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.

T 1239/03 - and G 1/25

Key points

• In the run-up to the hearing on pending referral G 1/25 (hearing this Friday, 8 May, live stream link can be found here), the EBA issued a preliminary opinion on 11.03.2026 (indicating its intention to confirm the current practice of requiring description amendments) and invited the parties to comment by 17.04.2026. Several TPO's were filed by that date. One (anonymous) TPO drew attention to decision T 1293/03 (which was published on 02.01.2007).
• In that case, the proprietor deleted two examples from the patent during the oral proceedings before the |OD, seemingly by way of voluntary amendment. For the examination of whether this amendment complied with Art. 123(2), the Board considered it to be relevant that there was an ambiguity in the claims as granted. The Board reasoned that the skilled person would have to consult the description to establish the correct interpretation of the claim (i.e., in effect the same as under the current case law based on G 1/24). The Board also held that the two deleted examples were relevant in that context and that the skilled person would likely adopt a particular interpretation of the claim based on the information contained in those examples (which was, perhaps, precisely the reason why the proprietor wished to delete those examples). Therefore, the amendment deleting those examples was held to contravene Art. 123(2) EPC.
• Turning to the pending referral G 1/25, the EBA's preliminary opinion is to confirm the current practice that when the claims are limited, the description must be amended to conform. Suppose the EBA maintains this view in their final decision, it remains to be seen if this practice follows directly from the Articles of the EPC, or is of a more administrative nature such that the Administrative Council is competent to regulate the matter in the Implementing Regulations, and if the EBA in their decision gives a view on this point or leaves it open (disclosure: I submitted an amicus brief [link fixed] in which I discussed that Rule 48(1)(c) EPC is the pertinent provision).
• Perhaps the decision in case G 1/25 will not (and should not) be the last word on the balancing of the factors of quality (in terms of consistency), efficiency, and risks (under Article 123(2)/(3) EPC) that description amendments involve. 
• In the end, any rule under the EPC is legitimised not by being cast in stone but by being open to legislative debate and democratic political decision-making by the competent body - either the AC or a Diplomatic Conference.

  

Summary of the case

• The proprietor filed an auxiliary request wherein Examples 2 and 3 were deleted from the description. The OD decides to maintain the patent in amended form based on that auxiliary request. The opponent appeals.
• "[The opponent] argued that the deletions from the specification of the patent in suit carried out by the Patent Proprietor in the opposition proceedings, in particular the deletion of Examples 2 and 3 of the patent in suit, would have changed the meaning of Claim 1 which amounted to an extension of the patent in suit beyond the content of the application as filed and would, therefore, contravene Article 123(2) EPC, "
• "In view of the above arguments, statements and findings, the Board takes the view that (i), in order to understand the disclosure and teaching of the patent in suit, it has been necessary for the skilled reader to interpret the percentage range of the ethylene content in the elastomeric copolymer as defined in Claim 1 on the basis of the description, the general part of which was not, however, helpful in this respect, and, therefore more particularly, on the basis of the examples presented in the application as originally filed as describing preferred embodiments (page 12, line 16). He would have derived, namely from the disclosure in those Examples 1 and 3, that the patent application as filed lent a certain preponderance to interpreting the percentage value given for the ethylene content of component (b) as mol percent rather than weight percent, in particular since Example 3 did not comply with the interpretation of the percentage as being related to the weight (section VIII (4), above).
• "In addition to its explicit statement to this end (sections II (2) and VIII (3), above), the Respondent/Patent Proprietor has tried, by deleting Example 3 in particular, to give preponderance to an interpretation of the percentage value as weight percent. Although neither of the two interpretations can be made with certainty - be it before or after the amendment - there is a shift in the way the claim might be interpreted. Prior to the amendment, there was a preponderance for the interpretation "mol percent" (cf. sections VIII and 3.2.3, above) which due to the deletion of Example 3 has shifted towards "weight percent"."
• "In the Board's view, Article 123(2) EPC must be interpreted as referring to the patent (or application) as a whole rather than to the claims only. This finding proceeds directly from the clear wording of the Article. Hence, it is not crucial in which part of the patent (or application) an amendment has been carried out, but only whether the overall change in the content of the patent (or application) results in the skilled person being presented with information which is not clearly and unambiguously presented in the originally filed application, even when account is taken of matter which is implicit to a person skilled in the art."
• "It is clear, however, that the Patent Proprietor by deleting Examples 2 and 3 intended to have the percentage of ethylene content interpreted as weight percent. In such a case where it is certain that a shift in the interpretation of the claims has occurred, but uncertain if this would lead to an addition of subject-matter, the Board takes the view that it should be incumbent upon the Patent Proprietor or Applicant as the author of such amendment(s) to demonstrate that by making the amendment(s), the conditions of Article 123(2) EPC have been complied with."
•  "In the case at issue, the Patent Proprietor was, however, unable to demonstrate that before and after the amendments, the percentage value could have been consistently interpreted as "weight percent". Therefore, it must be concluded that the author of the amendments in the patent in suit, ie the Respondent, has not discharged the burden of proof which was on him."
• "the deletion of those two examples in order to exclude the possibility of interpreting the relevant percentage as mol percent provides a lateral shift of information corresponding to the extension of subject-matter beyond the content of the application as filed (Article 123(2) EPC). [...] it clearly shifts the gist of the patent in suit as defined in any one of Claims 1 to 13 [...], despite the fact that their wording has not been modified in this respect. In other words, the deletion of Example 2 and, in particular, of Example 3 amounts to the provision of an aliud."
• The proprietor was the respondent, and no auxiliary request was filed in the appeal that re-instated the two examples. The patent was revoked. 

