T 1865/22 - Inventive step of omitting a feature

Key points

• In the case at hand, the only distinguishing feature is omitting a feature of the prior art method.
•  The Board, in the headnote: "The mere fact that claimed subject-matter excludes a technical feature disclosed in the closest prior art as being essential or advantageous for a technical effect cannot in itself establish the existence of an inventive step. "
• "Rather, where the exclusion of the technical feature in question is the only feature distinguishing the claimed subject-matter from the closest prior art, it must be shown that the claimed subject-matter achieves said technical effect to an extent comparable to that of the closest prior art, even without this feature. Without such proof, the claimed subject-matter merely results in an obvious deterioration of the technical effect described in the closest prior art"
• As a comment, possibly, even a surprisingly small deterioration can provide for inventive step in some cases. Indeed, the term 'comparable' used  by the Board (as opposed to identical) could accommodate such cases. 
• 
  

EPO 

The link to the decision can be found after the jump.

R 0012/21 - Justice delayed ...

Key points

• The petition for review is successful.
• The successful petitions are now: R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links).
• The issue is whether the TBA violated the proprietor's right to be heard by not admitting an auxiliary request under Art. 13(1) RPBA 2007 in decision T 0784/17 of 30.03.2021, more particularly, whether the proprietor was given a sufficient opportunity to comment on the admissibility of the request. 
• The TBA had based the non-admission on a lack of substantiation (Art. 12(2) RPBA 2007) and a lack of prima facie allowability.
• The TBA: "Die Kammer betrachtet den Sachvortrag der Beschwerdeführerin zu ihrem Hilfsantrag deshalb nicht als vollständig im Sinne von Artikel 12(2) VOBK 2007. Zudem kann sie nicht erkennen, dass der gegenüber dem Hauptantrag hinzugefügte Schritt des Abfliegens prima facie die Neuheit gegenüber D2 herstellt und damit dem Anspruch zu einer prima facie Gewährbarkeit als Zulassungskriterium unter Artikel 13(1) VOBK 2007 verhilft."
• The present decision in translation: "The petitioner argues that at the oral hearing, it was only permitted to comment on whether the written submission of March 5, 2020, met the requirements of a late submission. It was "only" permitted to comment on the question "why no additional reasoning was submitted regarding the content of the auxiliary request." The Board of Appeal discussed the substantive content of the subject-matter of claim 1 according to the auxiliary request in the decision, without allowing it to comment on it. It was therefore not heard on the novelty of the subject-matter of claim 1 of the auxiliary request."
• The EBA, in translation: "In light of all of the foregoing, the fact that the board did not expressly address the question of the prima facie novelty of the subject-matter of claim 1 of the auxiliary request during the debate [at the oral proceedings] on the exercise of its discretion to admit under Article 13(1) RPBA 2007 and did not allow arguments to be presented on that point constitutes a serious violation of the patent proprietor's right to be heard (Article 113(1) EPC). "
• The EBA also concludes that the issue could be decisive for the outcome of the appeal case, namely that if the petition had been heard, the request could have been admitted. 
• There are some interesting points, e.g. that the proprietor had an opportunity to comment during the written procedure, as well as that the EBA leaves open whether the TBA had prohibited the proprietor from discussing the prima facie relevance.
• The EBA: "Rather, in order for the Board of Appeal to have been able to rely on the prima facie lack of novelty of the subject-matter of the auxiliary request in its decision not to admit the auxiliary request, the applicant should have been given the opportunity to present its arguments on this point at the oral proceedings. In the present case, this would have required the Board to explicitly address the issue during the debate on the exercise of discretion regarding the admission of the auxiliary request, since the EBA has no indication that the opponents raised the issue of novelty during the debate on admission."
• So, what are the key points that can be applied in other cases?
• If a decision is based on two cumulative grounds (rather than on two independent grounds), a violation of the right to be heard regarding one of them vitiates the decision. 
• Compare e.g. the Board finding the claim to be unclear and lacking basis in the application as filed vs. a discretionary decision to not admit a request referring to the late filing and the lack of prima facie relevance. I note that for discretionary decisions, it is less easy to see how there can be independent grounds as the exercise of discretion normally is to be based on the consideration of all factors (see e.g. Art. 12(4) RPBA).
• As I understand it, the opponents did not contest the prima facie allowability of the AR (the opponent did not challenge that the amendment made the claim novel), so the board introduced the issue on its own motion. The board should therefore have invited the proprietor to comment. In other words, for an amendment that adds a feature with the purpose of making the claim novel (e.g. for Art. 54(3) EPC), prima facie allowability must be assumed unless the opponent contests this. Note that this may be different for an amendment that aims to make the claim novel and inventive. 
  
  

On the length of the procedure

• The petition for review was filed on 12.07.2021. The current decision was issued on 25.04.2025; the procedure took approximately 4 years, i.e. 20% of the patent term.
• As far as I know,  (the management of) the Boards have, remarkably, never set a target for the pendency of petition for review cases.
• On the same day, the decision in R 8/22 was published, where the petition was rejected as clearly unallowable. The petition for review was filed on 01.04.2022 (basically after the COVID-19 disruptions). Apart from the language of the proceedings being French, I see no special reasons why it took three years to decide on the petition.
• Just to say the evident: three years of additional 'pendency' in itself can be interesting for parties in certain cases. 
• Four petitions from 2022 are still pending out of the 25 filed in that year.  Six were withdrawn. Two were decided in 2022, eight in 2022, four in 2024, and one in 2025.
• One petition filed in 2021 is still pending. Seven were decided in 2022 (including the one successful petition, five in 2022, one in 2024, and one in 2025.
• Of the 18 petitions filed in 2023, twelve are still pending, five were rejected as clearly inadmissible or clearly unallowable, and one was withdrawn. 

EPO 

The link to the decision can be found after the jump.

