T 0910/21 - New purpose of treating same disease

Key points

•  Claim 1 is a second medical use claim directed to "a composition for use in improving executive function of a subject in need thereof, ... wherein said subject suffers from a memory or cognitive disorder, memory decline or cognitive dysfunction, such as Age Associated Memory Impairment (AAMI), Alzheimer's Disease, multiple sclerosis, vascular dementia, frontotemporal dementia, semantic dementia or dementia with Lewy bodies, and/or psychiatric and developmental disorders, including obsessive-compulsive disorder, Tourette's syndrome, depression, schizophrenia , attention-deficit/hyperactivity disorder, and autism (asperger)."
• The Board seems to refer to  refers to "executive function" by the abbreviation EXEC.
• The Board "[prior art] documents D6 and D28 describe the beneficial effect of a formulation with the same components as defined in claim 1 as granted on activities which are influenced by EXEC, in particular the [instrumental activities of daily living]IADL, but do thereby not explicitly disclose the beneficial effect on EXEC itself as defined in claim 1 as granted."
• "Documents D6 and D28 describe compositions ...  for improving activities in which the operational and the executive brain functions play an important role, i.e. the instrumental and/or basic activities of daily living (IADL/BADL), and for supporting and enabling those complex activities where initiation, planning and effective operation performances play a role "
• "The benefit of treatment with respect to IADL as described in documents D6 and D28 does therefore not necessarily imply an improvement in EXEC, because the reported benefit may well have resulted from an improvement in MEM [memory]." 
• The decision does not explain what MEM is.   "MEM"  is memory.
• It is evident from document D22 that a decline in EXEC, and thus also the need for treatment intended to improve EXEC, can be specifically diagnosed in patients who develop dementia and that the change in EXEC over time, and thus also the response to treatment, can be specifically monitored. As confirmed in for instance document D3 (see page 555) the Trail Making Test B (TMT-B) described in the patent (see paragraphs [0033]-[0035] and [0105]) is commonly known as suitable for this purpose. The Board therefore considers that the purpose of improving EXEC defines a specific clinical situation which characterizes the therapeutic use as defined in claim 1 as granted."
• "in line with the considerations in T 836/01 (see section 10) the purpose of improving EXEC distinguishes the treatment defined in claim 1 as granted from the treatment of patients with AD as described in documents D6 and D28 even without the explicit definition of a new patient group."
• T 0836/01: "Turning to the present case, the conclusion cannot be drawn that the technical effect relied upon by the claimed invention, namely the direct influence of interferon-ß2 on the tumor cell growth and (terminal) differentiation is a mere explanation of how interferon-ß2 heals cancer. Rather, this effect identifies a new clinical situation, namely one in which it could be preferable to target the cancer cells themselves, not lymphoid cells or the immune system as in document (D1), in order to heal cancer. But since a new clinical frame is not separable, as an abstract concept, from a patient suffering under it, it must be concluded that this new clinical situation also identifies a new sub-group of subjects being treated.": 
• "the Board concludes that the patent as granted meets the requirement of novelty."
• The Board also considers the claim to be inventive. 
• "It was not in dispute that EXEC is compromised in patients with AD and that EXEC plays an important role in IADL. However, as pointed out in section 2.2 above, changes in MEM and EXEC are according to document D26 independently associated with the rate of change in IADL. Without any further specific indication from the prior art the improvement in IADL reported in document D28 does not provide a reasonable expectation of a beneficial effect on EXEC, because the improvement in IADL could well have resulted from an improvement in MEM.
• Moreover, the results reported in the patent (see Figure 2) indicate that the effect of administration of the defined composition on EXEC may only become clearly recognizable after twelve weeks from the start of the administration. The skilled person who further investigates the effects on IADL from the twelve week treatment as reported in document D28 may thus not recognize the improvement in EXEC as disclosed in the patent. On the contrary, when investigating the effect on IADL from twelve week administration of the composition as described in document D28 the skilled person would on the basis of the results from the administration of such a composition for the duration of twelve weeks as described in document D8, which concerned improved verbal recall scores (see D8, page 6, Figure 2 and page 7, Table 3; see also Abstract), likely conclude that the reported improvement in IADL was due to an improvement of MEM.
• The prior art did therefore not provide the skilled person with reasonable expectation that the defined composition would be useful for improving EXEC in the defined group of patients."
• Turning to sufficiency, and the list of diseases in claim 1: " The Board considers that the opponent's objection that the patent does not sufficiently disclose the suitability of the claimed composition for improving EXEC in other patients than those suffering from mild AD remained without substantiation."
• "The Board considers that the mere reference to the diverse nature of the disorders defined in claim 1 as granted does not further substantiate the opponent's objection. The claim is specifically directed to the improvement of EXEC, which may be compromised in patients afflicted by the defined disorders and for which the patent exemplarily demonstrates efficacy in patients with mild AD."

