T 0913/25 - Rule 63

Key points

• The Examining Division refused the application inter alia on the ground of Rule 63 - lack of a search because "it was impossible to carry out a meaningful search".
• The Board, in translation:  "Rule 63(3) EPC deals with the procedural consequences of the applicant's failure or inadequacy to file a statement in response to the invitation. It does not allow the absence of a search report to be transformed into an independent ground for refusing the application. Where, at the examination stage, it appears that the claimed subject matter or part thereof is amenable to a useful search, it is normally for the Examining Division to order ( "faire effectuer") a further search"
• Rule 63(3): "When a partial search report has been drawn up, the Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified."
• Note, the provision does not deal with the consequences of not responding to the invitation.
• Perhaps Rule 63(2) and the invitation of Rule 63(1) were meant. 
• The Board finds that the claims are clear and also have sufficient basis in the parent application. Hence, the Rule 63(3) invitation was not justified. 
• "Neither Rule 63(2) EPC nor Guidelines B-VIII, 3.2.2 provide, in the circumstances of this case, a legal basis for refusing any search once the applicant has identified searchable technical subject matter. These provisions cannot be applied in such a way as to deprive the applicant of any examination of the patentability of identifiable claimed subject matter, except in cases of a genuine and duly justified impossibility of carrying out a meaningful search."
• Note that Rule 137(5) EPC, second sentence, provides that amended claims may not relate to "subject-matter not searched in accordance with Rule 62a or Rule 63." 
• The purport of this rule, as applied to Rule 63, is not entirely clear to me. If the amended claim relates to subject-matter that is not searched under Rule 63, it must suffer from a serious defect under one of the other requirements of the EPC that makes a meaningful search impossible. Isn't that underlying defect then the proper ground for rejecting the amended claims? 
• The original OJ notice (OJ EPO 2009, 299) is unhelpful, which is unsurprising since the provision was introduced as part of the "raising the bar" initiative of the then EPO President (Ms Brimelow). Any suggestions from readers are welcome. 

EPO 

The link to the decision is provided after the jump.

T 1372/24 - Second non-medical method claim (?)

Key points

• Is the preamble of a method claim limiting if it recites a technical effect? I.e., is the method anticipated by a prior art disclosure of the active steps of the method? What if the claim preamble recites a purpose that is not an implicit further limitation of the method?
• Claim 1 at issue: "A method of reducing spotting on dishware during automatic dishwashing, the method comprising the step of subjecting the dishware to a wash liquor comprising [a certain compound]"
• There is also a second non-medical use claim (claim 10). 
• D2 concerns biodegradable complexing agents and their use in products such as dishwashing detergents. The method is the same as in the patent, but D2 does not mention the effect of reduced "spotting". 
• "The board came to the conclusion that, in the present case, novelty is established by the purpose-related features alone.  "
• According to the opponent, "a reduction of spotting was inevitably achieved when dishware was subjected to a wash liquor free of phosphate and dispersant polymer and comprising at least 700 ppm MGDA. Therefore, as set out in T 1931/14 (point 2.2.4 of the Reasons), the stated purpose had no limiting effect on the method claim. 
• See my blog post about T 1931/14. The case is followed in the GL (F-IV, 4.13.3 "On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, this technical effect has no limiting effect on the subject-matter of the claim."
• "However, the board does not agree with this for the following reasons. 
• "the board does not follow the approach taken in T 1931/14 "
• The Board observes that under G 2/88, the purpose provides novelty for use claim 10 (this seems correct to me). 
• The Board: "The same applies to method claim 1. The Enlarged Board of Appeal regards use claims and method claims as belonging to the same category, namely claims to a physical activity (G 2/88, point 2.2 of the Reasons). Whether one and the same teaching is expressed as a method of reducing spotting (claim 1) or as a use for the reduction of spotting (claim 10) is merely a question of wording and not of substance. There is therefore no reason why the considerations developed in G 2/88 and G 6/88 for use claims should not also apply to method claim 1."
• The TBA could have cited G 5/83 r.11: "The European Patent Convention, in general, allows both method claims and use claims but whether any activity is claimed as a method of carrying out the activity (setting out a sequence of steps) or as the use of a thing for a stated purpose (the sequence of steps being implied), is, in the opinion of the Enlarged Board, a matter of preference. For the European Patent Office there is no difference of substance. In the context of the present case" (and for that reason,  Art. 53(c) EPC is not escaped by rephrasing a medical method claim as a use claim). 
• G 2/88: The TBA does not cite the part of G 2/88 that deals with novelty of use claims and the limiting effect of a recited purpose for such claims. That part of G 2/88 speaks only of uses of known compounds, not of methods (The key part is in r.9: " In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention. ").
•  R. 2.2 of G 2/88, cited by the TBA, in fact states a terminology that the EBA did not adopt in G 2/88 ("There are basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use). These two basic types of claim are sometimes referred to as the two possible "categories" of claim. In this decision [i.e., G 2/88], however, the word category is used to refer generally to the various different possible classifications of claim. "
• See also CLBA I.C.8.1.3.

EPO 

The link to the decision is provided after the jump.

