T 2377/22 - Multiple independent claims in opposition

Key points

• The Board, in translation: "auxiliary request 2 contains - in contrast to the granted patent, which contains only a single claim  -  three independent claims, each directed to a cosmetic oil-in-water (O/W) emulsion (claims 1, 13, and 24). Independent claims 1, 13, and 24 were formed from granted claim 1 by incorporating the features of one of the dependent claims 2, 3, and 4, respectively."
• "The appellant  [opponent] referred to decision T 0181/02. Point 3.2 of that decision states that it is normally sufficient to amend an independent claim by incorporating one further feature in order to respond "in sachdienlicher und erforderlicher Weise"  to an objection of lack of novelty. Additional independent claims are only necessary in exceptional situations."
• "However, the same point in the cited decision also points out that this may be the case under certain circumstances, for example where two granted dependent claims (e.g., claims 2 and 3) are joined in parallel to a single independent claim (e.g., claim 1). In that case, the filing of two independent claims (e.g., containing the features of claims 1 and 2 and of claims 1 and 3) would be possible. This reasoning is essentially consistent with that in decisions T 0223/97 (point 2.2 of the Reasons) and T 0428/12 (point 3 of the Reasons). The board finds that this also applies to the present case and agrees with the interpretation of Rule 80 EPC that can be derived from those decisions."
• As a comment, the term "sachdienlich" comes from Rule 79(3) EPC. 

EPO 

The link to the decision is provided after the jump.

T 2049/23 - Watermelons and discoveries

Key points

• The opponents include "Keine Patente auf Saatgut! e.V.". The patent concerns a conventionally-bred watermelon.
• The opponent argued that "the transitional period created by opinion G 3/19 should not be taken into account and that it did not matter whether the patent applications were filed before or after July 2017."
• The present Board: "in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board of Appeal [in G 3/19] further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force"
• It seems that the opponent did not invoke Article of the AC decision that inserted Rule 28(2): "This decision shall enter into force on 1 July 2017. Rules 27 and 28 EPC as amended by Articles 1 and 2 of this decision shall apply to European patent applications filed on or after this date, as well as to European patent applications and European patents pending at that time" (OJ EPO 2017, A56). This is a pity, because the EBA did not expressly set aside that part of the AC's decision.
• On inventive step:  the appellants  [opponents] submit that the claimed watermelon plants having a bush growth habit constitute a discovery rather than an invention. The board understands this as an objection under Article 100(a) and Article 52(2)(a) EPC to the effect that the claimed subject-matter is not a patentable invention but a discovery.'" 
•  "According to the case law of the Boards, a substance which occurs in nature can be considered an invention when it is shown to give rise to a technical effect. This principle is reflected in Rule 27(a) EPC, according to which biotechnological inventions are patentable if they concern biological material which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature. 
• For example, if a microorganism is found in nature and shown to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. 
• Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy
•  "The board considers that the plants (and plant tissues) of claims 1 to 16 do not constitute a discovery." 
• "While the "home-garden diploid watermelon [with] an interesting growth type" mentioned in paragraph [0119] of the patent [] could be argued to be a discovery, it is not part of the claimed subject-matter. Instead, the mutated allele present in said plant has been transferred to other plants (i.e. those producing seedless fruit) and these have been shown to produce a technical effect: as set out in paragraph [0001] of the patent "this plant can be grown at a higher density in the field compared to traditional non-bush triploid watermelon hybrids, leading to a higher fruit yield per hectare compared to triploid hybrids with normal growth habit (having an average longest vine length of above 200 or above 300 cm)"."
• The appeal is dismissed. 

EPO 

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

T 0883/23 - Plausibility and priority

Key points

• In this appeal, the Board found the second medical use claim to be valid (novel and inventive and sufficiently disclosed in the patent). Still, the Board - obiter it seems - held that the priority was invalid because, whereas the application as filed contained the results of a clinical trial, the priority document contained only the protocol for that study (without the results).
• Hence, the 'plausibility' or credibility requirement of G 2/21 r. 74 and r.77 for second medical use claims applies by analogy to the priority application, it seems.
• The Board's headnote formulates it differently: "The Enlarged Board of Appeal determined in G 2/98 that it is a condition for the compliance with the requirement of "the same invention" that the claimed subject-matter is directly and unambiguously derivable from the earlier application. However, the Enlarged Board did not conclude that the requirement of "the same invention" is necessarily satisfied if this condition is fulfilled, irrespective of any technical information associated with the claimed subject-matter, which is only described in the subsequent patent application."

