T 0089/23 - A sensible interpretation of Art. 13(1) RPBA

Key points

• "The board does not interpret Article 13(1) RPBA as requiring an amended claim set to overcome all objections raised by another party in the appeal proceedings. 
• Requiring that all alleged objections be addressed as a precondition for admission would unduly restrict the patent proprietor's means to defend its case, particularly in the case of a multitude of objections to different claims, the relevance or persuasiveness of which is disputed and thus open for consideration by the board. The appellant's [opponent's] interpretation would require a patent proprietor as a precaution to file permutations of claim sets which address all the objections raised by the opponents individually and in combination in order to anticipate an adverse decision on one or more or possibly all of these objections. Otherwise a patent proprietor would have to overcome all objections irrespective of their merit in order not to lose the patent. A large number of requests would certainly not be in the interests of procedural expediency, but rather burden all parties and the board. Consequently, an amendment cannot necessarily be deemed inadmissible merely because it does not address all objections raised by an opponent."
• To cite   T 855/96, "it serves to ensure legal peace [Rechtsfrieden] and the acceptance of the decisions of the Boards of Appeal ... when these decisions take into account the entire matter submitted in the appeal proceedings." (in translation). 
• Dated as that decision may be, the principle stands: the more matter is considered by the board, the more likely it is correct on the merits and the easier it is to accept (for the losing party). This desirable aim must be balanced against the length of the procedure. 

EPO 

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

T2328/22 - Res judicata against the intervenor

Key points

• In the first appeal, the Board decided to maintain the patent in amended form with a description to be adapted, and remitted the case.
• An accused infringer intervenes during the procedure before the OD after the remittal.
• Can the accused infringer contest the allowability of the claims?
• The Board concludes the accused infringer can not.
• The Board, in translation: "the board follows T 0694/01, which concerned a similar situation to the present case. In a first opposition appeal, the case was remitted to the opposition division for adaptation of the description. The intervention of the other opponents occurred subsequently, during the second opposition appeal. In T 0694/01, the question was discussed whether the intervener, as a party not previously involved in the proceedings, could still challenge the wording of the claim considered allowable by the board of appeal by raising new facts (in the form of a new ground for opposition), thus raising the same issue as in the present case."
• "In T 0694/01, the board denied the immediate res judicata effect of the board of appeal's decision against the intervener, but concluded that the res judicata effect of the decision against the previous parties to the proceedings could not be called into question (Reason 2.15)."
• The Board, in T 0694/01: "2.15 Die Beitretende beruft sich ferner darauf, daß die Entscheidung vom 27. Januar 2000 über den Wortlaut der Patentansprüche für sie nicht rechtsverbindlich sei, weil sie nicht an dem Verfahren beteiligt war. Auch die Kammer verneint eine unmittelbare Rechtskraftwirkung dieser Entscheidung gegenüber der Beitretenden, kann sich aber deren Schlußfolgerung nicht anschließen, daß durch den Beitritt auch die Rechtskraftwirkung der Entscheidung gegenüber den bisherigen Verfahrensbeteiligten in Frage gestellt werde."
• The Board then largely follows T 0694/01, which is a carefully reasoned decision.
• "In summary, there is therefore no apparent reason to deviate from the convincing arguments in Reasons 2.20 of T 0694/01 that an intervener joins a foreign proceeding and must consequently accept the proceedings in the state in which it finds itself at the time of the intervention."
• I don't know how this applies to the binding effect of ratio decidendi in the case of a remittal for further prosecution. There must be case law about it. Hints in the comments are welcome. 

EPO 

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

T 0928/23 - Can a claim be novel over itself?

Key points

• D3: EP14306121.6 (EP 2 965 760 A1) is a prior right under Art. 54(3) having as claim 1: composition comprising : - an effective amount of a first antiretroviral agent, said first antiretroviral agent being tenofovir, or a salt or a solvate or a prodrug thereof, and an effective amount of at least a second antiretroviral agent, said second antiretroviral agent been chosen among the group consisting of: lamivudine, rilpivirine, efavirenz, raltegravir, or a combination thereof, or a salt or a solvate or a prodrug of the above, for its use for the prevention or the treatment of chronic inflammatory diseases." Claim 2: wherein the said auto-inflammatory diseases is chosen among the group consisting of: psoriasis, sclerodermia, schizophrenia, autism, Alzheimer's disease,
• Claim 1 under examination:  "1. Reverse transcriptase inhibitor for use in the prevention or treatment of a degenerative disease selected from Parkinson's disease and Alzheimer's disease, said reverse transcriptase inhibitor being selected from: - nucleoside inhibitors, - Efavirenz (EFV), 
  - Nevirapine (NVP), - Delavirdine (DLV), - Etravirine, and - Rilvipirine."
• The Board disagrees with the OD  and considers that claim 1 under examination does not exclude combination therapy.
• The Board, in translation: "The Board considers, however, that the subject-matter of claim 1 is novel vis-à-vis D3, because the treatment of Parkinson's disease or Alzheimer's disease by the combinations of active agents given in D3 is not directly and unequivocally disclosed in that document and that document reveals that only certain retroviral agents or their combinations are actually active."
• "This document thus provides no evidence of the potential activity of an isolated compound as claimed, in the treatment of inflammatory diseases, even less for the treatment of Parkinson's or Alzheimer's diseases."
• "It cannot be concluded that the teaching of D3 demonstrates that one of the claimed reverse transcriptase inhibitors would make it possible to treat Parkinson's or Alzheimer's diseases."
  