T 0449/23 - (IV) On the need to actively maintain carry-over requests in appeal

Key points

• The OD maintained the patent in amended form based on AR-1. The opponent and the proprietor appeal.
• Are AR-2 to 8 part of the appeal procedure?
• I think the Board applies existing case law, yet it's good to see it explained in all details.
• "With the letter dated 10 December 2024, with which the above auxiliary requests were submitted, the patent proprietor noted that the communication of the board pursuant to Article 15(1) RPBA had not mentioned auxiliary requests 2 to 8 filed before the opposition division. In the proprietor's view, these requests were however to be considered as part of the appeal proceedings from the outset within the meaning of Article 12 RPBA."
• "The board disagrees. Rather, as argued by the opponent, and indeed as understood by the board in drafting the communication pursuant to Article 15(1) RPBA, prior to the letter dated 10 December 2024, there was nothing in the patent proprietor's submissions in appeal indicating that as an alternative to its main request or auxiliary request 1, it requested maintenance of the patent on the basis of auxiliary requests 2 to 8."
• The proprietor refers to some remark in its Notice of appeal. The Board finds this remark to be insufficient.
• I note taht at any rate, the proprietor should logically maintain AR-2 to 8 in its reply to the appeal of the opponent, as lower ranking requests.
•  "the patent proprietor's grounds of appeal and reply collectively defined its requests as the main request and auxiliary request 1. Hence, even if the notice of appeal were to have referred to auxiliary requests 2 to 8, this would have been superseded by the grounds of appeal and reply which were absent any reference thereto. In this regard, Article 12(3) RPBA stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and inter alia should specify expressly all the requests relied on."
• "The patent proprietor also argued that auxiliary requests 2 to 8 had been set out in its reply to the notice of opposition dated 1 October 2021 (pages 22 to 25). Since this document was submitted as an annex to the patent proprietor's statement of grounds of appeal, auxiliary requests 2 to 8 were part of the appeal proceedings."
• "it is for the appellant, in the present case the patent proprietor, to define the extent of the appeal and as set out above, in accordance with Article 12(3) RPBA, set out its complete case in the statement of grounds of appeal or the reply thereto.  The submission of the reply to the notice of opposition as an annex to the grounds of appeal does not fulfil this requirement. Specifically, it does not change the fact that the patent proprietor's express requests in appeal did not include auxiliary request 2 to 8. Indeed, the board notes that in its grounds of appeal, the patent proprietor only referred to its reply to the notice of opposition in the context of inventive step starting from D3 (grounds of appeal, page 7, point 2.2, first paragraph). Hence, the patent proprietor's argument in this regard also fails."
• "To support the argument that auxiliary requests 2 to 8 were part of the appeal proceedings, the patent proprietor also referred to the opponent's grounds of appeal, in which said requests were addressed. Specifically, the opponent's grounds of appeal comprised a table on page 15 referring to auxiliary requests 1 to 8 submitted by the proprietor in opposition proceedings, as well as providing some comments on the allowability of said requests."
• " The board disagrees. As stated by the opponent, its submissions related to auxiliary requests 2 to 8 were filed merely "as a precautionary measure" (grounds of appeal page 15, paragraph below the table), i.e. in anticipation of the possibility that the patent proprietor might request maintenance of the patent on the basis of these requests. However, the patent proprietor did not request maintenance of the patent on the basis of auxiliary requests 2 to 8, neither with its statement of grounds of appeal nor with its reply to the opponent's appeal. Indeed, given the fact that auxiliary requests 2 to 8 were addressed in the opponent's grounds of appeal, the lack of any reference to those requests in the patent proprietor's reply to the opponent's grounds of appeal served to confirm that auxiliary requests 2 to 8 did not form part of its requests in appeal."
• 
  

• " The patent proprietor argued that having been filed during opposition proceedings, auxiliary requests 2 to 8 were "carry-over" requests. Therefore, to determine whether such requests represented an amendment to its appeal case in the sense of Article 13(2) RPBA, the criteria set out in Article 12(4) RPBA were to be applied."

• The Board: " the amendment referred to in Article 12(4) RPBA is an amendment of the party's case relative to its requests, facts, evidence, arguments and objections on which the decision under appeal is based, which is distinct from "amendments to a party's appeal case" in Article 13(2) RPBA, carried out at a later stage of the appeal proceedings relative to earlier submissions in appeal."

• "the patent proprietor's interpretation would have as a consequence that any submission or request admissibly raised and maintained in opposition proceedings could be reintroduced without impediment at any stage of the appeal proceedings, since following said interpretation, such a request would never be an amendment of the party's appeal case under Article 13(1) and (2) RPBA, with the consequence that the board would not have the discretion to exclude it. This would in turn run contrary to the legislator's intent underlying Article 13(2) RPBA"

• 
  

EPO 

The link to the decision can be found after the jump.

T 0746/22 - On headnotes and the actual text (and optical lenses)

