T 0638/21 - A non-novel second non-medical use

Key points

•  Claim 1 of the patent is directed to: "1. Use of N-n-butylpyrrolidone as a non­-reprotoxic solvent."
• The prior art discloses the use of N-n-butylpyrrolidone (NBP) as a solvent but does not mention non­-reprotoxicity.
• "The board notes that D1 (page 1, lines 1-7) discloses compositions intended for topic application, with the solvent used (for example NBP) facilitating the absorption by the skin of ingredients having cosmetic or medical properties. In the board's view, such solvated compositions were implicitly held non-toxic at the filing date of D1, since they were supposed to be absorbed by the skin." 
• "Since NBP was moreover not classified as being reprotoxic at the publication date of D1, the skilled reader would at this date have understood from D1 that the solvent used was also inherently non-reprotoxic and could be commercialised without any warning label and freely used by any possible group of users. " 
• "The present case thus differs from a new therapeutic application wherein an unknown therapeutic effect can be discovered by clinical trials. This conclusion in line with established case law, for example T 1523/07, reasons 2.4, according to which "implicit disclosure means disclosure which any person skilled in the art would objectively consider as necessarily implied in the explicit content".
• "differently from the uses considered in decisions G 2/88 and G 6/88 that clearly concerned a technical effect (namely friction reduction and fungi control, respectively) different from those already known for the substance in question, and wherein the known chemical substance was purposively applied to achieve the new technical effect, the use of NBP as a non-reprotoxic solvent, even if considered to be a purposive application, underlies that already disclosed in D1."
• "This conclusion is supported by case law, for example that in T 892/94 (OJ 2000, 1, notes II) which concluded that "... a newly discovered technical effect does not confer novelty on a claim directed to the use of a known substance for a known non-medical purpose if the newly discovered technical effect already underlies the known use of the known substance."
• "the board concludes that the label of the use of NBP as "non-reprotoxic" solvent is merely an explanation of the non-toxicity already inherently known from D1 by means of its use for absorption by human skin, which use cannot distinguish the claimed use from the known one."
• The patent is revoked.
• 
  

EPO 

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

T 1598/20 - New objections in the decision

Key points

• The applicant appeals against the refusal. 
• On the admissibility of the amended claims: "As explained by the appellant in the statement of grounds of appeal, the amendments made in the new main request filed on appeal clearly address the objection of added subject-matter raised by the examining division, for the first time, in the decision under appeal." emphasis added. 
• The amendments overcome the objections under Art. 123(2).
• The Board " points out that, in such circumstances, the examining division should have considered the appeal admissible and well founded and, consequently, should have rectified the decision under Article 109(1) EPC. "
• The case is remitted.
• The appeal fee is not reimbursed (or more precisely: there is no order to do so in the decision).
• If the ED raises new objections  "for the first time in the decision under appeal" this is a violation of the right to be heard, and the appeal fee is (normally) reimbursed under Rule 103(1)(a) EPC ex officio.

EPO 

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

T 0543/20 - (II) Art. 12(4)(s.4) RPBA bites

Key points

• Auxiliary request 2 (renumbered from AR-5) is a carry-over auxiliary request.

Admissibly raised before OD

• The first question is whether the unless-clause of Art. 12(4) RPBA applies, particularly whether it was admissibly filed before the OD.
• The Board, in translation: "Auxiliary request 5 was submitted in the opposition proceedings after the time specified in the summons to oral proceedings, up to which pleadings and/or documents can be filed under Rule 116 EPC, and was therefore filed late in the opposition proceedings (see, for example, the second guidance sentence in T 1776/18 and Case Law of the Boards of Appeal, 10th edition, 2022, IV.C.4.3.2 and IV.C.5.1.4). Its admission and consideration was therefore at the discretion of the opposition division. For this reason alone, auxiliary request 5 cannot per se be viewed as being submitted in an admissible manner. The current auxiliary request 2 is therefore an amendment in accordance with Article 12(4) RPBA, the approval and consideration of which is now at the discretion of the Board."
• "The respondent's [proprietor's] opinion cannot be accepted in this respect, according to which auxiliary request [5] was a response to an objection raised by the [opponent] in the written statement filed [before the OD] under Rule 116 EPC [...]. It had already been argued in the notice of opposition that document D2 disclosed a liquid detergent which contained the R99E protease variant and the phosphonate HEDP, and that the claimed subject matter was not new via this disclosure or only differed from it [by an obvious feature] (see pages 3 and 4, the first two complete paragraphs on page 6 and the last paragraph on page 9 of the notice of opposition)."
• "Auxiliary request 2, which [specifies a difference with ] document D2, could therefore have already been filed in response to the notice of opposition in order to address the objections raised therein under novelty and inventive step ."
• It may be wise for proprietors to take the first opportunity to file a reply to a Notice of opposition seriously.

Requirement to indicate the basis

• The proprietor had, as respondent, not indicated the basis for the amendment in its appeal reply brief. Therefore, Art. 12(4)(s.4) is not met, and the request is not admissible on that ground. The Board considers that the requirement of indicating the basis of claim amendments is, in translation, "a further essential prerequisite".
• " Weitere essentielle Voraussetzung für die Berücksichtigung nach Artikel 12(4) VOBK ist, im Falle einer Änderung der Patentanmeldung oder des Patents, die Angabe der Grundlage der Änderung in der ursprünglich eingereichten Fassung der Anmeldung, sowie die Anführung der Gründe, warum mit der Änderung die erhobenen Einwände ausgeräumt werden."
• Some further requests are not admitted either, and the patent is revoked. 

