T 0152/24 - No review of decision to admit

Key points

• The opponent argues that the proprietor's main request should not be admitted. The main request is the version upheld by the OD with minor amendments. The request was filed as auxiliary request 46 or "AR46" in the procedure before the OD (with the written submissions before the hearing). 
• The Board, in translation: " it is self-evident that the version of the request upheld by the Opposition Division was addressed in the contested decision. It is therefore already part of the appeal proceedings pursuant to Article 12(2) RPBA. Consequently, there is no basis under Article 12(4) RPBA for disregarding this request (T 566/24, Reasons 1.4; see also T 1206/19, Reasons 2.5). In contrast, T 989/23 concerned a request which, although admitted by the Opposition Division, was not addressed on its merits and is therefore not relevant here (Reasons 9.6)."
• See also my post on T 0989/23.
• " The current main request differs from the version maintained by the Opposition Division only in that dependent claims have been deleted. While this amendment was made after receipt of the communication containing the Board's preliminary opinion (Article 15(1) RPBA), the aforementioned deletion of dependent claims is, in principle, capable of resolving objections to these claims without raising new questions. Moreover, the request is promising in light of the Board's preliminary opinion. This may constitute exceptional circumstances within the meaning of Article 13(2) RPBA, which warrant consideration at this stage of the proceedings – in consideration of the principles of fair trial and procedural economy inherent in the RPBA (T 1800/21, Reasons 3.4.2 to 3.4.6, following T 2295/19, Reasons 3.4.6)."

EPO 

The link to the decision is provided after the jump.

T 0967/23 - The absolute bar to fresh grounds vs the discretion of Art. 12 RPBA

Key points

•  The Board, in the headnote: "The question of whether a fresh ground of opposition has been raised - and, therefore, of whether the agreement of the patentee is required - has to be distinguished from the question of whether there has been an amendment to a party's appeal case. The admissibility of amendments represents a separate, independent issue and is subject to the discretion of the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• " In the contested decision, the opposition division held that claim 1 was novel over D1 as it did not disclose at least features 1.4 and 1.7. "
• "The board agrees with the contested decision... that D1 does not disclose ... feature 1.4."
• "The appellant [opponent] argued that, even if considered novel, claim 1 would still lack an inventive step over D1 combined with common general knowledge."
• " The appellant submitted that according to established case law and, in particular, to decision T 131/01, an inventive step attack is admissible on appeal even if only a novelty objection was raised during opposition proceedings, because the inventive step is not considered a fresh ground for opposition."
• I think T 131/01 shows that the case law based on G 10/91 is a hodgepodge of rules. G 10/91 did not identify what a 'ground of opposition' is, leaving that to G 7/95 to resolve.  G 7/95 decided that novelty and inventive step are different grounds (despite the structure of Article 100 EPC). T 0131/01 created an 'exception' in a case that was not even about a fresh ground of appeal (the OD had held the inventive step attack inadmissible; the Board reversed that decision, which is nowadays seen as outside the scope of G10/91). 
• If G 10/91 is about bright-line rules, then there should be no such complexity. If G 10/91 is about equitable considerations, then Article 12(4) and (6) RPBA appear to be, de lege ferenda, the way forward.
• The Board applies Art. 12(6) RPBA and does not admit the attack.
• "Under Article 12(6) RPBA, second sentence, the board shall not admit requests, facts, objections or evidence which should have been submitted, or which were no longer maintained, in the proceedings leading to the decision under appeal, unless the circumstances of the appeal case justify their admittance."
•  In the present case, the patent proprietor's and the opposition division's position that D1 did not anticipate claim 1 was known to the opponent before the opposition oral proceedings (see e.g. annex to the summons to oral proceedings in opposition, point 2.2.1). Hence, the board takes the view that any inventive step attack based on D1 could and should have been filed at the latest during those oral proceedings. Moreover, the board cannot identify any circumstances which would justify the admission of such attack on appeal, nor did the appellant provide arguments in this respect."
• "Accordingly, the board decides not to admit the inventive step attack based on D1 into the appeal proceedings, Articles 12(4) and 12(6) RPBA."

EPO 

The link to the decision is provided after the jump.

The placeholder line at the top is to be removed! / clean up formatting  

T 0216/26 - When the EPO forgets the drawings

Key points

• A Euro-PCT application
• "At no stage during the examination proceedings did the examining division suggest any amendment to the [seven original] drawing sheets, nor did the appellant request or propose any such amendment. The examining division thereafter issued the communication under Rule 71(3) EPC, in which only a single drawing sheet was included. "
• Hence, the EPO "forgets" the drawings. See also: https://justpatentlaw.blogspot.com/2025/11/t-071225-when-epo-forgets-drawings.html; 
• https://justpatentlaw.blogspot.com/2025/03/t-122424-when-epo-forgets-drawings-and.html
• https://justpatentlaw.blogspot.com/2025/03/t-042321-when-epo-forgets-drawings.html
• The applicant paid the grant fee and filed the translated claims.
• The applicant appeals within two months.
• The Board, on admissibility: "The appeal is admissible according to Articles 106 to 108 EPC and Rule 99 EPC; in particular, the appellant is adversely affected by the decision under appeal within the meaning of Article 107 EPC. The patent as granted does not correspond to the application documents filed with the request for entry into the European phase on 10 August 2023, which were never amended as regards the drawings."
• Nice to see the Board can decide this point so easily.
• "The legal consequence of Rule 71(5) EPC, i.e. the deemed approval of the notified text, only arises if the communication sent also complies with the substantive requirements of Rule 71(3) EPC, i.e. if it actually contains the text in which the examining division intended to grant the patent, on the basis of the documents filed by the applicant, possibly supplemented by individual marked amendments 
• " the Board is also satisfied that the text notified under Rule 71(3) EPC does not reflect the true intention of the examining division as regards the documents on which the patent was to be granted. Rather, the omission of drawing pages 2/7-7/7 represents a clear and unintentional omission from the text proposed for grant, in line with the considerations set out in decision T 0387/25 
• "The decision under appeal is therefore to be set aside."
• " the reimbursement of the appeal fee is not held equitable since the applicant made no use of opportunities to participate in the initial proceedings (J 4/09, Reasons 4), as the error made by the examining division was introduced already in April 2025 into the communication under Rule 71(3) EPC, and the applicant could and should have noticed it when checking the text of the communication under Rule 71(3) EPC, because the fact that part of the published drawing were omitted should have alerted it and should have prompted a double check."
• 
  

EPO 

The link to the decision is provided after the jump.