• "The subject-matter of claim 1 is novel over D3 and the main request meets the requirements of Article 54 EPC."
• Which shows that a claim can be novel over itself, it seems to me. And shows that the claim under examination benefits from the magic 'it works' implied feature (G2/88 r.9 - link to para), whereas the same claim, when in the published patent application, does not. 
• The Board also considers the claimed subject-matter to be inventive (over other prior art). 

• EPO

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

T 0933/23 - The boundary between functional features and results-to-be-achieved

Key points

• The Examining Division rejected the claims under Art. 84.
• The Board: "The feature of "allowing a radial displacement" in the characterising portion of claim 1 is defined in terms of a function which is close to the technical effects the application seeks to provide. The current case thus concerns the boundary between allowable functional features (dealt with in the Guidelines, F-IV, 6.5, []) and an unallowable definition of the invention in terms of a result-to-be-achieved, amounting in essence to the problem underlying the application (Guidelines, F-IV, 4.10, []), in which case essential features defining the invention are missing (Guidelines, F-IV, 4.5 [])."
• "The Board appreciates the examining division's scrutiny and diligence in this regard (see G 1/24, Reasons 20)."
• In the case at hand, claim 1 of the new main request meets the requirements of Article 84 EPC for the reasons set out in the following.
• "The Board firstly notes that the characterising feature does not relate solely to effects or results to be achieved, but specifies the structural feature of the connection, namely that "the valve element is fixed to the lead nut in axial direction" by a technical means, namely a "spring element". For this reason alone, the subject-matter of the invention in the characterising portion is not solely defined in terms of the problem to be solved."
• "The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element. The proposed solution resides in the provision of a more flexible connection that transmits axial movement while allowing some radial play (radial displacement). The technical effects of this solution include relaxed positioning demands at manufacture without increasing wear, and the problem could thus be considered to reside in the provision of these effects."
• " the functional feature of the connection "allowing a radial displacement" is directed to an element of the solution (flexible connection), not to the technical effects or the problem underlying the solution, and is thus not defined in terms of an unallowable "result-to-be-achieved"."
  
  
• "It is generally accepted that the definition of a feature in terms of its function is acceptable, if a skilled person understands, without exceeding their normal skills and knowledge and without undue burden but if necessary with reasonable experiments, how to reduce it to practice and if it can be determined without ambiguity whether the claimed functional requirement is satisfied by a given prior art"
• (follows a technical analysis)
• "Hence, the skilled person knows how to put the functional feature into practice. Moreover, the Board has no doubt that it can also be determined without ambiguity whether a given construction fulfils the claimed function. It is thus not decisive whether the functional expression can or could have been formulated differently, e.g. in structural terms."
• "Essential features are those features which are constitutive for the definition of the invention, that is, all features which are necessary for solving the technical problem with which the application and the claim is concerned. In this regard, Article 84 EPC not only requires that the claimed subject-matter is comprehensible, but also that it contains a clear definition of the object of the invention by defining all essential features thereof"
• In the Board's view, the features in the characterising portion are sufficient for defining the invention and for solving the stated problem discussed in point 3.2.3.
• Point 3.2.3, in part: "In the Board's view, the problem of "ensuring a long lifetime with low production costs", as stated in the application (page 1, lines 25 to 26) and submitted by the appellant, is too broad. The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element."
• The Board does not simply say that it is the applicant who decides what features are "essential". 
• 
  

EPO 

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

T 1472/22 - Newly asserting a public prior use in appeal

Key points

• This decision was issued already in January 2025, but it still a remarkable one.
• The opponent included a new public prior use attack with the Statement of grounds.
• The Board admits it. Chiefly because it is based on a public prior use that the proprietor had submitted in another opposition case, where he was the opponent (and the opponent was the proprietor). Still, there was some delay as the public prior use was known to the opponent since 2019 and filed in the appeal only in 2022.
• The following remark is of general interest: (in translation) " the Board does not share the patent proprietor's view that the prior use should have been raised before the Opposition Division. The opponent's statement of grounds of appeal is directed against the maintained version of the patent, which is based on auxiliary request 3, which was only filed during the oral proceedings before the Opposition Division. Any findings made by the Opposition Division in the [preliminary opinion of the OD], for example, in paragraph 8.4 regarding the disclosure of document D4 (referred to therein as E4), are irrelevant in the present case for the admission of this prior use, since no auxiliary requests had yet been filed at the time of the summons; see paragraphs 3.4 and 3.5 of the statement of facts in the contested decision. Furthermore, there was no reason for the opponent to submit the prior use before the oral proceedings, since the [preliminary opinion of the OD] already considered documents E2 (D2 in the appeal proceedings) and E3 to be novelty-destroying for the granted version of the patent, see paragraphs 8.2 and 8.3 thereof (for the comparable situation of auxiliary requests, which could theoretically have been filed in their own right, see T 0141/20, guiding principle and point 5.4 of the Reasons)."
• This reasoning makes sense. But I don't know if all boards see it this way. 
• "pursuant to Article 12(4) RPBA, it is within the board's discretion whether to admit the new submission. According to the non-exhaustive list of criteria in Article 12(4), fifth sentence, RPBA, the board will consider, for example, the complexity of the amendment or the need for procedural economy when exercising its discretion. In the present case, document D12, originating from the patent proprietor, with technical drawing D7b on the second page of the document, contains a scaled technical drawing of the lock [..]; see also the patent proprietor's submissions on pages 13 and 14 of D13. In the board's view, D12 is therefore easily understandable, particularly for the patent proprietor. Furthermore, the document enables an analysis of the movements of the rotary latch and pawl when opening the lock if these components are transferred into a CAD program, for example, as in D15, and rotated around their pivot points. This allows for the derivation of force action lines for the contact force as well as the respective lever arms of the contact force relative to the pivot points of the rotary latch and pawl. Even with a certain inaccuracy in the transfer to a CAD program, this allows at least qualitative statements to be made regarding the torque that the rotary latch imparts to the pawl. Therefore, in the Board's view, document D12 concerns a feature that is essential to the outcome of the appeal proceedings."
• "The Board notes that, in the case law of the Boards of Appeal, new prior use that is only raised during the appeal proceedings is generally not admitted. However, the reason for this is, in most cases, that the prior use originates from the opponent's environment, making it practically impossible for the patent proprietor to independently examine the facts relied upon. In the present case, the Board therefore considers it an exceptional circumstance that the prior use not only originates from the patent proprietor, but that the patent proprietor itself submitted the relevant facts, even during the proceedings before the EPO. This eliminates the difficulty of assessing the evidence on the part of the patent proprietor. Nor can it invoke ignorance of unexpected facts."
• "The board concludes from all of the above that the lock disclosed in prior use D12 has all the features of claim 1 of auxiliary request 3, so that its subject-matter lacks novelty, Article 54 EPC. "
• The patent is revoked.