T 0324/24 - Undisclosed disclaimer for accidental anticipation

Key points

•  Claim 1 of the main request includes a disclaimer: "except a solution of 60 U/100 myl transglutaminase in 50% glycerol, 1 mM glutathione, 150 mM NaCl"
• " Claim 1 concerns a liquid enzyme preparation that has a basis in claims 1 and 3 of the application as filed, further amended by the introduction of the disclaimer  "
• "The opposition division considered that this disclaimer was allowable because it excluded an accidental disclosure in document D1, a doctoral thesis  "
• "G 1/03, a disclaimer which is not disclosed in the application as filed is allowable to restore novelty by delimiting a claim against, inter alia, an accidental anticipation under Article 54(2) EPC. An anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention"
• "D1 is therefore concerned with the preparation and use of a liquid transglutaminase solution for non-toxic cross-linking of a product for use in humans. This is a similar purpose as that described in the patent for the claimed preparation which [is ~PdL]  the cross-linking of proteins in food industry (paragraphs [0002] and [0003] of the patent). The disclosure in D1 is hence not so unrelated and remote from the patent that a skilled person would never have taken it into account when working on the invention, as required by G 1/03"
• "As to the [patentee's]' assertion that if the appellant's arguments were followed, an undisclosed disclaimer could never be drafted, the board notes that an undisclosed disclaimer is indeed an exception that is allowable only under very particular circumstances. The conditions for qualifying as an accidental disclosure are therefore by its very definition rarely met. Hence, this argument is unconvincing. 
• The auxiliary request deleting the product claim, keeping the method claim, was filed after the Board issued their preliminary opinion and is not admitted. 

EPO 

The link to the decision is provided after the jump.

T 0633/24 - Removing dental plaque is medical method

Key points

• Claim 1 as granted reads: "Use of a whitening dentifrice composition for whitening a tooth surface in a human or animal, wherein the whitening dentifrice composition comprises: a blue dye; [and] a zinc salt, wherein the whitening dentifrice composition provides a greater whitening benefit to a tooth surface in comparison to a dentifrice composition that does not contain the zinc salt; and an orally acceptable vehicle." 
• "Independent claims 1 and 8 as granted relate to the use of a whitening dentifrice composition for whitening a tooth surface in a human or animal."
• The question is whether use claim 1 is prohibited by Art. 53(c) (note, according to G 5/83, hn.1, Art. 53(c) applies equally to claims written as use claims).
The Board: "[the] mere whitening effect resulting from the deposition of the blue dye [...] in the dentifrice appears to represent a purely cosmetic effect, which is not necessarily linked to any therapeutic or related prophylactic effect.". The Board also agrees with the patentee that "any inherent antibacterial activity of the zinc salt comprised in the composition does not necessarily result in a therapeutic effect"
• However, "[the] whitening dentifrice composition [specified in the claim] is defined in an open manner to comprise a blue dye and a zinc salt. The defined uses of this whitening dentifrice composition [therefore] encompass embodiments in which the whitening effect, defined as the purpose of the claimed uses, results at least partially from the removal of plaque [...]. In such embodiments, the defined whitening effect is inseparably linked to the therapeutic or prophylactic effect of plaque [] removal conventionally associated with the use of a dentifrice composition, as indeed foreseen in the patent [...] These embodiments are not excluded from the scope of granted claims 1 and 8, which therefore encompass subject-matter excluded from patentability under Article 53(c) EPC."
• A bit more explanation would have been useful.  I infer that the Board considers that a dentrifice composition implicitly comprises a third component, besides the dye and the zinc salt, and that this third component provides for plaque removal in use. 
• See  T 0290/86 ( "removal of plaque from human teeth may also be considered to be a method excluded from patentability"). See also T 2071/15: "The [dental care] product's capacity of preventing acid formation achieves the therapeutic effect of preventing [...] caries and tooth erosion."
• 
  
• The auxiliary requests inserting the term "cosmetic" are not admitted under Art. 13(2) RPBA. The Board adds that: "In any case, the introduction of the term "cosmetic" is not equivalent to a disclaimer excluding therapeutic methods as envisaged in G 1/03. It is not apparent that the mere introduction of the qualification "cosmetic" is apt to overcome the objection under Article 53(c) EPC, since it does not exclude embodiments in which the whitening effect results from plaque or tartar removal."
• Possibly, the disclaimer "non-medical use" would be held unclear under Article 84.

Art. 123(3)

• The further auxiliary request with product claims has a problem under Art. 123(3): "the claims of auxiliary requests 7-11 define products for use in a method which is not directed exclusively to a therapeutic effect and may therefore not qualify as purpose-limited product claims within the meaning of Article 54(5) EPC. They are therefore directed to products, with the consequence that the manufacture of the defined products falls within their scope of protection, unlike the granted claims. Accordingly, and in line with T 1635/09 (Reasons 15.1), auxiliary requests 7-11 contravene Article 123(3) EPC."
• However, see G 2/88 hn.1: "A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered." 
• I do not find G2/88 hn.1 very easy to understand when it instructs that national law is not to be considered. Applied to the present case: how do we know that the manufacture of the product is within the "scope of protection" of a product claim, if we are not allowed to consult national patent laws? (see e.g. Art. 25(a) UPCA) ?

EPO 

The link to the decision is provided after the jump.

