T 0469/19 - Putting the problem first

Key points

• Board 3.3.10 on inventive step, in a chemistry case: "Document D1 discloses a method silent on the amount of water fed to the reactor. The parties agreed with the opposition division's conclusion that D1 was a suitable starting point for examining inventive step. The board sees no reason to differ.' 
• The Board analyses the patent in suit and holds that "Inventive step will thus be examined in the following considering the technical problem underlying the claimed invention to be the provision of a method for the hydrogenation of phenol with enhanced phenol conversion" 
• "The solution to this technical problem is the claimed method of continuous catalytic hydrogenation of phenol over a palladium catalyst, characterised in that water is fed ..." 
• "The respondent [patentee] relied on the experimental evidence on file to show that the problem of providing a method with enhanced conversion was credibly solved by the features of claim 1." 
• The  Board then studies the (experimental) evidence submitted by the parties.
• "Having regard to the available evidence, it is not credibly shown that the problem of providing a hydrogenation process with enhanced conversion has been credibly solved by the method of claim 1." 
• The Board reformulates the problem. "In accordance with the case law, alleged but unsupported advantages cannot be taken into consideration in determining the problem underlying the invention (see e.g. decision T 20/81, OJ EPO 1982, 217, Reasons 3, last paragraph). 
• "As the alleged improvement in terms of better conversion has not been proven, the technical problem as defined above needs to be reformulated as to provide an alternative method for preparing cyclohexanone, cyclohexanol or a mixture of these."
• "The claimed solution is the method of claim 1, characterised by the relative amount of water added to the reactor."
• "This problem is credibly solved by the claimed method. Having regard to the available evidence, the hydrogenation of phenol can be carried out if the required relative amount of water is fed to the reactor."
• " It thus remains to be decided whether the proposed solution to the objective problem defined above would have been obvious for the skilled person in view of the prior art.
• As a comment, the Guidelines indicate that first the distinguishing feature is determined, then the technical effect provided by that feature, and that "  the [objective] technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects".
• This Board first identifies the technical problem, then the claimed solution (distinguishing feature), then checks whether the technical problem is solved by the claimed solution, and if not, reformulates the technical problem. See G. Raths, epi Information 2/2014 p.68; and footnote 7 of my article in epi Information 2/2021

EPO 

The link to the decision is provided after the jump.

T 1024/18 - Description must be amended to be consistent with amended claims

Key points

•  "One of the requirements of Article 84 EPC is that the "claims ... shall be ... supported by the description". According to long established case law of the Boards of Appeal, this has been interpreted as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC"" 
• "The Board concurs with the appellant's [opponent] contention presented at oral proceedings that the sole description on file was not consistent with the claims of auxiliary request 2. " The patentee did not attend the oral proceedings.
• "In the recent decision T 1989/18 [of Board 3.3.04] (see particularly Reasons 5) addressing a similar issue to the present case of support of the claims by the description, the Board in that case found that inconsistencies in the description could not affect clarity of the claims since, according to Article 84 EPC, these in themselves had to be clear."
• "According to the present Board, the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims)."
• "to provide only support for the claims in one single passage of the description while the rest of the description might give a different or even contradictory meaning to the claims, would in essence negate the general meaning of the words "support by the description" and in fact would allow it to be reduced to a de minimis requirement of e.g. repetition of the claim wording while allowing the entire remaining description to be left to explain an entirely different invention to the one claimed."
• "Hence, the Board finds that the requirement in Article 84 EPC of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout. "
• "Thus, when amendments are made to the claims (amendment to the granted claims in the present case), the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims. Embodiments of the invention which are not consistent with the claims must therefore be deleted or must be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages are not, or are no longer, part of the invention. All of the latter adaptations are indeed common practice when making claim amendments."
• "Considering also Article 84 EPC in the wider context of the EPC, this understanding of the provision seems to be in line with the standard of claim interpretation for national proceedings enshrined in Article 69(1) EPC, according to which the description is also to be taken into account when interpreting the claims. Inconsistencies between the claims and the description could thus - in particular in national proceedings - be the source of diverging interpretations as regards the scope of the claims. Accordingly, misinterpretation could be avoided in particular if inconsistent information contained in the description or drawings is already removed in the proceedings before the EPO. The importance of Article 84 EPC for the interpretation of claims in national proceedings is also documented in the "travaux préparatoires" of the EPC 1973. It emerges from the preparatory documents that a provision corresponding to the current Article 84 EPC, which was originally part of the Implementing Rules, was re-located to the Convention due to its importance for national infringement proceedings (cf. BR/51/70, point 18). Thus, the support requirement of Article 84 EPC also serves the aim to ensure legal certainty for national post-grant proceedings (as do the requirements of clarity and conciseness)."
  
  
• The Board's reasoning makes sense to me.
• I suppose the ball is now in Board 3.3.04's court to make a referral to the Enlarged Board when a suitable case comes by.

EPO T 1024/18

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0354/20 - Both parties' failure to properly present in writing their case

Key points

•  The Board remits a case, adding that  "The Board notes that the reasons for this situation are mainly due to both parties' failure to properly present in writing their case in respect of the auxiliary requests." 
• Taking a step back: The OD maintained the patent as granted. The opponent appeals. The Board  finds the main request to be not novel. "From the above it follows that the respondent's main request to maintain the patent as granted fails and that the decision under appeal is to be set aside. The respondent (patent proprietor) filed 19 auxiliary requests with the reply to the statement of grounds of appeal. Auxiliary requests 1 to 12 and 14 to 19 were already filed during opposition proceedings. As the opposition was rejected, none of the issues concerning the auxiliary requests were part of the impugned decision."
• " With the reply to the statement of grounds of appeal, filed on 22 October 2020, the respondent [patentee] explained what were the amendments made in accordance with the auxiliary requests and stated in very general terms that the auxiliary requests were submitted in response "to the opponent's objection concerning an alleged lack of novelty and inventive step of the main request"." 
• " The appellant [opponent] filed comments on the auxiliary requests with letter dated 24 March 2021, i.e. about three months after the summons to oral proceedings, which was issued on 18 December 2020, i.e. about 2 months after the reply to the statement of grounds of appeal was filed, and in which it was pointed out (point 5) that the appellant did not file observations in respect of the auxiliary requests." 
• " the situation that arose at the oral proceedings when the Board announced after deliberation that it considered that the main request was not allowable for lack of novelty, was that - possibly apart for auxiliary requests 1 to 6 - there was no case made by the parties in advance of the oral proceedings as to why the auxiliary requests would or would not overcome the lack of novelty." 
• " Consequently, assuming that some of the requests would be admitted into the proceedings, the Board was put in the position to either allow the parties to present their arguments on novelty and/or inventive step for the first time at the oral proceedings or else not admit any argument not presented in writing. In the former case, this might have led to a new discussion at the oral proceedings, possibly with unexpected twists. In the latter case, this might have led to the maintenance of the patent on pure formal reasons." 
• Or not admitting the requests and revoking the patent?
  
