T 1373/23 - Result to be achieved as distinguishing feature

Key points

• This is an examination appeal. I think the decision is in line with the established case law. Still it could be interesting.
• III. Claim 1 of the main request reads as follows.
• "An aluminum alloy product comprising: a pair of outer regions and an inner region positioned between the outer regions; wherein a first concentration of eutectic forming alloying elements in the inner region is less than a second concentration of eutectic forming alloying elements in each of the outer regions; wherein the aluminum alloy product comprises an aluminum alloy selected from the group consisting of 2xxx, 6xxx, and 7xxx series alloys, wherein the aluminum alloy product has a delta r value of 0 to 0.10; ""
• " D1 does not disclose the delta r value. Paragraph [0082] of the application as originally filed discloses that a high Mg content increases the delta r value. This is consistent with the examples in the patent application, which generally show an Mg content well below 1%. Therefore, the inclusion of the delta r value in the subject-matter of claim 1 is a limiting feature that is not necessarily met for all 2xxx, 6xxx, and 7xxx series alloys according to claim 1, in particular for 1.4% Mg, as disclosed for alloy 6-3 in paragraph [0041] of D1. Therefore, the subject-matter of claim 1 is novel over D1."
• Inventive step: "on comparing claim 1 with D1 it is immediately apparent that claim 1 aims at providing an isotropic material.
• It is proposed to solve this technical problem by the features of claim 1, which differ from D1, alloy 6-3 (D1: paragraph [0041]) in the claimed range for the parameter delta r, which is equivalent to a high isotropy."
• "The objective of obtaining a low delta r value is a definition in terms of a result to be achieved. "
• Hence, the claims specify the result to be achieved.
• "according to paragraph [00082] of the application as originally filed, a high Mg content results in high delta r values. Therefore the skilled person is given clear instructions on how to achieve that desired value without undue burden."
• Claim 1 does not recite a specific Mg content.
• "the subject-matter [cannot] be defined more precisely without restricting the scope of the invention. Alloying elements may interact to mutually influence their behaviour. Specifying a particular Mg content would not necessarily ensure that the delta r value would be achieved, nor would it necessarily ensure that all the claimed delta r values resulting from adjustment of the Mg value would be covered by such a claim (T 499/02, point 3.1)."
• "Even if the skilled person were to attempt to provide an isotropic material, they would receive no guidance from D1 or any of the other cited documents as to what measure to apply to the alloy 6-3 (D1: paragraph [0047]) in order to arrive at the claimed delta r value with any prospect of success."
• The claim is inventive.
• The case is an (implicit) application of T 595/90 Kawasaki Steel.

EPO 

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

T 1721/23 - Industry magazine as c.g.k.

Key points

• D10 is an article in a magazine from 2012 called "Surf" comparing fin boxes available on the market at that time. D10 was submitted with the statement of grounds of appeal as proof for common general knowledge."
• "The Board admitted D10 into the proceedings. In contrast to the patent literature D9, the disclosure of D10 is considered to be representative of common general knowledge in respect of different types of fins and fin plugs well known and available on the market before the priority date of the patent in suit."
• D10: Article "Slot-Machine", magazine SURF, 1-2/2012
• The case may seem of minor importance, perhaps. But I know of at least one technical field where  relevant prior art (and indeed common general knowledge) sometimes can be found only in some "industry journals / magazines". 