T 1168/24 - Prohibition of reformatio in peius

Key points

•  This is the second appeal. In the first appeal decision, the Board found a violation of the opponent's right to be heard in connection with AR-1 filed during the first oral proceedings before the OD, set aside the first OD decision to maintain the patent in amended form, and remitted the case. In particular, the OD had decided on the wrong version of claim 1 of AR-1 by assuming that it contained a feature that was not actually recited in the claim.
• The current decision does not really explain the relevant facts, but it appears that the proprietor filed amended claims after the remittal that were broader than the set of claims upheld by the OD in the first decision. Moreover, the proprietor had withdrawn its appeal in the first appeal procedure, thereby becoming the respondent. The OD therefore did not admit the amended claims, based on the prohibition of reformatio in peius. 
•  The question is whether the prohibition of reformatio in peius applied.
• "The proprietor has argued that PRP does not apply in the second first instance proceedings if the board finds that the first instance decision suffered from a substantial procedural violation and remits the case back to the first instance department. It based this argument upon T 727/19 and T 2086/13."
• "The Board does not agree that PRP does not apply in this case. The exception recognised in T 727/19 arose in fundamentally different circumstances from those of the present case: there was an objectively justified suspicion of partiality on the part of the opposition division (T 727/19, Reasons 2.18). A finding of partiality undermines the legitimacy of the entire earlier decision making process and accordingly justifies an exceptional departure from PRP. 
• "By contrast, in the First Board Decision, the substantial procedural violation was a violation of the right to be heard with respect to auxiliary request 1 submitted at the oral proceedings before the opposition division (see T 505/20, Reasons 14). This violation of the right to be heard, while serious, does not undermine the legitimacy of the entire earlier decision making process. 
• The Board, obiter: "Even if it is assumed that the present case falls into one of the exceptions to PRP, the Board notes that a proprietor is first expected to attempt to comply with PRP by filing restricted claims according to the following scheme [the three steps, as set out by G 1/99]
• G 1/99 indeed specifies the three steps for the event of an "objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment". 
• "The principles of G 1/99 are of general applicability, thus the Board does not see any reason to limit the above principles, which derive from G 1/99, solely to the fact situation of G 1/99."
• I am not sure if the three steps of G 1/99 should also apply in a case of suspected partiality (e.g.  T 727/19 said that the PRP principle did not apply at all after the remittal). At any rate, the present decision is obiter on that point. 

EPO 

The link to the decision is provided after the jump.

T 0944/24 - Main request rejected, appeal inadmissible

Key points

• In the case at hand, the opposition division decided that the patent proprietor's main request did not meet the requirements of Rule 80 EPC ...
• The proprietor appeals. What can go wrong?
• " ... [the OD] admitted the new main request and new auxiliary request 1 submitted by the patent proprietor during the oral proceedings into the proceedings, and considered that the new main request [was allowable]"
• "according to its reasons, the decision under appeal did not accede to the patent proprietor's initial main request. However, it is clear from the file, in particular from the cover page of the decision, point 9 of section I and section III of the decision and section 6.1 of the minutes of the oral proceedings, that the patent has been maintained in amended form based on the main request and the amended description submitted during the oral proceedings. The final main request of the patent proprietor was therefore granted. "
• The proprietor was therefore not adversely affected by the OD's decision, and its appeal was inadmissible.

EPO 

The link to the decision is provided after the jump.

T 0546/26 - Generating synthetic training data

Key points

• The application was filed in 2024, with a priority date in 2023. The refusal decision was issued on 26.03.2026, as a "decision according to the state of the file" not containing substantive reasons but referring to an earlier Communication, namely the Annex to the summons to oral proceedings (EPO Form 2061). The Notice of appeal, including the Statement of grounds, was filed the next day. The Board's decision was issued on 26.08.2026, so within five months.
• The Examining Division rejected this application, directed to "Generating synthetic training data", as lacking an inventive step.
• Regrettably, the Board does not decide whether the claimed method is inventive or whether the distinguishing features (relating to AI) are technical for the purposes of the Comvik approach.
• Indeed, the Board notes that the Examining Division had overlooked in the preliminary opinion (summons) one of the features that were added to the claims by the earlier amendment.
• This is a substantial procedural violation, and the case is remitted.
• Hiccups with Form 2061 were more frequent in the past (see here). 
• After receiving the summons, the applicant expressly requested a written decision (see the letter). The applicant, however, did not point out, at that time, that the ED overlooked one of the features in the Annex. 

EPO 

The link to the decision is provided after the jump.

T 0642/25 - AI is still not technical

Key points

• "The application relates to fraud detection in digital transaction data. A machine learning system is to be configured to produce, for a proposed transaction received as input, [an output] value [...] indicative of whether the proposed transaction represents an "anomaly"
• "Neither a machine learning model (or "system") nor the training (be it supervised or not) of such a model has per se a technical character. In the present case, the trained machine learning model serves the purpose of determining the likelihood that a transaction is an anomalous one, which is not a technical purpose. Consequently, achieving this purpose at a high degree of accuracy is not a technical problem"
• The claimed method comprised generating an "augmented labelled training set" and training a machine learning system with that data set.
• The Board: "Determining whether a (financial) transaction presents an "anomaly" is not per se a technical problem. Hence, it is not apparent that the trained supervised machine learning system, when used to measure a degree of anomaly for a given transaction, produces any "further technical effect". In particular, no technical effect is implied by the fact that the system has been trained with the augmented, labelled training set. Consequently, the "trained supervised machined learning system" has no technical character and, hence, its production does not represent or imply a technical effect."
• "In its preliminary opinion (point 13), the board additionally expressed doubts that the claimed method actually solved the problem formulated by the appellant (see point 5.2 above) over the whole scope of the claim, but this issue was ultimately left open."
• I'm still looking forward to a published decision where there is no doubt at that point, i.e., that the claimed method provides a better machine learning system (e.g., more hardware-efficient or energy-efficient). 

EPO 

The link to the decision is provided after the jump.

