T 0700/25 - Appealing the grant, filing a div

Key points

• A patent is granted. The proprietor appeals against the grant and files a divisional application. The EPO deletes the mention of the grant (that is to say, publishes a new statement in the Bulletin that the first mention of the grant is deleted). The proprietor withdraws the appeal before filing the Statement of grounds. The proprietor requests the refund of the appeal fee, and requests "that the application go back to its granted state, and that a communication informing them of the new date of the mention of the grant be issued"
• The Board sees an issue: "the appeal fee is also reimbursed if it was paid for no valid reason, e.g. if the appeal is deemed not filed (see G 1/18 ). This second basis for reimbursement takes precedence over the first [i.e., Rule 103(10(b) EPC], because ... . Therefore, preliminary to the reimbursement of the appeal fee under Rule 103(1)(b) EPC, the Board has to assess whether an appeal was validly filed or not."
• The actual question is, of course, whether the divisional application was validly filed.
• "The Board is of the view that an appeal of the Examining Division's decision to grant a patent, in order that the application again become "pending", within the meaning of Rule 36(1) EPC, is manifestly inadmissible and does not provide a valid reason for the payment of the appeal fee. The Board follows, in this regard, the rationale of decision J 28/03, and not that of decision J 1/24. In the Board's view, there is no basis for the appellant's contention that the more recent of the two decisions necessarily takes precedence. As will be explained below, the Board's view is also in line with the rationale of decisions G 2/19 and G 1/09"
• "One of the two conditions giving rise to an entitlement to appeal is that the appellant is adversely affected by the contested decision. However, an applicant is not adversely affected by a decision to grant that accedes to the applicant's requests. Therefore, such an applicant is not entitled under Article 107, first sentence, EPC to appeal such a decision."
• "Contrary to decision J 1/24, an appeal of a decision to grant cannot be assumed validly to exist. An application proceeds to grant only on condition that the applicant has agreed to the text, under Article 113(2) EPC (Rule 71a(1) EPC; [...]). Consequently, an applicant appealing a decision to grant must justify their entitlement to appeal and set out why that decision is not in conformity with the applicant's requests or why it otherwise negatively affects them. Therefore, there is a presumption, that an applicant is not entitled under Article 107, first sentence, EPC to appeal a decision to grant, if their appeal is withdrawn before the filing of any statement of grounds of appeal, since no reasons have been given justifying their entitlement to appeal. Moreover, the appeal being withdrawn, the decision to grant becomes effective. Therefore, a withdrawal of an appeal of the decision to grant, before the filing of a statement of grounds of appeal, confirms that the appeal was filed by an applicant not entitled to appeal under Article 107, second sentence, EPC. Hence, such an appeal is manifestly inadmissible and filed without legitimate reason.
• "The filing of an appeal of a decision to grant a patent based on the earlier application attempts to circumvent the deliberate lack of a legal remedy for restoring the pending status within the meaning of Rule 36(1) EPC. Such an appeal is a clearly inadmissible means of redress and has no suspensive effect (G 2/19, point 6)."
  • Evidently, the Board used the opportunity to opine on the validity of the divisional application lest the Examining Division happily grant it.
  • The Boards may have to decide in the near future on he modified case wherein the applicant files a Statement of grounds and shortly thereafter withdraws the appeal.
  • The Board departs from J 1/24 ,  see above.'

EPO 

The link to the decision is provided after the jump.

T 2048/23 - Inherent or intrinsic properties

Key points

• The opposed patent contains in Table 1 the results of measurements of a certain parameter of  existing, commercially available, absorbent articles. The claim defines a range overlapping with the measured values.
• The Board: "Even if the parameter measurements on the articles seen in Table 1 were never performed publicly or at least were never made available before the priority date, these are intrinsic properties of the articles which are thus considered to have been made publicly available, see for example G 1/23, items 73, 90 and 91, or G 1/92, items 1.4, 2 and 2.1."
  • G 1/92: "There is no support in the EPC for the additional requirement (...) that the public should have particular reasons for analysing a product put on the market, in order to identify its composition or internal structure. ... The introduction of such an additional requirement would remove a commercially available and reproducible product from the public domain. "
  • Suppose the proprietor had invented a new measurement device that enables measurement of a (new) parameter that could not be measured using prior art measurement technologies. Suppose the claim specifies a range for the new parameter, and that the commercial prior art products (which were commercially available on the filing date) are found to exhibit a value of the parameter in the claimed range. Does it matter that the parameter was not analysable on the filing date?

EPO 

The link to the decision is provided after the jump.