EPO 

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

T 0617/20 - Request apportionment of costs after withdrawal of appeal

Key points

• If the proprietor withdraws the appeal, can the opponent request a cost apportionment under Art. 104 ? Is it a problem that the withdrawal of the sole appeal is seen as automatically terminating the procedure.
•  "The Board holds that the admissibility of the request for apportionment of costs need not be strictly tied to those procedural events that could be seen as the closure of the appeal proceedings. There are two such events that lend themselves as the identifiable end point of the proceedings. First, the withdrawal of the appeal is going to automatically terminate the substantive appeal proceedings, without any additional action of the Board. The other possibility is the usually later effected formal closure of the appeal proceedings, where the Board takes note of the withdrawal and establishes, merely as a declaratory finding, that the appeal proceedings are terminated without a substantive decision and therefore closes the appeal proceedings also procedurally. This latter will normally be communicated to the parties within a few days after the receipt of the withdrawal of the appeal, so that towards the parties this would indicate that the appeal proceedings are now also formally closed. This happened also in the present case, cf. point VIII. above."
• "  However, there is no need to categorically exclude a request for apportionment following any of these two possible end points of the proceedings. "
• "at least since decision R 3/22 by the Enlarged Board of Appeal it has become clear that proceedings before a board of appeal may well come into existence also after the formal closure of the appeal proceedings"
•  In the opinion of this Board, there is no apparent reason why the same findings would not be transferable to the present issue before the Board. It seems undisputed that the issue of the cost apportionment is clearly an issue the arises out of or is in connection with the earlier appeal proceedings. The Board's competence to decide such issues also appears undisputed (see also T 0765/89, Reasons 1). Thus it appears that a request for apportionment submitted after the closure of the appeal proceedings will similarly open such ancillary proceedings, and again, there is no apparent reason why such ancillary proceedings would not be suitable to resolve also the issue on the merits, i.e. to decide whether a cost apportionment is equitable in the circumstances."" 
• "In summary, the Board considers that the request is not inadmissible for the sole reason that it had been filed after the closure of the appeal proceedings."
• On when to file the request: "the Board finds it more equitable to proceed on the assumption that a request that is prima facie submitted within a reasonable period of time in view of the circumstances, should be accepted as admissible, and without any detailed examination whether the party might have submitted the request already before the formal closure of the proceedings, or just one day earlier than it actually did. As set out above, there is simply no apparent reason for urgency and therefore the requesting party should not be burdened with the pressure of meeting a tight and badly defined time limit, which is anyway not known to it and on which it has practically no influence."
• "it seems sufficient to orient the expected reasonable time limit for filing a request for apportionment along the usual time limits applicable to proceedings before the EPO, namely the standard two months of Rule 132(1) EPC."
  
  
• On the merits of the request
• "The Board also accepts that the opponent 3 could have avoided costs if it had been notified about the intentions of the proprietor earlier. However, the mere fact that the costs of the opponent 3 possibly could have been avoided does not immediately establish that the proprietor acted in bad faith in this respect and therefore should be held financially liable through a cost apportionment under Article 104(1) EPC."
• "If, for the sake of argument, the Board were to accept that, in the present case, the proprietor was indeed under an obligation to give notice of withdrawal earlier, a number of questions would immediately arise: how much earlier should the proprietor have withdrawn the appeal in order to be free of financial liability to the other parties? On what factual and legal basis should the Board set such an earlier date? How could the representative of the proprietor have been expected to know that date? Did it have a duty to contact the other parties to enquire about the cancellation periods of their travel arrangements? Was it incumbent on the party and its representatives to arrange their own internal workflow to take these factors into account, e.g. to arrange a timely consultation on the case well in advance of the oral hearing, in order to avoid costs for the other parties (and thereby possibly incurring additional costs for themselves)?"
• "Where, as in the present case, there are many opposing parties, a party intending to withdraw the appeal might even be tempted to take part in the oral proceedings without any real interest in the outcome, merely in order to avoid the accusation that the costs of preparing for the oral proceedings were unnecessary and should be apportioned. For these reasons, the Board sees no culpable conduct on the part of the patent proprietor and no justification for awarding apportionment of costs, either in whole or in part."

EPO 

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

T 0045/22 - Need to submit further request before the OD even if you win (?)

Key points

• The OD found AR 48 to be allowable. Both parties appeal. Let's call AR-48 the default claims (in the sense if both appeals are dismissed, the patent is maintained in amended form with those claims). The default claims are AR-1 in appeal. The proprietor files AR2-6 with the reply to the appeal of the respondent. During the proceedings before the board, the proprietor withdraws the main request - i.e. withdraws its appeal, if I see it correctly. Hence, the default claims are still (A)R-1.
• The Board: " Claim 1 of the first auxiliary request lacks inventive step over D1 alone."
• Is AR-2 admissible? The opponent argues that it should have been filed before the OD.
• The Board: "the Proprietor should indeed have filed the present auxiliary requests then. First, as it was not at all clear at that point that the Opposition Division would find the new request ("48") allowable, the Proprietor should have been aware of the need to file further fallback positions."
• But the proprietor's bet worked and the OD found AR-48 allowable.
• Furthermore the OD could have very well give the proprietor another opportunity to file auxiliary requests during the OD when AR-48 was held unallowable (e.g., AR 47 was held to lack basis under Art. 123(2) (as the OD did), whereas AR-48 fails on novelty). The proprietor may have had a legitimate expectation in that sense. It may have been inappropriate to file auxiliary requests before the OD dealing with novelty when only Article 123(2) had been discussed yet.
• "Second­ly, even if the Proprietor had known (or trusted) that the Opposition Division would have allowed the new request, it should still have filed the requests in view of a likely, or at least possible, appeal by the Opponent and the strict rules on admittance according to the RPBA."
• This is circular reasoning, respectfully. Does the term 'should have filed' in Art. 12(6)(s.2) create an obligation to submit requests that the OD would not have considered, and create an obligation that does not exist in terms of the first instance procedural rules?
• How does this serve justice? How does this contribute to procedural efficiency? 
• The Board could have remitted if AR-2 addressed the inventive step issues of AR-1 over D1 for consideration of, say, inventive step over D2.