T 1057/24 - (II) Claim amendments after remittal

Key points

• "The board agrees with the parties that the case should be remitted to the opposition division for further prosecution.
• It does not, however, see any legal basis for [the opponent's] additional request that the further prosecution be limited to the claim request that was considered [by the Board] to comply with Article 123(2) EPC, [i.e. current] auxiliary request 5c."
• The Board gives an overview of the legal framework for the procedure after a remittal, which seems useful but not entirely complete. I cite it below, omitting the extensive case law references. See also the post on T 781/24.
• "The EPC contains no restrictions on the scope of examination following the remittal of a case by the board beyond those set out in Article 111(2) EPC [*]. This provision stipulates that, if the board remits a case [for] further prosecution to the department whose decision was appealed, that department is bound by the ratio decidendi of the board, in so far as the facts are the same. Findings of fact on which the board's decision rests are, thus, not open to reconsideration []. In opposition proceedings following the remittal for further prosecution, however, the factual basis underlying a decision on appeal may subsequently change [**], not only by the identification of further prior art, but also through amendments to the patent claims [***]. Such amendments are not precluded by the binding effect of Article 111(2) EPC, provided that they do not contravene the ratio decidendi of the remitting decision [].
• * - I don't think this is entirely correct: we also have the principle of res judicata and the continued application of the prohibition of reformatio in peius (the latter is not applicable in the case at hand since the proprietor had filed the appeal).
• ** - The meaning of the phrase "the factual basis underlying a decision on appeal" in this context is unclear to me. Was is clear, however, is that parties may, seek to introduce new assertions of facts after the remittal, and such factual allegations may or may not be admitted into the procedure. 
• *** - I don't think claim amendments are facts, see Art. 123(1) vs. Art. 114(2).
• "That is not to say that a patent proprietor should be free to redefine the claimed invention after remittal and have the opposition division examine any subject-matter that was not already settled by the appeal []). Further prosecution of a case after remittal should, as a rule, build upon the situation that existed at the end of the appeal proceedings that led to the remittal []). As was the case prior to the appeal proceedings resulting in the remittal, the opposition division has discretion to admit amended requests (Article 123(1) EPC, Rule 81(3) EPC) and may do so in application of established criteria, such as prima facie allowability, complexity of the amendments, procedural economy, the stage of the proceedings, and whether the amendments constitute a legitimate response to new developments in the proceedings []. Confining the further prosecution of a case after remittal to a particular claim request would, in effect, fetter that discretion thereby contravening the EPC."
• "In view of the above, it was decided to remit the case to the opposition division for further prosecution."

EPO 

The link to the decision is provided after the jump.

T 1057/24 - (I) Reasoning articulated only in the written decision

Key points

• The proprietor files a new auxiliary request with the Statement of grounds.
• "To correctly assess whether the claims of auxiliary request 5c should have been submitted in the proceedings before the opposition division it is necessary to take a closer look at the file history."
• "At the oral proceedings, the opposition division changed its view on feature 1.5 and concluded that the amendments to claim 1 of the patent as granted extended beyond the content of the application as filed."
• " In response thereto, the appellant [then the proprietor] filed nine sets of claims during the oral proceedings, including the claims of auxiliary request 5a "
• AR-5a was held not allowable.
• At that point in the oral proceedings, the appellant filed a further set of claims of auxiliary request 5b 
• "After discussion, the chairman announced that auxiliary request 5b was not admitted as it was not prima facie allowable in view of Article 123(2) EPC (point 10.7 of the minutes). Also the eight auxiliary requests filed during the oral proceedings together with auxiliary request 5a were not admitted."
• "Given that the appellant was afforded the opportunity to file, firstly, the claims of auxiliary request 5a and of eight further auxiliary requests and, subsequently, the claims of auxiliary request 5b, the board is in agreement with respondents I and II that also the claims of auxiliary request 5c could have been filed on either of those occasions during the oral proceedings."
• "Could" is not the relevant criterion, see Art. 12(6) RPBA.
• "Nevertheless, it should be borne in mind that the auxiliary requests filed at the oral proceedings were triggered by the opposition division's change in view on the allowability of the amendments to feature 1.5. Upon learning from the opposition division that the wording "in contact with" had a basis only in relation to an outer covering comprising a heating tape sublayer, the appellant sought to address this issue by filing nine sets of claims, ..."
• "To the extent that the rejection of auxiliary request 5a was predicated on the opposition division's view that it would be technically incongruous to install two different heating elements in the same hose, that objection concerned considerations of lack of clarity rather than compliance with Article 123(2) EPC. In any event, this reasoning was articulated only in the written decision effectively leaving the appellant with no opportunity to comment on it beforehand."
• This seems a substantial procedural violation. However, the Board approaches it differently.
• "[T]he board concludes that the circumstances of the appeal case justify admitting auxiliary request 5c into the proceedings (Article 12(6), second sentence RPBA)."
• Note, the phrase "the circumstances of the appeal case" is used in Art. 12(6) RPBA primarily to refer to developments in the appeal procedure, not evidently to circumstances of the procedure before the OD (to quote the explanatory remarks: "[The provision] allows for their admittance where the circumstances have changed at the appeal stage."
• The Board finds that the claims meet Art. 123(2).
• The Board also examines the claims for clarity (in line with G 3/14).
• The Board decides to remit the case for further prosecution.
• More on that aspect in a future post.

EPO 

Pending R 11/26 - swift handling

Key points

•  A very quick post to flag that this petition for review was filed on 07.09.2026. 
• The panel was established on 08.09.2026, and the notification of the commencement of the proceedings was issued on 09.09.2026.
• This makes for quite a change from past practice. 
•  To cite the Explanatory Remarks to the EPC 2000, Article 112a EPC, from OJ 2007 Special Edition 4 (link): 
• 12. "The possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties. "
• 18. "In the interest of a quick and effective screening of petitions for review which are clearly inadmissible or not allowable, special procedural provisions apply to the three-member panel of the Enlarged Board established under Article 22(2), second sentence, and Rule 109(2) EPC 2000 (see explanatory remark n° 4 to Article 22 EPC). "
• "The proceedings before this panel shall be as simple and short as possible."
• "Therefore, this body shall decide in written* summary proceedings without the involvement of other parties and on the basis of the petition (see Rule 109(3) EPC 2000). A quick screening procedure at the outset of review proceedings to sort out petitions which clearly cannot be successful is essential in order to avoid an inappropriate prolongation of legal uncertainty for third parties. It is also of great importance to counteract effectively intentional prolongation of proceedings by filing a petition for review." (* - but with oral proceedings on request; the text is imprecise on that point)

EPO 

The link to the decision is provided after the jump.