EPO 

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

T 1847/23 - Plausibility and common technical problems in the technical field

Key points

•  For inventive step: "The opposition division considered that the technical information provided by Annex 3 had to be taken into account for the assessment of an allegedly unexpected effect. In its decision, the opposition division explained that it was convinced that the problem of stability is a common technical problem in the technical field of pharmaceutical compositions comprising an active pharmaceutical compounds. This view is also shared by the respondent. The Board however disagrees with this conclusion."
• The Board recalls G 2/21.
• "In the present case, the technical effect shown in Annex 3 is not derivable from the application. The reasons are the following:
•  the application as filed does not contain any observation in relation to the stability of the claimed compositions, even less at specific low or very low temperatures or after freeze/ thaw cycles; none of theses aspects are mentioned or derivable from the original application.
•  the preparation and/or storage of a drug composition at low or very low temperatures is neither systematic nor widely practiced. Indeed, there is no indication in the application as filed or in the prior art that the compositions comprising maropitant have to be prepared and/or stored under these conditions. Hence, the preparation and/or the storage at extremely low temperatures, as well as the behaviour of the claimed compositions at these temperatures does not appear to constitute a property tipically sought by a person skilled confronted with the problem of preparing this class of compositions.
• This is confirmed in particular by the teaching of other documents such as D10 which indicates that the [particular type of] injectable formulation is to be stored at controlled room temperature of 20 to 25°C (see D10, page 3), or D40 which recommends to not freeze the commercial injectable product comprising maropitant (see page 6).

• Consequently, the behaviour of compositions comprising maropitant under low or very low temperatures cannot be considered as a common problem as argued by the opposition division in its decision.

  In view of the above, the Board considers that the skilled person would not derive the effects considered in the experiments of Annex 3 as being encompassed by the technical teaching and embodied by the originally disclosed invention. Thus, these effects cannot be relied upon in light of decision G2/21."

• However, "Examples 5 and 6 of the contested patent show convincingly a good injection site tolerance and antimicrobial efficacy. Accordingly, the problem is the provision of an alternative composition comprising maropitant suitable for administration to veterinary animals which leads to a low level of pain on injection."

• The claim defines a range of 7-18 mg/mL for a certain compound; the prior art teaches 20 mg/mL. The interested reader may read the entire decision to find out why the Board considers the claim to be inventive.

• 
  

EPO 

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

T 0336/23 - Filing a new main request

Key points

• The proprietor files a new main request, with limited claims, before the OD. The OD revokes the patent. The proprietor appeals. Can the proprietor defend the claims as granted in the appeal?
• "The impugned decision was based on an amended 'main request' (items I.8 and I.9 of the decision under appeal) as the sole request. It does not additionally deal with the patent as granted. That the patent as granted was discussed extensively during the oral proceedings before the opposition division does not change this fact.
• The appellant [proprietor] was also of the view that the patent as granted had never been expressly withdrawn. However, a request can be withdrawn implicitly and there is an implicit withdrawal when the circumstances leave no doubt that the party did not intend to pursue a request
• "Parties are generally required to file requests in a clear order [], implying that there normally cannot be two requests of the same rank. It is therefore not objectionable that the opposition division understood the filing of the amended "main request" as replacing the previous sole and thus "main" request. The term "main request" might not be precise where there is only a single request, but it is frequently used in such a case. Similarly, the appellant used the term "main request" also in relation to their sole request during the appeal proceedings."
• It is not clear whether the opposition division did - as it should have done - clarify the parties' final requests before closing the debate. The minutes of the oral proceedings do not report that the parties were asked to confirm their final requests. Nevertheless, as outlined in T 52/15 (Reasons 1.7), "if a procedural act performed by a party is clear and there are no reasons to suggest that its intentions were not correctly understood, e.g. on account of subsequent actions and/or statements, that party cannot expect not to have to bear the consequences of that procedural act". 
• "the opposition division stated [during the oral proceedings] that "the ground of opposition according to Art. 100(c) EPC prejudices the maintenance of the patent as granted", as reported in the minutes (pages 1-2). However, contrary to the appellant's view, this statement does not form an intermediate decision which automatically forms part of the final decision. It is the consistent view of the boards of appeal that the minutes of oral proceedings are not decisions within the meaning of Article 106 EPC"
• Indeed, oppositions and opposition appeals are no longer a very forgiving game.

EPO 

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

T 0405/24 - G 1/24 and Art. 123(2)

Key points

• The proprietor: "Thus, when applying the conclusions of G 1/24, i.e. in particular that the description and the drawings shall always be "consulted" to interpret a claim, to the present case, the skilled person in the field of data communications would have understood that such "forwarding" was providing a basis for the "routing" action of feature 1.7. In other words, [the proprietor argued that], if multiple technically sensible interpretations of a certain claim feature exist, the one which is supported by the patent description should prevail.
• The Board: "This argument is flawed right from the outset. First, even if the Order of the G 1/24 (related to assessing compliance with Articles 52 to 57 EPC only) could indeed be extrapolated to the assessment of compliance with Article 123(2) EPC, there is no indication in G 1/24 that "consulting" or "referring to" the description and drawings could translate to adopting a claim interpretation which ensures that the disputed feature is originally disclosed and thus necessarily complies with Article 123(2) EPC. 
• Such an approach which inherently assumes that there may be only one "correct" interpretation of a claim feature, namely the one derivable from the original description as its intended meaning (which is apparently advocated e.g. by T 367/20-3.2.03, Reasons 1.3.9 and 1.3.16 in the event of "mutually exclusive" interpretations or by the recent decision T 2048/22-3.3.02, Reasons 1.2.1 and 1.2.2 in the case of claim ambiguities), would not lead to an objective assessment of compliance with Article 123(2) EPC and thus jeopardise legal certainty. It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise. 
• Rather, there is a significant body of case law holding that all technically reasonable interpretations of a disputed claim feature are to be taken into account when assessing compliance with Article 123(2) EPC (see e.g. T 945/20-3.4.02, Reasons 2.4; T 470/21-3.3.05, Reasons 2.1; T 2034/21-3.3.04, Reasons 11; T 193/22-3.3.06, Reasons 3.5)."
• As a comment, adding the number of the Board when citing a decision is not always done, but it can be helpful in specific contexts.
• Secondly, it would be good if there were more unity in the case law.
• Thirdly,  I'm not sure if I fully understand the Board's reasoning that "It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise." 