Key points

• One of the curious aspects of the case law is that the headnotes (catchwords) sometimes can not be found so clearly in the actual text of the decision. I'm not privy to who drafts the headnotes and when (does the entire Board approve of them?). Perhaps someone can share an insight in the comments.
• Headnote: "In a claimed optical lens system comprising a plurality of lenses, it must be examined whether the feature distinguishing the claimed lens system over the prior art has a technical effect. If no effect beyond an arbitrary modification of the prior art lens system can be attributed to the distinguishing feature over the whole scope of the claim, the claimed lens system does not involve an inventive step. See Reasons, point 1.5."
• This headnote is a bit particular in that, except for the part in italics, it is just a statement of established case law that arbitrary variants are not inventive. What is so special about optical lens systems?
• Turning to point 1.5 in its entirety:  "As for instance explained in T 176/97, point 4.4 of the Reasons for the Decision, if the distinguishing feature of a claim has no effect of technical relevance on the claimed subject-matter and does not credibly solve an objective technical problem, then no inventive step can be based on it. In the present case, the objective lens system of claim 15 is considered to be no more than an arbitrary modification of the objective lens system of D4 which does not involve an inventive step within the meaning of Article 56 EPC."
• On the other hand, point 1.3.2 contains some reasoning that could be very important for anyone prosecuting patents in the field of optical lens systems: "merely defining a minimum contribution of the optical power of a lens in a group of five lenses (all of which are barely defined by optical parameters) has no relevant technical effect on any of the optical characteristics of the objective lens system, such as reducing the total optical length, reducing the optical aberrations, improving the optical quality or increasing the field of view. Indeed, all of these optical characteristics of the objective lens system result from precise optical parameters of the objective lens system (e.g. radii of curvature of the constituting lenses, lens materials, distances between the lenses). In order to provide at least a contribution to a well-defined optical characteristic of the objective lens system, it would be necessary that the claimed objective lens system be defined in greater detail by optical parameters, such as the radii of curvature of the lenses, the relative positions of the lenses and the aperture stop, the material of the lenses. "
• The Board adds, for good measure: "the fact that the scope of protection of a claim comprising all relevant optical parameters necessary to achieve a desired optical characteristic of a lens design is rather limited cannot generally be a reason for omitting the optical parameters from the claim".
•  A clear instruction to those patent attorneys working in the field. Whether it is justified or too strict, I can't judge. That is for those intimately familiar with the technology to consider.

EPO 

The link to the decision can be found after the jump.

T 0449/23 - (III) On evidence and inventive step

Key points

• "As regards an alleged lack of inventive step, the burden is on the opponent to adduce appropriate prior art which - when following the established substantive test, i.e. the problem-solution approach - persuades the opposition division or the board of the obviousness of the solution provided by the subject-matter claimed."
• " On the other hand, if the patent proprietor asserts that, in comparison to the prior art, there is an advantage or effect giving rise to a more ambitious formulation of the objective technical problem than that presented by the opponent and hence to an inventive step, the burden of proving this advantage or effect to the required standard of proof is on the patent proprietor (T 20/81, OJ EPO 1982, 217, headnote and reasons, point 3; T 912/94, reasons, point 3.5; T 355/97, reasons, point 2.5.1; T 1392/04, reasons, points 15, 19 and 20; T 2179/13, reasons, points 5.3 and 7). The mere assertion in the patent specification of an advantage or effect cannot be regarded as evidence of such an assertion."
• (e) The above principles have been confirmed in the following selected cases in which the underlying circumstances were comparable to those of the present case.
• Follows a review of these cases.
•  The patent proprietor cited decision T 1797/09 (reasons, point 2.7) in support of its view that the burden of proof rested on the opponent. 
• (a) In the board's opinion, decision T 1797/09 cannot support the patent proprietor's view. It appears that point 2.7 of the reasons is in reply to an allegation by the respondent (patent proprietor) relying on decision T 692/09 that no evidence for the solution of the technical problem of the patent had to be provided where the technical problem underlying the invention was completely new at the priority date of the patent (T 1797/09, reasons, point 2.6). 
• T 1797/09 : "The Board agrees with the Respondents insofar as a technical problem set out in a patent is considered to be credibly solved by a claimed invention if there exist no reasons to assume the contrary. In such circumstances, it is normally the Opponent's burden to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If no such evidence is provided, the benefit of doubt is given to the Patent Proprietor. However, if the Opponent succeeds to cast reasonable doubt on the alleged effect, the burden to proof its allegations is shifted to the Patent Proprietor ... In the present case, however, the Opponent has pointed to the comparative examples of document D1 where it is shown that the antispotting and antiscaling performance of a dish wash composition containing components a), b) and c) (Example 12) is worse than one containing only components a) and c) "
• This allegation appears, however, to misrepresent the findings in case T 692/09. Point 2.7 of T 1797/09 moreover fails to analyse the findings in T 692/09 and to relate this decision to the specific facts under consideration. From the reference to the Case Law of the Boards of Appeal, 6th Edition 2010, chapter VI.H.5, it is also not possible to identify a specific section in support of the statements in point 2.7 of T 1797/09. In fact, on the basis of the statements in decision T 1797/09, which lack any reasoning, the present board is unable to determine whether and why the conclusions in said decision could be relevant to the present case.
• As is apparent from the Case Law of the Boards of Appeal, 10th edition 2022, pages 866 to 867 of the English language version, decision T 1797/09 has remained a singular decision which was not followed by any other decision of the boards of appeal.
• (c) Of course, an advantageous technical effect could be notorious or part of the common general knowledge. In the first case, no evidence is needed in support of such effect, in the second case, only proof of such common general knowledge must be provided by the patent proprietor relying on such an effect. However, there are no such circumstances in the present case.
• As a comment, G 2/21 point 26 can also be cited:  "According to the established case law of the boards of appeal (see CLB, 10th edition, I.D.4.2, and the decisions therein) it rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved." 

EPO 

The link to the decision can be found after the jump.