T 0545/24 - New grounds held inadmissible by OD

Key points

• The OD decided to hold inadmissible a late-filed ground of opposition (or, more precisely, a new objection that introduced a new ground of opposition), namely insufficient disclosure (Art. 100(b) EPC). Can the Board review this decision? (in view of G 10/91)
• "It is however also established case law that this exercise of discretion by the opposition division is reviewed by the boards and may be overturned only if it is concluded that the opposition division exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (CLB, IV.C.4.5.2a, V.A.3.4.4)."
• "the opposition division, when deciding, clearly applied the correct principle, which requires that the late-filed ground must prima facie seem to prejudice the maintenance of the patent as granted.
• The minutes of the oral proceedings before the opposition division, page 1 show that, having discussed this issue with the parties, the opposition division reasonably concluded, as set out in the impugned decision, point II.3, last paragraph, that "Even without any further explanations the person skilled in the art would have no problem in realizing a manual replacement of a worn cutting blade by a new cutting blade". 

• Hence, the OD's decision is not overturned.

• The proprietor gave no consent to introducing the attack as a fresh ground of opposition in appeal. Hence, the Board cannot introduce the attack (notwithstanding Art. 12(4) RPBA).

• See e.g. T 0339/18 on the same topic: "it was sufficient for the board to establish that there was evidence that the opposition division had actually examined whether the ground was prima facie relevant and given reasons for its finding on this"
• The OD had maintained the patent as granted. The Board finds the claims as granted to lack basis in the application as filed. The same applies to AR-1 to 5.  
• The proprietor filed a new AR-6 (in reply to the SoG). AR-6 is admitted by the Board. 
• The opponent filed new prior art (with the SoG), which is also admitted. In particular: " The board therefore decides to admit documents D7 to D9 into the appeal proceedings as a matter of fairness to the appellant in view of the admission of the respondent's sixth auxiliary request into the proceedings (Article 13(3) RPBA). "
• The Board remits the case. 
• Question to readers: can the debate on Article 100(b) be reopened in connection with AR-6? Or is the OD's decision on Art.83 / 100(b) now res iudicata after the remittal?

EPO 

T 0964/24 - Inventive polymorphs

Key points

•  This decision deals with novelty, namely a "counting to two" case, and inventive step of polymorphs.
• Claim 1 of the main request is directed to the citrate salt of the compound SCY-078. Novelty over D6 is at issue.
• The Board: "As set out above, claim 49 of D6 relates both to SCY-078 in its free-base form and to a pharmaceutically acceptable salt thereof. Furthermore, the passage quoted above [column 21, line 54 to column 22, line 21]  discloses citrate as a pharmaceutically acceptable salt. The board acknowledges that this disclosure is not made specifically in the context of SCY-078, but rather in relation to all the compounds of the invention of D6. However, since SCY-078 is one of those compounds, the skilled person would already derive directly and unambiguously from this disclosure that citrate also applies to SCY-078. "
• The passage is a list of pharmaceutically acceptable salts and includes citrate.
• Hence, citrate is one selection; a question is whether claim 49 / SCY-078 is a second selection, or at least the embodiment "pharmaceutically acceptable salt" of claim 49. 
• "even if one were to accept the respondent's [proprietor's] rather formal approach that, in addition to selecting citrate from the passage quoted above, a pharmaceutically acceptable salt of SCY-078 must be selected from claim 49 instead of the free base of SCY-078, D6 provides a clear technical link between these selections. Accordingly, D6 directly and unambiguously discloses SCY-078 citrate as defined in claim 1 of the main request."
• Claim 1 of the AR recites 10 crystalline forms of the citrate salts, each defined by an XRD pattern. Inventive step is at issue.
• "At the oral proceedings, the appellant [opponent] considered, inter alia, D6 as possible closest prior art. [The opponent] stated that it regarded the pharmaceutically acceptable salt of SCY-078 disclosed in claim 49 as the starting point for assessing inventive step. However, it did not start from the citrate of SCY-078 as disclosed in D6 (see assessment of main request above). To the benefit of the appellant [opponent] [*], it is assumed in the following that this is correct."
• *  see below, the selection of "citrate" is considered as the distinguishing feature that provides for inventive step. How this is to be reconciled with the Board's conclusion of lack of novelty of that feature in connection with the Main Request, and with Article 114(1) EPC in that respect, is not entirely clear to me.
• "table 18 of the application as filed shows that the Type A citrate crystal form exhibits superior kinetic solubility in fasted state simulated intestinal fluid (FaSSIF) and in fed state simulated intestinal fluid (FeSSIF) compared with other salts of SCY-078 (hippurate, fumarate, mesylate, phosphate). "
• "none of the documents in the proceedings teaches the use of citrate in order to increase bioavailability of a drug relative to other salt-forming options."
• The claims are held to be inventive. 

EPO 

The link to the decision is provided after the jump.

