T 1239/24 - No need for pre-emptive attacks on carry-over requests

Key points

• The OD rejected the opposition. The opponent appeals.
• "Any consideration of auxiliary requests in the appeal necessarily presupposes that such claims have become the subject of the appeal proceedings in a permissible manner. However, this could not have been the case at the time the grounds of appeal were filed. The auxiliary requests at issue were not part of the decision under appeal. It is not incumbent upon the appellant-opponent to address, in its grounds of appeal, the auxiliary requests submitted in the opposition proceedings, without knowing whether they will be maintained in the appeal proceedings. 
• The patent proprietor responding to the appeal, on the other hand, is expected to set out ("clearly and concisely", see Article 12(3) RPBA) in its response to the appeal the reasons why the subsidiary claims overcome the objections raised in the grounds of appeal against the main request (see Case Law Book of the Boards of Appeal, 11th edition, V.A.4.3.5.b) and, for example, T 1041/21, Reasons 5.1.4; and T 1690/22, Reasons 2.12). 
• It is in response to a well-substantiated submission of auxiliary requests by the respondent that an appellant is obliged to submit a substantiated response with respect to the issue of inventive step."
• This refers to the rejoinder to be filed by the appellant. 

EPO 

The link to the decision is provided after the jump.

T 1199/25 - Inevitable results

Key points

• G 2/88, point 10 (in the context of second non-medical use claims): "in some cases, the information which the written description actually contains, teaching the carrying out of a process for example, also makes available further information which is the inevitable result of carrying out such teaching [see T 12/81]."
• The EBA continued: "In each such case, a line must be drawn between what is in fact made available, and what remains hidden or otherwise has not been made available."
• Turning to the present case: the opponent argued that "The opposition division had erred in treating the PEG molecular weight as "hidden information". The relevant question was not whether D23a identified the PEG molecular weight as an essential parameter, but whether that feature was objectively and necessarily implied by the disclosure. A feature was part of a disclosure if it was the inevitable consequence of what was expressly described, irrespective of whether the skilled person's attention was specifically directed to it."
• The Board: "the presence of a PEG moiety having an average molecular mass of 1-3 kDa is disclosed because such a liposome is the inevitable consequence of carrying out the method disclosed at page 20, lines 14 to page 21, line 16 and ..."
• "The calculation made by the respondents that the liposome produced comprises PEG of average molecular weight of 2 kDa ... was not disputed by the appellant[,] and the board considers that it is correct."
• Evidence of inherent properties does not need to be prior art. 
• This does not mean that D23a gives basis, in the sense of Art. 123(2) EPC, for specifying a PEG moiety having an average molecular mass of 1-3 kDa as a feature (if D23a is a patent application).
• "For these reasons, D23a, and therefore D23, directly and unambiguously discloses a liposome falling within the definition of claim 1, encapsulating RNA encoding an immunogen."
• I explored the topic in my article in epi Information 4/2020. As discussed therein, the phrase "falling within" distinguishes the test for novelty from the test for Art. 123(2); the phrase "directly and unambiguously discloses" expresses the common element of those two tests.

EPO 

The link to the decision is provided after the jump.

T 0733/24 - Killed by own subsequent patent application

Key points

•  This is a case about sufficiency.
• "The claim is directed to a method for the identification of microbial and non-microbial infectious pathogens in whole blood by mass spectrometry. The pathogens are cultured in the whole blood by incubation and afterwards are centrifuged into pellets and subjected to mass spectrometric identification. In order to remove the particles contained in the body fluid, i.e. in the whole blood, the method further includes "additional steps in order to destroy and remove the body fluid particles". These steps are not further defined in the claim.

  8. In order to carry out the claimed method, the skilled person must hence know, inter alia, with which additional steps the recited destruction and removal of the blood particles can be achieved such that an identification of any microbial and non-microbial infectious pathogen possibly present in the whole blood by mass spectrometry can be achieved."

• "[the application] contains a single hypothetical example in which the sample is whole blood infected by microbes (paragraph [63] of the earliest application). There, it is proposed to destroy and remove the blood particles by firstly separating the pathogens together with the blood particles by centrifugation and then dissolving the pellet in distilled water to destroy the blood particles by osmosis while leaving the microbes intact. 

• "However, this method does not work, as evident from document D9, which discusses, in paragraphs [19] to [22], the teaching in the earliest application. 

• "paragraph [22] of D9 [mentions that] "experiments carried out in the applicant's laboratory with this method of adding distilled water did not succeed in providing sufficiently clean centrifuge deposits, even when the washing and centrifuging processes were repeated a few times. Even if the deposits did not retain a slightly reddish color, superimpositions with human protein signals always interfered with the microbial protein signals from these deposits to such an extent that an identification becomes uncertain" (paragraph [22] of D9)."

• "Therefore document D9 is evidence that the single hypothetical example described for the claimed method in paragraph [63] of the earliest application is unsuitable to identify microbes in infected whole blood, let alone any microbial and non-microbial pathogens in a whole blood sample. In view of this and in the absence of any evidence that the skilled person could have remedied this deficiency by common general knowledge, it must be concluded that the skilled person could not carry out the claimed method without undue burden at the effective filing date of the application."

• D9 is a post published patent application. The proprietor of the patent in suit is the same as the applicant of D9. 

EPO 

The link to the decision is provided after the jump.

T 0195/25 - Partial priority and the shield effect of priority (?)

