T 2221/21 - Oppo rejected, auxiliary requests in reply to appeal

Key points

• Another case where the OD rejects the opposition, the opponent appeals, the proprietor presents auxiliary requests in their reply to the appeal, and the Board considers the claims as granted to be unallowable. How to assess the admissibility of the auxiliary requests?
• "Under Article 12(4), fifth sentence, RPBA, the board is to exercise its discretion in view of, inter alia, the complexity of the amendment and the need for procedural economy."
• "the board is of the opinion that it would at least require a complex discussion to ascertain whether there was a basis for [the added feature]. (The Board explains why this is the case for the feature at hand).
• "Such a complex discussion would be contrary to the need for procedural economy."
• The Board could have admitted the request and decided that it lacks a direct and unambiguous basis in the application as filed.
• However, the underlying procedural question is: to what degree does the right to be heard under Article 113(1) EPC entail a right to present auxiliary requests that provoke a complex discussion? Is the requirement stricter than before the OD?  Assuming, of course, the auxiliary request is introduced into the procedure without undue delay and does not amount to an abuse of procedure?
• Just to be clear, I don't have a settled view on this point. I'm not just sure if the text of Art. 12(4) provides the complete and definitive answer to those questions. 
• The auxiliary request is not admitted.

EPO 

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

T 0500/23 - OD rejects oppo, auxiliary requests in appeal

Key points

• The OD maintained the patent as granted. The opponent appeals. The Board finds the main request and AR-1 to be unallowable.
•  "The appellant [opponent], in point 7.2 of its grounds of appeal, argued that inter alia auxiliary request 2 should not be admitted since this was filed late before the opposition division without any explanation or justification.
• I think that, strictly speaking, the opponent as the appellant must present attacks to the set of claims held allowable by the OD (the claims as granted) without a need to speculate on which auxiliary requests are presented by the proprietor in appeal. 
• The objection is under Art. 12(4) RPBA.
• The Board: In this regard, it should be noted that the opposition division had in its annex to the summons already outlined its preliminary view that the ground for opposition under Article 100(a) EPC, in conjunction with Articles 54 and 56 EPC, did not prejudice maintenance of the patent as granted. Nevertheless, the [proprietor] clarified its fall-back positions by filing auxiliary requests (shortly) before the oral proceedings before the opposition division. The fact that the auxiliary requests were filed shortly before the oral proceedings, although this was not strictly necessary due to the preliminary opinion of the opposition division, should not be unfavourable to the patent proprietor."
• The remark about "not strictly necessary" could also be relevant under Art. 12(6)(s.2) in cases where the proprietor does not present such auxiliary requests after the favorable preliminary opinion of the OD.
• " Furthermore the opposition division found the patent as granted to meet the requirements of the EPC such that it had no need to consider any further requests, including the auxiliary requests that were late filed. Therefore, with no need to consider any auxiliary requests in the impugned decision, it is clearly reasonable for the respondent to be able to pursue auxiliary requests filed in the opposition proceedings and/or to file other auxiliary requests on appeal as part of its complete appeal case (see Article 12(3) RPBA) in order to provide suitable fall-back positions should the patent as granted be found not to be allowable. This the respondent has done at the first opportunity on appeal i.e. in its reply to the grounds of appeal.
• As a comment, the auxiliary requesTt should then be fully substantiated in the reply to the statement of grounds.
• Furthermore, the auxiliary request should be suitable to address the attacks raised by the opponent/appellant in their SoG.
• Note, the "and/or" makes that the sentence is also relevant under Art. 12(6)(s.2).
• 5.3 Consequently, under the particular circumstances, the Board exercises its discretion to admit auxiliary request 2 into the proceedings."
• How to deal with AR-2 in the appeal? 
• The Board examines the novelty of the amended claim over two prior art documents and remits for inventive step, in a specifically reasoned part of the decision.
• "In the present case an important aspect is that the Board has, through its finding with respect to claim 1 of the main request, overturned the entire basis on which the opposition division had understood D1 to subsequently conclude that the claims before it met the requirements of the EPC. The Board would thus be considering the specific issues with respect to inventive step for the very first time on a totally different basis, which would deprive the parties of the opportunity of having an examination of the claimed subject-matter before two instances and moreover would go far beyond the purpose of the appeal proceedings as being primarily a review of the impugned decision. Not least due to this, special reasons (Article 11 RPBA) exist for remitting the case. Also, the parties had not developed their inventive step arguments with respect to the subject-matter of claim 1 of auxiliary request 2 in view of how this is differentiated over D1 and D2."

EPO 

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

T 2240/22 - Auxiliary requests of the proprietor/respondent

Key points

• The OD maintains the patent on the basis of AR 5bis. The Board finds those claims to be obvious. The board turns to the lower-ranking requests.
• " These auxiliary requests were filed for the first time in appeal with the respondent-proprietor's reply to the opponent's appeal. "
• "The Board is unconvinced that these requests could and should have been filed already in the opposition proceedings (so that Article 12(6) RPBA would come into play), because there was no reason for the proprietor to file further auxiliary requests in the opposition proceedings after auxiliary request 5bis was held to be allowable."
• " However, these requests are amendments of the respondent proprietor's appeal case in the sense of Article 12(4) RPBA. ... these requests, ... are undoubtedly newly filed in appeal and indisputably have not been raised and maintained in the preceding opposition proceedings, are amendments."
• "As they are amendments to the respondent proprietor's appeal case their admission is at the discretion of the Board, Article 12(4) RPBA, 1st paragraph, 2nd sentence. The Board exercises its discretion according to the following two paragraphs of Article 12(4) RPBA, that amendments should be identified as such, reasons for their filing and (for claim requests) a basis given; they bring in no additional complexity, are suitable to address the relevant issues, and they meet the need for procedural economy. The latter criteria are similar though not identical to those that the opposition division would have applied if these requests had been filed at the oral proceedings before the division: clear allowability (clearly resolve all relevant issue), convergence and procedural expediency, cf. E-VI.2.2.3. "
• Art. 12(4), fifth sentence, specifies factors, not cumulative criteria. 
• Turning again to auxiliary requests 6bis, 7bis, 6tris, 7tris, these are not simple combinations of granted claims (as admitted auxiliary request 5bis is). Rather, they combine granted claims with subject-matter taken from the description and figures of the alternative embodiments of figures 2 and 4 []
• "In the Board's view, such amendments are complex and not suitable for addressing the lack of inventive step, as taking features from specific embodiments of the description raises questions of added subject-matter and would have required additional examination, especially considering that such subject-matter may not have been searched. It is unlikely, that the opposition division would have admitted such requests filed at the very last moment in opposition oral proceedings, as they would have failed the criterion of clear allowability for the same reasons."
• Comparing the filing of an auxiliary request with the reply to the appeal to the filing an auxiliary request at the end of the oral proceedings before the OD is interesting. The reply in appeal is filed months, if not years, before the Board holds oral proceedings.
• "This approach is also confirmed by jurisprudence of the Boards of appeal, see for example T 0288/16, reasons 8, in which the Board confirmed that the opposition division had exercised its discretion in a reasonable manner and in accordance with the right principles when deciding not to admit requests incorporating a feature from the description."
• "For these reasons, the Board decided not to admit auxiliary requests 6bis, 7bis, 6tris, 7tris into the appeal proceedings, Article 12(4) RPBA with Article 114(2) EPC. The question as to whether the requests had been adequately substantiated can be left undecided."
• It stands to reason that the non-appealing proprietor should have a fair chance to respond to an appeal against an amended patent that may be successful, but they should also not gain any advantage by waiting to file auxiliary requests in the appeal rather than during the opposition oral proceedings. In other words, it should not have a better chance of having auxiliary requests admitted in appeal than in the proceedings leading to the appealed decision.
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EPO 