T 1131/23 - Fee reduction for non-profit organisation

Key points

• The opponent, VRI-Verband der Reibbelagindustrie e.V., appeals.
• In machine translation: "The appellant [opponent] – a registered association under German law – argued in its appeal, using form 1011, that it was entitled to the reduced fee rate for non-profit organizations. It also paid only the reduced fee rate. To demonstrate that it does not pursue a profit motive, the appellant referred to its articles of association.
• The Board, in translation: " The question of whether the opponent is a non-profit organization and therefore only had to pay a reduced appeal fee when filing the appeal on 14 June 2023 is governed by Rule 6(4)(c) EPC in the version applicable until 30 April 2024 (Rule 6(4)(c) EPC old version).."
  • Obviously, Rule 6(4)(c) EPC applied only indirectly, namely through Art. 2(1).11 Rfees.
• The Board: " According to this provision, a non-profit organization is one which, by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income, profits or other financial benefits for its owners, or which, if a profit motive is permitted, is subject to a statutory/legal obligation to reinvest these profits in the interests of the organization (see: Official Journal EPO 2014, A23, point 8i; Examining Guidelines Part A Chapter X 9.2.1; the same wording is found in point 8 of the Notice of the European Patent Office of 25 January 2024 on fee-related support measures for smaller units, Official Journal EPO 2024, A8, in which Rule 6 EPC (old version) was replaced by Rules 7a and 7b EPC)."
  • The text about "by virtue of its legal form or articles of association, is prohibited under the relevant legal provisions from generating income" cannot be found in Rule 6 (old) itself. OJ 2014 A23 is only a Notice from the EPO and does not bind the Board.
  • The Board indicates that it is not strictly bound by the OJ Notice, as follows: " From this definition, which the Board also bases its decision on [ Dieser Definition, die auch die Kammer zur Grundlage ihrer Entscheidung macht, ], it can be inferred that an organization is to be regarded as a non-profit organization if, due to its legal form, it is not permitted to engage in business activities aimed at generating profits."
• "In its assessment under the old version of Article 6(4) EPC, the Board follows the German case law on Section 21 of the German Civil Code (BGB), according to which limited economic activity within the scope of the so-called ancillary purpose privilege (see above, point 3) is permissible."
• "The opponent pursues the objective of the opposition proceedings it conducts to ensure that only those technical developments in the field of friction lining industry that are genuinely new, involve an inventive step, and fulfill the other requirements for patentability are granted a patent. This prevents the friction lining industry from being restricted from having unrestricted access to technical solutions that are already known and obvious from the prior art, and thus ultimately hinders further technical progress in this field. There is a general interest in this – not only, but also – of the friction lining industry, so these opposition proceedings are fundamentally suitable for promoting the objector's association's purpose."
• " Opposition proceedings do have economic consequences; however, these primarily affect the companies whose patent applications are being challenged. For an opponent who—like the opponent in these proceedings—does not manufacture or distribute any products, maintaining or invalidating a patent is neither economically advantageous nor disadvantageous. The costs of opposition proceedings, however, are considerable. Therefore, it cannot be assumed that the opponent intends to profit from conducting opposition proceedings."
  • The members of the association are, of course, the (German) companies active in the industry. The association may be set up for cost-sharing purposes.
• "In light of all the above, it must be concluded that the opponent is to be regarded as a non-profit organisation within the meaning of Rule 6(4)(c) EPC old version and that his appeal is therefore deemed to have been lodged, even though he has only paid the reduced fee rate."
  • The preliminary opinion was negative. Oral proceedings were held only for the topic of the correct payment of the appeal fee / whether the appeal was deemed to have been filed. Summons for second oral proceedings, on the merits, were issued shortly after the first oral proceedings (with the oral proceedings to be held two months after the summons).
  • This confirms that under the EPC, the Boards hold oral proceedings even if they consider that the appeal is deemed to not have been filed due to an incorrect payment of the appeal fee.

EPO 

The link to the decision is provided after the jump.

T 1950/23 - Plausibility and generic statement of advantages

Key points

• The Board has to decide on inventive step.
• "Claim 1 of the main request is distinguished from the composition of example 23 of D1 solely in the presence (in claim 1) of "a detergent selected from sulfonate, phenate, or a mixture thereof"."
• "It is undisputed that the patent does not disclose a technical effect specifically linked to this distinguishing feature."
• " The respondent [proprietor] submitted that the effect of the distinguishing feature was an improvement in extreme pressure performance. Evidence of this effect was provided by the appellant's experimental tests D16, submitted in opposition proceedings."
• " The appellant [opponent] did not contest that this effect was demonstrated in D16 as described above, but rather argued that it could not be derived from the application as filed. Therefore, in view of Enlarged Board of Appeal decision G 2/21, it could not be relied upon for inventive step, and hence also not in the formulation of the objective technical problem underlying claim 1."
• "Page 20, lines 15 to 22 ... states that the lubricating oil compositions may further comprise additives that can impart or improve any desirable property of the lubricating composition. Such additives are listed on page 20, lines 22 to 27 and include detergents. Detergents are mentioned in this list as one of many possible additives." In addition, "page 1, lines 20 to 22 states that the lubricating compositions of the invention exhibit both improved friction characteristics and extreme pressure performance"
• "However, further disclosures in the application as filed point to the specific importance of detergents in the claimed lubricating compositions: claim 7, which is dependent on claim 1, stipulates that the composition further comprises a detergent selected from sulfonate, phenate, or a mixture thereof. Claim 8 is the only other claim dependent on claim 1 and related to a further additive, namely a friction modifier. Since dependent claims are generally directed to preferred embodiments of the invention (Rule 43(3) EPC), this indicates a higher ranking for detergents and friction modifiers as additives over other additives listed in the application as filed. "
• "Furthermore, the lubricant compositions of all examples (table 1, page 31) comprise either a sulfonate or phenate detergent, and it is demonstrated for the inventive examples that adequate extreme pressure performance can be achieved ... . Therefore there is a link in the application as filed between the compositions of claim 7 and the effect of extreme pressure performance set out on page 1 as stated above.
• "it is not reasonable to expect patent applicants, at the time of drafting the application, to safeguard against the citation of then unknown prior art, for example in opposition proceedings, by providing comparative data showing an improvement for all potential distinguishing features over all potentially later cited closest prior art documents. Not only would this be unreasonably burdensome, it would also suffer from the shortcoming that not knowing the nature of the disclosure of the newly cited closest prior art, the information required to set up appropriate comparative tests representative thereof would not be at hand."
• " it would be an overly strict interpretation of G 2/21 to require that the application as filed demonstrate that the improvement of a technical effect disclosed in the application as filed and relied on by the patent proprietor is specifically attributed to the distinguishing feature. In such a situation, it would suffice for opponents to cite new prior art differing in the distinguishing feature compared to the prior art known when the application was drafted to invalidate the patent. More specifically, since relying on post-published data would be excluded under such a strict interpretation of G 2/21, such patents would be likely to face revocation."
• "Hence, this effect may be relied upon for inventive step, and consequently in the formulation of the objective technical problem underlying claim 1."