EPO 

The link to the decision is provided after the jump.

R 0017/23 - Parties must pre-emptively raise "questions" under Rule 106 (?)

Key points

• Decision dated 24.02.2025. Written decision issued on 17.10.2025, about nine months later. However, there is no time limit for the EBA, Art. 15(9) RPBA does not apply to petition for reviews.
• 
  
• From the minutes of the oral proceedings before the TBA, one of the points discussed was the "necessity of a referral of two questions to the Enlarged Board of Appeal (EBA) for ensuring uniform application of the law, in particular in view of the allegedly diverging decisions T 2273/10 and T 1621/16; relevance of the proposed questions."
• Still from the minutes of the oral proceedings before the TBA: "The parties repeated their initial requests. The Chairman asked the parties if they had any further comments or requests. There were none. The Chairman then declared the debate closed. After deliberation the chairman declared that the appeal was to be dismissed. The appellant raised an objection under Rule 106 EPC. The appellant confirmed that they were able to present their case on the question whether the proposed questions should be referred to the EBA. However, due to the decision not to refer those questions to the EBA, the appellant is deprived of the possibility to present their case there. Thus, their right to be heard (by the EBA) is allegedly violated. The appellant referred to R 8/11, R 7/13, R 17/14. The text of the objection was read out to the parties and agreed by the appellant. The objection was then discussed with the parties. The Board interrupted the proceedings for deliberation on the objection under Rule 106 EPC. After deliberation by the Board, the following decision was given: The appeal is dismissed. The Chairman then closed the oral proceedings."
• The EBoA: "The objection under Rule 106 EPC was thus (*) not raised in a timely manner by the petitioner, as noted in the decision, under Reasons 4.2 (p. 21), even though the objection was discussed with the parties before the decision to dismiss the appeal was announced. "
• The TBA, in their decision: "Regarding a merely formal issue, the appellant raised the objection after the end of the debate, i.e. once the substantive debate had already ended and when the board had announced the conclusion of its (final) deliberation (see the minutes, page 2, penultimate paragraph). Before the end of the debate, each party was explicitly asked about their requests and whether they had any further comments. Requests cannot be deemed filed in a timely manner if a party waits for the board to announce its opinion and then complains if its requests have not been granted."
• * - As a comment, regarding the 'thus': the preceding paragraphs consist of a purely factual overview of the events during the oral proceedings before the TBA, without any analysis or reasoning of the EBoA.
• "in the view of the Enlarged Board, when the parties were asked if they had further comments or remarks before the closure of the debate, the petitioner could then have raised, at least provisionally, a question under Rule 106 EPC, in case the Board dismissed its request for referral of questions to the Enlarged Board. However, according to the minutes, it did not."
• "question under Rule 106 EPC" is the term used by the EBA.
• The EBA here instructs is to precautionarily submit  "question(s) under Rule 106 EPC" if there is any risk that the TBA will announce an adverse conclusion (or decision) when the parties are asked for their final requests.
• The EBA uses 'could'. However, the EBA sanctions the petitioner for failing to make use of that opportunity (partial inadmissibility of the petition for review), so the term means 'should'.
• The EBA does not explain how such a "question" should be worded by the parties, but the instruction to representatives is clear.
• The EBA: "in the view of the Enlarged Board, the fact that the chair announced, after this closure, that the appeal was dismissed, without reference to a possible referral, clearly shows that such a referral was not allowed. In addition, the decision under review (Reasons, 4.2 last paragraph, p. 21) states that "Even if the arguments had been put forward in time, they would not have been successful", which shows that the Board nevertheless regarded the Rule 106 EPC objection as late."
• It is not entirely clear to me to which moment the EBA refers with the phrase "the fact that the chair announced, after this closure, that the appeal was dismissed" given that the oral proceedings before the TBA wer closed twice (from the minutes: "The Chairman then declared the debate closed. After deliberation ...  [Rule 106 objection raised and discussed] After deliberation by the Board, the following decision was given: The appeal is dismissed. The Chairman then closed the oral proceedings".
• The above points are not obiter in the decision of the EBA: "Therefore, the petition is clearly inadmissible, insofar as it is based on sections II.1 to II.6 of the petition, concerning the argument that refusal to refer questions to the Enlarged Board of Appeal infringed the petitioner's right to be heard."
• Compare: R 11/21: an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".

EPO 

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

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.

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.