EPO 

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

T 0387/25 - EPO Customer Service tickets and the electronic file

Key points

• The Board confirms that if the drawings are omitted from the Druckexamplar by the EPO by mistake with an unmarked change, an appeal will be admissible and allowable, notwithstanding Rule 71(5) EPC. Hence,  "[ T 265/20] remained a single decision and was not followed by other boards. "
• The Board notes that the Guidelines are not yet aligned with the case law on the point.
• ""It may be that the examining division refrained from granting interlocutory revision because the Guidelines for Examination (e.g. in Part H, Chapter VI) do not yet properly distinguish between cases where a mistake was already contained in an applicant's request or was explicitly approved by an applicant, and cases like the one at hand: where an examination board [sic], by mistake and unintentionally, deviated from the appellant's latest request when listing the documents intended for grant in a communication under Rule 71(3) EPC and this was neither pointed out to the applicant nor explicitly acknowledged by it."
• "4.1 As outlined above, the drawings were already missing from the A1 publication, which was an error made by the EPO over which the appellants had no influence. The appellants had brought that error to the attention of the EPO (point V.), but there is no indication in the electronic file that the EPO had taken any measures to address this issue, to arrange for a corrected publication of the application and to ensure that this error would not be perpetuated through the examination proceedings and grant of the patent. In fact, neither the appellants' initial enquiry with the EPO (generating a "ticket") nor the emails exchanged with the formalities officer have been documented in the electronic file as they should have been."
• I believe the part in bold is different from current practice, at least any EPO Customer Service tickets are not in the public online part of the file. 
  
  
• There is also an interesting part about the protection of legitimate expectations created by information given by the formalities officer during a phone call. 

EPO 

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

T 0697/22 - G 1/25 referral - Adaption of the description

Key points

• Old news, but for completeness' sake: questions about the need to adapt the description to the allowable amended claims were referred to the Enlarged Board. The referral is pending as case G 1/25 since the end of July 2025.
• The composition of the EBA was recently announced. The EBA shall consist of chairperson Josefsson, legally qualified members Beckedorf, Rogers, R. Arnold (GB) and E. Chatzikos (GR) as 'external members', and Pricolo and Bekkering as technically qualified members. 
• Rogers is the rapporteur in the case, as he was also in G 1/24. Let's hope the decision will be as short and favourably received as G 1/24. 
• Josefsson and Beckedorf were also on the panel of G 1/24. Pricolo is the Chair of Board 3.2.01 who referred the question in G 1/24. 
  
  
• The referred questions:
•  1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency? 
• 2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation? 
• 3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?"
• The referring decision contains a helpful overview of the case law on these issues.
• Incidentally, the EP entry was in 2009, the grant in 2019 (!). 

