T 0453/24 - Appeal concerning the fixing of costs

Key points

• This is an appeal against a decision fixing the costs. The OD had conducted the procedure for fixing the costs after the decision to apportion costs had become final. 
• The second oral proceedings [before the OD] took place on 13 September 2018. The patent proprietor requested that the costs arising from the second oral proceedings be borne by the opponent.

• III. In its interlocutory decision of 21 December 2018, the opposition division found the then pending main request to be allowable and decided that "the costs incurred by the proprietor in respect to the second oral proceedings should be borne by the opponent". More specifically, the opposition division concluded at the end of its reasons "that the costs incurred by the proprietor in respect to the second oral proceedings (including travel costs and the time that will be charged by the proprietor's representatives to prepare and attend said oral proceedings) should be borne by the opponent"

• The opponent's appeal was dismissed.

• In the course of the subsequent proceedings before the opposition division on fixing the amount of costs [Rule 88(2)], the patent proprietor (respondent in the present proceedings) requested that the costs be fixed at a total amount of GBP 16,827.67. The request was supported by an invoice for the same amount issued on 28 September 2018 to the respondent. The invoice covered professional charges in the amount of GBP 14,381.50 and travel costs in the amount of GBP 2,446.17, and it was filed earlier with the opposition division on 12 April 2019 and re-filed on 24 March 2023. After having been informed by the EPO's formalities officer that supporting evidence related to said invoice was missing, the respondent filed various documents as evidence for the travel costs of GBP 2,446.17

• In its decision of 26 January 2024 (decision under appeal), the opposition division eventually fixed the amount at GBP 16 162.42,

• The appellant (opponent) requested, as its main request, that the decision under appeal, awarding costs in the amount of GBP 16,162.24 or EUR 18,910.03 to the respondent under Article 104(2) and Rule 88(3) EPC, be set aside and that the following costs not be considered for the final amount:

  a) the costs related to work on the file before the oral proceedings on 4 September 2018 and 5 September 2018;

  b) the costs incurred by Ms Cornish for preparing and participating in the oral proceedings;

  ... in the absence of a more detailed bill of costs.

• The Board: "The appeal is admissible. Under Rule 97(2) EPC, a decision fixing the amount of costs of opposition proceedings under Article 104 EPC cannot be appealed unless the amount exceeds that of the fee for appeal. In the present case, the disputed amount of costs exceeds the appeal fee."

• The Board: " The board in T 34/14 (Reasons, point 5.4) found that an opposition division's decision on apportionment of cost is a discretionary one that should be overruled only if the board". Note, however, that the present appeal is about the fixing of the costs.

• The standard of proof is not very high when it comes to the determination of the amount of apportioned costs under Article 104 EPC (see Rule 88(2), last sentence, EPC: "Costs may be fixed once their credibility is established.".)

• "The appellant takes the position that the presence of Ms Cornish at the second oral proceedings (and the respective expenses calculated at GBP 3,655.00 by the appellant) could have been avoided since she did not actively take part in these oral proceedings."

• " The board concludes that the presence of two professional representatives at relevant oral proceedings was standard practice in the course of the work done for the respondent by its representatives. The board notes that this practice is very common among parties to proceedings before the EPO."

• "The board does not consider the amount of GBP 7,177.50 for Mr Abthorpe's work between 10 and 13 September 2018 to be unreasonable. On the one hand, the appellant's assumption that Mr Abthorpe spent only two working days on this work lacks any basis. On the other hand, a daily rate between GBP 2,400.00 and GBP 3,600.00 (assuming between two and three working days were spent) does not seem to be unreasonable given that the rates vary between [Contracting States] and that the rates generally tend to increase rather than decrease."

• The appeal is dismissed.