T 1174/24 - Correction unclear identity of opponent

Key points

• The opposition is filed in the name of   SPG GmbH & Co. KG" without giving an address.
• It turns out there are three legal entities with the same name (in Germany).
• Hence, the identity of the opponent is unclear (at the end of the opposition period).
• The opposition is therefore, in principle, inadmissible  (Rule 77(1)). 
• The Board allows a correction under Rule 139, however (as did the OD).
• " There is no plausible reason why the appellant would have intentionally omitted the address in the notice of opposition, thereby failing to provide a requirement for the admissibility of the opposition and thus incurring the risk of an inadmissible opposition. Furthermore, the authorized representatives would have had to act knowingly contrary to the EPC by doing so. The respondent's stated possible motivation for omitting the address due to security concerns appears contrived, given that the appellant's address can easily be ascertained from a commercial register extract. In this respect, the Board agrees with the Opposition Division's opinion that the probability of this being an oversight, rather than intentional, is already high."
• "The managing director of the appellant's personally liable partner stated in his affidavit, as set forth in Exhibit D24, that he had instructed the appellant's authorized representatives to file an opposition against the patent in suit on behalf of and by order of the appellant. The Board has no reason to doubt the validity of this statement. 
• "This statement is further corroborated by the affidavits of the appellant's two authorized representatives, as set forth in Exhibits D25 and D26, and by the email from the authorized representative dated January 5, 2023, at 10:47 a.m., submitted as Exhibit D22. The Board therefore cannot accept the respondent's objection that the evidence does not clearly establish who the opponent should be. Both authorized representatives also stated in their affidavits that "[t]he lack of further details concerning the person of the opponent pursuant to Rules 76(2)(a) and 41(2)(c) EPC [...] was due to an accidental omission." The Board has no reason to doubt the accuracy of this statement, especially since it confirms the plausible explanation for the omission of the address (see paragraph 2.10.1 above). 
• The OD had rejected the opposition.
• The Board revokes the patent. 

EPO 

The link to the decision is provided after the jump.

T 0698/24 - Disapproval text by proprietor/appellant

Key points

• The proprietor filed an appeal against the decision to revoke the patent.
• "VI. With letter dated 15 May 2026, the appellant declared that they did no longer approve the granted text of the patent, that all requests were thereby withdrawn, including the request for oral proceedings and that they also did not intend to file any other text for amendment of the patent in the present proceedings. "
• Is the appeal fee to be reimbursed in part?
• " The present Board follows the analysis in T 2684/18 and agrees with the second approach. It is established case law that a request for withdrawal of an appeal should only be accepted without question if it is completely unqualified and unambiguous (Case Law of the Boards of Appeal, 11th edition 2025, V.A.7.3.5). If the patent proprietor, instead of withdrawing the appeal (which would involve a partial refund of the appeal fee), does not choose this path but declares a non-approval of the text of the patent in any form, this is in the view of the Board a deliberate choice and can thus not be interpreted as an unambiguous withdrawal of the appeal. "
• The patent is revoked without oral proceedings.

EPO 

The link to the decision is provided after the jump.

T 0847/24 - (II) Schrodinger's method claim

Key points

• The post title is not meant as criticism of the Board's decision. 
• Claim 1 as granted describes, in effect, a preparation method that yields product A. The description discloses an additional step of converting A into B. The proprietor wishes to amend claim 1 by adding that step of converting A into B. Is this permitted?
• In the case at hand, A is a digital design of an implant and B is the physical implant, but that should not distract us.
• The Board agrees that claim 1 as amended "confers protection not only to the claimed method but also, pursuant to Article 64(2) EPC, to the implant directly obtained by that method, i.e. to a physical implant produced in accordance with the method defined in claim 1 of auxiliary request 1."
• The issue is Art. 123(3).
• "the Board also agrees, that a method comprising all the steps of claim 1 as granted and, in addition, a step of producing the implant also falls within the scope of claim 1 as granted, even though claim 1 as granted does not comprise any production step. This is because the added production step merely limits the method defined in claim 1 as granted."
• "carrying out the method of claim 1 as granted results only in the configuration of an implant, i.e. in data defining such a configured implant. It does not result in a physical implant. The appellant [proprietor] argued that, since a method including an additional production step fell within the scope of claim 1 as granted, the product directly obtained by that more limited method was also covered by the protection conferred by claim 1 as granted, by virtue of Article 64(2) EPC. "

• "The Board does not consider this persuasive. Pursuant to Article 64(2) EPC, if the subject-matter of the patent is a process, the protection conferred by the patent extends to products directly obtained by such a process. This provision therefore requires that the product in question be "directly" obtained by the claimed method. The Board understands this to mean that the protection conferred by a process claim does not, as a rule, extend to products obtained only by carrying out further steps which are neither defined in that claim nor implied by it."

• "The product protection conferred by Article 64(2) EPC is different from, and additional to, the protection conferred by a process claim as such. Hence, if a part of the patent's scope of protection is, in view of Article 64(2) EPC, extended because of the amendment, Article 123(3) EPC is infringed. In such a situation, it does not matter whether the patent's scope of protection is partly also, with regard to the process claim as such, more limited than before the amendment. Generally speaking, this is comparable to how an aliud partly extending and partly limiting the scope of protection also infringes Article 123(3) EPC."

• 6.7 Hence, if a granted claim defines [a method of making product A], amending the claim such that it additionally includes the step of [converting A into B] in view of Article 64(2) EPC, not allowable under Article 123(3) EPC." (generalisation in square brackets is mine).

• I don't know if this point has been decided before. The amendment of adding a method step to a preparation step does not seem very unusual to me.

• The background is that Article 64(2) EPC codifies a judicial stopgap from German case law to prevent imports of chemical compounds from Switzerland at a time when German patent law did not allow product claims for chemical products (and claims for the preparation method were used instead). (see, generally, Uhrich, Stoffschutz, 2010). The exclusion of chemical products from patentability in turn was a lesson learned from an early French case about a patent with a product claim for a dye, fuchsine (see e.g. here; and this article, p.19 of the PDF) 

• 
  

EPO 

The link to the decision is provided after the jump.

T 0772/24 - Analysable properties for inventive step

Key points

• My big post on G 1/23 is still a work in progress.
• G 1/23 said that: "It also follows from the correct interpretation of G 1/92 that all analysable properties of the product put on the market will belong to the state of the art, i.e. they will represent technical information that the skilled person is aware of and will consider relying on when looking at technical solutions."
• The present case is admittedly not about commercial products as prior art, but still.
• "there is nothing in D11 [a patent application] that suggests that the three primer coatings disclosed therein would perform differently in terms of adhesion to a coating applied thereto. Fully in agreement with this, the coatings according to D11 are only assessed in terms of their non-fouling properties in the example section; they are not assessed with respect to their adhesion to underlying surfaces or coatings. Accordingly, while experiments testing these three primers for a given property such as adhesion might have been routine for the skilled person, the fact remains that there is no incentive to be found in D11 to perform this testing. The targeted testing and comparison of these primers with respect to their adhesion to a coating applied thereto in order to determine which primer performs best in this regard, would not have been obvious, contrary to the appellant's argument. In other words, on the basis of D11 alone, the skilled person would not have had a reasonable expectation that an epoxy primer would have solved the objective technical problem."
See also G 1/92: "The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition."