T 0449/23 - (II) On evidence (in general)

Key points

• The Board provides a useful overview of the general rules on evidence. 
• (a) The legal burden of proof is the duty of a party to persuade the deciding body of allegations of facts on which the party's case rests. In principle, a party must prove alleged facts (assertions) from which it infers a legal consequence, i.e. which establish the basis for the party's legal claims. Thus, the allocation of the burden of proof depends on a party's substantive case.
• (b) To discharge its legal duty of persuasion, a party must prove the alleged facts by appropriate evidence to the required standard of proof. The party with whom the legal burden of proof lies therefore bears the risk that the alleged facts remain unproven, i.e. that the deciding body has not been persuaded in accordance with the required standard of the existence of these facts. In this case, the deciding body will decide against that party and reject its legal claims. Thus, the legal burden of proof requires the production of appropriate evidence to persuade the deciding body to the required standard.
• See also my recent analysis of T2463/22 of a (possibly) somewhat different approach. 
• (c) In principle, the legal burden of proof does not shift. References in the case law to a shift of burden of proof relate to the so-called evidentiary/evidential burden of proof (see for this distinction T 741/91, point 4.3). The notion of evidentiary/evidential burden of proof relates to the state of the evidence produced in the course of proceedings. Once the party bearing the legal burden of proof has adduced sufficient evidence to support its allegations of facts to the required standard of proof, the onus is on the adverse party to rebut the asserted facts by adducing appropriate evidence. Otherwise, the adverse party risks that the deciding body is persuaded of the existence of the facts and allows the claims. Thus, if the party having the legal burden of proof has made a "strong case" by filing convincing evidence, the onus of producing counter-evidence shifts to the adverse party (see e.g. T 859/90, reasons, points 2.2.2 and 2.2.3). However, this does not mean that the legal burden of proof is on the adverse party to prove the non-existence or the contrary of asserted factual allegations. It is sufficient that the adverse party raises substantiated doubts that prevent the deciding body from being persuaded of the existence of the alleged facts.
• In practice, of course, and differently from Dutch civil procedure, parties are not informed of such a shift of the evidentiary burden, and the Board does not invite parties to submit counter-evidence. 
• (d) In opposition and opposition-appeal proceedings, each of the parties carries the legal burden of proof for the asserted allegations of facts on which their respective substantive case rests.
• This seems correct, though a somewhat open question is whether the standard of review of factional findings by the opposition division is deferential or de  novo, with a related question about whether the burden of proof of the appellant can be different from the one in the first instance procedure. 

EPO 

The link to the decision can be found after the jump.

T 0449/23 - (I) Resin blend E6300

Key points

• This decision contains many interesting points. In this post, something about commercially available products identified only by a tradename.
• "Example A of D5 [US 2004/0050704 A1] describes the preparation of an electrodeposition bath used to prepare electrodeposition coating compositions by mixing the following components (D5, paragraph [0044], table): - Resin blend E6300, "a resin blend available from PPG Industries, Inc.""
• "The sole matter of dispute was whether "resin blend E6300" of example A (D5, table in paragraph [0044]) is a resin emulsion (i) comprising an aminated resin (A) and a blocked isocyanate curing agent (B) as required by claim 1."
• "To the patent proprietor's advantage, it is assumed in the following that resin emulsion (i) with components (A) and (B) of claim 1 of the main request is not disclosed in example A of D5. More specifically, it is assumed that neither resin blend E6300 nor information pertaining to the nature thereof was made available to the public on the effective date of the patent."
• "the objective technical problem can only be formulated as proposed by the opponent, namely as the provision of an appropriate resin for the preparation of the cationic electrodeposition coating composition according to example A of D5."
• " The board agrees with the opponent that the solution to this problem is obvious in view of D5 alone. Specifically, paragraph [0023] of D5 discloses acid-solubilised reaction products of polyepoxides and primary or secondary amines as possible cationic electrodepositable resins, and states that these amine salt group-containing resins are usually used in combination with a blocked isocyanate curing agent. "
• "The subject-matter of claim 1 of the main request therefore lacks inventive step over D5."
• As a comment, and subject to G 1/23 (still pending at the time of writing): Is the example enabled? Should we treat Example A of D5 in this respect as a document or as a commercially available product? 
• If Resin blend E6300 is deemed to be enabled, is its composition disclosed? 
• In the case at hand, the dispute may also have been whether the commercial product met the definition of the resin emulsion in the claim and whether that was proven. 

EPO 

The link to the decision can be found after the jump.

T 1791/22 - Therapeutic dose finding: sometimes inventive but as a rule routine

Key points

• Claim 1 of new auxiliary request 1 filed at the oral proceedings reads as follows:
  "1. A composition comprising a therapeutically effective amount of p-anisaldehyde for use to treat oral pharyngeal dysphagia.

• Dysphagia is a condition characterised by a decreased ability to swallow.

• "The appellant [opponent] argued that putting the envisaged treatment of oral pharyngeal dysphagia into clinical practice on the basis of in vitro data only would place an undue burden on the person skilled in the art. 

• The Board: "This argument does not succeed for the following reasons. ... After favourable in vitro results, dose-ranging studies would be the logical next step. ...  The appellant failed to provide a reason for serious doubt, substantiated by verifiable facts, that, in the case in hand, dose finding would present an unusual burden going beyond the routine work of the person skilled in the art. The fact that the application as filed does not specify a dosage range is not sufficient as a basis for serious doubt."
• "Dose finding for a medical use is, as a rule, considered to be a routine matter for the person skilled in the art. In the case at hand, the treatment elicits an immediate response, and the swallow reflex is a parameter that is easy to observe. Accordingly, dose-ranging studies would not be expected to present much difficulty."

EPO 

The link to the decision can be found after the jump.