EPO 

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

T 0799/24 - Technical CAD method

Key points

• G 1/19 held that "The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design", and that inventive step of a computer-implemented design method requires a 'further technical effect'. 
• Board 3.5.07 in charge of G06F/17, including G06F17/50 (computer-aided design) indicates that the applicant in this case has found a solution - not only of a technical problem but also of the legal obstacle to patenting CAD methods that G 1/19 poses. 
• Claim 1 is directed to a computer-implemented method for designing a car. Formally, the claim is formulated as an apparatus claim with corresponding features. The method is directed to designing a car body. The claim recites: "an optimization analysis unit (23) that performs an optimization analysis on the welding candidates by applying at least one [input] to the optimization analysis model to select an additional welded point or an additional welded location that satisfies the optimization analysis conditions from the welding candidates and thereby determine a location of the additional welded point or the additional welded location to be added to the automotive body to improve the stiffness of the automotive body during driving"
• So, the positions of welded points are calculated, which are recited as "to be added to the automotive body"
• The Board: "The additional welded point(s) is/are "to be added" to the automotive body to improve its stiffness during driving. In the board's view, this formulation at least implicitly specifies a further technical use (see decision G 1/19, points 124 and 137)."
• The Board gave the decision a long headnote, starting with "In the board's view, the formulation in claim 1 of the main request that additional welded point(s) is/are "to be added" to the automotive body to improve its stiffness during driving at least implicitly specifies a further technical use".
• I guess that this claim-drafting construct could be applied quite broadly for methods for designing an industrial product. 

EPO 

The link to the decision is provided after the jump.

T 0376/23 - Acting without PoA

Key points

• The Board, in translation: "The patent holder's appeal, filed on February 17, 2023, was initially ineffective because it was signed by attorney Dr. B, who was not authorised to do so [*]. " (Dr. B was not a European patent attorney but a German lawyer). 
• [*] - The Board wishes to express that the required signed PoA (authorisation) was not filed with the EPO. This is not exactly the same as the attorney acting without instructions from the principal/client/proprietor. 
• At the time (2023), "authorised lawyers must (always) file a signed power of attorney or a reference to a registered general power of attorney". Of course, nowadays that is no longer the case. 
• "the patent proprietor's power of attorney dated February 17, 2023, is not in the name of Attorney Dr. B, but merely in the name of B legal Partnerschaft von Rechtsanwälten mbB ... . The signatory of the appeal brief also does not benefit from the legal fiction under Rule 152(11) EPC, according to which the authorisation of an association of representatives is deemed to be an authorization for each representative who provides proof that he or she acts within that association. Firstly, it is not apparent that B legal Partnerschaft von Rechtsanwälten mbB is an association within the meaning of this provision. Secondly, Rule 152(11) EPC is not applicable to lawyers (see J 8/10, OJ EPO 2012, 473, Reasons 11; cf. also the case decided in T 1846/11). Therefore, since Attorney Dr. B was not effectively authorised, he was to be treated as a person not entitled to file the patent holder's appeal at the time the appeal was lodged."
• "it should also be taken into account that a procedural act by an unauthorised person is to be treated in the same way as a missing signature (see G 3/99, OJ EPO 2002, 347, Reasons 20). A notice of appeal must be signed in accordance with Rules 99(3) and 50(3), first sentence, EPC. If the appellant fails to do so, the EPO will invite it, in accordance with Rule 50(3), second sentence, EPC, to sign the notice of appeal within a specified time limit. If the notice of appeal is signed in due time, it retains its original date of receipt in accordance with Rule 50(3), third sentence, EPC; otherwise, it is deemed not to have been filed"
• "The patent proprietor filed a copy of the statement of appeal on March 28, 2023, within the two-month time limit set by [registry's] communication of March 1, 2023. The copy bore the signature of Dr. H, the professional representative duly authorised under Rule 152(11) EPC [*]. The patent proprietor thus properly remedied the defect described above in paragraphs 1.1.2 and 1.2. Therefore, the statement of appeal is to be treated as having been validly filed on February 17, 2023."
• * - Dr H filed a properly signed authorisation correctly stating the association he belonged to.
• The opponent argued that Rule 50(3) and G3/99 do not apply, and that instead Rule 152(6) applies (and, likely, that a PoA to Dr B should have been filed, not a copy of a Notice of appeal filed by Dr H). The Board leaves it open, referring to the protection of legitimate expectations.
• The Board examines the presented set of claims, finds them all unallowable or inadmissible, and revokes the patent (the opponent had also appealed). 

