T 0924/22 - Admissibly raised before the OD

Key points

• The Board decides on the admissibility of carry-over requests.
• "Admission of auxiliary requests 1 to 7. The requests were filed early on in the opposition proceedings, with letters of 21 October 2019, 3 September 2020 and 5 August 2021 respectively, before the Rule 116(1) EPC deadline of 6 August 2021 mentioned in the summons of 25 November 2020."
• " Even if they did not converge, that criterion applies only if requests are late filed, after the Rule 116(2) deadline, see Examination Guidelines 2024, H-III, 3.3.2.2. As they were further substantiated to the required level in opposition, they are seen to have been admissibly raised in opposition. Though they were not examined there is no indication that these requests were not maintained."
• " Finally, though their substantiation in appeal is very succinct, the Board considers it sufficient to allow all to understand the case the respondent proprietor is making for them. The Board therefore decided to admit these requests into the appeal proceedings in the exercise of its discretion under Art 12(4) and 12(5) RPBA."
• As a comment, the requests were carry-over requests, that were admissibly raised before the OD (so the Board judges). Hence, there was no discretion under Art. 12(4), and they were substantiated, so there was no ground for holding them inadmisisble under Art. 12(5) RPBA.
• For a different approach (no consideration of the GL to determine the meaning of "admisisbly raised" in Art. 12(4) RPBA), see T 0246/22

EPO 

You can find the link to the decision and an extract of it after the jump.

T2030/20 - Using the description to interpret the claims

Key points

• The Board, in machine translation: "According to established case law, the terms used in a patent are to be given the meaning customary in the relevant prior art, unless a special meaning is given to them in the description of the patent (see Case Law of the Boards of Appeal, 10th edition 2022, Chapter II.A.6.3.3; see also T 1473/19, point 3.13 of the Reasons). If the latter is the case, this may also lead to a claim feature being given a broader meaning in the light of the description than the meaning customary in the relevant prior art. This is the case in the present case."
• the patent gives the term "immersion tube [Tauchrohr] " in the description a broader meaning that goes beyond the actual meaning of the word, according to which a dip tube can only protrude into the reaction chamber, i.e. can end anywhere within the reaction chamber above the liquid level. This is particularly clear from the following passages"
• "Therefore, according to the disclosure in paragraphs [0045], [0060], [0075] and [0086], the patent leaves no doubt that a dip tube [Tauchrohr] according to claim 1 can preferably be dipped into the culture broth, but also represents a dip tube within the meaning of the patent if the tube only protrudes into the reaction chamber."
• There is therefore no reason to deviate from the view of the opposition division that the subject-matter of claim 1 as granted is not novel over the disclosure in E1.
• An auxiliary request additionally specifies a diameter.
• "In the board's view, the phrase "a diameter" must be understood in the overall context of the claim and the patent specification (T 367/20, Reasons 1.3.2) as a measure of the extension of the head plate, i.e. as a measure of its overall diameter."
• There is also a separate attack based on public prior use.
• " The UniVessel single-use bioreactor described in Annexes 2 to 6 is, according to point 3.1 of the grounds of the contested decision, a single-use bioreactor in which [features] "
• "it is disputed whether the term "integral" in claim 1 can be interpreted broadly to include adhesive joints."
• "The head plate of the UniVessel bioreactor therefore does not meet the requirement of a one-piece design according to claim 1 in the usual technical sense. This understanding of the term "integral" is supported by the description of the patent."
• "The Board therefore concludes that the claimed subject-matter according to auxiliary request 4 is not obvious on the basis of the cited prior art. The appeal is therefore successful within the scope of auxiliary request 4."

EPO 

You can find the link to the decision and an extract of it after the jump.

T1247/21 - The possible feature in the CPA is inventive

Key points

• The case is mostly about novelty and inventive step over a public prior use. The invention concerns a thermoforming packaging machine. The feature at issue is "a measuring unit (51, 42, 45) is provided which is configured to detect a contact between the upper tool part (7) and the lower tool part (3)".  (all quotes are machine translations).
• The opposition division [held that] knowledge of the source code [of the public prior use apparatus] was necessary in particular in order to recognize whether contact between an upper part of a tool and a lower part of a tool was being measured. Accordingly, feature K2 was not known from the public prior use.
• " The source code was not accessible to the customer Wolf (or other third parties) for factual and legal reasons. This was not disputed by the parties involved. "
• I take this to mean that the feature is actually present in the source code, but that the source code was not accessible to the customer. 
• The Board: "an alleged disclosure can only be considered implicit if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature was part of the disclosed subject matter (cf. RdB, ibid, IC4.3). It therefore depends on whether the skilled person, in view of the information available to him on the public prior use, specifically recognises the real possibility of configuring the measuring unit to detect contact between the upper and lower parts of the tool, and not whether such contact is hypothetically conceivable."
• The Board concludes after consideration of the facts of the case that the feature was not implicitly disclosed because a "reference run" would have been necessary, and alternatives were conceivable. 
• As a result, the Board is convinced that the skilled person cannot directly and unambiguously derive feature K2 from the public prior use "Power PAK RT 520".
• Regarding inventive step, "the parties unanimously formulated the technical task associated with the distinguishing feature K2 as improving or facilitating the adjustment of a known foil punch, for example, when changing tools. 
• Note, if the feature was actually present in the public prior use device, then there is no actual technical improvement over that device. 
• "The appellant [opponent] merely argued that the expert would like to prevent the control of a known foil punch from going beyond the contact point. However, this consideration alone does not provide any reason or indication for providing feature K2. In fact, there is no obvious reason for this in the prior art in the proceedings. "
• The feature is held to provide for an inventive step.

You can find the link to the decision and an extract of it after the jump.