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

T 0930/23 - No technical effect being attributable (in patent year 20)

Key points

• The  Board on inventive step: "Further, with no technical effect being attributable to the distinguishing feature, the further arguments of the respondent that D2 was silent about the bending properties of the materials used in the central portions and in the side portions and that there was no hint or motivation in D2 to work with the bending properties of the materials, are irrelevant. Features that do not provide a technical effect and which would be implemented as part of the normal design of such articles which are deemed suitable in the circumstances, are an obvious choice for a skilled person even if there is no specific hint or pointer towards exactly the claimed range. It is thus not necessary in the circumstances of the present case (where there is no proven technical effect and no technical problem solved across the scope of the claim by the distinguishing feature) to find a hint by way of common general knowledge or in the prior art, contrary to the reasoning of the opposition division in the impugned decision on page 4, third paragraph. In a case merely involving an arbitrary selection from obvious alternatives, the prior art does not need to contain an incentive for the skilled person to select the particular solution claimed, rather all possible and suitable solutions are considered to be suggested to the skilled person (T 1862/15, reasons 8)."
• "Auxiliary requests 1, 2 and 4 to 24 are not admitted into the appeal proceedings as they lack substantiation as to which objections might be overcome by the various amendments and how such amendments actually overcome them (Articles 12(3) and (5) RPBA)."
• "The subject-matter of claim 1 of auxiliary request 3 thus lacks an inventive step"
• The patent is revoked.
• Which so far is not unusual, except that the patent was granted in Feb 2014 and the Board's final decision was issued on 10 March 2025. Filing date in 2005 as a PCT application. The Board in the first appeal decision in T 0259/17 in 2021 found claim 1 to be sufficiently disclosed (contrary to the first OD decision). 
• The Board in the first decision: " As [...] argued by the appellant [ proprietor], however, the problem to be solved is not defined in the claim, such that identifying the technical measures to solve any particular problem is limited in this case to carrying out what is defined in the claim itself, i.e. the relative flexural rigidities where the measurement of each is defined by the described test procedures. Whether the relative flexural rigidities measured in this way ultimately solve any particular problem is something which can be left for discussion of inventive step."
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EPO 

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

J 0004/24 - Proceeding further kills the patent application (?)

Key points

• "Nanosteel's request to interrupt the proceedings of European patent application No. 17 867 378.6 had been motivated on the grounds that Nanosteel, although still the legal owner [of] the application, had lost the legal capacity to act on or before 5 December 2020 due [some US legal procedure/event]."
• "The applicant replied to [the Rule 70(2)/70a(2) Communication of 8 June 2020]  by letter dated 8 December 2020 [received on 9 December]. The representative of Nanosteel wrote that the applicant desired to proceed with the European patent application. No comment on the objections raised in the opinion accompanying the European search report was submitted."
• As the skilled reader may have inferred, it was a Euro-PCT application (the EPO was not the ISA) and a supplementary European search report, and the applicant did not use the former ten-day period under former Rule 126 EPC that was applicable in the case of a Rule 70(2) communication for a Euro-PCT application. 
• The EPO issues a Notice of loss of rights on 28.01.2021 for failure to reply under Rule 70a(2). This gives a two-month period for requesting further processing, expiring on 07.04.2021 (Wed), which was not used. 
• "Having received no comments on the objections raised in the opinion accompanying the European search report within the given deadline and no request for an extension of the time limit, a communication was issued by the Examining Division on 28 January 2021. With this communication, the loss of rights pursuant to Rule 112(1) EPC was notified to the applicant."
• Note that filing this formal indication of the wish to proceed further without a substantive reply to the search opinion saves one further processing fee later. 
• On 04.06.2021, the applicant files the substantive reply on the search opinion, pays the further processing fee, and requests interruption " starting from 5 December 2020 until at least 6 April 2021" and, auxiliary, re-establishment. The request for interruption is based on Rule 142(1)(b) EPC: "in the event of the applicant for or proprietor of a patent, as a result of some action taken against his property, being prevented by legal reasons from continuing the proceedings".
• The Legal Board of Appeal rejects the interruption on the ground that the letter of 8 December showed that the applicant could "continue the proceedings", according to the Legal Board of Appeal.
• "Nanosteel answered the communication of the Examining Division pursuant to Rules 70(2) and 70a(2) EPC of 8 June 2020 in letters sent on its behalf during and after the period of its alleged legal incapacity. In its letter filed on 9 December 2020, Nanosteel partially reacted to the communication when informing the EPO that the applicant wished to proceed with the European patent application."
• "The Board therefore holds from these facts, and since no evidence to the contrary was filed, that the applicant Nanosteel was not prevented by legal reasons from continuing the proceedings before the European Patent Office (see J 11/95, Reasons 5.3)."
• J 11/95: "In the circumstances of the present case, A/S Køge Stormølle (in bankruptcy) continued the proceedings before the EPO even after they had gone bankrupt in October 1990. In particular, they filed a request for entry into the regional phase before the EPO on 16. January 1992 and paid the corresponding fees. From these facts and since no evidence to the contrary has been filed it has to be concluded that A/S Køge Stormølle (in bankruptcy) was not prevented by legal reasons from continuing the proceedings before the EPO."
• As a comment, I could very well imagine that after the "US legal event" on 5 December, the professional representative could still take care of the letter on 8 December 2020. On the other hand, the missed time limit is that for filing the reply to the search opinion with further processing by 7 April 2021. The letter of the representative on 8/9 December 2020 does not conclusively prove that the applicant was not prevented from "continuing the proceedings" in the period between 28 January and 7 April 2021. Interruption is to be applied ex officio, and the Legal Board is not bound by the applicant's statement of 5 December as the starting point. Hence, submitting a letter on 8/9 December 2020 does not exclude that grounds for interruption existed at (some point) during the period of filing the reply to the search opinion with further processing, which ran from (at least) 28 January 2021 (without prejudice to the possibility of using further processing between the date of the loss of rights and the notification of the loss of rights)
• "In accordance with the case law of the Boards, bankruptcy proceedings can only lead to an interruption of proceedings when, if no specific circumstances are present, the action taken against the property of the applicant indeed makes it impossible for the applicant to continue the proceedings (see J 11/95, J 26/95 and J 11/98)."
• J 26/95:  "The decisive criterion for interruption is whether the action against the property is such as to make it legally impossible for the applicant to continue with proceedings." (underlining added)
• J 11/98: "No such special circumstances have been substantiated in the present case, which could be compared to the exceptional case underlying unpublished decisions [J 9/94] and [J 10/94], in which it was regarded as being analogous to a case of legal impossibility because the applicant, as a consequence of an action against his property, did not have at his disposal any remaining property by means of which he could have effected the required payment and where he was thus placed in a situation where it was factually and legally impossible for him to continue the procedure before the EPO, because he was devoid of any financial means whatsoever with which to pay the required actions, see decision J 26/95, point 4.5 of the reasons. "
• J 9/94: headnote in translation: "Rule 90(1)(b) EPC does not require that an action against the property of the applicant for or proprietor of a European patent be a judicial action. Where an action or actions have been taken against the property of the applicant for or proprietor of a European patent, it is appropriate to determine, in order to stay the proceedings, whether the action or actions had the effect of making it impossible for him, in fact or in law, to continue his proceedings before the EPO."
• As a further comment, this consistent case law shows that the factual possibility of acting in the procedure, does not rule out that it is legally impossible to do it and hence that there is an interrpuption. In the present case, the Legal Board does not address the issue of whether the letter of the professional representative of 8/9 December 2020, after the US legal event affecting the applicant, was legally proper. Perhaps, by bankruptcy, any power of attorney also becomes ineffective (Nemo dat quod non habet), though I would have to check national law.
• None of J11/95 (refusal to issue a priority document), J26/95 (Chapter 11 Reorganization) and J11/98 (Chapter 11 Reorganization) were about bankruptcy in the strict sense, it seems. Hence, the remark in the present decision that "In accordance with the case law of the Boards, bankruptcy proceedings can only lead to an interruption of proceedings when, if no specific circumstances are present, the action taken against the property of the applicant indeed makes it impossible for the applicant to continue the proceedings" should probably be understood as "bankruptcy proceedings in the broad sense can only lead to an interruption of proceedings when ... the action taken against the property of the applicant indeed makes it impossible for the applicant to continue the proceedings". However, then the preceding sentence in the decision is unclear: "Even if the Board agreed with the appellant that the Article 9 US UCC procedure constituted a procedure equivalent to bankruptcy proceedings, this would still not lead as such to the interruption of proceedings under Rule 142(1)(b) EPC."
• The Board does not analyse Article 9 US UCC in any detail. So we must assume that the outcome is the same as in the case that a 'classical' bankruptcy had happened on 5 December, but for whatever reason, the professional representative had still filed the letter on 8/9 December (e.g. possibly, as not being informed of the bankruptcy or similar event on 5 December).
• J26/95, J11/98, J9/94 and J10/94 concern a missed time limit for paying a fee. Interruption of the proceedings was applied in those cases. The Boards in those cases did not analyse if the applicant could perhaps have performed another action than paying a fee, e.g. filing a request for extension. It seems to me that the possibility of submitting a letter would not have negated the interruption. The implications of this observation for the present case, however, requires more study.
•  According to J 16/05 the rationale of Rule 90(1)(b) EPC 1973 (corresponding to Rule 142(1)(b) EPC) was to protect parties not able to act in the proceedings for the defined legal reasons against a loss of rights which would otherwise occur, until such time as the EPO could resume the proceedings under Rule 90(2) EPC 1973 (Rule 142(2) EPC)."" (cf. J 12/19) (underlining added)
• In conclusion, the present decision is difficult to understand. 
• It seems that no decision has been taken yet on the request for re-establishment. That is the competence of the Examining Division and the Board of Appeal in any appeal (whether it will be the Technical Board or the Legal Board, depending on whether a legally qualified examiner will be added to the Examining Division (see e.g. T1570/20). 
  