  
• As a comment, the unresolved key question is: should the opponent appealing against rejection of the opposition, address auxiliary requests pending before the OD in the SoG? Or can the opponent first wait whether the patentee maintains those auxiliary requests in appeal? In the former case, the failure was on the side of the opponent. In the latter case, the failure was on the side of the patentee who as respondent perhaps formally maintained the AR's in appeal, but without proper substantiation and hence not validly. This is, in my view, frankly not clear enough in the current RPBA. The Board does not provide clarity on this point but remits.

EPO T 0354/20 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2558/16 - Appeal admissible and admissibility of requests

Key points

•  The Board: in translation (r.6) " For an appeal to be admissible, it is not necessary for the appellant to challenge the opposition division's decision as erroneous. According to established case law (cf. "Case Law of the Boards of Appeal of the European Patent Office", 9th edition 2019, VA2.6.5 c)), a statement of grounds of appeal can also be regarded as sufficient if new facts are presented which take away the legal basis for the decision. In particular, an appellant [appealing patentee] can present amended sets of claims and explain why these [amendments] are suitable for eliminating the deficiencies complained of in the contested decision. Exceptionally, however, a new request which obviously serves to remove the ground for revocation, for example because a feature objected to by the opposition division under Article 123(2) EPC is replaced by a suitable amendment, can be made without further justification as to why the decision under appeal is considered wrong, constitutes an immediately recognizable and sufficiently direct link between the decision under appeal and the statement of grounds of appeal (see T 1276/05, point 1.2 of the statement of reasons for the decision; T 933/04, point 1.2.3 of the statement of reasons)." 
• The Board: " The question of admissibility of the appeal does not depend on whether the amended claims are subsequently admitted into the proceedings by the board or whether the appellant's submissions are ultimately convincing."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0364/18 - Extent of opposition; 7 independent claims after amendment

Key points

•  This decision was already published in May 2021 but is still interesting.
• In this opposition appeal, with the opponent filing the appeal, the Board considers the main request to be not novel and turns to the auxiliary request.
• " The notice of opposition, first paragraph, expressly requested revocation of claims 1-5, 8, 9, 11, 15-17, 19 and 20. This request was repeated at the start of oral proceedings before the opposition division [] and again upon appeal []. The board sees herein an express statement that the patent is opposed and the decision is appealed only in as far as the claims mentioned are concerned, thus defining the extent of opposition according to Rule 76(2)(c), respectively the extent to which decision is to be amended according to Rule 99(2) EPC. Consequently, and in accordance with the principle of ne ultra petita the board sees itself limited to examining the patent only for the claims opposed." 
• " The Auxiliary Request is directed at the subject-matter of unopposed granted claims 6, 7, 10, 12 to 14 and 18, in the form of independent claims 1 to 7 combining the features of respective ones of these claims with granted claim 1. As it is thus directed at the subject-matters not opposed, and the board has no power to examine such subject-matter, the patent must be maintained in this limited form." 
• Having 7 independent claims, all for a hydraulic machine (see the claims here, are indeed perfectly fine in opposition in these circumstances.
• " the board does not have the power to examine patentability of the Auxiliary Request. Therefore, the patent can be maintained in an amended form on the basis of the Auxiliary Request pursuant to Article 101(3)(a) EPC, provided that the description is adapted to the amended claims." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1241/18 - (III) Repeating arguments was enough

Key points

•  The OD decides to maintain the patent as granted. The opponent appeals. The question is whether the appeal is admissible, in particular whether the Statement of grounds is sufficiently substantiated.
• The Board: " the sole fact that a statement of grounds of appeal contains a repetition of arguments provided before the opposition division as such is not sufficient for the appeal to be considered insufficiently substantiated. " 
• " The board is convinced that, in the present case, the first instance proceedings and more specifically the decision under appeal did not give rise in any way to the necessity for an adapted line of argumentation or a focused discussion of particular reasons given in the decision under appeal." 
• " the board observes that the relevant parts of the decision under appeal contain a summary of the parties' arguments followed by the opposition division's opinion. The appellant's arguments provided in the statement of grounds of appeal are clearly consistent with the arguments that were taken into account by the opposition division." 
• " In the present case, the decision under appeal did not contain anything that would have given the appellant reason to correct or adapt their line of argumentation or to expressly discuss certain views adopted by the opposition division. The repetition of the substantial arguments already put forward in the first instance proceedings therefore was a justified reaction to the decision under appeal in the specific case, which served the purpose of convincing the board." 
• " point 15.2 of the reasons for the decision under appeal consists largely of a repetition of the parties' arguments, while the opposition division expressed their own opinion on novelty of the subject-matter of claim 1 merely in a single paragraph on page 6. An even shorter paragraph of the division's reasoning on novelty of the subject-matter of claim 4 is present on page 7." 
• " The statement of grounds of appeal provided detailed and well-reasoned arguments on the points that were discussed in the decision under appeal, namely novelty of the subject-matter of claims 1 and 4 over D6 and inventive step of the subject-matter of claims 1 and 4 in view of D7. " 
• " The board has therefore come to the conclusion that the requirements of Article 108 EPC in conjunction with Rule 99(2) EPC are fulfilled." 
• 
  

EPO T 1241/18

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1241/18 - (II) The patentee as respondent and auxiliary requests