Key points

• The Board, in the headnote: "When a claim of a patent enjoys partial priority for a specific embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority".
• Compare G 3/93: "1. A document published during the priority interval, the technical contents of which correspond to that of the priority document, constitutes prior art citable under Article 54(2) EPC against a European patent application claiming that priority, to the extent such priority is not validly claimed. 2. This also applies if a claim to priority is invalid due to the fact that the priority document and the subsequent European application do not concern the same invention because the European application claims subject-matter not disclosed in the priority document."
• Hence, the headnote in T 195/25 is surprising because it appears to introduce the 'shield theory' of priority, which was rejected in G 3/93 (as I understand that case). 
• See my blog post of 01.09.2017 (link). 
• See also T 2466/13, issued in 2018, wherein, in translation: "The chamber uses [priority] document Prio01 as a starting point to examine the inventive step of subdomain B of claim 1.") (link)
• Turning to the case at hand, D12 is the PhD thesis of one of the inventors and was published during the priority year, 
• The present Board: " The appellant considers the examples in PhD thesis D12, ... an alternative starting point for assessing inventive step. "
• "Since D12 was published after the filing date of D11, D12 has no impact on the priority date of the patent.
• "However, when a claim of a patent enjoys partial priority for an embodiment, the same embodiment disclosed in a non-patent document published in the priority year cannot be used as a starting point for an inventive-step attack against the subject-matter of the claim that does not validly claim priority.
• This is a new statement of the law, I think.
• "3. ... It has not been contested that the priority is at least partially valid (see G 1/15), i.e. as far as the examples of the patent are concerned 
• The examples are the same between the priority document and the application. Implicitly, the examples are also embodiments of the claim under examination.
• Importantly, the cited examples in D12, the PhD thesis, are the same as in the priority document.
• "In the case in hand, the subject-matter of the examples of non-patent document D12 does not belong to the state of the art within the meaning of Article 54(2) EPC since D12 was published after the priority date of the patent (see point 3. above)."
• This statement departs from the established case law.  Under G 1/15, the priority is "entirely" valid for one part of the claim and "entirely" invalid for the other part of the claim, just as when the claim explicitly recites two alternative embodiments, one with priority and one without ( G2/98)
• The Board: "4.3 This finding is in line with the principles of e.g. T 2073/22 (Reasons 9.6.3 and 9.6.4), T 1482/21 (Reasons 2.4.2) and T 211/06 (Reasons 4.1 and 4.2)."
• Let's check the references.
• T 2073/22: ", the board notes that, as pointed out by the respondent, the appellant explicitly stated in its grounds of appeal (page 30, point 10.96) that it "made no inventive step objection to phenols specifically".  ...  " Therefore, D1 is prior art under Article 54(3) EPC for the subject-matter of claim 1 as granted objected to by the appellant. ". The Board did not examine the patentability of the other subject-matter of the claim of its own motion.
• T 1482/21: "in view of the Board's conclusion on the partial validity of priority as set out above and the limitation of the claimed subject-matter in the new auxiliary request to subject-matter for which priority can be validly claimed...  D24/D27 are not prior art for this subject-matter, since they were published after the filing date of P1 and P2."
• T211/06: "the starting points applied to in the decision under appeal for the purposes of Article 56 EPC are based either on internal art or on a practice argued by the examining division to be known to the skilled person, for which there is no evidence on file that it was available to the public before the priority date." "According to the impugned decision another starting point was based on a so called "laboratory practice" or "common industrial practice" ...  "There is however no evidence on file at all that this "laboratory practice" was made available to the public and concerns state of the art under Article 54(2) EPC. This would be using a subjective starting point, which cannot be objectively assessed, since it is not based on reliable technical information based on evidence as required by Article 54(2) EPC. "
• None of the three cited decisions seems to address the point or support the present Board's position.
• The present Board: "By contrast, T 307/22 (Reasons 3.4.1, 3.4.4 and 3.5.4 to 3.5.5) concerned an embodiment disclosed both in D7, a document published in the priority year, and in priority document D8. It held that the embodiment of D7 could be used as the starting point for assessing inventive step. This is not indicated in the circumstances of the present case. For the reasons given above, only the subject-matter of the prior art within the meaning of Article 54(2) EPC can be used for an inventive-step attack."
• See my post on T 307/22.
• The current Board's remark that "This is not indicated in the circumstances of the present case" seemingly means that T 307/22 is wrong because the current Board analyses the effect of priority differently. 
• The present decision does not refer to G 3/93.

EPO 

The link to the decision is provided after the jump.

T 0712/24 - Change preliminary opinion OD

Key points

• The Board provides an extensive analysis of when, in the Board's view, an OD has discretionary power to hold a submission inadmissible. The Board reaches a conclusion that differs from a (key) statement in the GL. It took me some time to appreciate the decision.
• The decision is in German, and I had to clean up the HTML publication (excess line breaks) before the machine translation went well. 
• The proprietor is the appellant and objects to the decision of the OD to hold AR-1 (and 2) inadmissible. The proprietor filed those requests during the oral proceedings before the OD. The proprietor argues that the requests should have been admitted, "because [the OD's] preliminary opinion on novelty had been favourable to the patent proprietor and [the OD] had changed its view on this matter during the oral proceedings". AR-1 changed the device claims into use claims. The patent was granted with only device claims. The use claim concerns the use of the device "zum sexuellen Stimulieren eines Bereichs im Inneren einer Vagina".
• The OD held the requests inadmissible "for lack of prima facie allowability in view of Article 53(c) EPC".
• "The Board ... notes that ... auxiliary requests 1 and 2 ... were intended to overcome the objections of lack of novelty over D2 and D3, which had already been raised in the notice of opposition."
• Accordingly, the proprietor's rights under Article 113(1) EPC were not in issue. 
• However, the proprietor argued that the ARs were not "late filed" in the meaning of Art. 114 (and Rule 116) such that the OD had no power to hold them inadmissible.
  