T 0655/21 - The EU as opponent in an unusual case

Key points

• The opponent is "The European Union, represented by the European Commission". The opponent is the sole appellant. The patent is directed to "A satellite (105) for satellite communication"
• "Reasons 20 to 22.3.2 of the appealed decision dealt with the issue of novelty as to the subject-matter of granted claim 1 in view of no fewer than seven different prior-art documents. "
• "The statement of grounds of appeal only addressed the matter of novelty in a substantiated manner. It did so in view of a single document (i.e. prior-art document D26). This document was not among the prior-art documents which the appealed decision dealt with. In fact, it was not even admitted into the proceedings [i.e. held inadmissible] by the opposition division. This means that the scope of the appeal lodged by the appellant was uncommonly restricted."
• The statement of grounds was submitted by a patent attorney firm.
• "from the minutes of the first-instance oral proceedings and from Reasons 16.4 of the appealed decision, it is apparent that the opposition division studied D26 "for quite some time". Therefore, any further time involvement by the board in this regard could only have reinforced a legitimate expectation on the part of the appellant that the document was already in the proceedings. Moreover, in the board's assessment, document D26 was not more relevant than D18 which was already in the proceedings. " 
• "For the sake of procedural economy, the board considered it more expedient to avoid an analysis and a discussion on whether D26 had already been implicitly admitted or should have been admitted already in the opposition proceedings, as well as an in-depth analysis of its contents. Instead, it was more appropriate to examine, in its preliminary opinion, another substantive aspect with which the appealed decision was concerned, namely the matter of inventive step starting out from D18 as dealt with in Reasons 23 to 25.1 of the appealed decision. In so doing, the board may have contributed to making the circumstances of the appeal case "exceptional". On the other hand, it upheld the EPO's responsibility towards the public not to maintain invalid patents. It also, in its view, simplified the current proceedings."
• " Against this approach, however, the proprietor raised the following objection: the only ground on which the opponent had appealed was that claim 1 lacked novelty with respect to document D26. Therefore, the board should have not extended the scope of the appeal proceedings to documents and attacks which were part of the opposition proceedings but not of the appeal proceedings."
• "the board cannot see any legal basis for such a limitation, neither in the text of the EPC nor in the Rules of Procedure of the Boards of Appeal (RPBA). Pursuant to Article 114(1) EPC, the EPO (and thus also the Boards of Appeal) shall not be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.  "
• "following the board's communication under Article 15(1) RPBA 2020, the opponent had amended its appeal case (see point 2.1 below)."
• " In its reply to the board's preliminary opinion, the appellant agreed with the board that the subject-matter of claim 1 of the main request did not involve an inventive step when starting out from document D18."
• " the board decided to admit the appellant's objection as regards lack of inventive step starting out from D18 against claim 1 of the main request into the appeal proceedings."
• "It is therefore not credible that features (a) to (i) bring about any kind of "flexibility", let alone an "increased flexibility". Thus, contrary to what is set out in Reasons 25.1 of the appealed decision, features (a) to (i) do not contribute to solving an objective technical problem. Consequently, they cannot contribute to an inventive step (cf. G 1/19, Reasons 49, last two sentences). Instead, they relate mainly to the definition of the satellite's processing and the processing of the beamforming networks as a "black box" (see e.g. T 2271/18, Reasons 2.1), with several general input parameters such as "weight sets", "transmit/receive weight vectors", "sequential dwell times", "pathway gains" and generic output parameters such as "uplink and downlink beam signals" in a static rather than an adapted or dynamic way."
• "For the reasons set out above, the subject-matter of claim 1 of the main request does not involve an inventive step (Article 56 EPC)."
• "the board decided to admit auxiliary request 1 into the proceedings."
• " The admittance into the proceedings of auxiliary request 1 and of document D26 represents a considerable change in the facts and claim requests underlying the present appeal case."
• The case is remitted.

EPO 

You can find the link to the decision after the jump.

T 0246/22 - What does admissibly raised mean?

Key points

• I think this is an important decision. 
• " Pursuant to Article 12(4), first sentence, RPBA, such qualification as "amendments" applies only "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal" . To decide whether this exemption applies here, in which case auxiliary requests 3 to 8 would necessarily be part of the appeal proceedings, or whether they are indeed "amendments", in which case their forming part of these proceedings would be a discretionary matter for the board, requires in particular an interpretation and application of the terms "demonstrates", "admissibly raised" and "maintained".
• "the ordinary meaning of "demonstrates" must be that, as a general rule, the party making a submission that would, on the face of it, constitute an "amendment" bears the burden of showing that it was "admissibly raised and maintained" in the proceedings leading to the decision under appeal. The lawmakers' idea was obviously not to put ex officio responsibilities on the boards and/or expect them to assume an investigative role, learn every detail of the first-instance proceedings, identify and track claim requests to their source, and understand why they were filed. The onus is no doubt on the amending party."
• The Board acknowledges that there was "some leniency in this respect in the early jurisprudence (cf. T 221/20, T 42/20 and T 476/21)"
• "The proprietor also argued, in its reply to the board's communication under Article 15(1) RPBA and relevant to the matter of demonstrating that auxiliary requests 3 to 8 were "admissibly raised" in the opposition proceedings, that the requests were "entirely validly filed" six weeks in advance of the final date for making submissions ahead of the oral proceedings under Rule 116 EPC. However, what the proprietor means by the unsubstantiated phrase "entirely validly filed" is obscure, and the rest of the arguments in that reply are rather relevant to the demonstration of maintenance (i.e. a matter already resolved above)."
• What more can the patentee say about admissibility?
• The board finds it helpful, in the context of claim amendments, to establish what the actual requirements might be for a party's demonstration that submissions were indeed "admissibly raised".In that regard, one viable approach could be that a Board decides whether the opposition division should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required (see e.g. T 364/20, Reasons 7). This would in turn mean that a Board - at least in part - should slip into the shoes of the opposition division. It would then have to infer, from the Board's perspective, how the opposition division should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA (see T 364/20, Reasons 7.2.10, last sentence). However, one of the possible consequences of that approach could arguably be that the boards would have to closely monitor the currently applicable Guidelines to derive guidance as to how the respective opposition division should have exercised discretion generally conferred by Article 123(1) EPC in conjunction with Rule 81(3) EPC in inter partes proceedings (cf. R 6/19, Reasons 6 and 7). For the boards, the subject of such an approach could virtually correspond to a "moving target", possibly leading to similar cases being treated differently, depending on the amendments made to the Guidelines over the years. This approach also fails to convince this board since the Guidelines are not binding on the Boards and since the RPBA are approved and adopted specifically to govern the proceedings before the Boards.
• This board, however, proposes another approach, namely that of defining minimum requirements for the demonstration of "admissibly raised" which could be more conducive to legal certainty and fairness in that regard, especially in opposition appeal proceedings. The board considers that claim requests which were already filed during the opposition proceedings and which did not belong to the basis of the decision under appeal in the above-mentioned sense (i.e. "carry-over requests") may indeed be regarded as "admissibly raised" under the minimum requirements that the party shows
(1) that they were filed in due time, typically before expiry of the time limit set by the opposition division under Rule 116(1) and (2) EPC, and
(2) that it was made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they try to overcome and how this is actually achieved.
• " the present board also does not subscribe to the test, with elaborate criteria, proposed by the competent board in case T 1800/20. According to that decision - besides the timing aspect - questions relating to (i) the suitability of the submission to overcome the objections raised against a higher-ranking claim requests, (ii) whether the submission gives rise to new objections and (iii) the suitability of the submission to be part of a convergent development of the first-instance proceedings should be considered in the assessment whether submissions were "admissibly raised" (see Reasons 3.4, items a) to d)). Taking such additional criteria into account when assessing the concept of "admissibly raised" and thus the question whether there is, at all, any discretion for a Board not to admit a party's submission into the appeal proceedings would compellingly lead to a significant overlap with the codified criteria to be used by the Boards once they indeed have such a discretion"