EPO 

The link to the decision is provided after the jump.

T 0618/23 - Pages 120-125 of the SoG do the job

Key points

• The OD decided to maintain the patent in amended form based on AR-25a. Both parties appeal.
• The Board, in machine translation: "the patent proprietor argued, among other things, that the opponent's statement of grounds of appeal, contrary to Article 12(3) of the Rules of Procedure of the Boards of Appeal, did not clearly and concisely explain why the contested decision should be set aside. Instead, it dealt with extraneous matters (such as the proceedings concerning the parallel German patent 10 2015 117 403 before the Federal Patent Court), addressed "an unmanageable number of different, partly equivalent lines of argument" and failed to provide a problem-solving approach for any of these lines of argument."
• "The Board notes, however, that the appellant has sufficiently explained, at least on pages 120 to 123 of the statement of grounds of appeal [ that had in total 134 pages], why the contested decision should be set aside and, in particular, why claim 1 of granted auxiliary request 25a, based on E7 in combination with E13, does not involve an inventive step. While the appellant's submissions are extensive, they are nevertheless sufficiently substantiated. The mere fact that the statement of grounds of appeal contains a number of irrelevant statements alongside the arguments relevant to the decision does not render the appeal inadmissible."
• In the statement of grounds (SoG), the opponent first attacked the patent as granted (p. 11), citing extensive prior art that was no longer relevant for AR-25a (as I understand it). The opponent then addressed AR-1 (p. 84) and all subsequent auxiliary requests, eventually arriving at AR-25a on p. 120.
• In the opponent’s SoG, an attack against requests ranked higher than the auxiliary request held allowable by the OD is indeed an "irrelevant statement", according to the majority line of case law (as I understand it).


• The Board first deals with the claim requests in the proprietor’s appeal and then turns to the set of claims held allowable by the OD (and contested in the opponent’s appeal)."The Board concludes that the subject matter of claim 1, starting from E7 in combination with E13 and the general technical knowledge, does not involve an inventive step."
• The Board then turns to lower-ranking requests, where novelty over E2 becomes an issue. I have not studied this part of the decision in detail.
• The patent is revoked.

EPO 

The link to the decision is provided after the jump.

T 1285/23 - Fighting again before the ED

Key points

• Now that the discussion of the former designation fee per designated state has been removed from the 2026 edition of the Guidelines, this decision remains noteworthy. It was published in October 2025.
• In this case, the applicant had withdrawn the designation of GB in the parent application by letter of 02.03.2017, after the Rule 71(3) Communication. The decision to grant was issued on 16.06.2017, and the mention of the grant on 12.07.2017. The patent was opposed.  The OD decided to maintain the patent in amended form. The opponent appealed. The proprietor disapproved of the text of the patent. The parent patent was revoked. 
• The proprietor filed a divsional application on 05.07.2017. On 23.02.2018, the applicant submitted a letter about the designated states (after the application was published on 10.01.2018). The Receiving Section issued a decision on 22.05.2018 that GB is not designated, and made it open to appeal. The Board rejects the appeal in 
• The search report was also published on 10.01.2018. The examination fee was paid on 06.07.2018. Hence, on 22.05.2018, the Receiving Section was competent.
• The Board rejected the appeal against the decision of the Receiving Section (decision J 3/18, issued on 19.08.2020, identical to decision J 3/20 in a parallel divisional case (blog post).
• The Legal Board held that "an interpretation of Article 76(2) EPC in accordance with recognised rules of interpretation shows that only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional"
• Further, "During the oral proceedings the appellant presented submissions concerning the protection of its legitimate expectations which had not been presented before. ... In the case on file the board used its discretion not to admit the new submissions because the appellant could and should have presented the facts that form the basis for the alleged protection of legitimate expectations earlier in the proceedings."
• Examination starts on 09.09.2020, with an Intention to grant. On 20.10.2020, the applicant requests that the Examining Division consider GB to be designated.
• The ED decides on the matter on 21.03.2023 (decision). 
• The applicant appeals.
• "During the oral proceedings before the Legal Board of Appeal the appellant sought to rely for the first time on the principle of good faith. They stated that they had relied on the communication dated 10 August 2016 concerning the application which was eventually the subject of decision J 14/18. This case concerned the then co-pending application no. 16174992.4 ("the co-pending application"). In that communication the EPO had listed GB as one of the designated states."
• "The appellant did not dispute that a decision of a Legal Board of Appeal concerning a decision of the Receiving Section could in principle also have a binding effect, or an effect of res judicata, on an Examining Division when the application proceeded to that division. However, it argued that its request was now based on the principle of good faith. In J 13/18 the Legal Board of Appeal had never considered that line of argument in substance, but had based the dismissal of the appeal, and thus the refusal of the request to add GB as a designated state, solely on the interpretation of Article 76(2) EPC. There could thus not be a binding effect, under Article 111(2) EPC, of that decision on the Examining Division when they considered that request on a different legal basis, namely the principle of good faith. "
• "The Board disagrees. In J 13/18 the Legal Board of Appeal dismissed the appeal. By doing so it upheld the finding of the Receiving Section not to include GB as a validly designated state in the application. Decision J 13/18 became final when it was issued at the end of the oral proceedings. "
• "The subject-matter of decision J 13/18 was the determination of whether the Receiving Section's refusal to add GB as a validly designated state to the application was correct or had to be overruled. In its decision the Legal Board of Appeal considered whether Article 76(2) EPC could be interpreted such as to allow the appellant's request, and decided not to admit the lines of argument presented by the appellant based on the correction of errors and on the principle of good faith. By dismissing the appeal the Legal Board of Appeal issued a conclusive decision on the request of the appellant to include GB as a validly designated state in the application, rather than admitting the late filed lines of argument (including that of the principle of good faith) and remitting the case to the department of first instance for further prosecution."
• The Board considers the matter, hence, res judicata by J 13/18.
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• "For the reasons set out above, the Examining Division was not competent to decide in substance on the appellant's request to add GB as a validly designated state in the application. The decision is void and is formally to be set aside."
• "The Board concluded above that in view of the effect of res judicata emanating from J 13/18 the Examining Division was not competent to decide in substance on the appellant's request in question."
• "The Board is equally bound by this effect. As a consequence, the appellant's request to add GB as a validly designated state in the application is inadmissible."
• The Board hence decides, in the order of the decision, that "The decision under appeal is set aside. The request to add Great Britain as a validly designated state in the application is refused as inadmissible."
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• Hence, the Board did not apply Article 111(2) EPC to the case at hand.
• The Board sees no difference in facts that would suspend the binding effect under Article 111(2) EPC
  