  
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EPO 

T 1977/22 - Open ended ranges for desirable properties

Key points

• Claim 1: "1. An inorganic composite oxide material, comprising: (a) from 25 to 90 pbw [parts by weight] Al2O3; (b) from 5 to 35 pbw CeO2; (c)(i) from 5 to 35 pbw MgO, [...] and (d) optionally up to 10 pbw of a combined amount of oxides of one or more dopants selected from transition metals, rare earths, and mixtures thereof, and exhibiting a BET specific surface area: of greater than 150 m**(2)/g"
• In the technical field, a high specific surface area (high porosity) is a desired property.
• T 595/90 (Kawasaki steel) is well known (in the chemistry field, especially for materials) for its headnote that " A product which can be envisaged as such with all the characteristics determining its identity including its properties in use, i.e. an otherwise obvious entity, may become non-obvious and claimable as such, if there is no known way or applicable (analogy) method in the art to make it and the claimed methods for its preparation are the first to achieve this and do so in an inventive manner ". 
• Incidentally, the headnote is obiter in T 696/90 as the preparation method was found to be obvious, the product claim accordingly as well, and the patent was revoked.
• The present Board: "When an invention is defined in terms of a desideratum, sufficiency of disclosure is generally assessed on the basis of the principle of reproducibility over the whole scope, which was proposed and developed in a number of early landmark decisions (see in particular T 435/91, T 292/85, T 226/85, T 409/91, and G 1/03)."
• The Board provides a useful review of the existing case law on the topic.
• "The most controversial aspect in the underlying discussion is the burden to be applied for determining whether the information at hand would enable the skilled person to reproduce the open-ended range over the whole scope of the claim, in particular because the interpretation of the concept "over the whole scope" is not straightforward when applied to a range with no specific upper limit. 
• " In summary, the board considers that the key criterion for enabling a technically challenging open-ended range desideratum over the whole scope of the claim is the provision of teachings demonstrating that, by operating within the scope of specific (essential) structural and/or process features, the skilled person would be in a position to achieve multiple variants of the invention without undue effort i.e. embodiments with different parametric values falling within the open-ended range. If this condition is met, an invention that defines both the open-ended range desideratum and the essential structural and/or process features required to achieve it may, in principle, be considered reproducible over the whole scope (at least with regard to the reproducibility of the open-ended range itself), irrespective of how far the numerical values can be extended beyond the lower end of the open-ended range. "
• Not sure if this means that three examples at 151, 152 and 154 m**(2)/g are sufficient to support the entire range "at least 150 m**(2)/g".
• The Board: "While it might have been open to discussion whether the process proposed for producing the composite oxide (or at least certain steps thereof) should also be considered an essential aspect of the invention (i.e. necessary to achieve parametric values within the open-ended range) and thus defined in the claim, the opponent explicitly stated that its argumentation did not rely on this point. The board also found no justification for introducing this argument ex officio."
• "Since the composite oxide in claim 1 at issue does not only define the open-ended range desiderata but also the above mentioned structural features (i.e. the metal oxide components and their amounts) considered to be essential for achieving parametric values within the claimed range, the board concludes that the open-ended ranges desiderata defined in claim 1 at issue are enabled by the teachings in the patent and that the invention is reproducible over the whole scope of the claim."
• To approach the matter from a different angle, if the claim had defined the composition only in terms of the chemical composition, such a product claim could have been perfectly fine and would not be limited to any particular range for the specific surface area. This aspect of product claims is not entirely free from criticism in the literature but is uncontroversial in the case law of the EPO. 
• Furthermore, under T 595/90, it is fine to have the desirable property as the distinguishing feature of the product claim. 

