T 1874/23 - (II) Häufungsgrundsatz

Key points

• The TBA rejected a request for re-establishment of the appellant-applicant (late filing of the notice of appeal and statement of grounds) without advance notice (and without holding oral proceedings despite these having been requested).
• The Board:  As outlined above, a request for re-establishment must substantiate the grounds and facts within the time limit of Rule 136(1) EPC (see also Article 114(2) EPC).
• Indeed, Rule 136(2) EPC specifies that "The request shall state the grounds on which it is based and shall set out the facts on which it relies.".
• "Thus, the factual basis for the requested decision cannot be altered after the expiry of the time limit for the request (Case Law, III.E.4.4, see J 19/05, Reasons 4, 5; T 585/08, Reasons 9; T 479/10, Reasons 2.1; J 15/10, Reasons 3.2; J 6/22, Reasons 14; T 178/23, Reasons 5.2.1)."
• Note, the legal term 'altered' does not mean 'can not be supplemented or further elaborated'. Probably, you cannot switch from the ground 'sudden illness' to 'a hacker in our IT systems', but adding more details about how sudden the illness was, is not excluded by the phrase  'the factual basis cannot be altered'.
• J 15/10: "present the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned" (emphasis added).
• J 19/05: "Ein Nachschieben von (neuen) Tatsachen, die einen anderen Hindernisgrund betreffen, ist daher unzulässig." ...  "Auch ein auf allgemein gehaltene Behauptungen gestützter Wiedereinsetzungsantrag, der keine individualisierbaren Tatsachen enthält, genügt nicht der Begründungspflicht nach Artikel 122 (3), Satz 1 EPÜ [1973] und ist daher mangels Substantiierung als unzulässig zurückzuweisen." (emphasis added)
• 
  
• "20. This requirement for immediate and complete substantiation of the request corresponds to the principle of "Eventualmaxime" or "Häufungsgrundsatz" in contracting states with a German law tradition ("le principe de la concentration des moyens" in France), under which the request must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage.
• Note, 1) the EPO legal rule, by very definition, cannot be the German rule as such - they are different legal instruments, so the meaning of 'corresponds to' must be considered;
• 2) The German rule apparently includes "means of evidence", which is not mentioned in Rule 136(2) EPC (and must have been intentionally left out by the legislator, in which case the EPC legislator apparently did not wish to adopt the German approach) (see T324/90 - "it is not necessary that the application for re-establishment of rights provide any prima facie evidence for the facts set out in it, nor is it necessary that it indicate the means by which those facts are supported");
• 3) The Board does not explain why the EPO rule would be the same (in substance) as the German rule;
• 4) In view of Article 125 EPC, it cannot be assumed that EPC procedural law is the same as German law, or the national law of any other EPC contracting state, or that any (perceived) lacuna in the procedural provisions of the EPC must be filled in in accordance with German law (Art. 125 EPC: " the principles of procedural law generally recognised in the Contracting States")
• The Board does not explain why it refers to German law and not the law of another EPC contracting state.
• The TBA refers to: "see e.g. Foerste in Musielak/Voit, ZPO, 21**(st) edn. 2024, § 282 Rn. 4 f); Deixler-Hübner in Fasching/Konecny, Zivilprozessgesetze, 3**(rd) edn. 2017, II/2 § 149 ZPO; Gitschthaler in Rechberger/Klicka, ZPO, 5**(th) edn. 2019, §§ 148 f 2; Article 1355 du code civil, Cass. ass. plén., 7 juillet 2006, n° 04-10.672)."
• Article 1355 du code civil - France is about res judicata (link);
• Cass. ass. plén., 7 juillet 2006, n° 04-10.672 (link) is also about res judicata, or claim preclusion (second litigation of the same claim on a different legal ground (first: salary, second procedure: unjust enrichment; in litigation against a father's estate).
• Res judicata is indeed a generally accepted principle. However, it is not relevant to the case at hand, where there is a request for re-establishment, not an earlier decision of the EPO.
• I don't have quick access to the cited German handbooks.
•  The term Eventualmaxime was also used in J14/21, but in that case, the Examining Division had admitted the additional factual assertions. The Board, in the appeal against the refusal of the request, did not admit further factual assertions, which is in line with Art. 12(6) RPBA. Hence, the term was used obiter (and without references to the German handbook and French decision). The same applies to "Häufungsgrundsatz". In other words, the Board is not simply recalling established EPO case law (indeed, the decision does not cite case law on this point). 
• 21. Only if this requirement for immediate and complete substantiation within the time limit has been fulfilled, might it be permissible to complement the facts and evidence in later submissions, and provided that they do not extend beyond the framework of the previous submissions (see J 5/94, Reasons 2.3; J 19/05, Reasons 5; T 585/08, Reasons 9; J 15/10, Reasons 3.1; see also J 8/95, Reasons 3; T 324/90, Reasons 5).
• Here, it is unclear if the Board refers to the German requirement (for immediate and complete substantiation of requests for re-establishment), or to Rule 136(2) EPC, or if the Board has just decided that Rule 136(2) EPC, first sentence, is in substance the same as that German rule.
• Note: Would the requesting party have had a right to present orally arguments about the correct legal interpretation of the first sentence of Rule 136(2) EPC during the oral proceedings that had been requested by them (but were refused by the Board)?
• As already noted in  T324/90, the language versions of Rule 136(2) differ. The German version of the first sentence is "Der Antrag auf Wiedereinsetzung ist zu begründen, wobei die zur Begründung dienenden Tatsachen glaubhaft zu machen sind." The French version: "La requête doit être motivée et indiquer les faits invoqués à son appui". The English version: "The request shall state the grounds on which it is based and shall set out the facts on which it relies." Only the German version seems to suppose that the facts are not merely stated or indicated, but are supported by evidence (" glaubhaft zu machen"). Of course, the three texts are equally authentic (Article 177).  
• 22. As outlined above, this is not the case here for the request for re-establishment in these proceedings. In particular, no factual assertions were made at least on the provision of supervision and/or an independent cross-check mechanism in [US patent attorney firm T] to make for a normally satisfactory monitoring system. (...)

• 25. ... Given the inherent restrictions for factual assertions outside the time limit for the request of re-establishment in these proceedings (the principle of "Eventualmaxime", see above), the appellant is even prevented from validly submitting new factual assertions at this stage, including in oral proceedings.
• The phrase 'inherent restrictions' seems to refer to the provision of Rule 136(2) EPC, as interpreted.
• The Board's analysis of Rule 136(2) could have been more complete by including an application of the grammatical, systematic, and theological methods of interpretation in the written decision and a reference to the travaux préparatoires. 