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1437/21 - Clinical trial protocols and inventive step

Key points

• In the case at hand, D22 is a press release of the results of Phase III clinical trials.
• However, there is also the general issue of the mandatory publication of clinical trial protocols before the clinical trial is even carried out.
• The Board, obiter it seems: "The prior disclosure that an investigational product for use in the treatment of a particular condition is undergoing clinical trials may in accordance with established jurisprudence preclude that a subsequently claimed invention involving this product for use in the treatment of that specific condition is considered to involve an inventive step, even where the results of the trial have not been made available to the public (see T 2506/12, reasons 3.10 and 3.15; T 239/16, reasons 6.5 and 6.6; T 1123/16, reasons 11; T 2963/19, reasons 4.3.1)."
• " as explained in T 2963/19, the approval of a clinical study depends on the assessment of the foreseeable risks to the participants in relation to the anticipated benefit in terms of the relevance of the findings. The approval of a clinical trial does therefore not, by way of a heuristic, imply an expected positive outcome of the treatment. Furthermore, as underlined in point 4.3.1 of T 2963/19 by reference to the "Communication from the Commission 2010/c 82/01", the authorisation of a clinical trial does not represent a scientific advice on the development programme of the investigational product tested. The considerations in T 2506/12, T 239/16 and T 1123/16 regarding the expectation of success in view of the disclosure of clinical trials are, as in T 2963/19, evidently linked to the further circumstances of the cases decided therein, in particular the nature of the investigational product and of the condition to be treated and the absence of information suggestive of failure of the trial."
• Turning to the case at hand: "The crucial issue in the assessment of inventive step starting from the teaching in documents D22/D29, in particular the reported results from Study 1245.36, thus remains whether in view of the available information in the prior art, including the information in documents D22/D29, the skilled person had a reasonable expectation that empagliflozin would be effective in treatment of diabetic patients having moderate renal impairment."
• The claim is a second medical use claim specifying a sub-population of the patient population used in the clinical trial of D22, and a different sub-population than one of the sub-populations that was specified in D22.
• "The skilled person would furthermore not have expected the efficacy of the 25 mg dose of empagliflozin in patients with moderate renal impairment on the basis of the efficacy of the 10 mg dose in patients with mild renal impairment reported in documents D22/D29 due to the distinctive status of patients with moderate renal impairment which directly affects the mechanism of action of empaglifolozin. Precisely because the efficacy of SGLT-2 inhibitors was known to decrease progressively with decreasing renal function (see D8, page 235, left column), the skilled person could not reasonably expect that any significant efficacy of empagliflozin as still observed according to documents D22/D29 within the group of patients with mild renal impairment would even be retained in the distinctive group of patients with moderate renal impairment."
• "In the absence of a reasonable expectation of significant efficacy of empagliflozin in the treatment of diabetic patients with moderate renal impairment the Board concludes that the subject-matter of claim 1 as granted was not obvious to the skilled person in view of the prior art and thus involves an inventive step."

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0948/19 - Remittal for inventive step

Key points

• The Board considers the claims of an auxiliary request to be novel of the (pre-published) prior art, differently from the opposition division. The Board considers the claims of the main request to be not novel.
• The Board does not discuss inventive step. It is not clear to me if the added features of the auxiliary request are trivial or not. 
• "D1 discloses a distribution of slopes and baselines obtained prior to sensor insertion. However, D1 does not disclose the criteria according to which this selection is performed. Hence, D1 does not disclose that the calibration line selected from of multiple possible calibration lines is the one that has the slope and the baseline closest to the maximum joint probability of both the slope and the baseline."
•  The Board remits the case: "In this context, the following should be noted: In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings."
• The Board does not indicate that the OD departed from the usual practice of the OD or from the Guidelines. I think the OD followed the normal practice of the first-instance departments. The Board nevertheless considers the result of this normal practice to be " a special reason within the meaning of Article 11 RPBA 2020".
• It is not clear to me if there were any specific reasons that prevented the Board from considering inventive step, like the parties not making any submissions on that topic in appeal (which possibly would be contrary to the instruction in the RPBA to present a complete case, incidentally).
• 
  EPO 

You can find the link to the decision and an extract of it after the jump.