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

On petition for review cases and clearing the backlog

Key points

(updated 18.06.2025)

• The announced measures for clearing the backlog of petition for review cases are being implemented, and the difference with the situation in 2024 is quite impressive.  
• 
  
• R 6/21: negative preliminary opinion 13.01.2025, withdrawal request for oral proceedings 06.02.2025. No written decision yet.
• R 7/22: oral proceedings on 18.02.2025, decision online 18.06.2025
• R10/22: oral proceedings 01.04.2025, written decision 28.05.2025
• R 15/22: oral proceedings 15.03.202, no written decision yet at the time of writing.
• R 16/22: concerns case T 2175/22, with four decisions of the BoA as of yet. The appeal was withdrawn. This published decision shows the application number. The petition for review is not visible in the online file. 
• R 1/23: oral proceedings 31.01.2025. No written decision yet.
• Note, there is no official time limit or target for issuing the written decision in petition for review cases, unlike what is provided in Art. 15 RPBA.
• R 3/23: pending, preliminary opinion 18.03.2025
• R 6/23, R9/23, R10/23: pending, preliminary opinion was issued.
  R 11/23 - forwarded to five-member panel. Oral proceedings 28.07.2025.
• R 12/23: negative preliminary opinion of 21.08.2024. No further action yet.
• R 13/23: oral proceedings 20.01.2025. No written decision yet.
• R 14/23: oral proceedings on 20.01.2025. No written decision yet. 
• R 16/23: five-member panel
• R 17/23: oral proceedings 24.02.2025. No written decision yet.
• R 18/23: preliminary opinion 21.02.2025. 
• R 01D/23: no access to the online file (concerns decision D 33/22 about an EQE appeal)
  
  
• R 1/24: oral proceedings 10.03.2025.
• R 2/24: preliminary opinion 10.04.2025
• R 3/24: summons issued.
• R 4/24: summons issued.
• R 5/24: five-member panel, and summons issued. 
• R 6/24: summons issued, five-member composition.
• R 7/24: summons issued.
• R 8/24: preliminary opinion 19.03.2025
• R 9/24: preliminary opinion issued 19.0.2025.
• R 10/24: summons issued 18.03.2025
• R 11/24: deemed not filed for failure to pay the fee (link)
• R 12/24: summons issued 10.02.2025.
• R 13/24: oral proceedings 03.12.2024. No written decision yet (!)
• R 14/24: preliminary opinion 19.03.2025
• R 15/24: summons 03.04.2025.
• R 16/24: preliminary opinion 07.04.2025
• R 17/24: decision issued.
• R 18/24: summons issued.
• R 19/24: petition withdrawn after summons with preliminary opinion 16.12.2024.
• R 20/24: summons issued 17.04.2025
• R 21/24: summons issued 17.04.2025
• R 22/24: summon sissued 03.04.2025
• R 23/24: summons issued 18.03.2025.
• R 24/24: summons issued 24.01.2025
• R 25/24: the oldest case with no action of the EBA yet. Pro se case.
• R 26/24: summons issued 14.04.2025.
• R 27/24: the  "oldest" petition for review filed by a professional representative (on 18.11.2024) with no action of the EBA yet.

• R 29/24: Petition filed on 10.12.2024. Summons issued on 10.02.2025.Preliminary opinion on 07.03.2025. Oral proceedings on 13.05.2025 (now we are talking). Petition withdrawn 13.05.2025.
• The opposition and appeal of the opponent were withdrawn on 19.05.2025; the opponent was the sole appellant. The TBA had decided to maintain the patent in amended form. 
• R 1/25: summons on 03.04.2025
• R 2/25:  summons 23.05.2025 with preliminary opinion.
• R 6/25: summons on 29.04.2025; on a substantiated request of the "respondents" (not actually parties in the three-member panel stage), the oral proceedings were advanced from 12.01.2026 to 12.09.2025.
  
  

• The backlog of petition for review cases no longer appears to be a graveyard where you can buy approximately three years' pendency of your patent or application for a modest fee. 
• For sure, the EBA will also issue the written decisions in petition for review cases without any (undue) delay. Would three months be reasonable?

The number of pending cases

Key points

• The number of pending cases decreased from 9234 in 2019 to 3387 in 2024, according to the Annual Report of the Boards. 
• The number of cases older than 24 months decreased from 4259 to 729.
• Congratulations to the Boards for achieving this objective. 
  
  
  

https://link.epo.org/web/case-law-appeals/annual-reports/en-Annual-report-of-the-BoA-2024.pdf 

T 0990/23 - When the 1600 examples pay off

Key points

• "As submitted by the respondent, the application as filed discloses more than 1600 compounds containing the same central conserved region of the claimed structure Ib-iii (point II above), for which activity as CFTR modulators has been demonstrated (see table 3 on pages 1190 to 1224 of the patent corresponding to pages 1392 to 1426 of the application as filed)."
• "This conserved region, which distinguishes the compounds of granted claim 1 from D12 (see point 7 above), is thus a structural feature associated with CFTR modulator activity. In fact, the examples of the application as filed confirm that varying the substituents while maintaining the same central moiety does not affect CFTR modulator activity."
• " At no point has the appellant [opponent] provided any evidence that the claimed compounds are inactive. Moreover, the examples provided in the patent are structurally diverse with respect to the substituents on the conserved central moiety. As illustrated by the respondent, at least 37 different ring moieties are exemplified for the group represented by ring C in formula Ib-iii, including mono-, bi- and spiro-cyclic rings, and including heteroaryl and heterocyclic rings; similarly, at least 153 different moieties are exemplified for variable R2, and at least 94 different moieties are exemplified as substituents on the R1 to R4 variables. Therefore, the board agrees with the respondent that the scope of the claims is commensurate with the examples. In the absence of any proof to the contrary, the appellant's argument that the CFTR modulating activity is not achieved across the whole claimed scope amounts to mere speculation."
•  "Therefore, the board concurs with the respondent's view that it is credible that the CFTR modulator activity is achieved across the whole claimed scope. Hence, the rationale of decision T 415/11 invoked by the appellant does not apply to the case at hand."
• Just for completeness' sake, what is examined here is the evidence that the asserted technical effect is actually achieved over the scope of the claims, see T 939/92.
• "Therefore, the objective technical problem has to be formulated as being the provision of alternative compounds useful as modulators of CFTR."
• (....)  "For these reasons, the board concludes that the subject-matter of claim 1 as granted involves an inventive step within the meaning of Article 56 EPC. Therefore, the ground for opposition under Article 100(a) EPC does not prejudice maintenance of the patent as granted."