EPO 

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

T 0564/23 - A non-obvious alternative (fermentation of fruit juice)

Key points

• "The patent is directed to a process for the preparation of a concentrated liquid foodstuff having a low alcohol content"
• "Claim 1 of the patent is directed to a process in which a mixture of a juice concentrate and a carbohydrate with a yeast is subjected to fermentation to obtain a concentrated liquid foodstuff with an alcohol content lower than 15 g/kg of concentrated liquid foodstuff."
• "the parties agreed that the total acidity of at least 25 g/L is not disclosed in D1. Therefore, the total acidity is the distinguishing feature of claim 1." 
• "The parties disagreed as to whether this difference causes a technical effect. The [proprietor] referred to the patent, in particular paragraphs [0068] to [0076] and Figures 1 to 3, which allegedly all showed that an improvement in flavour occurred."
• The Board:  "there is no credible evidence demonstrating that the distinguishing feature causes an improvement in terms of flavour or desired aromatic components"
• I wonder if 'better taste' would be a technical effect (in general), but that is not relevant for the present case.
• "Accordingly, as the opposition division correctly assessed, the problem to be solved is to provide an alternative process of preparing a concentrated liquid foodstuff."
• The Board finds the claim to be non-obvious: "The skilled person starting from the examples of D1 would have realised that the grape sweet musts used in these examples already have the required, preferred pH. As the respondent explained, these compositions have a pH value of about 2.9. Therefore, the skilled person would have had no incentive to adjust the pH value. They would not have added further acid, such as citric acid, to the compositions of the examples."
•   It follows from this that in view of the closest prior art D1 alone, the solution provided by the subject-matter of claim 1 constitutes a non-obvious alternative."
• " the examples of D1 provide a consistent teaching involving several process steps to obtain beverages having an alcohol content that is lower than 15 g/kg of beverage. In view of this, the skilled person would have had no motivation to inhibit the fermentation process by adding an acid, let alone to prematurely stop the fermentation process. The reason for this is that D1 already provides teaching that would lead them to the desired product. It would not have been obvious to the skilled person to depart from the teaching of D1 and ferment a juice with high total acidity under the conditions specified in D1."
• " The board fails to see the relevance of the cited decision [T 641/00, Comvik]  for the invention under scrutiny. Total acidity is not a non-technical feature. It is a technical feature that typically defines and characterises fruit juices, as can be seen from the prior art cited in these proceedings. In the case in hand, the total acidity qualifies and restricts the fruit juices used in the process of the patent in suit. Consequently, it contributes to the technical character of the fermented mixture." 
  
  
• There are some interesting further comments on inventive step.

EPO 

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

T 0438/19 (II) - After G 1/23

Key points

• After the decision of the EBA in G 1/23 - Commercial Products - the TBA issued a preliminary opinion.
• Oral proceedings took place on 15.10.2025. During the oral proceedings, the Board announced a conclusion on inventive step. The minutes do not mention what the Board's conclusion was.
• In reply, the proprietor disapproved of the text of the patent.
• The TBA now revokes the patent without substantive reasoning.
• The oral proceedings lasted from 09:00 to 17:10.
• A divisional application was filed, granted, and opposed by the same opponent, with an appeal by the proprietor. The proprietor withdrew its appeal on 15.10.2025 at 18:08.

EPO 

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

T 1408/23 - A commercially available polymer

Key points

• "In Example 1 of D1 [the closest prior art], the [pressure-sensitive adhesive (PSA)]  polymer in layer 3 is a polyisobutylene (PIB) and the PSA polymer in intermediate layer 2 is Duro-Tak 87-2852 (paragraphs [0108] and [0109]). The parties did not dispute that Duro-Tak 87-2852 was a well-known and commercially available crosslinked polyacrylate generally used in TTS. This was confirmed by D12, which discloses a selection of commercially available PSA polymers for use in TTS."
• G 1/23 is not mentioned, but this reasoning is consistent with it. G 1/23 was issued a couple of weeks before the (oral) decision in the present case.
  
  
• On the objective technical problem
  " the examples in the patent show that a TTS in accordance with claim 1 retains its adhesive properties during storage. This technical effect has not been compared with the TTS of the closest prior art, but there is no reason to believe that the TTS of claim 1 is superior to or substantially different from the one in Example 1 of D1: as stated in paragraph [0090] of the patent, the maintenance of the adhesive strength during storage is attributed to the fact that the TTS has two PSA layers, a feature that is also present in the TTS of the closest prior art. Consequently, it cannot be concluded that the distinguishing features produce any technical effect over the TTS of the closest prior art."
•  "In the absence of a technical effect over the closest prior art, the objective technical problem has to be defined as the provision of an alternative TTS."
• "The respondent [proprietor] argued that, even if no technical effect has been demonstrated in comparison with the closest prior art, the technical effect shown in the patent has to be considered in the definition of the objective technical problem."
• "In the Board's view, the technical effect shown in the patent is implicitly considered when the objective technical problem is defined as an alternative. As set out above (point 1.4), it can be expected that the TTS in Example 1 of D1 also maintains its adhesive strength during a certain period of storage. This seems reasonable on its own, given that TTS are not prepared in situ and must retain their adhesive strength for at least a period extending from preparation to commercialisation and application by the final user. Thus, whether the objective technical problem is defined as an alternative or as an alternative which maintains adhesive strength during a period of storage does not change the situation."
  
  
• Commerical products as combination prior art
• "Considering that the essential function of PIB in Example 1 of D1 is to provide good adhesion to skin, the skilled person looking for an alternative would turn to the common PSA polymers used in TTS and select in the first place those providing the highest adhesiveness. Such PSA polymers are disclosed in D12 and, in line with the alternative proposed in paragraph [0097] of D1, are all polyacrylates with the exception of Duro-Tak 87-6908, which is a PIB (last entry of the table in D12). In D12, the most adhesive polymers appear to be non-crosslinked polyacrylates, Duro-Tak 87-2051 clearly being the product with the highest adhesiveness. Therefore, in the light of the teaching in D1 and D12, the skilled person would replace the PIB in Example 1 of D1 with Duro-Tak 87-2051. This appears also to be the non-crosslinked polyacrylate used as the second PSA in the patent examples."
• D12 is "DURO-TAK and GELVA Transdermal Pressure Sensitive Adhesives - Product Selection Guide, Henkel,"
• Whether the skilled person could make "Duro-Tak 87-2051" was not relevant to the decision, entirely in line with G 1/23. 
• "Consequently, the skilled person willing to provide an alternative TTS to the one in Example 1 of D1 would arrive at the subject-matter of claim 1 of auxiliary request 3 in an obvious manner in view of D12."

EPO 

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

T 0792/24 - Fewer side efffects as second medical use

Key points

•  This opposition appeal is about a second medical use claim. 
• Claim 1: "Plinabulin for use in reducing the neutropenia rate of a grade 3 or 4 neutropenia in a subject being administered with 75 mg/m² docetaxel, wherein the plinabulin is administered intravenously ". 
• The compound docetaxel is used for treating cancer and causes neutropenia (lack of white blood cells). It was found that plinabulin mitigates this side effect.
• "The Board considers that present claim 1 indeed defines a purpose limited product claim in the sense of Article 54(5) EPC. As stated in the impugned decision, the Board considers that the skilled person would understand the use of claim 1 as relating to the alleviation of neutropenia as a side effect of docetaxel treatment per se, i.e. in comparison to the treatment with docetaxel alone."
• "preventing the side effects induced by a therapy has a significant clinical value, and there is no justification for excluding this from being regarded as a form of prophylactic treatment." ... "the claimed use is prophylactic to the extent that it is administered before the side effect can be observed and reduces the occurrence thereof"
• "D5 is an abstract reporting the results of a phase II clinical study of docetaxel alone or in combination with plinabulin in patients with non-small cell lung cancer (NSCLC). "
• "the results section of D5 unambiguously discloses the reduction of incidence of docetaxel induced neutropenia in general when administering plinabulin"
• "The Board comes therefore to the conclusion that there is no direct and unambiguous disclosure in D5 that plinabulin indeed reduces the rate of neutropenia of specifically grade 3 and/or 4." (This is the first distinguishing feature)
• D5 also failed to teach a recited feature of the administration. " No particular effect has been brought forward for the administration time (feature (ii)). This feature was therefore arbitrarily chosen and cannot contribute to an inventive step."
• For the first distinguishing feature: "It follows that, while the provided data substantiate that plinabulin is indeed effective to reduce the rate of neutropenia grades 3 and 4 as well as grades 1 and 2, no greater reduction of grades 3 and/or 4 compared to grades 1 and 2 is achieved."
• The Board undertakes an enquiry into the technical effect of the distinguishing feature. However, the feature recites an effect (in my view), so this part of the reasoning is not entirely clear to me. 
• "starting from D5, the objective technical problem can only be formulated as the provision of a further use of plinabulin in docetaxel cancer therapy"
• " The [proprietor] argued that the skilled person would not have had any reasonable expectation of success of using plinabulin to reduce the rate of the clinically more relevant neutropenia grade 3 or 4, in particular to the extent shown in the patent and D16."
• The Board disagrees.
• "In view of the general disclosure of D5, the skilled person would anticipate that administering 30 mg/m**(2) of plinabulin would effectively mitigate the decrease in neutrophil counts in a subject in general, i.e. also in subjects susceptible to have decreased neutrophil counts corresponding to neutropenia grade 3 or 4. The appellant [respondent, I think, i.e. the proprietor] did moreover not provide any evidence that the effect of plinabulin in limiting the reduction of neutrophil count in a subject would be different depending on the level thereof. The skilled person would therefore expect that administering 30 mg/m**(2) of plinabulin would also be effective in reducing the rate of neutropenia grade 3 or 4."
• The subject-matter of claim 1 of the main request is thus not inventive when starting from D5 as the closest prior art.
  