EPO 

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

T 0518/22 - Disclaimers and partial priority

Key points

• Partial priority and undisclosed disclaimers: are you ready?
• To jump to the conclusion: "Document D2 is thus prior art under Article 54(2) EPC for the subject-matter of claim 1 not enjoying priority, i.e. in relation to the "consisting" and "comprising" embodiments concerning SEQ ID NOs: 5 to 8, and prior art under Article 54(3) EPC for the subject-matter of claim 1 enjoying priority, i.e. in relation to the "consisting" and "comprising" embodiments concerning SEQ ID NO: 4."
•   The "comprising" embodiment in relation to SEQ ID NOs: 5 to 8 of claim 1 encompasses Type-A DNA polymerase mutants that are structurally identical to Taq mutants disclosed in document D2. Appellant I has not argued to the contrary. The fact that the patent does not call these polymerases Taq mutants but gives them a different name does not change the fact that these mutants are structurally identical."
• "Since the undisclosed disclaimer added to claim 1 in auxiliary request 2 (point 17 above) thus removes embodiments of document D2 which belong to the state of the art pursuant to Article 54(2) EPC and are not an accidental disclosure, such amendment is not allowable under Article 123(2) EPC. Auxiliary request 2 comprises therefore added subject-matter (G 1/03, Headnote 2.1 and G 1/16, OJ 2018, 70, Headnote)."
  
  
• On Article 13(2) RPBA: " As regards the validity of the patent's priority claim based on P the following is noted. In reply to the communication under Article 15(1) RPBA indicating the board's preliminary opinion that priority was not valid for the subject-matter of claim 1 of auxiliary request 2, appellant I has submitted for the first time the argument that embodiments of claim 1 in reference to SEQ ID NO: 4 were entitled to claim a partial priority from P. "
•  Since appellant I introduced the issue of partial priority of certain embodiments of claim 1 in response to the board's communication shortly before the oral proceedings, appellant II could not have submitted their counterarguments on this issue earlier than at the oral proceedings. The board found merit in appellant I's arguments on partial priority of claim 1 and considered it a legitimate reaction to the board's preliminary opinion. For reasons of equity, the board therefore admitted into the proceedings the new lines of arguments on partial priority of both appellants. The same applied to appellant II's new line of argument under lack of novelty over document D2 in relation thereto."
  
  
• On pre-emptively filed auxiliary requests and the need for substantiation.
• "Appellant II [The opponent] requested that auxiliary request 3 not be admitted into the proceedings, arguing in essence that appellant I did not provide any reasons in their SGA under Article 12(3) and (4) RPBA as to why this auxiliary request (filed as auxiliary request 5 with the SGA) overcame any of the objections raised. In similar circumstances these provisions had led the Boards to decide not to admit auxiliary requests, for example, in case T 559/20."
• "The board agrees with appellant I that the purpose of the amendment by deletion of all reference sequences except for SEQ ID NO: 4 in claims 1 and 9 of auxiliary request 3 was straightforward, as it was clear that it was made to establish novelty and to overcome the finding of added subject-matter. In these circumstances and differently from the situation present in the case law cited by appellant II, the level of substantiation provided in the SGA, as well as in the further submission of 14 December 2022, is considered appropriate. Further, as this amendment is occasioned by objections raised in the proceedings, it complies with the requirements of Rule 80 EPC." 
• "Furthermore the opposition division held that the patent in suit could be maintained in amended form on a request ranking higher than present auxiliary request 3 (section III above). Since appellant I was thus not negatively affected as regards auxiliary request 3, also for this reason the situation in the present case differs fundamentally from that underlying T 559/20, wherein the set of claims in suit had been the object of the appealed decision (T 559/20, Reasons 3.2). Hence, contrary to appellant II's arguments, decision T 559/20 cannot therefore support their case either."
• I think AR-3 was then filed pre-emptively with the Statement of grounds. I wonder whether the proprietor should have substantiated them in their reply to the statement of grounds of the opponent, which attacked the set of claims held allowable by the OD? Or does the pre-emptive filing liberate the proprietor from that obligation? Althoug in the present case, the amendment could have been self-evident.
• There is also some interesting reasoning on the credibility (formerly plausibility) of second medical use claims under G 2/21.
• 
  

EPO 

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

T 0599/24 - Art. 113 and auxiliary requests, what about main request?