T 2279/22 - Misapplied case law developed in the field of chemistry

Key points

• The OD found the patent to be insufficiently disclosed: "The opposition division's view was essentially motivated by its observation that the ambit of the combined claims 1 and 4 covered an embodiment that was nowhere described in the patent. The embodiment in question related to a security booklet where the "another page" and the "further part" formed separate elements (cf. point 2.4.7 of the decision under appeal). The board acknowledges that such an embodiment would indeed be difficult, if not impossible, to realise. Nevertheless, it is the board's view that the assessment whether the patent provides the skilled person with sufficient information to carry out an invention is a purely technical question that is separate from that of what reasonably falls within the ambit of claim wording (T 2773/18, Reasons 3.2)."
• "When assessing sufficiency of disclosure, the skilled person may rely on common general knowledge to supplement the information contained in the patent. In the present case, the above analysis of the embodiment of Figure 4 is proof that a potentially unworkable embodiment does not necessarily impair the skilled person to carry out the invention."
• "In the board's view, by citing a passage from section II.C.5.4 of the book "Case Law of the Boards of Appeal of the European Patent Office" (in its edition of July 2019), the opposition division misapplied case law developed in the field of chemistry for inventions that typically concern a composition having a compound or a parameter associated with a certain range of values (T 2773/18, Reasons 3.2; T 500/20, Reasons 3.6; T 447/22, Reasons 44).
• " Incidentally, the board notes that this passage has its origin in Reasons 3.5 of decision T 409/91 where it is immediately followed by the cautionary statement "However, the question whether the disclosure of one way of performing the invention is sufficient to enable a person skilled in the art to carry out the invention in the whole claimed range is a question of fact that must be answered on the basis of the available evidence, and on the balance of probabilities in each individual case".
• " Apart from being situated in the field of mechanics, the facts of the present case are certainly very different from those of T 409/91. Instead, the present board concurs with T 500/20 [blog post] that, in the field of mechanics, if claimed inventions do not involve ranges or compositions, basing an argument of insufficiency on the "in the whole claimed range"-approach is often inappropriate and can be rejected offhand. In such a case it normally suffices to provide a single detailed example or embodiment to illustrate how the invention can be put into practice, in such a way that the underlying principles can be understood by the relevant skilled person and they can reproduce the claimed invention using their common general knowledge without undue burden (T 500/20, Reasons 3.6)."
• As a comment, the Enlarged Board considered non-working embodiments in G 1/03, r.2.5 (for all technical fields) and said that " If a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances.

  Either there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. If this is the case, the inclusion of non-working embodiments is of no harm. ... If this is not the case and there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step ".

• " The opponent argued that, even when applying the principles established by the case law in the field of mechanics, its conclusion of lack of sufficient disclosure would not change considering that none of the embodiments of the contested patent disclosed all features of the combined subject-matter of claims 1 and 4. 
• "The board disagrees. As set out above, the embodiment of Figure 4 of the patent illustrates how the security booklet of claims 1 and 4 of the main request can be put into practice. The fact that certain terms ("another page", "further part") are not used in a consistent manner in the claims may be a matter of clarity. Similarly, a contradiction between the claims and the embodiments of the description or the drawings of the patent based on a specific reading of the claims would typically result in a lack of support by the description. Such objections need to be considered under Article 84 EPC, which in view of decision G 3/14 is not open for objection in opposition proceedings if, as in the present case, the contested claims are identical to claims of the patent as granted. This is not to say that a lack of clarity or support cannot result in an insufficient disclosure of the invention. However, in such a case it is necessary to show that the lack of clarity (or the lack of support by the description) affects the patent as a whole and that it is such that the skilled person - who can avail themselves of the description and common general knowledge - is hindered from carrying out the invention (T 2290/12, Reasons 3.1). This is not the case here."

EPO 

The link to the decision can be found after the jump.

T 0539/23 - Adding an explicit definition of an intrinsic and well-known characteristic

Key points

• The claim was amended during the grant procedure and has no verbatim basis in the application as filed. The Board accepts an implicit disclosure, as follows. 
• "In view of the board's conclusion in point 1.6.2 above, adding an explicit definition of an intrinsic and well-known characteristic of UHF channels transmitted over the air by different terrestrial broadcasting stations to feature 1.1.1 of claim 1 (and to feature 15.2.1 of claim 15) [i.e., the amendment] cannot be considered to present new technical information to the person skilled in the art and hence does not introduce subject-matter which extends beyond the disclosure of the application as filed."
• Note, "well-known" in this context relates to the filing date: for Article 123(2), the common general knowledge (in the relevant technical field) at the filing date is decisive.
• Note, only "intrinsic" is likely not enough. The Board considers both requirements to be fulfilled. 

EPO 

The link to the decision can be found after the jump.

T 1224/22 - Exceptional circumstances, but too late

Key points

• "the proprietor presented a first line of reasoning in favour of [admitting the auxiliary request], which is based on the fact that objection (c) was first raised in the Board's preliminary opinion. This amounted to exceptional circumstances which justified the filing of Auxiliary Request 1, which clearly overcame this objection, and, additionally, also overcame all other objections."
• "It is established jurisprudence that objections newly raised, by the Board, may constitute "exceptional circumstances" within the meaning of Article 13(2) RPBA "
• "They [the party, the Board uses the singular they] should thus explain why the circumstances had the direct result of preventing it from filing the amendment at an earlier stage (see T 1707/17, reason 2.4 and T 2486/16, reasons 6.5.5 and 6.5.6, and Case Law of the Boards of Appeal, 10th edition, V.A.4.5.4b). Expressing the temporal aspect in other words, they should persuade the Board that the amendment was filed within a reasonable time after the circumstances occurred."
• "After the submission of a request within a reasonable time after the occurrence of the relevant circumstances, any later filed requests would require exceptional circumstances of their own. In other words: the single occurrence of exceptional circumstances cannot justify a repeated filing of requests for an indefinite time span."
• 
  
• Separately, the decision was issued about four months after the oral proceedings, and the file contains a communication under Art. 15(9) RPBA. 

EPO 

The link to the decision can be found after the jump.