G 1/25 - Additional rules for claim interpretation

Key points

• The EBA in G 1/25 essentially said that inconsistencies between the description and the claims sometimes must be removed from the application (by amending the description and/or the claims).  The debate on when precisely is lively (see the IPKat blog, the blog of Mr Thomas, and LinkedIn). I have nothing to add to that debate on this weblog for now.
• The debate concerns the interpretation of the order/headnote of G 1/25: "If the claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with, it is necessary to adapt the description, including any drawings, to the amended claims so as to remove that inconsistency."
• The EBA gave some additional rules for claim interpretation. 
• These additional rules help to apply the instruction of G1/24 that "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC". 
• The EBA, in G 1/25: "G 1/24 is not to be understood as establishing a sequential method under which the claim wording is first construed in isolation and the description and drawings are consulted only at a later stage if uncertainty remains." Instead, "claim interpretation is the result of reading the claims, the description and drawings as a unitary process ("holistic approach")."
• Note, the rejected sequential method involves two aspects: using two steps, and carrying out the second step " only ... if uncertainty remains" after the first step. I'm not so sure what is wrong with proceeding step-by-step, provided you always carry out the second step.  
• "The description and drawings may affect the meaning which the skilled person attributes to the claim wording, but they cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis."
• "In line with this approach, a person skilled in the art reading the claim in the context of the description and drawings will try to take a definition found in the description at face value. As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and drawings, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects" (approving of T 439/22, points 3.4 and 6)
• "G 1/24 was concerned with claim interpretation when assessing patentability under Articles 52 to 57 EPC. Its reasoning nevertheless identifies general principles of claim interpretation applied by the Boards of Appeal." (including Art. 123(2))
  
  
• Separately: "38. If, for example, a claim has successfully been amended to meet the requirement of non-obviousness in Article 56 EPC, but a statement in the description, including any drawings, expresses a technical teaching reflecting the claim before this amendment, and this statement thus conflicts with the fulfilment of the requirement of non-obviousness, this inconsistency in the description, including in the drawings, has to be removed."
• I don't know why the EBA does not use the term "inventive step". Non-obviousness sounds American to me. 

EPO 

The link to the decision is provided after the jump.

T 0942/25 - Inventive step of GUI

Key points

• The decision is just a reminder/tutorial on the EPO's assessment of inventive step of GUIs. However, see UPC CoA 17.04.206 (PI proceedings) - discussed here at the IPKat for a seemingly different approach.
•  The UPC CoA in the most relevant part: "These are all technical measures resulting in the technical effect of improved assistance to the user’s diabetes control by providing means to identify the effect of certain events on the monitored glucose levels (cf. paragraphs [0090] and [0093], last sentence). The fact that the user ultimately decides which action to take based on the information provided by the system, does not make the features non-technical. The features generate the relevant displays through user interaction and technical means resulting in the technical effect of improved diabetes control. These measures are technical and certainly contribute to the technical character of the invention. They should therefore be considered for assessing inventive step. " (point 114) 
• The application relates to the previewing of audio files. According to the application, a user can preview an audio file from a list of audio files by listening to a preview clip selected on the basis of the cursor's position in that list. A progress bar visualises the playback progress of the audio preview clip for users.
•  feature DF2 merely specifies that playback-progress information is presented to the user also during preview mode. Consequently, feature DF2 concerns merely the content to be presented ("what" is presented).
• In accordance with established case law, the content to be presented ("what" is presented) and the form of presentation ("how" the content is presented) are both considered to be non-technical aspects, unless they contribute in rather exceptional cases to the solution of a technical problem (see the decisions ...
•  the board is not convinced that the features DF2 and DF3 achieve any technical effect over the whole scope of the claim. These features concern merely aspects of a non-technical presentation of information as such (Article 52(2)(d) EPC).
• The board rejects the appellant's argument that the claimed presentation of information would display an internal state of a machine which contributed to a technical effect. 
• The board is aware that in decision T 115/85, Reasons 7, the responsible board took "the view that giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem". However, according to decision G 1/19, Reasons 82 to 84, it is not decisive for inventive step that a claimed invention can be said to address "basically a technical problem"; rather, what matters is whether the claimed features credibly achieve a technical effect over the whole scope of the claim. Already for this reason, the above cited statement made in decision T 115/85, Reasons 7, is in the board's view insufficient to establish whether features relating to a presentation of information contribute to technical character and can be a basis for acknowledging inventive step.
• The prevailing case law follows different criteria for examining whether features related to a presentation of information contribute to inventive step (see e.g. decisions T 336/14, Reasons 1.2 and T 1802/13, Reasons 2.1.5). It has to be analysed whether the graphical user interface together with the cognitive content presented and together with the manner in which this cognitive content is presented credibly assists the user in performing a technical task (related to "why" that content is presented) by means of a continued and/or guided human-machine interaction process.
•  In the case in hand, the playback progress of audio files does not assist the user in performing a technical task since, in the context of claim 1, listening to audio preview clips is an act of content consumption rather than the performance of a technical task. 
• This may very well be a factual difference with the UPC CoA case.
• Moreover, the distinguishing features do not contribute to "a continued and/or guided human-machine interaction process". The distinguishing features are also not directed to any human-machine interaction.
• It is not so clear if the UPC CoA requires such a "continued and/or guided human-machine interaction process". See also T 0752/19 discussing the broken technical chain fallacy, which is the pertinent legal concept.

