that this date is considered as the date on which the payment was made”
• As a comment, this decision illustrates that it is the Examining Division (or Receiving Section or Opposition Division) who decides whether payment has been made and hence whether the debit order was effective, not the EPO Accounting Department or the EPO computer systems. Even if the EPO computer systems do not process the debit order correctly and the amount is not actually deducted from the deposit account, the Examining Division can still decide that the fee was paid and in fact, it is the Examining Division who decides that the fee was not paid and hence the relevance act was not validly performed. That decision is appealable. 

J 0006/21 

link  under "read more"

T 0768/20 - (II) G 1/93 and undisclosed disclaimers

 Key points

•  The Board: “It is not entirely clear what kind of feature the Enlarged Board had in mind [in G 1/93] when referring to a feature that "merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed" without "providing a technical contribution to the subject-matter of the claimed invention".”
• I'm glad this Board dares to say this.
• The Board, after an extensive review of G 1/93, G2/03, G2/10 and G1/16, summarizes it as follows: “the jurisprudence of the Enlarged Board of Appeal, as understood by this board, specifies that the "gold standard" developed in opinion G 3/89 and decision G 11/91 and reaffirmed by decision G 2/10 is the general rule to be used when examining the compliance of amendments with Article 123(2) EPC. Undisclosed disclaimers constitute an exception to this rule. They are governed by the rules laid down in decision G 1/03. Point 2 of the order of decision G 1/93 (and point 16 of the reasons for the decision) also appears to concern undisclosed disclaimers, which decision G 1/03 examined in greater detail. If there are features other than undisclosed disclaimers that, "without providing a technical contribution to the subject-matter of the claimed invention, merely exclude protection for part of the subject-matter of the claimed invention as covered by the application as filed", they would constitute a second exception to the general rule. To the best knowledge of this board, the jurisprudence of the Enlarged Board of Appeal does not provide for any further exception in the context of Article 123(2) EPC.”
• "in the eyes of the board, point 2 of the order of decision G 1/93 concerns undisclosed disclaimers as per decision G 1/03. "
• The Board nevertheless also applies G 1/93, hn.2, for the event that said headnote is not limited to undisclosed disclaimers, and after some further analysis of that headnote and of the amendment at issue, finds that: "It follows that the amendment does not qualify as an amendment as per point 2 of the order of decision G 1/93. Consequently, this exception to the gold standard does not apply and the allowability of the amendment under Article 123(2) EPC has to be examined using the gold standard."

T 0768/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200768eu1.html

2.2 Exception to the "gold standard"?

The appellant's second line of reasoning involved

presenting the amendment in hand as being one to which the "gold standard" did not apply. Before this argument can be examined as to its merits, it is necessary to consider the development of the jurisprudence of the Enlarged Board of Appeal in respect of the allowability of amendments.

T 0768/20 - (I) The balance of probabilities

 Key points

•  The Board in this opposition appeal deals with Art. 123(2).
• “The applicable standard [under Article 123(2)] is thus "beyond reasonable doubt" rather than "beyond any doubt". The very requirement of an "unambiguous" disclosure under the gold standard indicates that a strict standard has to be applied and that the actual existence of a disclosure is not a matter of probabilities.” 
• “the board wishes to point out that the practical relevance of the distinction between the "balance of probabilities" standard and the "beyond reasonable doubt" standard is often overestimated. Both standards are only fulfilled if the deciding body is persuaded that the alleged fact is true, which is not a matter of "just tipping the balance slightly" (see decision T 545/08, point 8 of the reasons). This is also confirmed by the passage in Case Law, section III.G.4.3.1, according to which "the balance of probabilities standard [is] met if, after evaluating the evidence, a board [is] persuaded one way or the other" (underlining by this board).”
• As a comment, possibly in common law civil cases, the standard of "the balance of probabilities" may indeed mean "proof that the fact in issue more probably occurred than not" (to cite Lord Hoffmann). However, for the EPO, the Board's summary of established case law seems entirely correct. 

https://www.epo.org/law-practice/case-law-appeals/recent/t200768eu1.html

2.1.2 Question of standard of proof

The appellant expressed the opinion that the decision

under appeal was based on the assumption that the implicit disclosure of the feature "intact" had to be proven beyond any doubt. The board sees no reason to assume that the opposition division applied that standard. The relevant jurisprudence of the boards of appeal is summarised in Case Law, section II.E.5:

"In accordance with the established case law of the boards of appeal, in the case of a proposed amendment under Art. 123(2) EPC ... the factual disclosure of a European patent application as originally filed has to be established to a rigorous standard, namely the standard of certainty 'beyond reasonable doubt'."