  
• An auxiliary request specifying a dose of the plinabulin is found to be inventive. 
•  "The Board however agrees with the [proprietor], that the data in Figure 5 of the patent and in Table 1 of D16 show that the reduction of the occurrence of docetaxel induced neutropenia of grades 3 or 4 with 20 mg/m**(2) plinabulin is at least as good as with 30 mg/m**(2) plinabulin. That such an effect is achieved with the much reduced dose of 20 mg/m**(2) represents an improvement which is to be taken into account for the assessment of inventive step."
• " starting from D5, the skilled person would not have expected that the 20 mg/m**(2) plinabulin dose would be at least as effective as the significantly higher 30 mg/m**(2) dose in reducing docetaxel induced neutropenia rates of grades 3 and 4. While the skilled person would have expected some effect in reducing docetaxel induced neutropenia grades 3 or 4 also with 20 mg/m**(2) plinabulin, the extent of the reduction obtained compared to the 30 mg/m**(2) dose would not reasonably have been expected."

EPO 

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

R 16/23 - epi Position Paper on the right to oral proceedings, upcoming hearing

Key points

• epi has submitted observations dated 22 April 2025 in case R 16/23 - limits on the right to oral proceedings following from J 6/22. This was also announced in an edition of the epi newsletter. 
• The letter can be found here on the epi website (also here: https://patentepi.org/en/epi-papers/position-papers/#/european-patent-practice-committee-(eppc)) and also in the online file of the patent application at issue: 
• epi writes: "headnotes 3 and 4 [of J 6/22] put in doubt the rights of parties regarding oral proceedings as the decision appears to conclude that it is not necessary to appoint oral proceedings when they have been requested by a party but that they are dispensable with following certain conduct by the requesting party. We find this worrying at best and violating fundamental legal principles defined in both the EPC as well as the major national jurisdictions of the EPC member states." ...
•  "In view of the potentially far-reaching consequences of the outcome of the present review proceedings, we encourage you to ask for amicus curiae submissions by the interested circles so that you are in a position to indicate that, in this respect, the decision on J6/22 should not be followed."
• Oral proceedings in case R 16/23 are scheduled for 21 November 2025, by videoconference, and are public. 
• "Members of the public can follow oral proceedings held by VICO remotely by sending an email in advance to reception-haar@epo.org."

EPO 

The link to the file wrapper can be found after the jump.

T 1874/23 - (I) So many questions to ask (re-establishment)

Key points

• This decision concerns a request for re-establishment for the late filing of the appeal (and the statement of grounds).
• The applicant is a (human) person in the USA; the registered representative is a firm in Germany. In between are Mr T, a USA patent attorney, a solo practitioner (I think), and Mr S, who is a US Patent Attorney and a European patent attorney. 
• The decision to refuse the patent application was received by the firm and forwarded to Mr S. Mr S (or his office manager) forwards the decision to Mr T, and sends a reminder. No confirmation of receipt was received from Mr T. 
• There, the request for re-establishment becomes vague, but it is clear that no entry was made in the file of Mr T of the refusal decision. The paralegal in the office of Mr T is blamed, i.e., an isolated mistake by an assistant in an otherwise well-functioning system is invoked.
• From the request: "due to an isolated error, [the paralegal]  has never informed[Mr T] about this deadline nor entered the deadline into the [] docketing system. Due to this isolated error by [the paralegal], the appeal deadline is notably absent in the docketing system"
• The public online file contains a declaration of Mr T, stating inter alia that "I delegated docketing responsibilities to the firm paralegal, Ms V ("the firm paralegal") who routinely checks my email account [...] and dockets deadlines from incoming correspondence, predominantly from incoming emails. After docketing, the firm paralegal typically reports deadlines and required actions to the client and cc's me." 
• Mr T does not declare that he personally saw or processed any email from Mr S (or Mr S's office) about the refusal decision.
• There are no declarations of Ms V attached to the request for re-establishment. 
• The Board:  "already on the basis of the appellant's own assertions, it cannot be concluded that (at least) [law firm T's] system of recording and monitoring time limits was water-tight, and that an effective system of cross-checks was in place, as required to provide for a "normally satisfactory monitoring system". While the declarations filed alongside the request for re-establishment somehow add to its factual assertions (...) also no reasons can be found to the contrary." 
• "neither from the request for re-establishment nor from any of the declarations or other documents appended to this request, it could be concluded that any kind of supervision of paralegal V. by experienced US patent attorney T. or any other person in T. Law was in place."
• "nothing is said therein about a system of cross-checks in general, which would have worked independently from the IP docketing system, and the less so why such system would have failed in the present case."
• " Thus, on the basis of the appellant's own submissions and factual assertions alone, it has to be concluded that "all due care required by the circumstances" has not been taken. Against this background, it does not need to be examined whether there were further issues regarding the actions and supervision of any of the other actors involved in the present case."
• Note, it concerns the absence of information in the request for re-establishment.
• What kind of information did the TBA expect: bullets added by me: 
• "nothing is said, at all, 
• why any such system, insofar as in place, at all, did not work in the present case, if the additional entry in the calendar book, if foreseen by their "standard procedure", was made or was not made, for whatever reasons, 
• who might have separately monitored deadlines/entries in the IP docketing system and/or the calendar book, or for whatever reason this has not been done yet, 
• or that any alert would have set off, and/or why such alert had not been followed up, and/or that T. had been made aware of the deadline or not, for whatever reason, and if, or why not, they had enquired themselves about the fate of the deadline, 
• or any other form of supervision that would have normally - and also here - kicked in. 
• Thus, nothing is said that could explain an "isolated error" in a "normally satisfactory monitoring system". Such normally satisfactory system was apparently absent, and no submissions were made to the contrary."
• The Board did not invite the appellant to submit this information, but rejected the request for re-establishment without advance notice and without oral proceedings despite these being requested.
• The point is: in the context of by their nature open-ended enquiries about due care, isn't it logical that the Board can ask many questions? Shouldn't the requester be given an opportunity to answer the questions raised in the decision (provided, of course, that the party remains in the factual framework defined in the request for re-establishment and does not suddenly invoke new grounds)?
  
  
• It is remarkable that the requester invokes an 'isolated mistake', while it can also be derived from the stated facts that the paralegal processed neither the first email (on 30.11.2022) about the refusal decision, nor the reminder (oon 11.01.2023).