  
• The appeal fee is reimbursed. "By issuing a decision on a matter in respect of which it was not competent, the Examining Division committed a substantial procedural violation. Whilst the appellant did not obtain the full legal redress sought by its appeal, the Board nevertheless had to set aside the impugned decision."
• "the Board concurs with the body of case law according to which reimbursement of the appeal fee may be ordered based on the principle of good faith, even if the appeal was not allowed and thus one of the conditions of Rule 103(1)(a) EPC was not met (CLB, V.A.11.14)."

EPO 

The link to the decision is provided after the jump.

T 0441/23 - Respondent withdraws request for oral proceedings

Key points

• This decision was published already in February 2025.
• In Visser's Annoted EPC, 2025 edition, we write: "According to T488/18 and T598/19, partial reimbursement of the appellant’s appeal fee can also be based on the withdrawal of a request for oral proceedings by another party to the appeal proceedings (e.g. a respondent) because R.103(4)(c) refers to ‘any request’. However, T777/15 and T795/19 have come to the opposite conclusion, i.e. that the appellant must have timely withdrawn its own request for oral proceedings to benefit from partial reimbursement."
• The present decision:  "Since the respondent's withdrawal of the request for oral proceedings was made within one month of notification of the communication issued by the Board in preparation for the oral proceedings, both conditions of Rule 103(4)(c) EPC, that any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings and no oral proceedings take place, are met  [and the appeal fee is reimbursed in part to the appellant]. It makes no difference that the withdrawing party and the appealing parties are not the same (cf. T 517/17, reason 6; T 488/18, reason 8). Hence, 25% of the appeal fee is to be reimbursed to each appealing party."
• 
  

EPO 

The link to the decision is provided after the jump.

R 0002/25 - Length of procedure

Key points

• This decision dismissing a petition for review was taken by a three-member panel during oral proceedings held on 29.09.2025.  The decision was issued in writing on 10.02.2026.
• There is no public or official target for how long decision writing in R cases should take.  Given that in three-member panel decisions, the decision is to unanimously reject the petition as being clearly unallowable and/or clearly inadmissible, the writing of the decision should not be very difficult - it can't be a borderline case. Given the President of the BoA being the Chair in this case, and considering the legislative purpose of  Rule 102 EPC - see especially Rule 102(1) EPC, I'm still surprised it took more than three months. 
• " The petition for review concerns decision T 0314/20 ... dated 16 November 2023 (the decision under review). The decision was notified on 20 December 2024."
• It was Board 3.3.04 that needed more than a year to write the decision. This is, of course, well beyond the period of three months specified in Art 15(9). It also caused a significant delay in the petition for review procedure by more than a year. 
• One of the parties had filed a request for acceleration of the appeal proceedings after the oral proceedings and after the oral decision had been taken. The TBA denied the request and replied that "In light of the above, the Board will issue the written reasons for its decision at a time that is consistent with its members' workload, and in any event not before March 202[4]." Of course, the Board needed until December 2024.
• If we infer from this remark that the delay was not due to, e.g., a Board member's illness, but to 'workload', we may observe a broader 'management' issue under Board 3.3.04 (at that time).  
• I'm not sure whether Board 3.3.04 currently better meets the target of Art. 15(9) RPBA.
• To be clear, I think it is also the responsibility of the Board of Appeals Unit's management to monitor whether any TBA is overloaded or experiencing exceptional circumstances (e.g., board members being unavailable due to health reasons).
• The opposition was filed in 2017. The entry into the EP phase was in 2009.