EPO 

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

T 0943/22 - Withdrawal opposition by respondent

Key points

• The OD maintains the patent in an amended form, finding that the claims as granted lack basis in the application as filed. Both parties appeal. The opponent withdraws the opposition in the course of the appeal.
• The Board finds that the claims as granted do have basis in the application as filed.
• Under Article 111(1) EPC, " The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution".
• Under Rule 84(2) EPC, the EPO may continue the opposition of its own motion if the opposition is withdrawn.
• In T 0228/16, the board remitted the case after the withdrawal of the opposition, in an appeal of the proprietor. The proprietor had successfully argued that the (amended) claims were sufficiently disclosed, thereby overcoming the grounds of the impugned decision.
• The OD after the remittal considered inventive step of the operative set of claims in an interlocutory decision (link) that the patent could be maintained in amended form. 
• The present Board: "While Rule 84(2) EPC (Rule 60(2) EPC 1973) provides that, after withdrawal of an opposition, the European Patent Office may continue the opposition proceedings of its own motion, this option to continue the proceedings after withdrawal of the opposition does not apply in appeal proceedings (G 8/91, OJ EPO 1993, 346, point 7 of the Reasons [*]). The Enlarged Board of Appeal concluded in G 8/93 (OJ EPO 1994, 887) that the withdrawal of the opposition by an opponent who is the sole appellant immediately and automatically terminates the appeal proceedings, even if in the board's view the requirements under the EPC for maintaining the patent are not satisfied. In this case, the opponent was not the sole appellant, and therefore the appeal proceedings had to be continued in view of the still-pending appeal by the proprietor; however, after allowing the proprietor's appeal, taking into account the above-quoted principles established by the Enlarged Board of Appeal, the board may not assess the remaining grounds of opposition raised by the former opponents/interveners. The board's finding that the ground for opposition under Article 100(c) EPC does not preclude the maintenance of the patent as granted implies that the patent is to be maintained as granted."
• *: G 8/91 is really only about a withdrawal of an appeal, and para. 7 of it should be understood in that context, as is clear from the immediately preceding paragraph 6, which speaks of "the withdrawal of the appeal".
• Finally, the order of the decision is that the patent is maintained as granted. As a comment, I understand that under Rule 84(2) the decision (of the OD) is that the opposition is terminated or that the opposition is terminated without a decision. 

EPO 

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

T 1569/19 - From novelty to inventive step, late

Key points

• " The opponent had always argued during the opposition procedure that D6 disclosed all the features of claim 1 of the patent", in addition to inventive step attacks starting from other documents. 
• " In appeal, [the opponent] presented a new [inventive step] objection based on the fact that D6 did not disclose feature [1.3](c)."
• " The board takes the view that the content of the disclosure of D6 (or any prior art document in general) is generally to be considered a fact. D6 as a prior art document constitutes evidence but which parts of D6 disclose which features of claim 1 as granted constitute facts (see e.g. T 1914/12, Reasons 7.1 and in particular 7.1.4, T 603/14, Reasons 7.3, T 482/18, Reasons 1.2.5, also referring to T 1914/12)." 
•  " This [that D6 did not disclose feature [1.3](c)] is a new fact and not merely a new argument. A new argument would relate e.g. to the technical effects provided by this distinguishing feature, whether the skilled person would consider other documents, if it would be obvious to combine them with D6, etc. All these arguments would, however, be based on the new fact regarding the disclosure of D6." 
• The fact/argument distinction is a rather subtle one. The distinction is, however, important because new arguments that do not involve new facts might not be covered by Art. 114(2) EPC. The decision treats the admissibility under Art. 12(4) RPBA 2007, and "the board agrees with the opponent that Article 12(4) RPBA 2007 does not relate to arguments." 
• "Summarising, the board considers that the opponent's objection of lack of inventive step starting from D6 relates to new facts presented for the first time in appeal that could and should have been presented in the first instance opposition proceedings. Exercising the power under Article 12(4) RPBA 2007, the board does not admit this objection into the appeal proceedings." 
• As a comment, the appeal decision also notes that: "the proprietor pointed out that the opponent had agreed with the opposition division that D6 was not suitable as closest state of the art (see the middle of page 13 of the reasons for the impugned decision: "The opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). 
• As a comment, it is unclear to me how this - D6 does not disclose feature 1.3.c - could be a new fact presented for the first time in appeal, given the remark in the minutes that "the opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). "
• The impugned decision and the minutes are a part of the basis of the appeal under Art.12(1)(a) RPBA 2020.
• 
  

EPO 

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

T 1103/21 - 15 minutes oral proceedings

Key points

•  The proprietor files amended claims in appeal.
• The proprietor had filed no reply at all in the first instance proceedings and the patent was revoked without oral proceedings and without preliminary opinion of the OD.
• The proprietor does not invoke a substantial procedural violation, so probably they had received the notification of the notice of opposition.
• The Board: " Throughout the appeal proceedings, the appellant has not indicated any specific circumstances of the appeal case that could justify the admittance of the new requests into the appeal proceedings within the meaning of Article 12(6) RPBA. In its communication pursuant to Article 15(1) RPBA, the board had already announced the expected non-admittance of the main request and the auxiliary request (see paragraph III above and the respective communication of the board under point 11). However, the appellant did not provide any justification either in writing or at the oral proceedings."
• Hence, the appeal is admissible, but all requests are inadmissible.
• 
  
