T 0842/24 - No reversal of decision OD to admit

Key points

• The Board, in the headnote: "There is no legal basis for reversing in appeal a decision by the opposition division to admit new evidence into the opposition proceedings and thus to retroactively reject in appeal specific facts which had been admitted into the appeal proceedings if that evidence formed the basis of the decision taken on substantive grounds. It cannot be derived from G 7/93 that the criteria stated therein for overruling the way in which a department of first instance has exercised its discretion also apply to the case where evidence was admitted and the decision taken on substantive grounds was based thereon. "
• This approach seems correct to me. However, the Board still reviews for a fundamental procedural deficiency (which would justify a remittal under Art. 11 RPBA).
• "it is concluded that under the present circumstances the Board is not empowered to review the way the opposition division used its discretion to admit D29 into the proceedings. D29 is therefore in the proceedings. [D29 was filed by the opponent]. 
• "The patent proprietor submits that there was insufficient time to reasonably address, i.e. to familiarize themselves and react to the issues arising from D29,  ... The patent proprietor concludes that the timing of the filing of D29 caused them an unfair disadvantage 
• The Board: "the admittance of a new evidence, even if its filing was not justified, does not in itself result in unequal treatment of the parties. Rather, it is the absence of a proper opportunity for the other party to respond to the new evidence and submissions based thereupon once it has been admitted that leads to unequal treatment of the parties, which is in essence the patent proprietor's opinion,"
• Follows a detailed review of the events leading up to the OD decision. 
• "Deciding against the patent proprietor on the basis of a new objection raised during the oral proceedings, in the light of an experimental report filed just two days earlier, without postponing or holding second oral proceedings could be regarded as unfair to the patent proprietor. "
• "neither the minutes of the oral proceedings nor the impugned decision refer to an explicit request by the patent proprietor not to admit document D29 into the proceedings."
• In some cases, the right to complain may indeed be waived (or forfeited) by failing to request that a document not be admitted. However, generally, the party filing the document should request that it is admitted, and the other party (non-movant) only has to object to the admissibility (I know the custom is now different). Furthermore, if it is clear that the OD will decide on the admissibility of a late submission anyway, any request of the non-movant party for such a decision will be superfluous. Hence, one cannot derive too much from this point. 
• At point 38 of the reasons for the decision, the opposition division found that the patent proprietor was in a position to interpret without undue burden the calculations made in document D29. This document was discussed and understood by all parties at the oral proceedings and, for this reason, was admitted into evidence.
• Understanding a calculation does not necessarily mean you are able to refute it. Refuting the reasoning may need more time. 
• "However, it is also noted that the patent proprietor took position on the objection and, most importantly, did not request for oral proceedings to be postponed, or for more time to respond to this separate objection of lack of novelty, even after the opposition division had announced their preliminary opinion that the subject-matter of claim 1 was not novel over Figure 4 of D10 (minutes, section 2, last paragraph). "
• As a comment, the point about "did not request for oral proceedings to be postponed" is perhaps in line with the current case law, but I doubt if it is correct, especially in cases where the opponent is the non-movant party and the party that challenges the status quo.
• "Furthermore, a decision by the opposition division on substantive issues, based on evidence which has been admitted into the proceedings, can still be challenged in substance, on the ground that this evidence lacks relevance or probative value."
• In fact, the non-movant party complaining about a violation of its right to be heard, should probably also submit a substantive rebuttal in appeal. If the non-movant party has no substantive arguments to challenge the OD's finding, the procedural point is moot (or harmless).
• The proprietor filed D31 with the SoG. "Its filing constitutes therefore a genuine attempt to address in a timely manner the objection of lack of novelty over the particles shown in Figure 4 of D10 in the light of D29 which was raised for the first time during the oral proceedings before the opposition division. In these circumstances the Board exercises its discretion pursuant to Article 12(4) RPBA by admitting D31 into the proceedings."
• Note, the conclusion that D31 constitutes a genuine attempt to rebut D29 is an examination for prima facie relevance. 
• "the assessment of the patent proprietor's submissions based on experimental report D31 when examining the opponent's lack of novelty objection over the particles shown in Figure 4 of D10 in the light of D29 amounts to a fresh case on novelty. This in itself constitutes a special reason within the meaning of Article 11 RPBA justifying to remit the case to the opposition division."

Sufficiency / procedural violation

• "The opponent raised two separate objections of lack of sufficiency of disclosure of the subject-matter of claim 1 [in the procedure before the OD] , namely one relating to the measurement of the surface smoothness and one relating to the absence of use of a plasticizer. Both objections are based on a ground of opposition not addressed during the period to file an opposition. The opposition division only dealt with the first objection in the contested decision. [The OD] Not dealing with the second objection while maintaining the patent in amended form amounts to a substantial procedural violation, as explained in the following.

New argument in reply to late development before OD

• The reverse engineering argument [was filed by the proprietor with its reply to the opponent's appeal and] is an amendment to the patent proprietor's case within the meaning of Article 12(4) RPBA. This argument constitutes a relevant and direct response to the surface smoothness measurement insufficiency objection raised [by the opponent]  two months before the oral proceedings [before the OD] and admitted into the proceedings by the opposition division. Its filing became necessary, only once the opponent had filed an appeal and contested again that the measurement of the surface smoothness gave rise to an insufficiency objection. For this reason, the Board exercises its discretion pursuant to Article 12(4) RPBA by admitting the reverse engineering argument into the proceedings.

Objection not discussed in OD's decision

• "the opponent submits that the plasticizer insufficiency objection was not taken into account by the opposition division, which would constitute a violation of their right to be heard  "
• "the patent proprietor's opinion that the plasticizer insufficiency objection was not actively maintained throughout the first instance proceedings can apparently be based solely on the fact that the minutes of the oral proceedings do not indicate that this objection was discussed and therefore not repeated by the opponent. However, the minutes do not indicate either that this objection was withdrawn. In the Board's view, not addressing an objection submitted in writing during the oral proceedings does not necessarily imply that the objection is withdrawn. This is because written submissions form the basis of the EPO proceedings and are complemented where necessary by an opportunity for a party to present and argue its case orally (G 4/95, Reasons 4 (c) and G 1/21, Reasons 40). Parties have the opportunity to repeat or expand upon some of the written submissions they consider necessary for defending their case. However, they are under no obligation to address all written submissions orally. "
• "nothing from the debates during the oral proceedings implies that the opponent had not maintained the plasticizer insufficiency objection.
• 10.5 On that basis, the failure of the opposition division to give due consideration to the plasticizer insufficiency objection which from the opponent's submissions is an essential aspect of the alleged insufficiency disclosure of the subject-matter of claim 1, constitutes a substantial violation of their right to be heard in contravention of Article 113(1) EPC. This procedural violation is a fundamental procedural deficiency in the first-instance proceedings "

• See also R 6/24. 

EPO 

The link to the decision is provided after the jump.

T 0873/24 - Pending G 1/26 - The patent family

Key points

• This new referral regarding claim interpretation has already received considerable attention.
• Let's discuss another aspect of it. 
• There are 107 auxiliary requests. I don't know if that is a normal number of ARs nowadays, but the Board doesn't seem to consider it unusual.
• "The patent proprietor/appellant 1 requests that the decision under appeal be set aside and that the opposition be rejected, or in the alternative, that the patent be maintained in amended form based on auxiliary requests 1-85, filed with the grounds of appeal, or based on one of auxiliary requests 86-103, filed by letter dated 24 July 2025, or based on one of auxiliary requests 104-107, filed by letter dated 16 January 2026."
• The patent is opposed by POSCO.
• It has a divisional application and two parents.
• The grandparent was granted in 2017 and was opposed by 5 opponents (not including POSCO). The patent was maintained in amended form.
• The parent was opposed by three opponents (not including POSCO) and maintained in amended form.
• The filing date is 30.10.2006. 
• The divisional application is still pending. I'm not sure whether the EPO will be able to complete the divisional grant procedure or the current opposition procedure before the end of the patent term. 