T 1572/21 - A bit more than three months

Key points

• The decision was taken in oral proceedings on 27.03.2024 and was issued in writing on 11.07.2024.
• The public file does not include a communication pursuant to Art.15(9) RPBA.
• Perhaps it is part of the non-public file, though the notification does not need to give any reasons for the delay, so it is hard to see why it should be non-public.
• We don't know if the President of the Boards of Appeal was informed of the delay as prescribed by Art. 15(9) RPBA.
• The decision itself does not mention the (slight) delay.
• 
  
• 
  

EPO 

The link to the decision and a screenshot of the file can be found after the jump.

T 1135/22 - Admissibly filed before the OD

Key points

• The Board arrives at carry-over requests that the proprietor had filed by the Rule 116(1) date before the OD (the Board also uses the term carry-over requests in the headnote/catchword). 
• The Board 3.5.05 follows Board 3.3.02 in T 0364/20.
• The Board does not discuss it, but the Guidelines state that the current version of the Guidelines for Examination in the EPO (March 2024 Edition), in Section E-VI.2.2.2, states that "[a]mendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed".
• The Board considers that the proprietor had not shown that the amendments were admissibly filed. The Board does not indicate what kind of proof is suitable.
• The Board, in translation: "The fact that the auxiliary requests were filed before the date specified under Rule 116(1) EPC is also not decisive. According to the case law of the Boards of Appeal, such requests could also be considered "late" (see, for example, T 364/20, Reasons 7.2.3)."
• "Even if the Board were to include in its considerations the statements in the patent proprietor's first-instance brief of 13 August 2021, with which auxiliary requests 1 to 12 were also filed - which is not necessary for the reasons set out above - the result would not be different. These statements are limited to the statement that the added features are intended to further highlight the differences from the prior art or to represent a "corresponding fallback position" "due to the new Rules of Procedure of the Boards of Appeal" (see page 2, second paragraph). The arguments at first instance also do not explain why the requests could not have been filed earlier."
• Note, currently the GL do not indicate that amended claims must be filed without delay in the first instance opposition proceeding.
• Note that it is not clear to me if in the present case, the auxiliary requests were substantiated in appeal, as is required under Art. 12(3).
• 
  

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0815/22 - Second medical use is not medical

Key points

•  Board 3.3.07 recently held the following to be a medical use: " for the prophylaxis or improvement of frailty in an elderly person, wherein the frailty is at least one kind of symptom selected from the group consisting of decrease in walking speed, decrease in the amount of physical activity and loss of motivation" in case T 2074/22. The active compounds in that appeal were two natural amino acids (isoleucine and threonine ). Claim 17 defined the composition as a food or drink in that case.
• Board 3.3.09 in the present case considers the following not to be a valid second medical use claim: "[] an infant formula [] comprising 3 to 7 g lipid/100 kcal, [and further components] for use in promoting a postnatal growth trajectory or body development in an infant towards a growth trajectory or body development which is similar to the growth trajectory or body development observed in human milk fed infants.".
• The Board: "The use of an infant formula for promoting, in an infant, a postnatal growth trajectory or body development towards a growth trajectory or body development similar to those observed in human milk fed infants, does not qualify as a method of treatment by therapy under Article 53(c) EPC".
• "It is established case law that both curative and prophylactic methods of treating disease are covered by the word therapy, since both are directed to the maintenance or restoration of health [...]. It is, however, important not to dilute the concept of treatment by therapy within the meaning of Article 53(c) EPC. Taking into account the rationale underlying this article as set out above, this concept must be understood as the curative or prophylactic treatment of a pathological condition which is part of the core of the medical profession's activities."
• "it would go against the rationale underlying Article 53(c) EPC as set out above if the ordinary provision of food (i.e. of a substance containing nutrients) in order to provide nourishment - and without any further qualification - were considered a prophylactic therapeutic method within the meaning of this provision."
• excluding from patentability, under Article 53(c) EPC, the use of infant formulas for providing nourishment and promoting the normal growth trajectory and body development observed in breastfed infants would not serve the purpose of excluding therapeutic treatments from patentability in the interest of public health. For the same reason, the use of such infant formulas does not qualify as a medical use under Article 54(5) EPC either"
• The claims are held to be not novel.
• A rewrite to a non-medical use claim was not attempted.

• The Board also cites G 1/07: "Medical and veterinary practitioners should be free to use their skills and knowledge of the best available treatments to achieve the utmost benefit for their patients uninhibited by any worry that a therapeutic method might be covered by a patent (see G 1/07, Reasons 3.3.6). "
• Here, it may be observed that medical practitioners are indeed free to use their skills and and knowledge of the best available treatments to achieve the utmost benefit for their patients, provided they use devices and products acquired in a non-patent-infringing manner. Commercial use of a patent-infringing device or compound is an infringing act, see e.g. Art. 25 UPCA.
• 
  
• EPO 

The link to the decision and an extract of it can be found after the jump.