EPO 

The link to the decision is provided after the jump.

T 0639/23 - Lapse of patent and continuation opposition

Key points

• This decision was published in December 2025.
• The OD decided to maintain the patent in amended form. Both the opponent and the proprietor appealed. 
• The Board, in machine translation: "By letter dated October 14, 2025, the patent proprietor withdrew his appeal and his request for oral proceedings. At the same time, he declared that the patent had lapsed in all contracting states in which it would have been effective (DE, FR, AT, IT) by declarations of renunciation." 
• "In a communication under Rule 84(1) EPC dated 3 November 2025, the Board considered the documents submitted with the letter of 31 October 2025 to be sufficient to clearly demonstrate the effective waiver in all Contracting States in which the patent was last in force. The appeal proceedings could therefore be continued at the request of the opponent, provided that such a request was filed within two months of service of this communication."
• "By letter dated 10 November 2025, the opponent requested the continuation of the appeal proceedings."
• "By letter dated 17 December 2025, the patent proprietor commented on the opponent's letter of 10 November 2025". The proprietor submitted arguments that the proceedings should be terminated without a (substantive) decision.
• "The patent proprietor contested the opponent's arguments and, in its letter of December 17, 2025, asserted that the opponent had failed to sufficiently demonstrate a concrete, seriously threatened infringement and thus a concrete interest in legal protection. "
• " According to Decision T 598/98, Guidelines 1 and 2 and Reasons 1.6 to 1.8, in addition to the (in this case disputed, see above) existence of a legitimate interest of the opponent in the retrospective revocation of the patent, the Board's discretionary decision under Rule 84(1) EPC may also take into account ...."
• I still think T 598/98 conflated German national practice with the EPC, or too readily assumed that German practice in cases of lapse of the German patent is to be applied equally under the EPC.
• I don't think Rule 84 gives the OD discretion to continue the opposition procedure if the opponent requests that the OD take a written decision on the merits. In particular, if Rule 84 is interpreted to give the OD to discretionarily terminate the procedure against the request of the opponent (in case of a lapse), then Rule 75 EPC is meaningless ("An opposition may be filed even if the European patent has been surrendered in all the designated Contracting States or has lapsed in all those States."). Rule 84 must be interpreted (also) using the systematic method of interpretation.
• See my extensive comments on T 598/98 in this blog post.
• The Board decides to continue the procedure. "The "legal added value" of a decision on the merits, as demanded by the patent proprietor, compared to the mere discontinuation of the proceedings, is also present if the proceedings are continued, since, unlike discontinuation, the effect of a patent that is not valid is eliminated retroactively. Finally, the patent proprietor's argument that there is no concrete impact on a third party in this case is also unconvincing. Such a thing is not decisive for the continuation of the proceedings, since the objection (appeal) procedure is by its nature a review procedure for which a concrete impact on the objector or third parties is not necessary."
• The Board decides to revoke the patent.
• I don't know why the proprietor did not disapprove of the text. It could have been related to the mutual requests for a different cost apportionment (the Board refused both, though likely Rule 84 does not preclude a decision under Art. 104). Teva/Copaxone should also be considered, of course. 

EPO 

The link to the decision is provided after the jump.

T 0538/24 - The photograph is in color for the Board

Key points

• The Board, in translation: "in the opposition proceedings, the object of the alleged prior use, Recaro, was inspected during an oral hearing held as a videoconference. The Opposition Division rejected the opponent's request for an in-person hearing, which was based on the planned inspection, because it considered the conditions for an in-person hearing, as defined in the decision of the President of the EPO (OJ EPO 2022, A103), to be not met."
• " The appellant argued that it had been virtually impossible to explain the mechanics of the object under consideration in a manner as adequate as would have been possible in a face-to-face event. This was also evident from the inadequate black-and-white photographs in the transcript of the taking of evidence provided to her, which were partly of poor quality and partly blurry."
• The appellant requests a new inspection of the device, in person.
• The Board refuses the request.
• The Board: "The alleged poor quality of the photographs taken during the inspection with a high-resolution camera does not relate to the inspection itself, but rather to its documentation and transmission to the parties. In fact, the Chamber has received the photographs in good quality and in color."
• It is strange, to say the least, that the Board looks at a different picture than the parties. The question is: how do you know what the Board is actually looking at, during vico oral proceedings? Perhaps it will be less of an issue now that documents are made visible in color in the public online file.
• The primary reason for refusing the request for a new inspection is that "As the respondent argued, there was agreement at the end of the inspection regarding the functionality of the prior use by Recaro"

EPO 

The link to the decision is provided after the jump.

T 0514/24 - Deleting from lists

Key points

• Claim 17 is directed to a chemical material and contains six lists of elements. In AR-2a, the proprietor deletes elements from every list.
• Three out of eight elements are deleted in list II, 3 of 10 elements in list III, two out of 5 elements in list IV, and four out of six elements are deleted in list IV.
• The Board, in translation, "Claim 17 combines an arbitrarily chosen subgroup of the possible compositions of the metal oxide layer with an equally arbitrarily chosen subgroup of the possible laser types, without specifying a basis for the remaining combinations. The compatibility of this multiple deletion with Article 123(2) EPC is not immediately apparent and should have been substantiated by the appellant (Article 12(3) RPBA)."
• The decision contains additional reasoning on Article 123(2) and amendments consisting of selecting alternatives from the claim, but the above point appears to be crucial. 
• This reasoning is, as such, unremarkable. However, the auxiliary request serves to make the claim novel over a prior right under Article 54(3) EPC.
• The difficulty for me is that an undisclosed disclaimer would have been possible in these circumstances, under G 2/03 and G1/16 (it seems to me). But deleting elements from the recited lists is not. 