• The oral proceedings before the Board lasted 15 minutes and were held by vico. Both parties attended.
• The possibility of holding short oral proceedings seems a great advantage of vico. In this way, it is unambiguously clear that the proprietor was aware of the appeal and had nothing to add and the right to oral proceedings was complied with in the most efficient manner.*
• (* - without prejudice to the possible right to in-person oral proceedings outside pandemics). 
• 
  

EPO 

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

T 0433/21 - Retraction withdrawal appeal

Key points

• The Examining Division refused the application. The applicant appeals.
• After a " rather negative" communication of the Board: " In a submission dated 29 December 2022, the then appellant wrote the following: "In the name and on behalf of the applicant, Phoslock Pty Ltd., our appeal filed on February 9, 2021 against the decision of the examining division of December 1, 2022 is hereby withdrawn"" 
• Oral proceedings were cancelled, and fees were refunded.
• " With a submission dated 20 January 2023, the appellant who henceforth is referred to as "the petitioner" made the following requests: "1. Es wird beantragt, den im Schreiben vom 29. Dezember 2022, eingereichten Antrag auf Basis der Regel 139 EPÜ oder aufgrund allgemeiner Rechtsgrundsätze nach Art 125 EPÜ, dahingehend zu korrigieren, dass dieser als Antrag auf eine Teilanmeldung verstanden wird, wie er mit Aktenzeichen 23152685.6 am heutigen Tage beim EPA eingereicht wurde.
• The petitioner submitted that: "it had always been the intention of the petitioner to file a divisional application rather than to withdraw the appeal".
• The Board: "an error caused by miscommunication between the applicant and the representative or by an incorrect recollection of the applicant's instructions [cannot] be regarded as an error under Rule 139 EPC", hence there is no correctable error if the document filed with the EPO is deemed to express the representative's intention at the time of filing"
• The Board is of the view that it has to decide on the request for retraction of the withdrawal. This procedure, however, does not reopen the appeal as such if the retraction is not accepted. 
• The Board disagrees with T 0695/18 that a correction of a withdrawal of an appeal is never possible. I think the position of the present Board is reasonable. 
• The Board introduces a difference in legal status between a same-day retraction and a later retraction. Same day would be possible because "one day is the smallest temporal unit" in the context of the EPC.
• I am not entirely sure if one day is the smallest temporal unit for written proceedings before the EPO in all contexts, see T1946/21 (though that decision  may be largely obsolete after G1/22)
• "Only a withdrawal made during oral proceedings becomes immediately effective. This is nonetheless based on procedural reasons, and not on substantive ones, since either the oral proceedings are declared closed with the effect of res iudicata, or (in the case of appeal and cross-appeal) a subsequent retraction still during oral proceedings would have to be examined in the same way as a late-filed request. "
• The Technical Board: "The public would be ill-served by well-meant, yet ill-explained exceptions to seemingly strict rules in order to do justice to individual cases. Such case-specific exceptions invariably lead to uncertainty and entice litigation. The above considerations apply all the more since the typical users of the European patent system are professional representatives (mandatory for applicants not resident in [a contracting state of the EPC]) who have passed a qualifying examination and do not need special protection for inexperienced users."
• "In the case at issue, the petitioner declared a withdrawal of the appeal, yet in fact had received instructions to file a divisional application and withdraw the appeal. Although the petitioner first argued that the withdrawal was meant to be the filing of a divisional application, during oral proceedings it was submitted that the declaration to withdraw the appeal was not erroneous, but incomplete, and the error was the omission to (additionally) file a divisional application, as if one page of the document as submitted on 29 December 2022 had gone amiss."
• Note that evidence must be available of the true intent at the relevant time.
• "the Board finds that in the present case the representative made an error by omission, but not an omission concerning the content of the document that was actually filed, but an omission to carry out the client's instructions. The omission of a procedural act cannot in itself be regarded as a correctable error under Rule 139 EPC, because it does not fall within the scope of an error or mistake in a "document filed with the European Patent Office" as required by that Rule, but rather constitutes an error or mistake in the run-up to the filing of the document. This narrow interpretation of the concept of "error" not only conforms to the wording of Rule 139 EPC, but also alleviates the concerns highlighted in decision T 695/18, i.e. that applying Rule 139 EPC to such cases as the current one would compromise legal certainty."
• The Board finds the approach of T 2474/19 to be "particularly helpful": "it is the acting person's error which must be considered, i.e. the error of the person who actually filed the document to be corrected".
• The request for correction/ retraction is refused. The meanwhile filed divisional application is not validly filed, as I understand the Board; the Board does not say this with so many words. Perhaps the status of the divisional will be the subject of an appeal in the case of the divisional application.  