EPO  

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

External members EBA and petition for review cases

Key points

• If a petition for review is forwarded to a five-member panel, the panel nowadays most often includes an external legally qualified member of the Enlarged Board of Appeal (usually a national judge).
• I did not check how long this has been the case already.
• The possibility is laid down in Art. 7(2) Business Distribution Scheme in conjunction with Art. 6(5) thereof.
• For instance, in case R 11/23, F. Molina López (judge in the Barcelona court); in case R 16/23, H. Deichfuß (Judge at the German Federal Court, BGH); R 18/23: J. Karttunen (Market Court Helsinki); R 5/24: Y. Rüedi (Judge of the Federal Supreme Court of Switzerland); R 23/24: A. Sabol (Prague Court, it seems). 
• The participation of the external members of the EBA in these cases seems very valuable, in line with Amartya Sen's thoughts on 'open impartiality' in his book The Idea of Justice. I added some quotes from the work of Sen after the jump. 

On oral proceedings (2025)

Key points

• Due to renewed interest, an overview of the legal literature on Article 116 - the parties' right to oral proceedings.
• The original post was published in August 2024. This is a supplemented (and corrected) version.
• There were some hiccups in saving this updated post. I apologise for any possible inconvenience to the email subscribers. 

Romuald Singer, Das Neue Europäische Patentsystem, 1979, page 54:

"Besondere Bedeutung wird der mündlichen Verhandlung beigemessen (Art. 116). Sie kann in jedem Stadium des Verfahrens durchgeführt werden und findet nicht nur dann statt, wenn das Europäische Patentamt sie für sachdienlich erachtet, sondern anders als nach deutschem Patentrecht auch auf bloßen Antrag eines Beteiligten. "

Singer, EPÜ, first edition, 1989, p.497:

Anders als in manchen nationalen Patenterteilungsverfahren gibt das EPU den Beteiligten grundsätzlich einen Rechtsanspruch, eine mündliche Verhandlung im Prufungs, Einspruchs- und Beschwerdeverfahren zu verlangen; im Verfahren vor der Eingangsstelle ist dieser Anspruch beschränkt.

Aus der Fassung dieses Satzes [=Article 116(1), first sentence] in allen drei Amtssprachen ergibt sich klar, daß das EPA, falls ein Beteiligter eine mündliche Verhandlung beantragt, nicht zu prüfen hat, ob die Verhandlung sachdienlich ist. 

The same can be found in the current edition: Singer/Stauder/Luginbühl, EPÜ, 9th edition (2023) Art. 116, note 2, note 10: 

"Jedoch ergibt sich aus der Fassung dieses Satzes in allen drei Amtssprachen, dass das EPA, falls ein Beteiligter eine mündliche Verhandlung beantragt, deren Sachdienlichkeit nicht zu prüfen hat. Insbesondere können Erwägungen hinsichtlich zügiger Verfahrensführung, Billigkeit und Verfahrensökonomie nicht durchgreifen." 

On the other hand, the 9th edition discusses in note 6, decision G 2/19 (not G2/99 as the text says): "Konkret verneinte die Große Beschwerdekammer eine Verpflichtung nach Art 116 (1) Satz 1, einem Antrag auf Durchführung einer mündlichen Verhandlung stattzugeben, wenn das Verfahren einen offensichtlich unzulässigen Behelf (12) zum Gegenstand hat. ... Im Lichte dieser Rechtsprechung besteht keine Verpflichtung nach Art 116 (1) Satz 1 auf Durchführung einer mündlichen Verhandlung, wenn diese nicht der Wahrung des Anspruchs auf rechtliches Gehör nach Art 113 (1) dient."
[(12)]: Offensichtliche Unzulässigkeit eines Rechtsbehelfs liegt nach der Entscheidung G 2/19, ABl 2020, A87, vor, wenn eine zur Rechtsmitteleinlegung nicht befugte Person (ein am Verfahren nicht beteiligter Dritter) einen nach dem EPÜ nicht anerkannten Beschwerdegegenstand verfolgt. Siehe auch G 1/97, ABl 2000, 322, Nr 6 in fine: Offensichtliche Unzulässigkeit bei einem nach dem EPÜ nicht bestehendem Rechtsbehelf." 

• I disagree that no oral proceedings need to be held (even though requested by the party) when the party is given an opportunity to comment in writing. The latter is sufficient under Article 113, but no substitute under Article 116.

Mathely, Le Droit européen des brevets d'invention, 1978, page 330 (corrected quote): 

2. Le recours à la procédure orale peut encore être ordonné à la requête de l'une des parties, c'est-à-dire du demandeur, ou du breveté, d'un opposant ou d'un intervenant.

En principe, la procédure orale est obligatoirement organisée, dès que l'une des parties le demande.

A ce principe, deux exceptions sont prévues: (second oral proceedings, Receiving Section)

 

See also Eskil Waage, Principles of Procedure in European Patent Law, 2002, page 95:

This provision is one of the "Common provisions governing procedure" which apply to all the administrative departments and judicial bodies of the EPO. It sets out "an almost unqualified right to require oral proceedings to take place".7 Once a party has filed an appropriate request, a hearing must take place before the competent department. The party does not have to justify his request, and the EPO may not refuse the request even if it considers that the hearing is superfluous. A party has no obligation to present new material - facts, evidence, arguments or amendments at the hearing, and the EPO must not sanction financially a party who has requested a hearing and does nothing more than repeating orally what he has already submitted in writing.9 No considerations of procedural economy, not even a suspicion of an abuse of procedure, may stand in the way of the right of a party to be heard during oral proceedings. 10

Footnotes:

7. Singer / Lunzer EPC, Article 113.04, p. 592, and Article 116.01, p. 612: "a legal right"; Schachenmann, in Singer / Stauder EPÜ, Artikel 116, n° 5, p. 634: "ein grundlegendes, absolutes und zwingendes Verfahrensrecht". See also Davis / Cole, EIPR 1999, 609; Schmitz, Mitt. 1993, 165 (at 169); and Guidelines E-III, 2. In the 1962 Preliminary Draft (CEE IV/8221/61, Commentary to Article 75a, p. 7), it is stated that oral proceedings, once requested, become "an essential pre-condition for the decision".
8. See, e.g., T 209/88 "ROBERT BOSCH", 20.12.1989, Reasons 3.3.
9 See Kockläuner, Mitt. 1989, 30 (at 32, n° II); Schachenmann, in Singer / Stauder EPÜ, Artikel 116, n° 68, p. 644; and Schmitz, Mitt. 1993, 165 (at 168, n° 4). See also T 125/89 "SCOTT PAPER", 10.1.1991, [1992] EPOR 41, Reasons 7: "a right even to repeat known arguments or to stress arguments already brought forward".
10 See T 556/95 "CHAUM", 8.8.1996, OJ EPO 1997, 205, Reasons 4.3; T 598/88 "SCHERING",7.8.1989, Reasons 2; T 194/96 "CONOR", 10.10.1996, Reasons 2; and T 685/98 "GPT", 21.9.1998, OJ EPO 1999, 346, Reasons 6.2; see also Singer / Lunzer EPC, Article 116.02, p. 613; and Case Law, 3rd ed., p. 261.

Addition October 2025:

Schäfers in Benkard EPÜ, 1st edition, 2002, p.1380:

Wird ein Antrag auf mündliche Verhandlung erstmalig vor einem Organ des EPA gestellt, so ist eine Ablehnung so gut wie ausgeschlossen. Nur in ganz seltenen Ausnahmefällen kann ein solcher Antrag abgelehnt oder übergangen werden, ohne einen schwerwiegenden Verfahrensfehler zu begehen. Eine Ablehnung oder Überbürdung der Kosten kommt nach der Praxis der BK nur in Betracht, wenn der Antrag offensichtlich mißbräuchlich oder in der Absicht gestellt ist, das Verfahren zu verschleppen (*), [T 383/87], RsprBK 1998, 295. Ein Antrag kann auch übergangen werden, wenn der Antragstellende offensichtlich das Interesse an dem Verfahren verloren hat, auf Anschreiben des EPA nicht mehr reagiert oder Zustellungen und Ladungen, die an ihn gerichtet sind, als unzustellbar zurückkommen.