EPO 

The link to the decision is provided after the jump.

T 0583/25 - Allowable AR in examination appeal

• This is an appeal against a refusal decision.
• The examining division held that the subject-matter of claim 1 of the main request (sole request) underlying the decision under appeal did not specify that the "polysilicon emitter" was a "P-type polysilicon emitter" and therefore contravened the requirements of Article 76(1) EPC, as this constituted an unallowable intermediate generalisation.
• In a communication pursuant to Rule 100(2) EPC dated 26 June 2025, the board preliminarily agreed with the examining division and provided reasons for its view.
• The applicant withdraws the main request, and the Board has to decide on the admissibility of the auxiliary request filed with the SoG.
• “The amendments made to claim 1 of the auxiliary request overcome the sole reason for the refusal of the application, because the omitted term "P-type" is added in amended claim 1”
• “The auxiliary request could and should have been submitted in the examination proceedings. According to Article 12(6) RPBA, the board shall not admit such requests, unless the circumstances of the appeal case justify their admittance.”
• "In the present case, the board admits the auxiliary request into the appeal proceedings. The fact that the amendment in claim 1 of the auxiliary request overcomes the examining division's objection is regarded as a justifying circumstance within the meaning of Article 12(6) RPBA."
• "In this context, the board also takes into account the fact that the only possibility to have the examining division's decision on the claims of the main request reviewed by the board was to uphold the main request. In other words, even if the appellant had filed the auxiliary request in the examination proceedings as an auxiliary request, the examining division would have decided to refuse the main request, and the appellant would have had to file an appeal against this decision to have it reviewed by the board."
• If the applicant had filed AR-1 in the examination proceedings and maintained it, the Ex Div would have issued an intention to grant. The only way to obtain a refusal decision would have been to withdraw AR-1 (by keeping to the Main Request in reply to the Rule 71(3) Intention to grant). Then, the ‘not maintained’ prong of Art. 12(6)(s.2) would have applied.

T 1260/23 - Clarity and preferred features

Key points

• Claim 5 as granted: "5. The method of claim 4, wherein the soil and/or moisture resistant formulation is an aqueous polymer dispersion comprising dispersed particles having average particle sizes ranging from about 50 to about 150 nanometers, preferably wherein the aqueous polymer dispersion comprises from about 10 to about 40 % by dry weight of resin particles or solids selected from the group of polyurethane resins, polyether-urethane resins, urethane-acrylic resins, and mixtures thereof." 
• Claim 4 as granted " The method of claim 1, wherein the soil and/or moisture resistant formulation is an aqueous formulation containing one or more thermoplastic resins selected from the group of resins having an ester bond, polyurethane resins, functionalized polyurethane resins, and copolymers and mixtures thereof."
• Is the preferred feature of claim 5 open to the examination of clarity in opposition?
• The OD considered claim 1, amended with the mandatory and the preferred feature of claim 5 (and the feature of claim 4), to be unclear.  " The objection was based on an alleged ambiguity arising from the definition of two lists of polymers in claim 1, with the first including a broad reference to "resins having an ester bond" [i.e., former claim 4], and the second focusing on more specific chemical groups [i.e., the preferred list of claim 5]. According to the decision, it was unclear whether the second list was intended to limit the scope of all the groups in the first list, or simply to propose specific forms for some of them"
• The Board:  "the introduction of certain features by means of the term "preferably" merely indicates that they are optional, thereby rendering the defined subject-matter equivalent to that of an additional dependent claim. As argued by the proprietor, this corresponds to the case described in Reasons 3(a) of G 3/14 (the so-called "Type A(i)" cases), and is therefore not open to clarity objections during opposition or opposition-appeal proceedings."
• It is nice that the Board treats preferred features as "equivalent to that of an additional dependent claim" for the purposes of G 3/14 because you don't have to pay claim fees for preferred features.

EPO 

The link to the decision is provided after the jump.

T 1798/23 - Inconsistent indication of the opposed patent

Key points

• The opponent appeals against the decision to maintain the patent in amended form.
• "the respondent [proprietor] maintained their objection, already raised at opposition proceedings, to the admissibility of the opposition, due to a lack of the necessary information allowing the unambiguous identification of the opposed patent in the notice of opposition."
• It was submitted that while the notice of opposition indicated the correct European patent application No. 16 751 551. 9, the publication number was wrong with regard to the last digit (it indicates EP 3 332 023, whereas the publication number for the patent in suit is EP 3 332 028), as well as the title of the invention reading "Genetic testing for alignment-free predicting resistance of microorganisms against the antimicrobial agents" (this being the title of EP 3 332 023), instead of "Genetic resistance prediction against antimicrobial drugs in microorganism using structural changes in the genome" (this being the title of the patent EP 3 332 028).
• EP EP 3332023 exists, with indeed the title beginning with "Genetic test..."
• " The admissibility of an opposition must be assessed ex officio in every phase of the opposition and ensuing appeal proceedings (e.g. T 1178/04"
• "With [further] submissions dated 30 September 2021 [before the expiry of the opposition period], the notice of opposition was filed anew with the corrected title ("..."). The letter also contained the name of the patent owner (Ares Genetics GmbH), the European patent application No. 16751551. 9 and the patent's publication number EP 3 332 028, all as correctly indicated before in the first notice of opposition."
• From the European Patent Register, it can be derived that on 5 October 2021, the EPO issued a communication (Form 2302) indicating deficiencies under Rule 76(2)(b) EPC in the notice of opposition of 29 September 2021.
•  Irrespective of whether the submissions of 30 September 2021 were actually in reply to the EPO's communication of 5 October 2021, due to the opponent becoming aware of the deficiency in advance of the date indicated in that communication, or were filed by the opponent on its own motion, it is evident that the errors were corrected before expiry of the opposition period, as required by Rule 77(1) EPC.
• The opposition was hence admissible.
  