EPO 

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

T 0887/21 - Only in vitro so therapeutic indication not disclosed ?

Key points

• The decision was taken on 13.07.2023. The written decision was issued on 02.01.2024. The file shows no communication under Art. 15(9) RPBA to inform the parties about the delay, and the written decision itself does not acknowledge the delay either.  A communication about the delay was issued on 16.11.2023 (link)
• Claim 1 is a second medical use claim directed to a composition  "for use in the prevention of secondary infections following a viral infection characterised by neuraminidase activity"
• "An invention cannot be based solely on knowledge made available only after the effective date. In the case in hand, it could not have been derived from the application as filed that the envisaged compositions were supposed to inhibit Salmonellae, and this independently of any antiadherence mechanism. 
• "In the terms used in decision G 2/21 (OJ EPO 2023, A85), in these circumstances, the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would not have derived the technical effect examined in [post-filed experimental report] D15 and relied on by the respondent for inventive step as being encompassed by the technical teaching and embodied by the same originally disclosed invention. 
• "In this regard, it is not sufficient that a technical effect can be achieved by a composition which in terms of technical features corresponds to compositions in the application as filed. In order to be taken into account in the formulation of the objective technical problem, the alleged technical effect that is supposedly shown by the post-filed evidence (in the present case, the inhibition of Salmonellae outside the context of epithelial adherence) must also be encompassed by the technical teaching of the application as filed, i.e. the technical effect in question must in the first place be disclosed or be at least derivable from the technical teaching of the application documents (G 2/21, Reasons 72). As set out in paragraph 2.15.3 above, already this first requirement is not met in the case in hand."
• 2.15.3: "The respondent [proprietor] argued that the fact that the application as filed included a mechanistic concept at least provided justification for submitting additional evidence with D15. The relevant point here is, however, that the test described in D15 relates to inhibition of Salmonella typhimurium (known for causing gastroenteritis) in a culture medium, without the involvement of epithelial host cells. This is not corroborative evidence of the concept taught in the application as filed, but entirely new information both on the mechanism of action and the pathogenic organism involved."
• "Claim 1 of the main request differs from the disclosure in D16 by combining the sialylated oligosaccharide(s) with N-acetyl-lactosamine compounds and with a probiotic strain, and by requiring this combination to be provided in a synthetic nutritional composition. "
• "Furthermore, since D16 restricts itself to in vitro experiments, it does not disclose the therapeutic use of claim 1 [for use in the prevention of secondary infections following a viral infection], although such a use is expressly envisaged and is mentioned as the ultimate goal in D16 (see point 2.9 above)."
• As a comment, this is a remarkable statement (but note that the patent is in the end revoked for inventive step, such that the Board can also assume the feature as a distinguishing feature in favor of the proprietor). First of all, does 'disclosure' rely on the technical support if it is expressly mentioned (both for Art. 123(2) and for Art.54?)
• Secondly, assuming that the Board applied the sufficiency test under novelty, and assuming that this test is the same as the test for sufficiency of a second medical use claim under Art. 83, i.e. the test confirmed by G 2/21 r.74,  the landmark decision T 609/02 already held that "The boards of appeal have accepted that for a sufficient disclosure of a therapeutic application, it is not always necessary that results of applying the claimed composition in clinical trials, or at least to animals are reported. Yet, this does not mean that a simple verbal statement in a patent specification that compound X may be used to treat disease Y is enough to ensure sufficiency of disclosure in relation to a claim to a pharmaceutical. It is required that the patent provides some information in the form of, for example, experimental tests, to the avail that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se. Showing a pharmaceutical effect in vitro may be sufficient if for the skilled person this observed effect directly and unambiguously reflects such a therapeutic application".
• Turning to the objective technical problem: "The application as filed contains no experimental data. The mechanistic concept that the respondent relied on (see paragraph bridging pages 4 and 5 in the application as filed; see point 2.4 above) is mentioned in the context of the prevention of secondary infections following viral infections such as influenza (see paragraph bridging pages 3 and 4). It is merely asserted by way of a hypothesis and is not backed up by any corroborative data. Thus, the information provided in the application as filed does not amount to evidence of an "improvement" (see point 2.14 above) in comparison with the starting point in the prior art (i.e. D16)."
• "Thus, starting from the disclosure of D16, the technical problem to be solved is to provide a composition and route of administration (in other words, a specific product type or dosage form) for sialylated oligosaccharides for use in the prevention of secondary infection after a viral infection, in implementation of the teaching in D16. This encompasses the secondary problem of identifying further suitable components for such a composition."
• "The person skilled in the art seeking to solve the objective technical problem and the secondary problem defined in point 2.13 above would have arrived at the subject-matter of claim 1 without the exercise of inventive skill, for the following reasons."
• 
  