I have not identified any legal basis for "oder in der Absicht gestellt ist, das Verfahren zu verschleppen". The phrase "mit der Absicht, das Verfahren zu verschleppen" is used in T 830/91, but in connection with amended claims. I don't know if buying a bit more time is such a bad thing. 

Paterson,  The European Patent System, 2001, p.248

Generally a party to proceedings before any department or instance of the EPO has a right to an oral hearing under Article 116 EPC upon request. This is subject to two exceptions, when the appointment of such an oral hearing following a request from a party remains within the discretion of the competent department of the EPO. (emphasis in the original)

T 383/87: 

Article 116(1) EPC provides, inter alia, that "oral proceedings shall take place ... at the request of any party to the proceedings". In the opinion of the Board, this basic right conferred by the EPC to any party to the proceedings before the EPO, could therefore be refused only under most exceptional circumstances, amounting to an abuse of law, which would make it equitable to award costs against one of the parties. Even supposing the opinion of the Respondent were right concerning the quality of the appeal, this consideration alone could never be a reason for ordering a different apportionment of costs incurred within the meaning of Article 104(1) EPC. This is because Article 116(1) EPC guarantees the right of any party to request oral proceedings, i.e. to argue his case orally before the relevant instance of the EPO.

It may be that a party has the feeling that he can present his case better orally than in writing, even if he has no new arguments. It is then his genuine right to ask for oral proceedings without being inhibited by the fear of having to pay additional costs, unless the request for oral proceedings is a clear abuse of law. As no such abuse can be seen in the present case the request for a different apportionment of costs was to be refused.

T 598/88:

Hierbei [Art. 116(1) EPC] handelt es sich - abgesehen von der hier nicht zutreffenden Ausnahmebestimmung des Artikels 116 (1), Satz 2 - um eine zwingende Vorschrift des EPÜ, dergegenüber Erwägungen hinsichtlich zügiger Verfahrensführung, Billigkeit oder Verfahrensökonomie nicht durchgreifen können. (r.2, emphasis added)

Enlarged Board
Of course, G 1/97 and G2/19 identified procedures before the boards where the holding of oral proceedings was not necessary (note: I use the term 'procedures'; decision G1/97 does not explicitly say that the request at issue in that case was a proper appeal under Article 106 EPC). 
In G 2/19, the Enlarged Board held: 

"Artikel 116 (1) Satz 1 EPÜ ist vielmehr dahin einschränkend auszulegen, dass die bloße formale Position als faktischer Beteiligter am Beschwerdeverfahren nicht ausreicht, um die Durchführung einer mündlichen Verhandlung verlangen zu können, wenn der Petent [i.e. the party requesting the oral proceedings], wie hier, nicht zur Beschwerdeeinlegung befugt ist, weil er im Rechtssinne nicht am vorangegangenen Verfahren beteiligt war oder wenn er - was hier zugleich vorliegt - einen der Beschwerde nicht zugänglichen Gegenstand verfolgt. Vielmehr kann die angerufene Kammer ein solches Begehren umgehend schriftlich und, wie die Große Beschwerdekammer es in G 1/97 formuliert hat (vgl. Entscheidungsgründe Nr. 6 letzter Absatz), ohne Einhaltung weiterer prozessualer Formalitäten als unzulässig verwerfen."

G1/97 and G2/19, however, concerned exceptional cases where a procedure could hardly be called an appeal, at most because a document titled 'Notice of appeal' had been filed (and a fee paid and a letter with grounds filed); however, in both cases with a purport going well beyond the system of the appeals as set up in part VI of the EPC.

Travaux préparatoires EPC 1973
In the 1970 first preliminary draft for the EPC (established by the Intergovernmental Conference), Art.84, oral proceedings were to be held "on its own initiative or at [the applicant's] request, where it considers this to be expedient; however, the examining division "must give a hearing to the applicant on his request if it proposed to give a decision refusing the application wholly or in part".
In the 1971 second preliminary draft, oral proceedings are held upon request (before the Examining Division, only upon request if refusal is envisaged) (Article 140). 
Document BR/12 e/69, minutes of Working Party I of 24  to 28 November 1969, p.25, states that the Working Party "thought it was enough to provide that a hearing [in appeal] should take place whenever any party requested it".
Thus, the Working Party modified the proposal in the (older) first preliminary draft of 1965 of the Working Group, which specified that appeal hearings were to be held at the request of a party only when the board found it expedient. 

EPC 2000
The legislator did not amend Article 116 during the EPC 2000 revision. The minutes of the Diplomatic Conference of November 2000 do not contain any discussion of Article 116 (link). 

In fact, "contrary to Article 116, failed to arrange for the holding of oral proceedings requested by the petitioner" was included in the exhaustive list of grounds for petitions for review (Rule 104). 

This relatively recent consensus could be seen as an indication that there was no subsequent legal agreement or practice in the sense of Article 31(3) VCLT changing the interpretation of Article 116 EPC to include an implicit limitation to appeals where the Board thinks that the oral proceedings will be helpful in its decision-making.

At any rate, such an interpretation would treat the phrse "at the request of any party to the proceedings" in Article 116(1) EPC as covering the same cases as "if it considers this to be expedient", whereas from a systematic and grammatical interpretion, "at the requst of any party" deals with cases where the Board does not find the oral proceedings expedient (as also expressed by the German language version: "entweder auf Antrag eines Beteiligten oder, sofern das Europäische Patentamt dies für sachdienlich erachtet, von Amts wegen statt.")

Dynamic interpretation
Linderfalk, in his extensive treatise on treaty interpretation, proposes on p.182 that what matters in the context of 'dynamic interpretation' is whether the term is to be interpreted as "a generic referring expression with a referent assumed by the parties to be alterable." Linder­falk, On the Interpretation of Treaties (2007), see also here.

Recent expressions of the EPC legislator's view

Rule 21(1) UPR, adopted in 2015: "Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings. However, the European Patent Office may reject a request for further oral proceedings where the parties and the subject of the proceedings are the same." (see the epi position paper)

Rule 21(2) UPR contains an exception for proceedings concerning a request for unitary effect; however, this does not mean that oral proceedings are not held in connection with a request for re-establishment of rights for a late-filed request for unitary effect. 

UPCA

Article 52 UPCA (adopted in 2013):  "The oral procedure shall give parties the opportunity to explain properly their arguments. The Court may, with the agreement of the parties, dispense with the oral hearing" (different set of states than the EPC, of course).

EHCR

Article 53 ECHR:
Nothing in this Convention shall be construed as limiting or derogating from any of the human rights and fundamental freedoms which may be ensured under the laws of any High Contracting Party or under any other agreement to which it is a party.

Hence, the EPC can go further than Article 6 ECHR (as interpreted by the ECtHR) - and does so, in Article 116 EPC. Any dynamic interpretation of Article 6 ECHR (in particular, any perceived reduction of the right afforded in the newer case law of the ECHR (compare, in connection with the 'criminal limb' of Article 6 ECHR,  R. Goss, The Disappearing ‘Minimum Rights’ of Article 6 ECHR: the Unfortunate Legacy of Ibrahim and Beuze, 2023 (link, open access), does not force the EPO to diminish the rights of parties under Article 116 EPC.