EPO 

The link to the decision is provided after the jump.

T 0220/22 - Reformatio in peius

Key points

• During the oral proceedings before the OD (minutes), the OD decided that the main request did not meet Art. 83. AR-1 was found to comply with Art. 123(2) but not Art. 84 (the added feature was unclear). AR-2 was found to be novel and inventive, and sufficiently disclosed. However, a new objection under Art. 53(c) was admitted into the procedure and found to be convincing (the method claims encompass methods of treating the human or animal body; because the recited gene editing of "cells" in the claims does not exclude so). 
• The proprietor then submitted AR-3, adding the term 'ex vivo' in the claim. The opponent objected under Art. 123(2), the proprietor explained it was an undisclosed disclaimer under G 1/03,  and the OD found the request allowable. 
• The minutes do not reflect a discussion of whether the disclaimer met all the requirements of G 1/03.
• The grounds of the decision of the OD do not specify which objections the opponent had (necessarily: during the oral proceedings) under Art. 123(2). The OD briefly reasons that the term "ex vivo" excludes treatments of the human or animal body, and addresses the Art. 53(c) objections, and is permitted under G 1/03.
• Only the opponent appeals.
• "In the decision under appeal, the opposition division held that while the method of claim 8 is directed to modifying the genome of a cell, it is not limited to cells as the cells may be part of an organism as detailed in paragraphs [0008] and [0280] of the patent. The "ex vivo" limitation introduced in claims 8, 14, 16 and 17 of the then auxiliary request 3 - now main request - was held to be a disclaimer in accordance with G 1/03 and G 2/03 and thus allowable."
• The Board does not discuss it explicity, but the opponent argues in the SoG, (point 5.6 of the SoG) that it was a positive feature and not a disclaimer, and if it was a disclaimer, then it removed more than necessary, contrary to G 1/03, namely performing the gene editing method on whole living plants which is not excluded by Art. 53(c) (which refers to animals and humans, not to plants). 
• The argument has some merits.
• The Board does not discuss the admissibility of this - seemingly new - attack by the opponent.
• "The board considers that claims 8, 14, 16 and 17 exclude more than is necessary, contrary to G 1/03, as they disclaim methods performed directly on whole living plants, which are not excluded under Article 53(c) EPC (cf. claim 12). Thus, at least claims 8, 14, 16 and 17 of the main request contravene Article 123(2) EPC."
•   In accordance with the principle of prohibition of reformatio in peius, in the circumstances of the present case, the respondent [proprietor] is primarily restricted to defending the patent as maintained by the opposition division (see decisions G 9/92 and G 4/93, both OJ EPO 1994, 875, headnote II). The respondent is accordingly limited to proposing amendments occasioned by the appeal, but without breaching the opponent-appellant's protection against reformatio in peius"
•  Any set of claims which is broader in scope than the set of claims as maintained by the opposition division (current main request) can only be admitted in exceptional circumstances and following the principles developed in G 1/99
•  G 1/99: in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows:

  - in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;

  - if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;

  - finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC."

•  Replacement of the term "ex vivo" in claims 8, 14, 16 and 17 by "not a method for treatment of the human or animal body by surgery or therapy" reintroduces and covers methods performed directly on whole plants excluded in the request upheld by the opposition division (i.e. in vivo methods performed on plants) and would therefore worsen the legal position of the appellant contrary to the prohibition of reformatio in peius.

• Since deleting the method claims 8, 14, 16 and 17 would prevent the patent from being revoked, the amendments introduced in these claims, which extend the scope of protection beyond that upheld, cannot be seen as an exceptional possibility for amendment provided for in G 1/99 (supra).