  
• The Board considers the claims to be not inventive. "It is established case law that the question of whether a skilled person would consider a modification of the prior art critically depends on the problem to be solved by the alleged invention. If the only contribution of the invention is to propose something different from the prior art (i.e. the provision of an alternative as in the present case), then it is usually appropriate to consider that the skilled person would take into account any common alternative known in the respective technical field (unless the closest prior art teaches away from it). In such cases it might not even be required to justify the selection of a particular solution, because it was assumed that an invention based on incorporating known features for the sole purpose of establishing novelty must be rendered obvious by a corresponding step of selecting any alternative known in the art"
• 
  

EPO 

The link to the decision is provided after the jump.

T 0691/24 - Review of decision to hold inadmissible

Key points

• The OD did not admit an auxiliary request filed during the oral proceedings. Should the Board admit it under Art. 12(6), first sentence, RPBA, on the ground that the OD's decision suffered from an error in the use of discretion?
• "These claim requests were not filed within the period set out in the opposition division's invitation pursuant to Rule 79(1) EPC [ ...] . Rather, the opposition division had the discretion pursuant to Article 123(1) EPC in conjunction with Rules 81(3), 79(1) and/or 116(2) EPC not to admit them (see e.g. R 6/19, Reasons 6 and 7; T 256/19, Reasons 4.7 [post] ). "
• "This discretion exists independently of the provisions of Rule 116 EPC and of whether the opposition division deviated from its provisional opinion as set out in the annex to the summons to the first-instance oral proceedings (see e.g. T 966/17 [post])"
• " In other words, a positive preliminary opinion on auxiliary request 9a - already admitted into the proceedings at the opposition division's discretion - cannot guarantee per se the admittance of yet a further filing of claim requests. Nor does such a positive opinion "reset" the application of the "convergence criterion" which the opposition division relied upon when taking its discretionary decision on admittance in the opposition proceedings."
• "Also the EPO Guidelines (in its version of March 2025) do not state that an opposition division's deviation from its preliminary opinion necessarily constitutes a "change of the subject of the proceedings" within the meaning of Rule 116(1), fourth sentence, EPC (cf. part E, chapter VI, section 2.2.2, board's emphasis: "The following are examples of what would normally constitute a change of subject of the proceedings: [...] the opposition division departs from a previously notified opinion."). 
• "Nor can such a deviation as such justify an automatic admittance of claim requests (see the decisions cited by the proprietor, i.e. T 868/20, Reasons 3.1.2 and T 847/20, Reasons 3.3.3). "
•  "The "convergence criterion" as regards claim requests is definitely a well-established criterion which can legitimately be used by a first-instance department when exercising its discretion as to admittance of late-filed claim requests (and this even before the expiry of the time limit set under Rule 116(1) EPC; see e.g. T 364/20, Reasons 7.2.10; see also EPO Guidelines, part E, chapter VI, section 2.2.3: "Convergence of requests is another of the relevant factors that the division may consider when exercising its discretion"). 
• The GL paragraph seems to refer to the case " if the opposition division states in the annex to the summons that the patent is likely to be revoked and the proprietor in response submits amendments after the final date set under Rule 116(1), possibly not until the oral proceedings, the division could, in principle, treat such requests as late-filed" (which is quite the opposite of the Board's analysis).
• "In view of the minutes of the two oral proceedings before the opposition division, the board agrees with the respondents that the discussions concerning auxiliary requests 5 and 6 had already taken a considerable amount of time. Moreover, through the replacement of features, those discussions became at once moot when the appellant moved on to "auxiliary request 10a""
  
  
• "Concerning the present first auxiliary request, and as a matter of principle, the board takes issue with the opposition division's announcement to "permit one further request and no more" (see point 97 of the minutes of the second oral proceedings) and its subsequent decision to "not look at the auxiliary request" (see Reasons 38 of the decision under appeal). This is because, firstly, the board sees no legal basis in the EPC to make submissions from a party - irrespective of their content - being subject to prior approval from the deciding body. Secondly, the limitation to "one further request and no more" - ex ante and without any consideration as to their substance - appears to be purely arbitrary."
• See also T 1241/21 (post) and T 756/18, but see also T 350/19 (post)

EPO 

The link to the decision is provided after the jump.

T 2010/23 - Secrecy on the side of the supplier

Key points

• Claim 1 of the main request reads as follows: "A pigmented aqueous inkjet ink set for manufacturing decorative panels comprising: b) a red aqueous inkjet ink containing a red pigment selected from the group consisting of C.I. Pigment Red 254, C.I. Pigment Red 176 and mixed crystals thereof; c) a yellow aqueous inkjet ink containing a pigment C.I Pigment Yellow 150 or a mixed crystal thereof; and d) a black aqueous inkjet ink containing a carbon black pigment; wherein the aqueous inkjet inks contain a surfactant."
• In case you wonder what the invention is about: "example 2 of the patent demonstrated that true reproduction of wood colours could be obtained with the inkjet set of claim 1. The objective technical problem was therefore how to manufacture decorative surfaces with high productivity by not requiring complex inkjet printers and image processing software for a true reproduction of wood colours."
• The opponent alleges public prior use.
• "The public prior use represented by documents D7 to D15 concerns the sale of certain inks from the respondent (Arcolor AG) to the company Schattdecor. "
• "Invoice D9 discloses a list of inks ordered by Schattdecor, ... in the interest of simplicity, the board refers exclusively to D9 in the context of the issue of public availability."
• "In the declaration, Mr Breuer [of the buyer] explicitly states that the ... D9 concerned a normal sale without any obligation to confidentiality ... This declaration is evidence that there was no implicit confidentiality agreement, and the board finds it more convincing than the appellant's unsupported circumstantial allegations to the contrary."
• I wonder if this is correct. If the buyer selects three pigments in combination in a purchase order, is the seller really free to share that information with others? E.g. with a competitor of the buyer? Can the seller S say to a competitor P  'hey, look, another company buys our product X often together with product Y, perhaps you can try it as well in your company'?
• Of course, the witness of the buyer declared that it was a 'normal sale' and 'without any obligation to confidentiality'. However, a technical person may simply mean that no NDA was signed for the sale. Mr Breuer was not heard as a witness. 
• Sales under confidentiality, as encountered in the case law, usually involve the buyer's obligation, imposed by the seller, to keep information obtained from the seller secret, it seems to me. 
• The Board found the claim obvious over the prior use. No other claim requests were allowable and admissible.