T 1464/21 - Implicit disclosure and interpreting a cross-sectional drawing

Key points

• I think it is important to carefully distinguish between inherent features and implicit disclosure.
• "Furthermore, it is established jurisprudence of the boards of appeal that a disclosure can be implicit, where an implicit disclosure relates solely to matter which is not explicitly mentioned but is a clear and unambiguous consequence of what is explicitly mentioned (Case Law of the Boards of Appeal of the European Patent Office, 10th edition, July 2022, II.E.1.3.3). 
• The Board uses "clear and unambiguous consequence "
• Note, the different phrase "inevitable consequence" could be appropriate for inherent features : possibly with a focus on unpredictable inevitable consequences. Such features need not be clear from a document itself (e.g. reworking a described chemical experiment may be necessary  to find out exactly what product is obtained). (edits in italics)
• "Fig. 3A shows only a cross-section of the objective and therefore only a cross-section of the frame 30. However, the person skilled in the technical field under consideration would understand in the technical context of document D1, and in particular in view of Fig. 3A together with the cylindrical symmetrical configuration of the optical system represented in Fig. 3B, that a "frame" configured to fix the lens 29A to the deflection prism 29B (D1, column 4, lines 23 to 25) would - as held by the opposition division in its decision - be a frame encircling the lens. The board concurs in this respect with the appellant's view that it would be unrealistic ("lebensfremd") that the skilled person would construe the disclosure of document D1 relating to the frame as possibly only involving a frame constituted by two distinct portions separated from each other. For these reasons, in the board's view, document D1 discloses implicitly that the frame 30 encircles the lens 29A along its whole perimeter as this is a clear and unambiguous consequence of what is explicitly mentioned."
• Comment: D1 is a patent document, does this mean that an amendment of D1 to explicitly mention the feature ("the frame 30 encircles the lens 29A along its whole perimeter ") would comply with Article 123(2) ?

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0431/22 - Rule 80 and splitting the independent claims

Key points

•  In opposition, you can split an independent claim as granted into multiple independent claims. Rule 80 is no obstacle to this.
• The Board, in machine translation: "The board essentially follows the considerations of decision T 263/05, in particular the approach that compatibility with Rule 80 EPC must be assessed in the specific individual case and cannot be answered in general terms. According to Rule 80 EPC, the description, claims and drawings can be amended provided that the amendments are occasioned by a ground for opposition under Article 100 EPC. The board cannot derive any guidelines from Rule 80 EPC as to the manner or means by which a patent proprietor intends to overcome a ground for opposition. Amendments that are necessary and expedient to overcome a ground for opposition can be regarded as "occasioned" within the meaning of Rule 80 EPC. If the ground for opposition concerns an independent claim, the board considers that Rule 80 EPC does not preclude amendments that replace it with two or more independent claims, provided that their subject-matter is restricted or changed compared to the granted claim. It appears legitimate for a patent owner to attempt to cover parts of the granted independent claim by means of two or more independent claims in order to overcome a ground for opposition. However, a limit should be drawn if such an approach of replacing an independent claim appears to be an attempt to continue the granting procedure or otherwise an abuse of procedure."
• "Whether a set of claims amended in this way actually overcomes the ground for opposition and, in addition, satisfies the other requirements of the EPC, in particular Article 84 EPC (inter alia with regard to the conciseness of the claims) and 123(2) and (3) EPC, are questions that must be answered separately from compatibility with Rule 80 EPC."
• Note that conciseness of the claims may also refer to the number of claims, i.e. conciseness of the set of claims as a whole. 

EPO 

You can find the link to the decision  after the jump.

T 1304/22 - A therapeutic effect of VR

Key points

• This is an examination appeal, i.e. an ex parte case.
• Claim 1 is directed to: 'A system for representing symptoms and symptoms alleviation,  comprising: a processor; a head mounted virtual reality display; and a memory operatively coupled to the processor and configured for storing data instructions that, when executed by the processor, cause the system to perform a method, ..."

• This is not a second medical use claim, but by way of the software rule for novelty, the method is still a limiting feature of the claim.

• " The board agrees with the appellant that, among the cited prior-art documents, document D2, in particular Embodiment 2 ("Pain Management") disclosed in paragraphs [0047] and [0048], constitutes the most suitable starting point for assessing inventive step. The appellant argued that the distinguishing features of claim 1 over D2 were that [in claim 1] a "second digital model" was created for displaying a "symptom" [] and that a "third digital model" was created for displaying an "alleviation or removal of said symptom" [on the VR display]. It submitted that these distinguishing features had the technical effect of pain reduction and solved the objective technical problem of achieving an improved virtual reality system for reducing chronic pain."

• " although claim 1 is silent as to the details of the respective "digital models", the board, in the appellant's favour, accepts the technical effect and the objective technical problem as submitted by the appellant. Thus, the question to be answered next is whether the distinguishing features of claim 1 of the main request were obvious to the skilled person starting from D2."

• Hence, the Board is willing to accept 'pain reduction' as a technical effect (further technical effect in the sense of G 1/19, it seems to me).

• The Board considers the feature to be obvious. "document D2 also gives an overview of known techniques in the prior art, in which it discusses (paragraph [0015] ff.) prior-art techniques using virtual reality for the treatment of various conditions by exposure therapy. In this context, paragraph [0018] of D2 refers to D5 [US 5 546 943] 

• which "proposes use of a visualization system using a computer to provide a user with a view of their internal anatomy based on medical scan data. The user acts upon the information in an interactive virtual reality environment by using tools or other devices to diminish a visual representation of an ailment." (board's emphasis). Thus, although it may not have been the solution preferred by the authors of document D2, it was nevertheless an alternative solution known to the skilled person at the present application's priority date to display a visual representation of a "symptom" and to display its "alleviation or removal" for the therapy of that symptom, the choice of which would have been obvious. " 

• D5 did not use a VR display.

   

 

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0197/22 - First medical use claims

