T 0981/23 - No functional or structural link between the features

Key points

• The question is whether, under Art. 123(2), a feature can be taken from a paragraph of the description without certain other features that are also taught in that paragraph.
• The Board: "There is no functional or structural link between the internal operations of power storage, power supply and activation of the controller and the fact that the remote control is suitable for controlling a "toilet device". The internal power management is not inextricably linked to the control functions assigned to the operating buttons either. Hence, the interaction with a toilet device and its functions can be omitted without infringing the requirement of Article 123(2) EPC."
• For a second amended feature: "Claim 1 specifies ... . The basis for these features is found in Figure 4 and the corresponding description on page 14, lines 4 to 7 of the application as filed. The respondent [opponent] submitted that claim 1 contained an unallowable intermediate generalisation because it did not specify the [a feature]  disclosed on page 14, lines 9 to 16, in .... In the Board's view, these additional features need not be explicitly specified. First, it is well known that a rectifier usually outputs currents flowing in only one direction ... . The inherent smoothing function of electric storage elements is also well known and thus implicit. Second, the generic term "rectifier" is not limited to a diode bridge ... "
• "This implies that the disclosed distribution of the functions of current inversion and smoothing between the rectifier and the electric storage element is not inextricably linked to the specification of a rectifier, electric storage element and voltage detector as disclosed in Figure 4 and incorporated in claim 1. Either way, omitting the more specific features from page 14, lines 9 to 17 does not extend beyond the content of the application as filed."

EPO 

The link to the decision is provided after the jump.

T 0193/23 - An undisclosed embodiment is now encompassed by claim 1

Key points

• At issue is Art. 123(2).
• "The appellant (patent proprietor) argued that the introduction of feature 1.4 in claim 1 as granted is supported by paragraph [0019] of the originally filed application. Under dispute is whether the omission in claim 1 of further features recited in paragraph [0019], namely that the openable cover ...  "is sealable by way of engagement of two halves of a zipper ..." results in an unallowable intermediate generalisation of the specific embodiment disclosed in the cited paragraph of the originally filed description [,] as concluded by the Opposition Division."
• "As correctly pointed out by the department of first instance and the appellant (opponent), the originally filed application does not indeed describe or even envisage an embodiment of the claimed luggage including an openable cover attached to the expansion body wherein these two elements are not sealable/openable by a zipper disposed along their perimeter. As a matter of fact, no embodiment can be found where a zipper is not present or replaced by another element. However, by omitting the zipper in feature 1.4, such an undisclosed embodiment is now encompassed by independent claim 1. "
• I wonder if this is the correct test. Any generalised claim includes embodiments that were not  "describe[d] or [...] envisage[d]". However, for most claims, if not all claims, one can probably construct an embodiment that falls under the claim yet is not mentioned in the description. Hence, the test cannot be if the opponent can construct an embodiment that falls under the claim but was not 'described or envisaged' in the application as filed.
• With this test, a generalisation is never possible, it seems. Is that desirable?
• "The argument of the appellant (patent proprietor) that since the functionalities of attaching the openable cover to the expansion body and of closing and sealing the article luggage by a zipper disclosed in paragraph [0019] were not inextricably linked [,] no unallowable intermediate generalisation arose, is not convincing either. In this respect, the Board concurs with the Opposition Division and the appellant (opponent) that a functional overlap between these functionalities exists. In fact and to a certain extent, means to attach the openable cover to the expansion body and the zipper to seal the luggage article are required for the functionality of the luggage according to the application as filed."
• I wonder if a 'functional overlap' between features is the same as "inextricably linked. 
• The Board does not elaborate further on how the zipper is 'to a certain extent' "required for the functionality of the luggage according to the application as filed".
• Cf. CoA UPC 2 October 2025, expert e-Commerce/Seoul Viosys - https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Decision%20764-2025%20774-2025%20EP698%20EN.pdf 
• 
  

EPO 

The link to the decision is provided after the jump.

R 16/23 - On the right to oral proceedings

Key points

• This is the 13th successful petition for review, by my count. 
• The EBA corrects J 6/22, wherein the LBA had intentionally denied oral proceedings (and had dismissed the appeal), despite a valid request for oral proceedings of the applicant, in a case with a request for re-establishment for the late filing of the statement of grounds.
• Moreover, even though the underlying case is unusual, the LBA's reasoning was, though extensive on the legal points, quite generic and indeed suitable for copy/past in other (re-establishment) cases, as a TBA did in T 1874/23.
• The written reasoning of the LBA to deny the appellant's right to oral proceedings was extensive, and relied essentially on a purported 'dynamic' interpretation of Article 116, referring to the "substantial yearly number of appeals being filed and a considerable workload for the boards. Furthermore, the timely adjudication of cases has become a matter of increased interest to the stakeholders in the system, while it remains a challenge for the boards to carry out their function of effec­tively brin­ging justice to all parties within a reaso­nable time frame."
• The EBA holds, in the headnote, that "As oral proceedings had been requested by the appellant-applicant in the event that an adverse decision on the request for re-establishment of rights and on the appeal were taken, the [Legal Board of Appeal] should have arranged for the holding of oral proceedings pursuant to Article 116(1) EPC before taking any such adverse decision.
• " The failure to arrange oral proceedings constitutes a fundamental procedural defect within the meaning of Article 112a(2)(d) and Rule 104(a) EPC since, as a result, the appellant-applicant did not have the opportunity to present the case orally on the decisive issues of re-establishment of rights and the admissibility of the appeal"
• The EBA: "The second consideration referred to in the decision under review relates to aspects such as a timely adjudication of cases and the creation of legal certainty.  These are indeed aspects of great importance. The starting point is, however, that they are to be taken into account within the legal framework as provided by the legislator. In the view of the Enlarged Board, they are not sufficient on their own to justify a dynamic interpretation that would limit the scope of application of Article 116(1) EPC in such a way that a right to oral proceedings could be balanced against them."
• In addition, "As already stated in decision T 383/87, Article 116(1) EPC guarantees the right of any party to request oral proceedings, i.e. to argue its case orally before the relevant instance of the EPO. This includes the right for the party requesting oral proceedings merely to present orally what it has already submitted in writing (see also R 3/10, Reasons 2.11 confirming T 125/89, Reasons 7), without having to fear that, if it does so, the deciding body will order a different apportionment of costs for that reason alone (see also T 125/89, Reasons 7; T 383/87, Reasons 9)."
  
• The EBA's reasoning is extensive and clear. I recommend reading the entire decision. 

• The successful petitions are now: R 16/23; R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links). See also the list here.

EPO 

The link to the decision is provided after the jump.