EPO 

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

T 0006/23 - A remedy for an incorrectly admitted document

Key points

• "During the oral proceedings, the opposition division admitted D30. The opposition division concluded on the basis of D30 that a technical effect could not be acknowledged over the whole scope claimed. In view of this conclusion, the opposition division denied inventive step and revoked the patent."
• The proprietor appeals.
• The case law is clear, it seems, that the Board can not "unadmit" D30.
• The proprietor had requested a postponement of the oral proceedings before the OD.
• " In its decision concerning the admittance of D30 (decision under appeal, page 6, point 4), the opposition division did not give any reason why it was not granting the appellant [proprietor] more time by postponing the oral proceedings. The opposition division's decision is thus not reasoned, contrary to Rule 111(2) EPC. For this reason alone, the appellant's right to be heard has been violated (Article 113(1) EPC)."
• "The board agrees with the appellant's view that it did not have sufficient time to properly respond to D30 before or at the oral proceedings. Since the opposition division admitted D30, it should have granted a postponement of the oral proceedings to preserve the appellant's right to be heard."
• "Moreover, the appellant had promptly reacted to the opponents' objection, raised in their notices of opposition, that no technical effect could be attributed to the claimed subject-matter, namely by filing experimental data with the reply to the notices of opposition. By contrast, as noted by the appellant, opponent 1 had waited almost one year from that reply and nine months from the opposition division's preliminary opinion to file experimental report D30, which was not filed until the final date for making written submissions under Rule 116(1) EPC."
• "By not postponing the oral proceedings and not considering the appellant's argument that it did not have sufficient time to properly respond to D30, the opposition division violated the appellant's right to be heard (Article 113(1) EPC). Moreover, the opposition division violated the principle of fairness towards the parties by allowing opponent 1 to take almost one year to file its evidence while forcing the appellant - by rejecting its request for postponement of the oral proceedings - to file a response (such as A33 and A35 and related arguments) including experimental counter-evidence (such as A34) within two months."
• "The opposition division has thus committed a procedural violation."
• "this procedural violation is substantial since the lack of inventive step is the sole ground on which the opposition division revoked the patent, basing its finding precisely on the experimental report "
• The decision is set aside and the case is remitted.
• The appeal fee is reimbursed.
• The current appeal took two years, during which the patent is in force. 

EPO 

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

T 0823/23 - Admissibly raised and the Guidelines

Key points

• For the 'admissibly raised' prong of Art. 12(4) RPBA, should the Board consider the GL like the OD would have done, should the OD have arrived at the request or attack?
•  In point 6.1 of its communication dated 6 July 2022, the opposition division stated that this fresh ground of opposition could have already been raised against the patent as granted with the notice of opposition. The division indicated its intention not to admit the ground into the opposition proceedings due to a lack of prima facie relevance, referring to Article 114(2) EPC. However, this was only a preliminary opinion, and the opposition division did not take a final decision on this issue."
• Not sure how this happened, by the way: "the opposition division stated in its written preliminary opinion that it did not intend to admit a new ground of opposition under Article 100(b) EPC concerning auxiliary requests 3 and 4 (see point 6.1 of the communication dated 6 July 2022) and decided that the patent as amended on the basis of the main request (filed as auxiliary request 1 during the preceding appeal proceedings with the letter dated 15 September 2017) met the requirements of the EPC."
• Not deciding on an attack is a substantial procedural violation, isn't it?
• " In other words, the objection under Article 100(b)/83 EPC is a "carry-over objection", i.e. an objection which was raised and maintained in the opposition proceedings but which was not decided upon in those proceedings, neither with regard to its admittance nor in substance, due to the allowability of a claim request that ranked higher than the claim request against which the objection under Article 100(b)/83 EPC had been raised."
• "The RPBA do not define what is meant by a submission being admissibly raised in the proceedings leading to the decision under appeal. Having said this, the ordinary meaning of the term "admissibly" indicates a reference to admittance, and the reference to the "proceedings leading to the decision under appeal" makes it clear that the circumstances of the proceedings leading to the decision under appeal are decisive, as opposed to the circumstances of the appeal proceedings in which the notion of "admissibly raised" as per Article 12(4) RPBA is assessed."
• "When assessing how a department of first instance would have exercised its discretion (assuming legally correct and reasonable conduct), the Board uses the criteria which the department of first instance would have had to apply. The case law of the Boards of Appeal on reviewing the exercise of discretion in examination proceedings (see for example T 937/09, Reasons 3.4 and 3.5, and T 573/12, Reasons 3.3 and 3.4) and opposition proceedings (see for example T 1930/14, Reasons 22, and T 84/17, Reasons 2.2) can provide guidance for assessing how a department of first instance would have exercised its discretion."
• Compare T 0246/22: " 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."
• I see the point of T 0246/22, but still the approach of T 0823/23 seems more practical for the procedure as a whole. 
• " A board may also take account of the Guidelines for Examination in the European Patent Office ("the Guidelines") when assessing how a department of first instance would have exercised its discretion. This, in principle, is no different from a board taking account of the Guidelines when reviewing the actual exercise of discretion by a department of first instance in the context of Article 12(6), first sentence (see T 435/21, Reasons 3.1, fifth sentence, and T 1088/20, Reasons 4.3.3) or second sentence (see T 1990/20, Reasons 4.2), RPBA. While the Guidelines are not binding on the Boards of Appeal in view of Article 23(3) EPC, they are - as general instructions pursuant to Article 10(2)(a) EPC - to be taken into account by the departments of first instance. However, the Guidelines do state that they do not constitute legal provisions and that, for the ultimate authority on practice in the EPO, it is necessary to refer firstly to the EPC itself and secondly to the interpretation of the EPC by the Boards of Appeal and the Enlarged Board of Appeal (General Part, section 3, General remarks). Against this background, a board's consideration of the Guidelines when assessing whether a submission was admissibly raised within the meaning of Article 12(4) RPBA does not appear to cause any issues."
  
  
• "Taking these criteria into account, the Board concludes that the objection under Article 100(b)/83 EPC - and fresh ground of opposition - was not admissibly raised in the opposition proceedings, for the following reasons. Since the case had already been remitted to the opposition division once, the procedure was at a very advanced stage when the objection was raised for the first time. There was no good reason for the belated submission either. The subject-matter of claim 1 of auxiliary request 3 corresponds to the subject-matter of claim 5 as granted. Hence, any lack of sufficiency of disclosure would have also been present for the claims as granted and therefore could and should have already been addressed within the opposition period."
•  Furthermore, ... . Hence, the objection was prima facie not relevant in the opposition proceedings."" 
• " Exercising its discretion under Article 12(4) RPBA, the Board thus decided not to admit the objection under Article 100(b)/83 EPC into the appeal proceedings."
• "  in the case in hand the applicability of G 10/91 to raising the objection under Article 100(b)/83 EPC in the appeal proceedings can ultimately be left open. Restrictions on new submissions by an opponent pursuant to G 10/91 and a board's discretionary power not to admit late-filed party submissions under Article 114(2) EPC in conjunction with Articles 12 and 13 RPBA are separate from each other and must be applied in a cumulative manner (see T 1042/18, Reasons 4.5). "