• I think that Article 123(1) is the relevant provision for amended claims; see e.g. T 966/17, but the current Board gives reasons why it referred to Article 114(2) EPC. Amended claims were seen as 'facts' in earlier decision T 1776/18 (with the same legal member; from 2022), and my comments on that decision can be found here - link. 
• The Board, in translation: "The prerequisite for discretion under Article 114(2) EPC is that the submission in question is “late”. "
• The Board: "Whether a submission is late within the meaning of this provision depends exclusively on the point in time at which it was made. In opposition proceedings, objections and evidence submitted or filed by an opponent after expiry of the opposition period under Article 99(1) EPC, as well as sets of claims or evidence filed by a patent proprietor after expiry of the period under Rule 79(1) EPC, are generally to be regarded as late-filed within the meaning of Article 114(2) EPC"
• Note that the Board's phrase "within the meaning of this provision" (i.e., Art. 114 EPC) implies "without regard to Article 113(1)".   
  
• Understood that way, I can agree with the Board's statement (see my post on T 098/19), leaving Rule 116 aside for the moment.
• The Board:  "The reason why a party made a submission only after the aforementioned points in time is irrelevant to the question of whether the deciding department of the European Patent Office has discretion. The question whether a department has discretion within the meaning of Article 114(2) EPC must be distinguished from the question of the criteria according to which that discretion is to be exercised and how those criteria are to be applied in an individual case".
• "Considerations as to whether new submissions were, for example, permitted as an immediate reaction to a change in the subject of the proceedings are irrelevant to whether there is discretion as to admissibility; they concern exclusively the question of how that discretion is to be exercised"
• This confirms that the Board considers that the OD has a "discretion", even if a decision to hold the submission inadmissible violates Article 113(1) EPC (namely in the case of an "immediate reaction to a change in the subject of the proceedings"). This makes sense under the separate treatment of Article 113(1) and Article 114(2). 
• In the case at hand, the OD changed its view on novelty during the oral proceedings and decided that D2 was novelty-destroying.
• The Board: "in the predominant recent case law of the Boards, a change in the Opposition Division's preliminary opinion is not, in itself, regarded as a reason why the Opposition Division should have no discretion when admitting newly filed sets of claims" (after an extensive review). 
• However, the Guidelines state that E-VI, 2.2.2 (current version, 2026): "the examining or opposition division departs from a previously notified opinion: for example, contrary to its preliminary opinion set out in the annex to the summons, the opposition division concludes during oral proceedings that an objection prejudices the maintenance of the patent.  In these examples, a request for amendment made by the applicant or proprietor in response cannot be rejected as late-filed."
• "The Board points out, pursuant to Article 20(2) RPBA, that the interpretation of the EPC adopted in the present decision differs [from the] Guidelines for Examination, point E-VI 2.2.2.  ... In the Board's view, the statements in point E-VI 2.2.2 of the Guidelines concerning Rule 116(2) EPC and the existence of discretion as to admissibility of the Opposition Division are contrary not only to the present decision but, as explained above, also to the predominant recent case law of the Boards."
• The passage in the Guidelines interprets Rule 116(2), second sentence, as it refers to Rule 116(1), fourth sentence, in particular the final clause thereof: "New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed." 
• A question is, therefore, whether the passage in the GL correctly interprets Rule 116.
• In fact, the issue is twofold: (1) whether a change from the preliminary opinion is a change of the subject of the proceedings in the sense of Rule 116, and (2) whether, for any change of the subject of the proceedings (the GL give more examples), the OD is obliged to admit new facts. 
• Question (1) is answered above: "a change in the Opposition Division's preliminary opinion is not, in itself, regarded as a reason why the Opposition Division should have no discretion when admitting newly filed sets of claims"
• The travaux préparatoires to Rule 116 can be found, effectively, in the Notice in OJ 1995 p.409. The Notice says that "The procedure under Rule71a is described in more detail in revised Guidelines E-III, 6 and 8.6." (see here for the GL text as of 1995). The statement "the examining or opposition division departs from a previously notified opinion" was not yet included in the GL then. It was included in the GL 2007, E-III 8.6, referring to T 273/04, r.5 (2006). The reasoning in that decision is plain and simple. 
• Regarding point (2), the Board is of the view that the GL interpret Rule 116 incorrectly: "Rule 116(2) EPC ... does not restrict the discretion available to the Opposition Division under Article 114(2) EPC (see T 1776/18, Reasons 4.7.8)."
•  The Board does not seem to give substantive reasons for that conclusion in the present decision, other than by referencing T 1776/18 (same legal member)
• I commented on T 1776/18 before (link). Cited point 4.7.8 is about Rule 116(2). The relevant reasoning about Rule 116(1), fourth sentence, is in point 4.6.8: "the word "admitted" expresses the exercise of discretionary power, and the phrase "on the grounds" indicates a criterion for exercising this discretionary power. Rule 116(1), fourth sentence, EPC thus confirms that a change in the subject of the proceedings must be taken into account by the Opposition Division in the course of exercising its discretion." 
• That reasoning in T 1776/18 seems to address question (2). As I understand it, the TBA reasons that the word "admitted" assumes the existence of a discretionary power (also) in the event that the subject of the proceedings has been changed. This may be correct if we understand "discretionary" as "to be exercised in compliance with Article 113". 
• The French version of Rule 116(1), fourth sentence, seems the most helpful: "De nouveaux faits ou preuves présentés après cette date peuvent ne pas être pris en considération, à moins qu'il ne convienne de les admettre en raison d'un changement intervenu dans les faits de la cause." - unless it is appropriate (my translaton of  'convienne' ) to admit newly submitted facts because of a change in the circumstances of the case; the term 'convienne' more clearly permits using a plurality factors to determine whether it is appropriate to admit the newly asserted facts. 
• The Board notes that: " Point E.VI.2.2.2 states that amendments filed before the point in time specified in Rule 116(1) EPC generally cannot be regarded as late-filed."
• A third question is whether the Board's view, that "Rule 116(2) EPC ... does not restrict the discretion available to the Opposition Division under Article 114(2) EPC", also means that GL are incorrect in stating that "amendments filed before the point in time specified in Rule 116(1) EPC generally cannot be regarded as late-filed" (and be held inadmissible?).
• This hinges on question (3): what is the status and meaning of the clause in Rule 116 that "New facts and evidence presented after that date need not be considered". Is the reference to that date in Rule 116(1), fourth sentence, first clause, meaningless, in that the situation is before and after the date the same?
• A related question is whether Rule 116 and/or the GL can limit the OD in how they exercise their power under Article 114.
• The proprietor apparently did not invoke the principle of (non) venire contra factum proprium (see, e.g., recently J 2/25).
• 
  