EPO 

The link to the decision is provided after the jump.

J 0006/23 - Non-existent proprietor

Key points

• In J 12/19,  the patentee went bankrupt during the first instance opposition proceedings and the proceedings were interrupted under Rule 142(1)(b). After some time, the Legal Division announces the intention to resume the proceedings under Rule 142(2). The opponent disagrees, arguing that the insolvency proceedings were terminated by the patentee's dissolution, which is now non-existent. The opponent submits accordingly to the Legal Division. The Legal Division is of the opinion that the opponent is not a party to the proceedings in this respect, disregards the opponent's submissions, and issues a Communication to the opponent stating so. The opponent then files an appeal."
• That decision of the Legal Board of Appeal was issued on 28.04.2021. 
• The Legal Division took a new decision almost two years later, issued on 01.02.2023. That decision was: "rejecting the opponent's request that opposition proceedings be resumed pursuant to Rule 142 EPC with the opponent as the sole party. " The LD intended to resume the procedure with the proprietor as a party. 
• The opponent appealed. The Legal Board issued the present decision on 05.06.2023.
• Meanwhile, the patent has lapsed in all states. 
• On the admissibility of the appeal: "the refusal in the decision under appeal to intend resumption with the opponent alone has no immediate legal consequence either. However, it creates the threat that the LD will proceed to set a date for resumption with the proprietor as well. The opponent strongly disagreeing with the latter way to proceed, it would be required to appeal such a future decision. Due to this threat, a legitimate interest in the present appeal cannot be denied."
• I don't know whether this requirement for a legitimate interest is additional to Article 106 and 107 EPC, or whether it is a way to test "adversely affected" (or "decision")
• At issue is the (releatively new) second sentence of Rule 142(2) EPC: "If, three years after the publication of the date of interruption in the European Patent Bulletin, the European Patent Office has not been informed of the identity of the person authorised to continue the proceedings, it may set a date on which it intends to resume the proceedings of its own motion."
• The LBA clarifies that "intends" should be read as: the EPO may set a date on which the proceedings are resumed.
•  " on the basis of the capacities that Transito NV has under Belgian law, it must be concluded that it fails both prongs of the "legal personality" test of G 3/99."
• G 3/99 r.9: "The legal personality of a named entity under the EPC is decided on the same basis as before national courts, namely the capacity to sue or to be sued in its own name and on its own account." (hello DABUS, by the way, see here)
• "It follows that Transito NV no longer exist under Belgian law."
• "It is a generally recognized principle of national law and also under the EPC that legal entities which do not exist cannot bring or take part in proceedings. Transito N.V. is thus not able to take part in resumed opposition proceedings. 
• "The only way to reconcile the spirit of Rule 142(2), 2nd sentence, EPC, which aims to avoid endless interruptions of proceedings in cases where no person authorized to represent the affected party can be identified, with the aforementioned principle that legal entities which do not exist cannot take part in proceedings, appears to be a resumption of the proceedings without the affected party. 
• "The Legal Board concluded above that, if the present opposition proceedings are to be continued, then they must be continued with the opponent only. The Board must therefore set aside the LD's decision expressing the view that the proceedings are to be continued with both the opponent and the registered patent proprietor Transito NV that has ceased to exist.

  It will be for the LD to exercise its discretion pursuant to Rule 142(2), second sentence, EPC in respect of a possible resumption of the opposition proceedings. If the LD exercises its discretion by resuming the proceedings, then the proceedings will take place with the opponent only until the opposition division in turn subsequently exercises its discretion pursuant to Rule 84(1) EPC. If the opposition division does so by maintaining the continuation of those proceedings, then the opposition division will be bound by the LD's decision to continue them with the opponent only."

• I don't think the LD can arbitrarily keep the procedure interrupted, but we may have to see if the opponent has to appeal on that point as well. 

• I assume the opponent has requested that the proceedings be continued under Rule 84. We will have to see if the OD accedes to this request, or if the opponent will have to file an appeal on that point as well. 

EPO 

The link to the decision is provided after the jump.

T 0592/24 - Effect of claimed embodiment over other embodiment

Key points

• " In any event, the Board holds that reliance on post-published evidence to demonstrate an improved technical effect of the claimed subject-matter over a further embodiment originally claimed does not normally change the nature of the invention, as long as the technical effect is derivable from the application as filed and the improvement is not in contradiction with the original disclosure."
• compare: T655/24: "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 (see G 2/21, Headnote, Reasons 67 and 72)."
• compare T 314/20: 

6.24 Summarising the above, the Board concludes that the technical teaching of the claimed invention that the skilled person, with the common general knowledge in mind, understands at the filing date from the application as originally filed, encompasses the following.

(a) Combination 97 (i.e. the currently claimed combinations) gives rise, inter alia, to an increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases.

(b) Combinations 165 to 168 (i.e. combinations of empagliflozin with sitagliptin, vildagliptin, alogliptin and saxagliptin, respectively), having the same level of preference, achieve the same increase in plasma levels of active GLP-1 in patients with metabolic disorders and related diseases as combination 97.

6.25 By contrast, the purported technical effect relied upon by the respondent for inventive step is an increase in plasma levels of active GLP-1 which is stronger and more prolonged in time [in Combination 97 ] than the one achieved by combinations 165 and 166, i.e. combinations of empagliflozin with sitagliptin and vildagliptin, respectively (see point 6.9 above).

6.26 It follows from the analysis made in points 6.20 to 6.24 above that the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would not derive the increase in plasma levels of active GLP-1 relied on by the respondent (see point 6.25 above) as being encompassed by the technical teaching of the claimed invention and embodied by the same originally disclosed invention.

EPO 

The link to the decision is provided after the jump.