Key points

• The OD revoked the patent. The proprietor appeals. The issue before the OD was insufficient disclosure, Art. 100(b) EPC.
• In translation: " according to the minutes of the oral proceedings before the Opposition Division, the appellant [=proprietor] was not allowed to submit arguments concerning the auxiliary requests. Following the pronouncement of the Opposition Division's opinion that "the damage under Article 100(b) [was] irreparable" (minutes, point 8), the appellant indicated that it wished to rearrange the order of the auxiliary requests (minutes, point 8.2), which the Chairman did not allow (minutes, point 8.3). After the appellant then stated that it had no further comments concerning the main request (minutes, point 8.4), the Chairman began to pronounce the revocation of the patent (minutes, point 8.5). The applicant drew attention to the failure to comply with her request regarding the subsidiary requests (minutes 8.5 and 8.7). After deliberation with the division, the President indicated that the final decision had been given and that, consequently, the applicant's request could no longer be considered; the oral proceedings were then closed (minutes 8.10) without the applicant being given the opportunity to be heard on the subsidiary requests already in the file or to submit any amended requests."
• The Board considers this to be a substantial procedural violation.
• The Board also remits the case.
• The Board does not comment on the claims as granted.
• In appeal, "The appellant requested that the decision of the Opposition Division be set aside on the grounds of a substantial procedural violation (violation of the right to be heard) and that the case be remitted to the first instance. In addition, it requested reimbursement of the appeal fee."
• The respondent had contested the admissibility of the appeal: "the statement of grounds of appeal does not contain any substantive arguments concerning the reasoning of the decision under appeal, it meets the requirements of Rule 99(2) EPC and Article 12(3) RPBA. The only objection raised by the appellant in its grounds of appeal is that the decision is based on a violation of its right to be heard."
• The Board considered the appeal to be admissible: "In the present case, the grounds of appeal contain sufficient explanations as to why the appellant considers that its right to be heard was not respected and, therefore, that the contested decision should be annulled. In addition, the grounds set out the facts in detail with reference to the minutes of the oral proceedings before the Opposition Division."
• Now the question is: must the OD decide again on the sufficiency of disclosure of the claims as granted, or is this res judicata as not being contested in the appeal?

EPO 

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

T 1493/23 - On the blurry greyscale documents in the EPO Register

Key points

• In translation: " the appellant [opponent] argued that catalog D22, which the division had not considered a printed document, could not be submitted in its original form, while the scanned version was of somewhat poorer quality. Furthermore, the color document D22 was stored in the European Patent Office's register only as a black-and-white copy, of even poorer quality."
• Note, indeed, even if you file a crisp prior art document, or in color, the EPO computer systems transform it into blurry black-and-white in the EPO online file. We don't know for sure what the OD sees on their screens (as far as I know). The other party must make do with the blurry black-and-white or greyscale version from the EPO online file - the EPO no longer forwards copies and does not forward the original PDF files as received by them. 
• "  Catalogue D22 appears to concern the prior use of the Xavax MI01 vacuum cleaner bag, see page 147 of D22. In this regard, the Division concluded that the opponent had not been able to provide any information on the dimensions of the welded areas perpendicular to the linear course of the weld, see paragraph 6.6 of the Reasons, which appears to concern feature M6. This prior use had been invoked in a letter dated 5 May 2022, where the second paragraph on page 5 appears to only address features 5 and 7. The letter dated 29 December 2022 does not appear to address the Xavax MI01 vacuum cleaner bag at all, see pages 22 and 23 with the bag from D23. The Board is therefore of the preliminary view, in relation to the Xavax MI01 vacuum cleaner bag, that due to the lack of timely submission regarding the disclosure of feature M6 in D22, even with the exclusive consideration of a scanned black and white copy did not violate their right to be heard."
• I don't fully understand the reasoning.
• Still, there was a substantial procedural violation: " In the present case, the Opposition Division measured the weld seam of one of the samples of the Xavax M308 vacuum cleaner bag filed as D23 and communicated the results to the parties, see the annex to the short communication of 21 February 2023. During the oral proceedings, the Division did not admit D23 for lack of prima facie relevance, as it considered that feature M6 of claim 1 of the main request was not disclosed in D23."
•  'the Division applied the correct criterion of prima facie relevance. The Chamber must therefore examine whether this criterion was also applied appropriately."
• The Board turns to the interpretation of the claim feautre at issue and ocmes to a different interpretation.
• " the opposition division considered feature M6 not to be disclosed in D23 because the appellant's measurements could not be reproduced due to a large scatter. This reasoning does not convince the board, since the opposition division had determined a value of 1.66 mm for feature M6 in its own measurements, see Figure 8 on page 12 of the appendix dated 21 February 2023. The contested decision does not provide any justification for why the division did not use its own measurement for the disclosure of feature M6. "
• I think that taking measurements on a sample is well beyond the scope of an examination of the admissibility of the evidence, or tantamount to admitting the evidence.  It just seems very weird to go into claim interpretation and detailed measurements, and quite different from what the Enlarged Board had in mind in G 7/93 r.2.6.  
• On a separate note, the EPO will allow color filing in the near future and will process them as color figures up to the publication (B1, I suppose). Let's see if the EPO Online File is also made capable of showing color documents. 