• The auxiliary request at issue is not admitted.

• The patent is revoked.

• G 1/99 provided an interpretation of G 9/92, which held that "the proprietor is therefore primarily limited to defending this version. Any amendments he proposes in the appeal proceedings may be rejected by the Board of Appeal if they are neither appropriate nor necessary, which is the case if the amendments do not arise from the appeal " (r.16). 

• Would a remittal have been possible to deal with the newly admitted attack concerning the disclaimer?

EPO 

The link to the decision is provided after the jump.

T 1092/23 - Replacing auxiliary requests after a remittal

Key points

• In this opposition case, the Board remitted the case in the first appeal for further prosecution, after finding that the then main request and AR-1 were not allowable. At that time, AR-2 to 10 were pending. The proprietor thereafter filed new claim requests in the procedure before the OD. The OD admitted these requests and found one of them to be allowable. The opponent is unhappy and appeals."The EPC does not contain any limitations beyond Article 111(2) EPC regarding the scope of examination after a case has been remitted by a board of appeal. The appellants have not demonstrated any such legal basis.
• The wording of the operative part [order of the decision in the first appeal] "remitted for further prosecution" cannot be interpreted as meaning that the scope of the examination is limited to the stage of the proceedings as it existed immediately before the Board of Appeal, in particular to auxiliary requests 2 to 10 pending at that time. Such an interpretation finds no support in the wording of the operative part."
• After the case has been remitted to the Opposition Division, the following general standards for the admissibility of requests apply, as they also applied in the first stage of the opposition proceedings. [...] ... even before the expiry of a period set under Rule 116(1) EPC for preparing oral proceedings, the opposition division has discretion not to admit requests unless they are admissible under another provision. The fact that an amendment is filed within the period under Rule 116(1) EPC does not mean that it must automatically be taken into account. The question raised by the appellants as to whether Rule 116(1) EPC applies only to the first summons to oral proceedings issued in the opposition proceedings is therefore irrelevant to the decision.
• In exercising discretion, the established criteria shall be taken into account, in particular prima facie admissibility, complexity, procedural economy, stage of the proceedings and a reaction to new developments in the proceedings."
• " In the present case, there is also no evidence of procedural abuse by the patent proprietor and current respondent."
• "In view of the foregoing, there is no exception in the present case to the principle referred to by the Board in its preliminary opinion, according to which there is no legal basis for excluding from the proceedings a request which the Opposition Division has admitted into the proceedings and on which it has decided on the substance"
• The Board finds the current Main Request to be allowable.
  
  
• The decision also includes the following paragraph, which seems very useful (in translation, point 1.10 of the reasons): "The opposition division's discretion to admit amended requests into the proceedings arises from Article 123(1) EPC, first sentence, in conjunction with Rules 79(1) and 81(3) EPC. According to Article 123(1) EPC, a European patent application and a granted European patent may be amended in proceedings before the European Patent Office within the framework of the Implementing Regulations. In opposition proceedings, Rule 79(1) EPC gives the patent proprietor the opportunity to make amendments to the description, claims, or drawings within a time limit set by the opposition division. The admission of more extensive amendments filed at a later stage in the proceedings, however, is subject to the discretion of the opposition division. This follows, inter alia, from Rule 81(3) EPC, which provides that the patent proprietor is given the opportunity to comment or amend "where appropriate", which implies a discretionary decision by the opposition division (in accordance with T 0966/17, point 2.2.1 of the Reasons)."
• So, it is not about Rule 80 EPC here.
• Rule 79 also recites "where appropriate". Rule 81(3) recites "the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings."