• On medical methods
• For the perceived issue under Article 53(c), the OD cited as evidence D2, a patent application by the current proprietor, in which the use of the device was allegedly described as therapeutic. Consultation of D2 reveals that the term 'therapeutic ' was used only when D2 summarises what earlier prior art teaches in terms of known devices. Moreover, the use of D2 - namely, the stimulation of the clitoris - seems different from that of the current claims. 
• The patent is about "a stimulation device [that] can be introduced into a human body, in particular into a vagina or a rectum, and comprises a pressure-field generating device for stimulating a region to be stimulated inside the human body" 
• The Board notes, in connection with a different auxiliary request, that "Eine therapeutische Wirkung kann bei der beanspruchten sexuellen Stimulation nicht ausgeschlossen werden." 
• Perhaps we will one day have substantive case law on the point in another case; there is enough patent litigation in the technical field at issue. 




EPO

The link to the decision is provided after the jump, as well as the machine translation.

T 0110/25 - (II) Deleting figure label violates Art. 123(2)

Key points

• The proprietor withdrew the main request after the Board had announced its conclusion that the amendment of Figure 6 (by deleting the label of the vertical axis) in the grant procedure violated Article 123(2). Nevertheless, the Board's reasons can be inferred from the decision, to a degree. 
• The Board, in translation: "39. The question of whether the deletion of the ordinate label in Figure 6 prior to the grant of the patent infringes Article 123(2) or Article 100(c) EPC or is permissible as a correction within the meaning of Rule 139 EPC and therefore does not lead to an inadmissible extension was the subject of the contested decision (point 11, pages 4 to 7) and was also raised again in the appeal."
• " In its appeal, the appellant [opponent] argued that the removal of the original ordinate label in Figure 6 violated the prohibition of inadmissible extension (Article 123(2) in conjunction with Article 100(c) EPC). Figure 6 was essential for assessing inventive step. The deletion did not serve as a correction but enabled alternative technical statements, which constituted an inadmissible technical extension and conferred an unfair advantage on the patent proprietor. The deletion eliminated the original reference of the diagram to the absolute histamine degradation capacity, but no correct indication replaced the deleted ordinate label. This enabled alternative statements in the eyes of a person skilled in the art"
• " In its appeal, the appellant argued that the removal of the original ordinate label in Figure 6 violated the prohibition of inadmissible extension (Article 123(2) in conjunction with Article 100(c) EPC). Figure 6 was essential for assessing inventive step. The deletion did not serve as a correction but enabled alternative technical statements, which constituted an inadmissible technical extension and conferred an unfair advantage on the patent proprietor. The deletion eliminated the original reference of the diagram to the absolute histamine degradation capacity, but no correct indication replaced the deleted ordinate label. This enabled alternative statements in the eyes of a person skilled in the art"
• The auxiliary request seeking to address the issue is not admitted, as it was filed late.
• "The [proprietor's] assertion that it has never been explained what new technical teaching was introduced by deleting the ordinate label in the original Figure 6 is also incorrect. As already stated several times, the appellant argued in its appeal that deleting the ordinate label in the original Figure 6 eliminated, rather than correcting, the reference to histamine degradation capacity. The bar chart without ordinate labels allows for several technical interpretations that differ from the original information because the figure descriptions on pages 10 and 19/20 are contradictory both internally and in relation to Figure 6. Specifically, the appellant argued that, contrary to their previous meaning, the groups "HIT" and "no symptoms" could be related to sensitivity, and the group "symptoms" to specificity. The respondent readily admitted that these alternative technical statements, arising from the interpretation of Figure 6, were relevant to the inventive step. However, the respondent denied these alternative interpretations of both the original and granted Figure 6, and thus also the existence of a "new technical teaching." It insisted that the original Figure 6, viewed in conjunction with the original application as a whole, allowed for only one interpretation. 
• Not mentioned, but likely highly relevant is G 2/21.