EPO 

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

T 0213/23 - Diluted seawater

Key points

• D10 is "D10: L'Eau de Mer... 1904 Rene Quinton Book"
• "D10 is a book published in 1904 and written by Mr Quinton. It indicates that the composition of seawater is different depending on its origin (see page 217). Page 219 of D10 shows the composition of seawater of different origins, while page 223 indicates that seawater contains nitrite or nitrate. The Table of D10 reproduced by the appellant on page 21 of its statement of grounds of appeal gives the concentrations of elements in seawater which do not fall under the scope of the claim. For instance, it can be easily calculated from the amounts of NaCl in 1L of seawater of different sources that the concentration of chlorine or sodium, is above 400 mmol/L."
• Claim 1:  "1. Isotonic crystalloid aqueous solution, comprising Na**(+) ions in a range comprised between 50 and 200 mmol/ L, K**(+) ions in a range comprised between 1 and 10 mmol/ L, Cl**(-) ions in a range comprised between 50 and 200 mmol/L, characterized in that it has nitrate ions or nitrite ions or mixtures thereof in a range comprised between 0.0001 mmol/L and 1 mmol/L and at least a chemistry element selected from: Li, Be, B, Al, Si, P, Sc, V, Cr, Mn, Fe, Co, Ni, Cu, Zn, As, Br, Rb, Sr, Y, Zr, Mo, Pd, Ag, Sn, Sb, I, Cs, Ba, Ce, Au, Tl, Pb, Bi, Th and U."
• "D11 and D12 are extracts of the "Dictionnaire Vidal" from respectively 1966 and 1975. They indicate that the "Plasma de Quinton" is a dilution of natural seawater which can be either isotonic or hypertonic, and which can be used as blood reconstitution product. None of these documents gives however the exact composition of the product "Plasma de Quinton". Furthermore, none of these documents indicates how much the seawater was diluted to obtain the product Plasma de Quinton."
• "Consequently, it is not possible to conclude that the product "Plasma de Quinton" is novelty-destroying in the absence of any precise qualitative or quantitative information on its constituents."
• The opponent is  "Laboratoires Quinton International, SL" 
• It currently sells "Plasma de Quinton is a 100% natural seawater isotonic solution. It is a dietary supplement made from pure seawater, collected from phytoplankton vortexes and subsequently diluted with spring water, which has very low mineralization. It undergoes a cold microfiltration process at 0.22 microns in order to ensure total safety." (https://quintonmedical.com/quinton-plasma) 
• Of course, this does not give any information about the composition of this commercial product. 
• " The claimed invention relates to an isotonic crystalloid aqueous solution used to replace fluids, primarily blood, which does not present oncotic pressure per se and which intends to yield better results than the already known blood substitute solutions or a solution of ionic solutes"
• "D10 as closest prior art - D10 is a book dated 1904 and relating to seawater which comprises 519 pages. The appellant cited page 459 as possible starting point, where it is disclosed that seawater can be injected to treat different diseases, without any mention of the use as blood substitute. There is furthermore no information, neither in D10, nor in D11/D12 on the degree of dilution of the seawater in the product "Plasma de Quinton" or of the origin of the seawater, and therefore on the final concentration of all possible elements originating from seawater. In the Board's view, assessing inventive step starting from a document that does not provide any clear information regarding the composition and pharmacological properties of the relevant product can only be made with the benefit of hindsight."

• " Accordingly, the Board considers that the claimed invention is inventive over D10. In the Board's view, there is indeed no teaching in any of documents D10, D11 or D12 to adapt or change the concentrations of the seawater elements in order to arrive at the claimed subject-matter. The argument of the appellant that the different elements can be easily changed with distilled water is a clear ex post facto analysis and cannot be followed."" 

• "D1 discloses physiologically acceptable aqueous solutions for use as plasma substitute comprising a carboxylic acid as a dynamic buffering system, an oncotic agent selected from a simple sugar or hydroxyethylstarch (hetastarch), and a buffer"

• "The patent provides a comparison between a composition according to the invention shown in Table 1 and the Plasmalyte® solution which does not comprise any nitrite/nitrate and/or metal, but includes acetate and gluconate (cf. Table 2 of the specification). The solution of the present invention showed an effect comparable to the administration of whole blood and a clear improvement with regard to the Plasmalyte® solution "

• "In view of these results, the Board is of the opinion that the problem over D1 should be defined as the provision of an improved blood substitute composition."

• " There is no suggestion or incentive in D1 to add other compounds such as a metal compound or a known vasodilator, such as a nitrite or a nitrate, or to replace the oncotic agent in the disclosed compositions. Accordingly, the claimed solution appears to be inventive over D1."

• The appeal of the opponent is dismissed.

EPO 

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

T 2174/22 - Putting pointers in the OTP

Key points

•  The technical problem should contain no pointers to the claimed solution. So, can you never use the distinguishing features of the claim in the formulation of the objective  technical problem?
• This decision illustrates that sometimes, using the distinguishing features in the formulation of the OTP is fine. 
• Claim 1 reads: ""1. A composite oxide consisting of cerium, silicon, oxygen, and at least one element selected from yttrium and rare earth metal elements other than cerium, wherein a mass ratio of said cerium to said at least one element is 85:15 to 99:1 in terms of oxides, wherein a content of said silicon is 5 to 20 parts by mass in terms of SiO2 with respect to 100 parts by mass of a total of said cerium and said at least one element in terms of oxides, wherein said composite oxide has properties of exhibiting a specific surface area of not less than 40 m**(2)/g as measured by BET method [], and a reducibility represented by a percent of trivalent cerium in the composite oxide reduced from tetravalent cerium of not lower than 40% as calculated from measurement of temperature-programmed reduction from 50°C to 900ºC after calcination at 1000ºC for 5 hours.""
• " The subject-matter of claim 1 at issue thus differs from D4 in that the composite oxide is doped with yttrium or rare earth metals other than cerium in a mass ratio of cerium to the other element of 85:15 to 99:1 and in the achievement of the above mentioned parametric values."
• "The invention therefore solves the problem of providing an alternative doped ceria with high specific surface area and reducibility after calcination."
• "In view of the above considerations, the board concluded that a skilled person starting from document D4 and seeking to find an alternative ceria composite with high specific surface area and reducibility after calcination would, in view of the teachings in D4 and common knowledge, contemplate incorporating rare earth metals into the silica-doped ceria of this document. The subject-matter of claim 1 is therefore obvious in view of document D4. The requirements of inventive step under Article 56 EPC are therefore not met."
• "even though D4 does not specify the specific surface area and reducibility after calcination under the conditions defined in claim 1 at issue, the values disclosed in this document (i.e. a specific surface area of 168 m**(2)/g (not clear if after calcination or in the fresh material) and 80% reducibility after calcination at 923K), as well as those achieved in D8, clearly show that both the specific surface area and the reducibility after calcination in D4 are within the ranges defined in claim 1 at issue (specific surface area of not less than 40 m**(2)/g after calcination at 900°C for 5 hours and reducibility not lower than 40% after calcination at 1000°C for 5 hours)."
• "Since none of the requests submitted by the proprietor is allowable, the patent shall be revoked."