EPO 

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

T 1223/23 - To guarantee that the decisions, based on the facts and evidence adduced, are substantively correct

Key points

• A decision with some rather general reasoning on the admissibility of new facts (or arguments) in an appeal. 
• "During the oral proceedings before the board, the appellant [proprietor] submitted - for the first time in appeal proceedings - that document D2 could not be relevant to the novelty assessment of the subject-matter of claim 1 because, in the scheme of D2, the determination of the PUCCH format was done at the UE [user equipment, e.g. mobile phone], whereas granted claim 1 concerned the BS [base station]."
• "In the decision under appeal, the opposition division found the main request not allowable only due to lack of novelty of the subject-matter of claim 1 as granted in view of D2."
• The question is whether to admit this new argument or not.
• "even on the assumption that the board had indeed discretion not to admit a late-filed argument, the board considers that there would be no justification to exercise it here. Once the parties have submitted the relevant claim requests and documents and presented their arguments on them, the board must resolve a number of legal issues falling under its judicial responsibility. These include the interpretation of the claims, the construction of the relevant (prior-art) documents and the proper assessment of their disclosure from the perspective of a skilled person in the respective field."
• "If the board becomes aware, even at a late stage, that its previous interpretation of a (prior-art) document or a claim from the perspective of the skilled person, or its understanding of a prior-art technical teaching, was wrong, in the present board's view, it has a duty to correct that error. This applies irrespective of whether the new understanding arises from the board's own analysis or from a party's new submission."
• "In the present case, to disregard the appellant's argument and keep its original understanding of the scheme disclosed in D2 would force the board to base its decision on an interpretation which it considers erroneous. The procedural framework of the appeal proceedings aims to secure efficient and fair proceedings, but also to guarantee that the decisions, based on the facts and evidence adduced, are substantively correct. In other words, a (technically) correct interpretation of a prior-art document has taken precedence over formal or procedural considerations here. For this reason, once convinced by the appellant's submission, the board adopted it in its assessment of the present case."
• The facts and evidence 'adduced' refer to the admissible factual assertions and admissible evidence. Apparently, in this case, the new argument of the proprietor did not involve new (asserted) facts or new evidence. 
• The Board remits the case, without commenting on whether the difference with D2 provided for an inventive step or not. 
• 
  

EPO 

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

T 0807/23 - Applying G 1/23

Key points

• Perhaps unsurprisingly, a case about polymers.
• "In the decision under appeal, the opposition division found that the data provided in D11 did not enable the skilled person to prepare the commercial product Borclear RB709CF disclosed in that document. Therefore, in view of G 0001/92 and T 1833/14, it was concluded that D11 was not state of the art within the meaning of Article 54(2) EPC (contested decision, page 12, first to fifth paragraph)."
• The decision of the OD was taken on 14.02.2023. The referral in case G 1/23 was in June 2023.
•   "In application of [G 1/23], it is clear to the present Board that the reproducibility requirement is no longer a valid criterion to assess whether a product put on the market before the date of filing of the opposed patent or technical information about such a product is state of the art within the meaning of Article 54(2) EPC. This was also not disputed by the parties during the oral proceedings.

  1.4 Accordingly, the product Borclear RB709CF and the corresponding data sheet D11 are state of the art within the meaning of Article 54(2) EPC."

• The proprietor/respondent raised the question of whether document D11 could be taken as the closest prior art. The Board does not make a decision on this question. 

•  Decision G 0001/23 sets out further considerations regarding the use of non-reproducible prior art in relation to inventive step (see in particular points 92, 93, 95 and 96 of the reasons). As these considerations were not available to the parties and the opposition division at the time of the decision under appeal, the case should also be remitted to the opposition division so that it can consider whether D11 is suitable to be taken as the closest prior art in light of G 0001/23 after giving both parties the possibility to take position on the application of the decision of the Enlarged Board to the present case."