EPO 

The link to the decision is provided after the jump.

T 0840/24 - Opponent's prior use and confidentiality of sale

Key points

• The opponent is Siemens. D1 is "Company publication "Desiro Class 380", Siemens AG". The opponent asserts public prior use based on D1, i.e. public prior use by the opponent, namely a sale of the vehicle by the opponent to a customer. 
• The Board, in translation: "The Opposition Division concluded that the sale had made the prior use of "ScotRail Desiro Class 380" freely available to the public and that there were no specific circumstances that would justify the existence of a confidentiality obligation"
• "Documents D1 and D2 show that before the priority date of the patent, 4 July 2017, Desiro Class 380 rail vehicles were sold and delivered by the respondent [= the opponent] to the Scottish railway company ScotRail in July 2010."
• "In connection with the possible existence of a confidentiality agreement, the Opposition Division has already referred to decision T 2037/18 (point 4 of the headnote), according to which there is no fundamental presumption of confidentiality between manufacturers of railway vehicles and railway operating companies with regard to delivered and accepted vehicles.
• "Furthermore, each party must present and prove the facts favorable to its case. Therefore, in accordance with the principle "negativa non sunt probanda" recognized in the case law of the Boards of Appeal, any binding effect of a confidentiality agreement on the part of the recipient must be presented and proven by the patent proprietor (see case law, IV.C.2.2.8i))."
• As a comment, the principle "negativa non sunt probanda" is generally correct (but not a hard rule, I would add). In this case, all the evidence was in the sphere of the opponent, and the opponent must prove the alleged public prior use up to the hilt (I know that rule was 'abolished' in the GL 2026, but still).
• The Board's reasoning is obiter because the Board holds that the prior use lacks a feature of the claim. Hence, the claim is novel over it. There were no other objections, and the Board sets aside the impugned decision and maintains the patent as granted.
• 
  

EPO 

The link to the decision is provided after the jump.

T 0779/24 - Double patenting in opposition

Key points

• How to deal with double patenting (G 4/19) in opposition? In the same manner as clarity (G 3/14), according to this decision.
• "2. ... opponent 8 maintained their objection of double patenting under Article 125 EPC raised during the opposition proceedings, because claim 1 of the main request would be identical in scope with claim 1 of the patent EP 3 744 326, filed as a divisional application of the present patent and granted on 6 December 2023. 
• In the impugned decision, the opposition division considered that double patenting was not a ground of opposition and that the amendments to the present main request were not causative of the potential objection of double patenting. Consequently, in line with G 3/14, the issue of double patenting was not to be examined in the opposition proceedings.
• 2.3 [ ] opponent 8 did not provide any arguments why the opposition division's reasoning regarding the non-admittance of the objection was not correct. The objection of double-patenting does therefore not form part of the appeal proceedings."

EPO 

The link to the decision is provided after the jump.

T 1077/24 - Cannot take advantage of its own late filing

Key points

• The OD decided to maintain the patent in amended form based on the set of claims that AR-4 in the appeal. 
• The proprietor had filed AR-4 eight days before the oral proceedings before the OD.  The opponent appeals and files documents A21 and A22 with the SoG in response to AR-4. A21 and A22 demonstrate that the added feature of AR-4 was obvious.
• The proprietor files AR-4a with its appeal reply. 
• The Board finds AR-4 to be obvious. 
• The Board does not admit AR-4a. "The patent proprietor's further argument that auxiliary request 4a was a reaction to A21 and A22 only being filed on appeal is irrelevant. However, even if this argument is taken into consideration, it cannot succeed. As set out above, opponent 2 filed A21 and A22 as a reaction to auxiliary request 4 only being filed shortly before the oral proceedings before the opposition division. The patent proprietor cannot take advantage of its own late filing of an auxiliary request in order to have the opportunity to file yet another request later on appeal."
• The above reasoning is given obiter. The supporting reason is: "Admitting auxiliary request 4a would have created a fresh case on inventive step, to be discussed for the first time on appeal. This would have increased the complexity of the case and been detrimental to procedural economy (Article 12(4) RPBA). Therefore, the board decided not to admit auxiliary request 4a pursuant to Article 12(4) and (6) RPBA."

EPO 

The link to the decision is provided after the jump.

T 0443/24 - Different term, same thing, not novel

Key points

• " whether D9 anticipates that the aortic section has "diamond-shaped cells" depends on how this term is interpreted. As set out in the Order of G 1/24, the description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention. 
• "The contested patent neither defines a diamond shape nor explicitly states what is meant by "diamond-shaped cells". However, it refers to cells that are essentially identical in shape to those in the top row of cells in Figure 1 of D9 as "diamond-shaped cells" (see, for example, the cells in Figure 1 of the contested patent and the corresponding description in column 3, lines 41 to 43; compare with the shape of the cells in the top row in Figure 1 of D9). Accordingly, the term "diamond-shaped cells" in feature 1.4 of the contested patent is construed as encompassing cells such as the cells of the top row of cells in Figure 1 of D9. 
• "This conclusion is not altered by the fact that D9 uses the term "onion-shaped cell structure" (page 20, line 12) rather than "diamond-shaped cells" to describe the shape, as anticipation does not require the same literal term to be explicitly disclosed."
• 
  

EPO 

The link to the decision is provided after the jump.

R 0005/24 - Successful petition for review

Key points

• This is the 14th successful petition for review. It was published on 01.04.2026. 
• In the opposition appeal, the proprietor had filed amended claims (namely, AR-2). Full substantiation of the amendments, i.e. complete arguments for the admissibility of the amendment, followed only after the Board's preliminary opinion, with a letter of 19 May 2023.
• The TBA decided to hold the amended claims inadmissible (and revoked the patent). However, the Board's reasoning regarding the inadmissibility of AR-2 does not consider at all the arguments advanced by the proprietor in its letter of 19 May 2023.
• The EBA finds this a violation of the proprietor's right to be heard. The Board notes that if the TBA considered the proprietor's letter of 19 May 2923 inadmissible, it should have included a reasoned decision to that effect in its written decision. 
• The EBA is brief on admissibility, but the point is interesting. The proprietor had raised an objection under Rule 106 after the Board had announced that the amended claims at issue (AR-2) were not admitted. However, at that point, the proprietor did not know that the Board was disregarding or overlooking the proprietor's argument in the letter of 19 May 2023. The proprietor objected to the decision to hold AR-2 inadmissible as such. Would the petition have been admissible without the objection under Rule 106? 
• That question was answered in R 6/24 (after the time of writing this post).
• 
  
• 
  
• The successful petitions are now: R 5/24, 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.