EPO 

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

T 0543/20 - The appropriate starting point

Key points

•  The Board, in translation: "[in the proprietor's] opinion, this teaching in example 13, especially in connection with the R99E protease variant, was not a "realistic" starting point (as in point 4.1.2 of T 1379/11) for the task without a retrospective perspective for the person skilled in the art. solution approach, since the focus of document D2 was on other protease variants that were actually examined, in particular the "F49" variant. The expert lacked motivation in the sense of the so-called "could-would approach" to choose example 13 among all 21 examples of document D2 in the light of their entire teaching with a focus on another protease variant, and within example 13 then an R99, and of these to “select” the R99E protease variant mentioned only in claims 2 and 6 as the starting point for the inventive step."
• The Board: "This line of argument is apparently based on a misunderstanding of how the "selection" of the closest prior art is made. It is true that a starting point for determining an inventive step should be realistic in the sense of the criteria developed by the boards of appeal in this context described in point 4.1.2 of T 1379/11. According to these criteria, it should describe an object that serves the same purpose or pursues the same aim, describes a similar use or concerns the same or a similar technical problem, or at least comes from the same or a closely related field as the claimed invention. A second possible criterion is the number of common features. The fact that a teaching could not realistically have been the basis for an invention is not the case, for example, if the teaching comes from an unrelated field that is too distant."
• " The fact that document D2 contains additional examples and describes a number of other protease variants in more detail than the R99E protease variant is therefore irrelevant to the question of whether Example 13 with the R99E protease variant can serve as a starting point for the problem-solution approach. The further, more detailed examples and the alleged focus in document D2 on other protease variants that have actually been examined with regard to their cleaning performance cannot change the technical disclosure of Example 13 and therefore have no influence on the question of whether this is a realistic starting point for the task -solution approach can be."
• "The criteria for selecting a realistic starting point set out in point 4.1.2 of T 1379/11 are met for example 13 of document D2. Document D2, like the patent in suit, provides suitable or improved subtilisin protease variants for use in a detergent or cleaning agent, and all protease variants disclosed in document D2, including those mentioned in Example 13, are intended for this use, as is that in Example 13 liquid cleaning agents described. In this respect, the use of Example 13 as the closest prior art does not constitute a discrepancy with the procedure described in point 4.1.2 of T 1379/11."
• "The difference between the claimed subject matter and the disclosure in Example 13 of document D2 lies in the concentration of the phosphonate. In order to determine the task to be solved, it is necessary to assess whether there is a technical effect associated with this distinguishing feature. This is not the case for the phosphonate concentration range cited in the claim. "
• Example 13 is silent on the concentration of the phosphonate that is used.
• " is therefore no technical effect associated with the difference between the claimed use and the teaching in document D2. Since no concentration for the phosphonate is given in Example 13 of document D2, the problem to be solved can therefore only be seen in the provision of a suitable concentration for the phosphonate in the enzymatic liquid cleaning agent described in Example 13 of document D2."
• The Board: " The use of a HEDP concentration, which falls within the range specified in the claim, was therefore obvious from the teaching in document D2 alone for the person skilled in the art who would like to put example 13 of document D2 into practice."
• " It was therefore obvious to the person skilled in the art to select a concentration for the phosphonate in the liquid cleaning agent described in Example 13 of document D2 from the concentration range specified in the claim. There is therefore no inventive step associated with the subject matter of claim 1 of the main request (Article 100(a) EPC in conjunction with Article 56 EPC).
• As a comment, I'm not entirely sure if all national courts would apply the PSA in the same way. The decision seems predicated on the rule that the CPA is an embodiment, not an entire document, see e.g. T 1287/14.
• See also T 0787/17. 

EPO 

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

G 7/93 - r.2.6 Review of decisions to hold inadmissible

Key points

• 
  
• "2.6. It may be added that if an Examining Division has exercised its discretion under Rule 86(3) EPC [1973] against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department. "
•  "If a first instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the Boards of Appeal. In the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [...], or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion."
• The holding concerned a decision of an examining division to hold inadmissible amended claims filed late in the grant procedure. The holding of the  Enlarged Board has been extended to opposition proceedings and to other types of submissions (namely, evidence and allegations of facts) but not to decisions of opposition divisions to admit submissions.

EPO 

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

R 0006/20 - (II) Art. 12(4) RPBA 2007

Key points

•  In this petition for review case, the Board did not admit evidence of a public prior use that was filed in appeal under the "could have been filed" prong of Art. 12(4) RPBA 2007 (now Art. 12(6) second sentence RPBA). The opponent/petitioner argues, essentially, that Art.12(4) RPBA violates Art. 113(2) EPC and Article 114(2) EPC (as I understand it).
• The Enlarged Board reviews the preparatory documents of the predecessor of Art.12(4) RPBA 2007, namely Article 10a(4) RPBA 2003. 
• " Article 12(4) RPBA 2007 setting a lower threshold for non-admittance regarding a party's conduct in the prosecution than abuse of process that the petitioner suggested is in line with Articles 114(1) and 113(1) EPC. " 
• The Enlarged Board does not expressly recall that "could have been filed" in Art. 12(4) RPBA is interpreted as "should have been filed in the first instance proceedings". However, understood in that way, general compliance with Art.113(1) EPC and Article 114(2) EPC seems to be a given, especially when adding the clause, as is present in current Art.12(6), " unless the circumstances of the appeal case justify their admittance".

EPO 

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

Visser Supplement 2023 and December online update

Key points

• The supplement to Visser's Annotated EPC 2023 for EQE candidates is now available here.
  
  
• The new online updated version is available at Kluwer IP Law (if your organization has a subscription): https://www.kluweriplaw.com/document/TOC_Visser_AEPC 
• I personally spent some time on the discussion of the Vienna Convention in the Preamble chapter here, inspired by J5/23. Of course, we also did all the regular updating.