EPO 

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

T 1550/21 - Too short notice of oral proceedings

Key points

• "The board holds that the examining division committed a substantial procedural violation by summoning the appellant to oral proceedings with less than two months of notice, without the appellant's agreement, contrary to Rule 115(1) EPC. The reasons are as follows."
• " A new summons was issued, dated 14 January 2021 and setting 27 January 2021 as the date for the oral proceedings. Four further prior-art documents, labelled as D5 to D8, were attached to the summons; the arguments in the accompanying communication were largely based on document D5."
• "When precisely the new summons was in fact dispatched to the appellant cannot be established with certainty from the file, although it appears highly plausible, in view of the indication in the EPO Form 2008 (bottom right corner) dated 14 January 2021 "to EPO postal service: 22.12.2020" that the summons was dispatched electronically on 22 December 2020. Even if, for the sake of argument and hypothetically, it were assumed that the re-issued summons was dispatched immediately after the first summons was cancelled on 19 November 2020, this would still be less than 10 days (Rule 126(2) or 127(2) EPC) and two months (Rule 115(1) EPC) before 27 January 2021, the date of the re-scheduled oral proceedings."
• As a comment, I think we should stick to the date the document bears, even if the document is post-dated, in view of legal certainty. The EPO is completely free to put the actual date on the document, so there is no reason to accommodate a practice of post-dating.
• "In the present case, the examining division exceptionally pursued a "shorter period". The onus of establishing that the appellant indeed agreed to deviate from the normal minimum notice was no doubt on the examining division (cf. T 111/95, Reasons 3)."
• ""6. As agreed with the Applicants during the telephone conversation to postpone the previous oral proceedings the date of these oral proceedings has been fixed within two months instead of the normal four months. For the same reason any submissions made prior to the oral proceedings shall be filed at latest 14 day before the date of the oral proceedings". Unfortunately, however, no minutes of this telephone conversation are available in the public file of the present application. This means that the date of the conversation, thereby also the starting point of the two months' period mentioned, cannot be established. "
• As a comment, I doubt if the applicant agreed to summons within two months from the alleged phone call instead of two months from the date of the summons.
•  I also doubt that this purported consent of the applicant extended to citing four new prior art documents in the summons. 
• " Nevertheless, in the overall assessment, the board finds a broken, non-chronological and inconsistent chain of events recorded in the public file which is unfit to establish that, at the time of the summoning to the oral proceedings to be held on 27 January 2021, there was a pending agreement with the appellant to a "shorter period" of notice than the regular minimum of two months. Those events can also not demonstrate retroactively the occurrence of such an agreement. In other words, the examining division has not fulfilled their onus as required for applying the exception provided in Rule 115(1) EPC. Lastly, it is noted that the decision under appeal does not at all address the procedurally highly important question of compliance with the provision of Rule 115(1) EPC."
• The impugend decision is set aside, the case remitted, and the appeal fee reimbursed. 