R 11/23 - A new clarity issue raised in the written decision

Key points

• This is the twelfth successful petition for review, by my count. The decision was already published in July 2025. The blog post was kept in stock for some time by oversight. 
• The successful petitions are now: R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links).
• The patent application was filed in 2004 (as a PCT application). The grant was in 2017 (!). EP Entry in 2005, first action from the Examining Division in 2010, second Communication in 206 - we are looking back at the dark ages of the EPO. The decision of the TBA was T0532/20. 
• "Specifically, the petitioner [proprietor] argues that there were two distinct clarity objections against claim 1 of auxiliary request 8: The alleged lack of clarity what "maintaining currents in an allowable range" meant (the "allowable current range objection") and the alleged lack of information on which components were to be protected by the protective circuit (the "unspecified components objection"). The petitioner acknowledges that it was heard in the context of the "allowable current range objection" but it asserts that it was confronted with the "unspecified components objection" [and the Board's negative finding on that point] when reading the written decision only. Referring to pertinent case law of the boards of appeal, the petitioner argues that Article 113 EPC particularly meant that a party shall not be surprised by previously undisclosed reasons and evidence when studying the decision (pages 2 and 3 of the petition). "
• "The Enlarged Board also does not see any clear indication that the "unspecified components objection" was raised implicitly, for example as an aspect of an overarching clarity objection. During the written appeal proceedings, an objection was made that the critical feature (as quoted above in point VI.) defined a result to be achieved ("a protective circuit for maintaining currents within an allowable range") but not the technical measure of how to achieve it"
• "The "allowable current range objection" and the "unspecified components objection" are the aspects of the overall clarity or "result to be achieved" objection against the critical issue which were discussed in the decision under review. The objections were addressed separately (Reasons points 7.4 and 7.5), with a different outcome. The Board's finding that the "unspecified components objection" was justified in view of Article 84 EPC ultimately led to the revocation of the patent even though the "allowable current range objection" was not justified in the Board's view."
• On the burden of proof of the petitioner to show that an issue was not discussed during the oral proceedings before the BoA: "Since the Enlarged Board has no power or ability to investigate further whether other facts or indications might suggest that the petitioner could be aware that the Board had doubts about the specific aspect of clarity (namely, the "unspecified component" issue), it has to rely on the parties' submissions in this respect. In the absence of any such indication it is not for the party alleging a breach of its right to be heard to prove that there were no such facts or indications (see R 15/11, Reasons point 5). Any doubts remaining on whether a decision under review is based upon facts and considerations on which the parties had an opportunity to comment must be solved to the affected party's benefit (see R 2/14, Reasons point 10.3.4)."
• "The "unspecified components objection" which had not been discussed during the appeal proceedings eventually was the reason for the Board's finding that the patent was invalid. The Enlarged Board concludes that a fundamental violation of Article 113(1) EPC occurred."

EPO 

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

T 0821/24 - Essential features and permitted generalisation

Key points

• The patent application was refused. The applicant appeals. The question is whether claim 1 is clear or lacks essential features.
• The Board: "The Board acknowledges that generalisation in claim drafting is permissible. However, even in a generalised form, an independent claim must still include all features essential to solving the (subjective) technical problem addressed by the application and to achieving the technical effect relied upon, across the whole breadth of the claim. If the claim, by virtue of its general wording, encompasses embodiments that do not achieve that effect or solve the problem, its scope is not clear. In line with established case law of the Boards of Appeal, the claim does not meet the requirements of Article 84 EPC "
• I'm not entirely sure in what sense the term 'technical effect' is used here.
• "The overarching principle is that the applicant is entitled to protection only for the invention disclosed. "The invention", however, is necessarily linked to the solution of a technical problem with reference to the pertinent background art as addressed in or at least understandable from the application, as required by Rule 42(1)(c) EPC. Accordingly, claim generalisation cannot extend to embodiments that do not solve that problem or achieve the stated technical effect, since such embodiments do not belong to "the invention" and thus cannot be the subject-matter of a claim. This basic principle sets the permissible limits for generalisation."
• "The Board notes that a claim must also be clear in itself. If the skilled person must rely on the description merely to work out, within a broadly generalised claim, which features actually achieve the technical problem with which the application is concerned, this indicates a lack of clarity under Article 84 EPC."

EPO 

The link to the decision is provided after the jump.

T 0129/24 - Not paying the opposition fee

Key points

• The opponent filed an opposition in August 2020 using Form 2300E, but did not specify a debit order or fee payment method in that form. The reasoned statement of opposition did not indicate a (purported) debit order or a statement about an attached debit order.
• The OD decided that the opposition was deemed not filed for not paying the prescribed fee in time (after holding oral proceedings which lasted two hours, see the minutes.
• The opponent appeals. The Board summons for oral proceedings, but these are cancelled after the appellant (opponent) announces that it will not attend the hearing.
• The appeal is dismissed.
• The most interesting points are the following. First, the OD / formalities officer first issued an invitation on 03.09.2020 to reply under Rule 79 to the proprietor (supposedly, the OD / formalities officer declares the opposition inadmissible ex officio / in the ex parte procedure of Rule 77(1). The formalities officer then issues a notice of loss of rights to the opponent (03.09.2020). The opponent then requests re-establishment (which is not available for the opponent for non-payment of the opposition fee). 
• On 21.05.2021, the formalities officer issued a letter stating "for the opposition division" that "Opposition was filed with EPO Form 2300 on 20.08.2020. However, the method of payment was not specified on the mentioned form. Having regard to the circumstances including technical aspects, the EPO has come to the conclusion that the opposition fee is considered deemed to have been paid due in time, i.e. on 20.08.2020."
• The formalities officer then issues a new invitation to the proprietor to reply to the opposition (18.06.2021).
• The proprietor contests the validity of the payment of the opposition fee.
• The OD is enlarged with a legal member, and summons are issued.
• The OD issued summons. The preliminary opinion was negative on the validity of the payment. The OD noted that at the relevant time, OLF (old), in the then applicable version 5.12, did give a warning if the payment method was left 'not specified'). The OD also qualifies the letter of 21.05.2021 as a preliminary view.
• The opponent in appeal inter alia argues that the EPO's letter of 21.05.2021 created legitimate expectations that the opposition fee was considered to have been paid.
• The Board: "The principle of the protection of legitimate expectations is a general principle well established in EU law and generally recognised in the EPC contracting states and boards of appeal case law (see CLB III.A.1). The protection of the legitimate expectations of users of the European patent system has two main principles. It requires that the user must not suffer a disadvantage as a result of having relied on erroneous information or a misleading communication received from the EPO. ... In the present case no legitimate expectations were created because the above conditions were not fulfilled as will be explained in the following paragraphs.
• "contrary to how the appellant has argued, the opposition division did not conclude (communication of 21 May 2021) that the opposition fee was "in fact paid on time". Rather it concluded that the "opposition fee is considered deemed to have been paid due in time, i.e. on 20 August 2020". In other words the opposition division merely treated the fee as if it had been paid on 20 August 2020 which was the last day of the 9 month opposition period. The appellant does not otherwise dispute the opposition division's statement of fact in its decision (facts and submissions, 5) that the opposition fee was paid on 9 October 2020 together with a fee for re-establishment of rights under Article 122 EPC. Indeed the appellant confirmed this in its appeal grounds (page 1, second bullet point), thus it appears indisputable that in fact the opposition fee was paid late, several weeks after the end of the nine month opposition period."
• "he Board takes the view that T595/11 [blog post] is not relevant to the present case. In that case, a formal check that the correct appeal fee had been paid had not been carried out four years after the filing of the appeal (see reasons point 1.7 and 1.8), and the board in that case considered that after such a long time, since the issue had not already been raised, a legitimate expectation that the fee had been correctly paid was created.
• The present case is not comparable in that the formal check that the opposition fee had been paid was not delayed but timely carried out at the start of the opposition proceedings and the opponent correctly notified of the result that it had not been paid (see communication noting loss of rights of 29 September 2020). The Board also does not see that any legitimate expectations comparable to those considered in T595/11 were created by the opposition division's communication of 21 May 2021, informing the opponent that the opposition fee was deemed to have been paid. This is because the issue had already been raised and the opponent was aware that the proprietor had not commented on the matter at that stage of the proceedings. Indeed, the proprietor questioned the correctness of the information in the communication of 21 May 2021 at its earliest opportunity (27 October 2021) about five months after the communication. This position was taken up by the opposition division in its annex to the summons of 9 December 2022. "