Key points

•  The OD maintains the patent as granted and does not discuss the auxiliary requests filed by patentee in the first instance proceedings. The opponent appeals and logically only discusses the claims as granted. What should the patentee as respondent do in connection with the auxiliary requests, if they were filed without substantiation before the OD?
• The Board " In the present case, the opposition division's finding in the decision under appeal that the patent under appeal was to be maintained does not release the patent proprietor (respondent) from their obligation to also substantiate further requests. With the auxiliary requests, the respondent requests the maintenance of the patent in amended form, which is expressly covered by the wording of Article 12(2) RPBA 2007, according to which it must be explained on what grounds the patent is to be maintained in amended form. The respondent's "complete case" in the sense of Article 12(2) RPBA 2007, therefore, is to be considered to also refer to the auxiliary requests." [slight edits in quote]
• " As set out before, however, the respondent [patentee] has neither in the first instance proceedings nor in the reply to the appeal in any way argued on what grounds the auxiliary requests were deemed to overcome the appellant's objections." 
• " It is further to be noted that the appellant [opponent] in the statement of grounds of appeal not only objected to claim 1 of the main request but also presented arguments as to why the subject-matter of the dependent claims of the patent as granted was not patentable, and that at least some of the auxiliary requests were based on those claims. The board therefore does not agree with the respondent that neither the decision under appeal nor the statement of grounds of appeal gave rise to a detailed argument as regards the patentability of the auxiliary requests."
• The auxiliary requests are not admitted.
• The case is not remitted: " However, in the case at hand, the respondent's main request was not allowable and the first to fifth auxiliary requests were not admitted into the appeal procedure. There is thus no factual basis for a remittal of the case to the opposition division and the board consequently has decided to reject the respondent's request to remit the case to the department of first instance." 
• The patent is revoked.

EPO T 1241/18

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 3261/19 - Reversal apportionment of costs

Key points

•  The opponent appeals against the rejection of the opposition. The OD had also ordered the opponent to pay costs, i.e. a cost apportionment, for the costs made by the patentee for attending the oral proceedings before the OD (decision of the OD here).
• Rule 97 is no issue in the case at hand.
• The Board overturns the cost apportionment. The OD had based the decision on the fact that the opponent had announced very late that it would not attend the oral proceedings.
• The Board in translation: "However, an apportionment of costs does not constitute a sanction for impolite behavior by a party, but can be ordered if the behavior of one party incurs avoidable costs for the other party (case law of the Boards of Appeal, III.R.2.). As far as the unannounced non-participation in oral proceedings is concerned, it follows from settled case-law that this can lead to an apportionment of costs in favor of the participating party if the oral proceedings were clearly superfluous due to the non-participation of the other party (Case Law of the Boards of Appeal, III. R.2.2.1)."
• The patentee argues that in the case at hand, the oral proceedings were superfluous in the absence of the opponent. The preliminary opinion of the OD was indeed entirely in favor of the patentee. However, the opponent had filed a new document D6 after the preliminary opinion. 
• The Board: "However, the Board is of the opinion that, in view of the opponents' submission of 18 July 2019, in which, among other things, D6 and a corresponding objection under Article 56 EPC were mentioned for the first time, the holding of the oral proceedings could not be considered superfluous, because a preliminary opinion of the opposition division on the supplementary and partly new submissions of the opponents was not available before the oral proceedings. Therefore, prior to the hearing, the patent proprietor could not trust that the opposition division would decide in its favor according to the preliminary opinion of January 4, 2019. For this reason, it was objectively to be assumed that the patent proprietor would have appeared at the hearing even if the opponents were absent. Accordingly, the omission of a timely notification of the non-appearance does not seem to be causal for the presence of the patent proprietor or her representative in the oral hearing, including the associated costs. Under these circumstances, it also does not seem frivolous that the opponent did not announce its non-appearance in good time."
• The case seems to imply that an opponent that announces very late that it will not attend oral proceedings, should additionally cite a new citation as prior art, but I'm not sure if that is a correct result.
• It may be important that the Board in fact finds D6 to be sufficiently relevant and decides to overturn the decision of the OD to hold D6 inadmissible.
• It seems that the OD had overlooked a paragraph in D6. It may be asked if the absence of the opponent during the oral proceedings could have contributed to the OD overlooking a part of D6. 

EPO T 3261/19 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0013/20 - Proofing internet publication date 19 years later

Key points

• This concerns the refusal of a patent application with priority date in July 2004 where the relevant citation is "D2: W.E. Ryan: "An Introduction to LDPC Codes", XP002336953, pp. 1-23, the date "August 19, 2003" indicated on the first page."
• Google search for "W.E. Ryan An Introduction to LDPC Codes" gives as of today as the first result a pdf file hosted at http://tuk88.free.fr/LDPC/ldpcchap.pdf which appears to be in content the same as a book chapter published in November 2004 (ISBN 9780849315244); it may also have been a conference paper. 
• Entry into the EP phase in 2007, supplementary ESR in 2010, Communication in 2015, summons for oral proceedings in 2018 and only then was this document D2 introduced into the proceedings by the Examining Division.
• 
  
• The Board:" it appears that the examining division retrieved D2 as an Internet citation but did not record any information as to when this citation was made publicly available. The examining division considered the "nominal" date of "August 19, 2003", indicated on the first page of D2 (cf. point I above), to be indeed this document's publication date. When questioned by the applicant, the examining division conducted a search for D2 by means of the Google search engine (cf. Reasons A1.4 of the appealed decision). Moreover, as reflected in the minutes of the oral proceedings before the examining division, they maintained their position even after having revisited the issue of D2's publication date. This even seems to have been the major point of debate during the oral proceedings"
• "The board of course acknowledges that due to an advance in technological means of search and recovery of documents, it may at times be necessary or useful to explore possibilities not mentioned in the Guidelines. Yet the appellant's concern regarding the ability of a commercial tool such as the Google search engine used by the examining division to provide a reliable proof of a publication date is legitimate, given the lack of verifiability of the tool's functioning and its associated collection of search results. Google's PageRank algorithm (or any of the other algorithms used by this search engine) could very well have stacked the search results such that results relating to a publication date in 2003 would have been ranked higher than those with a later publication date, e.g. because the former results happened to correspond to websites that have a better search engine optimisation. In this case, the examining division could have missed the latter results, thereby ruling out references that may have potentially cast doubt on what the examining division believed to be D2's actual publication date."
• "It follows from points 3.3 to 3.6 above that the evidence provided in the decision under appeal to support the examining division's assessment of D2's publication date is inadequate, which led the board to conduct its own investigations to assess whether or not D2 could be taken into account as a prior-art document. These investigations could only confirm the appellant's doubts regarding D2's publication date based on their annexes E and F (cf. point II above), where D2 was referred to with a publication date in the year "2004" and "2005", respectively.'
• The Board: Should the examining division upon remittal further wish to rely on document D2, it should provide an annex with appropriate print-outs or screenshots of the further "information on the then publishing web site" (cf. point A1.1 of the reasons of the decision under appeal). Alternatively, the division may inquire with the executive committee of the ICC 2003 conference, for instance with the "Tutorial Co-Chairs" as indicated in the section "Committees" of the conference's web page (cf. aspect (ii) of point 3.5 above), to determine whether any material reflecting the content of Mr Ryan's presentation at this conference is still available. If this is the case and if the assembled material presents a sufficient degree of similarity with D2, this could be an objectively verifiable basis for confirming the public availability of D2."
• 
  