EPO 

The link to the decision is provided after the jump.

T 0384/25 - No need to adapt the description (this time)

Key points

• Board 3.3.09 on when to adapt the description, after G 1/25 (which was referred by Board 3.3.02).
• The Board finds that AR-5 is allowable. "Auxiliary request 5 only includes some of the product claims disclosed in the set of the granted claims." ... "the patent as granted includes claims directed to medical uses. "
• "paragraph [0001] sets out that the invention relates to whey protein micelles for use in the treatment or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient. "
• "The claims of auxiliary request 5 are directed to a product, which is defined by specified amounts of whey protein micelles, proteins including whey protein isolate or hydrolysed milk protein, lipids, carbohydrates and fibres."
• "A liquid meal replacement comprising whey protein micelles further comprising whey protein isolates, hydrolyzed milk proteins or any combination thereof, wherein the whey protein micelles are present in said meal replacement in an amount of at least 20 wt%. [sic] of total dry weight, comprising 25-50 wt% proteins, 10-15 wt% lipids, 25-50 wt% carbohydrates and 5-10 wt% fibers of total dry weight."
• "3.9 In the current case, the board could not identify that maintaining paragraphs [0001], [0012], [0013], [0022], [0023] and [0032] of the patent as granted unamended causes any inconsistency in the sense described above [i.e., G1/25] between the amended claims and the description. "
• "The claims of auxiliary request 5 leave no doubt, let alone a real doubt, as to what the claims mean and what falls within the claimed subject-matter. 
• "While the unamended description encompasses technical teachings and embodiments regarding medical uses, this as such is not to be considered an inconsistency within the meaning of G 1/25 and does not have to be removed from the description."
• The Board does not quote the description paragraphs concerned. I quote them below.  It seems that claim 1 of AR-5 is one of the granted independent claims, without further amendments. 
• [0001] The present invention relates to whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient. A further aspect of the invention is a meal replacement comprising whey protein micelles.
• [0012] Accordingly, the present invention provides in a first aspect whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient in need thereof, wherein the treatment or prevention does not include an additional exercise regimen, wherein the condition is muscle atrophy or sarcopenia, wherein the whey protein micelles are administered to the patient in combination with a meal, wherein the meal comprises whey protein isolates, hydrolysed milk proteins or any combination thereof; and wherein the whey protein micelles are administered to the patient in a daily dose of at least 20 g dry weight.
• [0013] That treatment or prevention does not require an additional exercise regimen to be effective. Hence, the treatment or prevention does not include an additional exercise regimen.
• [0022] The present invention pertains to whey protein micelles for use in the treatment and/or prevention of a condition linked to a reduced concentration of plasma amino acids in a patient, wherein the condition is linked to a loss of muscle mass and/or strength. The hyper-aminoacidemia for a prolonged postprandial period of time provided by the inventive use of the whey protein micelles is most favourable for maximally stimulating muscle protein synthesis and therefore maintaining or even enhancing muscle mass.
• [0023] According to the present invention, the condition is muscle atrophy or sarcopenia. Both medical conditions are characterized by a loss of muscle mass and strength. The present invention is best adapted to providing a nutritional solution to patients suffering from either of those conditions, to reduce or stop loss of muscle mass and/or ultimately to build up again muscle mass and strength.
  
• [0032] According to the invention, the whey protein micelles for use according to the invention are administered to the patient in combination with a meal. Most meals comprise proteins from a milk, plant and/or animal source and hence upon consumption lead to a postprandial aminoacidemia increase, i.e. an elevated concentration of amino acids in the plasma of the consumer. It is now an advantage, to combine the administration of whey protein micelles in combination with such a meal. Thereby, the postprandial plasma amino acid peak resulting from the proteins present in the meal adds up to the postprandial amino acid peak resulting from the whey protein micelles which are delayed by ca. 30 min in respect to the first amino acid peak. Thereby, the overall resulting hyper-aminoacidemia is extended and prolonged in time. This in return is most favourable for maximally stimulating muscle protein synthesis, reducing muscle protein breakdown and therefore maintaining or even enhancing muscle mass.
• 
  

The link to the decision is provided after the jump.