• Since the distinguishing features do not contribute to a technical effect they do not enter into the assessment of inventive step (see decision T 154/04, Reasons 5).

• It follows that the method of claim 1 lacks inventive step (Article 56 EPC) in view of document D3."

EPO 

The link to the decision is provided after the jump.

T 0742/24 - Disapproval of the text in opposition

Key points

• "In a first communication pursuant to Article 15(1) RPBA, the board provided the preliminary view that none of the respondent's claim requests were allowable, and that the patent was to be revoked. 
• "With letter dated 3 December 2025, the appellant [opponent] requested, in the event that the respondent should withdraw its consent to the text of the patent, that - the board nevertheless issue a fully reasoned decision, - as an auxiliary measure, the board dismiss the request (i.e. the withdrawal of approval of the text) as inadmissible due to an abuse of proceedings, "
• "With letter dated 12 December 2025, the respondent stated the following: "We hereby withdraw the proprietor's approval of the text of European Patent No.  ..."
• "Oral proceedings by videoconference took place as scheduled on 15 January 2026 in the presence of the appellant [opponent] and in the absence of the respondent [patentee]."
• " During oral proceedings, the [opponent]  withdrew the request submitted with letter dated 3 December 2025 that the board dismiss the [proprietor's] withdrawal of the approval of the text of the patent as inadmissible due to an abuse of proceedings. "
• This is a pity. 
• The Board confirms T 73/84: "The board does not agree that the decisions establishing the principle that a withdrawal of approval of the text leads to the revocation of the patent did not include proper reasoning. In particular, in the case underlying T 73/84, the deciding board explained that, since under Article 113(2) EPC the EPO must consider the European patent only in the text submitted to it, or agreed by, the proprietor of the patent, the withdrawal of approval left no text on which the appeal could be considered, the only remaining possibility being revocation of the patent "
• " It follows that "submitted" in Article 113(2) EPC does not refer merely to a historical act of filing, but to a continuing expression of agreement. A text is "submitted to" the EPO within the meaning of that provision only as long as the proprietor maintains agreement to it. Under Article 113(2) EPC, the EPO cannot decide upon a text withdrawn, or no longer agreed to, by the patent proprietor, irrespective of whether the text remains on file. Once the proprietor has stated that it no longer agrees to the text, that text no longer satisfies the condition set by Article 113(2) EPC. "
• I count 8 divisionals in the file.
• For completeness' sake, and as a comment: note that the disapproval of the text of a patent is not guaranteed to be completely risk-free. The interested reader is referred to pending case T-19/25 before the EU General Court (Copaxone). (link)
• 
  

EPO 

Th

T 0265/23 - Combination therapy

Key points

• This decision was taken on 06.11.2025 and issued in writing on 26.06.2026. A Communication under Art. 15(9) RPBA is visible in the online file.
• The claim is a second medical use claim directed to a combination therapy of Hepatitis C virus (HCV) with glecaprevir and pibrentasvir.
• Regarding inventive step: "Example 6 in D6 discloses glecaprevir". D6 is about the treatment of HCV.
• The objective technical problem may thus be formulated as providing a combination of glecaprevir with a further anti-HCV agent for use in the treatment of HCV infection, while avoiding the disadvantages of [the known] interferon/ribavirin-based treatments.
• " The subject-matter defined in claim 1 differs from this prior-art disclosure by the following technical features: (a) the treatment of an HCV patient with a combination of glecaprevir and a further anti-HCV agent is put into clinical practice; (b) pibrentasvir is chosen as the further anti-HCV agent ; (c) the treatment duration is 16 weeks; (d) the concomitant administration of interferon and ribavirin is excluded" (formatting adjusted).
• "the [opponent] argued that the patent in suit ... did not disclose putting the claimed therapeutic application into clinical practice, either. However, since attaining the claimed therapeutic effect in clinical practice is present as a functional technical feature in current claim 1 ... this feature has to be taken into consideration ... as a distinguishing technical feature of claim 1 in comparison with the disclosure in D6.
• "Under the established case law of the boards, where, as in the case in hand, a therapeutic application is claimed in the format provided in Article 54(5) EPC, attaining the claimed therapeutic effect is regarded as a functional technical feature of the claim under consideration"
• "Pibrentasvir is disclosed as one of over 150 exemplified anti-HCV agents in document D7 but is not identified as an NS5A inhibitor. D7 mentions, however, that the compounds according to D7 may be combined with other anti-HCV agents such as, inter alia, HCV protease inhibitors"
• "As to the obviousness of combining glecaprevir with pibrentasvir, the content of D6 and D7 (both published less than a year before the priority date) suggests that both compounds were still at an early stage of development. This is corroborated by the fact that neither compound is mentioned in D8, a review article giving an overview on emerging DAA therapies for HCV that was published around the same time. 
• Based on the available information, it would thus appear that the individual therapeutic efficacy and safety of these compounds had yet to be assessed. Only in vitro data for the single compounds are provided in D6 and D7, and there is no teaching in either document about therapy duration or other potential details of a combination therapy to be administered to HCV patients.
• So, this is a case where the monotherapy may have been patentable (?).
  