EPO 

The link to the decision is provided after the jump.

T 0143/24 - (II) Sold product as prior art

Key points

• For some reason, I've found a second post about this decision in my stock. This second post has a slightly different angle. I decided to publish it as well. 
• The opponent alleges a public prior use, based on the sale of a polymer. The polymer sold was not reproducible.
• The Board, in translation: "If prior public use is claimed to be the sale of an item and its delivery to a customer, the recognizable features of the item sold generally become publicly accessible if the item is transferred without a confidentiality agreement and can be analyzed by a person skilled in the art. Contrary to the patent proprietor's view, reproducibility is not necessary for a product that is freely accessible and analyzable on the market to be considered prior art under Article 54(2) EPC (G 1/23, Reasons 73, 74)."
• As a comment, I think that for novelty, the product is prior art for all its properties, even those that cannot be measured. If you invent a new device that is able to measure a newly-developed property and carry out the measurements on known materials (say, water, graphene), a claim defining that material in terms of the new property is not novel, in my view. The exception for second medical use claims (drafted as product claims under EPC2000) in fact confirms the rule. 
•  "However, free access on the market is lacking if the product is sold subject to confidentiality agreements. "
• I think we have to be precise about what we mean by 'confidentiality'. Linguistically, confidentiality refers to information, and a physical product is not information. Do we mean a non-analysis clause? A clause that the sold product (e.g., apparatus) may not leave the premises of the buyer? Should the sold apparatus be hidden from visitors' view? 
• In this case, the documents submitted by the opponent regarding the sale indicate that the general terms and conditions of the seller applied. The opponent was the seller. 
• The Board: "In the present case, the opponent has neither submitted the terms and conditions mentioned in the contract documents it has provided, nor has it presented specific details regarding their concrete content or individual agreements relating to the respective sales. In such a case, the opponent cannot generally evade its burden of proof by merely asserting in general terms that no confidentiality agreement was concluded between the contracting parties. It is also not possible to deny the opposing party's statements on this matter with mere lack of knowledge, as this would only be permissible if the patent holder were subject to the burden of proof."
• "Confidentiality agreements are frequently included in so-called "General Terms and Conditions," the content of which is not individually negotiated for each legal transaction but pre-formulated for an indefinite number of cases. At least when the public accessibility of a product is based on a sales transaction which—as in this case—was based on general terms and conditions, according to the appellant's submissions and the documents presented, the appellant [opponent ] must therefore generally also present information on the content of these general terms and conditions in order to meet its burden of proof."
• The proprietor had submitted the general terms and conditions of the same seller (from a different transaction). These read as follows: "12. - Confidentiality - All technical, commercial, economic, or other information or data relating to the supplier's business, including but not limited to its formulas, product specifications, services, plans, programs, processes, products, costs, operations, and customers, which the buyer, its affiliates, officers, or employees become aware of in the performance of the contract, shall be treated as the supplier's confidential property, and the buyer is obligated not to use such information or data unless it benefits the supplier in the performance of the contract, and the buyer may only use such information or data for the benefit of the supplier in the performance of the contract." 
• It may require careful analysis to determine whether this clause prohibits the buyer from analysing the product after the buyer has paid and performed under the contract.
• More generally, I wonder if the Board's focus on confidentiality is consistent with G 1/23. If the seller is willing to sell the product to anybody upon payment of the price and (tacit) acceptance of the general terms and conditions, can the seller then later patent the product (cf. G 1/23, r.75)
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EPO 

The link to the decision is provided after the jump.

T 0143/24 - Interpreting G 1/23

Key points

• The opponent alleges three prior uses. The prior uses concern sales by companies within the Ashland Group. Furthermore, the opponent also belongs to that group of companies. Hence, it is an alleged public prior use in the opponent's own sphere.  
• The Board, in machine translation: The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge.
• If the sale of an item and its delivery to a customer are claimed as prior public use, the recognisable features of the item for sale will generally become publicly accessible if the item for sale is handed over without an obligation of confidentiality and can be analysed by a person skilled in the art. Contrary to the patent proprietor's view, reproducibility is not necessary for a product that is freely available and analyzable on the market to be considered as prior art under Article 54(2) EPC (G 1/23, Reasons 73, 74). However, there is no free accessibility on the market if the product is sold with confidentiality agreements. Contrary to the opponent's view, decision G 1/23 does not lead to a different conclusion, as it relates to products that are on the market and accessible to the public. This requirement is not met if the product is marketed only subject to confidentiality agreements.
• In other words, if a product is marketed under confidentiality agreements, it does not become part of the state of the art, even if it can be analysed and reproduced.
• Furthermore, the Board holds, obiter, that under G 1/23, a product becomes prior art (part of the state of the art) (at least) if it is sold, is handed over to the customer, and the sale is without an obligation of confidentiality and can be analysed by a person skilled in the art (as cumulative requirements). 
• In the present case, the terms and conditions of the sales invoked by the prior uses provided for a confidentiality agreement, which is why the products sold were not available to the public and therefore do not form part of the state of the art within the meaning of Article 54(2) EPC.
• The opponent had offered two witnesses, who were heard by the OD. The witness did not fully support the opponent's case, it seems: "Mr. [G] also confirmed in his testimony during the oral proceedings before the Opposition Division that the composition of [the product] Magnaset was an internal matter and, to his knowledge, that customers were not supposed to know this composition. ... Witnesses G and A also stated that the manufacturing instructions and the production process were confidential (see the transcript ... ). The witness statements therefore confirm that there was no intention to disclose the composition of the Magnaset binder to customers."
• The Board concludes that the alleged public prior use is not proven to have been public. 
• "The Board considers that the opponent has not demonstrated and proved beyond doubt that the alleged sales or deliveries and the related data sheets of the Magnaset binders were not subject to confidentiality and thus became public knowledge."
• In such a case (public prior use by the opponent, wherein the prior use is moreover 'intra-company'), the standard 'beyond doubt' is indeed correct. The standard 'beyond doubt' was never abolished in the case law, in my view. It is the specific implementation of the general standard 'is convinced' in the case where the evidence is exclusively in the sphere of the opponent (the party asserting the fact). 

