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.