• Compare T 0130/19 for a similar case, but with crucial factual differences.

EPO 

The link to the decision is provided after the jump.

T 0729/24 - A case with a letter rogatory

Key points

• A rare case with a letter(s) rogatory.
• The opponent had filed emails, as alleged prior art, that the original applicant sent to third parties. The original applicant was summoned as a witness by the OD. The witness, an Italian national, requested to be heard by the competent national court
• The EPO sent a letter to the Italian authorities requesting that the competent Italian court hear the witness (the document refers to an attached letter rogatory, but I've not found that in the public file wrapper. The EPO's letter uses 'letter rogatory', though customarily it is always plural (I understand).
• The transcript of the hearing by (and before) the Italian court (attended by the chair and the legal member of the OD), and the English translation of the transcript, can be found here.
• The OD concluded that the emails and documents at issue were not public, except for one email (D18) with attachments (see the OD's decision). D18 was sent to a prospective customer a couple of days before the filing date of the patent (and the priority is only partially valid). 
• The Board's preliminary opinion was that the claims as granted lacked basis in the application as filed, and that D18 was prejudicial to inventive step of most of the auxiliary requests.
• The proprietor then withdraws all auxiliary requests on file. The Board finds, as the OD, that the claims as granted lack basis in the application as filed.
• See T 2893/18 for an earlier appeal in this opposition case.

EPO 

The link to the decision is provided after the jump.

T 1789/22 (II) Amended description can be filed later

Key points

• The Board, in headnote 2: 'A proprietor cannot be expected to file an amended description in appeal proceedings until an allowable set of claims is found. The lack of an adapted description constitutes no obstacle to the admittance of an amended set of claims into the appeal proceedings (see Reasons points 6.3 and 6.4)."
• "There is also a whole body of decisions of the boards of appeal in which the cases where remitted to the opposition division for adaptation of the description to the claims found allowable. This practice is common where the patent proprietor attends the oral proceedings. The board sees no reason to deviate from it where the patent proprietor does not attend the oral proceedings. Decisions addressing requests to not admit a set of claims due to lack of an adapted description, where the board acknowledged the practice of allowing an adapted description to be filed once there is an allowable set of claims, possibly before the opposition division, include T 0807/16 (see Reasons 1.4), T 146/17 (see Reasons 1.2 and 1.3), and T 155/20 (see Reasons point 1.4). 
• 6.4 In view of this long-standing practice, the proprietor cannot be expected to file an amended description until an allowable set of claims is found. Taking into account that the board had not indicated prior to the oral proceedings that it intended to deviate from this established practice, applying the principle of legitimate expectations, the board decided that the lack of an adapted description constituted no obstacle to the admittance of the request into the appeal proceedings."
• Of course, this could be different if the Board expressly indicates that a revised description must be filed.

EPO 

The link to the decision is provided after the jump.

T 0824/23 - An intermediate generalisation is allowable ...

Key points

• The Board: "An intermediate generalisation is allowable ..." (this should pique your interest).
• That's not something I've seen very often in the recent case law, so let's pay attention.
• "An intermediate generalisation is allowable if it is directly and unambiguously, explicitly or implicitly, derivable for a skilled person from the application as filed that the feature can be isolated from the other features, such that the omission of the other features does not add new technical information (i.e. the "gold standard", G 2/10, Reasons 4.5.1). In accordance with the established case law of the Boards, the omission is justified only if the isolated feature is not inextricably linked with the other features, or, as sometimes expressed, "in the absence of any clearly recognisable functional or structural relationship" among those features or if it is clearly recognisable that the extracted characteristics are "not closely related" to the omitted characteristics (see Case Law of the Boards of Appeal of the EPO, 11th edn., 2025 (Case Law), II.E.1.9.1)."
• "These criteria do not refer to the mere "context" in which the isolated feature was presented. The decisive factor is whether the isolated features taken up in the claim are understood, by the skilled person in the art, to be inextricably linked to the omitted features to which the features taken up were linked but which were left out of the claim. This is the case if the person skilled in the art would have regarded the omitted features to be necessary for achieving the effect associated with the added features (see T 1762/21, Catchword)."
  
  
• After a detailed technical analysis: "Accordingly, the specification  [by the amendment of the claim ]of a direct connection in the vertical direction between the straight vertical inner side surface 52b and the waste receiving surface 44 top end 44a (Feature g') is not inextricably linked with the configuration of the flush water spouting system(s), the structure and geometry of further surfaces involved in the flush water distribution, and the problem of avoiding splashing of flush water out of the bowl."
• The amendment is deemed allowable. 

EPO 

The link to the decision is provided after the jump.

T 2342/22 - Partial priority and generic intermediate art

Key points

• Claim 1 is a second medical use claim for a combination therapy. Claim 1 has partial priority for only one embodiment. In particular, the priority document discloses only an embodiment with a specific order for administering the medicines. 
• D9 is a conference paper published in the priority year. It teaches the medical use (the method of therapy), but not the order of the administration. D9 does not specify the order in which the components of the combination therapy were administered to patients. 
• Is claim 1 novel over D9?
• According to the Board, yes, because "Since document D9 fails to disclose an order of administration not covered by the partial priority right conferred by the disclosure in [the priority document], the board considers that the disclosure of document D9 cannot anticipate the subject-matter of claim 1 within the meaning of Article 54 EPC."
• Hence, to anticipate the claim, D9 should have taught an embodiment that is unambiguously outside the part of the claim for which the priority is valid (and that is, also, in accordance with the claim).
• However, the claim is not inventive over D9 as the CPA. 
• "Starting from document D9 as the closest prior art, which discloses the use of a FITC-tagged adapter molecule in combination with AT-CAR T cells but does not specify an administration regimen, the skilled person would recognise that document D9 leaves open three alternative possibilities: administering the tagged adapter molecule prior to, simultaneously with or after the AT-CAR T cells. ... The arbitrary selection of one of them does not involve an inventive step."