EPO 

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

T 0491/25 - Omitting the co-applicant

Key points

• The professional representative (solo practitioner, it seems) files a Notice of appeal using the annotations field in Form 1038, referring to 'the appellant' (with automatic debiting). The entire text is as follows:
• 
• After the filing of the statement of grounds, the Board's registry issues an invitation to state the name and address. On the same day, the representative provides the applicant's name and address.
• However, the application was filed by joint applicants (two human persons) and the representative stated the name of only one of the applicants (the first-named applicant) in his reply.

• The second named applicant is a natural person with address in Russia. 

• Five months later, the Board issues a communication.
• In reply (again consisting of Form 1038 and using the annotations field), the representative files a request under Rule 139, first sentence, to the effect that the correct appellants are the two persons jointly.
• "The request for correction merely asserts that the notice of appeal was actually and truly intended to be filed on behalf of the joint applicants and that one of the two co-applicants had been [...] omitted due to a mistake. It is not accompanied by any evidence of this true intention or by arguments explaining why this alleged true intention was "immediately apparent" in spite of the contrary indication given in the letter of 4 April 2025."
• "In its letter of 4 April 2025, the appellant confirmed that the (only) appellant was [person X]. This is an explicit indication that it had in fact been the true intention to file the appeal on behalf of [person X] as the sole appellant, rendering it no longer "immediately apparent" (cf. G 1/12, Reasons 37) that the appeal had been intended to be filed on behalf of both co-applicants. For example, the representative may have truly believed that [person X] was the only applicant, which would mean that the notice of appeal did not contain a mistake in the sense of an expression deviating from the representative's actual intention (see J 7/19, Reasons 6 and 7; T 2474/19, Reasons 2.6.2 and 2.7.1; and T 71/21, Reasons 6.4.2), or he may for some other reason have decided to file the appeal on behalf of [person X] only."
• "The board concludes that the applicants have not shown that the requested correction of the notice of appeal introduces what was originally actually intended, even less so according to the "heavy burden of proof" referred to in [G1/12]".
• In view of the above, the request for correction of the notice of appeal under Rule 139, first sentence, EPC is to be refused, and the appeal is to be rejected as inadmissible (Article 107 and Rule 101(1) EPC).
• 
  

EPO 

The link to the decision is provided after the jump.

T 0866/24 - Unclear features and their technical effect

Key points

• Claim 1 of auxiliary request 2A differs from claim 1 of the main request in that the following feature has been added at the end (board's labelling and emphasis): 10) "wherein the SPR stops using a maximized proxy provider, at least for a period of time, when at least one of the configured maximum threshold is reached".
• The Board: "The patent description neither mentions the term "maximised proxy provider" nor appears to contain an embodiment having both a "dynamically [configured] utilisation threshold" as well as a "configured maximum threshold". The interaction of these two "thresholds" is thus left to the reader's imagination. ... Since an objection as to lack of clarity cannot be raised in the present case in view of G 3/14, the board has to accept the wording of feature 10) at face value. "
• "If unclear features are added from dependent claims to the independent claims in order to overcome an objection as to lack of inventive step, the onus to show that this objection is credibly overcome typically lies with the proprietor. On balance, in the absence of an objective technical problem which is credibly solved, feature 10) cannot contribute to an inventive step"
• In connection with a further auxiliary request: " According to the perception of this board, there is a recent tendency that dependent claims are less and less examined with respect to clarity in examination proceedings despite the fact that their full examination under Article 84 EPC was not considered "unrealistic" in G 3/14, Reasons 32. Such a full examination is even expressly encouraged by the Enlarged Board of Appeal in G 1/24, Reasons 20 (i.e. highlighting "the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC"). The justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. "
• "Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, are deemed to have been examined for clarity, although de facto they have not been. Nonetheless, they cannot be objected to under Article 84 EPC due to the conclusions of G 3/14."
• "The Board deems this result unsatisfactory, as an independent claim with unclear features leaves much to the readers' imagination. In addition, unclear features tend to elude a sensible comparison with the respective prior art. On top of that, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. "
• "Categorically barring opponents in such cases from raising clarity objections under Article 84 EPC causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the opposition divisions and the boards of appeal."
• "These unclear formulations of feature 12) do therefore not allow to determine whether the technical effect alleged by the proprietor is indeed achieved."

EPO 

The link to the decision is provided after the jump.