EPO T 0013/20

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1840/19 - Non-novel 2nd non-medical use

Key points

•  This case provides a refresher of the holding of G 2/88: "A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public."
• Claim 14 is directed to: " Use of a compound [boric acid] for stabilizing a soil-release polymer comprising ester moieties in the presence of a lipase" 
• Claim 12 is directed to a method. Board 3.3.06 deals with the novelty of both claims together. " to decide whether the subject-matter of claims 12 and 14 is novel or not, it is necessary to establish which specific limitations result from the method/use features, and to subsequently assess whether such limitations are explicitly or implicitly anticipated by the cited prior art" 
• "  The stabilising effect is explained in the description of the patent, which indicates (par. [0007] and [0008]) that the invention is based on the surprising finding that said substance stabilises the soil-release polymer in the presence of lipase, an effect which appears to be associated with the inhibition of lipase in the presence of the proposed substance. " 
• D9 discloses in an example "a composition including a lipase, a soil-release polymer and boric acid" 
• "[In use claim 14] the purpose of stabilising the soil-release polymer simply requires adding a substance as defined in that claim to a composition including lipase and solid-release polymer." 
• The Board then applies G2/88, though not the headnote but r.7.1: "this issue is explicitly addressed in decision G 2/88 (see reasons 7.1 and 7.2), which indicates that when a known entity is used for a new purpose, the question to be asked is what the actual technical features of the claim are (i.e. which specific features are associated with the new purpose). Only if it can be concluded that the use involves "new means of realisation" in the form of technical steps which are not disclosed in the prior art, can the claim be considered to be novel." 
• The Enlarged Board in G2/88 r.7.1: " In the Enlarged Board's view, the distinction drawn by the [opponent] is a fundamental one, and can be developed as follows. In relation to a claim to a use of a known entity for a new purpose, the question initially arises: what are the technical features of the claim? If the claim includes as a technical feature a "new means of realisation ation" by which the new purpose is achieved, in the form of steps of a physical activity, which are not disclosed in the state of the art in association with the known entity, then the claim is clearly novel because of the presence of that technical feature." 
• In the above paragraph, the EBA first deals with the easy case. The EBA then turns to the more difficult cases.
• The EBA in G2/88" In relation to a claim to a use of a known entity for a new purpose, the initial question is again: what are the technical features of the claimed invention? If the new purpose is achieved by a "means of realisation" which is already within the state of the art in association with the known entity, and if the only technical features in the claim are the (known) entity in association with the (old) means of realisation, then the claim includes no novel technical feature [and the claim is not  novel]" (emphasis added)
• However, the Enlarged Board then continued in G2/88: "In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention ... Thus with such a claim, where a particular technical effect which underlies such use is described in the patent, having regard to the Protocol [on Art.69], the proper interpretation of the claim will require that a functional feature should be implied into the claim, as a technical feature; for example, that the compound actually achieves the particular effect." 
• This leads to headnote 3 and r.10.3 of G2/88: "with respect to a claim to a new use of a known compound, such new use may reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect). If that technical feature has not been previously made available to the public by any of the means as set out in Article 54(2) EPC, then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public." 
• It is not clear to me why headnote 3 of G3/88 would  not apply in the present case. It is also unclear to me why the TBA cites r.7.1 and 7.2 of G2/88 only and not r.10.3 of G2/88.
  
  
• To cite T59/87 of 14.08.1990: "in Decision G 2/88 it was emphasised in paragraph 10.1 that the question to be decided is what has been made available to the public, not what may have been inherent in what was made available to the public. Furthermore, as emphasised in paragraph 10, when considering how far the teaching in a written description also makes available to the public the inevitable result of carrying out such teaching, in each case "a line must be drawn between what is in fact made available and what remains hidden or otherwise has not been made available"." 

EPO T 1840/19

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1265/17 - Broad claims and plausibility

Key points

•  Board 3.3.06 in the headnote: "If a claim is unduly broadened with respect to the scope of the examples used to illustrate a technical effect, particularly when this broadening concerns the feature/s allegedly providing that effect, the burden of proof might shift back to the proprietor to prove that the effect observed in the examples would also be obtained throughout the entire scope of the claims. If no evidence is provided in this respect, a conclusion may have to be drawn on the basis of plausibility arguments"
• The Board in r.2.2.5: "In the absence of specific evidence to address this issue, conclusions might have to be drawn on the basis of plausibility arguments, in particular by assessing whether the effects in the examples can be plausibly extrapolated to other technically reasonable embodiments covered by the claims. In the board's view, this approach is in line with other decisions (e.g. T 2579/11, reason 2.5.1) in which the technical effect of the invention was also determined by a plausibility check of the evidence on file."
• It may be useful to refer to T939/92 AgrEvo which is the landmark case on the issue at hand. See in particular r.2.6.3 of T939/92. 
• "Since the relative retention improvement provided by nanocellulose is already very low (1,7%) for dosage 1 of PAM and dosage 1 of nanocellulose/bentonite, the board considers that it is not technically plausible that an improvement in retention would also be observed at significantly lower concentrations of both nanocellulose and PAM. In view of the fact that such embodiments are covered by claim 1 at issue and are not technically unreasonable, it follows that the effect of improving retention would not be plausibly obtained throughout the entire scope of the claims."
• "The board thus concludes that the only effect which would be observed throughout the entire scope of the claims is that of providing a good retention performance (no better than that obtained with other alternatives such as bentonite), so the problem solved by the invention is to propose an alternative process that has a good retention performance."