T 1176/24 - Rule 137(5)

Key points

• Cases about Rule 137(5) were more frequent in the past (see my article in epi Information 2018/2).
• The EPO was ISA and requested an additional search fee for claim 93. The applicant did not pay. Operative claim 1 is based on the features of original claim 93.
• "The Examination Division [sic!] concluded not to admit the Main Request under Rule 137(5) EPC since the amendments to the claims of the Main Request were based on original claim 93 that was found to be non-unitary during the international search phase."
• The Board: "the Examination Division erred in its application of Rule 137(5) EPC by merely finding that original claim 93 did not meet the requirements of unity when assessed a posteriori. This criterion is irrelevant in the present context when applying Rule 137(5) EPC."
• The Board's analysis is correct; the correct legal basis in G 2/92 (for Euro-direct applications at least). See GL H-II 6.2 (2025): "Rule 137(5) cannot be invoked. It does not apply when the applicant has not paid the [additional search fee]."
• The Board does not explicitly state the legal basis for the current Euro-PCT application (I would say: G 2/92 mutatis mutandis), but analyses that claim 93 had unity of invention with a searched claim.
• "The Board is therefore convinced that claim 1 of the Main Request merely constitutes a restriction to a particular embodiment of the subject matter as claimed in the original claim 90 (with reference to original claim 1) and can be subordinated to the original general inventive idea."
• "The decision under appeal is therefore to be set aside."
• "The Board stresses that a supplementary search concerning the aspects arising from the original claim 93, now reflected in claim 1 of the Main Request, would be in accordance with due process should the Examining Division deem it necessary. Moreover, such supplementary search appears to be highly appropriate in the light of the Examining Division's findings set out in point 12.2 of the grounds for the decision under appeal."

EPO 

The link to the decision is provided after the jump.

T 0011/25 - Fresh ground in appeal

Key points

• With the statement of grounds of appeal, the opponent raised for the first time an objection under Article 100(c) EPC. 
• In the appellant's [opponent]s' view, the objection should be admitted as it was closely linked to the objection of sufficiency of disclosure discussed before the opposition division (see point 1.3.1 above). Originally the features were disclosed in the order Fl-F2-F4-F5-F3 but in granted claim 1 the order was Fl to F5. This resulted in an aliud that did not find basis in the original application.
• The Board: 2.2 Even assuming that the objection of added subject-matter is linked, in substance, to the objection of sufficiency of disclosure, still the ground for opposition under Article 100(c) EPC was not submitted and substantiated in opposition proceedings, as acknowledged by the appellant (opponent). It thus constitutes a fresh ground for opposition. As the respondent (patent proprietor) explicitly did not approve the introduction of the new ground for opposition, the objection under Article 100(c) EPC can not be considered in appeal proceedings pursuant to G10/91.
• The Board, under sufficiency: "As the claim does not specify when steps F4 and F5 are executed (before or after the automatic uncoupling), the opposition division correctly stated (decision, 2.1.5) that this objection is rather a clarity objection, and clarity is not a ground for opposition."
• Suppose the proprietor argues, for the first time in appeal,  that in claim 1 the order of the steps was undefined, and because of that, the claim met Art. 83 (and suppose the argument is admitted). Suppose the opponent wishes to point out that the application as filed only provides a basis for the steps in a specific order, and that the opponent was initially unaware that the pre-grant amendment changing the order of the steps changed the meaning of the claim. Can the objection under Art. 123(2) be admitted (independent of the consent of the patentee)?

EPO 

The link to the decision is provided after the jump.

T 0644/24 - Amendments and new grounds of opposition

Key points

• The Board, in the headnote, in translation: "If the grounds for opposition under Article 100(b) EPC and Article 100(c) EPC were not raised in the opposition proceedings and the patent proprietor does not consent to their examination in the appeal proceedings, the patent may not be examined in its entirety for insufficient disclosure and added subject-matter in the appeal proceedings if the patent is amended in the opposition or appeal proceedings, but only insofar as the amendment brings about the insufficient disclosure or added subject-matter".
• This concerns the details of G10/91 hn. 3 about new grounds of opposition in appeal. 
• As far as Art. 100(c) is concerned, the current headnote is the same as the holding of T 693/98.
• Concerning Art. 110(b), the point is obiter, it seems. Still, the point seems valid, and the Board's reasoning is interesting (very German in the degree of detail, but good).

EPO 

The link to the decision is provided after the jump.

T 0867/24 - A very lengthy reply

Key points

• The Board: "The respondent's [opponent's] reply extends over 143 pages, is overly repetitive, poorly structured, and burdened with irrelevant or tangential arguments."
• "The respondent's submissions restate at length the EPC legal standards and basic case law principles, in several instances without a clear link to the actual discussion of the case at hand, and accumulate numerous citations of Board of Appeal decisions in an unspecific way " 
• "Objections of lack of novelty and inventive step in view of D28, D19 and D21 are unnecessarily duplicated by the citation of family members (respectively D30/D2, D1 and D5) with the same relevant content"
• "Regarding inventive step, the respondent's plethoric case includes objections combining D13 (or D12a, D12b, D12c) with any of D46, D28, D2, D5, D10, D16, D23, D39a-e, D40a-f, D17, D32, D19, D9, D41, D37, D34, D7 and D35 (see pages 72-78 of the reply). Page 79 adds or repeats objections combining D12a, D12b, D12c, D13 or D44a/D44b with D19/D1, D21/D5, D10, D16 and D22. Further objections are raised: - starting from D34, D35 or D46 in combination with D7, D8, D36 and D41, or - starting from D46, D35, D44a/D44b, D28, D19, D21, D10, D31 in combination with any of ... 
• "Article 12(5) RPBA provides that the Board has discretion not to admit any part of a submission by a party which does not meet the requirements of Article 12(3) RPBA.
• ... in the case where the submission lacks clarity and conciseness to the point that the Board and the other party or parties cannot assess its merits without undue burden, the discretionary power applies generally to all parts of the submission affected by the lack of clarity and conciseness. It is in such circumstances not for the Board or for the opposing party or parties to identify, within the host of objections raised with varying levels of substantiation, which objections are the most compelling and should be given emphasis."

•   For the above reasons, the Board did not admit the objections of lack of inventive step starting from any documents other than D13 (and D12a/D12b/D12c), or involving combinations with documents other than D22, D8, D19/D1, D21/D5 or D10."