T 0466/20 - Change OD composition in the course of oral proceedings

 Key points

•  This is an unusual case. 
• The OD held first oral proceedings:  "After [the Chair] had informed the parties of the opposition division's conclusions regarding the claims of Auxiliary Request 3 and the requirements of novelty and inventive step, the parties agreed to continue in writing for the adaptation of the description. Then the chairman "announced the decision that the claims of AR3 met the requirements of the EPC.""
• Second oral proceedings are held for the adaption of the description.
• "after discussion of the patent proprietor's multiple requests for adaptation of the description filed on 4 October 2019, the opposition division twice gave the patent proprietor the opportunity to file a further request for adaptation of the description to overcome the objections raised up to then. Thereupon, both opponents objected "to the Opposition Division as a whole as being biased/suspect of partiality in favor of the Patentee". Oral proceedings were then adjourned from 6 to 9 December.
• "The second oral proceedings were resumed on 9 December 2019 at 13.30 hrs before the opposition division in a three-member composition with the same first and second examiners as before and a new chairman in place of the former chairman. The new chairman announced the decision of the Director in charge that the objection against the former chairman's impartiality was not justified. He also informed the parties that, however, the statements made by the representatives of the opponents in the context of the request gave rise to the concern of inducing possible bias of the former chairman when continuing the proceedings, and that therefore the Director had decided, and the former chairman had voluntarily agreed, that the former chairman be replaced by the new chairman."'
• The written decision is signed by the two members of the OD and the new Chair of the OD.
• The Board, after an extensive analysis, finds this a substantial procedural violation and sets aside the (entire) decision of the OD.
• "It clearly follows from Article 19 EPC that the power to examine and decide on oppositions to a European patent must always be exercised personally by the examiners appointed for that purpose, and it is clear from the provisions of Articles 113(1) and 116 EPC that this personal exercising of said power must be apparent to the parties and the public []. It is established case law that a written reasoned decision pursuant to Rule 111(1), second sentence, and (2) EPC issued after oral proceedings should be the decision written on behalf of, and represent the views of, those members of the opposition division who conducted the oral proceedings and who gave the decision orally at those oral proceedings pursuant to Rule 111(1), first sentence, EPC, and no others []. Therefore, such a written decision must be signed by the members of the opposition division who were involved in reaching the decision pronounced orally, and only by them []. "
• "a change of composition of an opposition division between the oral proceedings and the issuing of a written decision should be avoided and, if that is not possible, parties should be offered new oral proceedings in the event of a change (T 900/02 [r.3])".
• "It is mainly in dispute between the parties in the case at hand whether, in the first oral proceedings on 4 March 2019, interlocutory decisions were announced by the opposition division in the former composition which were binding on the new chairman" (or only conclusions).
•  "the patent proprietor referred to decisions G 12/91, OJ EPO 1994, 285, point 2, second and third sentences, of the Reasons, and T 577/11, point 3.1, second paragraph, of the Reasons. In the cited passage of decision G 12/91, the Enlarged Board of Appeal held that a decision given orally becomes effective and binding by virtue of being pronounced. In the cited passage of decision T 577/11, the board of appeal confirmed this for interlocutory decisions announced in the course of oral proceedings on a specific point and found that such a decision excluded any re-opening of the debate. These findings are not called into question by the board. "
• The Board, for the sake of argument, assumes that an interlocutory decision was given. " the written reasoned decision confirming this orally-announced interlocutory decision must be issued on behalf of the very same members of the opposition division who were present at the first oral proceedings, as the task of giving a written reasoned decision is personal to those members of the opposition division present at the oral proceedings and cannot be delegated to a differently-composed opposition division, even if two of the members remain the same"
• "The board agrees with the view taken in decision T 42/02 (point 9 of the Reasons) that, if an opposition division feels it necessary to orally announce binding interlocutory decisions, the correct procedure under such circumstances would be to issue a written interlocutory decision (not allowing separate appeal pursuant to Article 106(3) EPC) dealing with the issues decided at the first oral proceedings followed by a final decision dealing with the remaining issues, each decision being properly signed by only the three examiners concerned. "
• The Board appears to distinguish the present case from  T 0699/99 where the legal member retired between the first and second oral proceedings and was replaced. An interlocutory decision had been given by the Board in the first oral proceedings.
• The Board also deals with the case that only conclusions were given by the OD during the first oral proceedings (since the minutes are unclear). A substantial procedural violation occurred as well in that case because then the only decision was taken by the new Chair who had not heard the relevant remarks of the parties. "Thus, all findings at the oral proceedings which are relevant to the final decision should be made in the presence and with the involvement of the members giving the final decision, even in cases where no oral interlocutory decision is pronounced. The written reasons must also not be influenced by the views of a new member which were neither formed on the occasion of the respective oral proceedings nor communicated to the parties on this occasion (see decision T 42/02, point 8 of the Reasons). The written decision should therefore be in the name of and signed by those members of the opposition division who conducted the oral proceedings and heard the parties at those oral proceedings on the issues on which a decision was pronounced at the same oral proceedings or [...]at later oral proceedings. Changes in the composition of an opposition division after oral proceedings should therefore be avoided even in cases where no interlocutory decision has been given orally, and if that is not possible parties should in general be offered new oral proceedings in the event of a change (see also T 862/98, point 2.3.2 of the Reasons)."