EPO 

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

T 0364/24 - A relatively fast appeal case

Key points

• "the skilled person, starting from the file of D2 and trying to solve the above mentioned objective technical problem, would have modified the file of D2 according to this teaching of D3, thereby arriving at the claimed subject-matter in an obvious manner."
• The case is run-of-the-mill, but for the fact that the patent originates from a PCT application filed on 16.03.2005. The decision was issued on 02.05.2025. 
• EP entry in 2006. Supplementary search started in 2017 (!). Grant in 2021. The appeal did not take too long. 

EPO 

T 1161/23 - Patent revoked in patent year 21

Key points

• The Board, in translation: "The appellant [opponent] argued that claim 1 would not meet the requirements of Article 123(2) EPC, contrary to the conclusions in point II.15.2 of the reasons for the contested decision. It submitted, among other things, that the addition of the feature that the reservoir (2) is axially movable in the body (1) would lead to an inadmissible intermediate generalisation. This characteristic, which could only be deduced from the first embodiment of figures 1 to 8, would be inseparable from the other characteristics specifically mentioned in this context. The Chamber agrees with this argument."
• Follows some concise reasoning.
• The decision is rather run-of-the-mill, except that the application was filed as a PCT application on 25.11.2004. The opposition appeal decision was dated 02.05.2025.
• EP entry in 2005, first communication of the Examining Division in 2009, refusal in 2011, appeal decision in 2013, second decision to refuse in 2014 (no interactions in between), second appeal decision in 2019. Grant in 2020. 
• I suppose it is just the trailing edge of the curve. Still, seeing an opposition appeal lasting into patent year 21, without the application being a divisonal application, is rare. 
• The Board had asked the opponent whether it was still interested in the appeal after the lapse in all states under rule 84(1) EPC. The opponent/appellant confirmed. 

EPO 

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

T 0493/23 - Partial priority and intermediate generalisation

Key points

• The priority application discloses a widget with feature X, and a widget with features X, Y and Z. The patent is filed and granted with claim 1 directed to the widget with X+Y. Is the priority partially valid?
• This decision suggests not, incorrectly, it seems to me.
• The Board: " In a further line of argument, the [proprietor] submitted that claim 1 enjoyed partial priority for those threaded connections where the widths were the same in the varying-thread-width portions. Decision G 1/15 was mentioned in this context. "
• "The board is not persuaded. The Enlarged Board of Appeal ruled in decision G 1/15 that, under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document."
• " [1] However, in the present case, claim 1 does not contain any generic expression that can be understood to encompass alternative subject-matter. [2] In fact, none of the features of claim 1 of the twelfth auxiliary request brings the width of the female thread-grooves in connection with that of the male thread-ridges, or the width of the male thread-grooves with that of the female thread-ridges, in the varying-thread-width portions. [3] Therefore, claim 1 is not a generic "OR" claim in the sense of decision G 1/15." (numbers added)
• As a comment, the Board in sentence [1] does not engage with the "or otherwise" in the headnote of G1/15. 
• I don't fully understand sentence [2], and it is not clear to me if it aims to engage with the "or otherwise" part of the holding of G1/15. The priority application contained the embodiment and the claim encompassed the embodiment (something with ridges). 
• The third sentence is a conclusion only.
• The claim is held to be not novel over D5 of the same applicants. D5 is Art.54(3) prior art claiming priority of JP2016181175A, the present application claims priority of JP20160181176, filed on the same date. I did not check, but I suppose the disclosure is identical in the relevant parts between those two documents. 
  
• The problem is that this approach opens the door to zombie poisonous priority (and toxic divisionals) - precisely where G 1/15 had firmly shut the coffin. 
• To cite G 1/22, point 54 of the reasons: "the Rules of the Paris Convention and the self-contained priority system of the EPC should be construed in a manner which ensures that the above-mentioned general purpose is fulfilled as far as possible (T 15/01, Reasons, point 34, confirmed in T 5/05, Reasons, point 4.4; see also Straus, The Right to Priority in Article 4A(1) of the Paris Convention and Article 87(1) of the European Patent Convention, JIPLP 2019, 687, 688/689)." viz. "The basic purpose of the right of priority is to safeguard, for a limited period, the interests of patent applicants in their endeavour to obtain international protection for their inventions, thereby alleviating the negative consequences of the principle of territoriality in patent law (T 15/01, OJ EPO 2006, 153, Reasons, point 32, with references to the relevant literature). The priority provisions contained in the Paris Convention should not be regarded as a body of exception clauses which should be interpreted strictly (see in this respect T 998/99, OJ EPO 2005, 229, Reasons, point 3.1; see also T 1201/14, Reasons, point 3.2.1.3). "
• Comments from readers are welcome!
• 
  