EPO 

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

T 2235/21 - Visible in D5 but inventive

Key points

• D5 is a patent document with in Figure 1 a turbine wheel. 
• "D5 is a patent document and the representation of the turbine wheel in figure 1 is indeed of a schematic nature with the purpose to illustrate the general construction of the water turbine and the general spatial and functional relationships of its component parts. In the present case, the opposition division has assessed that the ratio of length may be below 17%, but [that D5] has not associated these relative dimensions with a technical effect so that no technical teaching could be derived therefrom. Established case law relied upon in the decision and also quoted by the respondent indeed requires that for features shown solely in the drawings, in the absence of any other description the skilled person should be able to derive a technical teaching from them (see CLBA, I.C.4.6, 10th edition, 2022, see also decision T 1200/05 where the presence of a technical feature was derived solely from the drawings)."
• "The appellant relies on the fact that the skilled person would have been able to reproduce the turbine wheel depicted in figure 1 of D5. However lacking any indication why the band has certain height, and one of the varying diameters of the band has a certain length, the appellant has not submitted reasons why the skilled person would have recognised any significance in providing the relationship between these dimensions being below 17% rather than above. Without any indication, the skilled person reproducing the turbine shown would have reproduced the essential feature explained in lines 3 to 8 of page 2 to set the discharging portion in front of a vertical plane. Whether the skilled person would in addition have attempted and managed to reproduce the complex shape of the bucket at its interface within the band does not appear to meet the strict requirement of direct and unambiguous recognition of a technical teaching in relation to the length of the band to the diameter. Thus, the Board tends to agree with the decision's findings that D5 on the sole basis of figure 1 does not show a direct and unambiguous disclosure." 
• The patent as granted is considered to be novel and inventive.  No inventive step attack from D5 is discussed in the decision. 
•  

EPO 

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

T 2382/19 - Direct revocation

Key points

•  The proprietor requested no oral proceedings in the reply to the opposition and filed no auxiliary requests.
• The OD revoked the patent about 7 months later without any preceding Communication and without holding oral proceedings.
• The Board sees no mistake in this course of action. The OD simply followed the opponent's arguments in the decision and did not introduce new lines of argumentation.
• The Board, in translation: "The board cannot see that the opposition division based its decision on reasons on which the appellant would not have had the opportunity to comment. The opposition division followed the arguments put forward by the opponent for interpretation; The patent owner was able to comment on this. Whether the view expressed by the opposition division (and the opponent) was correct is not a question of the right to be heard."
• Neither is there a violation of legitimate expectations.
• The Board considers the claims to be novel, sets aside the decision, and remits the case to the OD for further prosecution. 
• The proprietor filed four auxiliary requests about 2 weeks after the Board's decision, this time also requesting oral proceedings. 