T 0110/25 - (I) SME status

Key points

•  The Board, in translation: "the Board finds that, with regard to the basis for determining whether an undertaking is a micro, small or medium-sized enterprise within the meaning of Rule 7a(2)(a) and (b) EPC, which may file an appeal by paying the reduced appeal fee [under Article 2(1), point 11 of the Rules on Fees], an unintended gap exists following the amendments to the Implementing Regulations by decision of the Administrative Council CA/D 16/23 of 14 December 2023 (OJ EPO 2024, A3). In the Board's view, this gap should be closed in accordance with the repealed Rule 6(5) EPC, i.e., by the integral application of Recommendation 2003/361/EC."
• "SME status for a current financial year is derived from the last approved annual accounts for the previous year. Article 2 of the Annex to Recommendation 2003/361/EC provides no basis for a change in SME status during a financial year or for a retrospective loss of SME status."
• Rule 7a(6), which provides that "The eligibility criteria laid down in paragraphs 1 to 3 shall be fulfilled on the date of the payment of the fee concerned," must probably be interpreted accordingly. 
• The Board notes " an error in the German version of Article 4(2) of the Annex to Recommendation 2003/361/EC, which refers only to "the headcount or financial ceilings stated in Article 2". However, the English and French versions, which refer to "the headcount or financial ceilings stated in Article 2" and "des seuils de l'effectif ou des seuils financiers énoncés à l'article 2" respectively, make it unequivocally clear that all the financial ceilings listed in Article 2(1) of the Annex to Recommendation 2003/361/EC must be exceeded before SME status is lost. This was not the case for the applicant in the 2024 financial year.
• "Apart from that, a company only loses its SME status if it exceeds the employee threshold and/or both financial thresholds in two consecutive financial years (Article 4(2) of the Annex to Recommendation 2003/361/EC). "
• "The category of micro, small and medium-sized enterprises (SMEs) comprises undertakings that employ fewer than 250 persons and either have an annual turnover not exceeding EUR 50 million or whose annual balance sheet total does not exceed EUR 43 million."

EPO 

The link to the decision is provided after the jump.

T 1089/24 - Oral proceedings and remittal

Key points

• In reply to the written opinion of the Board, the appellant in this opposition case wrote, inter alia, that "Oral proceedings were requested, should the Board not intend to remit the case to the opposition division."
• "Oral proceedings were cancelled and the parties informed accordingly."
• The Board remits the case. 
• "6. Since the appellant's withdrawal of the request for oral proceedings [*] was made within one month of notification of the communication issued by the Board in preparation for the oral proceedings, both conditions of Rule 103(4)(c) EPC, that any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings and no oral proceedings take place, are met. Hence, 25% of the appeal fee is to be reimbursed to the appellant."
• [*] - the withdrawal of the request for oral proceedings is the modification of the request. 
• This is in line with T 2285/19. 

EPO 

The link to the decision is provided after the jump.

J 0002/25 - (II) On online filing problems and burdens of proof

Key points

• The Legal Board has a point to make about online filing methods.
• "The appellant correctly argued that the EPO strongly encourages applicants to use online services and filing tools whenever possible to benefit from the business validations and the accelerated processing of submissions that originate from these tools."
• The Legal Board:   "However, if it does so, the EPO must also have proper safeguards in place including clear information to the users about these, in order to avoid irreparable losses of rights."
• "It must also have adequate and transparent investigation means to establish and prove which means of electronic filing are actually unavailable. This is particularly important if the application of the safeguards in certain cases exclusively depends on the fact that the malfunction can be attributed to the EPO, ..."
• I assume that this also applies to current Rule 134(1), second sentence, i.e. the extension of a period in case "one of the means of electronic communication" has an "outage", to use the terminology of the EPO Notice in OJ 2020 A 120, point 14. The EPO's view, as expressed in that Notice, is that "The occurrence of such an outage is determined by the EPO's technical services [*]. Not every technical problem qualifies as an outage attributable to the EPO, so not every technical problem will lead to the extension of a period [**] under Rule 134(1), second sentence, EPC." The part in italics, [*],  is almost an invitation to the Boards of Appeal to correct: the EPO's technical services don't take decisions in patent grant proceedings (similarly to how the EPO's accounting department does not decide whether a fee is validly paid with a debit order). The second part ([**]) ties the holding of the Legal Board in this case about the filing of a divisional application to normal periods.
• Just to be clear, Notices in the OJ do not bind the Boards and are in a way just information about how the EPO interprets and applies the provisions of the EPC. In this particular case, however, the legal intention of the term "shall apply mutatis mutandis" in the second sentence of Rule 134(1) may have been to authorise the EPO to make detailed rules in a Notice (not exactly a standard way of delegation; OJ 2026 A27 requires a Decision of the EPO President as of 01.04.2027).
• The Legal Board: "Particularly because online filing means have gradually become the only available means of filing [*], as argued by the appellant in the present case, an applicant cannot be deprived of the possibility of filing an application because this has been made impossible for technical reasons, if there are no legal remedies available [**]."
• [*]  I am unsure about what the LBA means here. Filing on paper is possible, and will remain so even after 01.04.2027 (OJ 2026 A27).
• [**] This part is unclear to me. 
• " In the Board's view, the mere statement that the RS has not been made aware of any circumstances that had prevented the applicant from filing the divisional application via the EPO CUS on that date is not sufficient to rebut the appellant's facts, evidence and arguments on the lack of technical availability of Online Filing, OLF 2.0 and CUS. The RS did not indicate that the appellant did something wrong or overlooked other requirements that should have been accomplished when attempting filing the application online. Nor did it question whether the CUS had been performed correctly by the appellant."
• I think that in practical terms, the RS must include in the file some evidence that the filing method was working during the relevant period, e.g. that applications/documents in other cases (from other parties) were correctly received by the EPO during the relevant hours.
• In this respect, I don't think it is up to the EPO to prove "which means of electronic filing are actually unavailable". Rather, any negative decision under Rule 112(2) is based on a finding, substantiated by evidence, that the relevant filing method was working. 
• Because the decision is anonymised (and the application is not yet published), we don't have access to the file, and we don't know what evidence the applicant has filed regarding the alleged CUS outage. The decision mentions that "The same [error] message was received when trying to sign-in using the smart card for Online Filing 2.0 and to sign-in with the EPO Contingency Upload Service. VIII. When attempting to use two-factor authentication (2FA) for the same electronic filing methods, another error message was received."
• Note, for normal periods, Rule 134 is clear: "The first sentence shall apply mutatis mutandis if documents filed by one of the means of electronic communication [...] cannot be received". However, Rule 134 does not apply to the filing of divisional applications. The applicant therefore sought to rely on the statement in point 31 of the Notice, that "Users who are unable to file a document ... should contact the EPO's Customer Services.4 If it is confirmed that the unavailability of the service is attributable to the EPO, they will not suffer any adverse consequences." This part of the Notice does not clearly say "at least one means of electronic filing" (it is in point 12 of the Notice). The LBA judges that unavailability of one means of electronic filing is enough to create the legitimate expectation of "not suffer any adverse consequences".
• Please always check for any updates or clarifications from the EPO on the issue. 