EPO 

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

T 0589/22 - Plausibility and in vitro diagnostic method claims

Key points

• G 2/21  was rather vague about inventive step but very clear about second medical use claims: the application as filed must make the therapeutic indication, recited in the claim, "credible".
• The present case is about a method claim directed to an in vitro diagnostic method.
• Claim 1: " In-vitro diagnostic method for the identification of a subject suffering from a primary non-infectious disease having an increased risk of mortality potentially being induced by the administration of an antibiotic to said subject" 
• The Board: " Claim 1 is directed to an in vitro diagnostic method for the identification of a subject suffering from a primary non-infectious disease having an increased risk of mortality potentially being induced by the administration of an antibiotic to said subject. Being a diagnostic claim, the purpose of the method is a technical feature of the claim."
• It is not entirely clear what the Board means by the last sentence. 
• "Article 83 EPC requires that the application discloses the invention in a manner sufficiently clear and complete for it to be carried out by the skilled person. Since claim 1 is directed to a diagnostic method, the purpose of the method (i.e. "identification of a subject suffering from a primary non-infectious disease having an increased risk of mortality potentially being induced by the administration of an antibiotic to said subject") is an effect that has to be achieved and thus is a functional technical feature of the claim (G 1/03, OJ 2004, 413, point 2.5.2 of the Reasons). Hence, for the requirements of Article 83 EPC to be fulfilled, the patent has to provide suitable evidence that the claimed method allows the diagnosis to be made, or this must be derivable from the prior art or common general knowledge (CLBA, C.II 7.2.1, in particular T 814/12 clarifying that the requirements of Article 83 EPC for a medical use claim apply by analogy to diagnostic use claims)."
• G 2/03 is about undisclosed disclaimers and point 2.5.2 of the reasons is about non-working embodiments: " 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 (T 939/92, OJ EPO 1996, 309)." It is not about diagnostic methods, let alone diagnostic methods as opposed to methods in general.
• "Under Article 83 EPC, the proof of a claimed therapeutic effect must be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the effect is achieved. A deficiency in this respect cannot be remedied by post-published evidence (decision G 2/21, point 77 of the Reasons). By analogy, the same applies to a claimed diagnostic effect (T 814/12, points 26 and 27 of the Reasons). Hence a reference to the BACH (Biomarkers in Acute Heart Failure) trial in post-published document D1 is of no help in this context. "
• T 0814/12:  "27. The board considers that by analogy thereto the same requirements of Article 83 EPC apply for diagnostic use claims."
• Note, the claim in that case was a Swiss-type use claim for a diagnostic compound: "Use of protein kinase N beta or a fragment thereof, whereby such fragment realises the effects of protein kinase N beta, for the manufacture of a diagnostic agent for the diagnosis of a disease"
  
• Note that for second medical use claims using the magic wording of Art.54(5) (or formerly, a the magic wording of a Swiss type claim), we impart the magical implicit feature of "effective" into the claim so that the claim is held novel even over a verbatim disclosure of it (typically: in the annoucnement of a clinical trial giving all details of the medical use being tested but not the results; see e.g. T2506/12). I'm not aware of the same case law applying to method claims or specifically in the case of diagnostic method claims. 
• Which is not to say that the decision is wrong. That depends a bit on how broadly the requirement of credibility is to be applied - will it apply to first medical use claims? Second non-medical use claims? Beyond use claims to method claims reciting a purpose?

EPO 

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

T 1350/22 - A cursory search by the Board

Key points

•  This is an examination appeal case.
• "The decision [of the Examining Division] was based on the ground that the independent claims of the main request and the first to third auxiliary requests were not clear (Article 84 EPC)."
• The requirements of novelty and inventive step were not examined by the Examining Division. They were considered by the EPO as ISA, as we will see.
• "The examining division objected that rendering image plus depth data for a volumetric display was not supported by the application as filed"  
• "The board finds that the objection raised by the examining division is not justified for the following reasons. "
• " Item V of the written opinion of the international searching authority [the EPO, incidentally] contained a perfunctory statement that "[a]t present, it appears that the set of claims is novel and inventive over the prior art D1"."
• " Contrary to the statement in the written opinion of the international searching authority, the board finds that the subject-matter of claim 1 of the main request does not involve an inventive step within the meaning of Article 56 EPC for the following reasons."
•  A cursory search for the subject-matter of the independent claims of the main request [by the Board] resulted in documents D2 and D3, which rendered the subject-matter of these claims obvious."" 
• "The subject-matter of claim 1 of the fourth to tenth auxiliary requests specify further details regarding the amount of blurring in a transition between a first region and a second region. To examine these further details, a search beyond the cursory one will be necessary, which is the responsibility of the department of first instance (see also T 1241/17, Reasons 7.6 and 9, and T 1227/19, Reasons 6.1 and 6.4)."