T 0466/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t200466eu1.html

T 1891/20 - Intervention by entity related to opponent

 Key points

•  A legal entity belonging to the same economic group as one of the opponents files an intervention. The patentee objects that the intervention is inadmissible because the opponent and the intervener would not be separate parties.
• The Board: " In the present case, the intervener did not have the status of an "opponent" in the opposition proceedings. In particular, the intervener is a legal entity which is separate from appellant II. This has not been disputed by the respondent. In T 305/08, it was stated that "any third party" in Article 105(1) EPC cannot be given an interpretation other than that each party must be a separate legal entity, and that this also applies to an intervention filed by a legal entity belonging to the same group of companies as the opponent (Reasons 1.5.2)." The Board follows this case law.
• The Board: “ As to the respondent's objection to appellant II and the intervener having a common representative, the board refers to Rule 151 EPC, according to which parties may appoint a common representative. ”
• As a comment, I think this is confusing.  Rule 151(1) first sentence refers only to the case of multiple applicants. Rule 151(1) third sentence reads: “The same shall apply to third parties acting in common in filing a notice of opposition or intervention and to joint proprietors of a European patent.” As I understand it, this refers to joint opponents (multiple natural or legal persons filing a single opposition and paying one opposition fee, see G 3/99) and to joint proprietors (including the backreference to the mandatory common representative of Rule 151(1), first and second sentence). The opponent and intervener in the present case are not joint parties. Nevertheless, there is no provision prohibiting two (non-joint) opponents from appointing the same representative. However, it would indeed be very confusing if the same representative speaks for two (non-joint) parties (“Mr/Ms. Chair, thank you, Opponent 1 has no novelty objections and Opponent 2 submits that claim 1 is not novel over D4”).
• The Board, on the admissibility of the appeal: “Questions of admittance of allegedly late-filed submissions and the admissibility of an appeal should not be mixed up (see e.g. T 2069/15, Reasons 4). With regard to the latter, the board does not see any convincing reasons why the appeals of appellants I and II should be considered inadmissible under Rule 99(2) EPC.”