EPO T 1265/17

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1958/19 - Waiver and forfeiture of attacks

Key points

• The OD decided to admit an auxiliary request during the oral proceedings and found them to be allowable. The opponent has the uphill battle that it did not present the relevant attacks against the amended claims during the oral proceedings before the OD.
• The opponent challenges the decision of the OD to admit the amended claims. The Board reviews the decision in some detail but for clear error under G 7/93, r.2.6: the OD was correct in that a selection from five alternative features in the granted claims was not surprising, according to the Board. 
• The new Article 83 attack is not admitted. The attack was made in the proceedings before the OD, but only for the main request. The critical part of the minutes of the oral proceedings before the OD is as follows: “Nach Unterbrechung der Verhandlung von 11:31 bis 12:37 Uhr fragte der Vorsitzende ob Einwände gegen den neuen Hilfsantrag unter Regel 80 oder Artikel 123(2), (3), 83 oder 54 bestünden. E1 und E2 [i.e. opponents 1 and 2] verneinten.”
• The minutes are taken as authentic, as no timely request for correction had been filed by the opponent.
• “Diese Erklärung der Beschwerdeführerin [opponent] vor der Einspruchsabteilung ist in ihrer Form und ihrem Inhalt auch derartig klar und eindeutig, dass sie nicht einer möglichen Auslegung zugänglich wäre, beispielsweise ... vor dem Hintergrund ... dass die Erklärung unter Berücksichtung des damaligen Verfahrensstandes zu verstehen sei.”
• “Die Beschwerdeführerin hat nunmehr diese Einwände erstmalig im Beschwerdeverfahren vorgelegt, obwohl sie erkennbar nicht daran gehindert war, die Einwände bereits im Einspruchsverfahren vorzulegen. Vielmehr hatte sie im Einspruchsverfahren im Rahmen der ihr zustehenden Parteidisposition ausdrücklich und zweifelsfrei erklärt, diese Einwände nicht zu erheben. Sie hat auch keinen Grund dafür angegeben, warum sie diese Einwände nunmehr erstmalig im Beschwerdeverfahren und nicht bereits im Einspruchsverfahren vortrug.”
• The attacks are not admitted.
• As a comment, in the decision of the OD, some other insufficiency attacks on the main request are discussed and dismissed and the main request is rejected as not inventive. So this is not a case where the insufficiency attacks for the main request apply equally for the auxiliary request, it seems.
• It may be asked whether the Board's approach isn't very formalist. 
• The finding of the OD, that the auxiliary request is inventive, was only contested by the opponent by presenting new inventive step attacks. These new attacks are not admitted.  Again, the Board notes that the claim amendment in the auxiliary request was not surprising so that the fact that the request was only filed during the oral proceedings before the OD does not justify presenting new attacks based on new documents O18 and O19 in appeal. 
• Moreover, the Board infers from the minutes that the opponent had waived the inventive step attacks based on D3 (O3) and D4 (O4) that it had made in the notice of opposition.
• The Board: “Der Beschwerdeführerin war indes während der mündlichen Verhandlung vor der Einspruchsabteilung der von ihr selbst in der Einspruchsschrift gegen die erteilte Fassung vorgelegte Einwand aus den Dokumenten O3 und O4 [] bekannt.
  Auch hat die Beschwerdeführerin im Verlauf des Verfahrens vor der Einspruchsabteilung nicht angezeigt, dass sie eine Unterbrechung des Verfahrens für eine Ergänzung von Lücken in ihrer Argumentation benötigt.
  Die Erklärung der Beschwerdeführerin [ see * below ] kann daher objektiv nur so verstanden werden, dass die Beschwerdeführerin in der mündlichen Verhandlung vor der Einspruchsabteilung freiwillig und im Rahmen ihrer Parteidisposition von weiteren Einwänden der mangelnden erfinderischen Tätigkeit abgesehen hat.”
• * = “Vielmehr hat die Beschwerdeführerin in Kenntnis der Entscheidung der Einspruchsabteilung über die Zulassung des damaligen Hilfsantrags 1 im weiteren Verlauf der mündlichen Verhandlung ausdrücklich erklärt, dass sie neben dem in der Entscheidung berücksichtigten und von der Beschwerdeführerin nicht aufrechterhaltenen, auf den Dokumenten O1 und O11 basierenden Einwand der Einsprechenden 01 "keine weitere Angriffe gegen den Anspruch 1 vortragen zu wollen"”
• This 2nd declaration of the opponent appears to be a waiver of the attacks based on O3 and O4, the documents that were already on file before the OD. The attacks based on O18 and O19 were probably forfeited (because when the opponent said it had no attacks, it was probably not specifically thinking of documents O18 and O19). 
• For the difference between waiver and forfeiture, as those terms are used in USA civil procedure,  see https://en.wikipedia.org/wiki/Forfeiture_and_waiver. The current case law of the EPO does not distinguish between the terms, but I think this case illustrates that the effect of the declaration (that the opponent has no further attacks to present) during oral proceedings before the OD should be different depending on whether an already presented attack is thereby waived, or simply an unknown attack is not presented.
• The relevance of the failure of the opponent to ask for more time during the oral proceedings before the OD is not entirely clear to me (does it apply only to the new attacks based on O18 and O19? Was the opponent supposed to find those documents during a break? Or does the remark also apply to the attacks based on O3 and O4?)
• For the insufficiency attacks, it is not clear to me if it is waiver or forfeiture.

EPO T 1958/19 - 

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

T 2148/18 - Successful retraction withdrawal appeal

Key points

• In an examination appeal, the applicant withdraws the appeal and retracts the withdrawal at the same day.
• So, “The appellant filed on 29 November 2021 a first letter stating that they "herewith withdraw the appeal" and on the same day a second letter stating that "the previous unconditional withdrawal of the appeal has been erroneously filed and [they] request that this earlier letter be disregarded" (bold face and underlining omitted). ”
• The retraction is treated as a request for correction under Rule 139 EPC
• " The representative credibly stated that he had made the mistake himself. The first letter filed on 29 November 2021 had been incorrectly formulated by the representative as it did not represent the true intention of the applicant. It emerges from the submitted documents that the instructions of the appellant were clear insofar as they wanted to return to the version for which the Examining Division had already sent a communication under Rule 71(3) EPC (see emails submitted in preparation to the oral proceedings before the Board) being in substance the same as the fourth auxiliary request submitted with the statement setting out the grounds of appeal." 
• “In the present case, the Board considers these four conditions [of J10/87] fulfilled: - at most, the first letter filed on 29 November 2021 had been available for file inspection for a very short time without the second letter filed on the same day being also available in this manner; ...”
• "Based on these considerations, the Board allows the correction of the error under Rule 139(1) EPC, i.e. the retraction of the withdrawal of the appeal. Such a correction has retroactive effect, with the consequence that the document containing the error has to be regarded as if it was filed in the corrected form (ab initio effect, as explained in J 0019/03, Reasons 3.). " 
  
  
• The Board deals further with inventive step of the claims according to AR-4, these claims being the ones found allowable by the Examining Division.
  