EPO 

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

T 0341/24 - An unusual feature for novelty and inventive step

Key points

•  Claim 1 is directed to "A bottom dispensing package (1) for a liquid composition", i.e. a bottle, with a container and a base. The base has a slit-valve. The claim specifies inter alia that the resiliently squeezable container (10) has an elasticity index of greater than 0.65% to 2.0%, as measured using the elasticity index method described herein. The 
• "... it was not disputed by the patent proprietor that the elasticity index could be regarded as an unusual parameter"
• D1 is Henkel, "Record ID 63429 in the mintel GNPD database of a dishwashing product ("Pril Kraft-Gel")", Host: Mintel June 1998
• The Mintel database will have become even more important as prior art after G 1/23!
• For novelty: "It is undisputed that a bottom squeezable container as detailed in D1 was put on the market and was publicly available before the priority date of the patent in suit."
• "ith regard to the elasticity index (identified by the parties as feature 1h)), opponent 1 indicated that measurements according to the instructions provided in paragraphs [0072] to [0076] of the patent in suit, were made on 15 May 2022 on a physical model according to D1 (P98, with photos [in] D3)."
• "The model P98 was available at the archive premises of opponent 1 and the elasticity index results were 0.871% with an attached label and 1.070% without an attached label, therefore anticipating feature 1h)."
• The opponent is Henkel, which seems to be the manufacturer of Pril Kraft Gel of D1.
• " the board is not convinced that it has been proven beyond any reasonable doubt by opponent 1 that the alleged model of P98 with pictures of D3, corresponded to the container of D1. Indeed, there is no clear link between D1 and the model P98/D3, apart from opponent 1's allegations."
• This will prove fatal for the attack.
• "especially in the absence of any kind of test report, the mere statement of opponent 1 that the container had a certain elasticity index cannot amount to a sufficient evidence that the product of the prior use according to D1 did indeed present feature 1h) [ the elasticity index]."
• Another practical lesson.
• The Board concludes that the opponent has insufficiently shown that the  bottle of D1 (as public prior use) had the recited property.
• For inventive step, the patent defines as "the problem to be solved, the container should avoid leakage when exposed to sunlight, i.e. at a peak pressure measured at 40°C"
• "The board agrees with the patent proprietor that starting from D1 as closest prior art, the claimed elasticity index has the technical effect of making the bottom dispensing package more resilient which therefore reduces leakage, especially by reducing the peak pressure at 40°C. This is apparent from the experiments provided in the contested patent, paragraph [0080] as well as those in the letter dated 7 January 2021. "
• "Starting from D1 as closest prior art, the board agrees with the patent proprietor that the skilled person, faced with the problem of reducing leakage, would not be restricted to seeking solutions only on the container but would rather focus on the opening and the slit valve of D1. There is indeed no hint in D1 or in any of the available prior art, nor does it belong to the skilled person's common general knowledge, that the elasticity of the container would be relevant to leakage. Therefore, for this reason alone, the skilled person could modify the elasticity index of the prior use of D1, but there is no reason why they would do it, especially in order to arrive within the claimed range."
• " the board concurs with the patent proprietor that it is generally for the opponents to demonstrate that a container with the features of the claim does not lead to the desired technical effect. In the absence of such evidence from the opponents and in view of the results provided by the patent proprietor (see paragraph [0080] of the contested patent), the board does not see the limits of the claimed range for the elasticity index as arbitrary or not purposive to solve the problem posed. "

EPO 

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

T 1617/23 - Admissibility of arguments

Key points

• The new line of argument amounted to an amendment of the respondent's appeal case according to Art. 13(2) RPBA. Exceptional circumstances were not apparent to the board and were not substantially argued, either. 
• Yet it is questionable whether "arguments" are indeed covered by the provision of Art. 13(2) or in fact any other provision of the RPBA dealing with late filing. In this regard, decision T 1914/12 after an extensive analysis of Art. 114 EPC [...] and the traveaux préparatoires [...] came to the conclusion that the boards had no authority to reject arguments submitted at a late stage of procedure, and that the RPBA thus had to be interpreted in a restrictive manner in regard of late-filed arguments. 
• The board concurs with this view and adds that it would deprive an oral hearing of its function of a meaningful dialogue between the Board and party(ies) if only such arguments could be presented that had already been presented beforehand in writing. Otherwise, an oral hearing would become an exercise of reading out written submissions.
• At the place of the square brackets, in translation from T 1914/12: "Article 114(2) EPC grants the EPO departments a discretionary power as to the admission of "facts" (DE: "Tatsachen"; EN: "facts") which the parties have not invoked or "evidence" (DE: "Beweismittel"; EN: "evidence") which they have not produced in due time. It should be noted that the English version here is limited to facts and evidence only and does not include the reference to arguments in the second part of Article 114(1) EPC ("facts, evidence and arguments")" and "In response to a question from the German delegation, the EPO confirms that Article 10ter(1) RPBA excludes any new statement of facts, but not a change in the legal assessment. An open formulation has been adopted in order to allow for development of the law on the basis of case law."
•  "Yet the possibility of raising new arguments must find its limits where arguments cannot be properly followed or understood and the board finds itself at a loss even to grasp an argument's prima facie relevance. In such a situation, it would have been incumbent on the respondent to make submissions in writing prior to the hearing so that both the board and the other party find themselves in a position to properly digest, assess and discuss such argument. All of this was not possible in the case at issue."
• " Content-wise, the respondent's  [proprietor's] appeal case as presented in oral proceedings did not merely consist of an elaboration of a case already made. Rather, it presented its entire case concerning D4 for the first time. Furthermore, the arguments presented were extensive and complex to an extent that the board could not immediately assess their validity and prima facie relevance."
• "In view of these findings, the board exercised its discretion not to take into account the respondent's arguments presented at the oral proceedings."
• As a comment, a possible approach of the Boards is to carefully identify any new factual assertions in the new submissions and to hold the argumentation inadmissible as involving new facts.