T 1891/20 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t201891eu1.html

Reasons for the Decision

1. Admissibility of the intervention (Article 105 EPC)

1.1 The respondent requested that the intervention be dismissed, for the following reasons:

i) During the licence negotiations following the appealed decision, the intervener claimed to be equivalent to appellant II, so that they would automatically inherit the rights of appellant II in the framework of a legal agreement concerning, inter alia, the patent under dispute. In fact, the main representative of appellant II in the cross-licence agreement was Mr. Branzka, which was listed in an e-mail of 25 January 2017 as Director of Patents/Licences for the intervener, while successive e-mails of the same thread defended the position of appellant II. The identity between both appellant II and intervener was reinforced by the fact that the notice of intervention was filed in the name of the intervener, but with the same address and the same representative as the notice of opposition of appellant II filed two years earlier. The position of the intervener was contradictory. On the one hand, they tried to defend that appellant II "does not qualify as a different party" from the intervener on a cross-licence agreement signed by the intervener but, on the other hand, tried to defend that the intervener and appellant II were different entities that should have rights as different parties to the opposition proceedings.

T 0325/16 - (I) Citing case law is no case amendment

 Key points

• “The [opponent] requested that the [patentees] submission based on decision T 1684/16 not be admitted as it had only been presented at the oral hearing and as it was hence late filed. In this case, the [patentee's] submission is a legal argument relating to the interpretation of Article 56 EPC, more specifically to the application of the problem/solution approach. ”
• " Since the [patentee's] submission is thus a legal argument, the board had no discretion to not admit it into the proceedings (T 1914/12, point 7.2.3 of the Reasons)."
• " This consideration is fully in line with, for instance: T 861/93, which held that "decisions relied on by a party in support of its arguments are never citations which can be rejected as late under the provision of Article 114(2) EPC. Arguments are not covered by that provision. Therefore, decisions to which a party refers in support of its arguments are to be considered part of those arguments and may not be rejected as late." (point 12 of the Reasons; translation provided by the current board)".

T 0325/16 - link after jump

T 1989/18 - No need to adapt the description (?)

 Key points

•  There is currently some controversy between the uses and the EPO persons in charge of the Guidelines as to how (precisely) the description must be adapted to the (amended) claims before grant in particular if non-claimed embodiments must be deleted or prominently marked as not according to the invention.
• Board 3.3.04 takes position in this decision, curiously enough issued with code [D] and without headnote (credits to the DeltaPatents blog; also extensively discussed by IPKat).
• The applicant/appellant (in house counsel) argued that: “The EPC did not require that parts of the description of an application which were no longer covered by the set of amended claims on which an examining division intended to grant a patent had to be marked as "non-related disclosure" or even had to be deleted when adapting the description to those claims.”
• The Examining Division refused the application because the applicant did not adapt the description as required according to the Ex. Div.
• The Board: “Article 84 EPC only mentions the description in the context of the additional requirement that it must support the claims. Under this requirement, the subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described.  ... Thus, Article 84 EPC cannot serve as a legal basis for the refusal.”
• “As per Rule 42(1)(c) EPC (Rule 27(1)(d) EPC 1973 and Rule 27(1)(c) EPC 1973, before and as of 1 June 1991, respectively) the description shall disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art. ”
• “However, in the absence of an objection of lack of unity under Article 82 EPC, the board fails to see how the above-mentioned provision could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed. ”
• “The board has also considered Rule 48(1)(c) EPC (Rule 34(1)(c) EPC 1973) as a possible legal basis requiring the adaptation of the description. Under Rule 48(1)(c) EPC, a European patent application shall not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances. According to both the wording and history of this provision, it is concerned not with the contents of granted patents but with patent applications. ”
• “ In view of the above considerations, the board fails to see how the aforementioned provisions of the EPC, or any others, can lead to the requirement that embodiments disclosed in the description of an application which are of a more general nature than the subject-matter of a given independent claim must constitute potential subject-matter of a claim dependent on that independent claim. The board accordingly concludes that the decision under appeal is erroneous and is to be set aside.”
• As a comment, credits to the applicant for challenging the established first instance practice.
• However, I'm not sure if this decision will become established case law. Let's see if other Boards follow.
• Board 3.3.09 recently in T 1399/17, not cited in the present decision: “ Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim. ... On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.”
• The present decision does not engage with T1808/06, headnote and r.2:  "In order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear."