T 1524/23 - Should have been filed before OD

Key points

• The OD revokes the patent for insufficiency. The Board considers the claimed invention to be sufficiently disclosed but obvious.
• When should the proprietor file the auxiliary request dealing with the inventive step objections? Assume the inventive step attacks do not pertain to different technical issues than the sufficiency objection (edit 19-01-2026)
• Board 3.3.04 concludes that they should have been filed before the OD.
• "In the board's view, the claim requests should have been submitted in the proceedings before the opposition division as the amendments aim to overcome objections raised in the opposition proceedings which the appellant had opportunity to address before the opposition division."
• "In the board's view, the claim requests should have been submitted in the proceedings before the opposition division as the amendments aim to overcome objections raised in the opposition proceedings which the appellant had opportunity to address before the opposition division.
• [B]oth the claim construction adopted by [the] board and the related objection of lack of inventive step based on document D9 had been made by both respondents already in their notices of opposition (...). The appellant [proprietor] could [...] have reasonably been expected to submit appropriately amended claim requests and arguments in their favour [in response to these submissions and in the proceedings before the opposition division]."
• " The admittance of the auxiliary requests would have required consideration of new issues on appeal. Specifically, the amendment to include a dosage feature would change the focus of the considerations of inventive step and the admittance of the requests would have resulted in the board having to consider issues that played no role in the proceedings before the opposition division, i.e there would be a fresh case on appeal."
• Note, even if the auxiliary requests had been filed before the OD, the OD would not have considered inventive step of those requests (as I understand it, they would suffer from the same deficiency under sufficiency of disclosure as the claims as granted). Hence, it makes no difference in terms of "consideration of new issues on appeal" when compared to the decision of the OD. Had the auxiliary request been filed before the OD, the opponents could have commented on lack of inventive step in writing before the OD, but inventive step would still have played no role in the decision of the OD and in that sense, there would still have been a fresh case on appeal. 
• Whether the Board found the ARs promising in terms of inventive step, we don't know.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t231524eu1

T 0684/23 - A desirable antibody claimed as such

Key points

• "The invention relates to an antibody specific for free symmetrical dimethylarginine (SDMA) in a biological sample (claim 1),"
• The Board, under inventive step: "If the claimed antibody could not have been obtained by standard methods, its preparation could have been an invention in itself. However, the claimed antibody needs to be inventive on its own: it cannot be rendered inventive by means of any arguable difficulty in obtaining it."
•  Compare T 595/95: "A product which can be envisaged as such with all the characteristics determining its identity including its properties in use, i.e. an otherwise obvious entity, may become non-obvious and claimable as such, if there is no known way or applicable (analogy) method in the art to make it and the claimed methods for its preparation are the first to achieve this and do so in an inventive manner" (add, after G 1/23: and the product was not commerically available)
• " The parties also referred to the expectation of success in the context of the claimed antibody. However, whether there was a reasonable expectation of obtaining the claimed antibody has no bearing on its inventiveness. It may at best have relevance in the context of its preparation."
•  "The problem underlying the claimed invention [was] providing an improved method for evaluating renal function, achieving lower costs, improved time effectiveness and increased reliability."
• "The respondent [proprietor] did not dispute that the link between SDMA and renal function was known from D8. "
• "Claim 1 merely specifies the pre-eminent properties of an antibody for an SDMA assay: total specificity and direct application on serum. An assay relying on an antibody with those properties would have been an obvious improvement to a skilled person. This is the case regardless of whether an antibody with those properties was within the reach of a skilled person at the filing date: what is relevant is whether the features in claim 1 are obvious."

EPO 

The link to the decision is provided after the jump.

T 1523/23 - Remittal for request not arrived at

Key points

• The OD rejected the opposition. The Board finds the claims as granted to lack an inventive step.
• " 4.1 Since the opposition was rejected, the auxiliary requests [1 to 4] were not examined by the opposition division. It is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (Article 12(2) RPBA)."
• "4.2 ... the opponent suggested that the board decide on the first auxiliary request itself. Claims 1 and 6 of this request included the additional feature of a random arrangement. This amendment was introduced in response to an objection under Article 100(b) EPC, not to establish inventive step. The board was therefore in a position to decide on this request."
• "Nevertheless, the board considers it appropriate, for the reasons set out in paragraph 4.1, to remit the case to the opposition division for further prosecution (Article 111(1) EPC). The circumstances of the present case represent special circumstances within the meaning of Article 11 RPBA."
• Point 4.1 is cited in full above.
• Naturally, a second appeal may follow if the OD finds AR-1 to be inventive. 

EPO 

The link to the decision is provided after the jump.

T 0694/23 - Statistical significance as shown in the examples

Key points

• Claim 1: "A method for predicting whether a cancer patient with a solid tumor is responsive to treatment with chemotherapy comprising the steps: ..."
• "The sole distinguishing feature between the method described in D2 and the one being claimed is that D2 only suggests that a correlation exists between TIL densities at the invasive margin of liver metastasis and the time to progression under chemotherapy, but considers that, due to the small patient cohorts in the study, these conclusions are not statistically significant."
• So far, this does not identify a feature of the claim; it discusses the teaching of D2.
• "In contrast, the patent shows that the correlation underlying the method as claimed is statistically significant, at least for colorectal cancer, which is what is assessed in the Examples of the patent. "
• This describes the content of the patent application, in particular, the examples. It does not define a feature of the claim.
• "The technical effect underlying this difference is that the (statistical) robustness of the method for predicting whether a cancer patient is responsive to chemotherapy treatment is achieved."
• I assume that 'this difference' refers to the information contained in the examples of the patent. It is unusual to treat that information as a distinguishing feature (outside the scope of second medical use claims)
• Admittedly, the Board finds the claim to be obvious, even with the statistical significance as the difference.
• "Starting from the disclosure of document D2 and faced with the technical problem identified above, the skilled person would have been motivated to confirm D2's prediction and the correlation between the cell densities and the response to chemotherapy. For this, it had simply to follow D2's explicit suggestion and increase the number of samples in order to arrive, with a reasonable expectation of success, at a statistically significant correlation and thus at the method of claim 1. The claimed subject-matter thus lacks an inventive step from D2 alone."
• The claim is not a second medical use claim but a normal method claim and, hence, does not benefit from the 'it works' functional feature that is read into second medical use claims as a matter of law. The claim does not explicitly recite statistical significance either. 