EPO 

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

T 0116/18 - After G 2/21 - Original examples and narrower claims

Key points

• This decision is old (July 2023). I will still provide my summary and analysis. 
• Claim 1 is directed to a composition of comprising thiamethoxam and a compound according to a Markush formula. Inventive step is the issue to be decided. The individual compounds were known as insecticides at the priority date. The patent asserts that a synergy was found. The Board referred questions to the Enlarged Board in G2/21, and the Enlarged Board gave an answer. 
• The Board: " the focus on the application as filed and the filing date (G 2/21, point 93 of the Reasons) is intended to prevent the filing of applications directed purely to speculative (armchair) inventions made only after the filing date."
• " What matters is that when deciding whether a patent applicant or proprietor may rely on a purported technical effect for inventive step, it is the requirement(s) defined by the Enlarged Board in order no. 2 that has (have) to be applied, rather than simply using any rationale developed in the previous plausibility case law. "
• The Board analyses the holding of G2/21 semantically.
• " Requirements (i) and (ii) use the terms "technical teaching" and "invention". The EPC does not contain the concept of technical teaching, while a tautological definition of the term "invention" is considered to be formulated at Rule 42(1)(c) EPC, namely as a solution to a technical problem."
• " In the case law the term "invention" has been defined by the Enlarged Board only indirectly by adopting the reasoning in the "Rote Taube" decision by the German Federal Court of Justice (BGH 27.3.1069, X ZB 15/67: "Lehre zum planmäßigen Handeln unter Einsatz beherrschbarer Naturkräfte zur Erreichung eines kausal übersehbaren Erfolges"; translation given in G 1/19 (point 75 of the Reasons): "a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result"). According to G 2/07 and G 1/19, the "Rote Taube" decision stated that the term "invention" required (G 2/07, point 6.4.2.1 of the Reasons) or implied (G 1/19, point 75 of the decision) a technical teaching. In the present board's view, this definition of the term "invention" does not reveal any difference from the term "technical teaching" which would justify the assumption that the two terms have a different meaning."
• Note, the claim in the Red  Dove decision was a method of breeding a red dove (link). The point was whether (controllable) biological forces can "support" an invention, in addition to the traditionally used chemical, physical, and mechanical forces.
• In G 1/19, it was about software inventions. In G 2/07, the point was that methods of plant breeding can be inventions.
• "in the board's view G 2/21 seeks to prevent speculative inventions. In turn, the broader the application as filed, the more likely it is that the invention defined in it was speculative from the outset. Hence, in order to fulfil this purpose of G 2/21, the assessment as regards requirements (i) and (ii) of order no. 2 has to be made based on the broadest technical teaching of the application as filed contained in it with regard to the claimed subject-matter."
• Regarding requirement (ii): the question to be asked is: "would the skilled person, having the common general knowledge on the filing date in mind, and based on the application as filed, have legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter?"
• I don't think the Enlarged Board prescribed the threshold as "legitimate reason to doubt" in G 2/21.  
• "Requirement (ii) is met unless the above question is to be answered in the affirmative."
• The Enlarged Board did not formulate requirement II as an unless-clause in G 2/21.
• I understand requirement II to seek to prevent shift support, e.g., wherein embodiment B is claimed, but the examples for embodiment A are used as support for the technical effect in cases wherein the skilled person would consider the link between the two embodiments insufficient. 
• G2/21 "speak'[s] of "derivable"/"derive" but not of e.g. "directly and unambiguously derivable". 
• The Board then turns to the examples of the application as filed and common general knowledge.
• "test example 3-a demonstrates a synergistic effect against Chilo suppressalis for a compound of formula Ia in combination with clothianidin. As submitted by the respondent and not disputed by the appellant, clothianidin and thiamethoxam are structurally very similar. Therefore, the board agrees with the respondent's argument that the skilled person would have no legitimate reason to doubt that the synergistic effect against Chilo suppressalis would be maintained when replacing clothianidin with thiamethoxam in the insecticide combination in test example 3-a."
• This reasoning seems to align with the Enlarged Board's suggestion to focus on the technical facts and the technical field at issue (in r.95).
• The Board: "test examples 1 to 5 of the application as filed show a synergistic effect for eight different insecticide combinations, each against one of three insect species (Spodoptera litura, Chilo suppressalis and Plutella xylostella). The insecticide combinations in question each comprise one of three different insecticides of general formula II (clothianidin, thiamethoxam, dinotefuran) and one of six different insecticides of general formula I (compounds I-1 to I-6). Therefore, in the board's judgement, these test examples exhibit a reasonable degree of variation with respect to the insecticides and insect species, and it is not apparent to the board why the skilled person, based on the application as filed, should have legitimate reason to doubt that the combination of insecticides of formulas I and II do not act synergistically against at least those insect species which are the object of the test examples, i.e. also Chilo suppressalis. A fortiori this must also apply to subsets of formulas I and II, such as the insecticide combinations in claim 1 as granted, which are based on compounds of formula Ia and thiamethoxam."
• In other words, the limiting amendments made to the claims (possibly for novelty) do not diminish the technical teaching of the application as filed. 
• I think the Board could also have found this technical teaching to be credible based on the application as filed. 