R 0006/20 - (I) Review of decision to hold submission inadmissible

Key points

• The right to be heard under Art.113(1) EPC entails more than an obligation for the Board to listen to parties: the Board's decision should also show that your submissions were considered. However, can it be a violation of the right to be heard by a decision of the Board to hold a submission inadmissible? In such a case, the Board's written decision contains some consideration of the submission. 
• R 10/18 held that: "Article 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions..."
• The Enlarged Board in the present case clarifies that "substantively considered"  means  "the Board considered the contents of those submissions", " with this consideration comprising matters - pertaining to admittance of facts, evidence and requests, and/or - relating to substantive law, i.e. the merits of a case."
• This headnote must be read in the context of the remaining part of the discussion. In particular, it does not mean that there is never a  violation of the right to be heard if a submission is rejected as inadmissible after having the (movant) party on the admissibility. 
• The Board " In section V.B.3.4.3 of the Case Law it is said: The following issues can not be considered in review proceedings: ... - whether to admit a new request (R 10/11, R 11/11, R 13/11, R 4/13) or a new document (R 10/09, R 17/11) under Art. 12 RPBA 2007; or under Art. 13(1) RPBA 2007 (R 1/13, R 4/14, R 6/17) ..."
• "In addition, in R 17/10 (in point 2.4 in fine), it was held: The admission of late-filed documents and/or other evidence is a matter for the board's discretion and, therefore, as such not subject to review under Article 112a EPC."
• However, CLBA V.B.3.4.3  also identifies a second line in the case law, as the Board notes: " The exercise of discretion is only subject to review if arbitrary or manifestly illegal (R 10/11 [point 5.2]), thereby involving a fundamental violation of the right to be heard (R 9/11 [point 3.2.3]; see also R 17/11" 
• " Under the essence of this case law, merely hearing a party on admittance does not suffice: the decision to not admit must be neither arbitrary nor manifestly illegal." 
• Notably, this means that the exercise of discretion by the Board on the admissibility of submissions is subject to review, though the standard of review is a high one, cf. G 7/93 r.2.6 for review by the Board of Appeal of a first-instance decision to hold a submission inadmissible. 
• In my view, the second line in the case law is clearly the right one. Not setting aside a decision of a Board of Appeal that holds a submission inadmissible on arbitrary or manifestly illegal grounds defeats the purpose of Art. 112a(2)(c) EPC.
• In the present case, the Enlarged Board acknowledges these two lines of case law but does not choose between them. The Enlarged Board applies both lines of case law, i.e. effectively reviews under the "neither arbitrary nor manifestly illegal" standard.
• "Under the essence of this case law, merely hearing a party on admittance does not suffice: the decision to not admit must be neither arbitrary nor manifestly illegal. These criteria are met in the case in hand: first, the applicable legal provision of Article 12(4) 2007 complies with both the principle of ex officio examination (Article 114(1)) and the right to be heard (Article 113(1) (see point 3.2.2(a) below), and, second, so does its application in the case in hand". 
•  I wonder if a referral under Art. 112 is possible to revolve the conflicting case law?  It would requite an extensive or dynamic interpretation of  Art.112. 

EPO 

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

T 1076/21 - (I) Burden of proof in appeal

Key points

• This post serves to give an impression of the decision rather than a summary. I recommend reading the entire decision to interested readers.
  
•  "With reference to T 585/92, Reasons 3.2, the respondent argued that the appellant bore the burden to prove that the patent was sufficiently disclosed because the opposition division had revoked the patent."
• "On the basis of an in-depth analysis of the relevant case law, the board has concluded that the burden of proof regarding the facts, arguments and evidence on the substance (which initially lies with the opponent) does not shift to the proprietor just because the patent has been revoked due to an alleged insufficient disclosure."
• "If a material fact is not or cannot be proven, a decision is taken on the basis of who bears the relevant burden of proof. The fact that the real position cannot be established is to the detriment of the party which bears the burden of proof for this fact, among other things because the other party is given the benefit of the doubt. In principle, each party bears the burden of proof for the facts it alleges (T 63/06, Reasons 3.1 and 3.2)."
• "the initial burden on the opponent to provide facts, arguments and evidence for an assertion of an insufficient disclosure (in the following: "burden of proof on the substance") may shift to the patent proprietor once the opponent has successfully discharged its burden of proof by submitting sufficient facts, arguments and evidence to rebut the presumption of sufficiency resulting from the information contained in the patent specification (T 338/10, Reasons 12; T 2218/16, Reasons 32.2)."
• "Linked to the burden of proof is the "burden to substantiate a case" (Rule 76(2)(c) EPC in opposition proceedings; Rule 99(2) EPC and Article 12(3) RPBA in appeal proceedings). Thus, the opponent first has to provide facts and argue why these facts support the assertion that a skilled reader of the patent using their common general knowledge would be unable to carry out the invention (T 182/89, Reasons 2). This burden to substantiate facts and arguments is then followed by the burden to prove these facts, which is normally done by submitting evidence."
• Note that even though evidence needs to be indicated only in a notice of opposition, the picture of substantiation followed by evidence appears to relate more to a conceptual framework than to the real chronology of events in typical opposition proceedings. Usually evidence is submitted with the notice of opposition.
  
