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.

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

Key points

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

EPO 

The link to the decision is provided after the jump.

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

Key points

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

EPO 

The link to the decision is provided after the jump.

T 0779/24 - Double patenting in opposition

Key points

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

EPO 

The link to the decision is provided after the jump.

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

Key points

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

EPO 

The link to the decision is provided after the jump.

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

Key points

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

EPO 

The link to the decision is provided after the jump.

R 0005/24 - Successful petition for review

Key points

• This is the 14th successful petition for review. It was published on 01.04.2026. 
• In the opposition appeal, the proprietor had filed amended claims (namely, AR-2). Full substantiation of the amendments, i.e. complete arguments for the admissibility of the amendment, followed only after the Board's preliminary opinion, with a letter of 19 May 2023.
• The TBA decided to hold the amended claims inadmissible (and revoked the patent). However, the Board's reasoning regarding the inadmissibility of AR-2 does not consider at all the arguments advanced by the proprietor in its letter of 19 May 2023.
• The EBA finds this a violation of the proprietor's right to be heard. The Board notes that if the TBA considered the proprietor's letter of 19 May 2923 inadmissible, it should have included a reasoned decision to that effect in its written decision. 
• The EBA is brief on admissibility, but the point is interesting. The proprietor had raised an objection under Rule 106 after the Board had announced that the amended claims at issue (AR-2) were not admitted. However, at that point, the proprietor did not know that the Board was disregarding or overlooking the proprietor's argument in the letter of 19 May 2023. The proprietor objected to the decision to hold AR-2 inadmissible as such. Would the petition have been admissible without the objection under Rule 106? 
• That question was answered in R 6/24 (after the time of writing this post).
• 
  
• 
  
• The successful petitions are now: R 5/24, 16/23; R11/23, R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links). See also the list here.

EPO 

The link to the decision is provided after the jump.

T 0561/23 - More on Rule 80

Key points

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

EPO 

The link to the decision is provided after the jump.

T 1899/23 - When the Board ceases to exist

Key points

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

EPO 

The link to the decision is provided after the jump.

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

Key points

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

EPO 

The link to the decision is provided after the jump.

T 0293/25 - Oral submissions that are too complex

Key points

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

The link to the decision is provided after the jump.

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

Key points

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

The link to the decision is provided after the jump.