T 1989/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181989eu1.html

Reasons for the Decision

Admissibility of the appeal

1. The appeal complies with the requirements of Article 108 EPC and Rule 99 EPC and is admissible.

T 2796/18 - Rule 28(2) not to be applied to applications filed before 01.07.2017

 Key points

•  " The sole reason given by the examining division for rejecting the main request was that the claimed plants were exclusively obtained by means of an essentially biological process and that the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC." 
• The Board: " as the present application was filed before 1 July 2017, and is still pending [], the new interpretation of Article 53(b) EPC adopted in opinion G 3/19 (supra), does not apply." 
• " Furthermore, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal (supra), does not exclude the subject-matter of the main request from patentability.  In view of the above considerations, the board concurs with the appellant that the subject-matter of the claims is not excluded from patentability pursuant to Article 53(b) EPC in conjunction with Rule 28(2) EPC."
• As a comment, the Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision of the Administrative Council 29.06.2017, OJ 2017 A56; i.e. also to applications filed before 1 July 2017 and still pending on 1 July 2017.

T 2796/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182796eu1.html

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is admissible.

Main request

Exceptions to patentability (Article 53(b) EPC)

2. The sole reason given by the examining division for rejecting the main request was that the claimed plants were exclusively obtained by means of an essentially biological process and that the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC.

T 2532/17 - Reformulation as long as the spirit of the original disclosure of the invention is respected

 Key points

•  “ According to established jurisprudence of the boards of appeal (Case Law of the Boards of Appeal of the European Patent Office, 9th edition, 2019, I.D.4.4.1), where a specific problem is identified in the description, the patentee, here the respondent, may be allowed to put forward a modified version of the problem if the issue of inventiveness has to be considered on an objective basis against a new prior art that comes closer to the invention than that considered in the original patent application or granted patent specification. ”
• “Since the problem objectively solved is the result actually achieved in relation to the closest state of the art, there is nothing to prevent the problem as first formulated from being modified as long as the spirit of the original disclosure of the invention is respected. A reformulation of the problem may be appropriate if an alleged effect of a described feature can be deduced by the skilled person from the application in the light of the prior art or if new effects submitted subsequently during the proceedings were implied by or related to the technical problem initially suggested.”
• “ Before turning to this question, it is however appropriate in the present case to consider the experimental evidence and technical arguments submitted by the parties in relation to free flowing.” [follows a discussion]
• “Turning now to the question whether the original disclosure of the patent in suit hinted at the achievement of free flowing particles when the pastilles are subjected to a temperature of 50°C, the original disclosure of the patent in suit, or even the patent in suit itself, is not concerned with any storage issues, let alone under certain time and temperature conditions associated as alleged by the [patentee] ... In any event storage of PEG based pastilles in relation to temperature has also not been shown to be an issue mentioned or implied by the teaching of [the CPA document] D19." 
• “It is therefore concluded that the flowability of the claimed pastilles after storage at 50°C or temperatures around that value is not implied by or related to the technical problem initially suggested. It cannot be deduced from the original disclosure of the patent in suit alone or in the light of the closest prior art. Under these circumstances, the flowability of the claimed pastilles after storage at 50°C cannot be taken into account for the formulation of technical problem solved over the closest prior art.”
  
  
• Later, when discussing obviousness, the Board also recalls that " the answer to the question as to what a person skilled in the art would have done in the light of the state of the art depends on the technical result the skilled person had set out to achieve (see T 0939/92, OJ EPO 1996, 309, reasons Nrs 2.4.2 and 2.5.3)." 

T 2532/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t172532eu1.html

4. The parties were also in agreement that the definition of the product of granted claim 1 differs from that of substrate III in that:

(i) it is in the form of a unit dose consisting of 13 to 27 g of pastilles,

(ii) each pastille has a mass in the range from 0.95 mg to 2 g,

(iii) the molecular weight of the PEG is selected to be in the range of 5000 to 11000 and

(iv) the pastilles comprise 2 % to 12 % by weight of free perfume.