  
• Petition for review R3/22 concerning unrelated case T0695/18 (application 11865564.6) also deals with a retraction of a withdrawal of an appeal. In that case, the appeal was terminated without a decision after the withdrawal of the appeal. The retraction of the withdrawal (filed one day later) was handled by the Board [in fact the Registrar it seems, see here] in a quite different way than in the present case. However, I refrain from comments on R3/22 as the case is pending. 
• The EPO sent out a reminder for a renewal fee in the course of the petition for review proceedings R3/22 which also remarkable, in view of R.51(5).

EPO T 2148/18

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1306/18 - Plausibility (Almirall II)

 Key points

• A post from the stock (decision published in  November 2021).
• Claim 1 is directed to: “A pharmaceutical composition comprising aclidinium [...] providing a metered nominal dose of aclidinium equivalent to 400 myg (plus/minus 10%) aclidinium bromide for use by inhalation in the treatment of chronic obstructive pulmonary disease [COPD].”
• “The subject-matter of claim 1 of the main request differs in the metered nominal dose of aclidinium equivalent to 400 myg (plus/minus 10%) aclidinium bromide.”
• The Board: “the [] post-published evidence [the scientific journal articles D42-D44] credibly shows that the claimed dose of 400 myg allows for an effective long term treatment of COPD without increase in side effects.”
• “According to the [opponents - 26.07.2022], the technical effects alleged by the appellant, in particular the absence of increase in toxicity, are not to be taken into account for the assessment of inventive step. The Board does not share this opinion for the following reasons.”
• “The respondents also criticise the absence of data regarding safety profile for the dose of 400 myg in the application as filed. The Board does not share this opinion for the following reasons.”
• “the Board concurs with the appellant [patentee] that these effects are sufficiently connected to the technical problem mentioned in the application as filed to justify a reformulation of the objective technical problem for the purposes of inventive step. The clinical data reported in the application as filed (see example 1) involve a once-daily treatment with, among others, a dose of 400 myg aclidinium for 4 weeks. The suitability of the claimed aclidinium dose in long-term maintenance therapy is thus sufficiently shown in the application as filed. Furthermore, at the end of the clinical study of example 1, it is observed that "Aclidinium was well tolerated, with no dose-dependent effect on ECG, laboratory parameters or adverse events" (paragraph [0043] of the application as filed) and that the 400 myg dose was selected as the investigational dose for long term clinical trials on the basis of not only efficacy but also tolerability data (paragraph [0044] of the application as filed). Accordingly, the clinical data of D42-D44 merely confirm the teaching of the application as filed and can be taken into account in the assessment of inventive step.”
  
• I've not studied if the post-published scientific articles D42-D44 are perhaps the publications of the results of the long term clinical trials. The priority date was in 2008, the publications D42-D44 are all from 2012; D44 is a "24-week, double-blind trial" .
• 
  
• The decision was taken 14.09.2021 and published 22.11.2021.

Link after the jump.

T 2251/13 - Slowest appeal of 2021

Key points

• Statement of grounds filed 18.10.2013 in this examination appeal, summons in 2019, oral proceeding held 13.04.2021.
• “The invention concerns an interactive food and/or drink ordering system in a restaurant. The main idea is to project a menu onto the restaurant table (Figure 1). The table has a built-in track pad allowing the guest to select and order food and/or drinks from the menu.”
• Question for the readers: inventive or not?
• Figure 1 of the A publication is shown below:
  
  
  
  
  
• 
  
• The fastest appeal handled by a Technical Board of Appeal in 2021 and dealing with the merits, was T0519/21 where the Board found a substantial procedural violation.

EPO 

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

T 0853/16 - No communication within the meaning of Rule 103(2) EPC

Key points

•  "By letter dated 2 April 2020, received by the EPO on the same date, the appellant withdrew its appeal and stated: "It is requested to refund 75% of the appeal fee."
• "Only Rule 103(2) EPC could offer a legal basis for a 75% reimbursement of the appeal fee and this reads as follows: "The appeal fee shall be reimbursed at 75% if, in response to a communication from the Board of Appeal indicating its intention to start substantive examination of the appeal, the appeal is withdrawn within two months of notification of that communication.""
• The Board finds that "there had been no communication from the board indicating its intention to start substantive examination of the appeal, and therefore one of the conditions set out in Rule 103(2) EPC had not been fulfilled" (preliminary opinion, cited and confirmed in the decision)
• " the appellant [argued that ] it was clear from the logic of Rule 103 EPC that there was a temporal sequence starting with Rule 103(1) EPC almost at the beginning of the appeal procedure and ending with Rule 103(4) EPC almost at the end of the appeal procedure. Applying Rule 103(3) EPC in between, timewise, Rule 103(1) EPC and Rule 103(2) EPC would break this logic. Further, the straightforward interpretation of Rule 103 EPC showed a monotonically decreasing sequence of rates, i.e. 100%, 75%, 50%, 25% and, implicitly, 0%. These arguments are not convincing. "
• "Paragraphs (1) to (4) of Rule 103 EPC contain various provisions for a full or partial refund of the appeal fee in the event of a withdrawal of the appeal. Whether and to what extent the appeal fee must be reimbursed depends on whether the requirements of one of these provisions are met. This means that the reimbursement of the full or partial appeal fee does not depend on a temporal sequence. Thus, it may well be that no communication within the meaning of Rule 103(2) EPC is issued in an appeal case and that therefore a 75% reimbursement of the appeal fee is not available at all."