T 0561/23 - More on Rule 80

Key points

• Claim 1 of the auxiliary request at issue is amended by two alternative features that serve to make the claim novel. The features are taken from the dependent claims as granted.
• At issue is whether this complies with Rule 80.
• The Board, in machine translation: "According to the case law of the Boards of Appeal, it is generally permissible to replace a granted independent claim, which was deemed not novel or inventive in opposition proceedings, with several independent claims, provided that each of these is directed to subject-matter already defined in the granted dependent claims (see, e.g., T 1416/04, point 5.1; T 263/05, points 4.7 and 4.8; T 993/07, point 1.5; T 1679/09, points 4.2 and 4.3; T 1025/14, point 3.2; T 1191/22, point 2.4). The reason for this is that the patent proprietor must be able to maintain potentially allowable subject-matter already included in the granted set of claims."
• The phrase "provided that each of these is directed to subject-matter already defined in the granted dependent claims" seems a sufficient condition, but not necessarily a necessary requirement.
• "Granted independent claim 1 was deemed not to be novel within the meaning of Article 54(3) EPC during the opposition proceedings. It is therefore permissible to replace it with several independent claims relating to different embodiments of the blind system already defined in the granted dependent claims. "
• " The respondent [opponent] argued that alternatives (a) and (b) had to share a common general concept to comply with the requirements of Rule 80 EPC. "
• The Board does not agree: "Rule 80 EPC merely requires that an amendment be prompted by a ground for opposition, i.e., that it aims to overcome such an objection and thus prevent the patent from being revoked. While the lack of novelty in claim 1 may give rise to an objection of lack of unity, lack of unity does not constitute a ground for opposition. Furthermore, in opposition proceedings, the patent proprietor does not have the option of pursuing different inventions by means of divisional applications (see also T 1416/04, supra, point 5.1; T 263/05, supra, point 4.8). Under these circumstances, there is no reason to require the patent proprietor to choose between several dependent claims parallel to claim 1."
• The Board does not cite G 1/91, which is remarkable.
• The novelty-destroying document for the higher-ranking request was a prior right under Art. 54(3). However, "Documents cited under Art. 54(3) should be disregarded in the evaluation of unity of invention since they cannot anticipate the inventive concept of the application under examination." (Guidelines F-V, 3.1.1)

EPO 

The link to the decision is provided after the jump.

T 1899/23 - When the Board ceases to exist

Key points

• "On 1 September 2025, a new business distribution scheme (BDS) was adopted, according to which the IPC class of the patent underlying the decision under appeal (C11D) was to be allocated to Board 3.3.02 as of 1 December 2025 and the allocation of the technical and legal members of Board 3.3.06 terminated after 30 November 2025. "
• "On 4 November 2025, the case was transferred to Board 3.3.02 with effect from 1 December 2025 and the parties were informed accordingly. The composition of the Board in the present case remained unchanged." However, the three members of the Panel were not assigned to Board 3.3.02, but to different Boards.
• "In a submission dated 13 January 2026, the appellant raised an objection under Rule 106 EPC and requested "to cancel the oral proceedings and to hold oral proceedings with the Board 3.3.02 in a composition of the Board 3.3.02 in a composition meeting the requirements of the business distribution scheme dated September 1, 2025". It argued that the composition of the panel with members of previous Board 3.3.06 contravened the BDS of 1 September 2025 [27 June 2025] as none of the members belonged to Board 3.3.02, i.e. the Board the case was allocated to with effect from 1 December 2025. "
• "the appellant's final request ... implies that the panel would have to determine that members of Board 3.3.02 would have to continue the assessment of this case. The panel has no competence to decide accordingly (see Article 1(3) RPBA and Article 3, 4 BDS). [...] since the Chairman of Board 3.3.02 also did not meet the appellant's request to change the composition of the panel in this case but rather confirmed that its composition remained unchanged, there is no basis for continuing the case with members of Board 3.3.02 and its Chair or Vice Chair." (referring to G 1/21).
• " with respect to the objection under Rule 106 EPC, the Board considers, in any event, that the composition of the panel for this case was in accordance with the applicable provisions of the relevant business distribution schemes for the Technical Boards of Appeal."
• "The defects set out in Article 112a(2)(a),(b) and (d) EPC at least do not encompass a violation of the right to have the case decided by the lawfully designated judges in accordance with the business distribution scheme". However, a violation of the right to be heard is not excluded.
• " for the purposes of the present case, there is no need to decide whether a fundamental defect in the composition of the responsible panel could indeed be regarded as a violation of the right to be heard under particular circumstances (e.g. if the defect were so severe that the composition was entirely arbitrary) and what consequences this might have for the continuation of the proceedings. This is because the parties' interest to be heard by the lawfully designated judges (and, accordingly, the right to have fair proceedings) is not affected in the present case. Under these circumstances, the Board finds it appropriate to comment on the composition of the panel in this particular case."
• "The wording of Article 8 BDS of 27 June 2025 is as follows: "Cases in which before 1 January 2025 [sic] a communication has been sent or oral proceedings have been appointed shall not be affected by this business distribution scheme, nor shall those cases individually allocated in transitional provisions of previous business distribution schemes. This provision applies mutatis mutandis if the business distribution scheme is amended during the working year." (link)
• "Since both the Board's communication under Rule 15(1) RPBA and the summons to oral proceedings had already been issued before the new business distribution scheme of the Technical Boards of Appeal of 27 June 2025 entered into force, the composition of the panel as set out in the communication of 21 May 2025 had to be maintained pursuant to Article 8 BDS."
• How the Board goes from 1 January 2025 to 27 June 2025 as the relevant date, is not explained, though most likely the cut-off date was simply not updated in the June 2025 version of the BDS. 
• "The BDS does not define the measures to be taken if a Board loses its Chair and all its members and, for practical purposes, ceases to exist."
• "The Board considers that Article 8 BDS is to be applied analogously if the case is transferred to another Board because the previous Board effectively ceases to exist."
• "Hence, although the case was transferred to Board 3.3.02, the present panel, consisting of members not allocated to this Board, did not have to be replaced in the given constellation. Rather, the composition of the panel as set out previously could remain unchanged pursuant to an analogous application of Article 8 BDS, which was also confirmed by the Chair of Board 3.3.02 with communication of 15 January 2026."
• The Board finds that claim 1 involves added subject-matter and dismisses the appeal. 

EPO 

The link to the decision is provided after the jump.

T 0655/24 - Post-published evidence for inventive step

Key points

• In the opposition case at hand, it is unclear if the distinguishing feature provides "a" technical effect or an improvement over the closest prior art. The case is about antibodies, and the distinguishing feature is a mutation (D265A) at a certain position (265). 
• The proprietor  referred to additional data provided in post-published documents D25 and D26 as evidence that the effect of further reduced effector function was achieved by essentially all claimed subject-matter.
• "The board, however, notes that such evidence (data) can only be taken into account when the technical effect that it is purported to show is already credible from the disclosure in the application as filed itself."
• "Applying the principles of G 2/21, the board does not consider that an improvement of an effect, here further reduced effector functions mediated by the Fc region, is encompassed by the technical teaching and embodied by the same originally disclosed invention merely because the effect itself (but not the improvement), was shown to be achieved in the application as filed "
•  The board is aware that a different approach to this issue was taken in decisions T 1989/19, T 2716/19 and T 840/22 and makes the following observations (...)
• "the approach taken in decisions T 1989/19, T 2716/19 and T 840/22 would allow an applicant to solely rely on post-published evidence to establish inventive step by filing an application disclosing an effect that was already known from the prior art or formed part of common general knowledge and subsequently invoking an improvement of said effect as "implicitly derivable" from the application as filed. This scenario goes against the principle that patents should not be granted for subject-matter whose inventive contribution is identified only after their effective date. Such an outcome directly contradicts the "first to file" principle enshrined in the EPC and confirmed in decisions G 1/03 and G 2/10. It is also in evident tension with the framework established by decision G 2/21 "
• "The board therefore must turn to the disclosure in the application as filed to determine if the evidence for a further reduced effector function of the FEA variant compared to the FE variant reported in post-published documents D25 and D26 can be taken into account."
• "In conclusion, the board considers the improved effect of decreased CD69 release of the FEA variant compared to the FEFE variant to have been credibly disclosed in the application as filed. Thus, while it is not strictly necessary to consult the evidence in documents D25 and D26, it can be noted that their disclosure supports the improved effect shown in the application as filed. "
• The Board considers the claimed subject-matter to be non-obvious based on said technical effect.
• The Board indicates that it considers the claimed subject-matter also non-obvious as an alternative.
• Hence, the whole point about the interpretation of G 2/21 seems obiter.
• I think the Board's proposed approach is very strict, especially if the applicant was unaware of the prior art cited by the opponent. If you find your molecule has a good score for a certain property, is there really a necessity to carry out comparative testing before filing the patent application (and against which prior art?)