T 0243/22 - Counting to one for inventive step

Key points

• It was common ground between the parties that document D1 [US 2006/0074073] was the closest prior art. D1 (paragraphs [0002], [0003] and [0006]) is directed to rucaparib or rucaparib salts for use as chemosensitisers: [] Paragraph [0043] of D1 discloses a list of about 60 pharmaceutically acceptable salts that can be used for the invention [including maleate].
• Paragraph 0043 is just a list under the "phrase “pharmaceutically acceptable salt(s)”, as used herein"
• D1 is only about rucaparib. Hence, there is not  a two-fold selection of a salt and a compound from a class of compounds. 
• Claim 1 is a second medical use claim specifying the maleate form. 
•  The board agrees with the appellant that the starting point should be the whole list rather than the specific option of the maleate salt. As explained by the board in decision T 1126/19 (Reasons 6.2.2), which deals with the patent deriving from the earlier application, the disclosure of the closest prior art must be considered on the basis of its technical information without the latter being distorted or misrepresented by the knowledge of the invention (see also T 970/00, Reasons 4.1.2)."
• "n paragraph [0043] of D1, the maleate salt of rucaparib is not singled out. D1 neither illustrates nor presents rucaparib maleate as a standalone embodiment. Paragraph [0043] is merely a notional disclosure, in which maleate is one option in a long list of possible options, but is not among the preferred options. "
•  Starting from the list of pharmaceutically acceptable salts in paragraph [0043] of D1, it was undisputed that the subject-matter of claim 1 differs in the selection of maleate as the rucaparib salt and the requirement for the salt to be in crystalline form."
• " the board agrees with the appellant [proprietor] that the objective technical problem is the provision of a rucaparib form which has a suitable combination of properties for development into a solid dosage form."
• "D1 does not deal with the formulation of rucaparib. It contains no teaching on the issue of whether any of the salts in the long list in paragraph [0043] might possibly be suitable for preparing a solid dosage form. As the board acknowledged in decision T 1126/19 (Reasons 6.7), it is common general knowledge that finding a salt of an active compound which has a balanced combination of properties making it suitable for a solid formulation is generally a difficult, semi-empirical task, which requires non-routine experimentation and has an uncertain outcome. Thus, the skilled person would need to study each of the salts in paragraph [0043] of D1 to assess: first, whether it is solid; second, how many solid forms it may adopt; and third, whether there are forms with properties suitable for a solid formulation."
• After some analysis:  "Therefore, the board concludes that the subject-matter of claim 1 involves an inventive step."' 

EPO 

The link to the decision can be found after the jump.

T 0356/22 - Counting to two for novelty and inventive step

Key points

• D1 teaches in claims 1 - 4 four different compounds and teaches in claim 22 a dosage form comprising one or more of these four compounds.  
• "D1 thus discloses, in one alternative of e.g. claim 22, pomalidomide dosage forms. The [proprietor] suggested that a single selection may be acceptable for the purposes of assessing novelty but not for inventive step, such that no pomalidomide dosage form would be disclosed in D1. The Board does not [concur]. The same definition of the prior art under Article 54(2) EPC and the same disclosure test apply in both cases. The Board emphasises that pomalidomide does not simply notionally fall within the scope of D1, but is one of only four active ingredients recited and tested therein."
• In other words, one selection constitutes no distinguishing feature. 
• The claims are held to be obvious, and the patent is revoked.

EPO 

The link to the decision can be found after the jump.

T 2314/22 - The limits on filing auxiliary requests in oral proceedings OD

Key points

• "According to the minutes of the oral proceedings before the Opposition Division (see page 5, under the time stamp 12:31 to the end of page 6) the proprietor asked for an opportunity to file an additional Auxiliary Request, which was denied by the Opposition Division. The discussion evolved generally around such an opportunity, but no particular additional request was ever filed."
•   In their reasoning for not admitting any further auxiliary requests, the Opposition Division mainly argued that any further auxiliary request, filed only during oral proceedings and, thus, late, would be against the principle of equal treatment of the parties, and economy of the procedure (decision, reasons, section 12.3) and stressed that Filing a new request would therefore put once again the opponent in a situation of disadvantage, as he will be faced with the undue burden to have to analyse the new request within the limited amount of time available during an oral proceedings. "" 
• The Board: "the Opposition Division should have exercised their discretion differently, and not denied the proprietor any opportunity of filing additional requests during oral proceedings." [i.e., should not have denied the opportunity to file any further auxiliary requests]. 
• "Since oral presentations are generally different from written presentations, and discussions among the parties and with the division might clarify misunderstandings, there should be possibilities for the parties to react, even during oral proceedings. "
• "It is within the Opposition Division's discretion to admit such reactions [i.e., to hold them inadmissible], [these reactions] as expressed by new requests, facts or arguments, "
• "but in order to do so [i.e., hold inadmissible] - if time allows, as it did here - they [the OD] should at least have a look at them [the auxiliary requests, it assumes a written document] and then decide whether they and the other party [opponent] would be able to deal with them during the oral proceedings or not. 
• "It is accepted that repetitively filing new requests during oral proceedings might amount to a procedural abuse [abuse of procedure], which would give the Opposition [D]ivision discretion to prevent further filings. But this was not the case here, since the proprietor had not filed any further request during oral proceedings. "
• "As a consequence, the Board agrees that, given that non-admittance of any further auxiliary requests was incorrect, the Opposition Division violated the appellant's right to be heard (cf. R 12/22, point 3.2.4 of the Reasons)."

EPO 

The link to the decision can be found after the jump.