EPO T 0853/16

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1327/19 - Support under Art. 84

Key points

• In this appeal against a refusal, the Board reviews the rejection by the Examining Division based on the requirement of "support" of Article 84.
• "The board notes that Article 84 EPC requires, amongst other things, that the claims indicate all the essential features of the invention. Any features that are necessary in order to obtain the desired effect or, in other words, that are necessary in order to solve the technical problem with which the application is concerned are to be considered essential features (see decision T 32/82). In the present case, the problem solved by the application concerns providing "alternative communication paths [having] no single point of failure" (see page 5, lines 10-12)."
• Examining the claim at issue: "In view of the above, the board holds that the [three] features identified in the impugned decision as allegedly being missing are either not essential or are already reflected in the wording of claim 1, which thus fulfills the requirements of Article 84 EPC."
• The case is remitted. "The board notes that the examining division decided on the issues of added subject-matter (Articles 76(1) and 123(2) EPC) and lack of support/lack of clarity (Article 84 EPC). Novelty and inventive step were not assessed in the impugned decision.
• Under these circumstances, the board does not consider it appropriate to decide on the issues of novelty and inventive step without a decision of the examining division. Thus, the board holds that special reasons exist for remitting the case to the department of first instance."

EPO T 1327/19  -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2411/18 - Medical method

Key points

• Claim 1 reads: "A solution with an effective amount of treprostinil sodium for use in a method of reducing the occurrence of a blood stream infection in a human suffering from pulmonary arterial hypertension and being treated with tresprostinil, said solution being obtainable by a process comprising diluting a starting solution of treprostinil sodium with a buffer comprising glycine and having a pH of greater than 10."
• "The appellants [=opponents] essentially argued that the method of reducing the occurrence of a blood stream infection in a human referred to in claim 1, was not a method of treatment within the meaning of Article 53(c) EPC because the antibacterial effect of the glycine occurred outside of the human body."
• The opponents: " It was apparent from the disclosure of the patent that the antibacterial effect of the glycine solution occurred outside of the human body. There was no teaching that the solution exerts an in vivo antibacterial effect."
• "The Board does not concur with the positions expressed by the appellants. The glycine-containing treprostinil solution of claim 1 is administered to humans suffering from PAH. This administration results in a therapeutic effect on the humans, namely the prevention of blood stream infection ... The method incorporated in claim 1 is therefore of therapeutic nature in the sense of Article 53(c) EPC and limits the scope of the claim in accordance with Article 54(5) EPC."
• However, "the subject-matter of claim 1 of auxiliary request 1 lacks an inventive step"
• The Board: "It follows that it was known to the skilled person that the use of a glycine buffer at a pH greater than 10 would have an effect on reducing the gram negative bacteria and inhibiting the growth of gram positive bacteria, and hence, an effect on reducing the occurrence of a blood stream infection when injected in a pharmaceutical solution."
• "The subject-matter of claim 1 of auxiliary request 2 has been reformulated as a method claim, namely a "method of reducing the occurrence of a blood stream infection in a human suffering from pulmonary arterial hypertension and being treated with treprostinil, wherein said method reduces the gram negative bacteria and inhibits the growth of gram positive bacteria, the method comprising administering a solution comprising treprostinil sodium in a concentration between 0.001 mg/mL and 1 mg/mL...", which corresponds to the medical indication originally claimed in claim 1 of the main request. 
•  "Based on the Board's conclusion that claim 1 of the main request was a purpose limited product claim under Article 54(5) EPC, it must be concluded that the method claim of auxiliary request 3 falls under the exclusion from patentability under Article 53(c) EPC. The reduction of the occurrence of blood stream infection relates indeed clearly to a method for treatment of the human or animal body by therapy, which is excluded from patentability by Article 53(c) EPC."
  
  
• As to the CPA, "The respondent [patentee] contested the choice of D1 as the closest prior art. Nonetheless, it failed to indicate in due time a suitable alternative document to be used as the closest prior art."
• "The Board recalls that the claimed subject-matter must involve an inventive step vis-à-vis each document of the prior art. If the person skilled in the art has a priori the choice between several documents of the state of the art as reasonable starting points, the inventive step can indeed only be effectively recognized after having applied the problem-solution approach to each of the options (T 967/97, T 21/08). If one of the options highlights the obviousness, then there is no inventive step. The problem-solution approach may thus need to be repeated for each of said options considered by those skilled in the art as reasonable starting points (T 710/97)."
• 
  

EPO T 2411/18 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2282/16 - Art.123(2) and US style dependent claims

Key points

•  First, about vico oral proceedings: "Both parties expressed their preference for in-person oral proceedings. Nonetheless, in view of the ongoing Covid-19-pandemic and the potential risks of infection and impediments in travelling, the Board decided to hold the oral proceedings by videoconference, applying its discretion under Article 15a(1) RPBA 2020. Since both parties accepted this format, there is no need for the Board to give more detailed reasoning for its decision."
• Note, the Board does not refer to G 1/21. The decision was taken 21.12.2021. The Board identifies a  "discretion" to hold vico oral proceedings without discussing in any way whether the requirements of G 1/21 are met.
• As to Article 123(2) and whether the claims as filed provide basis: " Claims 5 and 7 as filed are each only dependent on claim 1, but not on each other. They are thus not directly linked to each other by the claim structure. Such claims therefore do not form a direct and unambiguous basis for deriving a claim to their combination. This is also in line with established case law (see e.g. T 1362/15, Reasons 4). Therefore, the claims do not provide a literal, and thus explicit basis for a method [as defined in claim 1 as granted]"
• "The proprietor's further argument that multiple dependencies were not allowed or at least not common when drafting applications that covered the US, and the claim structure was to be interpreted before such background, is also not accepted. There being no general prohibition of multiple dependencies in US patent law, the applicant could have claimed the combination either in a dependent claim having multiple dependencies or by a further independent, more restricted claim. As there are not even claim fees due in the PCT procedure (noting that the application as filed is a PCT application), it is equally possible that not having formulated claim 7 to be dependent on claim 5 was simply the deliberate choice of the applicant. Any conclusion as to the intention of the applicant at the time of filing is mere speculation and thus not something directly and unambiguously derivable."
• "The Board therefore finds that claims 5 and 7 of the application as filed relate simply to two different concepts, each of which defines a separate fallback position. The skilled person would thus not derive their combination directly and unambiguously from the set of claims as filed.'
• 
  

EPO T 2282/16 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1310/18 - Apportionment of costs