• Did the opponent/respondent lose the appeal?  No.

• "The subject-matter of the main request does not involve an inventive step."

• The appeal of the proprietor is dismissed. 

   

• The point about the admissibility of the other attacks is, hence, obiter.  

•  T 0867/24 - A very lengthy reply 

EPO 

The link to the decision is provided after the jump.

R 0010/24 - Review of decision to hold inadmissible

Key points

• The EBA took some time to draft its decision (7 months), but the result does not disappoint.
• The petitioner complains of the TBA's decision to hold a submission inadmissible.
• The EBA, in the translated headnote: "Because of the severity of the interference caused by the non-admission of amended submissions under the provisions of the RPBA, i.e. Articles 12 and 13 thereof, the interpretation and application of those provisions, which qualify the right to be heard, are subject to substantive review and not merely to review for arbitrariness. In this respect, the right to be heard is infringed, for example, also where such provisions are applied in a manifestly incorrect manner. "
• On the admissibility:  "According to the petitioner, an objection concerning the first ground for review — procedural defects under ... Article 113(1) EPC... — could not have been raised during the oral proceedings before the Board of Appeal, since, following the rejection of the auxiliary request, the Board had been bound by that decision. In this respect, the petitioner relies on R 10/08 and R 3/10."
• "It was undisputed that a formal decision had been announced on the main request, which had prevented the Technical Board of Appeal from reopening the debate on that request when [if?] the objection [under Rule 106] was raised ( "als der Einwand erhoben worden sei")."
• According to the minutes, no objection under Rule 106 was raised. 
• "In R 3/10, at point 1.4.1, it was held as follows: since a Board of Appeal is bound by a substantive “decision” once it has been issued and can no longer rectify it subsequently, and since the purpose of the obligation to raise an objection under Rule 106 EPC is to give the Boards of Appeal the opportunity to remedy the defect before a decision is issued, an objection under the first alternative of Rule 106 EPC can no longer be validly raised after the decision has been issued (R 10/08 of 13 March 2009, point 3).
• "To the extent that the petitioner relies on decision R 3/10 as establishing an exception to the obligation to raise an objection under Rule 106 EPC, the EBA is inclined, in relation to the present case, not to dismiss the petition for review as manifestly inadmissible solely on account of the failure to raise such an objection." 
• The EBA appears to see a difference with point I.2.2 of  R 5/19.
• The EBA examines the case file in some detail and concludes that the opponent had raised the relevant objection in the appeal. Moreover, the objection was included in the OD's decision. Hence, the proprietor should have filed the responsive auxiliary request before the Board gave their preliminary opinion. 

• 
  

EPO R 10/24

R 0006/24 - (II) A difficult case for the EBA

Key points

• The petitioner complains that the TBA did not consider some of its arguments (which were not rejected as inadmissible), thereby violating its right to be heard. The petitioner points out that the written decision of the TBA did not specifically address the arguments. As such, that is correct. However, the question is whether the lack of specific written reasoning refuting the arguments demonstrates that the TBA did not consider those arguments.
• The EBA, in machine translation:  "21. The EBA agrees with the petitioner insofar as it is not immediately apparent from the decision whether and how the Chamber addressed the three arguments A to C. However, it appears that the Chamber at least took note of them from [point 3.1 of the grounds for the decision].
• [The EBA] does not share the [petitioner's] view that the mere omission of allegedly relevant arguments suggests that the party was denied its right to be heard. This view would ultimately force the Board to mention all of a party's arguments in its decision without exception. The deciding Board must primarily determine whether an argument is relevant to the decision. Nevertheless, the Board may take note of an argument and classify it as irrelevant, even if this classification is objectively erroneous. However, correcting such an error by the EBA through a request for review under Article 112a EPC would constitute impermissible substantive review of the decision.
• 23. On the other hand, the question arises: How can a party determine from a decision whether an argument deemed relevant to the decision was consciously or unconsciously ignored by the Board, or whether the Board examined it and deemed it irrelevant, if the argument is not mentioned at all (or at least not in an immediately apparent way)? This issue was also raised in the cited decision R 10/18 (see point 2.1.1.2 of the Reasons). 
• Ultimately, in that case, the Enlarged Board of Appeal examined the entire contested decision and concluded that, as a whole, it was clear that the Board had considered the arguments in question. The Enlarged Board of Appeal also noted that the Board's conclusion need not necessarily be substantively correct or comprehensible or understandable to the parties involved. In particular, it is not necessary to answer every argument of the parties (see point 2.1.2.3 of the Reasons: "Whether not answering the petitioner's essential arguments violates the right to be heard"). 
• This approach of the Enlarged Board of Appeal also appears appropriate in the present case in order to determine whether there has been a serious violation of the applicant's right to be heard."
• "The Enlarged Board of Appeal confirms the principle that parties do not have an unrestricted right to an exhaustive analysis of every single argument they put forward in support of their case. This is all the more true since it is a subjective assessment by the party whether an argument has been addressed and addressed sufficiently so that the party can understand without further difficulty why it was not accepted or considered. It follows that a party may have to accept that a decision contains no discernible reasons why an argument was not addressed further or perhaps not even mentioned. In this respect, the decision R 10/18 and the case law of the Enlarged Board of Appeal based on it are confirmed. The applicant's argument that the mere fact that an argument was not addressed or mentioned should lead to a successful request for review is rejected."

Limited but non-zero power to examine facts and merits

32. "However, this again leads to the question raised in point 23 of the communication of the Enlarged Board of Appeal cited above. An effective right must also be enforceable, and its enforcement must ultimately be capable of judicial review. The court must therefore be empowered to examine whether the right to be heard has been observed. The right to be heard enshrined in Article 113(1) EPC, and the derived right to have a party’s relevant arguments taken into account, can be perceived as effective rights only if, in review proceedings, the Enlarged Board of Appeal is able to examine not merely formally, but also effectively, whether those rights have been granted. It follows that the Enlarged Board of Appeal must, in principle, have the power to carry out such an effective examination. In other words, the possibility of an effective examination of the petition is also in the petitioner’s interest.