EPO 

The link to the decision is provided after the jump.

T 0293/25 - Oral submissions that are too complex

Key points

• "The respondent did not respond in writing to the preliminary opinion, but rather contested the conclusion mentioned above at the oral proceedings before the board. In particular, they provided detailed oral submissions as to why it was not possible to derive from a comparison of example 1 and comparative example 4 [of the patent] that features (C), (G) and (H) contributed to achieving [a technical effect]"
• "the experimental section of the patent spans 20 pages and covers not only a great number of examples and comparative examples, but also various intermediate products, with multiple parameters for each of them being presented in 8 different tables"
•  "The respondent's oral submissions lasted for about 45 minutes and mostly, if not entirely, consisted of multiple comparisons of the properties of various examples and comparative examples and pairs thereof, which had not been presented in writing before. This submission of entirely new information was so extensive and complex that it was not possible for either the board or the appellant to take detailed note of, and to understand it sufficiently to form an informed opinion thereon."" '
• "In a case where new, technically complex information is provided in oral submissions lasting 45 minutes, the challenge of taking accurate note of what is said in itself prevents the other party from adequately responding thereto. Therefore, taking the new submissions into consideratidon would have violated the appellant's right to fair proceedings. In addition, postponing the oral proceedings until a later date would have gone against the principle of procedural economy, in particular because the situation could have easily been avoided, had the respondent filed their submissions in writing in due time (cf. the principles of fair proceedings and procedural economy, which are cornerstones of the proceedings (including) before the boards, and which have to be properly balanced, according to Articles 12 et seq of the RPBA, e.g. T 2920/18, T 339/19, T 1857/19, T 1800/21)."
• "For these reasons, it was not possible to consider the new submission."
• We don't have a transcript of the hearing, but I wonder if the opponent was warned during their 45 minutes by the Board that their submissions were too complex.
• 
  

EPO 

The link to the decision is provided after the jump.

T 1471/24 - No two-part form, application refused

Key points

• Rule 43(1) provides that "where appropriate" claims shall contain a preamble and a "characterised in that"  part (two-part form).
• "The examining division found that D1 represented the closest prior art to the claimed invention and that the subject-matter of claim 1 was both novel and involved an inventive step over the cited art (see page 5 of the decision). It nonetheless found that the requirements of Rule 43(1) of the Implementing Regulations were not fulfilled since claim 1 was not drafted in the two-part form, despite this being appropriate  ...."
• "It is noted that the purpose of the two-part form of claim is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. It is established practice before examining divisions not to insist on the two-part form if it is sufficiently clear from the indication of prior art made in the description which features of the claim under examination are known therefrom (see also Guidelines for Examination, F-IV, 2.3.2). "
• "However, this proviso regarding the features known from the prior art, as found by the examining division in point 21.4 of its decision, has not been satisfied in the present application. D1 is indeed acknowledged on page 1 of the description (dated 15 December 2022) yet this acknowledgement fails to identify which specific features of the claim 1 under examination are known from D1. Fundamentally, therefore, in view of the two-part form not having been used in the independent claim, a resultant requirement for the content of the description to include an indication of which features of claim 1 were known from the prior art was not fulfilled."
• "The appellant further argued that the proposed two-part form was incorrect insofar as D1 discloses a set of various flat mirrors rather than, as proposed by the examining division for inclusion in the preamble of claim 1, merely a set of various mirrors. Herein lies a misunderstanding of the appellant. The preamble of a claim drafted in the two-part form should include those features of the claim known in combination from the prior art (Rule 43(1)(a) EPC). In the present case, a set of various mirrors is indeed known from D1, albeit in D1 the various mirrors of this set are flat. That the mirrors of D1 are flat is however irrelevant; D1 without doubt does disclose a set of various mirrors, such that this feature can be included in the preamble of a two-part form of claim."
• The applicant raised an argument based on Article 123(2), which is very interesting, although it was rejected by the Board. "The appellant's further contention in this regard that the generalisation of 'flat mirrors' of D1 to merely 'mirrors' in the preamble of claim 1 offended Article 123(2) EPC is also based on a misunderstanding of this provision of the EPC. Article 123(2) EPC prohibits a European patent application being amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. How the claimed subject-matter, or even the features included in the preamble of a claim, differs from a prior art document is irrelevant for the consideration of meeting the requirement of Article 123(2) EPC. Similarly, as it is the subject-matter of a claim as a whole which is considered when evaluating compliance with Article 123(2) EPC, novel information derivable alone from the preamble of a claim does not give rise to objections under this article; it is the subject-matter of the claim as a whole for which the prohibition of extension beyond the content of the application as filed applies."
• The applicants are two natural persons, not represented by a professional representative. The current applicants are the heirs of the original applicant/inventor, who has deceased. 
• The applicant did not request oral proceedings. The Board issued the decision without oral proceedings or advance communication. 
• There was no auxiliary request with the claim in two-part form, and the appeal was dismissed. The examining division's refusal decision has, hence, become final. This is remarkable, as there was novel and inventive subject-matter.  
• 
  
EPO

The link to the decision is provided after the jump.

T 0528/25 - DABUS (II)

Key points

• The applicant essentially wishes to designate an AI tool as the inventor in this examination appeal.
• The  Board: "the EPC requires that a legally capable person is named as the inventor"
• Just as a note, the Board does not say "natural person" or "human" but refers to "legally capable persons" (as in J 8/20). Let's suppose that this choice of words is intentional. Then, considering that in legal English, the term "person" is the genus of the species "natural persons" and "legal persons" (companies etc.), the phrase ""legally capable persons"" is not limited to human persons. Perhaps, one day, if a national law treats an AI agent as capable of some legal transactions (and/or if a national law recognises an AI agent as a proprietor of some rights, i.e. as a valid holder of a bitcoin wallet or bank account), it may turn out that J 8/20 left a small door open. 
• "It must be considered that patent protection for an invention that was essentially developed using artificial intelligence (AI) would be impossible under the EPC, if natural persons were excluded from being regarded as inventors of AI-generated inventions, since, as indicated above, the EPC requires that a legally capable person is named as the inventor. "
• "the provisions on patentability under Article 52 ff. EPC do not rule out patent protection for AI-generated inventions. An invention involves an inventive step under Article 56 EPC if it is not obvious to a person skilled in the art in view of the prior art, which may also be the case for inventions developed by using artificial intelligence (AI). If an invention is developed using an AI-machine, this also requires some human input or influence, so that it is in principle not excluded to identify one or more natural persons to whom a causal contribution to the invention is attributable, and who can therefore be regarded as inventors within the meaning of the EPC.
• The Board thus concludes that, in principle, the designation of an inventor under the EPC is also possible for inventions developed using artificial intelligence (AI)."
• The appeal is dismissed.
• A divisional application has been filed already. 