EPO 

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

On the two recent decisions of the EBA

Key points

• Recently, decisions G 1/24 (claim interpretation) and G 1/23 (commercially available products as prior art) were issued. 
• Posts simply quoting the headnotes are all over the internet, especially on LinkedIn. I aim to write posts that add value about each of them in the future, once I have had sufficient time to study the decisions and develop my analysis.

T 0919/23 - The background section of a scientific article as common general knowledge

Key points

• "document D38 is a scientific article. Though it dates from 2011, such a document would not normally be considered as part of common general knowledge. However, the appellant convincingly argued by referring to decision T 1249/22 (Reasons 14.3) that a statement in the background section of a scientific paper explaining that something was a common measure may, depending on circumstances, be considered to establish that this measure was common general knowledge. "
• "The introductory portion of document D38 starts below the abstract on page 233 and continues until halfway through page 237. It discusses different sealing methods used in packaging processes at the time of the article and, in particular, gives an overview of the principles of conduction sealing and ultrasonic sealing (page 234, first paragraph: "Ultrasonic welding is an established and well-known method for joining polymers"). This is followed on page 235 by an explanation of the heating mechanism responsible for the ultrasonic welding of thermoplastic polymers. Finally, on pages 236 and 237, an account is given of the main process parameters of conduction sealing and ultrasonic sealing in a way which implies that these parameters had been well-known in the art for many years preceding the publication date of the scientific paper ("Typical sealing times range from [...]", "The sealing force is normally applied by springs or fluidic actuators"). "
• "The board cannot find any reason why the introductory portion of document D38 would not constitute proof of common general knowledge before the priority date of the contested patent." 

EPO 

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

T 0962/23 - On the limits of G 1/99

Key points

• G 1/99 provides for an exception to the prohibition of reformatio in peius in case of "where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision".
• The term 'inadmissible amendment' does not refer to procedural inadmissibility (late-filed) but to issues such as Art. 123(2), but also Art. 84 (see, e.g. T 0648/15), and Art. 83 (when caused by the amendment), see T 1484/18. 
• The Board in the present case: "The feature "and throughout the composite core" contained in auxiliary request 1 as maintained by the opposition division, i.e. the present main request, was not contained in the subject-matter of claim 1 of any of auxiliary requests 2 to 6 and 1-2 to 1-5.

  The appellant argued that the omission of this feature violated the principle of prohibition of reformatio in peius.

  The respondent argued that this principle only applied to claim 1 of the patent as granted but not to an auxiliary request containing further restrictions. Moreover, the deleted features were implicitly contained in the remaining features.

  However, the feature "and throughout the composite core" may be deleted only if the remaining features of claim 1 ensure that it is not broadened with respect to claim 1 as maintained. A further limitation relating to other features of the claim cannot compensate for the broadening implied by the omission.

  The aforementioned requests do not contain any features implying the same limitation, nor do they further restrict the feature "and throughout the composite core" to a narrower definition. Therefore, the omission of the feature "and throughout the composite core" infringes the principle of the prohibition of reformatio in peius because it would put the sole appellant in a worse situation than if it had not appealed.

  These requests are therefore not allowable (see G 1/99, Headword)."

• " The [other] feature "wherein the first beads or the second beads are glass ceramic beads", which was contained in claim 1 of auxiliary request 1 as maintained by the opposition division, i.e. the present main request, was not contained in claim 1 of any of auxiliary requests 3a to 6a.

  The requests in question do not contain any features implying the same scope, or further restricting the feature at issue to a narrower scope.

  The exception of G 1/99 (see the Headword), which relates to an inadmissible amendment, is not applicable. Claim 1 did not inadmissibly contain the deleted feature."

• The Board : "There is also no legal basis for extending to Article 56 EPC the particular situation of an inescapable trap created by the opposition division allowing an amendment which infringes the requirements of Article 123(2) EPC, as claimed by the respondent [ proprietor]."

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• As a comment, the case could be different if there was a lack of priority by the amendment of the 'claims as maintained by the OD' underlying the lack of inventive step.
• See T 1845/16 for an extension of G 1/99 to the case that the added feature is unclear (see also T0887/11 and T 0648/15); and T1484/18 for the case where the added feature causes an Article 83 issue. 
• Suppose that before the OD claim 1 is amended with feature X and held to be novel and inventive according to the OD. The opponent disagrees,and appeals. The opponent is the only appellant and the Board finds the feature to be obvious. Suppose the patent also teaches a feature Y as possibly inventive, but not the combination X+Y. The proprietor appears to be stuck. 