EPO 

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

T 0553/25 - The SME reduction of the appeal fee and the declaration

Key points

• "Items 3 to 5 of the Notice [OJ EPO, 2018, A5 ] require appellants who are eligible pursuant to Article 2(1), item 11 RFees together with Rule 7a(2)(a) to (d) EPC for a reduced fee for appeal, to file a declaration of eligibility. According to item 11 of the Notice, In case of an incorrect, false or missing declaration with payment of the reduced fee the notice of appeal may be deemed not to have been filed or the appeal may be considered inadmissible."
• The appeal is against a refusal of a patent application dated 05.12.2024. The Notice of appeal was filed on 31.01.2025, and the appeal fee was paid for the reduced amount on the same day.
• On 06.02.2025 (Thursday), an officer of the EPO "for the Examining Division" informs the applicant of the missing declaration, stating that it can still be filed within the appeal period (I trust it was a standard form). The applicant then requests re-establishment. The case is forwarded to the Board.
•  The Board: "Article 2(1), item 11 RFees refers to Rule 7a(2)(a) to (d) EPC, to define the persons and entities eligible to pay the reduced fee for appeal. This simply avoids listing these persons and entities in Article 2(1), item 11 RFees and has no legal implications beyond giving a definition of who is eligible for the reduced fee for appeal.

  5. There is no reference in Article 2(1), item 11 RFees to Rule 7b(1) EPC, which establishes a requirement to declare eligibility to a reduction in fees, in a different context. According to Rule 7b(1) EPC, such a declaration is required if persons or entities according to Rule 7a(2)(a) to (d) EPC wish to avail themselves of a reduced fee according to Rule 7a(1) or (3) EPC. These provisions concern fees to be paid for patent applications up to the grant of a patent. Rule 7b EPC does not apply to the payment of the reduced fee for appeal, be it directly or by way of reference. Even less can Rule 7b EPC apply to the fee for appeal by way of a mere analogy."

• "It follows from the foregoing that there is no legal basis for a prior declaration of eligibility as a prerequisite for a valid payment of the reduced fee. The right to pay the reduced fee is not comparable to a legal situation in which a declaration made within the prescribed period is a prerequisite for the right coming into existence. The presumption, in the Examining Division's communication dated 6 February 2025 (see point III. above), that the omission of a declaration according to items 3 to 5 of the Notice has the consequence that the appellant is "not eligible for the reduced fee, meaning that the full amount of the fee for appeal is due", is, therefore, wrong.

• Remarkably, the same conclusion was already arrived at in T 0225/19, T 1060/19 and J 8/18, which are not cited in the present decision, though those three earlier cases were less on point.
• As I wrote in my post on T 225/19, possibly the intent of the additional requirement in the Notice was to protect parties.  In particular, it enables the protection of legitimate expectations that the EPO will inform a party if a requirement is not complied with, the non-compliance is evident, and the party can still correct it within the relevant time limit (see, generally, G 2/97) and the protection of parties if the EPO does not warn the party (by setting a new time limit, J13/90 abd T14/89). (CLBA III.A.4). However, G 2//97, r.4.1 puts it as follows: " The protection of legitimate expectations also requires the EPO to warn the applicant of any loss of rights if such a warning can be expected in all good faith. This presupposes that the deficiency can be readily identified by the EPO within the framework of the normal handling of the case at the relevant stage of the proceedings and that the user is in a position to correct it within the time limit". If the lack of the SME declaration does not lead to a loss of rights, and the appeal fee as such is not evidently wrong, then this duty to warn the party, arguably, does not apply. I note, however, that the duty to warn is only an implementation of the principle of good faith. 
• 
  

•  The applicant is a natural person.

• "The notice of appeal complies with the requirements of Rule 99(1) EPC. Hence, the appeal is deemed to have been filed within the meaning of Article 108, second sentence, EPC."

• The statement of ground was also timely filed.

• " Since all other requirements for an admissible appeal are met, the appeal is admissible."

• The fee for the RE request is to be refunded.

• "This communication led the appellant to file a request for re-establishment although there had been no loss of rights. This filing, in turn, precluded and still precludes the Examining Division from considering interlocutory revision. The admissibility of the appeal as established by the present interlocutory decision, however, removes the reason for the remittal of the case to the present Board without consideration of interlocutory revision. Moreover, the time-limit for interlocutory revision has not yet expired. The Examining Division is, therefore, still in a position to examine whether it considers the appeal to be well founded, in which case it can still rectify its decision. For this reason, the Examining Division is invited to do so within the applicable time-limit."

• The Board notes that the period for interlocutory revision under Art. 109 still runs, and that interlocutory revision can still be granted (by the Examining  Division). 

EPO 

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

T 1465/23 - On arbitrary variations and alternative solutions

Key points

• The Board finds that a claim (directed to a software invention) has distinguishing features that are technical, but that provide no technical effect. 
• The Board concludes that the features are arbitrary modifications over the closest prior art, which therefore do not provide for an inventive step, but not without going into a detailed legal analysis of the work done by the word 'therefore', even referring to the 1986 article of Mr Szabo on inventive step.
  