EPO 

The link to the decision is provided after the jump.

T 0299/24 - Correcting errors in amended claims

Key points

• Claim 1 of the former main request reads: "(a) "Headrest (10), in particular headrest for vehicle seats, (b) comprising a bone conduction two-way sound transmission system (1), which in turn comprises at least one bone conduction loudspeaker (5) and at least one bone conduction microphone (7), ..."
• "With its written reply to the board's [preliminary opinion], the applicant filed a corrected main request, replacing the phrase "in particular headrest for vehicle seats" in claim 1 with the wording "headrest for vehicle seats" []. It framed this submission as a correction of an error under Rule 139 EPC."
• The Board: "Under Rule 139, second sentence, EPC, if a request for correction concerns the claims, the "correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction". According to the established jurisprudence of the Boards of Appeal (see G 3/89, Reasons 5 and 6; G 11/91, Reasons 6), a two-step approach applies in this regard. It must first be established that it is obvious that an error is in fact present in the document filed with the EPO, the incorrect information having to be objectively recognisable by the skilled reader using their common general knowledge. Secondly, the correction of the error must be obvious."
• My analysis is that Rule 139, second sentence, is an implementation of Article 123(2) EPC and hence provides a rule for determining when a purported correction has sufficient basis in the application as filed (i.e., does not extend beyond the content of the application as filed). This follows directly from G 3/89, hn. 1, in my view ("Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC."
• In the present case, the amended claim had an undisputed, explicit basis in the application as filed. The issue was not whether the application as filed contained an error. Hence, I don't think the second sentence of Rule 139 applied.
• Instead, the case concerns a case amendment, in particular one under Article 13(2) RPBA. Depending on the facts of the case, if a "subsequently filed document" (i.e., a document filed after the filing date of the patent application) contains an error, the party concerned may correct that error later in the procedure. The evident nature of the error and the correction (or lack thereof) are among the factors the board must consider when deciding whether to admit the correction. At any rate, a correction of an amended claim 
• Credit to Mr Thomas for flagging the decision on his weblog.
•  The Board does not admit the amended set of claims (with reasoning that would also apply under Art. 13(2) RPBA, in my view): " Crucially, nowhere in the statement of grounds of appeal does the appellant base any argument on the headrest being exclusively limited to a "headrest for vehicle seats". The appellant neither stated that claim 1 was restricted to overcome a specific objection, nor did it rely on the specific vehicle-seat environment to establish an inventive step. Because the appellant's technical arguments apply perfectly and seamlessly to the broader claim wording ("in particular headrest for vehicle seats") that was actually filed, the skilled reader reviewing the statement of grounds of appeal alongside the claims would find a coherent, self-consistent appeal case. There is thus no logical disconnect that would alert the skilled reader to a mistake.
• "Since the request for correction under Rule 139 EPC has been refused, the "corrected" main request constitutes an "amendment" of the appellant's appeal case. However, leaving the question of admittance aside, the board considers the "corrected main request" not to comply with Article 56 EPC. In this regard, the board endorses the examining division's assessment of inventive step set out in Reasons 10 of the appealed decision, for the following reasons."
• This makes the whole discussion of Rule 139 moot (or obiter), it seems to me.

EPO 

The link to the decision is provided after the jump.

T 1462/24 - Allocation of files to Boards (DMF for MS)

Key points

• A case with fourteen opponents and an opponent, about a (blockbuster) medicine (DMF for MS).
• Opponent 2 filed a Notice of appeal three days after the oral proceedings before the OD. O2 wrote that: "The subject-matter of the claims has changed significantly since the International Patent Classification was provided. The patent now claims a specific dose'"   and requested that  " these appeal proceedings be allocated to board of appeal 3.3.04 or 3.3.07" (instead of Board 3.3.08).
• An opposition was also filed against the parent patent, and the appeal in that case was decided by a panel including Ms P as the rapporteur. The Board (3.3.01) in that case dismissed the proprietor's appeal against the revocation of the patent (based on a lack of basis under Art. 123(2)). 
• The Chair of Board 3.3.08 and the Chair of Board 3.3.04 decided to transfer the case to Board 3.3.04. The Chair of Board 3.3.04 is Ms P, who is also the chair of the panel deciding the present case.
• The current Board finds the (very similar) claim to lack basis in the application as filed, for essentially the same recited feature as in the parent case.
• According to the EPO register, there are 9 divisional applications in this patent family. I wish to refrain from commenting on this point here, as it is sensitive after Copaxone (and I care to note that the proprietor did not disapprove of the text of the patent, allowing us and the opponents to benefit from the reasoned decision).
• "Oral proceedings took place before the Board on 25 and 26 November 2025 in the presence of all parties save for opponent 10. In the course of these proceedings, the patent proprietor confirmed that its request for referral of questions to the Enlarged Board of Appeal was no longer conditional and requested that three questions be put to the Enlarged Board of Appeal under Article 112(1)(a) EPC. The Board rejected this request. Subsequently, the patent proprietor submitted two written statements of objections under Rule 106 EPC, one on 25 November 2025 and one on 26 November 2025 (see Annexes of the minutes of the oral proceedings before the Board). The Board rejected these objections. At the request of all opponents present at the oral proceedings, the Board ordered a different apportionment of costs. "
• The proprietor is unhappy about the transfer of the case to Board 3.3.04, and raised an objection under Rule 106 - after the Board had announced the unfavorable conclusion on Art. 123(2) during the hearing.
•  The Board: "the RPBA and the BDS [Business Distribution Scheme] do not provide for parties to appeal proceedings to participate in the procedure set out in Article 1(2) of the BDS and thus do not provide for a right to be heard on the proper allocation of a case file. The latter is an internal case management process involving solely the Chairs of the Boards and, in case no agreement is reached on the allocation, the Presidium. Since the allocation of an appeal case to a Board of Appeal is not a subject for disposition by the parties, any submission by a party to appeal proceedings regarding the reallocation of an appeal pursuant to Article 1(2) of the BDS, including any wish of a party that an appeal be heard by a specific Board (e.g. opponent 02's request submitted in its notice of appeal for the appeal to be allocated to Board 3.3.04 or 3.3.07) is irrelevant and must therefore be disregarded."
• "The patent proprietor also made untenable assertions as to why the technical content of the appeal could not be a valid reason for the transfer (see letter of 14 March 2025, item 21 ii) and item 13), which ultimately amounted to an accusation of unprofessionalism or arbitrariness by the Chairs involved. The patent proprietor's unfounded accusations, which cannot be excused by a representative's lack of legal knowledge, culminated in an accusation of bias"

• "the objection pursuant to Rule 106 EPC came far too late to comply with the spirit and purpose of this provision, which is that a party should draw the Board's attention expressly, and separately from its other submissions, to any fundamental procedural defect to enable it to investigate and, if necessary, rectify the alleged defect while the proceedings are still pending. The Board therefore had no option but to dismiss the objections pursuant to Rule 106 EPC raised in the patent proprietor's letter dated 26 November 2025 also on formal grounds"

•  The Board considers that, despite repeated [questions] the patent proprietor has not provided any legitimate reason for its objections under Rule 106 EPC and their filing after completion of the debate on the merits of the appeal T 1462/24"

• " Since a whole day of discussions had been necessitated by the filing of the patent proprietor's unsubstantiated and even unwarranted objections set out in its letter dated 25 November 2025, which were specified and amended by its letter dated 26 November 2025, the Board considered it equitable to order the patent proprietor to bear the costs for remuneration of one day for at most two professional representatives present at the oral proceedings of 26 November 2025 for each opponent"

• "the patent proprietor remained convinced of its own biased view of events and accused the Chair involved in the reallocation and the Board subsequently constituted of having acted unlawfully. This was unprofessional and even disrespectful. While the patent proprietor's conduct can hardly be seen as compliant with its duty to act in good faith, it does not matter whether this conduct is also to be qualified as an abuse of proceedings since the request for reapportionment of costs could be allowed on the basis of Article 16(1)(c) RPBA"

EPO 

The link to the decision is provided after the jump.