  
• For sufficiency, the AAF contained no in vivo data. 
• " The (earlier) application as filed states that the two mandatory DAAs (glecaprevir and pibrentasvir) were known as potent HCV inhibitors and cites the pre-published documents D6 and D7 "
• "in addition, Example 2 in the (earlier) application as filed reports further in vitro data on HCV inhibition by glecaprevir which show inhibitory activity against further genotypes"  (the relevance for the claim at issue is not directly apparent to me).
• "Example 1 relates to mathematical clinical modelling for interferon- and ribavirin-free combination therapy in conformity with claim 1. This was done according to a clinical simulation model described in D3, cited in paragraph [0070] of the (earlier) application as filed  ... . Contrary to the appellant's argument, D3 does not have to be part of the common general knowledge since it is cross-referenced in the (earlier) application as filed as describing the model that was used in Example 1."
• D3 is US 2013/0102526 A1 (25 April 2013). D3 was published in the priority year. In the priority document, the reference was to the US application number (of the then-unpublished application). I leave it as an exercise for the reader if the priority is valid (compare GL H-IV,2.2.1). 
• "the (earlier) application as filed reports that in different scenarios that were evaluated in Example 1 for a 2-DAA combination of glecaprevir and pibrentasvir, administered at various once-daily dosages without interferon and ribavirin over a range of treatment durations to genotype 1 or genotype 3 treatment-naive subjects, the predicted sustained virological response rates for a treatment duration of 12 weeks were favourable "
• "For these reasons, the (earlier) application as filed contains sufficient evidence, going beyond mere verbal statements, of a mechanism and technical concept that supports the suitability of the combination of glecaprevir and pibrentasvir for the therapeutic application defined in claim 1 as granted.
• In this situation, post-published evidence may be taken into account for confirmation.  "

T 0265/23 - Combination therapy

EPO 

The link to the decision is provided after the jump.

T 0855/24 - Deleting paragraph in the description

Key points

• This is the third appeal in this opposition case (opposition received: 2011), and concerns only the adaptation of the description to the amended claims that were held allowable in the first appeal decision. The OD took the first decision in 2013. In 2019, the Board decided to maintain the patent in amended form (those were the days, six years in appeal). Petition for review R 15/19 was allowed, and in 2023 the Board issued a new decision, again to maintain the patent with amended claims and a description to be adapted, and remitted the case to the OD. The OD decided on the adapted description in 2024. The third appeal followed (by the opponent), and the third appeal decision was issued in May 2026 (hence, the adaptation of the description took three years, due to the Board's choice to remit).
• The patent was maintained with only the device claims. The method claims were deleted. The proprietor deleted a couple of paragraphs in the description, but kept one paragraph. According to the Board, that paragraph pertained in the application as filed only to the embodiment of the  (now deleted) method claims. Moreover, the device claims and the former method claims differed in their technical features on precisely the point of that paragraph. Therefore, keeping the paragraph in violated Article 123(2), according to the Board.
• The Board: "the impermissible extension does not arise from the mere fact that individual paragraphs have been deleted, but from the fact that the selective retention of paragraph [0042] establishes a connection between the temperature compensation described therein and the claimed fire detector, which is not immediately and unambiguously apparent to the person skilled in the art from the original disclosure."
• The lower-ranking AR with paragraph 42 also deleted was allowed by the Board, but procedurally that was not trivial.

EPO 

The link to the decision is provided after the jump.

T 0020/25 - Withdrawing other ARs makes AR inadmissible

Key points

• "The requirements of Article 54 EPC are not met, and the main request must fail."
• The Board has to decide on the admissibility of the ARs and first turns to the history of the case.
• "The opposition division decided that the sixth auxiliary request met the requirements of the EPC; the [lower-ranking] request relating to the use did not have to be dealt with. "
• With the statement of grounds of appeal, the patent proprietor filed a new main request and auxiliary requests 1 to 13
• With the reply to the opponent's appeal, the patent proprietor filed auxiliary requests 6 to 21 
• The Board's preliminary opinion was that AR-11 was allowable. "The lower-ranking requests were not dealt with [in the preliminary opinion]."
• "Oral proceedings took place on 8 May 2026. At the beginning of the oral proceedings, the patent proprietor confirmed their requests (and their order). Following the discussion of auxiliary request 11, which was found allowable, and of the main request, which was found not to meet the requirements of Article 54 EPC, the appellant changed the order of their requests and asked that the requests ranking lower than auxiliary request 11, in particular auxiliary requests 14 to 16 and 19 to 21, be discussed. Ultimately, only these auxiliary requests were maintained besides the main request."
• "This is not permissible " A very detailed and principled reasoning of the Board follows. 
• "Reordering claim requests is an amendment to the patent proprietor's appeal case (see Case Law of the Boards of Appeal, 11th edition, 2025, V.A.4.2.3(i), V.A.4.5.4(q); T 1436/19, Reasons 1; T 2564/22, Reasons 2.1; T 622/23, Reasons 3.3). "
• "At least in a case like the present one where the auxiliary requests are not convergent, promoting a lower-ranking request is not merely a formal matter but shifts the subject of the proceedings."
• "The auxiliary requests in question, containing use claims, had always been ranked lower by the patent proprietor, at both the first and the second instance, meaning that they were only intended to be considered if higher-ranking auxiliary requests (i.e. those containing product claims) were not found allowable.
• "This condition did not materialise as higher-ranking auxiliary requests were found allowable (what was then auxiliary request 6 by the opposition division, and auxiliary request 11 in the board's preliminary opinion). As a consequence, there was no need or scope to deal with the lower-ranking auxiliary requests containing use claims during the opposition and appeal proceedings, notably not in the board's [preliminary opinion].
•  "Considering those auxiliary requests in substance now would mean the board having to deal, for the first time, with matters not dealt with either by the opposition division or in their own preliminary opinion. It would, in particular, require discussions which did not take place in the opposition proceedings and are thus not reflected in the impugned decision, with such discussions having to take place either before the board or before the opposition division by way of a remittal of the case."
• "Effectively withholding requests from being dealt with at an earlier stage of the proceedings - as the patent proprietor has done here - and "reserving" them for a later stage of the appeal proceedings runs counter not only to these principles but also to the primary object of the appeal proceedings to review the decision under appeal (Article 12(2) RPBA) and, ultimately, to the very object and purpose of the (subsequent) communication pursuant to Article 15(1) RPBA"
• "It is good board practice in the communication under Article 15(1) RPBA not to deal with requests which are not relevant for the decision to be taken at that moment in time, in particular when they have only been filed in the event that no higher-ranking requests are found allowable."
• A very interesting piece of information.
• As a comment, does this mean that the proprietor may not withdraw AR-11? The Board writes that "Ultimately, only these auxiliary requests [14-16 and 19-21 were maintained besides the main request". Wasn't the procedural situation at that time that AR-1 to 13, including AR-11, were withdrawn? (I'm not saying that this couldn't be legally correct, although it seems a change of case law).
• As a further comment, I wonder whether the phrase "admissibly raised" in Art. 12(4) RPBA perhaps addresses the issue: was the non-convergent AR (then AR-14) relating to the use claim admissibly raised before the OD? 
• "In reply to the notice of opposition, the patent proprietor filed a new main request and six auxiliary requests containing product claims only. In reply to the opposition division's preliminary opinion, the patent proprietor filed seventh to thirteenth auxiliary requests, likewise all containing product claims only. At the same time, a fourteenth auxiliary request containing use claims was filed."