T 1907/20 - Appointing representatives and authorizations

Key points

• The patent has two proprietors, Bosch GmbH and Samsung SDI Co. Ltd (KR), for all designated states. Bosch GmbH is the first-named proprietor.
• The proprietor appeals the decision of the OD. The Notice of appeal, filed on paper, is given on the letterhead of Bosch GmbH and signed by the in-house European patent attorney of Bosch GmbH, who is a professional representative. 
• Is the appeal validly filed?
• Going back all the way to the Request for entry into the EP phase, another European patent attorney (an in-house patent attorney of the first applicant) was appointed as the representative (common representative). That document was signed by the patent attorney himself.
• Question for EQE candidates: why was the professional representative appointed as the common representative? What other configuration could be considered but was not possible in this case?
• The Board, in the German original: "Vielmehr konnte der Beschwerdevertreter [the patent attorney] bereits bei Einreichung der Beschwerdeschrift als gemeinsamer Vertreter der gemeinsamen Patentinhaberinnen im Sinne von Regel 151(1) EPÜ handeln, und zwar ohne weitere Formalitäten, da er persönlich als zugelassener Vertreter aufgetreten ist. "
• "Auch die Bestellung eines anderen gemeinsamen Vertreters der beiden Anmelderinnen [i.e. the different professional representative appointed in EPO Form 1200, Entry into the EP phase, I think]  war kein Hindernis, den Beschwerdevertreter als weiteren gemeinsamen Vertreter der Patentinhaberinnen im Sinne der Regel 152(10) EPÜ anzuerkennen. Eine gesonderte Erklärung gegenüber dem EPA war nicht erforderlich. 
• EPC Rule 152(10): "If a party appoints several representatives, they may act either jointly or singly, notwithstanding any provisions to the contrary in the communication of their appointment or in the authorisation. "
• "Die Einsprechende hat auch nicht bestritten, dass der Beschwerdevertreter als zugelassener Vertreter nach Artikel 134 EPÜ keine Vollmacht von Samsung vorlegen muss, im Sinne von Artikel 1 des Beschlusses der Präsidentin vom 12. Juli 2007 über die Einreichung von Vollmachten (ABl. EPA 2007, Sonderausgabe Nr. 3, S. 128-129)."
• The decision was taken on 10.09.2024. The new decision on the matter (OJ 2024 A75) entered into force on  01.11.2024. 
• Apparently, the Board is bound by this decision of the President. 
• I.e., the in-house European patent attorney of Bosch GmbH can represent Samsung Co. without the need to file a power of attorney from Samsung with the EPO. Of course, if Samsung is unhappy, it could file a disciplinary complaint against the professional representative. 
• "Das Amt brauchte auch nicht von einem Vertreterwechsel im Sinne des Artikels 1, Absatz 2 des Beschlusses der Präsidentin auszugehen: Sowohl der früher für die Anmeldung tätige Vertreter als auch der Beschwerdevertreter waren nur zwei von mehreren Vertretern von Bosch nach Regel 152(10) EPÜ. Es gab keine Anhaltspunkte dafür, dass die Vertretungsbefugnis des einen endete und die Sache von dem einen auf den anderen überging. Beide waren von Anfang an bevollmächtigt, für Bosch und damit auch für Samsung zu handeln."
• From the 2007 decision:  "If the European Patent Office is informed of a change of representative involving professional representatives who are not members of the same association, without being notified that the previous representative's authorisation has terminated, the new representative must file, together with the notification of his appointment, an individual authorisation"
• The German and French texts refer more clearly to a replacement of the representative, which is not the case. 
• The Board sees no reason to request the filing of a Power of Attorney of its own motion, though the Decision of the President leaves the option to request so, also in other cases than a replacement of the representative.
• "In der mündlichen Verhandlung vor der Kammer machte die Beschwerdegegnerin geltend, die fehlende Vertretungs­befugnis des Beschwerdevertreters beruhe nicht auf einer fehlenden Vollmacht, sondern auf dem Fehlen der in Regel 151 EPÜ ausdrücklich vorgesehenen Bestellung."
• Rule 151 is titled in German: "Bestellung eines gemeinsamen Vertreters", English: appointment of a common representative. The actual topic is not the appointment of specifically a common representative, it seems. Rather, it seems to be about terminology: representatives appoint themselves in the procedure. In fact, I'm not 100% sure if a party can simply send a letter to the EPO that they 'appoint' representative X for patent application ZZZ. Should not the representative X themselves write to the EPO that they take responsibility for the case by appointing themself as the representative for the case?
• In other words, we have 1) the procedural requests of professional representatives to be registered as the professional representative for one or more specific patent applications and 2) authorizations (power of attorneys), i.e. documents that prove that the party itself agrees with the registration of a particular professional representative (or association) as the representative for their patent application. 
• "Regel 151 EPÜ verlangt jedoch nicht, dass die Bestellung des Vertreters als gesonderte Erklärung der Anmelderin oder Patentinhaberin [...] erfolgt."
• " Die in Regel 152(1) EPÜ vorgesehene und durch den Beschluss der Präsidentin bewirkte Vereinfachung des Verfahrens [i.e., that a professional representative does not normally need to file a power of attorney] wäre sinnlos, wenn die Parteien zwar keine Vollmacht, aber dennoch eine von der Anmelderin unterzeichnete oder anderweitig ausgestellte Vertreterbestellung einreichen müssten.
• "Die Beauftragung eines zugelassenen Vertreters bzw. die Erteilung einer Vollmacht an einen zugelassenen Vertreter (und gegebenenfalls die anschließende Einreichung der Vollmacht beim EPA im Erteilungs- oder Einspruchsverfahren) gilt als Bestellung eines gemeinsamen Vertreters im Sinne von Regel 151 EPÜ. "
• I don't understand this remark, or perhaps there is a different use of the term "Bestellung" than I proposed above.

With edits 09.09.2025, and with the note that I'm still struggling a bit with the concepts and terminology.

EPO 

The link to the decision can be found after the jump.

10th Anniversary

Key points

• In April 2015, I started with this weblog - fresh out of the EQE and inspired by the inimitable K's Law blog (which stopped in 2014).
• If you are a regular reader, you are part of quite a small group of case law aficionados. Only a few percent of the total number of European patent attorneys reads this blog regularly, is my estimate. I like to think of them as the (upcoming) thought leaders in the field.
• Of course, this blog couldn't exist without a regular supply of interesting decisions from the boards. So I would like to use the opportunity to thank the board members who add a sprinkle of 'bloggable' decisions to the continuous stream of run-of-the-mill decisions (without wishing to diminish in any way the importance of appeal decisions in run-of-the-mill cases for the parties concerned and to keep the EPO and our practices going). 