• EPO 

The link to the decision is provided after the jump.

T 0832/18 - Post-published evidence and Art. 83

Key points

• The decision is dated 09.12.2024; by Board 3.3.04,  and the written decision was issued 30.10.2025. I assume there were exceptional circumstances, such as the illness of a Board member.
• The interesting point is the importance of a post-published document for the sufficiency of disclosure of an in vitro diagnostic method claim."
• ""1. A method for determining the likelihood of effectiveness of an EGFR tyrosine kinase inhibitor [a class of medicaments] to treat cancer [, the method] comprising: determining whether the erbBl gene obtained from a biological sample obtained from said patient comprises at least one nucleic acid variance, selected from [ a list of mutations] 

  wherein the biological sample is a sample of tissue or fluid isolated from the patient and wherein the presence of the at least one nucleic acid variance indicates that the EGFR tyrosine kinase inhibitor is likely to be effective;

• "Post-published document D132, ... shows that lapatinib, another EGFR-TKi inhibitor, is a better inhibitor of wild type EGFR (EGFR-wt) than of EGFR-L858R mutant ...  the board considers that ... that lapatinib has been shown to be less effective, or ineffective, in inhibiting EGFR-TK and in treating cancer in patients with a nucleic acid mutation according to claim 1(b) or (c), compared to patients who do not have such a mutation.
• "Documents D134, D132, D50 and D72 thus provide serious doubts based on verifiable facts that there is no increased therapeutic effectiveness of EGFR TKis in patients affected with cancer comprising at least one mutation as set out in claim 1. Some TKis, such as lapatinib or neratinib, do not have or have a lower effect on such patients in comparison with patients comprising a wild type EGFR. Hence, the subject-matter of claim 1 of the main request is not sufficiently disclosed (Article 83 EPC)."
• As a comment, it remains interesting that post-published documents cannot be used in some aspects of Article 83, also for functional features (such as second medical use claims), while such documents can be used in other aspects of Art. 83.
• G 2/21, r.77 : "the scope of reliance on post published evidence is much narrower under sufficiency of disclosure (Article 83 EPC) compared to the situation under inventive step (Article 56 EPC). In order to meet the requirement that the disclosure of the invention be sufficiently clear and complete for it to be carried out by the person skilled in the art, the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence.
• 
  
• EPO

The link to the decision is provided after the jump.

T 1898/23 - (II) Novelty based on patient group

Key points

• At issue is whether a claim is a valid second medical use claim.
• The Board: "4.1 As to whether the claimed use qualifies as a specific use in a method referred to in Article 53(c) EPC which is not comprised in the state of the art, the parties agree that the following three criteria mentioned in the decision T 1491/14 have to be fulfilled for the treatment of the same disease with the same substance in a specific group of patients to be considered a new therapeutic use: (i) the patient group is not disclosed in the relevant prior art; (ii) the patients belonging to the group can be distinguished from those of the prior art by their physiological and pathological status; (iii) there is a functional relationship between the characterising physiological or pathological status and the therapeutic treatment, and thus the selection of the patients is not arbitrary. [formatting added].
• "The Board agrees that a patient group fulfilling these three criteria would render the claimed subject-matter novel."
• As a comment, criterion (i) seems strange: a second medical use claim is no longer a valid second medical use claim if the feature is disclosed in the prior art? Is claim interpretation not a preliminary step before the comparison with the prior art?
• As a further comment, criterion (iii) seems more about inventive step? See T 1688/20 for selection inventions in general ("the Board concurs with the most recent decisions of the Boards of Appeal, including T 261/15, point 2.2.2 of the reasons, according to which this criterion of purposive selection is relevant for the question of inventive step rather than for novelty.")

EPO 

The link to the decision is provided after the jump.

T 1898/23 - Argon-containing plasma as medical composition

Key points

• Claim 1 of the main request reads as follows. "Cold atmospheric plasma for use in treating therapy-refractory actinic keratosis in a patient in need thereof, wherein the cold atmospheric plasma is an argon-containing plasma."
• Is this a valid second medical use claim?
• "it has to be considered: (a) whether claim 1 concerns a substance or composition within the meaning of Articles 54(4) and (5) EPC"
• The Board: "for the sake of argument and in the respondent's [proprietor's] favour, it is ... assumed that the alleged therapeutic effect is indeed caused by the parts of the claimed plasma that qualify as a substance or composition within the meaning of Article 54(5) EPC."
• The Board considers the claim to be obvious, even when assuming that is a valid second medical use claim.
• The Board, obiter, sets out the legal framework: - I omit the case law references from the quote:  "While this "subgroup of the larger group of 'products'" ... excludes medical devices ..., it does not seem justified to say that any product which does not qualify as a medical device because of e.g. a lack of shape automatically qualifies as a substance or composition within the meaning of Article 54(4) and (5) EPC ... . If that were so, any shapeless physical entity (e.g. electromagnetic radiation or ultrasound waves) could qualify as a substance or composition, regardless of whether it is a chemical entity. Having said this, the current Board agrees that whether something qualifies as a substance or composition within the meaning of Articles 54(4) and (5) EPC should be decided, in the first place, on the basis of what is claimed as such and not on the basis of its mode of action ... .
• The Board indicates it does not agree with T 1252/20.
• "In order to benefit from the notional novelty afforded by Article 54 (4) and (5) EPC, it must be a substance or composition - as opposed to other subject-matter not qualifying as such - which is used in a method referred to in Article 53(c) EPC,  ... . In the case at hand, where the method relates a treatment by therapy, it must thus be assessed whether the therapeutic effect can be ascribed to the chemical entities in the plasma or (only) to the other entities, such as the photons"