Furthermore, in the ECtHR decision of Dory v Sweden (12.11.2022):  "The Court notes that no hearing was held at first instance since the applicant did not request the County Administrative Court to hold one. It acknowledges that, in the interests of the proper administration of justice, it is normally more expedient that a hearing is held already at first instance rather than only before the appellate court. Depending on the circumstances of the case, it might therefore be acceptable to reject a request for a hearing upon appeal, although no such hearing has been held at first instance." and "the applicant, in the decisions rejecting her requests for oral hearings, was invited by the appellate court to submit final observations in writing" (https://hudoc.echr.coe.int/eng?i=001-60737  ) 

T 0738/23 - What is used in a second medical use claim

Key points

• Claim 1 recites "A [medium chain fatty acid, MCFA ] for use in treating and/or preventing anxiety wherein the MCFA is decanoic acid or octanoic acid and wherein the MCFA is in the form of a medium chain triglyceride (MCT)."
• Claim 3 recites: "A composition comprising a MCFA as defined in any one of claims 1 to 2 for use in treating and/or preventing anxiety."
  
  
• Is claim 3 a dependent claim?
• Claim 1 is novel and inventive. Claim 3 is not novel. 
  
  
• "D3b does not identify which ingredient in go ghrita might be responsible for the anti-anxiety effect and is therefore not relevant [for the examination of inventive step of claim 1] for this reason."
• "Whereas claim 1 relates specifically to decanoic or octanoic acid in the form of MCT for the treatment of anxiety, claim 3 more broadly encompasses any composition comprising the same compounds as in claim 1, potentially along with additional substances, for the same therapeutic application."
•  D21 discloses a study investigating the impact of a diet containing goat milk fat (GMF) on inter alia the anxiety behaviour in rats (see Abstract);" [ follows a discussion of the results presented in D21]
•  D21 discloses the use of a composition comprising inter alia octanoic acid and decanoic acid in the form of triglycerides for the prevention or treatment of anxiety."" 
•  Although D21 does not attribute the anxiolytic effect of the GMF to the octanoic and decanoic acids in the form of MCT, a composition comprising octanoic and decanoic acids in the form of MCT for use in the prevention or treatment of anxiety cannot be regarded as novel because D21 discloses the occurrence of this effect in a composition comprising the same triglycerides."
• "Consequently, the subject-matter of claim 3 is not novel over the disclosure of D21, and the main request does not meet the requirements of Article 54 EPC."
• The interpretation of claim 1 seems to be based on  T 0286/09. The analysis of claim 3 is the same as in T 0378/13.
  
  
  
  
  

EPO 

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

R 18/23 - Oral proceedings before the three-member panel

Key points

• Are oral proceedings in petition for review cases useful if the preliminary opinion is negative?
• Pending case R 18/23 illustrates a case where the preliminary opinion was negative. The petitioner filed a 28-page letter in reply (link)
• Oral proceedings were held before the three-member panel. Before giving the floor to the petitioner, the chairperson pointed out that the EBA (after studying the petitioner's written submissions) maintained its preliminary opinion. 
• The oral proceedings lasted four hours, including the time for the board's deliberation (I don't know how long that was). Six professional representatives participated on behalf of the petitioner (proprietor). (minutes)
• The EBA then announced the decision to forward the petition to the five-member panel.
• The case is still pending.
• Would the outcome of the case have been the same if the EBA had no obligation to appoint oral proceedings if the EBA estimates (beforehand) they would not 'serve any legitimate purpose'? 

EPO 

The link to the file wrapper can be found after the jump.

T 2192/22 - Use of ... but no second non-medical use claim

Key points

• Board 3.3.04 in line with its recent decision  T 1913/21 concludes that a claim specifying 'use of [a compound] in [a preparation process] is not a valid second non-medical use claim. 
• The Board: "it is furthermore apparent that in decision G 2/88, the Enlarged Board, as part of its considerations relating to Article 123(3) EPC (see point 5.1 of the Reasons), made a distinction between categories of claims, namely between those directed to a use of a physical entity for achieving an effect on the one hand and those directed to a process for the production of a product on the other."
• This is, as such, correct.
• The Enlarged Board in G 2/88 held that: "Thus, provided that a claim defines the use of a particular physical entity to achieve an "effect", and does not define such a use to produce a "product", the use claim is not a process claim within the meaning of Article 64(2) EPC" (as cited by the TBA).
• "Thus, the Enlarged Board's findings relating to new uses of known compounds are limited to uses/methods/processes which are not processes resulting in products, as referred to in Article 64(2) EPC."
• It is not so clear that the distinction in the context of Art. 123(2) also applies to use claims in the context of Art. 54, in my view.
• " In contrast to the conclusions drawn in T 332/94 and T 22/09, the findings in T 140/94, T 319/98, T 966/00, T 593/06 and T 149/22 do not reflect the prevalent established jurisprudence, [*] as summarised above, in particular with regard to the fact that the effect recited in the claim must relate to the use, rather than to the product directly obtained by the process steps within the meaning of Article 64(2) EPC, in order to constitute a limiting feature in the sense of G 2/88. Importantly these decisions do not provide any reasoning as to why the claims were not regarded as claims directed to a process for the manufacture of a product, which would not allow the principles of G 2/88 to be applied, or conversely whether the competent boards were of the view that the principles of G 2/88 are transferable to process claims and why this should be so."
• * - The Board refers to the analysis of the case law it gave in T 1913/21, but I appreciate the Board's position in T 1913/21 as a new development.
• The board concurs in this regard with the findings in T 892/94 (Reasons 3.8) that applying the concept of novelty developed in G 2/88 to claims for processes of producing a product, even when drafted as use for achieving a technical effect that results in an improved product could potentially result in a permanent monopoly of the use of a known substance for a known purpose. Such a permanent monopoly would arise from the repeated drafting of claims for a process of production including a new, possibly only subtly different, technical effect associated with this known process (see also T 1179/07, Reasons 2.1.3).
• T 892/94, point 3.8, was not about 'processes of producing a product' but about "The board concurs with the appellants' opinion in so far as the admissibility of claims directed to the use of a known substance for a known purpose which differ from the state of the art merely by the indication of a newly discovered technical effect associated with the said known use could potentially result in a permanent monopoly of the use of a known substance for a known purpose by means of the repeated introduction into such claims of a new, possibly only subtly different technical effect associated with this known use."
• T 1179/07 was about a process claim. Still, the reasoning may apply mutatis mutandis; " If the board were to apply the conclusions from G 2/88 and G 6/88 to the granted process claim, this would result in the product of granted process claim 1 being protected again under Article 64(2) EPC, even though this product is known from D1 and was manufactured by exactly the same process as described in D1. However, it cannot be the purpose of Article 64(2) EPC that the protection conferred by that article also extends to a product obtained by a known process." (point 2.1.3, translation).

EPO 

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

T 0748/24 - Filing no reply as proprietor in appeal - patent revoked

Key points

• The OD decided to maintain the patent in amended form. The opponent appeals. The proprietor does not reply to the communication setting the time limit for filing a reply to the Statement of grounds (with a registered letter).
• No acknowledgement of receipt is visible either, but I understand that those are no longer used. I understand the EPO has some internal information about the delivery of registered letters by the postal service provider (or can obtain such information) but that information is never visible in the public online file. 
• If the proprietor disputes the receipt or delivery of the letter, a petition for review could be successful (see R 7/09). 
• The Board revokes the patent without holding oral proceedings and without advance notice.
• The Board does examine the opponent's argument on the merits and agrees with them. 
• No petition for review was filed.