EPO 

The link to the decision is provided after the jump.

T 0083/23 - Debit order on paper

Key points

• " In the present case, the opponent filed a notice of appeal within two months of notification of the opposition division's decision. As to the appeal fee, an order to debit the opponent's deposit account was given in the notice of appeal, thus on paper rather than in an electronically processable format."
• Also in January 2023, the ADA specified that debit orders must be "filed in an electronically processable format (xml) via one of the following: - EPO Online Filing using EPO Forms 1001E, 1200E, 2300E or 1038E, or Online Filing 2.0 using EPO Forms 1001E, 1200E or 1038E ... "
• "In the board's view, the debit order filed by the opponent on paper with the notice of appeal on 16 January 2023 was not validly filed. The filing of the debit order in an electronically processable format after expiry of the time limit of two months as set by Article 108 EPC, i.e. on 3 February 2023, was late, with the consequence that the opponent's appeal is deemed not to have been filed."
• " Where an opponent decides to avail itself of the use of a deposit account as a method for paying the relevant fees with the EPO (Article 5(2) Rules relating to fees), it is also its duty to know the relevant requirements for debiting a deposit account, including the types of debit orders and the accepted ways of filing them. The opponent's reference to its clear intention to give the order to deduct the appeal fee is not relevant under the present circumstances either."
• No request for correction under Rule 139 was filed.
• Three comments. First, the Notice of appeal was filed electronically, via Online Filing 2.0 (see the receipt), and Form 1038E was used (link), but that form did not include the debit order. The purported debit order was in the 'PDF' Notice (which does not bear a signature, so could not have been a valid paper Notice of appeal at any rate. The electronic signature is, however, in Form 1038E). Was the debit order really filed on paper?
• Second, the Board obiter holds that a request for correction is ruled out.  "A correction of the debit order in application of Rule 139 EPC presupposes that a valid debit order exists, i.e. filed in an electronically processable format. In the jurisprudence of the Boards of Appeal, correction of a debit order has only been allowed in case of errors concerning the amount of the appeal fee (see e.g.J 8/19 Reasons 2.4, T 317/19 Reasons 2.4.2, T 444/20 Reasons 2.4.3, T 2620/18 Reasons 5)."
• However, see T1146/20.
• Third. The opponent's appeal is deemed not to have been filed. The appeal fee is reimbursed. However, it may be a case of winning by losing. The OD maintained the patent in amended form; the proprietor also appealed, and the Board found the claims as granted allowable. Had the opponent validly paid the appeal fee, the decision in the patent would have been the same, and the appeal fee would not have been reimbursed.

EPO 

The link to the decision is provided after the jump.

T1620/23 - Inventive step as new ground (?)

Key points

• The Board, in translation: "The ground for opposition of lack of inventive step pursuant to Article 100(a) in conjunction with Article 56 EPC was mentioned in the notice of opposition dated 30 August 2021, but not substantiated in accordance with Rule 76(2)(c) EPC. Rather, the opponent reserved the objection of lack of inventive step for a later stage of the proceedings, should this objection become relevant due to new requests (notice of opposition, page 11). Accordingly, no statement was made regarding the question of the lack of inventive step in claim 1 as granted."
• The claim was attacked as not novel, I understand.
• The OD found the claims to be not novel. "the opponent did not make any statements regarding the lack of inventive step of the granted patent in the further course of the opposition proceedings."
• The Board finds the claim to be novel (contrary to the OD). The opponent would like to attack the claim for lack of inventive step.
• "The opposition ground of lack of inventive step under Article 100(a) in conjunction with Article 56 EPC – which, according to the decision of the Enlarged Board of Appeal G 7/95, is to be distinguished from the opposition ground of lack of novelty – was therefore not effectively raised by the opponent. The Opposition Division also did not introduce this opposition ground into the proceedings pursuant to Article 114(1) EPC. In particular, the Opposition Division's decision on claim 1 of the granted version of the patent was limited to the lack of novelty of the subject-matter. If the opposition ground is neither asserted and substantiated in the notice of opposition nor introduced into the proceedings by the Opposition Division, a "new opposition ground" exists according to G 1/95 and G 7/95, in each case reason 5.3. In appeal proceedings, such a new opposition ground may, according to decision G 10/91, only be examined with the consent of the patent proprietor."
• "The patent proprietor refused to consent to the examination of this ground for opposition. The ground for opposition of lack of inventive step may therefore not be examined in the appeal proceedings (G 10/91, principle 3). 
• Cf. T 131/01, published in the OJ: "In a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated pursuant to Rule 55(c), a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty. In such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee"
• As discussed in  Visser's Annotated EPC, Rule 76(2):4.3.3, incidentally. 

EPO 

The link to the decision is provided after the jump.

T 1789/22 - Two opponents, one appeals, attacks submitted by the other

Key points

• Decision of 12.12.2024, written decision issued on 19.12.2025 (Board 3.3.04, no communication under Art. 15(9) RPBA visible in the online file).
• There were two opponents. Opponent 1 appeals. Opponent 2 and the proprietor do not appeal. Opponent 1 maintains only some of the attacks in their Statement of grounds. Opponent 2 is a party as of right and uses its 'reply' to the appeal to submit additional attacks.
• "The submissions of the party as of right-opponent 2 included objections under lack of novelty in view of document D27 and lack of inventive step where documents D6 and D31 were taken to represent the closest prior art. Since the opposition division took a decision on these lines of attack in favour of the respondent, an appeal should have been filed to have these findings reviewed [*], rather than merely contesting them in the reply to the statement of grounds of appeal. However, as indicated above, the appeal of the appellant did not contest the decision in these respects, therefore these objections are outside the legal and factual framework for review by the board. Their consideration is in principle not excluded but is subject to the discretion accorded to the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• The Board's exercise of its discretion is intertwined with its decision on the subsequent letter of the appellant (opponent 1) that it agreed with the attacks (objections) of opponent 2.
• " The board notes that the appellant provided no justification for not having raised these objections with the statement of grounds of appeal, and the board cannot see any either. Moreover admitting these several additional attacks would be detrimental to procedural economy and unfair for the respondent, who relied on these parts of the appealed decision not having being contested. Accordingly, the objections filed by the appellant with this letter were not admitted into the appeal proceedings. The same applies to the corresponding objections filed by the part as of right."
• * - Note that this point is a bit tricky. Had the OD revoked the patent as novel over D1 but not inventive over D2, the opponent could not have appealed on the ground of the unfavorable reasoning on novelty (the requirement of being adversely affected of Art. 107 is determined by reference to the order of the decision, not the reasons). 
• By the same token, had the proprietor appealed as well, opponent 2 as a respondent could have submitted the attacks validly in their reply to the appeal.
• 
  