EPO 

The link to the decision is provided after the jump.

T 0077/23 - Absent proprietor, new attacks oral proceedings

Key points

• The Board in translation: "The Board is aware that the argument of lack of novelty of claim 1 of auxiliary request 8 in relation to document E1 was first raised during the oral proceedings before the Board. However, for the reasons explained below, the Board cannot conclude that this violated the right to be heard (Article 113(1) EPC) of the respondent [proprietor], who was absent from the oral proceedings. 
• Opinion G 4/92: "A decision [in inter partes proceedings] against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings." 
• See also point 1 of the reasons: ".... it is clear that the referred question relates to inter partes proceedings. "
• In G4/92, the divergence in the caselaw was that T 574/89 had held "that by choosing to stay away from oral proceedings the parties "had forfeited their right to present comments", and hence that "any arguments or evidence submitted by the parties present at oral proceedings" could "be used as a basis for the decision without it being relevant whether such evidence or arguments were already known to the absent parties from the written submissions or whether they could expect such evidence or arguments to be presented". On the other hand, "T 484/90 ... held that "a decision against a party duly summoned to but failing to appear at oral proceedings which is based on new evidence, such as a new document, on which that party has not had the opportunity to comment, may not be pronounced at the close of those proceedings without infringing that party's right to be heard, unless the absent party indicates that it is forfeiting this right"."
• Puzzling enough, the current Board does not cite or comment on G 4/92 and does not explain how the current decision complies with G 4/92 (viz, that the novelty attack does not involve new facts forward for the first time during the oral proceedings).
• As also noted by Daniel X Thomas on his weblog. 
• Possibly, G4/92 would be decided differently nowadays. However, as of yet, it is valid case law.

EPO 

The link to the decision is provided after the jump.

T 1772/23 - More on Rule 80

Key points

• The Opposition Division had decided that the amendments leading to Auxiliary Request 2 did not meet the requirements of Rule 80 EPC. ... The set of claims of auxiliary claim 2 comprises four independent claims [by splitting claim 1]. 
• The proprietor appeals.
• The Board in translation: "The Board does not follow this view, but considers the amendments to be in conformity with Rule 80 EPC."
• "Rule 80 EPC stipulates as its sole condition for amendments that they must represent a bona fide attempt to overcome a ground for opposition and thus prevent the revocation of the granted patent."
• It must be noted that Rule 80 adds "even if that ground has not been invoked by the opponent".
• "In the present case, in all four independent claims of auxiliary request 2, the claimed method [of granted claim 1] is restricted by additional features from dependent claims, which is to be regarded as an attempt to distinguish the method claimed in the claims from the method known from E1."
• "The excessive use of and/or formulations in the dependent claims of a claim set can make it difficult to anticipate potential future withdrawal positions in the granted claim set. This can also, under certain circumstances, lead to questions as to whether the withdrawal positions were originally disclosed. However, these are questions that would have to be examined under the provisions of Articles 84 and 123(2) EPC and do not affect the assessment of the amendment under Rule 80 EPC."
• " Furthermore, the methods defined in the four independent claims of auxiliary request 2 do not necessarily have to be based on alternative, mutually exclusive embodiments. ... According to the settled case law of the Boards of Appeal, the existence of two alternative embodiments in the patent in suit may lead to the admissibility of using two independent claims if the scope of protection is limited. However, this does not imply that this criterion is mandatory, i.e., that only in the case of several alternatives mentioned in the patent in suit may these be pursued in independent claims. On the contrary, it has already been established in T0262/05 (Reasons in Section 4 to Rule 59a EPC, which corresponds to the current Rule 80 EPC) and T0123/22 (Reasons 3.12) that the replacement of a single granted independent claim with two independent claims is not only permissible in exceptional cases, but that in each specific case the amendments must be individually assessed to determine whether they constitute an appropriate and necessary response to avoid the revocation of the patent in suit on the basis of a ground for opposition."
•  " The Opposition Division is correct in asserting that the submission of more than 100 auxiliary requests can lead to an overload of the proceedings ... However, this is a question to be examined when these applications are admitted, not whether the respective amendments comply with the requirements of Rule 80 EPC. This must be clearly distinguished, as explained in detail, for example, in T0123/22 (see Reasons 3.7 and 3.10). The Board therefore sees no reason why the amendments leading to the claim set of auxiliary request 2 should not be in compliance with Rule 80 EPC and therefore does not follow the decision of the Opposition Division."
• The opponent had withdrawn the opposition during the appeal stage.
• The case is remitted back to the OD.
• 
  

EPO 

The link to the decision is provided after the jump.