EPO 

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

T 0217/23 - The duty of the proprietor in opposition proceedings

Key points

• The proprietor, as respondent, files auxiliary requests in appeal. The Board finds the proprietor's main request (claims held allowable by the OD) to be not allowable. 
•  "At issue is whether a patent proprietor may wait for the preliminary opinion of the opposition division to react to the objections raised in the notice of opposition and whether, where the preliminary opinion is positive, no auxiliary claim requests with fallback positions need to be filed, unless the opposition division changes its opinion at oral proceedings."
• "In inter partes proceedings, each party has to be given equal opportunity to present its case and a fair chance to respond to new matter raised by the other party or parties, or by the opposition division. The opposition division and the parties have to observe the principle of good faith (T 669/90, OJ EPO 1992, 739, points 2.3 and 2.4; T 201/92, point 3.5). To expedite the proceedings and implement the principle of fairness towards the other party or parties, each party must submit all facts, evidence, arguments and requests for amendments relevant for its case as early and completely as possible, and not in a piecemeal manner (T 326/87, OJ EPO 1992, 522, points 2.1.1 and 2.1.2; T 430/89, point 5.3; T 951/91, OJ EPO 1995, 202, points 5.2 and 5.3). This case law developed mainly in the context of Article 114(2) EPC pertaining to facts and evidence. 
• Nevertheless, in view of the principles set out above, the rationale of this case law also applies to a patent proprietor's observations and amendments (Rule 79(1) EPC), which should not only include all facts and evidence relied on to defend the patent (T 502/98, point 1.5) but also requests for amendment of the patent considered necessary to address the main objections raised by the opponent in case these should be found to prejudice the maintenance of the patent (see e.g. T 582/08, point 8.5)."
• "Patent proprietors do not have a privileged position in opposition proceedings allowing them to address objections raised by opponents by way of requests for amendment only when presented with the preliminary or final opinion of the opposition division in the summons or during oral proceedings."
• "This would be unfair to the opponents as they would be confronted at a very late stage with a change in the object of the proceedings that they could not reasonably have foreseen and for which they could not prepare. To expect a patent proprietor to address in its observations to a notice of opposition the objections raised by the opponents also by filing suitable fallback positions does not place an undue burden on the patent proprietor. "
• A proper response to an opposition does not require permutations of sets of amended claims that address each objection individually or in any combination as this would leave it to the opposition division to identify any patentable subject-matter from such a plethora of claim sets and unduly burden the proceedings.
• It seems common practice in appeal proceedings.
• "Presented with an opponent's complete case at the outset of the opposition proceedings, a patent proprietor, knowing its commercial interests, should be able to define a reasonable number of fallback positions that address the main issues in its observations to the opposition. Although the persuasiveness of objections by opponents cannot be predicted with absolute certainty, the duty to file requests for amendment cannot solely depend on the opinion by the opposition division as this would imply a shift of the patent proprietor's responsibility for making its case to the opposition division and would compromise the opposition division's duty to equal treatment of the parties. "
• "Of course, there are complex cases in which numerous objections are raised which cannot be fully addressed by a reasonable number of requests for amendments and which might even require the patent proprietor to adopt non-convergent strategies of defence to safeguard its commercial interests in a patent. Nevertheless, also in these cases, the main lines of defence should emerge from the patent proprietor's observations to an opposition which also must include any request for amendment to give the opponent a proper opportunity to reply to new matter and to avoid ping-pong submissions immediately before or during oral proceedings before the opposition division."
• Requiring the submission of all facts, evidence, arguments and requests for amendments relevant for the patent proprietor's case as early and completely as possible does not preclude further submissions, including the filing of additional requests for amendment in the course of opposition proceedings if there are good reasons, for example, responding to new evidence, addressing new objections or dealing with unforeseen challenges relating to gaps in the chain of evidence or argument which emerge during the course of the proceedings.
• So far, the Board could be setting a framework for the OD to decide on the admissibility of auxiliary requests filed after the proprietors' first reply to the opposition, in particular on the admissibility of auxiliary requests filed by the Rule 116 date.
• However, the Board provides the above reasons as part of the reasoning to hold auxiliary requests inadmissible that were filed by the respondent with the reply to the appeal. In particular, the OD had decided to maintain the patent in amended form, and in the ARs the claims are narrowed compared to the claims held allowable by the OD. [edit 08.10.2025]
• Hence, the OD would not have even considered the auxiliary requests at issue and whether they were filed or not would not make a difference for the judicial review of the OD's decision, it seems. In other words, had the ARs been filed already before the OD (timely), they would have been carry-over requests that had not been considered in the written decision of the OD, but then would have been admissible under Art. 12(4) RPBA.

EPO 

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

T 1026/24 - Wrong party as appellant

Key points

• "There is a divergence between the name, the legal structure and the address of the legal persons named as opponent and as appellant in the proceedings."
• "in the notice of appeal, dated 16 July 2024, and in the statement of grounds of appeal, dated 17 September 2024, and in the letter withdrawing the request for oral proceedings, dated 19 March 2025, the appellant was indicated to be: Siemens Gamesa Renewable Energy GmbH & Co. KG."

• "This does not correspond to the notice of opposition which was filed, although on business paper of the appellant, explicitly in the name and on behalf of: Siemens Gamesa Renewable Energy Deutschland GmbH"

• "There seems to be no doubt that the latter company acted as the opponent and remained party to the entire opposition proceedings."

• "A transfer of the status of opponent was never declared and substantiated nor are there any facts on file that might allow for the conclusion that the appellant must be the universal successor of the opponent."

• " There is also no room for interpretation with regard to the appellant's identity that was consistently indicated in the appeal proceedings. No facts and arguments have been submitted in appeal proceedings as to why the appellant should not be the person named in the three written submissions mentioned in paragraph 1.2 above."

• "The appellant had no right to appeal."

•  According to Article 107 EPC, only parties to the proceedings may appeal. As set out above, the appellant was never a party to the opposition proceedings."

• The appeal is rejected as inadmissible.

• No correction under Rule 139 EPC was requested, it seems.