• "when distinguishing the "burden to substantiate a case" from the "burden of proof on the substance" it can be clearly deduced from the case law that after a decision by the opposition division allowing an objection of insufficiency, it is down to the patent proprietor to substantiate on appeal why that decision is wrong. "
• "Under Article 12(3) RPBA, the statement of grounds of appeal has to set out clearly and concisely the reasons for setting aside the decision under appeal. The appellant (in this case the patent proprietor) therefore bears the burden to substantiate the appeal. Yet an appeal case need not necessarily be substantiated by submitting facts and evidence that counter the arguments and evidence presented by the opponent. It may also be substantiated by submitting why the opposition division's reasoning on insufficiency was flawed "
• "T 1911/17, Reasons 24, sets out that the burden to substantiate the appeal must be distinguished from the burden of proof on the substance. The fact that the decision under appeal may be wrong for reasons other than a misjudgement on the substance can be deduced from e.g. decision T 942/18 (Reasons 2.2 to 3.6), T 55/18 (Reasons 1.2 and 2.2) or T 1596/16 (Reasons 2.3)."
• "An appeal against a revocation of a patent for insufficient disclosure need not be based on the submissions of counter-evidence by the patent proprietor, as can also be seen in cases where the opposition division's decision was set aside. In many cases the board based its decision not on new evidence but on other arguments why the impugned decision was erroneous."
• "The respondent [opponent] therefore did not provide the evidence required for substantiating serious doubts; it did not discharge its burden of proof on the substance " - in the first instance proceedings, I understand.
• The opponent filed a declaration after the summons in appeal.  "The joint expert declaration of Annex 1 contains images from scientific documents which are not part of the proceedings, along with in-house experiments."
• The Board does not admit it. There are no exceptional circumstances. "a board agreeing with the other party's arguments does not amount to exceptional circumstances; this may happen and has to be expected in any inter partes proceedings. Therefore, this evidence should have been filed in the opposition proceedings or at the latest with the reply to the appeal".

EPO 

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

T 2440/16 - The Board hears witnesses

Key points

• Board 3.3.06 hears witnesses concerning the alleged public prior use.
The Board, in machine translation: "The opposition was based, among other things, on the obvious previous use of a machine of the type Oasys OCL 600/3 for the production of laminated plastic cards with the serial number 42010 (previous use "Hythe Offset"). This objection was based, inter alia, on video D1.6 showing this machine in operation but recorded after the priority date and the associated affidavits of Mr. Bridger (D1.1) and Mr. Lane (D2.1)." The OD consisted of four members.
• "Although the opposition division admitted numerous late-filed documents in connection with the prior use "Hythe Offset" into the proceedings, it did not consider the prior use of the machine in the mode shown in video D1.6 before the priority date to have been proven."
• "With its statement of grounds of appeal, the appellant submitted a further statement by Mr Bridger (D32) and a written comment (D33) on video D1.6 and submitted, among other things, that the public prior use "Hythe Offset" shown in D1.6 had been proven."
• "[The appellant/opponent] requested, in the alternative, that Adrian Lane, Richard Bridger, Elliot Lamb, Steven Walker and Colin Stokes be heard as witnesses should the Board consider dismissing the appeal "
• The Board decided to hear the five witnesses (!). Notably, as the OD consisted of four members, the Board consisted of five members.
• The hearing took place on 27-28 April. The witnesses were heard on 27 April, from 09:45 to 11:55, giving 70 pages of transcript. After a break until 13:20, the evidence was discussed with the parties. The Board deliberated from 14:45 to 15:20 and concluded that the alleged public prior use was proven. Novelty was then discussed. The Board concluded that the main request was not novel; the patentee subsequently withdrew the main request and some auxiliary requests. 
• There were no objections to the remaining auxiliary request, and the Board's decision contains no substantive reasoning. (minutes)
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EPO 

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

T 3088/19 - Should have used the 45 min break

Key points

•  The Board finds that the proprietor should have filed the auxiliary request during the oral proceedings before the OD after the OD departed from the preliminary opinion.
• " Having requested a 45 minute interruption in oral proceedings, this having been granted and thereupon having filed replacement auxiliary requests, it seems that the proprietor had sufficient opportunity to fully consider its requests in reaction to the change of opinion of the opposition division. The Board thus sees this to have been the time when auxiliary requests 2 to 6, first filed on appeal, could and should have been filed. In this context, it should also be noted that parties must be prepared for the possibility that the Opposition Division may deviate from its preliminary opinion during the oral proceedings."
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EPO 

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

T 2386/19 - The right to have an offered witness heard

Key points

• The invention is of a simplicity which makes it suitable for Paper C. 
• "The administration of liquids from many bottles, such as medicine bottles, normally requires that an accurately prescribed amount is measured. When a syringe is inserted through the bottle neck into the bottle to withdraw liquid, it is often difficult to see the graduations on the syringe body, especially when a bottle having a coloured glass is used. This may prevent a user from withdrawing an accurate amount of liquid from the bottle into the syringe in a single operation. Moreover, dipping the syringe into the liquid of the bottle coats the outside of the syringe body with medicine. This increases the risk of contamination of the liquid in the bottle by microorganisms from the syringe and the risk of spillages when withdrawing the syringe." 
• "The contested patent addresses these issues with a liquid dispensing apparatus as defined in claim 1 which comprises a bottle, a bottle neck liner and a flat-nosed syringe. An example thereof is shown in Figures 5 and 6 of the contested patent reproduced below.
• Link to the drawings of the patent: https://worldwide.espacenet.com/patent/drawing?channel=espacenet_channel-73d92b7d-1107-471a-978a-446cd6dabcd9
• You have to hold the bottle upside down, or at least tilted, to take the controlled amount of liquid out of it.
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• The opposition is based on an alleged public prior use.
• "At the first-instance oral proceedings, the opposition division of its own motion cast doubts for the first time on whether or not feature M6 was disclosed by the prior use. The [opponent] reacted to that by requesting to hear a witness to corroborate an alleged fact, namely that a "PP28 bottle neck [i.e. as used in the prior use]  [had] a diameter of 19.4mm"  []. This alleged fact was relevant to establish which sealing was achieved in the prior use between the bottle neck liner and the PP28 bottle neck and thus to assess if the prior use anticipated feature M6."
• M6: "A  bottle neck (24) [] which is located the bottle neck liner (2) [and] having a cylindrical body (8) sealingly engaged inside the bottle neck (24) such that liquid cannot flow between the bottle neck liner (2) and the bottle neck (24),"
•  "The opposition division did not grant the request for the hearing of a witness even though it had been made at the first available opportunity and the opposition division considered the outcome of the hearing to be relevant to the outcome of the case"
• Note, I think that the opponent also had indicated who the witness would be and why the witness would be able to give testimony on the contested fact.  
• "Hence, the refusal to hear the witness violated the appellant/opponent's right to be heard under Article 113(1) EPC and might have affected the outcome of the appealed decision. It follows that reimbursement of the appeal fee is equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC). "
• The Board also concluded that the interpretation of the OD of feature M6 was too narrow and had concluded that feature M6 was disclosed by the prior use and that claim 1 as granted was not new over the prior use. 
• The patent is revoked. 