Key points

• "in case of a claim for a composition for use under Article 54(4) EPC [first medical use claim] it is not generally required for compliance with Article 83 EPC that a patent discloses the therapeutic suitability of the defined compositions in treatment of a plurality of diseases (see T 424/21, reasons 40)."
• A totally uncontroversial statement until you compare it with the May 2024 PTAB USPTO decision  (APR pane) Ex parte Chamberlain, Appeal 22-1944 where a claim directed to " a method of treating a patient by administering an anti-C5 antibody [, said antibody] comprising ..." was considered and found to be invalid as lacking sufficient support by the description". Moreover, the decision comes directly from the USPTO Director, along with the Commissioner for Patents and the Chief Administrative Patent Judge. (Patently-O).
• "However, as claim 1 of the main request defines a composition for use in therapy, the patent must provide the skilled person with sufficient instructions for applying the compositions within the scope of the claim in some form of therapy without undue burden. In line with the considerations in G 2/21 (see reasons 77) this requires that the patent must substantiate the therapeutic utility of the claimed composition if in the absence of experimental data it would not be credible to the skilled person that any therapeutic effect is achieved."
• "Claim 1 of the main request defines the composition to comprise mRNA encoding a functional protein or enzyme. '" 
• "The patent demonstrates in examples 7 and 8 with in vivo experiments in mice that mRNA encoding firefly luciferase (FFL) may be effectively transfected and expressed using a liposomal transfer vehicle as defined in claim 1 of the main request. As recognized by the patent proprietor during the oral proceedings, the expression of FFL luciferase serves no purpose in any therapy. According to the proprietor, examples 7 and 8 provided nevertheless with the use of FFL proof of concept that the defined transfer vehicles allowed for the effective transfer and expression of therapeutically useful proteins."
• "if the term "functional protein or enzyme" in claim 1 of the main request is understood as functionally restricted to a protein with a feasible therapeutic utility, the Board considers that the patent does not provide the skilled person with a sufficient disclosure to generally enable the therapeutic use of the claimed formulation comprising the mRNA encoding for an accordingly defined protein. "
• " the mere detection of an unquantified level of expression of FFL using a particular formulation for gene transfer does not credibly disclose the general suitability of such a transfer vehicle for use in gene therapy, because in view of documents D64 and A106 serious doubts prevail that such a formulation allows to generally achieve therapeutically effective levels of expression of the contained mRNA. The Board is therefore not convinced that the patent provides actual proof of concept regarding the suitability of the claimed formulations for use in therapy."
• "whilst document D39 thus may describe with the mentioned experimental results the in vivo expression of the administered mRNA encoding hEPO in a quantity which could indicate the described compositions to be therapeutically useful, the patent fails to disclose such a quantitatively adequate expression of mRNA from the compositions as defined in claim 1 of the main request. In accordance with the considerations in G 2/21 (see reasons 77) a lack of sufficiency of disclosure cannot be remedied by post-published evidence. The patent proprietor's argument relying on the post-published document D39 is therefore not considered persuasive.  Accordingly, the Board concludes that the main request does not comply with Article 83 EPC."
• The composition defined in the claim was as follows: " at least one mRNA molecule ...  encapsulated in a liposome having a size of less than 100 nm, wherein said liposome comprises one or more cationic lipid(s), one or more non-cationic lipid(s), and one or more PEG-modified lipid(s)," 
• EPO 

The link to the decision and an extract of it can be found after the jump.

T 1338/20 - Covid extension and admissibility appeal

Key points

• "The applicant (appellant) filed a letter dated 19 March 2020 ("the appeal letter") stating "We hereby pay the fee for appeal of EUR 2 255. Our Statement of Grounds of Appeal will follow in due time", and referred to the examining division's decision dated 28 January 2020. On 26 May 2020, the appellant filed its statement setting out the grounds of appeal together with amended claims of its sole request."
• The letter of 19 March 2020 contains no unambiguous statement that it is an appeal and is, hence, no valid Notice of appeal. 
• "In the case at hand, the impugned decision was notified on 28 January 2020. In normal circumstances, the two-month time limit under Article 108, first sentence, EPC for filing the notice of appeal would therefore have expired on 7 April 2020 (Rule 126(2) EPC as valid from 1 April 2015 to 31 October 2023). However, the notices of the EPO concerning disruptions due to the COVID-19 outbreak, dated 16 April 2020 (OJ EPO 2020, A43) and 1 May 2020 (OJ EPO 2020, A60), come into play here. With these notices, the EPO announced that time limits expiring on or after 15 March 2020 were extended for all parties first to 4 May 2020 and then to 2 June 2020 under Rule 134(2) EPC. As per J 10/20, even if there had been no "general dislocation in the delivery or transmission of mail" within the meaning of Rule 134(2) EPC, users could still rely on these publications without suffering any disadvantages."
• Note, there appears to be no requirement that the users (or the EPO) subjectively believe the notices to be legally correct for the principle of legitimate expectations of G 2/97 to apply. See J 10/20. 
• The statement of grounds of May 2020 was, therefore, in time to be a Notice of appeal. It contains the statement: "In the statement of grounds of appeal dated 26 May 2020 (i.e. before the expiry of the extended time limit under Rule 134(2) EPC), the appellant stated that it was writing "further to the notice of appeal dated March 19, 2020, relative to the decision dated January 28, 2020, to refuse the above-referenced patent application".
• The Board considers this statement to meet the requirement that the Notice must state that an appeal is filed.
• The sole claim request of the appellant is not admitted.

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0521/18 - G1/22 for Art.54(3)

Key points

• D4 (WO 2004/069849)  is a prior right under Art. 54(3) if the priority is valid (it entered the EP phase as EP04706051.2) 
• "The opposition division held that document D4 which was filed in the name of 454 Corporation (designated for the States outside the US) and 10 inventors/applicants (designated for the US only), was entitled to priority from application P4 (D4a), which had been filed in the name of 7 inventors/applicants out of the 10 inventors/applicants of document D4"
•  "As regards the question of priority entitlement of document D4, decisions G 1/22 and G 2/22 have set out that under the EPC normally a strong presumption exists that the priority applicants accept the subsequent applicant's reliance on the priority right for the purposes of Article 88(1) EPC (see Reasons 105 to 107). This strong presumption also applies in a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant. The joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary"
• "[The] presumption can only be rebutted in the presence of "serious" doubts based on facts or clear indications to the contrary"
• " documents D12 to D14 [filed by the proprietor] do not cast any such doubts on the presumption of an assignment. These documents are LinkedIn profiles of three further inventors [...] of application P4 (D4a) that show that they are employed by Roche, i.e. the company that bought 454 Corporation in 2007. Documents D12 to D14 are irrelevant to the question whether there was an agreement between the parties named as applicant in P4 (D4a) and those named as applicant in document D4, allowing the latter to rely on the priority right established by the filing of P4 (D4a). In particular documents D12 to D14 contain no evidence concerning a transfer of rights, be it in favour or against it."
• The evidence based on documents D12 to D14 and D15 to D17 therefore raises speculative doubts on unspecific facts only. This evidence is not suitable to rebut the strong presumption on entitlement as also confirmed by the declarations of two inventors of document D4, [Mr. X1] (see document D10, point 5) and [Mr. X2] (see document D11, point 5).
• Consequently document D4 is entitled to priority from application P4 (D4a) and thus forms prior art for the patent at least according to Article 54(3) EPC.
• Lack of novelty over D4 was not disputed.
• 
  