• Furthermore, opponent 1 had attacked only some of the independent claims of the set of claims held allowable by the OD in its statement of grounds, but did not attack independent claim 5 in its statement of grounds.  
• The Board holds a later-filed attack against claim 5 to be inadmissible: " As set out above, the statement of grounds of appeal defines the framework of the appeal and in the present case it did not include novelty of claim 5 of the request held allowable by the opposition division (see points 2., 5. and 5.1). Accordingly, novelty of claim 1 of the main request is not open for review by the board in this appeal proceedings."
• The Board first recalled the principle of the 'extent of the opposition'. The Board then reasoned that: "2. With regard to opposition appeal proceedings, in addition the statement of grounds of appeal determines the object of the appeal proceedings and the legal and factual framework for the review of the appealed decision by the board. In other words, the statement of grounds of appeal determines the extent to which amendment or cancellation of the appealed decision is requested (see e.g. G 9/92, Reasons 1)."
• G 9/92 r.1: "...  Proceedings under the EPC in respect of European patent applications and patents are, with some exceptions, initiated by a party. The initial "request" determines the extent of the proceedings. This is known as the principle of party disposition (ne ultra petita). The present case concerns the question whether the extent of the initial appeal, i.e. the statement in the notice of appeal, affects the extent of the subsequent proceedings, and this has to be examined systematically in conjunction with procedural law under the EPC." (emphasis added)
• G 9/92 is about reformatio in peius, i.e. the subject-matter of the patent (as amended), i.e. the order of the decision and not the reasons for the decision (there is quite some case law on this point). Opponent's 1 request in its notice of appeal was to revoke the patent in its entirety (link).  The TBA acknowledges that G 9/92 does not directly support its reasoning by citing it as 'see ... G 9/92').
• The Board's reasoning seems new to me.
• I also wonder how to reconcile it with the case law that there is no concept of partial inadmissibility of an appeal in the EPC.  
• The Board's headnote 1 is as follows: "1. ... The provisions of Article 107, second sentence, EPC guarantee a non-appealing party the right to participate to pending appeal proceedings. However, they do not provide it an autonomous right to have requests which go beyond the scope of the appeal as defined by the appellant's statement of grounds of appeal, decided by the board (as a direct consequence of G 2/91, Headnote)."
• This headnote puts it too strongly, in my view.
• The case is about a non-appealing opponent, not about a proprietor submitting claim requests. Furthermore, G2/91 is about the termination of the appeal if the appellant withdraws his appeal (heandnote 1) and the refund of the appeal fee (headnote 2).
• I think the 'reply' of the non-appealing second opponent should be treated as a case amendment under Article 13(1) RPBA, similar to the case where a respondent/appellant uses his reply under Art.12(1)(c) to the appeal of the other appellant as a supplement to his own statement of grounds (treated as an appeal case amendment under Art. 13(1), see T 2701/19).
• See also T 250/20 about cross-party reliance, referring to "established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings". This suggests that Opponent 2 can rely on the Statement of grounds of Opponent 1 and then submit any further attacks as case amendments under Art. 13(1).
• "By not filing an appeal, a non-appealing party has not contested the findings of the opposition division, beyond the framework of the appeal filed by the appellant."
• This does not seem correct, to the extent that it suggests the opponent as a respondent cannot introduce objections against the broader claims (sought by the proprietor as appellant) that were not decided on in the impugned decision. 

EPO 

The link to the decision is provided after the jump.

T 0439/22 - Deleting statement from description in opposition

Key points

• This is the appeal that led to case G 1/24. After the remittal, the TBA now decides on the patent.
• The Board considers claim 1 to be not novel because a term in the claim is given a broad definition in the description. The definition given in the description is broader than the normal meaning of the term in one aspect. Under the broader definition, the claim is anticipated by a prior art document. Hence, the definition in the description is considered and adopted as decisive under Art. 54 by the Board. 
• Although the definition is broadening in one aspect, in other aspects it narrows the scope of the claim compared to the term's normal meaning. 
• In AR-1, the proprietor deletes the paragraph from the description. This causes an issue, namely an extension of the scope of protection under Article 123(3). 
• The Board: "Claim 1 contains neither explicit nor implicit features that necessarily limited the claimed aerosol-forming article to a rod-shaped configuration or, as a consequence, required the tobacco sheet to be gathered by being compressed or constricted substantially transversely to the cylindrical axis of a rod. In the absence of the definition formerly provided in paragraph [0035], claim 1 also encompasses aerosol-forming articles that are not rod-shaped, i.e. not substantially elongated in one direction and, if they are, sheets that are folded and gathered not substantially transversely to but along the cylindrical axis of the rod, like a bellows, thus extending the scope of protection compared with claim 1 of the main request." 
• "For the reasons above, the auxiliary request does not comply with the requirement of Article 123(3) EPC, and is therefore not allowable."
• In the case at hand, the definition may have been included in the description from the outset. However, the present case also serves to illustrate that if the description is amended in the pre-grant procedure, it may not always be possible to revert to the original text after grant, nor to simply delete the relevant passages of the description. 

EPO 

The link to the decision is provided after the jump.

T 0487/23 - Withdrawal request oral proceedings

Key points

• The opponent and the proprietor both appeal. The Board issues a communication (that contains the preliminary opinion). The proprietor withdraws its request for oral proceedings within one month of the communication. The opponent withdraws its request for oral proceedings more than one month of the communication (by announcing it will not attend the oral proceedings). The oral proceedings are then cancelled.
• Is the opponent's appeal fee reimbursed at 25% under Rule 103(4)(c)??
• The Board: "As no oral proceedings took place, both conditions of Rule 103(4)(c) EPC, that "any request for oral proceedings is withdrawn ... within one month ..." and "no oral proceedings take place" (emphasis by the Board), are met(Case Law of the Boards of Appeal 11th Edition (2025), V.A.11.12, e.g. T 488/18). 3. 
• Consequently, both appeal fees are to be reimbursed at 25%."
• Rule 103 EPC is a gift that keeps on giving for bloggers and handbook writers.
• I don't think the decision is correct, by the way. According to CA/80/19, point 82, "If a request for oral proceedings is withdrawn in good time before the oral proceedings, the Board may be able to use this freed-up capacity to schedule oral proceedings in another appeal case. Such withdrawals will also allow interpretation to be cancelled in sufficient time to reduce or eliminate interpreting costs."
• In the present case, the oral proceedings could be cancelled only after the opponent withdrew its request for oral proceedings, which was more than one month after the communication. The incentive for any appellant who had requested oral proceedings should be to withdraw its request for oral proceedings within one month of the Board's communication. 
• On the other hand, the AC document is from 2019, before Vico oral proceedings became the rule. Hence, there may be less of a need for an early withdrawal of the request for oral proceedings.

EPO 

The link to the decision is provided after the jump.