T 0099/16 - Lose the claims as held allowable by OD

 Key points

•  Both patentee and opponent appeal. The board observes in the preliminary opinion that " the version of the patent held by the opposition division to meet the requirements of the appeal is no longer pursued by the patent proprietor".
• "  [Patentee] argued that their intention had always been to defend the version of the patent as maintained by the opposition division, i.e. auxiliary request 1. This was clear from the fact that they invested a great deal of effort in presenting complete lines of argument in order to defend this request in their reply to [the opponent's] statement of grounds dated 22 July 2016. They never explicitly abandoned auxiliary request 1, such that it had always been in the appeal proceedings. There was an obvious mistake in the numbering of the auxiliary requests [1 to 6] in the letter dated 10 January 2017 that they corrected by letter dated 18 March 2020 [by renumbering them as AR-2 to 7]. " 
• The Board is not convinced. "the allegedly obvious mistake in the letter of 10 January 2017 arises neither from the letter itself nor from the fact that no change in the appeal file occurred between [patentee's] letters dated 22 July 2016 and 10 January 2017. As a matter of fact, a party is entitled to change their requests at any time during the proceedings without justification when it concerns withdrawals, whether tacit or not. As a result, there was no reason to doubt whether the letter of 10 January 2017 reflected the real intention of [patentee] at that time." 
• " Since the maintenance of the version of the patent as upheld by the opposition division was not comprised in the requests filed on 10 January 2017, auxiliary request 1 is considered to be re-filed with letter dated 18 March 2020." 
• " Since the re-filing of auxiliary request 1 was done after the parties' replies, even after the board's communication pursuant to Article 15(1) RPBA 2020, a justification from [patentee] for its admissibility into the appeal proceedings is mandatory. Even if the RPBA 2007 had still been applicable, a justification would have been necessary in order for the board to judge whether it should exercise its discretion under Article 13 RPBA 2007 in favour of the patent proprietor.  However, [patentee] did not provide any valid justification for the re-filing of auxiliary request 1 after the board's communication but relied solely on their "obvious mistake" arguments, so that the request cannot be admitted into the proceedings already for this reason alone (Article 13(1) RPBA 2020)." 
  
  
• The requests 2-7 filed with the letter of 10 January 2017 are not admitted either.
• " Article 13(1) RPBA 2020 applies. In order to take into account that RPBA 2020 entered into force after the actual filing of auxiliary requests 2 to 7, the attention of [patentee] was drawn to the lack of justification for the late filing of these requests in the communication of 3 February 2020 (point 5.1). Therefore [patentee] had the opportunity to provide in a timely manner a justification as required by Article 13(1) RPBA 2020." 
• " However, [patente's] arguments merely reflect the course of the appeal proceedings and do not constitute a justification for the late-filing of auxiliary requests 2 to 7 with the letter dated 10 January 2017. Said letter was filed nearly six months after the parties' replies and is therefore an amendment to [patentee's] case according to Article 13(1) RPBA 2020, irrespective of whether or not something happened in the interim and of how far in advance of the oral proceedings it was filed." 
• The main request was found to lack an inventive step (the Board agreeing with the OD). None of the auxiliary requests was admissible and the patent is revoked.
• Note, where the Board writes "Said letter was filed nearly six months after the parties' replies and is therefore an amendment to [patentee's] case according to Article 13(1) RPBA 2020", probably this means no more than that the letter of 10 January 2017 was not the patentee's reply to the Statement of grounds of the opponent, but a subsequent letter.