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1208/21 - Claim interpretation

Key points

• The proprietor argues a narrow interpretation of the claim in connection with inventive step.
• "the expression "gas turbine blade", is clear for a skilled person in the field of axial turbo-machinery. Knowledge in this field encompasses knowledge on inter alia gas turbine engines, their general structure, components and operating conditions. The skilled person will be aware that a gas turbine engine is generally composed of (seen in axial direction of incoming air flow) a compressor section for compressing the incoming air, a burner or combustor for combusting fuel in the presence of the compressed air and a downstream turbine section in which the exhaust gases resulting from the combustion drive the turbine (for example to generate electrical power). The skilled person will also be aware that the compressor and turbine sections are each composed of one or more stages of alternating rows of respective stationary blades (frequently also called vanes or nozzles) and rotating blades."
• "It is undisputed that the expression "gas turbine" can be understood by the skilled person to refer either to the entire gas turbine engine or to only the turbine section of such engine. Both interpretations are technically reasonable, and no argument or evidence has been submitted to the contrary. Similarly, the term "blade" used in this context will be understood by the skilled person to designate either a rotating or a stationary blade, without any of these understandings being technically unreasonable or illogical."
• "The opposition division was therefore correct to reject the respondent's [proprietor's]  approach of a limited interpretation of the claim in the light of the description, on which the respondent in essence also relied in the present appeal proceedings. The respondent's arguments submitted with its statement of grounds of appeal are found unconvincing for the following reasons."
• "The Board considers that the principles summarised by the respondent on the basis of certain passages taken from decisions T 454/89, T 860/93 and T 1127/03 [...] do not lead to the conclusion that a claim which has a clear meaning for the skilled person shall be given a limited interpretation in the light of the description. In particular, the Board cannot find any consideration in the passages from these decisions referred to by the respondent, nor from the broader context from which the citations have been taken, which would support the respondent's conclusion that, if the wording of a claim is clear within the meaning of Article 84 EPC, the broadest technically reasonable interpretation [] would [read: can? ] be excluded."
• "In analogy to, for example, the situation underlying decision T 454/89 referred to by the respondent, in which it was held that a lack of clarity in a claim could not be cured by relying "on Article 69 EPC as a replacement for the Article 84 requirements, i.e. as a substitute for an amendment which would be necessary to remedy a lack of clarity", (ibid., reasons 4.1.(viii)), also in the context of the requirements of Article 54 and 56 EPC, a technically reasonable and not illogical understanding of the claim wording cannot be restricted by reference or an amendment to the description. In such a situation, it would, rather, be the claim wording that would require amendment (see for example T 1628/21, reasons 1.1.18)."
• The general principle: "A claim which is clear by itself should be interpreted as broadly as technically reasonable in the relevant technical field. This represents the commonly accepted approach on claim interpretation by the Boards of Appeal when assessing inter alia the patentability requirements of Articles 54 and 56 EPC, as was also confirmed in recent decisions, for example T 1628/21, reasons 1.1.2 and 1.1.7, or T 447/22 reasons 13.1 (see also the case law cited in these decisions). "
• " Moreover, the description of the patent in suit does not lead to a different conclusion either. The description of the patent as granted states in the final sentence of paragraph 1: "Generally, the gas turbine blade according to the present invention is not restricted to a gas turbine: rotor blades or guide vanes of a turbo-machinery fall legally under the present invention". "
  
  

EPO 

You can find the link to the decision after the jump.

T 0480/21 - Debit order fails

Key points

•  The opponent tried paying the opposition fee on the last day using a debit order. Online filing (OLF) did not work well. The opponent then filed the notice of opposition by fax, which included a request to debit the opposition fee from the deposit account. The EPO did not carry out this request. One day later, the opponent paid the opposition fee using online payment.
• The Board concludes that the remedy of point 5.5 of the ADA applies.
•  As a minor quibble, the EPO does not publish the ADA at a fixed address like they do for the Rfees. The ADA can only be found in the OJ and OJ supplements.
• The remedy is currently in point 11 ADA and reads as follows: "If a payment period expires on a day on which one of the accepted means of filing debit orders under point 7.1.2 is not available at the EPO, the payment period is extended to the first day thereafter on which all such means as are available for the type of application concerned can be accessed again." (link)
• The decision deals with the question of whether the error in OLF was "at the EPO". 
• "The software version 5.0.11.172, used by the opponent for the online filing, was outdated and no longer recommended on 22 May 2019. The EPO had indicated, in [a message on the EPO website], that there were problems with this version. These problems were fixed in the recommended, updated version 5.0.11.174, published by the EPO in [a message on the EPO website], approximately one month before the attempted online filing. The use of outdated and faulty software was a failure of the opponent, which was not attributable to the EPO."
• The Board concludes that the use of OLF version 5.0.11.172 was "officially approved" by the EPO at the relevant time and that software errors in a permitted OLF version are issues "at the EPO" within the meaning of the ADA. Therefore, the remedy applies. Moreover, the opponent had provided sufficient proof of the software errors and their attempts to file the debit order using OLF. "Mr F then repeatedly tried to re-sign and re-send the notice, each time with the same result."
  