  
• The Board: "2.6 Given that the alleged technical effect is not credibly achieved and the board cannot identify an effect either, it is not possible for the board to formulate an objective technical problem that is directly and causally related to the claimed invention, in particular to the alleged distinguishing features (b) to (h).
• Following the principles established in G 1/19 (cf. Reasons 49, 82 and 124; see also points 3.1 and 3.3 below), the problem-solution approach may be terminated at this stage if the distinguishing features do not credibly achieve any technical effect over the whole scope claimed.
• This emanates from settled case law according to which, if a technical effect is not obtained over the full breadth of a claim, at least a subset of the claimed subject-matter is not to be seen as a technical solution to a technical problem and hence cannot be acknowledged as an "invention" involving an inventive step within the meaning of Article 56 EPC (see e.g. T 939/92, Reasons 2.7; T 176/97, Reasons 4.4, last paragraph; T 1294/16, Reasons 26.2). 
• T 939/92 was a chemistry case, but nowadays it is applied more broadly. 
• Hence, the introduction of a distinguishing feature having no credible technical effect may then be considered to be no more than an arbitrary modification of the design of a known subject-matter which, being arbitrary, cannot involve an inventive step under Article 56 EPC (see e.g. T 939/92, Reasons 2.5.3 (link to that para); T 72/95, Reasons 5.4; T 746/22, Reasons 1.5). 
• The rationale behind this is to avoid irrelevant and thus superfluous comparisons between claim features which, after all, may be selected by the skilled person in an arbitrary way, and the prior art.
• In other words, the comparison between a claim, whose subject-matter cannot credibly solve any technical problem, and the technical teaching of a prior-art document can only lead to an artificial and superfluous exercise, i.e. looking for incentives, hints or a motivation comprised or implied in that prior-art document for arriving at a solution which falls within the terms of such an ill-defined subject-matter. This exercise may be likened to a search for a black cat in a dark room that is actually not there. 
• Similarly, searching for an alternative way to cause a technical effect that is not credibly achieved by the claimed subject-matter does not help either; as also looking for a grey cat in the same dark room does not appear to be useful (see also point 3.3.2 below). "
• I don't understand the Board's analogy, I'm afraid. 
• "In such a case, the distinguishing features which have no effect are considered to be an arbitrary and/or non-functional modification of the prior art, which cannot support an inventive step (see T 72/95, Reasons 5.4; T 1294/16, Reasons 26.2; T 287/23, Reasons 2.8.2 and 2.8.3; T 1580/23, Reasons 2.2.8)."
• The discussion of the legal issue continues in point 3.3 of the decision, which I include after the jump. The Board even refers to the seminal article of Mr. Szabo on inventive step from 1986, "The Problem and Solution Approach to the Inventive Step".

EPO 

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

T 2652/22 and T 1787/16: Language of proceedings

Key points

• The application was filed in 2006. The patent was granted in 2013. The OD issued its first decision in 2016. The Board set it aside in 2021 in the first appeal. The OD issued its second decision in 2022. The second appeal decision was issued in 2025.
• Actually, the first appeal decision (T 1787/16) is more interesting. The first OD decision included citations of the opponent's submissions (in English), whereas the language of the proceedings was German. The Board found this to be a twofold substantial procedural violation. First, citations of the parties’ arguments cannot replace the reasoning of the OD under Rule 111(2) in the manner that occurred in the case at hand.
• Second, (and obiter, see point 12 of the reasons), the decision should have contained translations of the citations in the language of the procedure, i.e., German. In fact, the EPO may only use the language of the procedure in the written decision, with limited exceptions (e.g., for terms such as 'ex officio', and when citing evidence).
• T 1787/16, in translation: "Therefore, for proceedings under the EPC, too, applying Article 125 EPC and the overall analogy it prescribes, it can be deduced from the procedural principles of the Contracting States that there is only very limited scope for using a language other than the language of the proceedings in the decision, namely only to the extent that it is necessary to answer procedurally relevant questions of fact, evidence, and law. This includes the verbatim quoting of foreign-language documents (both technical and non-technical) and of written and oral statements by witnesses, experts, or parties in the context of the evaluation of evidence, or—generally speaking—in the context of assessing the probative value and content (interpretation) of documents."
• • My analysis is that the Board derived the main principle that a procedure has a single language of procedure, which must be used exclusively unless an exception applies. The liberal regime of  Rule 3(1) EPC ("In written proceedings before the European Patent Office, any party may use any official language of the European Patent Office") is, therefore, an exception and applies only to the parties, not to the EPO.  
• In the current second appeal decision, the Board also finds a procedural violation: the list of cited documents is not included in the decision. However, the Board does not remit the case and examines the patent on the merits.
• Interestingly, the first OD decision was to reject the opposition. In the second decision, the OD, with a different composition, had decided to revoke the patent. The proprietor's appeal is dismissed.

• 
  
• EPO 

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

Register now for the EPO course on the Taking of Evidence

• If you are a (qualified) European patent attorney regularly reading this blog, you are likely the primary target audience of the EPO course on evidence. The two online lectures (including a mock witness hearing) will take place on 23 and 30 September in the morning. 
• Registration is possible until Monday 15 September. Costs are EUR 320. Maximum of 35 participants.
• https://www.epo.org/en/learning/events/pw20-2025 
• 
  
• I participated in the course a couple of years ago and found it very useful and informative, well above the level of the EQE. Especially because Article 117 EPC is not usually discussed in great detail in EQE preparation courses. After following the course, you will be better prepared if and when an alleged public prior use shows up in one of your cases.
  
  
• Evidently, the course focuses on the practice before the OD (and the Guidelines). However, since T1138/20 (cited 57 times in the new edition of the Case Law book),  we know that, as a rule, you have to get your witness hearing right before the OD. 