• Point 96 of G 1/23: 96. "It follows from the above that disclosed but non-reproducible features of a product may, but need not, flow into the assessment of inventive step. Adding some lemon juice to a glass of Coca-Cola for a less sweet taste may not be inventive simply because the recipe for Coca-Cola is secret and therefore the original taste of Coca-Cola is considered as unattainable. On the other hand, achieving the original taste of Coca-Cola without sugar or caffeine is probably an unsolved problem at the time of writing. There are no formal and strict rules as to how a non-reproducible but publicly available product or any of its properties can be taken into account when inventive step is examined. The relevant technical teaching that a skilled person would take from such a product is always case specific - it depends on both the product in question and the invention under examination."
• As to the first example, would the claim under examination be: "a composition comprising Coca-Cola and lemon juice"? Would that claim be clear? If not, would the claim be " a composition comprising ... [ the secret ingredients of Coca Cola] + lemon juice"?   Is it correct that the EBA stipulates that such a claim would not be inventive, even if the recipe in square brackets was non-obvious? Would it make a difference if the claim were rewritten into a claim for the preparation method?

 

 

• It seems predictable that the Board will have to decide on the question in a second appeal. 

• 
  

EPO 

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

T 0712/25 - When the EPO forgets the drawings

Key points

• Yet another case where the EPO omits the drawings from the Druckexemplar, without notice.
• In this case, the applicant spotted the mistake of the EPO and even informed the EPO simultaneously with paying the grant fee and filing the translated claims. Still, the patent was granted without the drawing.
• The Board allows the appeal and reimburses the appeal fee.
• Respectfully, the EPO should make its processing of the drawings more robust. 
• " In the present case, drawing page 1/1 was part of application WO 2020/128200 A1 and was still present in the application when it entered the regional phase. However, it was absent from the 'Druckexemplar' and from the communication under Rule 71(3) EPC. While the appellant was informed of the deletion of page 53 of the description, he was not informed of the deletion of the drawing page. The absence of the drawing page is also inconsistent with the references to Figure 1 in the pages of the description intended for grant (page 46, lines 6 and 16). The Examining Division certainly did not intend to omit the drawing page without reason, in the absence of objections raised against it, without informing the applicant and without deleting the corresponding references in the description, especially since the applicant had already pointed out this omission and had only given his consent to the text intended for the grant of the patent on the condition that the drawing page be included."
• Appeal SoG filed 16.5.2025. Appeal granted 06.10.2025. 

EPO 

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

T 0989/23 - Review of a (purported) decision to admit

Key points

•  Just when you thought the matter was settled - the Boards have no competence to set aside a decision of an OD to admit a submission - comes this decision.
• The Board, in the headnote:  "A board has the power to review an opposition division's procedural decision to consider late submissions filed in opposition proceedings. Otherwise, the parties' right to a judicial review of an essential part of the opposition division's decision would be denied. Moreover, on appeal, a board would be compelled to accept a legal and factual framework even if it is based on an erroneous exercise of discretion"'
• The Board, in the present case, 'unadmits' the auxiliary request that was - formally - admitted by the OD (see below), finds the higher-ranking request to be not allowable (not inventive, unclear), and revokes the patent.
• However, the case is special in that: "On the issue of the admittance of auxiliary request 17, the patent proprietor referred to the minutes of the oral proceedings before the opposition division and to the contested decision, and argued that the opposition division had admitted all of the auxiliary requests, including auxiliary request 17, into the opposition proceedings. Auxiliary request 17 had not been considered by the opposition division since the higher-ranking auxiliary request 3 had been found allowable."
• I doubt that AR-17 was actually admitted, in the applicable legal sense, if the OD did not arrive at it by finding the higher-ranking request AR-3 allowable. The case law about the non-reviewability of decisions to admit applies to matters that were admitted and considered on the merits by the OD.
• The Board examines whether to admit AR-17 in appeal (as if it were filed with the statement of grounds). The reasoning is fact-specific, but supported a decision to not admit the request ("the substantiation of patentability of the subject-matter of auxiliary request 17 in the patent proprietor's statement of grounds of appeal differed from the explanations given during the oral proceedings [before the Board] in support of both the prima facie allowability of auxiliary request 17 and the remittal of the case for further prosecution) 
• 
  