T 1841/23 - Intervention and UPC litigation

Key points

• Intervention - who expected it to become a hot topic (see G2/24).
• "the board summoned the proprietor and opponent 1 to oral proceedings to be held before the board on 11 December 2024." 
• "A notice of intervention was filed on 18 November 2024, "
  
• The intervention was based on UPC litigation on the patent.
• "In support of its requests for postponement of the oral proceedings before the board or of the board's decision on the appeal, the proprietor submitted, at the outset of those oral proceedings, essentially the following arguments."
• "the matter of postponement of the arranged oral proceedings is at the board's discretion."
• "In the present case, unlike the one underlying T 1961/09, the notice of intervention did, in the now relevant parts, not raise any further objections or new issues, but only argued on old topics. At oral proceedings before the board, opponent 2 was also free to put forward and develop such arguments, which it also did to some extent, as had the proprietor. Further, to ensure fairness between the parties, the present board had taken pains, in the run-up to the oral proceedings before it, to concentrate the debate on a few old, limited and highly relevant issues"
• " As a result, the proprietor's requests for postponement were to be refused and the oral proceedings continued, with the objection of added subject-matter as the next issue to be discussed."
• " In view of the above, the main request is not allowable under Article 123(2) EPC."
• "While an admissible intervention is to be treated as an opposition (Article 105(2) EPC), its filing shortly prior to the oral proceedings before a board does not generally excuse the proprietor (or the other parties), and in particular it does not hand them a voucher for more time. Its concrete implications for opposition appeal proceedings are rather to be determined on a case-by-case basis, under the provisions of the EPC and the RPBA. "
• "Nor are opposition appeal proceedings designed to serve as a placeholder for tactical considerations in parallel proceedings for infringement. They are rather an existential challenge to the title, on the basis of which enforcement is pursued in the infringement proceedings, and parameters such as legal certainty and procedural economy are also involved. Any difficulties for the proprietor in drafting auxiliary requests that also provide the best scope of protection, considering the ongoing infringement proceedings, are not a reason to delay the opposition appeal proceedings."
• Not sure what the Board means with 'placeholder' here, but clearly opposition appeal proceedings are not to be treated as subordinate to any parallel UPC proceedings.
• 
  

EPO 

The link to the decision can be found after the jump.

T 0123/23 - Food for thought - deleting alternatives

Key points

• I'm not sure what to think of this decision.
• The OD revoked the patent, for insufficient disclosure (Art. 83) of one feature.
• " Oral proceedings before the board were held on 17 December 2024. The final requests of the parties were: - The proprietor (appellant) requested that the patent be maintained on the basis of one of eighteen claim requests: main request (labelled as "auxiliary request 5"), auxiliary request 1 (labelled as "amended auxiliary request 5"), auxiliary requests 11, 23, 29, 34, 40, 45, 51, 56, 62, 67, 73, 78, 84, 89, 95 and 96. The decision under appeal is based on all those claim requests except for auxiliary request 1, which was filed during the oral proceedings before the board."
• Claim 1 as granted specifies two alternatives for one feature 1-E.l This feature is unrelated to the feature causing the Art. 83 issues before the OD. The Board finds one of the two alternatives to lack basis in the application as filed. In AR-1, filed during the oral proceedings, that alternative is deleted.
• The preliminary opinion of the Board was that there was no Art. 83 issue, i.e. that all claim requests complied with Art. 83.
• "the board does not dispute the fact that the deletion of the phrase "or other printed indicia" in claim 1 of the main request amounts to the removal of an alternative from this claim which prima facie overcomes the added-matter objection discussed with the board for the first time during the oral proceedings before it. However, this fact alone likewise does not amount to "exceptional circumstances" which necessarily justify admitting the claim request into the appeal proceedings. Instead, the whole situation of the appeal must be taken into account."
• The proprietor: "The added-matter objection to feature 1-E had not been discussed in the board's preliminary opinion. The board might have noted there (see point 7.2 of the board's communication under Article 15(1) RPBA) that further objections in relation to added subject-matter had been raised during the opposition proceedings. However, since the opposition division had not decided on any of these issues, the board's initial intention had been to remit the case on the basis of the claims of e.g. one of auxiliary requests 5, 11, 23 and 29 without conducting any further examination "
• The Board: "In any case, a patent proprietor should prepare the relevant "fallback positions" for that eventuality as early as possible, in line with the general obligation that its complete appeal case is provided as early as possible (see Article 12(3), first sentence, RPBA; see also e.g. T 614/21, Reasons 3.2). This is particularly true in the present case, as the opponents had raised the relevant objection at an early stage of the appeal proceedings, which the proprietor then attempted to overcome only at the latest possible stage, i.e. during the oral proceedings before the board. Moreover, it cannot be the purpose of a hearing held in appeal proceedings to allow an applicant or proprietor, after having discussed, in writing or orally, multiple (higher-ranking) claim requests, to present yet another amended set of claims in a trial-and-error fashion for finally defining its actual "invention" (see e.g. T 1924/20, Reasons 5.1; T 3258/19, Reasons 1.1.4(b))."
• "If the board were to admit the new claim request, it could settle the appeal immediately by remitting the case to the opposition division for further examination of novelty and inventive step - as initially intended - or it could continue with the examination of those issues in appeal, most likely in writing then due to the parties' need to present or amend their respective cases before the board. Both options would however be contrary to overall procedural economy."
• I'm not entirely sure what the Board here means with 'procedural economy' because it did not intend to consider novelty and inventive step at any rate, i.e. also if the Board would have agreed with the proprietor that the feature had basis in the application as filed. 
• "The proprietor could have filed this claim request already during the opposition proceedings, as it constitutes undeniably the safest defence against any possible objection to the presence of "indicia" in the former claims. A remittal would therefore give the proprietor a second opportunity to argue its case before the opposition division, including the possibility of filing even more claim requests if necessary."
• The request is not admitted. The patent is revoked.

• EPO 

The link to the decision can be found after the jump.