T 1179/23 - Not a realistic starting point

Key points

• " in the Board's view, the "simple mixture" mentioned on page 14 of D1 does not represent a realistic starting point. The starting point for assessing inventive step starting from D1 is therefore the multilayered compositions of examples C1 or C2. 
• The reasons are as follow.
• " Both appellants-opponents considered that the embodiment mentioned in the sentence on page 14 lines 7 to 8 of D1 relating to a simple mixture of isolated tartaric acid pellets and dabigatran represented the closest prior art embodiment."
•  The Board disagrees and is of the opinion that the skilled person reading the sentence on page 14 lines 7 to 8 of D1 understands it as speculative and as not referring to an actual concrete realisation of simple mixtures. The reasons are the following: ... the "simple mixture" ... is disclosed at one single occurrence in D1 in one single sentence, namely "Alternatively, the simple mixture of isolated pellets and dabigatran is filled into capsules or sachets" ... There is no further mention or description of this "simple mixture" in the entire document. 
• "the core of the invention [of D1] is indeed the "isolated pellets" but for the further preparation of multilayered compositions. Indeed claim 1, the "summary of the invention" (see page 6 of D1) and the examples of final compositions exclusively concern multilayered pellets containing tartaric acid and the active ingredient [ dabigatran etexilate mesylate (DEM) ] in different layers."
• "The starting point for assessing inventive step starting from D1 is therefore the multilayered compositions of examples C1 or C2."

EPO 

The link to the decision is provided after the jump.

T 0581/20, T 0134/23, T 0156/21, etc. - Spring cleaning? - Art. 15(9) RPBA

Key points

T 0581/20

• Decision taken 21.05.2024, issued in writing on 29.04.2026. 
• Claim 1:  "A method in a data processing system (102, 302) for temperature weighting in energy-usage measurements ...".
• No Communication under Art. 15(9) RPBA visible in the online file.
• The case took more than 6 years from the Statement of grounds. I wonder whether, once the 24-month target is passed, the extent of any further delay still matters (to the TBA itself or the BoA management). The same question can be raised for the 3-month period of Art. 15(9) RPBA. 
• I also wonder if the BoA management follows up on the (seemingly) lack of Art. 15(9) communications (see also the cases discussed below). 

• 
  
• T 0156/21
• Decision taken on  14.05.2024; online on 07.05.2026.
• No communication under Art. 15(9) RPBA is visible in the online file.
• The Board remits the case to the examining division for further examination (!)
• The invention relates to a combination of continuous integration (CI) of software development and change management computer systems (CMCS)."
• The Board disagrees with the examining division's application of the Comvik approach, yet does not expressly indicate which features it considers to be technical.
• "In this case, it appears that the invention should be analysed more specifically as either a further development of the revision control system of D1, by the same applicant, or a modification to the known continuous integration technique. Starting from either would then entail a precise analysis of the differences and the effect of the differences in the context leading to a statement of the problem solved."

T 0850/21

• Decision of 26.11.2024, issued on 22.04.2026.
• In the field of IT.
• No communication under Art. 15(9).
• https://www.epo.org/en/boards-of-appeal/decisions/t210850eu1

• T 0134/23
• Decision of 14.05.2025, online on 12.05. 2026.
• There was a Communication of the Board informing the parties about the delay, issued on 21.04.2026, almost a year after. No earlier communication under Art. 15(9) is visible in the online file.
• The decision seems a rather run-of-the-mill biotech case.
• https://www.epo.org/de/boards-of-appeal/decisions/t230134eu1

T 741/23

• Decision taken 14.05.2025, online on 29.04.2026.
• A pharma case, 8 opponents, Board 3.3.04.
• https://www.epo.org/en/boards-of-appeal/decisions/t230741eu1 
• We will see if a petition for review will be filed.
• Two timely communications under Art. 15(9) were issued.

T 1288/23

• A case in the field of logistics. Decision on  24.10.2025, online on 29.04.2026.
• No communication under Art. 15(9) visible.
• There were two other decisions regarding patent applications by the same applicant. 
• https://www.epo.org/en/boards-of-appeal/decisions/t231288eu1 

There were a couple of other decisions published in the last few weeks, with the oral decision already given in October and November 2025. 

Perhaps it was spring-cleaning time for some cupboards in Haar? Let's hope all the cupboards are now clear.

T 0953/23 - The proprietor's own prior use

Key points

• The inventor is "PREISSMAN, Howard".  The OD rejected the opposition. The opponent appeals. The proprietor is Keller Medical, Inc.
• "D1 is an article published in 2012, i.e. after the filing date of 29 April 2009 of the patent [filed without priority]. The article concerns the development of the "Keller Funnel". 
• "In the section of D1 entitled "Serendipity", second paragraph, it is explained that Mr Preissman perfected the funnel's design  ..."
• "On the first page of the article (p. 283 at the bottom right), it is stated that "[w]e began introducing the prototype and its potential benefits to influential plastic surgeons at the beginning of 2009 ...". The appellant [opponent] alleged that it followed from this passage that the invention had been disclosed to the public, namely to influential plastic surgeons, before the filing date of the patent in suit."
• The Board: "In the absence of any indication of a different understanding, the Board interprets the expression "at the beginning of 2009" in accordance with general linguistic usage. According to which "at the beginning of 2009" refers to a point of time not later than within the first three months of 2009. Had a later period been intended, wording such as mid 2009 would have been used. Thus, the Board is convinced that, on the balance of probabilities, the disclosure to the influential plastic surgeons did take place before the filing date of the patent in suit."
• The Board, earlier in the decision: "it is common ground that the facts relating to the prior use were not under the control of the appellant and that both parties had equal access to the evidence. In accordance with the principle of free evaluation of evidence and in line with the established case law (see CLBA 11th edition, III.G.4.3.2 a)), the Board assessed the relevant facts on the basis of the balance of probabilities."
• I'm not sure if the part in italics is entirely accurate, but for the outcome of the case, this detail does not matter.
• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

R 0010/25 - Petition for review cases

Key points

• The petition for review was filed on  17.04.2025. 
• Oral proceedings were held on 09.01.2026, i.e. within a year.
• The written decision was issued on 07.05.2026 (about four months later). There is no official target for the written decision in petition for review cases, but still. 
• Incidentally, the backlog of petition for review cases has been significantly cleared, and so far, there has been a dramatic drop in new cases in 2026. Case R 2/26 was filed on 11.05.2026. For comparison, 24 cases were filed in 2025.
• My theory is that backlogs themselves made petitions for review attractive: one could easily buy two more years of 'pendency' for a patent (application) for a relatively modest fee, two years that allowed in-house counsel to tell upper management that there was still no final decision on the patent's fate. 
• As I see it, the idea of the EPC 2000 legislator (Diplomatic Conference) was that a petitioner would receive a summons by return mail, with the term of the summons typically shorter than two months (as expressly provided in Rule 109(1) EPC) in the first ex parte stage of the procedure (with a three-member panel). 
• Summons in case R 1/26 have already been issued on 26.03.2026, with the hearing scheduled for 05.11.2026.
• One case from 2023 and two cases from 2024 are still pending. In one case, the oral proceedings were held on 06.10.2025; in another, on 08.12.2025, but there is no written decision yet in either. As said, there is no official target for the written decision.
• The oldest case with no action yet by the EBA is R 7/25, which has been pending since 27.03.2025.