• 
  

EPO 

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

T 2199/22 - List of diseases and sufficiency

Key points

• "Claim 1 of auxiliary request 11 relates to a pharmaceutical or nutraceutical product comprising MK-7, administered at a dosage of 1 to 10 myg/day, with n-3 PUFA in the form of a marine oil, administered at a dosage of 5 g/day, for preventing or treating cardiovascular, bone, or cartilage diseases or disorders in both humans and animals. Claim 1 is thus drafted as [a] purpose-related product claim pursuant to Article 54(5) EPC."
•  For the requirement of sufficiency of disclosure to be met in the case of a claim pursuant to Article 54(5) EPC, the application as filed, when read by a person skilled in the art having the common general knowledge in mind, must establish the functional technical link between the claimed product and the claimed specific use within the meaning of Article 54(5) EPC, namely the prevention or treatment of at least one of cardiovascular-, bone- and cartilage-related diseases or disorders in humans and animals"
• " While the disclosure and evidence in the application as filed [...] may suggest a potential health benefit in terms of prophylaxis or prevention after a longer period of treatment for certain physical conditions, there is no evidence that the claimed combination affects the full range of cardiovascular, bone, and cartilage-related diseases or disorders, such as bone cancer."
• The claim does not recite bone cancer.
• The decision seems remarkable because most often, a long list of diseases to be treated is no problem; even less frequently is insufficiency found based on a subtype of disease that is not explicitly recited in the claims.  
• "The board concludes that the skilled person would not have considered that the claimed product achieves prevention or treatment of cardiovascular, bone, and cartilage-related diseases or disorders over the whole scope of the claim."
• 
  

EPO 

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

R0019/23 - Is the Disciplinary BoA a BoA?

Key points

• Article 112a(1) provides that "Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal."
• The party (EQE candidate) was adversely affected by a decision of the Disciplinary Board of Appeal and filed a petition for review. What could go wrong?
• Well, it turns out that the DBA is not a Board of Appeal (in the meaning of Art. 112a EPC).
• The answer was, for the larger part, already given in D3/20 and D5/82 (point 5 of the reasons): the DBA is not a Board of Appeal in the sense of Article 112 (referral of questions to the EBA). The present decision extends that to Art. 112a.
• The interested reader is referred to the Board's reasoning in the decision. The link can be found after the jump. 
• The DBA and the EQE were set up simultaneously on 21.12.1977. The first EQE regulation can be found in OJ 1978 p.101. The possibility of appeal to the DBA was included from the outset. The first Regulation on Discipline can be found in OJ 1978 p.91.
• Art. 22(3) of the first Regulation on Discipline specifies that Art. 111(1) and (2), first sentence, apply "mutatis mutandis", which indicates that the DBA was not a Board of Appeal: otherwise Art. 111 EPC would have applied directly. This is confirmed by Art. 25 of that Regulation: "1) Article 113, paragraph 1, Article 114, Article 117 with the exception of paragraph 2, Article 125 and Article 131, of the European Patent Convention shall apply mutatis mutandis to proceedings before the Disciplinary Bodies."
• A bit of history of the EQE: "the appellant emphasised that the only possible explanation for the bad results of the first Qualifying Examination [in 1979] as a whole, which 64% of candidates failed, was the restrictive approach and severity of the examiners ..." (D5/82)

EPO 

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

T 1456/23 - A non-obvious alternative (soft gelatin capsule)