EPO 

The link to the decision is provided after the jump.

T 2833/19 - Convergence at the time of the decision?

Key points

• The opponent requests that a request is not admitted, on the ground that the request allegedly was not convergent with the preceding ones.
• "This argument does not take account of the fact that the alleged lack of convergence does not exist now that the requests have been reordered. "
• Note, there is some case law stating that admissibility must be decided based on the circumstances when filing the request.

EPO 

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

An element of the history of the PSA

Key points

• The first mention of the problem-solution approach of the EPO is (likely) the article of D.L.T. Cadman in CIPA journal, April 1983, p.274-281 (p.279). The relevant paragraph is cited below. 
• Cadman was the first chair of the "Chemistry Board of Appeal" (when the EPO had two Boards of Appeal). He most likely was a Principal Examiner of the British Patent Office before (there's a WIPO document listing him as such in 1972, AB/III/Inf/3). 
• Comparing the PSA to the chapter on inventive step in the 1978 first edition of the Guidelines, it was quite an innovation. I'm not entirely sure what the tests for inventive step of the German and British courts were at the time, though. 
• Note that the PSA then was slightly different, namely whether the effect was surprising. Nowadays, the question is more whether the feature was an obvious solution to the problem (or task) of obtaining the effect.

Courtesy CIPA - https://www.cipa.org.uk/

T 110/20 - Examples of amendments under G 1/93

Key points

•  " Occasionally, however, an undisclosed feature was found to be allowable under Article 123(2) EPC on the basis of point 2 of the order of G 1/93 (see for example T 1779/09, T 1595/11, T 824/08 and T 535/08)."
• "T 768/20, Reasons 2.2.1, states that point 2 of G 1/93 seems to address undisclosed disclaimers, which were examined in greater detail by later decision G 1/03. The present Board further notes that the allowability criteria according to point 2 of the order of G 1/93 are different from those laid down for undisclosed disclaimers in G 1/03. Accordingly, an undisclosed disclaimer can comply with the criteria according to point 2 of G 1/93 without complying with the (stricter) criteria set out in G 1/03. In the Board's view this can only mean that, to the extent that point 2 of G 1/93 concerns undisclosed disclaimers, it must be considered to have been superseded by the Enlarged Board's later decisions G 1/03 and G 1/16 "
• "to the extent that point 2 of G 1/93 addresses amendments other than undisclosed disclaimers, this would establish a second exception to the gold standard as set out in G 2/10 and G 2/16, i.e. an exception in addition to the one concerning undisclosed disclaimers under G 1/03. Also in this regard, the Board refers to T 768/20, Reasons 2.2.1, in which it was stated that the case law of the Enlarged Board of Appeal does not seem to provide for any further exception to the gold standard."
• The amendment is held unallowable. 

EPO 

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

T 1272/21 - Redactions in the file

Key points

•  "A letter by the Appellants dated 7 August 2023 was received on that day. The final paragraph read:

  We would be grateful if this letter would be excluded from public file inspection. Alternatively, if that is not possible, then we request that the references in this letter to European application ... be redacted."" 

• The Board decides to refuse the request, with a decision of 21.12.2023.

• As of now (22.12.2023), the letter is visible in the file, but with the application number at issue redacted, and the request for exclusion is also omitted (by white space). See here., and the image below:

• 

• Partial redaction of documents in the online file is hence possible.

EPO 

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

T 0664/20 - Pre-emptive attacks?