EPO 

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

T 1544/22 - To which the parties have an absolute right under Article 116 EPC

Key points

• The catchword of the decision is that "Submissions which are merely a refinement of arguments previously submitted and which further illustrate a party's position, must be allowed even if they are late filed." (comma omitted). 
• This is in agreement with the landmark decision J 14/19 (r.1.8) on the RPBA 2020, but is good to see it recalled by the Board.
• Also interesting: "In particular, oral proceedings, to which the parties have an absolute right under Article 116 EPC, would serve no purpose if such refinements were not allowed (see also decision T 247/20, Reasons point 1.3)."

EPO 

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

T 1991/23 - (II) When a witness must be heard on request of the other party

Key points

• The OD decided that an alleged public prior use exhibited all features of claim 1. The proprietor appeals. 
• "The appellant alleged a violation of the right to be heard, inter alia, due to the failure to comply with a request for evidence submitted by it "
•  
• The relevant section of paragraph 23.2 of the contested decision reads as follows: "The patent proprietor further requested that Mr. Grzegorz GALEZOWSKI and Ms. Sylvia BUCHER be heard as witnesses regarding the public prior use. The notice of summons stated that the Opposition Division did not intend to hear the witnesses nominated by the patent proprietor, since the burden of proof lies with the opponent and it is the responsibility of the opponent, not the patent proprietor, to select, present, and request appropriate evidence. If the Division concludes that the allegations are sufficiently proven, the patent proprietor could submit counter-evidence and request the hearing of rebuttal witnesses. The patent proprietor subsequently did not request the hearing of rebuttal witnesses.""" 
• "In this context, attention is drawn to the relevant passage on pages 4 and 5 of the appellant’s statement of defence dated 18 September 2019, which reads as follows:

  "The patent proprietor therefore requests - only conditionally, namely in the event that the opposition division finds that the alleged prior use is relevant (see below) - for legal certainty under Art. 117 and R. 117 EPC and for reasons of procedural economy, the hearing of actual witnesses on the facts of the case, namely: Mr Grzegorz GALEZOWSKI (author of the email in Annex A3) to the address in Annex A3" [....]

• " The condition that the opposition division finds the prior use relevant (OV1) has been met, and the opposition division does not provide sufficient reasons in its decision for not summoning the witnesses offered by the patent proprietor. The reference to the notice of summons, in which the opposition division stated that it did not intend to hear the witnesses nominated by the patent proprietor, since the burden of proof lies with the opponent and it is the responsibility of the opponent, not the patent proprietor, to select, submit, and request appropriate evidence, cannot justify this. "

• " First of all, it is incorrect that a party to the proceedings should generally be excluded from submitting evidence on factual issues for which another party bears the burden of proof. The (substantive) burden of proof determines to whose disadvantage the inability to clarify a factual situation affects. However, this does not mean that only the party to the proceedings with the burden of proof may contribute evidence to clarify this matter. Irrespective of this, the opposition division ultimately considered the disputed prior use to be proven, which is why its statement in the summons that the patent proprietor could present counter-evidence in this case became relevant."" 

• " The Board considers that the Opposition Division's statement that "the patent proprietor subsequently did not request the hearing of rebuttal witnesses" is incorrect. The appellant requested that Mr. Grzegorz Galezowski and Ms. Sylvia Bucher be summoned as witnesses. This request was not withdrawn by the appellant and did not need to be repeated."

• " In the Board’s view, the Opposition Division’s approach constitutes a violation of the right to be heard within the meaning of Article 113(1) EPC and thus constitutes a substantial procedural violation."

EPO 

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

T 0449/23 - (V) On deleting independent claims

Key points

•  In AR-6, two independent claims are cancelled. Is this a case amendment under Art. 13 RPBA?
• "The board is also aware of the existence of two lines of case law, one according to which a deletion of (an alternative in) an independent claim is always an amendment in the sense of Article 13(2) RPBA and one according to which the deletion of (an alternative in) an independent claim represents an amendment in the sense of Article 13(2) RPBA only if this deletion alters the factual and legal framework of the proceedings (see in this regard Case Law Book, V.A.4.2.2 d))."
• " The board does not agree with the latter approach for the reasons set out in T 2091/18 (reasons, point 4), agreeing with the conclusions set out in T 1569/17 (reasons, point 4.3.1). In summary, Article 12(3) RPBA provides that the statement of grounds of appeal and the reply must contain the complete appeal submissions of a party. According to Article 12(2) RPBA, the grounds of appeal or reply must be directed inter alia to the requests on which the contested decision is based. As the Legal Board of Appeal explained in J 14/19 (reasons, point 1.4 and 1.5), it follows by implication that submissions by the parties that are not directed to the requests contained in the statement of grounds of appeal or reply have the effect of amending the appeal submission."
• "Hence, any new and amended claim request is to be considered as an amendment to the party's appeal case."
• This appears to be the prevailing view in the case law as of now, see e.g. recent decisions T 1993/22 and T 0951/22; and from 2024: T 2084/22; T 0496/19 ; T 1673/22; 
• "In the view of the present board, this is the only reasonable interpretation of an "amendment to a party's appeal case" in the meaning of Article 13(2) RPBA. In the present case, the patent proprietor's appeal case set out in its statement of grounds and its reply was based on the main request and auxiliary request 1. Since according to Article 12(3) RPBA these submissions contain the patent proprietor's complete case, it follows that through its claim requests, the patent proprietor implicitly indicated at the outset of appeal proceedings that it was not interested in, and did not intend to pursue the maintenance of the patent on the basis of only some of the claimed alternatives, e.g. on the basis of claim requests in which certain independent claims, or certain alternatives within independent claims are deleted."
• " In the view of the board, the filing of a new claim request must always have a substantive purpose related to the potential outcome of the patent proprietor's appeal case, since otherwise there would be no need for the patent proprietor to file it and request its admittance into the proceedings. "
• "" If a claim request comprises an independent claim comprising alternatives, and the opponent argues that a certain alternative is not allowable, then, in the absence of further claim requests comprising an independent claim with said alternative deleted, it is legitimate for the opponent to rely on the assumption that, should the independent claim be deemed not allowable on the basis of said alternative, other alternatives will not be pursued. The filing of claim requests shortly before or during oral proceedings before the board, which for the first time lack the alternative to which the opponent's objections were formulated, must be objectively seen as an unforeseeable change of the framework of the appeal proceedings. Even if the subject-matter of the remaining alternatives was encompassed by the claims of previously pending claim requests, the deletion of the contested alternative creates a new object which shifts the discussion in that the amendment "moves the target" out of the focus of the objections that have been debated on appeal. Therefore, the deletion of a critical alternative in a set of claims also represents an amendment of the proprietor's appeal case in terms of Article 13(2) RPBA  [...]. At the final stage of the appeal proceedings, such change of the framework of the debate, which departs from the patent proprietor's previous conduct of the proceedings and for which the opponent cannot be reasonably expected to prepare, can indeed only be accepted in exceptional circumstances justified by cogent reasons and on condition that the opponent has a proper opportunity to react (Article 13(3) RPBA)."
• 
  