EPO 

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

T 1488/22 - Purpose-bound auxiliary request ?

Key points

• The claim is directed to a closure for a container comprising a tab and a popping score line. 
• "The patent proprietor contested the finding of the opposition division that the alleged public prior use according to the convolute of documents E3 (E3 together with E3.0, E3.1, E3.2 and E3.3) had not [?] been sufficiently proven and asserted that it had been assessed using the wrong standard of proof. E3 therefore should not be considered as prior art according to Article 54(2) EPC."
• "The patent proprietor acknowledged that twenty-two sweetcorn cans were publicly purchased in Oxfordshire on 31 July 2013, and that the reimbursement of that purchase was claimed by Mr Hall on 3 September 2023 under the project number Z1879 "
• The Board: "It is to be noted that the alleged public prior use does not concern the inter-office memorandum E3, but instead the closures that were allegedly purchased before the priority date at a supermarket as being part of sweet corn cans. The relevant fact to be assessed is whether the cans purchased were the ones on which the inter-office memorandum E3 is based."
• E3 is used as evidence that certain tested cans had all features of claim 1.
• "the board is not convinced that the opposition division failed to take into account material considerations, or that it included erroneous considerations or made errors of logic or contradictions in its reasoning, so that the fact-finding process followed by the opposition division did not contain any errors. In addition, the board is also satisfied with the opposition division's establishment of fact made in point 14.7 of the reasons for the decision under appeal that the cans purchased on 31 July 2013 (project number Z2189) were the ones referred to in memorandum E3"
• Note, the Board is not establishing facts themselves but is reviewing the findings of the OD about the facts and evidence for errors.
• "The board thus concludes that the subject-matter of claim 1 as granted is anticipated by the public prior use E3."
• The Board turns to the auxiliary requests: "all these requests [except auxiliary request V] were either filed for the first time in appeal proceedings or were no longer maintained in opposition proceedings."
• " The patent proprietor indicated that some of these requests were filed as a precautionary measure only, in the event that the board would decide that the objections of insufficiency of disclosure, added subject-matter and/or lack of novelty in view of E1 prejudiced the maintenance of the patent as granted. Since the opposition division expressed its preliminary opinion that none of these grounds would prejudice the maintenance of the patent as granted, there was no need to file those auxiliary requests directed to those objections during opposition proceedings. "
• "The board does not find the above arguments as amounting to justifying circumstances for the admittance of these requests into the appeal proceedings. Indeed, the objections on insufficiency, added subject-matter and lack of novelty in view of E1 were known to the patent proprietor from the outset of opposition proceedings. The board is therefore convinced that the patent proprietor would have been in a position to submit [...] the corresponding requests in oral proceedings, especially in the event that the opposition division's preliminary opinion changed during the oral proceedings in those matters."
• The OD found that claim 1 as granted is not novel over E1; AR-1 was not admitted, AR-2 was not novel over E3, AR-3 was unclear, and neither the OD nor the opponent had no objections to AR-4.
• Hence, even if those requests had been filed in the first instance proceedings, it would not have given the Board any additional reasoning of the OD on added subject-matter and insufficiency to review: the OD found those requirements to be met by the claims as granted. Hence, holding those requests inadmissible does not serve any interest of the Board to confine appeals to a review of first-instance decisions.
• On the other hand, if those auxiliary requests, even if legitimately addressing Art. 123(2), would require a completely new debate about novelty, it is not difficult to see why the Board does not wish to admit them. 
• The opponent's appeal against the patent as amended is also rejected, though not as inadmissible. This is remarkable because the opponent said it had no objections during the first instance proceedings against the auxiliary request at issue. However, the Board decided that the objections against the patent as granted clearly also applied to the patent as maintained by the OD. Therefore, these attacks are also admitted by the Board "exercising its discretion under Article 12(6) RPBA 2020".
• As a comment, Art. 12(6) RPBA is not exactly worded as giving the Board broad discretion.
• Possibly, the opponent's remark during the oral proceedings before the OD that it had no objections against the request can be understood as "no objections in addition to those already rejected by the OD for the patent as granted". 
• Alternatively, it may be concluded that the opponent had no obligation to expressly maintain the objections, as they were considered and rejected by the OD, so that it can be concluded that there is no "should have been filed" case in the sense of Art. 12(6) RPBA.
• "the opponent further argued that the content of the minutes of the oral proceedings before the opposition division was inaccurate since it states that "[t]he opponent does not present any objections to the claims of auxiliary request 4". Indeed, after the opposition division announced during the oral proceedings that none of the objections above prejudiced the maintenance of the patent as granted, these objections were obviously not discussed once more when dealing with the auxiliary requests, but were not withdrawn or abandoned. The minutes should have obviously reflected that the opponent did not have any further objections to the request." However, the opponent did not request correction of the minutes, so they must be considered correct.
• The opponent's objections are considered but are rejected.
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• 
  