EPO 

The link to the decision is provided after the jump.

R 0014/25 and T 0345/24 - Punished for filing an AR

Key points

• The proprietor filed a new AR-1 during the oral proceedings before the Board. The earlier filed ARs moved "one down". The TBA did not admit the newly filed AR-1 (there were no exceptional circumstances, according to the TBA). Does this course of events affect the admissibility of the lower-ranking ARs?
• The TBA in case T 0345/24 held it did. "
• "Such a re-ranking is ... an amendment to the proprietor's appeal case and its admittance is at the discretion of the Board. Under such circumstances the Board's discretion is to be exercised in view of inter alia procedural economy (see Article 13(1) RPBA, last sentence)."
• The ARs at issue were filed with the SoG of the proprietor. The TBA decision does not indicate whether the ARs were decided on (and rejected) by the OD. 
• The TBA reasons that the re-ranking is a case amendment "due to the procedural effects of such a change, such as consideration of alternate subject-matter"
• Given that the AR was not admitted on procedural grounds, the subject-matter of new AR-1 was not examined on the merits.
• Claim 1 of new AR-1 includes a feature that was not recited in the older, lower-ranking requests. I note that new AR-1 was filed to address a successful objection of intermediate generalisation. 
• The Board then hold the ARs filed with the SoG inadmissible.
• So, if you have a supposedly safe AR (under Art. 12(2)), it may become inadmissible by the filing of another higher-ranking AR, according to this decision.
• A precedent that repeatedly shuffling the order of the requests can render the ARs inadmissible is T 0716/17. However, the present case is not about repeated reordering of requests. 
• See also T 0020/25, to be discussed soon.
• Regarding the petition for review, the EBA declines to review whether the re-ranking was indeed a case amendment, and hence declines to review whether the TBA had a discretionary power to hold the AR inadmissible. 
• "The EBA's review is restricted to the question of whether the petitioners had an opportunity to comment on the Board's qualification of [the old ARs] as an amendment [...]. ... The EBA's review cannot lead to a substantive examination through the back door of the criticised treatment of the [...] filing of new auxiliary request 1 by the Board which lead to the [TBA's] conclusion that the reranking of [the old ARs] was an amendment to the petitioners' case."
• Hence, the EBA does not review whether the reranking of the old ARs -  note, this means simply inserting one higher ranking AR - is a case amendment. 
• Compare R 10/24: "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. " (translated headnote)
• I consider R 10/24 to be well reasoned. However, see also below for the context of the present case. 
  
  
• Having said all that, the patentee did not simply file new AR-1, but "filed a new auxiliary request 1 and stated that the other auxiliary requests would be withdrawn on the condition that this request be admitted". I could see why the Boards may wish to avoid any appearance of bargaining about requests. 
  
• Also, the Art. 123(2) issue for the MR was as follows: " Relative to claim 1 as filed, feature 1.3 has been introduced into the claim, in which the ADL is defined to be 'in contact with' the body-facing side of the absorbent core. The basis for this amendment was stated by the opposition division to be paragraph [0198] of the application as filed where, however, the ADL is disclosed to be 'in good contact with' the body-facing side of the absorbent core. The Board sees the omission of the qualifier 'good' to lack a direct and unambiguous basis in the application as filed." I can see how adding the term "good" could introduce questions of clarity (if the amendment is open to examination of clarity under G 3/14). 
• The TBA added, obiter, that all the old ARs seemed to suffer from the same Art. 123(2) issue as the main request. That seems entirely logical, given the procedural development of the case. In that event, the old ARs were not a response to the Art. 123(2) objection that was found prejudicial to the MR, and the proprietor's right to be heard to reply to that Art. 123(2) is not affected by the decision to not admit the old ARs, possibly. 

• EPO R 14/25

The link to the decision is provided after the jump.

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.

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.