T 0490/23 - The board inspects the public prior use device

Key points

• The Board, in translation; "During the oral proceedings, the board decided, pursuant to Article 117(f) and Rule 117 EPC, to take evidence by inspecting the prior use subject-matter "Comfort X3" in order to determine the behavior and stability of the belt tensioner flaps under dynamic loading of simulated impact forces from various directions, and thereby answer the crucial question of the suitability of the folding elements as side impact protection. "
• "During the inspection, a direct measurement of the length of the folding element of the "Comfort X3" child seat projecting beyond the outer wall was taken on the prior use subject-matter, which did not appear to be reliably possible based solely on the cited illustrations. The taking of evidence took place in the presence and with the participation of the parties. For the decision to take evidence and the results of the inspection, reference is made to the minutes of the oral proceedings."
• "The visual inspection led to the following results: ..."
• "For the reasons stated above, the Board does not consider the belt tensioner flap of the "Comfort X3" child seat to be suitable as impact protection within the meaning of feature M1.2 of granted claim 1. Features 1.3 to M1.5, which require the presence of side impact protection according to feature M1.2, are also not derived from this prior use."
• Regarding other features of claim 1: As can be seen from images IMG_0789 and IMG_791, attached to the minutes of the oral hearing, the entire extension of the flap element of the belt tensioner flap is 14.3 cm. This is undisputed."
• " The subject-matter of granted claim 1 is therefore novel over the prior use "Comfort X3", as correctly found by the Opposition Division."

EPO

 

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

T 2027/23 - (I) On evidence and appellate review of findings of fact

Key points

• "The appellant [proprietor] has challenged the findings of the opposition division regarding the public prior-use vehicle."
• "the board notes that, on appeal, the burden is on the party challenging a fact to demonstrate that the first-instance department erred in its finding of fact. "
• Note, this can be the appellant or respondent because a decision favorable to the respondent in the overall result can still contain findings of fact in favour of the appellant. 
• "In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous. Only if the party succeeds in discharging this burden and demonstrating such an error will the board establish the facts on its own if this is necessary for reaching a decision (see T 1138/20, Reasons 1.2.5)."
• Of course, pointing out one error is sufficient, and the board will then review the specific alleged fact that is affected by that error in the OD's evaluation of the evidence.
•  "The case law of the Boards of Appeal has identified a non-exhaustive list of typical situations where a finding of fact may be overruled, namely (i) failure to take into account essential points, (ii) relying, for the conclusion, on irrelevant subject-matter, or (iii) violation of the laws of thought, for instance in the form of logical errors and contradictions in its reasoning (T 1418/17, Reasons 1.3; see also T 42/19, Reasons 3.2 and T 1138/20, Reasons 1.2.5)."
• The list is helpful, but precisely because of that, we should not forget it is a non-exhaustive list.
  
  
• " The appellant requested that the testimony of Mr. Wieser should be disregarded in its entirety, because it was not credible and consequently the witness' credibility should be re-assessed and some statements in the decision under appeal  should be disregarded."
• " The board, first of all, notes that according to the appealed decision, the witness' credibility was not questioned by the proprietor (Reasons 2.1.2). Lack of credibility can thus not be an argument for discarding the witness' statement."
• As a general rule, this statement could be correct (Art. 12(6)(s.2)), but there could be exceptions.
  
  
• " The appellant further highlighted the fact that the information provided by the witness was handed to him by other people and was based on documents collected many years after the sale [which was in 1987]."
•  The board considers that this was correctly recognised by the opposition division. It was precisely for this reason that the opposition division considered the probative value of the testimony to be limited. The opposition division therefore prudently based its decision not only on Mr. Wieser's testimony, but also on Mr. Noe's affidavit (D10a) that confirmed, independently from Mr. Wieser's testimony, that the "Feuerwehr Tauberbischofsheim", in 1987, received from the company "Metz" a vehicle with a turnable-ladder mounting and the corresponding operation manual D9, without confidentiality obligations; [photos and vehicle registration certificate] " 
• Note, if the proprietor wished to challenge the affidavit of Mr. Noe, he should have requested a witness hearing of Mr Noe.
•  "Finally, the mere fact that other witnesses could have been offered does not call into question the credibility of the witness." 
• This sentence could require some analysis.
  
  
• On the inspection of the vehicle by the OD
• From the minutes (see p.29 of  PDF of the minutes):  "The oral proceedings were interrupted at 10:22 to allow the participants to move outside the building of the EPO, where the vehicle was parked." See also p.48 of the PDF for a protocol of the inspection. 
• 
  
  (I acknowledge that many younger colleagues may no longer recognise the building, never having had oral proceedings in it). 
• " The appellant argued that there was insufficient evidence that the vehicle inspected in the course of the oral proceedings before the opposition division was the one sold to the fire brigade in 1987 ...
• The protocol of the inspection, page 48, mentions that a type plate with the year 1987 was observed inside the inspected vehicle. 
• 
  
• Standard of proof
• "With regard to the fifth point concerning the applicable standard of proof, the board notes that in the case at issue the evidence does not lie exclusively within the sphere of the respondent. Indeed, the vehicle was received by the fire brigade and was in the brigade's possession and was later sold to a third party. Even if the board had been minded to apply the standard of "up to the hilt" or "beyond reasonable doubt" in cases where evidence was in the exclusive possession of the respondent, there would be no place for such application under the factual circumstances of this case. 
• Note, the company selling the vehicle, Metz, was later acquired by the current opponent.
• "In any event, the present board, in a previous decision (see T 1138/20, Reasons 1.2.1), held that regardless of the specific circumstances of the case, only one standard of proof should apply, namely that the deciding body, taking into account the circumstances of the case and the relevant evidence before it, at the end of the day, should be convinced that the alleged fact had indeed occurred (as confirmed in T 733/23, Reasons 3.2, but see also T 2463/22, Reasons 4.5.10 and 4.5.12 in that regard)."
  