• EPO 

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

T 1800/20 - Not admissibly raised in the meaning of Art. 12(4)(s.1) RPBA

Key points

• The Board decides on the admissibility of an auxiliary request that was filed before the OD but that the OD did not reach in their decision because the OD found a higher-ranking request allowable.
• The Board examines whether the request as admissible raised before the OD, under Art. 12(4) and concludes that this is not the case because the request was not convergent with the higher-ranking request. The Board refers to the framework of T1903/13.
• T1903/13 is Art.12(4) RPBA 2020 avant la lettre.   See T 0494/18, r.3.7.5 for a different approach under Art. 12(4) RPBA 2007.
• However, the framework specified in T1903/13 concerns what is now Art. 12(4) fifth sentence, not Art. 12(4), first sentence, unless clause. The rules applied by the  Boards for admissibility (i.e. the factors of the fifth sentence) are not necessarily the same as the rules to be applied by the OD, respectively governing the term 'admissibly raised' in the first sentence of Art. 12(4).
•  Therefore, the request does not benefit from the unless clause of Art. 12(4) RPBA
• The Board, in translation: "3.7 Since auxiliary request 2' was not submitted in an admissible manner in the first instance opposition proceedings, its submission in the appeal proceedings represents a change in the patent proprietor's appeal submissions, the admission of which is at the discretion of the board. The board exercises this discretion to not admit auxiliary request 2' into the proceedings because its treatment would be incompatible with the requirement of procedural economy due to a lack of convergence (cf. T 1456/20, point 4.5 of the reasons for the decision)."
• Note the sanction of not falling under the unless-clause of the first sentence is that the second sentence of Art. 12(4)  applies. Art. 12(4) fifth sentence provides that "The Board shall exercise its discretion [i.e. of the second sentence] in view of, inter alia, (i) the complexity of the amendment, (ii) the suitability of the amendment to address the issues which led to the decision under appeal, (iii) and the need for procedural economy." (Roman numerals added)
• Note that the Board in the present case does not explicitly consider all three factors indicated in the RPBA. T 1456/20 r.4.5 held that the criterion of convergence is an expression of the principle of procedural economy of Art. 12 and 13, when deciding on admissibility under Art. 13(2). However, this does not mean that it is an overriding factor.
• Note that a submission being inadmissible raised in the first instance procedure in the sense of Art.12(4)(s.1)  on the ground that it was raised and maintained in the first instance proceedings does not imply that Art.12(6), first or second sentence, applies, not even by analogy, neither that the discretion under Art.12(4)(s.2) is to be applied stricter, nor that it is an additional factor under Art. 12(4)(s.5). Such a rule can not be inferred from the RPBA 2020, nor would it be justified. The late filing of a request during the first instance proceedings that the OD did not reach is not detrimental to procedural efficiency compared to filing it with the initial appeal submissions.
• Furthermore, convergence under Art.12(4)(s.5) should be examined with respect to the requests filed with the initial appeal submissions. Convergence under Art. 12(4)(s.1) with respect to the requests pending at some time during the first instance procedure. 
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• EPO 

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

T 1752/19 - Second medical use and Art.83

Key points

•  The decision was taken 30.06.2022 and issued in writing on 05.10.2023, i.e. more than one year later (!). No communication under Art. 15(9) informing the applicant of the delay is visible in the online file.
• The decision seems to be fully in line with G 2/21, which was given in March 2023, without citing that decision.
• "The applicant argued, referring to decision T 1842/06, that the applicant bears the burden to show that the claimed invention is reproducible only in cases where the invention relates, for example, to a technical effect that is a priori contrary to the laws of physics."
• "The board is not convinced by this argument because, as stated in point 2., it is established case law that the suitability of the product for the claimed therapeutic application must be derivable from the application unless already known to the skilled person. The board notes that the decision referred to by the appellant does not deal with a claim for a medical use and its content is, therefore, not relevant for the case in hand."
• "It is undisputed that the application does not include experimental results showing that a progesterone antagonist as defined in claim 1 was suitable for preventing cancer. Rather, to demonstrate the mechanism underlying the claimed therapeutic application, namely that abnormal autocrine hCG production causes carcinogenesis, the appellant relied on a theoretical explanation. The board concurs with the appellant that, in principle, the suitability of a composition for a claimed therapeutic application may be derivable from the application or common general knowledge even in the absence of experimental results."
• After a detailed analysis: "In conclusion, the application presents a theory which has not been validated by any experimental evidence. The appellant refers to prior art documents and to a theoretical concept consisting of steps A to E to show that the only logical conclusion is that hCG production is the cause of cancer. However, in the board's view document D5 shows that alternative theoretical conclusions are possible. In fact, the application acknowledges that the author of document D5 came to a different conclusion despite having investigated the functions of hCG in cancer and embryogenesis (see application, page 7, third paragraph). Document D39 does not support the idea that cell proliferation can be inhibited in all cancers by antagonising hCG, as claimed. In light of the above, the board concludes that prevention of carcinogenesis by inhibiting hCG production is not disclosed in a manner sufficiently clear and complete (Article 83 EPC)."

• EPO 

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