Key points

• The Board: "The appellant shall bear the costs incurred by the respondent for the preparation of the oral proceedings, namely fourteen hours' preparation time for the authorised representative."
• "On 9 December 2021, the day before the scheduled date, in an electronic letter that was received at 16:34, the appellant informed the board that it would not be participating in the oral proceedings and requested that a decision be taken on the basis of the state of the file. No reason was given for this change of mind. " "Furthermore, the appellant did not inform the respondent."
• "As noted by the respondent, the board's preliminary opinion on the case was wholly positive in favour of the respondent. None of the appellant's objections was considered convincing, and the opinion was expressed that the appeal would be dismissed. "
• "in the absence of any indication from the appellant that it was not continuing to argue the case, it was necessary for the proprietor's representative, as well as for the board, to spend time properly preparing for the oral proceedings immediately before they took place. It is noted that the respondent had raised numerous lines of attack in its grounds of appeal, referring to multiple documents. Therefore a considerable effort was required to prepare for the case properly. "
• " It is therefore clear that the appellant's conduct resulted in an inefficient use of the time of both the respondent and the board. "
• "In these circumstances an apportionment of costs in favour of the respondent is appropriate under Article 104(1) EPC and Article 16(1)(c) RPBA."

EPO T 1310/18 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0098/18 - Sale to automotive company

Key points

• The alleged public prior use is the sale of 246 pieces of the component "APU ZB4418" by the company Knorr Bremse to Hyundai.
• The Board recalls that in the automotive industry, suppliers have a secrecy obligation regarding components co-developed with customers. " Insofern entspricht es nach Auffassung der Kammer den branchenüblichen Gepflogenheiten, dass Zulieferer, die Teile für ein in der Entwicklung befindliches (End-)Produkt eines Kunden liefern, zur Geheimhaltung verpflichtet sind." 
• It is the customer who decides when the component becomes public: " Allein der Auftraggeber des Entwicklungsprojekts als Kunde des Zulieferers, an den Teile geliefert werden, entscheidet darüber, ob, wann und wie er die unter Geheimhaltung entwickelten Teile Dritten zugänglich machen möchte (siehe dazu auch T 1847/12, Gründe 3.2). Ein vorbehaltloser Verkauf liegt erst vor, wenn der Käufer als Mitglied der Öffentlichkeit anzusehen ist (siehe z. B. T 1168/09, Gründe 4.2.2)." 
• The Board finds it relevant whether the customer Hyundai had used the components in the mass production of vehicles. "Die Geheimhaltung erlischt also mit der Lieferung für eine Serienproduktion, weil ab diesem Zeitpunkt die Teile dazu bestimmt sind, in Fahrzeuge für den Verkauf eingebaut zu werden und damit der Öffentlichkeit zugänglich gemacht zu werden (siehe T 1168/09, Gründe 4.2.3). Ab dann kann davon ausgegangen werden, dass die Teile den Bereich der gemeinsamen Entwicklungssphäre verlassen haben und die Möglichkeit der Einsichtnahme für Dritte im Sinne der von der Beschwerdeführerin angeführten Rechtsprechung bestand." 
• The critical moment appears to be " sogenannte Serienfreigabe' :   "Eine Verwendung durch den Kunden für dessen Serienproduktion - z. B. im vorliegenden Fall bestimmte Fahrzeuge - erfolgt typischerweise erst dann, wenn durch Tests beim Kunden nachgewiesen ist, dass die gelieferten Teile "in Serienqualität" auch für die Verwendung in einem Serienprodukt auf Kundenseite geeignet sind (sogenannte Serienfreigabe)." 
• Based on the evidence on file, the Board found the use in mass production by Hyundai not proven.
• The case is interesting, but I'm not entirely convinced that approval for mass production, being an act completely internal to Hyundai (it seems), could trigger the prior art status.
• 
  
• EPO T 0098/18 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1131/18 - Clerical errors and Rule 80

Key points

•  The Board: "The Board considers that the changes in claims 1 and 3 were only typographical or editorial changes that do not result in any amendment of the subject-matter claimed. They have no incidence on the subject-matter claimed and do not introduce any unclarity, as argued by the appellant. Consequently, the main request is admitted into the appeal proceedings (Article 13(2) 2020 and Rule 80 EPC)."
• The claim amendments at issue were: 
• Hence, in claim 1 the feature "in a ratio of 2 : 1" was modified by the suppression of the empty spaces to "in a ratio of 2:1".
• In claim 3, the feature "a butyl methacrylate-2-dimethylaminoethyl)methacrylate-methylmethacrylate copolymer (1:2:1)" was modified by the addition of a bracket (shown in bold and underlined) to "a butyl methacrylate-2-(dimethylaminoethyl)methacrylate-methyl-methacrylate copolymer (1:2:1)" (modification shown in bold and underlined).
• The present decision seems to provide a new approach to the prohibition of "tidying up" the claims under Rule 80 EPC.

EPO T 1131/18 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0077/18 - Fresh grounds in appeal

Key points

• The Board decides that " that the ground for opposition under Article 100 (c) EPC should be treated as a fresh ground at the appeal stage and its admittance should be governed by the principles set forth in G 10/91" (i.e. only admitted with the consent of the patentee) in cases wherein "[the ground] was raised during the oral proceedings before the opposition division but had deliberately not been decided upon by the opposition division". 
• The OD found claim 1 to be not novel and, by dealing with novelty before the  Art.100(c) attack against independent claim 17, did not arrive at the Art. 100(c) attack (in particular because claim 1 as amended in the auxiliary requests was found to be obvious and the patent was revoked by the OD on those grounds).
• I note that this actually a quite important decision because there seems to be no case law on the point.
• Bostedt in Singer/Stauder/Luginbühl, 8th ed., Art. 101, note 61 writes: "Umstritten ist die Behandlung der Fälle, in denen die Einspruchsabteilung ihr Ermessen dahingehend ausgeübt hat, den neuen Einspruchsgrund nicht in das Verfahren zuzulassen." Hence, in case the OD holds the new ground inadmissible based on the wrong principles, the Board can admit the new ground, according to one line of case law.
• The present decision suggest that if the OD does not decide on the admissibility of the ground at all, the Board may not admit it without the consent of the patentee.
• The Board in the present case: "However, in the absence of a positive decision on admittance by the opposition division, the Board considers that the ground for opposition under Article 100 c) EPC should be treated as a fresh ground at the appeal stage and its admittance should be governed by the principles set forth in G 10/91, which require the proprietor's consent for its introduction in the appeal proceedings."

EPO T 0077/18 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.