EPO 

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

G 2/24 - Intervention in appeal

Key points

• The Enlarged Board confirmed that G 3/04 is still good law: after withdrawal of all appeals, appeal proceedings may not be continued with a third party who intervened during the appeal proceedings.
• The Technical Board of Appeal wished to depart from G 3/04 and had referred the question under Art. 21 RPBA. 
• "Although Article 21 RPBA allows for, and even encourages, the further development of the case law, thereby granting the boards of appeal ample discretion for referral, the Enlarged Board does not find the prospect of a board of appeal referring a question of law solely because it disagrees with an earlier G-decision or opinion to be particularly appealing in terms of safeguarding consistent case law. In view of the legislative intent of Article 112 EPC to ensure a uniform application of the law, a board of appeal is expected to substantiate why it considers the earlier ruling on the interpretation of the law to have been superseded by a subsequent change in the law or for potential gaps in its reasoning. Another motivation for referring a question that had previously been answered by the Enlarged Board could be that a board of appeal is confronted with a new factual or procedural situation that distinguishes it substantially from the situation underlying the earlier referral. The Enlarged Board takes note of the referring board's criticism of the legal reasoning behind decision G 3/04 and will consider this in the following points."
• It seems that the President of the EPO, the epi and the German Patentanwaltskammer had also proposed to revise G 3/04. 
• Compared to the two recent decisions of the EBA, the present decision is of the usual length and contains detailed reasoning, applying the conventional types of legal reasoning.
• The EBA observes that there have been no relevant changes to the EPC since the time G 3/04 was given.
• The EBA analyses the 'legal concept of appeals' under the EPC,  citing the case law and the legal literature (handbooks), and in the same way analyses the legal concept of a 'party' to the proceedings (also citing the travaux), and the concept of intervention.
• The EBA also compares the legal situation in several EPC contracting states.
• "It follows from this comparative study that the procedural treatment of an intervener essentially depends on the specific regulation applicable in the respective court system. In the absence of a specific statutory provision stating that an intervention is independent of the main parties' procedural actions, an intervention is considered an accessory to the proceedings and ceases to have effect if the proceedings are terminated by the main parties."
• "As in the laws analysed in the comparative study, awarding an intervener an independent party status would require an explicit legal provision in the EPC. Hence, following and implementing the general, abstract and to some extent rather political observations of the President of the Office, four amicus curiae briefs (epi, Patentanwaltskammer, Mr Exner and Mr Thomas) and, to a certain extent, the referring board, would thus require amending the legal framework, i.e. the EPC and/or the Implementing Regulations."
• cf. Niklas Luhmann, Legitimiation durch Verfahren, page 131 (in the German original): "All dies ist bei Konditionalprogrammen [i.e., as in legal proceedings]  im Prinzip und weitgehend auch in der Praxis anders. Hier wird nach Maßgabe eines »Wenn« das programmierte »Dann« gewählt. Die Folgen werden von dem Entscheidenden nicht mit verantwortet, sondern dem angelastet, der das Programm erließ (und damit vielleicht seinerseits bestimmte Zwecke erreichen wollte). Die Verantwortlichkeit kann hier in weitem Umfange nach oben abgeschoben werden. Beim konditional programmierten Entscheiden geht es nur noch um den Nachweis, daß ein bestimmter Tatbestand faktisch vorliegt und daß es sich dabei um jenes Signal handelt, das nach dem Programm die Entscheidung auslösen sollte. Zum Entscheiden genügt juristischer Sachverstand, der sich nach Bedarf durch Zeugen und Sachverständige informieren läßt, die Entscheidung aber allein verantwortet. Auf diese Weise kann die Entscheidung gegen zahlreiche Möglichkeiten der Kritik praktisch immunisiert werden, vor allem ...  (4) gegen eine Kritik der Auswirkungen (im Unterschied zu den rein juristischen Konsequenzen). (...) Der dichotomisch zugeschliffene Darstellungsstil juristischer Begründungen, das Feststellen von Begriffen und Fakten als so und nicht anders, entspricht genau dieser Funktion, die Kritikfähigkeit einer Entscheidung zu reduzieren und auf wenige kontrollierbare Fehlerquellen zu beschränken - im Unterschied zum Denken in Wahrscheinlichkeiten und Chancen, gleitenden Skalen, Nutzenschätzungen, Wertverhältnissen und zeitbedingten Opportunitäten, das bei Zweckprogrammen [i.e., political decision-making] angebracht ist.
• Note that in the quote above, the part "i.e. the EPC and/or the Implementing Regulations" might be a key insight that was not a priori evident.
• The EBA refers in poin 37 to the 'rubrum' of the decision ("More specifically, the parties to the proceedings are first of all the parties for whom the deciding body intended to issue the decision. These are the parties that are named in the rubrum of the decision.")  It appears to be a German term (as explained e.g. here: https://www.pf.um.si/site/assets/files/5987/germany.pdf ) 

• EPO

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

T 1262/22 - Authorizations and appointments

Key points

• Decision taken during oral proceedings on 17.09.2024, written decision issued 09.09.2025. There was a communication under Art. 15(9) RPBA informing the parties that the issue would be issued within three months. 
• Strictly speaking, Article 15(9) RPBA does not oblige the Board to issue a second communication in the event of further delays.
• "While representation during the opposition proceedings was undertaken by BIP Patents (in the following "BIP"), the notice of appeal was signed by a new professional representative, König Szynka Tilmann von Renesse Partnerschaft mbB (KSTvR). Since BIP had not informed the EPO of the termination of its authorisation, it was still deemed authorised before the EPO, as provided for by Rule 152(8) EPC. Hence, there was nothing unusual in the fact that the EPO continued to communicate with BIP, nor can it be concluded on this basis that KSTvR was not authorised, as submitted by the respondents."
• "Although the EPO did not request the appellant to provide an authorisation after the notice of appeal was filed, the new representative KSTvR filed an individual authorisation of its own motion on 5 April 2022. The authorisation had been granted by the opponent, Bayer AG, on 25 March 2022."
• "Therefore, the consequence indicated in Rule 152(6) EPC, according to which if the required authorisation is not filed in due time any procedural step taken by the representative is deemed not to have been taken, did not materialise. The notice of appeal was thus validly filed."
• "Nor is this conclusion affected by the fact that KSTvR's authorisation bears a signature which is dated 25 March 2022, i.e. after the filing of the notice of appeal. Contrary to the respondents' submissions, the EPC does not express a requirement that the authorisation be signed before the filing of the notice of appeal; this would even be inconsistent with the purpose of Rule 152(2) EPC, which allows for a deficiency concerning the filing of an authorisation to be remedied. "
• This is established case law indeed. Although I would not exclude the possibility that some other patent offices view it differently under their own national laws.
• "An authorisation is an internal legal relationship between the representative and the party. Accordingly, the question of whether an authorisation was in existence at the time the notice of appeal was filed is irrelevant for the EPO, as long as any deficiency concerning the party's representation was remedied within the time limit under Article 108 EPC."
• The terminology remains challenging. We have the authorisation, the appointment, and, under Rule 41(2)(d), the indication of the representative in the Request for grant "if the applicant has appointed a representative" (implying that the appointment exists before the naming of the representative to the EPO). 

EPO 

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

T 2229/19 - Shortcutting Art. 116 through Art. 13(1) RPBA (?)

Key points

• This decision is from 27.03.2024. A petition for review was rejected. That drew my attention to the following.
• For the main request, dependent claim 4 was held non-compliant with Art. 123(2) by the Board (contrary to the OD).
• Auxiliary request 2 was filed after the preliminary opinion. Claim 4 is deleted in it. This solves the issue under Art. 123(2). The Board also finds it a case amendment.
• The Board: "In the exercise of its discretion, the board may, inter alia, take into account the suitability of the amendment to resolve issues admissibly raised by another party in the appeal proceedings or the board (Article 13(1) RPBA). In the current case, despite the fact that the amendment introduced with auxiliary requests 2 and 3 may overcome the objection under Article 76(1) EPC, this is not the case for the objection of lack of sufficiency raised under Article 83 EPC. The opposition division had found that the invention defined in the independent claims maintained in the set of claims of auxiliary requests 2 and 3 was not sufficiently disclosed in the application (Article 83 EPC), an opinion that the board endorsed in its preliminary opinion. The deletion of the dependent claims in auxiliary requests 2 and 3 therefore did not result in claims which were clearly allowable."
• The Board does not admit the request, holds AR-3 inadmissible for the same reason (in AR-3, all dependent claims were deleted) and rejects the appeal.
• A problematic point with this course of events is, in my view, that the minutes do not show that the key issue of Article 83 was discussed during the oral proceedings before the Board, or that the proprietor had a real opportunity to comment on it. Had the proprietor a fair opportunity to orally convince the Board that claim 1 met the requirement of Art. 83 - a right enshrined in Article 116?
• I acknowledge that Rule 104(a) only speaks of "contrary to Article 116, failed to arrange for the holding of oral proceedings requested by the petitioner". However, that does not mean that the entirely theoretical, of course, case wherein the Board opens the oral proceedings, directly announces a decision and immediately closes the oral proceedings is no ground for a petition for review, even less that conducting the oral proceedings in such a way complies with Article 116 EPC (although, just to be clear, I'm not saying parties have an unfettered right to speak at length during oral proceedings either).
• The opportunity that existed in the case to comment in writing on the preliminary opinion of the Board may have been sufficient under Article 113(1), perhaps, but Article 116 is a separate right.
• The Board could have admitted AR-3, listened to the proprietor on sufficiency of the independent claims, and copied/pasted the preliminary opinion on that point if the proprietor had nothing new to say about it during the hearing. Then, at least, we would have a decision of the Board on the point (also on post-published evidence and 'plausibility', which were the issues before the OD), and compliance with Article 116. 
• See also the critical comment of "Anon Y Mouse" over at IP Appify blog (https://blog.ipappify.de/r-14-24-the-limits-of-a-petition-for-review/#comment-1966)

EPO 

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