T 1965/23 - Starting from wrong document, clueless choice

Key points

• Under the PSA, the CPA or starting point document must be a 'feasible' document. What happens if you try the PSA from a document that is not suitable?

• Claim 1 as granted defines: "A medical device containing a separately prepared freeze-dried cake composition comprising aripiprazole as an active ingredient in a storage container whose inner wall is treated with silicone, wherein there is a space between the inner wall of the storage container and the cake composition."

• "The patent addresses the specific issue of the agglomeration of aripiprazole following resuspension when it is provided as a cake composition in a storage container of a medical device, such as a syringe, of which the inner wall is treated with silicone"

• " The patent teaches in this context that by reducing the contact of the cake composition comprising aripiprazole with the silicone this agglomeration can be suppressed  ... . The patent presents experimental results in support of this teaching"

• "According to the established jurisprudence (see [CLBA] I.D.3.4) a central consideration in selecting the closest prior art is that it must be directed to the same purpose or effect as the claimed invention; otherwise, it cannot lead the skilled person in an obvious way to the claimed invention. "

• "if an inventive step can be acknowledged starting from a particular prior art that is convincingly identified as the most promising starting point and therefore indeed constitutes the closest prior art, the attempt to deny an inventive step starting from a less promising starting point must fail"

• The concept of the closest prior art in the problem solution approach not only obviates the need to address repetitive lines of argument, it also allows for the due appreciation of specific effects in relation to the prior art that may be associated with the distinguishing features

• Document D2 describes the preparation of a formulation comprising aripiprazole by freeze-drying a suspension in a vial 

• "documents D12, D11 and D18 describe silicone-treated medical devices comprising freeze-dried formulations without mention of aripiprazole or problems resulting from the presence of silicone. Documents D12, D11 and D18 therefore do not address a similar purpose or effect as the patent. Arriving at the development of a freeze-dried composition comprising aripiprazole in a silicone-treated container of a medical device as disclosed in the patent starting from these documents would require the clueless choice of aripiprazole from all possible candidates of active ingredients, which the Board does not consider a reasonable proposition."

• The Board therefore considers that documents D12, D11 and D18 do not represent reasonable alternative starting points in the assessment of inventive step, irrespective of the number of other features shared with the claimed subject-matter.

• Now, as a question: how could a national court assess inventive step over D12, assuming the court cannot disregard D12 as a starting point, as the Board did?

EPO 

The link to the decision is provided after the jump.

T 0981/23 - Review of positive admittance decisions (?)

Key points

• "Positive admittance decisions by departments of first instance are not regulated in Article 12(6), first sentence, RPBA. Having said this, in this Board's opinion such decisions are still subject to a board's limited power to review discretionary decisions of departments of first instance (see G 7/93, Reasons 2.6; for claim requests, see also T 1202/19, Reasons 39 to 43)."
• G7/93 r.2.6 is the well known remark about "in the circumstances of a case such as that before the referring Board, a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles as set out in paragraph 2.5 above, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion"
• T 1202/19 - blog post
• "In the case in hand, there was no error in the opposition division's exercise of discretion."
• See also T 0909/23: "Nach Ansicht der Kammer ist die Ausübung des Ermessens einer erstinstanzlichen Abteilung auch im Rahmen einer positiven Zulassungsentscheidung einer Überprüfung im Beschwerdeverfahren nach den in G 7/93 dargelegten Grundsätzen zugänglich"
• On the other hand, see T 1884/19 (24-10-2022): "D25 to D30 were not only admitted into the proceedings, but considered by the opposition division for assessing sufficiency of disclosure of claim 6 as granted. There is in such a case no legal basis for excluding documents D25 to D30 from the appeal proceedings (see also T 0487/16, point 3.1 of the Reasons for the decision, as well as the case law developed under RPBA 2007, e.g. T 0026/13, point 2 of the Reasons for the decision; T 1568/12, point 2.4 of the Reasons for the decision; T 2603/18 points 1.1 to 1.2 of the Reasons for the decision)."
• For a more recent case, see T 2036/22 (2024), and T 0189/23 (07-10-2025): "According to a number of decisions to which the present Board agrees (Case Law, V.A.3.4.3 and in particular T 617/16, point 1.1.1 of the reasons or T 2603/18, points 1.1 and 1.2 of the reasons), the EPC does not provide a legal basis for excluding documents, requests or evidence on appeal if the contested decision was based on them. In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA, such submissions are automatically part of the appeal proceedings". 
See also the extensive reivew of the issue in CLBA V.A.3.4.3 "Submissions admitted at first instance are part of the appeal proceedings"
• I wonder whether / how / when this divergence in the case law will be resolved. Can the Board unadmit documents or claim requests that were examined on the merits (and decided on) by the OD?

EPO 

The link to the decision is provided after the jump.