T 0749/23 - Any embodiment as starting point (Mite composition)

Key points

• Claim 1 of AR-3 at issue  “is for a composition comprising (i) a population of individuals from a Phytoseiid mite species, (ii) a food source for the mite individuals selected from rearing prey from the suborder Astigmata and (iii) stacked carrier elements selected from millet husks, where the carrier elements comprise shelters for mite individuals”
• Documents D3/D9 describe five mite compositions comprising, as equal alternatives, the carrier elements wheat bran, buckwheat husks, rice husks, saw dust and corn cob grits”
• “The patent proprietor contended that the composition comprising rice husks of documents D3/D9 was not a suitable starting point for the assessment of inventive step for various reasons. First, they argued that buckwheat husks, rather than rice husks, should be taken as the starting point since buckwheat husks were used in the examples of documents D3/D9 and were therefore highlighted.”
• The Board: “The starting point for assessing inventive step is normally a set of features disclosed in combination in a document, typically in the form of an embodiment or example.”
• “the board considers that each of these embodiments [of the five compositions] can be used as the starting point for assessing inventive step. All embodiments are presented as suitable, and there is nothing in documents D3/D9 that would disqualify any of them. Since each embodiment can be used, the board also agrees with the opponents that the assessment of inventive step can be based on a mite composition containing rice husks as carrier elements as the starting point.”
• “the board does not concur with the patent proprietor's view [that the rice husk embodiment of D3 is not a starting point].  First, Article 56 EPC requires that an invention, having regard to the state of the art, not be obvious to a person skilled in the art. The state of the art for the purpose of considering inventive step is the entire state of the art as defined in Article 54(2) EPC, without any ranking or distinction (T 2140/22, Reasons 1.9.1).”
• “if inventive step is to be acknowledged, the claimed subject-matter must be inventive starting from any starting point in the prior art. Conversely, if the invention is obvious to the skilled person from at least one starting point, an inventive step is lacking (Case Law, I.D.3.3). Neither the EPC nor the case law of the boards stipulate that the starting point for assessing inventive step must be the entire disclosure, an example, or a preferred embodiment in the prior art. Rather, the starting point may be any disclosure in the prior art.”
• Still, it may not be obvious to a skilled person to develop a non-preferred embodiment.
• “There is also no requirement that an embodiment must be exemplified for it to be considered in the assessment of inventive step. There is, likewise, no requirement that the prior art contain any pointer, suggestion or incentive to select a particular embodiment for further development for this embodiment to qualify as the starting point in the problem solution approach”.
• “as a matter of principle and in agreement with T 2001/23 (Reasons 3), that if the subject-matter of a claim is found to lack an inventive step starting from a particular disclosure, as is the case here (see below), it is not possible to establish inventive step by proposing that the assessment be started from a different starting point.”
• The Board then distinguishes T 1126/19 on the facts.
• “Third, G 1/23 does not support the patent proprietor's argument that the skilled person is the relevant point of reference in selecting the starting point for the inventive step analysis. Points 93 to 95 of decision G 1/23 are concerned with the impact on novelty and inventive step of accessible but not fully reproducible products which the Enlarged Board of Appeal accepted as being part of the prior art. According to these considerations, the relevance of such a product for assessing inventive step, namely its suitability as a starting point or secondary source of information, depends on the available information associated with the product, i.e. it depends on what is disclosed to the skilled person.”
• “ The Enlarged Board of Appeal [in G 1/23] did not make any finding that the choice of starting point in the problem-solution approach requires motivation by the skilled person. In the case in hand, all carrier elements disclosed in documents D3/D9 are available, and all can be used. Indeed, the patent proprietor never argued that rice husks would be obviously defective or not enabled.”
• In view of T 2759/17: “In the case in hand, as correctly noted by opponent 2, the starting point for assessment of inventive step, namely a composition comprising rice husks, is disclosed for the same purpose as the compositions comprising other carrier materials disclosed in documents D3/D9, namely the rearing of predatory mites, which is also the purpose to which the patent is directed. The board concludes that in the case in hand, a composition comprising rice husks would also be a realistic starting point under the approach set out in T 2759/17.”
• “The patent proprietor's assertion that documents D3/D9 did not disclose a list of equal alternatives to the skilled person is based on the results in Example II of the [opposed] patent, in which millet husks performed better than bran. Since the closest prior art must be assessed from the skilled person's point of view on the day before the filing or priority date valid for the claimed invention, the assertion must be rejected for this reason alone.”
• One would expect that, starting from the embodiment of D3 with rice husk as the carrier element, the distinguishing feature would lie in the other components of the composition. However, the difference is that the patent claims the use of millet husk as the stacked carrier elements. The Board does not acknowledge any technical effect of that difference. “the patent describes that millet husks have a sheltering effect in comparison with the non-sheltering carriers wheat bran and vermicullite (paragraphs [0005] and [0006], experiments I and II). The patent does not indicate any advantageous effect of millet husks over rice husks.” A post-published document was not admitted, as filed late (namely, in appeal).
• The patent is revoked.
• “The objective technical problem is the provision of alternative carrier elements for a mite composition comprising a population of a phytoseiid predatory mite species and a factitious host population which comprises at least one species selected from the family of the Carpoglyphidae.”
• I think a key question could have been whether the OTP was indeed simply providing an alternative, given that the advantages of risk husk were unrecognised in the prior art document D3.
  
  
• Partiality of the OD?
• “opponent 2 submitted that the chairman of the opposition division stated during oral proceedings that in coming to the conclusion that auxiliary request 3 was inventive over document D9 as the closest prior art, it was also taken into account that the claims were restricted to particular mites and that, from the perspective of a work-around, there were sufficient possibilities.”
• The Board dismisses the objection on the ground that the reasoning about the workaround is not part of the OD’s written decision. Furthermore, “an objection on the ground of suspected partiality before the department of first instance can be disregarded if it is not raised immediately after the party concerned becomes aware of the reason for the objection (G 5/91, Reasons 4 [...]”

EPO 

The link to the decision is provided after the jump.