EPO 

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

T 1991/23 - (I) Review of findings of fact

Key points

• The issue is whether the alleged public prior use displayed certain features. The OD found it did. The proprietor appeals. 
• The Board, in translation: "Regarding the scope of the boards of appeal's power to review findings of fact made by the first instance, particularly where the latter has heard witnesses, the boards are the first and final judicial instance in proceedings before the EPO and thus the only judicial body that establishes facts both in fact and in law. Accordingly, at any stage of the appeal proceedings, the boards are empowered to establish the relevant facts of a case before them, thereby replacing the findings of fact made by the first instance (see T 1604/16, Catchword and point 3.1.6 of the Reasons, and T 1138/20, point 1.2.4 of the Reasons)."
• " It will therefore be examined whether the annexes A1 to A4, affidavits E1 and E2, witness statements Z1 and Z2, and visual inspection I1 cited by the opposition division sufficiently demonstrate that a honeycomb with all the features of claim 1 became publicly available. In particular, Mr. Denker's affidavit E2, the photograph in Annex A3, the transcript of Mr. Denker's examination of the witness (Z1), and the transcript of Mr. Huebner's testimony (Z2) are to be examined. "
• The Board concludes that these pieces of evidence do not demonstrate the presence of all features.
• Follows a detailed review of the evidence. 
• " In the Chamber's view, point 7 of Mr Denker's affidavit E2 does not make it clear, let alone directly and unambiguously, that both the mechanically adjusted offset of every second film layer and the centre-to-centre distance between all connecting areas along a longitudinal direction of a film had to be the same." 
• "In the Board’s view, neither the affidavit E2 nor the photograph in Annex A3 sufficiently demonstrate that the public prior use (OV1) directly and unambiguously discloses the features M1.3b and M1.5 in question."
• "In the Board's view, it cannot be deduced from the testimony of Mr. Denker (Z1) that the features in question, M1.3b and M1.5, were directly and unambiguously disclosed in the prior use product (OV1). "
• "Taking all the evidence (A1 to A4, E1, E2, I1, Z1 and Z2) into account, the Board is not convinced with the required degree of certainty that the prior use (OV1) directly and unambiguously discloses the combination of all the features of claim 1, in particular features M1.3b and M1.5."
• "The board cannot see why the claimed subject-matter should not involve an inventive step compared to the public prior use (OV1). In this context, particular account must be taken of the fact that the publicly used honeycomb (OV1) is a defective product with a distorted cell geometry, which differs substantially from the originally ordered catalog product (with a honeycomb structure made up of identical hexagonal cells, as shown on page 1 of Annex A4). The board cannot see why it would have been obvious to use this defective product as the starting point for a further modification, which also differs from the actual catalog product. There appears to have been no reason for doing so. Rather, a skilled person would recognize the obvious error, correct it, and produce the desired honeycomb structure."
• The decision does not speak of any requests fo the respondent/opponent to submit or take further evidence in appeal.

EPO 

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

T 0250/23 - Second medical use of bacteria

Key points

• This decision illustrates establihsed case law that bacteria are substances or compositions in the sense of Art. 54(4) and (5).
• Claim 1 in this case:   "Eubacterium hallii or relatives having at least 98% sequence identity with the 16S rRNA sequence of Eubacterium hallii, and/or Alcaligenes faecalis or relatives having at least 98% sequence identity with the 16S rRNA sequence of Alcaligenes faecalis, for use in preventing and/or treating insulin resistance and/or insulin resistance-related complications selected from metabolic syndrome, dyslipidemia, type 2 diabetes mellitus, and insulin resistance in endocrine diseases such as in obese subjects with type 1 diabetes mellitus, Cushing's disease and lipodystrophy syndromes"."
• The Board, on novelty: "As regards D6, it is uncontested that this document does not explicitly disclose the use of Eubacterium hallii in preventing or treating insulin resistance. Instead, this bacterium is described as a butyrate-producing bacterium in the context of energy metabolism. The only specific activity of butyrate-producing bacteria referred to in this document is that they are related to higher gut metabolic activity leading to overweight. In conclusion, there is not even an implicit disclosure concerning insulin resistance in D6."
  
  
• On inventive step:
  "D2 is a scientific publication which addresses a wide range of beneficial effects on human health that butyrate has. In the paragraph headed "Obesity and insulin resistance" D2 discloses, based on a referenced publication, that dietary supplementation with butyrate can prevent and treat diet-induced obesity and insulin resistance in mouse models. The conclusion presented is that butyrate may have a potential application in the prevention and treatment of metabolic syndrome in humans. " 
• " In the following, an inventive-step analysis is carried out based on the teaching of D2 that calls for butyrate as the active component."
• "the paragraph in D2 that specifically mentions insulin resistance is restricted to oral administration of butyrate as such. How far the active substance to be administered can be modified is a question to address under obviousness."
• "the problem to be solved is to provide prevention or treatment of insulin resistance and/or insulin resistance-related complications"
• "  Starting from the closest prior art, the skilled person would have had to decide not to administer a palatable formula of butyrate. Then, they would have had to choose not to modulate the intestinal flora (e.g. by modifying the lumen pH) but to administer butyrate-producing bacteria. Finally, they would have had not to select the specific butyrate-producing bacteria mentioned in D2 - which are stated to represent the most important groups of butyrate producers in the human intestine - but to look for other butyrate-producing bacteria."" 
• " D2 itself does not mention the use of micro-organisms for managing insulin resistance, and the only micro-organisms mentioned in D2 are not the ones of claim 1. The skilled person would have had no motivation to turn to D3 or D4, which mention Eubacterium hallii among other bacteria. To do all this starting from the closest prior art is considered to encompass more than routine measures."" 
• The claim is held inventive.

EPO 

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

T 0239/23 - Abstract and transfer (not for inventive step)

Key points

• Claim 1 is directed to "An oral pouched snuff product". Inventive step is to be decided on.
• " Combination document D2 discloses Tencel nonwoven materials which are made from regenerated cellulose comprising lyocell staple fibres"
• "it can be argued that the skilled person could have arrived at an oral pouched snuff product wherein the pouch comprises a Tencel nonwoven,[...]  However, the board is not convinced that they would have done so in the light of the areas of application of the Tencel nonwoven mentioned in D2. In the absence of any counter-argument by the appellant opponent 2, the board concurs with the appellant proprietor that the term coverstock in D2 refers to the top ply of a female hygiene product or a diaper. None of these products are suitably sized to be placed in the human mouth cavity. In addition to that, such coverstock is not used by itself in a female hygiene product or diaper - unlike a pouch for smokeless tobacco - but only in conjunction with further layers such as the absorbent core. "
• "Even if it were to be assumed that the skilled person, because of their knowledge of nonwovens and their manufacturing techniques, might have been familiar with the contents of document D2, the board believes that it is beyond their normal skills to abstract and transfer those techniques and the resulting material properties such as the basis weight of the nonwoven to a new field of application. This might have been so if document D2 had taught that Tencel fibre nonwovens are generally equivalent to, and exchangeable with nonwovens used in smokeless tobacco products, e.g. those used in D1. As that is not the case, the skilled person would need to recognize that the Tencel nonwoven used for filters, wipes and hygiene products can be applied elsewhere and would be suitable in particular for making pouches of smokeless tobacco products. In the board's view this goes well beyond their limited skills of abstraction. "

EPO 

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