  
• Confidentiality
• The Board, obiter it seems: "manual D9 was made available to the staff of the fire brigade who are certainly members of the public. The fact that these members of the public should not make the manual available to competitors does not change the fact that at least some members of the public have already taken notice. It is not necessary for a document, contrary to what the appellant seems to argue, to be made available to all and sundry for it to be considered "publicly available". Instead, it is sufficient for the document to be made available to some (or even one) member of the public. In the case at issue, this was undoubtedly so."
• The above remark was obiter and given the point below, not critical to the case. Nevertheless, I doubt it is correct. If the (head of the) Firebrigade Department (as the recipient of the manual) had signed a secrecy agreement, then the manual is not public, and the employees (volunteers or not) of the fire brigade were not 'members of the public'. Also, a government body can bind itself to secrecy (contractually, vis-à-vis suppliers). Evidently, it still is an organisation under public law in such a case. Its employees are possibly public officers or civil servants, but not members of the public in the sense of Art 54 EPC in respect of the secret information. 
•  "To prove an obligation of secrecy, the appellant further referred to the copyright notice on pages 2 and 4 of document D9, which reads in relevant part:"... Ohne unsere schriftliche Genehmigung dürfen sie nicht kopiert oder vervielfältigt werden, auch nicht dritten Personen, insbesondere Wettbewerbern mitgeteilt, oder zugänglich gemacht werden."
• " the board first notes that copyright notices can be found in almost all published books without the readers of such books being thereby bound to secrecy. "
• I don't know if the cited sentence is just a normal copyright notice. On the other hand, it is not a signed NDA either. 

EPO 

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

T 2048/22 - G 1/24 for Art. 123(2)

Key points

• "Opponent 1 raised several objections of added subject-matter, as follows. It argued that the application as filed did not contain any basis for two kinds of pores or perforations, namely co-aligned and common pores or perforations as required by claim 1 as granted."
•  "when construing this feature in the light of the description of the patent (see in this respect decision G 1/24 of the Enlarged Board of Appeal, Order), the skilled person would have established directly and unambiguously that the same pores or perforations are intended. "
• " Contrary to opponent 1's view, the board further holds that the term "pores or perforations" in claim 1 as granted creates ambiguity since it is unclear whether it expresses two alternative items or the same item. However, the board concurs with the patent proprietor's view that the skilled person, when construing this term in the light of the description of the patent (see in this respect decision G 1/24 of the Enlarged Board of Appeal, Order), would have directly and unambiguously established that pores and perforations indicate the same entity. This conclusion results for example from reference sign 4: ... "
•  "For these reasons, the board concluded that the amendments to claim 1 of the application as filed contained in claim 1 of the patent as granted do not lead to any added subject-matter. Therefore the ground for opposition pursuant to Article 100(c) EPC does not prejudice maintenance of the patent as granted."

EPO 

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

T 1815/23 - Prima facie and bona fide

Key points

• The proprietor submits amended claims before the Rule 116 date, in reply to a new objection under Art. 123(2) raised by the OD in the preliminary opinion,  and submits a correction of clerical errors in those claims after the Rule 116 date. How should the OD consider admissibility?
• The Board, in translation: The requests pending at the beginning of the oral proceedings thus constitute a timely response to the objection of inadmissible amendment first raised in the summons, and also filed within the time limit, so that, contrary to the Opposition Division's view [...] these requests were not late. Therefore, the Opposition Division had no discretion in admitting the requests, but should have admitted them into the proceedings and examined them in detail.
• The Board, in the original German: " Die von der Einspruchsabteilung vorgenommene prima facie-Prüfung war deshalb nicht ausreichend und benachteiligte die Beschwerdeführerin in unzulässiger Weise, da der von ihr gemachte bona fide Versuch, den Mangel der vermeintlich unzulässigen Änderung zu beheben, nicht vollumfänglich geprüft wurde.""
• Hence, if the amended claims are a timely and bona fide response to an objection, they must be examined on the merits (and hence admitted). 

EPO 

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

On oral proceedings - Teaching of Ptahhotep

The beneficial role and remedial effect of oral proceedings in judicial conflict resolution, i.e., of the judge listening to your case, were recognised already at the dawn of civilisation, in the Egyptian society more than 4000 years ago, as the following fragment shows.  

• If you are to be a [magistrate]
  be patient in your hearing when the petitioner speaks,
  do not halt him until his belly is emptied
  of what he had planned to have said.
  The victim loves to sate his heart
  even more than accomplishing what he came for -
  if a petition is halted,
  people say 'but why did he break that rule?'.
  Not everything for which he petitions can come to be,
  but a good hearing is soothing for the heart.

Teaching of Ptahhotep / The Instruction of Ptahhotep is an ancient Egyptian literary composition by the Vizier Ptahhotep around 2375–2350 BC (!) during the rule of King Djedkare Isesi of the Fifth Dynasty. (https://en.wikipedia.org/wiki/The_Maxims_of_Ptahhotep) 

Source of the translation: https://www.ucl.ac.uk/museums-static/digitalegypt/literature/ptahhotep.html with an edit marked by square brackets. 

A later dating of the composition is 1991–1802 BC (Twelfth Dynasty). (see here https://www.ucl.ac.uk/museums-static/digitalegypt/literature/ptahhotep.html)