EPO 

The link to the decision is provided after the jump.

T 1319/24 - How many ARs?

Key points

• "The patent proprietor requested that the decision under appeal be set aside and that the patent be maintained as granted (main request) or on the basis of one of auxiliary requests 1 to 5, 6a, 6 to 17, 18a, 18 to 29, 30a, 30b, 30, 30c, 30d, 31 to 33, 34a, 34 to 46, 47a, 47, 48a, 48, 49a, 49, 50a, 50b, 50, 50c, 51a, 51, 52a, 52, 53a, 53, 54a, 54, 55a, 55b, 55, 55c, 56a, 56, 57a, 57, 58a, 58, 59a, 59, 60a, 60b, 60, 60c, 61a, 61, 62a, 62, 63a, 63, 64a, 64, 65a, 65b, 65, 65c, 66a, 66, 67a, 67, 68a, 68, 69a, 69, 70a, 70b, 70, 70c, 71a and 71.

  Auxiliary requests 1 to 29, 30a, 30b, 30, 30c, 31 to 49, 50a, 50b, 50, 50c, 51 to 54, 55a, 55b, 55, 55c, 56 to 59, 60a, 60b, 60, 60c, 61 to 64, 65a, 65b, 65, 65c, 66 to 69, 70a, 70b, 70, 70c and 71 were filed with the reply to the opponents' statements of grounds of appeal on 30 May 2025. Auxiliary requests 6a, 18a, 34a, 47a to 49a, 51a to 54a, 56a to 59a, 61a to 64a, 66a to 69a and 71a were filed with the letter dated 23 October 2025. Auxiliary request 30d was filed during the oral proceedings on 11 November 2025."

• The patent is revoked. Key prior art is a Youtube video D3: "YouTube video of 28 June 2012 providing an overview of the INNOKIN iTaste VV device"

• The Board: 'Whether D3 reflects the subjective impression of a test user, as the proprietor put it, is therefore of little relevance. What matters is the information that the test user, by showing and describing a tested device, conveys to the person skilled in the art in the video D3."

• I guess that even higher numbers of ARs have been seen in EPO appeal cases. Questions to readers: What is the highest number of ARs in a case that you have seen?

EPO 

The link to the decision is provided after the jump.

T 0676/24 - A company pays the SME appeal fee

Key points

• The proprietor, a company, appeals and pays the reduced appeal fee. 
•   "With its communication of 17 June 2024, the board invited the patent proprietor to submit evidence that it was an entity referred to under Rule 6(4) and (5) EPC as mentioned in the above EPO Form 1038. Reference was made to point 4 of the decision of 14 February 2023 in case T 1678/21."
• The proprietor must file the balance sheet and official statements about the parent company and other group companies. 
• The Board:  "There is no provision corresponding to former Rule 6(5) EPC concerning the definition of micro, small and medium-sized enterprises in the Implementing Regulations amended by the Decision. However, section II.7 of the "Notice from the European Patent Office dated 25 January 2024 concerning fee-related support measures for small entities" (Official Journal EPO, 2024, A8) corresponds to former Rule 6(5) EPC. "
• The Board applies the guidance from the Notice of the EPO (which is not binding on the Boards by the way).
• " Number of employees - The board is satisfied that the patent proprietor's submissions in this regard are supported by the evidence on file. They cover the relevant periods 2022 and 2023 (see point (b) below). For the board it has thus been established that the patent proprietor, even including both companies in which it is a shareholder (Q-Services and Coim Tech) employs far fewer than 250 employees."
• "The proprietor has also established that no more than 25% of the capital of the three companies is held directly or indirectly by another company that is not an SME. The reason being that Q-TECH S.r.l. is owned by three natural persons. " (the owners are mentioned by name in the decision).
•  Turning to the declaration: "Rule 7b(1) EPC requires no declaration of eligibility for a reduction of the appeal fee. Nor is there any such requirement in the item 11 of Article 2 RFees specifying the reduced fee. Nor has the board detected any other legal basis. Cf. the analogous conclusion for former Rule 6(6) EPC in T 1678/21, point C.3.1 and the conclusion in T 553/25 for Rules 7a and 7b EPC." 
• "It follows from the previous section (b) that the requirement of a declaration in the section entitled "Declaration of entitlement" of the Notice (points 3 to 5) has no legal basis. "
• The appeal is also allowed. The OD apparently did not decide on the latest amended set of claims.
• "The board concludes from the above that the decision under appeal is based, inter alia, on a request relating to the patent as granted rather than on the request filed by the patent proprietor during the oral proceedings before the opposition division." 
• The appealed decision is set aside, the case is remitted, and the appeal fee is refunded.

EPO 

The link to the decision is provided after the jump.

T 1844/23 - Sufficiency of second medical use claim

Key points

• Filing date 15.03.20052025, revocation in opposition appeal on 02.12.2025, written decision 24.02.2026. Filing as a divisional application in March 2010 (just before the amendments of Rule 36, indeed).
• The Board, in machine translation: "The patent in suit lapsed in all contracting states during the appeal proceedings because the patent term of 20 years from the filing date, as defined in Article 63(1) EPC, expired on March 14, 2025. According to Article 76(1) EPC, the filing date is the filing date of the parent application. Following a corresponding notification from the Board, both the patent proprietor and several opponents requested, within the prescribed time limit, that the proceedings be continued in accordance with Rule 84(1) EPC."
• "Claim 1 of the patent is formulated in the form of a second medical use under Article 54(5) EPC and reads as follows: "Pharmaceutical composition comprising an effective content of antioxidants, for use in a method for protecting the skin from damage caused by infrared radiation, wherein the damage is caused by activation of the formation of matrix metalloproteinase-1."
• The alleged surprising insight is that IR radiation in sunlight, not only UV light, causes the formation of matrix metalloproteinase-1 through reactive oxygen species, as I understand it.
• The claim illustrates that a second medical use claim does not identify the compound by name or in any chemical way. It just says "antioxidant".
• The Board: "In the area of ​​patent claims formulated as medical use claims under Article 54(5) EPC, case law has developed such that the mere possibility of replicating the use is insufficient [under Article 83]. "
  "In the present case, it is therefore not sufficient if, as the appellant [proprietor] argues, the person skilled in the art could have achieved the claimed prophylactic effect more or less automatically on the filing date by applying a sunscreen conforming to the claim. Rather, it is required that, for the claimed invention to be sufficiently disclosed, the therapeutic or prophylactic activity of the substances or mixtures defined in the claim must be demonstrated or substantiated to the person skilled in the art in some way in the patent application itself. How exactly this is to be done—whether by direct experimental proof, by technically verifiable reasoning, or in another suitable manner—may then depend on the individual case. The reference made by the Opposition Division to the statements in point 77 of G 2/21 and the decisions of the Boards summarized therein is in any case justified."
• This body of case law also supports the novelty of some second medical use claims, even when a clinical trial directed to exactly the claimed medical indication had been published as prior art (albeit without results). 
• "This required proof or substantiation naturally refers to the therapeutic/prophylactic use defined in the claim as a whole, and not merely to parts of a mechanism postulated for the effect. This seems so self-evident that it is not even explicitly emphasized in the cited case law. In any case, the therapeutic effect mentioned in point 77 of G 2/21 obviously refers to the disease defined in the claim." 
• In the case at hand, the following mechanism was known: UV light → reactive oxygen species → MMP-1 → skin damage. However, the alleged link between IR radiation (as recited in the claim) and reactive oxygen species was not known, and this step constituted step (i).
• " Rather, proof or substantiation of a therapeutic or prophylactic effect of antioxidants in the skin damage defined in the claim must also relate to the fact that the entire postulated mechanism, i.e., also step (i), is actually present in the disease to be treated. "
• "Therefore, contrary to the appellant's submissions, the patent application does not disclose a technically comprehensible concept for the claimed further medical use of the antioxidants with regard to the claimed medical use. "
• "the appellant [proprietor] referred to various technical literature, scientific publications, test data, and advertising brochures concerning some of the products distributed by the opponents, in which the teaching described and claimed in the patent had subsequently been confirmed. 
• The Board: " The requirement of sufficient disclosure must, however, be met on the filing date. A lack of disclosure on the filing date cannot be remedied by subsequent information; see, for example, G 02/03, point 2.5.3 of the grounds for the decision. It was undisputed that, in the present case, subsequently submitted data cannot be used to remedy a deficiency in the disclosure of the patent in suit or the corresponding patent application that existed on the filing date. "