T 0099/16

T 0970/17 - Amending to the larger thing

 Key points

•  "claim 1 as granted was directed to a septum [;] claim 1 of the third auxiliary request is directed to a vascular access port comprising the septum according to claim 1 as granted" 
• The opponent argues that this violates Article 123(3) EPC. The argument is basically that more might infringe  "under German patent law with regard to contributory infringement". I assume that amended claim 1 is directed to a vascular access port comprising the septum and a housing (casing) and that the argument is that possibly now selling the housing alone, would be contributory infringement to amended claim 1 (under Article 64(3) EPC and Section 10 (1) PatG).
• The Board does not buy it. “Claim 1 of the third auxiliary request includes all the features of claim 1 as granted, as well as several additional technical features. Both claims are product claims. It follows that claim 1 of the third auxiliary request has a narrower scope of protection than claim 1 as granted (see G 2/88, Reasons 4.1).”
• “In any case, the scope of protection of claim 1 as granted, which is directed to a septum, is broader than that of claim 1 of the third auxiliary request, which is directed to a vascular access port comprising the septum according to claim 1 as granted.” 
• “The opponent's arguments relating to possible differences under German patent law with regard to contributory infringement do not change the above assessment. There is a difference between the "extent of the protection conferred" by a patent under Article 69 EPC and the "rights conferred" by a patent under Article 64 EPC. The latter depend on the rights conferred by a national patent in the relevant contracting state and do not need to be considered for the purposes of Article 123(3) EPC. Accordingly, the national laws of contracting states in relation to infringement are not to be taken into account under Article 123(3) EPC either (G 2/88, Reasons 3.3).”
• See also recent decision T 1832/17 of a different Board finding the same. 
• Note that the effect of Art. 64(2) EPC is to be taken into account under Article 123(3), see G 2/88, r.5.1 and e.g. T 1471/14.

T 0970/17 - link after the jump

T 2091/18 - Cancelling independent claim and case amendment

 Key points

•  The patentee cancels device claims 6-14 during the oral proceedings, keeping only claims 1-5 directed to the process, in a new request filed during oral proceedings before the Board.
• The Board considers this to be a case amendment in the sense of the RPBA. The Board disagrees with a number of other decisions which took a different position.
• "Für den Rückschluss, dass die Streichung von Ansprüchen das Beschwerdevorbringen nicht ändere, insofern sich dadurch keine geänderte Sachlage (T 995/18, T 981/17, T 1792/19, T 1857/19) bzw. keine (völlige) Neugewichtung (T 995/18, T 981/17) ergebe, findet sich nach Ansicht der Kammer in der Verfahrensordnung keine Stütze."
• The present Board is of the view that the question of whether a submission constitutes a case amendment in the meaning of Article 13(2) RPBA, is to be distinguished from the considerations regarding the further course of proceedings, as such considerations may be relevant for the subsequent question of whether there are exceptional circumstances. 
• The Board applies Article 13(2) RPBA and admits the request inter alia because the Board had raised new issues regarding specifically the device claims in the preliminary opinion.

T 2091/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182091du1.html

Entscheidungsgründe

Zulassung des Hauptantrags

1. Der dieser Entscheidung zugrundeliegende Hauptantrag wurde erstmals zu Beginn der mündlichen Verhandlung vor der Beschwerdekammer eingereicht. Er unterscheidet sich von dem Patent in der erteilten Fassung, das der angefochtenen Entscheidung, den Einspruch zurückzuweisen, zugrunde lag, lediglich dadurch, dass die Vorrichtungsansprüche 6 bis 14 gestrichen worden sind. Damit werden in dem nun vorliegenden Hauptantrag nur die Verfahrensansprüche 1 bis 5 in der erteilten Fassung weiterverfolgt.

2. Artikel 13 (2) VOBK 2020, der gemäß den Übergangsbestimmungen des Artikels 25 (1) und (3) VOBK 2020 vorliegend anwendbar ist, implementiert die dritte Stufe des im Beschwerdeverfahren anzuwendenden Konvergenzansatzes (s. Zusatzpublikation 2 zum ABl. EPA 2020, S. 33, Erläuterungen zu Artikel 13 Absatz 2). Die Vorschrift bestimmt, dass Änderungen des Beschwerdevorbringens eines Beteiligten nach Ablauf einer von der Kammer in einer Mitteilung nach Regel 100 Absatz 2 EPÜ bestimmten Frist oder, wenn eine solche Mitteilung nicht ergeht, nach Zustellung der Ladung zur mündlichen Verhandlung grundsätzlich unberücksichtigt bleiben, es sei denn, der betreffende Beteiligte hat stichhaltige Gründe dafür aufgezeigt, dass außergewöhnliche Umstände vorliegen.