J 0002/25

EPO 

The link to the decision is provided after the jump.

J 0002/25 - (I) A remedy for a late-filed divisional

Key points

• The title is not an oxymoron. 
• The answer is the principle of protection of legitimate expectations, first prong: users can rely on communications from the EPO. In the case at hand, a Notice from the EPO indicated that, in the event of the type of IT issue that happened the night before, there would be no adverse consequences for the applicant.
• "If a public authority such as the EPO issues a promise or statement on how to act in a given area, the principle of legitimate expectations requires that promise or statement to be honoured unless there is good reason not to do so (J 10/20, Catchword)."; see also G 2/97 r.4.1, first sentence.
• The current Board: "It would constitute a disproportionate and unjustifiable burden to the users of the European patent system if they could not rely on the publications by the EPO and if they could lose rights irreversibly when doing so."
• "At the same time, it cannot be disregarded that the principle of protection of legitimate expectations does not give carte blanche to the person relying on it, so that parties in proceedings before the EPO must act in good faith (G 2/97, Reasons 4.2; R 4/09, Reasons 2.3.2; T 861/12, Reasons 4.5) and must take all necessary procedural actions to avoid a loss of rights (J 3/24, Reasons 3.2.3 citing J 4/23)." 
• "The Notice concerning the procedures and safeguards applicable in the event of outages of means of electronic filing has been published on the EPO's website and in the Official Journal of the EPO (OJ EPO 2020, A120). It is therefore clearly a source of legitimate expectations"
• " Not every expectation held by a person is automatically a legitimate one within the meaning of this principle. It must be an expectation on which a person could, on an objective basis, legitimately rely (e.g. J 4/23, Reasons 2 and 4). The Board finds that in the present case, on an objective basis, it was reasonable for the appellant to have relied on the information provided in the Notice and it is reasonable to assume that the appellant was misled by it."
• The Board orders that "2. The communication noting of loss of rights pursuant to Rule 112(1) EPC of 10 January 2024 is set aside and the application EP XX XXX XXX.X filed on 29 November 2023 is processed as a divisional application. 
• Before the appeal decision, the legal status was that "European patent application EP XX XXX XXX.X was not processed as a European divisional application". For that reason, the application was not published (it seems), and the appeal decision is published in anonymised form.
• There is more to the decision; stay tuned! 

EPO 

The link to the decision is provided after the jump.

J 0010/25 - (II) Correcting the drawings in limine

Key points

• The Receiving Section sent an invitation under Rule 58 to correct the drawings on 10.10.2024, with a two-month time limit.
• "The appellant did not respond within the time limit under Rule 58 EP"
• The Receiving Section issued a refusal decision on 22.01.2025, but  "it was not possible [for the EPO] to prove that this [decision] had been delivered to the [applicant] "
• This is an application of Rule 126(2), second sentence. 
• " The appellant then filed the following drawings: A set of drawings filed on 19 March 2025"
• On 01.09.2025, the Receiving Section issued the (appealed) refusal decision.
• At that time, the corrected drawings were on file. Could the refusal decision still be issued?
• J 11/20: "The deficiency having been remedied late and no [request for re-establishment] having been filed, the Receiving Section was empowered to issue the refusal decision at expiry of the time limit given under Rule 58 EPC (see in particular J 1/18, Reasons 5)."
• Is an appeal sensible?  Yes: J 11/20:  "as clarified in decision J 18/08 (Reasons 4 and 6), when an application is refused under Article 90(5) EPC, if an appeal is filed against such a refusal, the board of appeal has to examine whether the deficiency noted has been corrected or not. Thus the deficiency on which the decision under Article 90(5) EPC is based can be corrected at the appeal stage."
• Interlocutory revision should have been granted, assuming that the new drawings are formally correct. J 11/20: "The practice of the Receiving Section, based on this procedure and following the cited case law, has been to rectify its decision refusing an application under Article 90(5) EPC, if an appeal is filed and the deficiency is remedied at the appeal instance ..."
• It seems that you can file the drawings shortly after the time limit set under Rule 58, but that you can only file the appeal and pay the appeal fee once the refusal decision is issued. Normally, however, that does not take long.
• In this case, the Board does not decide on whether the drawings are acceptable and/or whether they are correctly repaired with the appeal, but remits the case to the Receiving Section for procedural reasons (see the previous blog post). I infer from this choice of the Legal Board of Appeal that it wished to make its point about the Receiving Section's use of standard forms. 
  