33. This raises the question of the permissible scope of the review. Even if it were limited to examining a rebuttable presumption, namely whether the right to be heard is to be regarded as having been observed unless the contrary is proven, the power must at least extend to examining the facts which, in the party’s view, have the potential to rebut that presumption. Where, in a particular case, a substantive assessment of a party’s submissions is indispensable for determining whether the party’s right to be heard was observed, the Enlarged Board of Appeal is also entitled to carry out such an assessment. It must be emphasised, however, that this finding by the Enlarged Board of Appeal has no formal legal effect confirming or setting aside the relevant decision-making of the Board. To that extent, the Enlarged Board of Appeal’s lack of power in this respect is not called into question (Case Law of the Boards of Appeal, V.B.3.5.3)."

• There is also a point about an argument that was, according to the other party, manifestly bound to fail and, for that reason, validly not expressly addressed in the TBA's written decision.
• The EBA, in point 43, citing from the EBA's preliminary opinion: "34. The question here arises as to what extent the Board of Appeal may and should examine the merits of an argument in order to determine whether it is manifestly unfounded and the Board could therefore leave it unanswered. Such power to examine the (at least prima facie) correctness of a party's submissions appears to contradict the fundamental prohibition against examining the correctness of the decision. However, if the EBA did not have such power, this would inevitably lead to the conclusion that it would have to find a violation of the right to be heard without exception if any objection were left unmentioned in the decision. The EBA considers this outcome untenable." (emphasis added)
• This means the EBA has competence to review whether an argument is manifestly bound to fail (on the merits). 

• 
  
• EPO 

The link to the decision is provided after the jump.

T 0847/24 - (I) Non-technical CAD method

Key points

• Claim 1 as granted is directed to "A computer-implemented method for configuring a surgical guide".
• "The Board considers that, in the context of the method defined in claim 1, the expression "computer-implemented" requires the method, i.e. all steps of the method, to involve a computer."
• "feature 1.6, interpreted as set out in point 5.2.4 above, is the only feature distinguishing the subject-matter of claim 1 of the main request from the method disclosed in D2. 
•  "It is common ground that feature 1.6 is non-technical when considered in isolation since it merely corresponds to the generation of abstract data representing a 3D structure for an implant. "
• The question is whether the method has a further technical effect, as required by G 1/19 for inventive step under the Comvik-approach.
• "Contrary to the appellant's view [proprietor's view], it is not decisive that the data produced by the claimed method, in defining the 3D structure of the configured implant, may reflect the properties of a physical object that may exist at some later point, namely the implant once manufactured. Rather, this physical object remains purely hypothetical as long as an implant having this structure is not manufactured. Hence, in the absence of a manufacturing step in claim 1, the data remains, first and foremost, mere data, which can be used in many different ways (see G 1/19, Reasons 98)."
• "The Board acknowledges that manufacturing the implant is a possible use of this data. As also pointed out in the decision under appeal (see Reasons 33.8.3), this may even be regarded as a probable use of the data. However, a possible, or even probable, technical use is not sufficient for the data to contribute to the technical character of the claimed method. What is required, in accordance with G 1/19, Reasons 137, is that the technical use be at least implicitly specified in the claim.
• "the Board agrees with the respondent [opponent] and the opposition division that although manufacturing the implant is a possible and even probable use of the 3D implant structure determined in accordance with feature 1.6, other uses which do not have any technical effect can also be realistically envisaged. ... For example, a user may simply want to compare the configured implant with existing implants, such as off-the-shelf implants. At least in such a case, no impact on physical reality would result from carrying out the claimed method."
• Compare T 799/24, not cited in the present decision.
• " It follows that feature 1.6 does not contribute to the technical character of the claimed method, certainly not over substantially the whole scope of claim 1. This feature thus cannot support the presence of an inventive step starting from D2."
• The above discussion was not specifically about feature 1.6. G 1/19 seems to consider whether the claimed method as a whole provides a 'further technical effect'.  Feature 1.6 is "determining a monolithic three-dimensional structure for the implant"  and could also be done mentally (it seems to me).
• The TBA includes the statement that "A feature that is non-technical as such may, however, still contribute to the technical character of the claimed invention as a whole (see G 1/19, Reasons 32; see also order of the UPC Court of Appeal of 17 April 2026 in Abbott v. Sinocare, UPC_CoA_901/2025, Headnote 1 and Reasons 112). A central issue is therefore whether this feature contributes to the technical character of the method defined by claim 1. Only if this is the case, and only to this extent, can it be considered for inventive step, following the COMVIK approach (see G 1/19, Reasons 84).".
• It may be observed that feature 1.6 does not contribute to the technical character of the claimed method as required by Article 52 (Article 52 is complied with by the claim reciting "computer implemented" in a different feature).
• 
  

EPO 

The link to the decision is provided after the jump.