  
• One could ask why the opponent did not use another payment method, such as a credit card or bank transfer. However, as the present decision demonstrates, this is not relevant to the remedy of (current) point 11 of the ADA. There is no "all due care" requirement. 
• 
  

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0309/21 - Carry-over requests and proof discretionary decision

Key points

•  The proprietor and the opponent both appeal against the decision of the OD that the patent as amended can be maintained in amended form.

•  With its grounds of appeal, the patent proprietor requested that the decision under appeal be set aside and the patent be maintained as granted or, as an auxiliary measure, that the patent be maintained according to one of

  - auxiliary request 1 as filed with its grounds of appeal; or

  - auxiliary request 2 (corresponding to auxiliary request 1 before the opposition division which was found to meet the requirements of the EPC); or

  - auxiliary requests 3 to 8 or 10 to 21 (all as filed with its grounds of appeal).

• Note, requests 3-8 and 10-21 are pre-emptive with the SoG of the proprietor; the proprietor  could have filed them with their reply to the SoG of the opponent .

•  The proprietor withdraws their appeal. The Board therefore begins with AR-2. AFter a discussion of inventive step, AR-2 is found to be not allowable.

  
  

• " In the same manner as that found for auxiliary request 3 (see point 2. above), auxiliary requests 4 to 8 and 10 to 17 also lack substantiation as required by Article 12(3) RPBA. Discussion of novelty and inventive step (where any can be seen as having been made at all) is primarily limited to referring to arguments presented for the main request and auxiliary request 1, yet such a reference is of no assistance in understanding how auxiliary requests 4 to 8 and 10 to 17 may overcome the objections to those requests, since the added features are simply not present there. Where the statement is made that the newly added features in claim 1 of a particular request are not disclosed in E1 or E2, this does not address any issues concerning inventive step and why, with the particular features added in the request, these would overcome any particular objections which were based on the combination with further documents. In view of the number of features which have been added and the lack of convergence it is also not self-evident which objections are intended to be addressed by the respective requests."

• Auxiliary requests 18 to 20 are carry-over requests. "These auxiliary requests were on file before the opposition division as auxiliary requests 5a, 5b and 6 but the impugned decision was not based on these requests. According to Article 12(4) RPBA such requests are to be regarded as an amendment, unless the party demonstrates that this part was admissibly raised and maintained in the first instance proceedings."

• "The proprietor has [] not demonstrated that these auxiliary requests were admissibly raised in the opposition proceedings. The proprietor provided the date on which these auxiliary requests were filed during the opposition proceedings and explained that they were just based on combinations of granted claims. However, the proprietor did not present any reasoning why the requests were admissibly raised at that stage of the opposition proceedings. In this respect the Board holds that not every claim request submitted after the expiry of the time limit set under Rule 79(1) EPC, but before the expiry of the time limit set under Rule 116(1) EPC, is automatically admissibly raised (see e.g. T 364/20, Reasons 7.2.3). Rather, this depends on several criteria, one of which may be procedural economy depending on the case in question, and in many cases convergence with higher ranking claim requests (see T 364/20, Reasons 7.2.10). In the present case it is thus, without further explanations from the proprietor, not evident that the auxiliary requests were admissibly raised during the opposition proceedings.

• As a comment, because decisions on admissibility are discretionary, what kind of proof could be given of how the OD would have decided if they had arrived at the set of claims? Is this like requiring proof of tossing a coin?

• " In the present case, with higher ranking auxiliary requests having been inserted before auxiliary requests 18 to 20, the overall sequence of auxiliary requests for consideration relative to the opposition has changed, which materially changes the focus of auxiliary requests 18 to 20. This has also led to a lack of convergence because the higher ranking requests are based on combinations with dependent claims and also include newly introduced features from the description (see e.g. the opponent's analysis on page 10 of its reply to the proprietor's grounds of appeal). In the Case Law of the Boards of Appeal such a change of case resulting from the introduction of higher ranking requests has been regarded as an amendment (see with respect to Article 13(1) RPBA: T 1185/17, Reasons 3.1; T 2112/16, Reasons 7.1; and with respect to Article 12(4) RPBA: T 1516/20, reasons 2.8)."
• This appears to be possibly a new ground for losing a carry-over request in appeal. I'm not sure if this is envisaged under  Art.12(4). I'm not sure if it strikes a fair balance between quality of the decision (and legal peace, see T 0732/21) and procedural efficiency. 

 

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1332/21 - Agreeing with the OD, as appellant / review of decision to admit

Key points

• "The patent proprietor as well as the opponent appealed the Opposition Division's interlocutory decision that the disputed patent may be maintained in amended form based on the patent proprietor's second auxiliary request".
• The proprietor defended the claims as granted with the Statement of ground.
• "During oral proceedings [before the board] the patent proprietor defended, as its main request, the patent in the form of auxiliary request 2 as amended before the Opposition Division."
• "Thus, the final requests of the parties were the following:

  The patent proprietor requested the patent to be maintained on the basis of auxiliary request 2 underlying the impugned decision, i. e. in the form it was maintained by the Opposition Division, or on the basis of auxiliary request 3, filed on 21 March 2022 together with the reply to the opponent's grounds of appeal."

• As a question, is there still a valid appeal of the proprietor at this point in the procedure? Could an appeal become inadmissible in the course of the procedure?
  
  

• " The opponent argued that auxiliary request 2, filed during oral proceedings before the Opposition Division, should not have been admitted into opposition proceedings due to its late filing. "
• "There was thus no misuse of discretion by the Opposition Division. The Opposition Division decided to admit the request based on relevant criteria in a reasonable way.  The Board thus sees no reason to overrule the Opposition Division's decision to admit this request into the proceedings. In view of Article 12(1) RPBA this request is part of the appeal proceedings."
• The remarkable point is that the Board considers itself to be competent to review this decision of the OD to admit a request. For a different approach, see, e.g. T 0617/16 and T 1884/19. 
• 
  

EPO 

The link to the decision and the decision's text are given after the jump.