Key points

• "In appeal, the appellant [opponent]  takes the hard gelatin capsule of formulation 9, example 1 of D11 as sole starting point for the assessment of inventive step."
• " The subject-matter of claim 1 differs from formulation 9 of D11 in that the claimed capsule is a soft gelatin capsule with a soft capsule shell as defined in claim 1."
• "The [proprietor] relies, among others, on D5 (Annex III and Annex IV) and D83 (Annex V) as evidence of a technical effect on bioavailability associated with the differentiating feature." "The [opponent] contests that these post-published data can be taken into account in view of G 2/21,"
• "The application as filed mentions the problem of providing immediate release calcifediol solid oral formulations having improved bioavailability. As a solution to this problem, the application as filed proposes, in its broadest disclosure, a soft capsule comprising a further undefined soft capsule shell. The particular soft capsule shell composition of present claim 1 is however disclosed on page 9, lines 24-27 and is embodied by the single soft capsule shell prepared in the examples"
• The Board: " It is not debated that the evidence in the application as filed, comparing soft capsules with ampoules, is not suitable to show an effect over the hard capsules of D11. However, the Board considers that the skilled person, based on the application as originally filed, would derive the effect of improved bioavailability associated with the soft capsule including a soft capsule shell composition of present claim 1 as being encompassed by the technical teaching and embodied by the same originally disclosed invention. Considering the preference for and presence of the specific soft capsule shell of claim 1 in the examples studying bioavailability, the link between bioavailability and not only a soft shell generally but also, as the case may be, the now claimed specific soft shell composition, does not change the nature of the claimed invention."
• As a comment: the remark about "the link between bioavailability and not only a soft shell generally but also, [...]  the now claimed specific soft shell composition,' appears to refer to the "no cross-reliance" part of G 2/21 hn. 2: "would derive said effect as being ... embodied by the same originally disclosed invention." 
• "  the Board concludes that the problem is the provision of soft capsules with improved bioavailability of calcifediol"
• Perhaps the reference to 'soft capsules' is a slip of the pen, because the prior art Formulation 9 is about hard capsules, so 'soft capsules' is part of the claimed solution.
• For the obviousness, it is important that claim 1 is directed to an "An immediate release soft capsule" containing calcifediol. Immediate relese formulations and 'modified release formulations' are two different types of formulations. 
• "The gist of D11 is to provide modified release formulations containing wax, and D11 further mentions as one benefit an improved bioavailability []. While some immediate release formulations are shown in D11, this is for comparative purposes only. 
• The choice of D11 as starting point for the assessment of inventive step defines the framework for further developments. The skilled person, seeking to improve the bioavailability of the formulation, would not do away with the key feature of D11 pertaining to a modified release formulation. 
• In this respect, the results reported in D11 do not point to the claimed formulation. ... the [comparative ]  immediate release formulation 9 of example 1 leads to a lower calcifediol bioavailability than the wax-comprising, modified release formulations 3 and 4 of Example 1 (see table 5 of D11). The skilled person, seeking to provide calcifediol formulations with improved bioavailability, is thus not led to the claimed solution.
  
• As a comment, perhaps the above reasoning would also apply in the case of providing an alternative as the objective technical problem. 

• On the type of evidence ofr the improved bioavailability: "the Board considers that a party filing experimental data is not under the obligation to perform any specific statistical analysis of these data, and that, in establishing whether a certain technical effect alleged by a party has been achieved, the EPO has to apply the general principle of free evaluation of evidence (see T 2717/17, point 4.3.5 of the reasons). The decisions cited by the appellant in this regard were either taken in the particular context of qualitative results in tests with a subjective character (see T 1962/12, point 1.5.1 and 1.5.2 of the reasons; T 275/11, point 3.5.2 of the reasons) or in situations where the data were considered not reliable for various reasons which do not characterise the present case, i.e. not simply on account of the small number of tested individuals (see T 785/07, point 2 of the reasons). In the case at hand, the above data are sufficiently convincing considering the information given on the methodology and the absence of demonstration to the contrary. In addition, these in vivo data in dogs are in line with the in vitro data on file (see 3.3.2(b) above). Under these circumstances, the Board considers that, even taking into account the small group of dogs tested (i.e. 3 dogs) and the alleged high inter-individual variability, the effect of improved bioavailability is shown to a sufficient degree of credibility."

EPO 

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