EPO 

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

T 0602/24 - Who decides what features are essential?

Key points

• The Board, in translation: "The objection of lack of "essential features" raised by the Examining Division with reference to Article 84 EPC can only be understood to mean that claim 1 of the main request lacks "essential features" within the meaning of the case law"
• "An analysis of the decisions cited in these parts of the CLBA shows that the term "essential features" is not accorded a uniform meaning in case law. This is due not only to the application of different legal bases for such a requirement (clarity of the claim or support by the description), but also to the criteria against which the absence of "essential characteristics" must be assessed"
• " The Examining Division's rejection of the independent claim for lack of essential features with reference to Article 84 EPC is not based on a lack of formal support for claim 1 in the description, but rather evidently on an insufficient disclosure of its subject-matter within the meaning of Article 83 EPC. "
• "Such an objection based on Article 84 EPC is, in the Board’s view, untenable in the light of the purpose of Rule 43 EPC and recent case law, as will be shown below."
• " since, under Article 84 EPC, the claims define the matter for which protection is sought ("l'objet de la demande pour lequel la protection est recherchée"), i.e. the subject-matter formulated by the applicant for which a European patent is sought, the essential features of the invention must, according to Rule 43(3) EPC, be those which the applicant considers to be essential for the patent protection sought and not those which the examining division considers sufficient to satisfy substantive requirements."
• " The possibility of rejecting claims which cannot withstand substantive scrutiny because they are unreasonably broad, for the same reasons under Article 84 EPC, is also not in line with the "travaux préparatoires" of the EPC 1973 and the EPC 2000, as is clear from decisions T 1020/03 and G 3/14" (follows an analysis)
• " In view of the meaning to be given to the expression "essential features" in Rule 43(3) EPC, namely the features which the applicant considers to be essential for obtaining patent protection, and the indication in recent case law relating to the "travaux préparatoires" to the EPC 1973 and the EPC 2000 that the breadth of the claim does not provide a basis for an objection under Article 84 EPC on substantive grounds, the Board concludes that the Examining Division's rejection of the main request on the ground, with reference to Article 84 EPC, that its claim 1 does not contain all the essential features relating to the achievement of a glass transition temperature (Tg) of more than 60°C for the crosslinked composition is not convincing."
• A very welcome decision. Art 84, second sentence, is no bypass to the proper examination of novelty, inventive step, and sufficiency. 
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• The Board does not remit the case but examines Art. 83 and novelty.
• Claim 1 is directed to a manufacturing process and specifies inter alia that the product   has a glass transition temperature Tg above 60 °C.
• The Board reviews the facts of the case and concludes: "Under these circumstances, the Board is convinced that the skilled person is able, with a few experiments, to adjust the Tg of the cross-linked polymer to a value above 60°C."
  
• "The Examining Division's rejection of the main request is based on the absence of features in claim 1 that enable a crosslinked composition with a Tg above 60°C to be obtained. The fact that not all features defined to satisfy this requirement are present in claim 1 is not sufficient to conclude that the claimed subject-matter is insufficiently disclosed. Rather, it must be examined, taking into account the principle set out in point 4 above, whether the application contains a technical teaching that enables the skilled person to satisfy this functional feature without undue burden."
• Indeed, the nature of the claims is not that of a tutorial.
• Is it all good news for the applicant? No: the Board sets up the novelty/sufficiency squeeze.
• "In view of (...) the teaching of the application according to which the Tg can be influenced via the choice of polyol or polyisocyanate components or the crosslinking density (see point 4.2 above [i.e., the reasoning on sufficiency]), the Board considers it credible that the composition described in Example 3 of D6, which concerns a similar composition with a 2,2'-MDI component and a triol with a molecular weight of 260, necessarily leads to a Tg of the crosslinked composition which is in the claimed range above 60°C."
• " Therefore, in the absence of evidence to the contrary, features (8) and (9) do not constitute a distinguishing feature vis-à-vis D6. Should the applicant provide valid reasons or evidence to the contrary that features (8) and (9) constitute distinguishing features of the claimed process vis-à-vis Example 3 in D6, this would constitute a change of fact, so that the Examining Division would no longer be bound by the board's assessment as to the fulfilment of the two features for the analysis of inventive step, but also as to the feasibility of the present invention with regard to achieving features (8) and (9)."
• Not the subtle difference between res judicata and the binding effect of the ratio decidendi here. 

EPO 

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