J 0011/25 - Inadmissible appeal parent, status divisional

Key points

• In T 1385/24, the applicant filed an appeal against a refusal decision dated 18.07.2024. The notice of appeal was filed in time, and the appeal fee was paid, but the Statement of grounds was filed late. No remedy was applied for. The appeal was rejected as inadmissible by a decision dated 20.02.2025 (issued in writing and notified on 26.02.2025).
• A divisional application was filed on 05.12.2024. Was the parent application pending on that day?
• The Board, in machine translation: " The Board is therefore of the opinion that the view expressed in J 22/13 should no longer be followed. "
• J 22/13: "Since the divisional application was filed only after the time limit for filing the statement of grounds of appeal in the parent application had already expired, the Board considered the parent application to be no longer pending at that point: there was no longer any possibility of carrying out a substantive examination of the parent application. After the expiry of the time limit for filing the statement of grounds of appeal, no ordinary legal remedies existed, and the decision became final"
• "if – as in the present case – an appeal that was initially validly filed subsequently becomes inadmissible because the statement of grounds of appeal is not filed or is filed only after the expiry of the prescribed time limit, this is not a sufficient reason to make an exception to Article 106(1), second sentence, EPC and to consider the suspensive effect that initially took effect as having been lifted as soon as the time limit for filing the statement of grounds of appeal expired. Rather, the suspensive effect ends only with the conclusion of the appeal proceedings, in the present case, that is, after the Board of Appeal has determined the inadmissibility of the appeal by decision. This termination has no retroactive effect with regard to divisional applications that were filed while the suspensive effect was in force. "
• "it follows from the decision of the Enlarged Board of Appeal G 2/19 that it is very problematic to adopt a general concept of a manifestly inadmissible appeal. [The EBA] therefore declined to answer question 1, which used this concept. The  question, with its criterion of an "appeal that is inadmissible at first glance," relieD on an indeterminate legal concept that does not originate in the EPC and for whose specification no further indications can be found therein (Reasons A.IV)."
• G 2/19, question 1: "1. In appeal proceedings, is the right to oral proceedings under Article 116 EPC limited if the appeal is manifestly inadmissible?"
• It may be noted that German national law (national patent law) has the concept and dispenses with hearings in such cases. However, the details of the German practice are unclear to me.
• The published decision is anonymised because the divisional application (EP24217722.8) is not yet published.
• The Legal Board seems to suggest that a timely appeal by the applicant/proprietor against a grant decision may open the possibility of filing a divisional application, following J 1/24 and disagreeing with T 700/25, but leaves that issue open.
• The Legal Board recalls that a late-filed appeal (notice of appeal and/or payment of the appeal fee) is not inadmissible but is deemed not to have been filed (G 1/18) and explains that, hence, such an appeal does not open the possibility of filing an appeal. 

EPO 

The link to the decision is provided after the jump.

R 0006/24 - (I) When to object under Rule 106

Key points

• The EBA holds that a petitioner was not required to raise an objection under Rule 106 with respect to certain grounds for the petition. This is, of course, highly interesting, even more so because the petitioner's complaint is not about surprise reasoning in the Board's decision, but on the Board's (alleged) failure to address certain arguments of the petitioner (opponent). 
• The EBA, in translation: " the petitioner [opponent] raises a total of seven essentially independent objections alleging a violation of her right to be heard, which are summarized under the following three "aspects": (1) The Chamber did not properly consider several arguments put forward by the applicant concerning the interpretation and disclosure of [certain claim features].  (2) The Board also failed to address certain arguments  [of the petitioner/ opponent] ..."
• The EBA finds the first two aspects admissible even without a corresponding Rule 106 EPC objection.
• "a [Rule 106 objection ]was not already prompted by the communication to the Board of Appeal pursuant to Article 15(1) RPBA".
• "a distinction must be made between procedural acts of the Board that are still pending and those that are demonstrably completed, such as a procedural measure or an admission decision that has a direct (procedurally relevant) legal consequence. An objection under Rule 106 EPC during the ongoing proceedings can only be expected for the latter."
• The EBA here seems to depart from R 17/23 (blog post).
• " The petitioner is correct in asserting that Article 113(1) EPC, and consequently also Article 112(2)(c) EPC, refers to the final decision on the merits by the body competent to decide the case, and not to its preliminary opinions. The petitioner is also correct in asserting that it is unreasonable to expect a party to raise a formal objection during the proceedings with regard to every single statement made by the Board, in the expectation that this objection will be reflected unchanged in the decision and perhaps serve as grounds for a petition for review. Such a practice unduly delays the proceedings, since the Board must not only take note of an objection under Rule 106 EPC, but also address and decide upon it [CLBA V.B.3.7.2.5] ... Therefore, the grounds for the application relating to the first two aspects are admissible with regard to Rule 106 EPC."
• Regarding 'decide upon it':  this follows from Rule 106: "only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except ..." (see also R 6/22: the party raising the objection must also check if the Board explicitly dismisses it and if not, raise the objection more clearly). 
• The EBA does not explicitly apply these general statements to the facts of the case. This makes the decision difficult to understand. The TBA had, in the preliminary opinion, referred to Art. 13(2) RPBA in connection with any submissions the opponent wished to file afterwards. The opponent indeed filed a letter after the preliminary opinion. I understand that the arguments presented in that letter were (allegedly) not dealt with in the preliminary opinion. It may be inferred that since there was no decision to hold the letter inadmissible under Art. 13(2) RPBA, the opponent could assume that the TBA would consider the arguments in that letter on their merits in the written decision. 
• The EBA holds that Rule 106 objections are only required for procedural measures or admissibility decisions that have a direct (procedurally relevant) legal consequence (and not for any statements in the preliminary opinion).
• It remains to be seen how a TBA deals with a valid Rule 106 objection after the procedural decision has been announced during oral proceedings. May the TBA reverse the procedural decision?

 EPO 

The link to the decision is provided after the jump.

T 0080/24 - Request to hold a request inadmissible

Key points

• "At the oral proceedings before the board, the opponent requested that auxiliary request 13 not be admitted into the appeal proceedings due to a belated substantiation of this request." 
• "The opponent argued that auxiliary request 13 had not been substantiated when it was first filed in opposition proceedings as auxiliary request 1 in the patent proprietor's reply of 16 December 2022 to the notice of opposition. The request had also not been substantiated when it was re-filed as auxiliary request 13 with the patent proprietor's reply to the opponent's appeal."
• "The patent proprietor requested that the opponent's request not be admitted into the appeal proceedings as it was late-filed and there were no exceptional circumstances justifying its admittance at such a late stage of the proceedings."
• "the opponent argued that [the objection against the auxiliary request] had been raised at a late stage for tactical reasons. If it would have requested the non-admittance of auxiliary request 13 immediately after it was filed with the patent proprietor's reply, there would have still been an opportunity for the patent proprietor to then substantiate the request before the notification of the board's communication. For this reason the opponent decided to wait until the oral proceedings to make the request not to admit the auxiliary request."
• The Board finds AR-13 to be allowable.
• As a comment, there is a tension. On the one hand, I understand that the admissibility of submissions is examined by the Board ex officio, also in inter partes cases. On the other hand, the opponent's tactical behaviour is not to be rewarded. The Board does not indicate whether it examined the requirement of Art. 12(3) RPBA. Perhaps it was self-evident how the feature added to the claim in the AR was suitable to provide for an inventive step.

EPO 

The link to the decision is provided after the jump.

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.