EPO 

The link to the decision is provided after the jump.

BoA Report 2025

Key points

• A bit hidden on the EPO website, the Boards' annual report for 2025 was published.
• "The number of pending cases older than 24 months decreased from 729 at the end of December 2024 to 234 at the end of December 2025." In 2020, there were 4208 pending cases older than 24 months. The share of backlog cases (older than 24 months) decreased from ~ 50 % in 2021 to 10.5% in December 2025.
• "The technical boards of appeal received 1,477 cases in 2025 (20 fewer than in 2024) and settled 2,646 cases". The number of incoming cases was stable.
• The improvement in timeliness and the backlog clearance is absolutely impressive. 
• "In the context of his reappointment, the PBoA outlined the following priorities for what will be his third term: addressing the challenges arising from the incoming workload level, ensuring the smooth relocation of the BoA to the centre of Munich, modernising the BoA's case management system and fostering the harmonisation of procedural and patent law."
• "The PBoA has mandated a task force to propose timeliness objectives applicable as of 2027. The task force is composed of members and chairpersons of the BoA, as well as representatives from Administrative Services"
• I hope that user organisations will be involved in a later stage. 
• For example, it may be good to set a target for clearing cases older than 24 months, e.g., that all cases older than 30 or 36 months are individually monitored at the BoA management level for progress. 
• The report contains no information about the pendency's starting point. It may be the receipt of the respondent's reply in inter partes opposition cases, but I don't know for sure. 
• The report contains only a brief statement about the EBA's handling of petition for review cases: more cases were cleared than were received. That was indeed quite an achievement last year. 
• On a separate note, 4.0% of cases are in French, and about 20-25% are in German.

EPO 

The link to the document is provided after the jump.

R 0013/25 - Decision TBA to hold AR inadmissible

Key points

• The EBA considers a petition for review inadmissible because no timely objection was raised under Rule 106 EPC.
• The EBA, in the German original:  "Gemäß dem Protokoll der mündlichen Verhandlung wurde die Entscheidung der Beschwerdekammer, die Hilfsanträge 9-11 nicht in das Verfahren zuzulassen, während der mündlichen Verhandlung verkündet, bevor die Ausführbarkeit der Erfindung gemäß Anspruch 1 des Hilfsantrags 5 diskutiert wurde (Seite 3 des Protokolls). Bereits zu diesem Zeitpunkt, spätestens aber vor Ende der mündlichen Verhandlung, hätte die Antragstellerin die angebliche Verletzung des rechtlichen Gehörs rügen müssen."
• As a comment, suppose the TBA announces a "decision" (as opposed to a conclusion) to hold a submission admissible in the course of oral proceedings. Can the TBA subsequently change its decision if a party thereafter -  but still during the oral proceedings -  raises an objection under Rule 106? 
• I admit that the text of Rule 106 does not clearly distinguish between these situations. It requires that "an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal". That is, of course, still possible, even if the orally announced decision to hold the submission inadmissible is already res judicata.
• Of course, a TBA may also announce a "conclusion" that a submission is not admitted during oral proceedings (the difference being that after a conclusion, the debate may still be reopened in certain circumstances).

EPO 

The link to the decision is provided after the jump.

T 0257/24 - Amended description, support under Art. 84

Key points

• A case with description amendments, Art. 123(2) and the support requirement of Art. 84. 
• This is an appeal against a decision to refuse a patent application.
• "The main request was filed with a letter dated 11 August 2021. It includes an added figure 4 which is based figure 3 as originally filed, but in which the parallel inductor/capacitor (LC) resonant circuit is modified to a series LC resonant circuit. The main request further includes amended pages 12 to 14 of the description in which, additionally, new figure 4 is described in a manner identical to originally filed figure 3, albeit replacing parallel LC resonant circuit with series LC resonant circuit."
• "The Board is not persuaded by the appellant's argument that page 13, lines 6 to 11 of the application as filed directly and unambiguously discloses, as an alternative to the embodiment of figure 3, a complete embodiment in which the resonant circuit comprises a capacitor and an inductor connected in series."
• "The Board also does not agree with the appellant that the original application contains an evident error in figure 3 and page 10 whose correction necessarily yields a resonant circuit comprising a capacitor and an inductor connected in series. "
• "It follows that the new figure 4 and description passages of the main request and of auxiliary requests 3, 6, 9, 13 and 14, as well as the claims of auxiliary request 12, insofar as they introduce a concrete series-LC embodiment, add subject-matter extending beyond the content of the application as filed.  
• "Auxiliary request 15 corresponds to the application documents as published. The objections under Article 123(2) EPC directed to added figure 4 and the amended description are therefore irrelevant for that request. However, the objections under Article 84 EPC [see below] remain valid. The published claims still define the grounding merely as comprising a "resonant circuit ... resonating at the first undesired frequency", without specifying the technical features necessary to delimit the claimed solution in a manner supported by the description. Since the description as published discloses only the specific parallel-LC embodiment, auxiliary request 15 likewise lacks support in the description and omits essential features. "
• Regarding Art. 84: "The Board agrees with the examining division that, in the context of the claimed invention, the broad term "resonant circuit" is not supported by the description and that essential technical features are missing from the independent claims, contrary to Article 84 EPC. The application as filed describes only one detailed embodiment of the resonant circuit, namely a circuit with a capacitor and an inductor arranged in parallel. No further concrete example of a resonant circuit at the claimed grounding location is disclosed. The claims, however, are not restricted accordingly and cover an unjustifiably broad range of possible resonant circuits. It is therefore not clear from the claim wording which specific circuit realisation is meant to solve the identified technical problem."
• "Nor can an unduly broad claim be rendered compliant with Article 84 EPC merely if the skilled person disregarded certain embodiments as unsuitable. The requirement of support by the description is not met where the claims extend far beyond what the description teaches as a concrete realisation of the invention."

EPO 

The link to the decision is provided after the jump.