Key points

•  T 0919/17 held that under the RPBA 2007:  “It is correct that the appellant [opponent] did not file any objections against the auxiliary requests together with its grounds of appeal. However, it was under no obligation to do so. Since the opposition had been rejected, the appellant correctly argued in its grounds of appeal as to why the decision of the opposition division to reject the opposition was wrong. At that point in time the appellant could not have foreseen which lines of defence the patent proprietor would adopt during the appeal proceedings and there was no reason to assume that it would file the same auxiliary requests as during opposition proceedings.” 
• See also T 2843/19 about the rejoinder under the RPBA 2020 ("The filing a rejoinder is appropriate for an appellant’s response to attacks or auxiliary requests that are not already the subject of the contested decision but are submitted by the respondent in the [appeal reply brief]."). Note that carry-over requests are indeed introduced in appeal, see the unless clause of Article 12(4) RPBA.
• The present board, in translation: "the statement of grounds of an opponent as appellant must include all grounds covering all requests pending before the opposition division, including those which were not considered in the contested decision. Failing this, the appellant risks having the grounds filed after the statement of grounds and relating to auxiliary requests pending before the opposition division and filed in response to the appeal brief by the patent owner being held inadmissible. ".
• The Board's reasoning,  "3. According to Article 12(3) RPBA, the statement setting out the grounds for the appeal must contain all the grounds relied on by an applicant (opponent) in the appeal.

  Auxiliary requests 3 to 15 had already been filed on September 12, 2019 before the opposition division. Applicant II therefore had to expect that the patent owner (applicant I) would re-file auxiliary requests 3 to 15 in the appeal proceedings. Consequently, applicant II should have addressed these requests in his statement explaining the grounds of appeal and provided the document at the latest at this stage (24). Therefore, the board does not admit document (24) into the appeal proceedings (Articles 13(1) and 12(3) RPBA)."

• Note, Article 12(3) states that "accordingly, they shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld". As the auxiliary requests were not considered in the decision under appeal, I do not see how Article 12(3) would require parties to comment on matters from the first instance procedure that did not make it into the decision. Article 12 RPBA is the first stage of the convergent approach. T 0664/20 goes in the opposite direction by requiring pre-emptive comments on requests that are not even in the appeal. 

• See also T 0248/22 indicating that the Statement of grounds of the proprietor should not  include pre-emptive auxiliary requests.

•  

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

T 0953/22 - Correcting a drawing leads to an inescapable trap

Key points

• During the grant procedure, the applicant filed a replacement Figure 4 with the reply under Rule 161(1) to correct a mistake in it (link), in particular to show that the "length" was based on an overlay weld that extends on both sides of a girth weld, not on only one side.
• The opponent argues that "Figure 4 of the patent as granted was not clearly and unambiguously disclosed in the application as filed. Figure 4 of the application as filed disclosed what the length was [the length is specified in the claim to be within a certain range]. Changing this length in Figure 4 of the patent as granted resulted in added subject-matter under Article 100(c) EPC. There was no basis in the application as filed for changing the measurement of L2 to what was shown in Figure 4 of the patent as granted. In view of this figure, the skilled person would take a different interpretation from that of the application as filed."
• The Board agrees.
• The request for correction of the application as filed under Rule 139(3) is refused.
• Auxiliary request 1 is an amendment of the figure (I suppose back to the original figure).
• The Board: "In decision T 142/05, point 4 of the Reasons, the board held that amendments to the description and drawings could modify the content of the claims and possibly extend the scope of protection under Article 69(1) EPC 1973, even where the wording of the claims was clear and remained unamended."
• "the description and drawings are also taken into account for the purposes of Article 123(3) EPC if the claims are clear and unambiguous, so they are not only consulted to fill gaps."
• "In view of its amended Figure 4, the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request has been extended compared to the protection conferred by the patent as granted, as can be seen from the above considerations on an arrangement with a total length of the overlay welds of 160 mm."
• " In the case in hand, neither feature 1C nor the other features of claim 1 as granted define how the length of the overlay welds is to be understood. It is only by using the description and the drawings, in particular Figure 4 as granted, or, in the case of the 1**(st) auxiliary request, Figure 4 as amended, that the extent of protection for the purposes of Article 123(3) EPC can be determined. Figure 4 as granted or amended is thus not used to read limiting features into claim 1 that are not present in this claim but to determine the extent of the protection conferred by the patent as granted or by the patent as amended, respectively."
• "the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request extends beyond that of the patent as granted. "
• The patent is revoked. 
• As a comment, a concern of applicants could be that any amendment of the description, how minor it could seem when making the amendment, may lead to a similar situation. On the other hand, the amendment did not concern a formality but the technical meaning of the drawing.

EPO 

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