  
• As a result, the application, presumably filed on 22.05.2024, has not yet been published (as of August 2026), and the decision of the Legal Board of Appeal is published in anonymised form. I wonder whether, if you wish to keep an invention secret for more than 18 months and only desire a European patent, you can use deficiencies in the drawings to delay the publication. 

EPO 

The link to the decision is provided after the jump.

J 0010/25 - (I) Correctly followed the procedure, still SPV

Key points

• In this case, a European patent application was filed with formal deficiencies in the drawings. The Receiving Section issues a communication under Rule 58; no reply is received within the period of two months, and the Receiving Section issues a decision refusing the application using the appropriate form 1088 (https://link.epo.org/communications/F1088E_07.19_en.pdf) that contains, in relevant part:
• 
  
  
  
• The Legal Board sees a substantial procedural violation in a very short decision.
• "4. The Decision [of the Receiving Section] is ambiguous: the defect could be that the deficiencies noted in the communication dated 10 October 2024 were either: "Not corrected in due time"; or "Not properly remedied". The decision leaves open whether refusal was based on non-observance of the Rule 58 EPC time limit or on an assessment that the subsequently filed drawings still failed to meet Rule 49 EPC. Thus, the decisive ground remains unclear. This violates Rule 111(2) EPC (reasoned decision) and deprives the appellant of effective judicial reasoning. This ambiguity thus constitutes a substantial procedural violation. "
• The Legal Board's point is this, I think: the EPO is not precluded from issuing a reasoned, written decision, i.e. a decision with written case-specific findings and legal reasoning. The choice of the EPO President to prescribe the use of forms to the officers staffing the Receiving Section does not derogate from Rule 111(2) EPC. In other words, Form 1088 as such should be reconsidered. 
• When we are at it: why does the form include the following list of tick boxes? 
• 
  My theory is that it originates from when the forms were pre-printed in batches, not printed on demand with an inkjet printer. A typist would take a printed form (i.e., one sheet of paper pre-printed with the fixed text of the form), tick the relevant box from the list, and type (with a mechanical typewriter) the application number, etc., in the appropriate empty spaces on the form. Comments are welcome, however.  
• My view is that any form with a list of check boxes is outdated, or at least old-fashioned. Communications from the EPO should no longer contain text that does not apply to the case concerned. 
• There is more to this decision. Stay tuned!
  
  
• 
  

EPO 

The link to the decision is provided after the jump.

T 0665/24 - Non-obviousness of arbitrary values (?)

Key points

• Inventive step is at issue. The claim is directed to a drill component and recites: "characterised in that: the quotient Ls/Dy is equal to 0.4 or 0.45". This is a ratio of some length to a diameter.
• The TBA: "the appellant [opponent] has still not convincingly demonstrated that the second distinguishing feature, namely the quotient feature, is obvious. The board accepts that paragraph [0010] of the patent in suit does not associate a specific technical advantage with the claimed values 0.4 and 0.45 over other values. However, this merely serves to determine the formulation of the objective technical problem as the provision of an alternative percussion drill component."
• "The appellant argues that the quotient feature constitutes a mere arbitrary selection from a host of possible solutions or a selection from obvious alternatives [including ] those obtainable through trial and error."
• "The board disagrees because the case law cited by the appellant operates on the premise that a defined host of solutions or obvious solutions, all of which equally suitable candidates for solving the objective technical problem, are available to the skilled person. This premise is not satisfied here. The appellant has not identified any piece of prior art in which the claimed quotients (Ls/Dy = 0.4 or 0.45) are disclosed or suggested."
• "In the absence of any such disclosure, there is no basis for treating these specific values as members of a defined host of alternatives or obvious solutions accessible to the skilled person.
• "The appellant's arguments that the host of possible choices includes those obtainable through trial and error and that any modification to the drill bit of D8 would be obvious due to the minimalistic objective technical problem of providing an alternative drill component remain a mere unsubstantiated allegation."
• "Accordingly, the board concludes that the appellant has not demonstrated that the distinguishing quotient feature is obvious in the light of the available prior art."
• For completeness' sake, the opponent argued that the CPA  document, D8, disclosed a quotient Ls/Dy of 0.568. The application as filed disclosed a range of 0.4 - 1.0.
• "paragraph [0010] of the description of the patent in suit, according to which no particular technical effect is associated with the quotient Ls/Dy being equal to 0.4 or 0.45, as now claimed, in comparison with the other quotients of the range 0.4 to 1.0 disclosed in the said paragraph"
• Compare: "Another aspect of obviousness which is not readily answered by the PSA is illustrated by the 5¼ inch plate paradox. This runs like this. Suppose the patent claim is for a plate of diameter 5¼ inches. And suppose no-one can find a plate of that particular diameter in the prior art. Then (a) it is novel and (b) it is non-obvious for there is no particular reason to choose that diameter. The conclusion, that the plate is patentable, is so absurd that it cannot be so", to cite Lord Justice Jacob "having a lengthy stab at the EPO-style problem-solution approach" in Actavis vs Novartis, and "and arguably getting it wrong", according to David Pearce, IPKat 17.02.2010."
• I wonder what the commercial value of the patent is. Perhaps there is a kind of "must fit" situation for the drill bits at issue such that any "generic" drill bit must exactly match the Ls/Dy ratio specified in the claim, even if the recited value is otherwise an arbitrary choice. Evidently, patent law has no exception for "must fit" spare parts (compare Regulation (EU) 2026/715 , article 9(2) for registered EU designs).
• 
  
• EPO 

The link to the decision is provided after the jump.

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.