T 1396/23 - 2nd medical use claim for foodstuff

Key points

• Claim 1: “Composition comprising polysaccharides and whey protein micelles [provided as a complex, a so-called WPM complex] for use in the treatment or prevention of ... diabetes ...  in a subject;  .."
• “The appellant [opponent] did not contest that claim 1 defined a therapeutic method of treatment pursuant to Article 54(5) EPC. It argued, however, that the effect induced by WPM complexes described in the opposed patent was not therapeutic. The claimed complexes provided nutrition but were unsuitable to prevent the claimed conditions, even less so to treat them."
• The Board: “The patent explains that, prior to the filing date, whey protein isolates were considered not only to be essential nutrients [*] but also to be beneficial in reducing the risk of, and treating, metabolic diseases associated with high-fat diets and/or elevated postprandial insulin levels, such as diabetes (see paragraphs [0005] and [0006] and the references cited in those paragraphs). On this basis alone, it is reasonable to assume that the claimed WPM complexes, which contain whey proteins, could likewise induce these effects.”
• • Here, the Board finds that it was known that whey protein isolates were ‘beneficial’ in “treating ... diabetes”, and that on this basis, it is credible that the claimed composition that comprises whey proteins meets the requirement of Art. 83 for the recited second medical use of treating (or preventing) diabetes.
  • It is unclear to me what the Board means by the statement that whey protein isolatesare ‘essential nutrients’. I assume humans can live without a regular intake of whey protein isolates, or even without a regular intake of whey proteins, for that matter. Whey proteins may contain amino acids, including essential amino acids, but that is not the same.
• The Board notes that additionally, “the patent teaches that using the claimed WPM complexes rather than conventional whey proteins is beneficial for subjects who are at risk of or suffer from the diseases indicated in claim 1. ... The tests in example 3 of the patent show that meal D - [with the WPM complex] - induces a substantially lower insulin response compared with isocaloric and isonitrogenous control meals A and B, which comprise uncomplexed WPM or whey protein isolates ... This indicates that less insulin is required to clear glucose from blood after ingestion of meals comprising the WPM complexes” - than with whey protein isolate, I understand.
• The Board: “It is immaterial what the underlying mechanism of action is ... - the skilled person would appreciate that the claimed WPM complexes are intended to be incorporated into a nutritional composition in place of whey proteins in order to achieve the stated therapeutic effect. In the context of the invention, the claimed compositions comprising WPM complexes can thus be regarded as "a substance or composition" within the meaning of Article 54(5) EPC that is used to carry out the claimed therapeutic method.”
• This leads the Board to the following headnote: “A substance or composition that induces a therapeutic effect when used to replace a known essential nutrient in a nutritional composition may be considered a "substance or composition" within the meaning of Article 54(5) EPC”
• “It is undisputed that optimising the insulin response by improving the body's sensitivity to insulin is a cornerstone of diabetes therapy. A reduction in insulin demand following a meal is beneficial in patients affected by or at risk of developing insulin resistance, type 2 diabetes and other associated metabolic diseases. Accordingly, the results of the tests described in the patent make it credible that the claimed composition is suitable for treating and preventing the diseases indicated in claim 1.
• • The headnote seems to pertain only to the second argument of the Board, not to the argument based on the known therapeutic effect of the (prior art) whey protein isolates.
  • Possibly, the view of the Board is that WPM complex is a substitute for the known whey protein (isolate), that the known whey protein is a nutrient with a lower insulin response, i.e. with a beneficial effect for diabetes patients (quite comparable to replacing sucrose/glucose with artificial sweeteners, it seems to me) and that beneficial effect on the health of diabetes patients of the known whey protein is sufficient to support a second medical use claim of the substitute WPM complex.
  • See also e.g. T 2036/21 about "omega-3 fatty acids selected from DHA, DPA and EPA, uridine, choline, and vitamin B12 and folate for preventing dementia".

The link to the decision is provided after the jump.

T 1601/22 - More than a year for the written decision

Key points

• This decision (by Board 3.3.04) was taken during oral proceedings on 10.10.2024. The written decision was issued on 23.12.2025. Two communications under Art. 15(9) RPBA were issued, in January and July 2025, indicating ‘the current workload’ as the reason for the delay in the issue of the written decision.
• • Hence, Article 15(9) RPBA was complied with, so we can’t complain about that. Whether taking more than a year to write the decision is sound caseload management is not something for me to speculate about. But it is remarkable that the Board chose to delay this decision for so long.
• “According to claim 1, IL-2, which may be either human IL-2 or aldesleukin, is the active agent responsible for the therapeutic effect of treating systemic lupus erythematosus in a human subject.” Claim 1 also specifies  “to be administered at a dose of between 1 MIU/day and 3 MIU/day”.
• "D5 [a patent application] discloses two case studies reporting a therapeutic effect of IL-2 administered intravenously at a dose of "500 U" for 14 days in the treatment of SLE"
• " In view of the early filing date in 1987 [of D5], it cannot be confirmed that the doses disclosed in D5 were established according to the WHO standard for IU."
• " The subject-matter of claim 1 differs from the disclosure in document D5 in the dosage of between 1 and 3 MIU/day of IL-2, which is not derivable from D5."
•   The claimed dosage range of between 1 and 3 MIU/day provides dosages below 3 MIU/day. This range is not selected arbitrarily, because the administration of higher IL-2 doses (not excluded by the teaching of D5) also stimulates Teffs, which is an undesirable effect"
•  "While D5 provides isolated case studies of the treatment of two patients having SLE with IL-2, these do not prove statistical significance, and furthermore, the dosage used is not apparent from the information provided in D5.
• Moreover, D5 does not provide any rationale that might guide the person skilled in the art in selecting a suitable dosage. The general range of 35 to 2000 units proposed in D5 (column 6, lines 40 to 56) is very broad. The use of un-standardised "units" and the vague description of the dosage regimen applied in the reported clinical cases does not permit any conclusions with regard to the dosage levels proposed, or the actual dosages used in the clinical cases."
• The Board considers the claim to be allowable.
• See also T1108/22 - 3.3.04 - 18.11.2024 - 22.12.2025 (no Art. 15(9) communication visible) - 9 opponents, case remitted to OD for further prosecution (so the delay in the written decision actually matters for the actual decision on the allowability of the claims!).
• See also T 1048/21, 10.10.2024 - 22.12.2025 - 3.3.04.

EPO 

The link to the decision is provided after the jump.

T 1902/23 - Twelve documents as the CPA

Key points

• “The [proprietor/respondent] argued that D11 should be considered as the closest prior art for assessing inventive step, contrary to the [opponent’s/appellant’s] position that all documents D2-D12 and D16 were suitable alternatives to be taken as the closest prior art [...]. Using twelve documents as [the] closest prior art constituted an impermissible "shotgun" approach. Reference was made to the Guidelines for Examination (G. VII. 5.1) and decision T 320/15 (point 1.1.2 of the reasons), which established that multiple starting points were only permitted when documents were equally valid springboards, and that opposition proceedings should not become a forum for unlimited inventive step attacks.”
• “ the Board concurs with the appellant for the following reasons: (a) Firstly, on the question of whether only one piece of prior art should be selected for the purpose of assessing inventive step, it is settled case law that there are often several reasonable starting points, each offering a different route that might lead to the invention without the need of hindsight”
• “In practice, the number of suitable prior art documents may also depend on the breadth of a claim, so that a broad claim may lead to a situation where several documents are equally valid starting points. The same is true in a highly competitive technical field where many closely related prior art documents have been published. However, as mentioned above, the fact that several documents are proposed as the closest prior art is per se not incompatible with the problem-solution approach.”
• “In any event, although the [opponent] started from 12 different documents for their objections of lack of inventive step, it is clear from their arguments that these objections actually boil down to two main lines of attack: ...”
• Claim 1 is found to be obvious over D2. None of the auxiliary requests is admissible and allowable over D2.

EPO 

The link to the decision is provided after the jump.