T 0456/24 - No review of decision to admit

Key points

• "The respondent [proprietor] argued that document D20 should not be admitted into the appeal proceedings, contending that the reasoning provided by the opposition division for admitting this document was insufficient, as late-filed documents should only exceptionally be admitted if there are reasons to suspect that such late-filed documents prejudice the maintenance of the patent in suit. 
• The board disagrees. According to established case law, since D20 was part of the opposition proceedings and the decision was based on D20, this document cannot be excluded from appeal proceedings (see Article 12(2) RPBA and the Case Law of the Boards of Appeal, 11th edition 2025, CLB in the following, V.A.3.4.3).
• This is because the aim of appeal proceedings is to review the decision under appeal in a judicial manner, which, in the present case, also inevitably requires a review of the findings drawn by the opposition division on the basis of D20."

• "In addition, no error in the use of discretion from the opposition division is apparent, because the appealed decision clearly shows that the opposition division decided to admit D20 after a prima facie review of the content of the disclosure of this document  ... ."

EPO 

The link to the decision is provided after the jump.

T 0508/24 - New public prior use after remittal

Key points

• "In the present case, the alleged prior use "Tulip-Oldenburg" was introduced for the first time after remittal of the case to the opposition division and was not directly related to the prior art already on file."
• "To assess whether feature e) of claim 1 was disclosed, the opposition division specifically analysed the videos D36 and D37. Their conclusion, that feature e) is not disclosed because the machine shown in the videos includes grippers which operate independently from the conveyor belts and are not connected thereto, clearly represents a technical assessment based on prima facie relevance examination which does not appear to violate the opposition division's discretionary powers.
• Based on the prima facie finding of the distinguishing feature e), which feature e) was also not disclosed in any of the cited documents, the opposition division assessed the prima facie relevance of the alleged public prior use with respect to inventive step for the outcome of the case."
• The OD did not admit the new attack based on an alleged public prior use. The Board sees no mistake in this decision.
• "The case law of the Boards of Appeal does not establish a fixed or uniform standard for how deeply an opposition division must examine late-filed evidence when assessing prima facie relevance. This means that an opposition division must exercise its discretion under Article 114(2) EPC according to the particular facts before it, and that boards of appeal should only intervene if that discretion was exercised on the basis of wrong principles, without taking account of the right principles, or in an arbitrary or unreasonable manner (CLB, V.A.3.4.1b)."

EPO 

The link to the decision is provided after the jump.

T 0781/24 - Case amendments after remittal

Key points

• The Board in the first appeal remitted the case for further prosecution (i.e., not finding a set of claims to be allowable). Next, the proprietor changed their auxiliary requests. The OD did not admit the claim requests. The proprietor contests this finding in the second appeal.
• The proprietor argued that: "these requests were submitted after the case had been remitted to the opposition division for further prosecution and before the opposition division summoned for oral proceedings after remittal, therefore before the final date set under Rule 116(1) EPC. "
• The Board: "Whether or not amended sets of claims presented after the expiry of the time limit set under Rule 79(1) EPC should be considered in opposition proceedings does not merely depend on their filing within the time limit under Rule 116 EPC, but also on the specific circumstances of the case. If all new submissions received within the time limit according to Rule 116 EPC were automatically to be considered timely, the time limit set according to Rule 79(1) EPC would be rendered meaningless. Therefore, when determining whether amended requests, such as the main request and auxiliary requests 1 to 7, submitted within the time limit set under Rule 116 EPC, were filed in due time, it has to be taken into account whether these requests were submitted in direct and timely response to a change in the subject of the proceedings (see also T 364/20, reasons 7.2.4 and 7.2.6)."
• I think this approach is too strict for first-instance proceedings in general; it describes the procedural framework of Art. 13 RPBA for appeals. However, first instance proceedings are of a different, more administrative nature. Having said that, the Board correctly recalls that the time limit of Rule 79(1) EPC should not be meaningless.
• "The case at hand deals with the judicial review of a decision in post-remittal opposition proceedings. The board is convinced that, in exercising its discretion in such post-remittal proceedings, the opposition division generally should have due regard to the framework defined in the first appeal proceedings which resulted in the remittal. This requirement serves to safeguard the legitimate interests of other parties and the public."
• The point of case amendments after remittal is interesting, and does not come up in the case law very often. I don't recall the GL discussing it specifically either. The Board's discussion of the topic is extensive, and I recommend reading it entirely.
• "Although the board agrees that a patent proprietor is generally not barred from submitting requests that are consistent with the principles of res judicata and ratio decidendi, the patent proprietor is not at absolute liberty to file amended claim requests in opposition proceedings subsequent to a remittal without constraint, even though the order of the first appeal proceedings' decision in T 423/18 merely states that the "[T]he case is remitted to the opposition division for further prosecution", i.e. does not specify on which set(s) of claims this further prosecution is to be performed."
• "The board is of the view that further prosecution of a case after remittal must proceed, as a rule, on the basis of the situation prevailing at the conclusion of the first appeal proceedings that gave rise to the remittal (see also T 383/11, Reasons 1.4). This principle should be observed in post-remittal proceedings when assessing the admissibility of a party's submissions, notably where, as in the present case, the appellant-patent proprietor seeks to justify such requests as constituting a reasonable redefinition of fallback positions."
• I think the proposed criterion is "whether these requests were submitted in direct and timely response to a change in the subject of the proceedings after the Board's decision in the first appeal"

EPO 

The link to the decision is provided after the jump.

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.