EPO 

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

T 1639/23 - Made admissible by subsequent developments

Key points

• "The opposition division did not admit D7 and D7' (among other documents) [filed by the opponent] and the corresponding objections based on them into the opposition proceedings since they were considered late filed and, prima facie, not relevant."
• "Documents D7 and D7' were submitted by the appellant also on the final date referred to in Rule 116(1) EPC. Objections and evidence submitted by an opponent after the end of the opposition period under Article 99(1) EPC and claim requests submitted by a patent proprietor after the end of the period under Rule 79(1) EPC can generally be considered to not have been submitted in due time within the meaning of Article 114(2) EPC (see T 2172/21, Reasons 2, first paragraph; T 823/23, Reasons 7.18; and T 2662/22, Reasons 8.1, antepenultimate paragraph). Hence, the opposition division had discretion not to admit the aforementioned amended claim request or the aforementioned documents."
• " In the case at hand, documents D7 and D7' were submitted by the [opponent] at the same time as the [patent proprietor] submitted two amended claim requests [with features taken from the description]. These amended claim requests replaced all previously filed claim requests. During the oral proceedings before the opposition division, the patent proprietor filed, in two consecutive steps, two further amended claim requests as new main requests. The opposition division admitted all these amended claim requests into the opposition proceedings. When the fourth amended claim request was admitted by the opposition division, the appellant-opponent raised an objection against it based on documents D7 and D7', which the opponent had already filed on the final date referred to in Rule 116(1) EPC. The opposition division did not admit this objection for lack of prima facie relevance. While prima facie relevance is a correct criterion for the exercise of discretion, an opposition division must in such a situation also take account of previous procedural developments and ensure that the parties' opportunities to adapt their cases in the opposition proceedings are properly balanced. It appears questionable whether this was the case."
• The Board does not mention the opponent's right to be heard. 
• A question is whether D7 was admissible at the time of its filing (when the new auxiliary requests were not yet submitted) and if it could become admissible later.
• The Board does not have to make a decision on the point: "regardless of whether the opposition division's exercise of discretion suffered from an error, the Board considers that the circumstances of the appeal case justify the admittance of document D7. In particular, the Board considers document D7 prima facie highly relevant with regard to novelty"
• Claim 1 is found to be not novel over D7.
• The novelty-destroying effect of D7 would have applied equally to the claims as granted, it seems to me.
• The patent is revoked.

EPO 

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

T 1894/23 - Prevailing proprietor, narrower claims

Key points

• The EPO is open for business (including payment of renewal fees and other fees), and we have business to do here.
• If the proprietor prevails (opposition rejected), is he (they?) nevertheless required to submit auxiliary requests before the OD, in the sense of Art. 12(6)(s.2) RPBA? Does it matter if the preliminary opinion of the OD was positive (for the proprietor)?
• What if the OD decides to maintain the patent in amended form? Is the proprietor nevertheless obliged to submit further lower-ranking auxiliary requests under Art. 12(6)(s.2) RPBA?
• According to CLBA (2025), V.A.4.3.7.c, the prevailing line in the case law is that of T 205/22: "the board stressed that since the opposition had been rejected, there was no need for the patentee to file auxiliary requests before the opposition division, and a request filed at the beginning of the appeal proceedings could not be rejected solely on the ground that it should have been submitted earlier".
• However, see T 45/22, T 2140/22, and T 0566/20 for decisions taking a different view. Whether these are isolated decisions, I don't know.
• The OD found AR-7 allowable, which is the Main Request in the Board's decision. The Board decides that product claim 1 of the MR is not novel over D5.
• In AR-1, the product claims are deleted, and two method claims are kept.
• "The respondent did not contest that a claim request containing only method claims had never been submitted during the opposition proceedings and that auxiliary request 1 was new to the proceedings. However, the respondent asserted that deleting entire claim categories from a previously filed request was not an amendment to its case."
• "[M]ore recent decisions have predominantly held that deleting claims present in a previously filed set of claims is to be regarded as an amendment to a party's appeal case within the meaning of Article 13 RPBA in line with e.g. T 494/18, Reasons 1.3 and T 2091/18, Reasons 4. The diverging approaches seem to be converging towards the majority opinion (see in particular T 1800/21, Reasons 3.3 and 3.4 and decisions cited in that decision)."
• Hence, AR-1 is an amendment.
• "Under Article 12(6), second sentence, RPBA, the board should, in principle, not admit, inter alia, requests which should have been submitted in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance. It is well established in the case law of the boards of appeal that Article 12(6), second sentence, RPBA expresses and codifies the principle that each party should submit all facts, evidence, arguments and requests that appear relevant as early as possible to ensure a fair, speedy and efficient procedure "
• "In the case in hand, the respondent relied on auxiliary request 1 to address novelty objections against the claimed products. However, these objections had been raised from the outset of the opposition proceedings. In view of this, the board cannot discern any persuasive reasons why this claim request was not filed in the opposition proceedings, or any circumstances of the appeal that would justify filing this request only on appeal."
• "In view of the above considerations, the board decided not to admit auxiliary request 1 into the proceedings under Article 12(4) RPBA and Article 12(6) RPBA as this claim request addresses novelty objections against the product claims that had been raised at the outset of the proceedings. Auxiliary request 1 therefore should have been filed in the opposition proceedings. Moreover, admitting this request would neither simplify the proceedings nor serve the interests of procedural economy."
• The Board does not comment on the fact that the OD would not have considered AR-1, given that the OD found the higher-ranking MR (then AR-7) allowable.
• The Board does not engage with the case law set out in  CLBA (2025), V.A.4.3.7.c.
• AR-2 to 41 are not admitted either. 

EPO 

The link to the decision is provided after the jump.