T 1909/23 - 2nd medical use claim for individualized RNA cancer vaccine

Key points

III. Claim 1 of the patent reads as follows:

"1. An individualized cancer vaccine for use in a method of treating a cancer patient, said method comprising the steps:

(A) providing the individualized cancer vaccine by a method comprising the steps:

(a) identifying cancer specific somatic mutations in a tumor specimen of the cancer patient to provide a cancer mutation signature of the cancer patient, comprising

(aa) ...  and

(b) providing an RNA vaccine featuring the cancer mutation signature obtained in step (a), wherein the RNA vaccine comprises RNA encoding a recombinant polyepitopic polypeptide comprising mutation based neo-epitopes; and

(B) administering the individualized cancer vaccine to the cancer patient."

• Claim 1 of the present patent [is very similar to] claim 1 of EP 2 714 071, dealt with in decision T 2168/21, [and differs from it] in the addition of steps (aa), (bb) and (cc) and in the absence of the further characterisation of the RNA vaccine as "featuring the mutation signature of the patient".
• T 2168/21 was published in June 2024. I missed it back then.

No cross-case res judicata effect

• "The decision in case T 2168/21 is formally not binding on the present board due to the independency of the proceedings between parent and divisional application(s). Neither has it an effect of res iudicata for the present proceedings due to the lack of identity of facts and claimed subject-matter (cf. e.g. T 1270/20, Reasons 3.8.2; T 2084/11, Reasons 1.3; see also Benkard, EPÜ (4th edition), Art. 76, Rn 10). However, in view of the very similar wording of claim 1 of both patents, the conclusions drawn in the present case and the reasoning of this decision are similar to those of T 2168/21."

Medicine preparation steps limiting

• “The claim relates to a purpose-limited product in the sense of Article 54(5) EPC. Both method steps (A) and (B), including the sub-steps (a) and (b), constitute characterising and limiting features of the claimed subject-matter because they form an integral part of the method of treating a patient, which is a method referred to in Article 53(c) EPC. Without these steps, the claimed "individualized cancer vaccine" cannot be implemented and would not be defined.”
• “The patient to which an individualised cancer vaccine is administered is therefore the same patient from which a tumour specimen for the identification of cancer-specific mutations originated giving rise to a cancer mutation signature of this very patient. Since these steps are mandatory to obtain the individualised cancer vaccine under consideration, the legal fiction of a purpose-limited product in accordance with Article 54(5) EPC applies at least to step (A), including the sub-steps (a) and (b), and step (B) of the method, which are thus limiting on the claim.”
  
  
  
• I wonder how infringement of this kind of claim will be evaluated. It seems to me there will not be any generic supplier of the vaccine? 

EPO 

The link to the decision is provided after the jump.

T 1571/23 - No harmless error rule?

Key points

• The OD revoked the patent. The proprietor appeals and requests that the impugned decision be set aside because of an alleged substantial procedural violation.
• The Board, in translation: "In the Board's view, it is immediately apparent from the grounds of appeal that the patent proprietor wishes to have the contested decision set aside due to procedural defects, in particular a violation of the right to be heard, and to have the matter remanded to the Opposition Division. In view of the alleged procedural defects, it is irrelevant whether the appeal can also be considered sufficiently substantiated with regard to the key grounds of the decision, namely the inadmissible extension and the lack of clarity concerning the requests admitted by the Opposition Division (see Case Law of the Boards of Appeal of the European Patent Office, 11th edition, 2025, V.A2.6.7.c; T 1020/13, Reasons 1)."
• • As a comment, there could also be a rule that the procedural error must not be harmless, i.e., that it could have influenced the outcome of the case.
  • CLBA V.A.2.6.7.c cites only one decision, namely T 1020/13.
  • I think a distinction should be made between procedural errors that vitiate the entire decision (i.e., wrong composition of the OD, lacking signature to the decision) and a violation of the right to be heard. In the latter case, there should be at least a prima facie argument made why the substantive reasoning was wrong on the point affected by procedural error, and how the outcome of the case could have been different with correct reasoning (to deal with the case that there are two alternative grounds for refusal, only one of them being affected by the alleged violation of the right to be heard). 
  • The decision is in line with T 0898/24.
• The Board finds no procedural error concerning the main request.
• AR 1 to 91 were not substantiated in the appeal and were not admitted.
• The proprietor's appeal against the decision revoking the patent is dismissed.

EPO 

The link to the decision is provided after the jump.

T 1113/24 - OD should have heard witnesses

Key points

• The opposition is based on an alleged public prior use. The OD rejected the opposition. The opponent appeals. The OD had refused to hear two witnesses (as requested by the opponent) in connection with the public prior use. The opponent had substantiated the public prior use with documents, including technical drawings and diagrams.
• The OD had reasoned as follows: "The witnesses had been offered to confirm that the filling and cleaning installation according to the prior use "Adelholzener" anticipates all the features of claim 1 of the contested patent. However the documentary evidence supporting the alleged prior use D21 to D39 was of such a low quality that a skilled person would not be able to read any technical information from the diagrams of documents D23, D24, ..., and thus would not be able to identify whether some of the claimed features ... were disclosed in these documents or not."
• The Board: "The appellant [opponent] convincingly demonstrated that a substantial procedural violation took place in the opposition proceedings for the following reasons."
• "the [opponent] offered witnesses specifically to corroborate and explain the technical details of the circulation paths that were visible in the diagrams (but required expert interpretation). This means that the witnesses have not been offered to introduce new facts into the proceedings, but merely to confirm the facts alleged in the notice of opposition."
• "According to the established jurisprudence (CLBA, III.G.3.1.1), if the evidence offered as proof of contested facts essential to the settlement of the dispute is decisive, the body hearing the case must, as a rule, order that it be taken."
• "The opposition division also incorrectly based its decision on the prior use on an assumption about what the witnesses would say, thereby pre-empting the evidence's evaluation."
• "Additional clarifications provided by a witness to close a potential gap in the documentary evidence on file cannot be considered per se, even before hearing the witness, as new facts; hearing a witness would otherwise be futile (CLB, point III.G.2.4.1)."
• " The absence of written declarations by the offered witnesses is also not a reason to suspect that their testimony would exclusively introduce new facts, and also does not justify the decision of not hearing them."
• "This is because, according to the established jurisprudence it is a party's choice to present whatever means of evidence it considers to be suitable, and it is an opposition division's duty to take its decision on the basis of all the relevant evidence available rather than to expect the presentation of more preferred pieces of documentary evidence, and to speculate on the reasons for and draw conclusions from their absence "
• "While it is correct that oral evidence of a witness should only be taken when required to clarify matters decisive for the decision, the opposition division should have heard the witnesses before deciding what the alleged prior use was, and was not, disclosing, as the witnesses were offered to corroborate decisive facts already alleged in the notice of opposition."
• "By refusing to hear the proposed witnesses before deciding on the allegation of prior use, the opposition division has in fact proceeded to assesDat is evidence that had not yet been completely established thereby incurring a substantial procedural violation ..."
• The impugned decision is set aside, and the case is remitted to the OD. The Board does not decide on any other points.

EPO 

The link to the decision is provided after the jump.

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.