T 1762/21 - On Art. 88(4) EPC

Key points

•  The proprietor argued that Paragraphs [0007], [0010], [0020] to [0023], [0026] to [0032], [0048], [0051], [0052], [0054], [0060], [0063] and [0064] of the priority application provided a basis for the subject-matter of claims 1 and 7 of the main request, so priority was valid.
• "Point 4 of the Reasons of G 2/98 referred to by the appellant [opponent] does not imply any different criterion in the assessment of added subject-matter and the validity of a priority claim [than the headnote of G2/98]. The relevant passage reads: "It follows that priority for a claim, i.e. an 'element of the invention' within the meaning of Article 4H of the Paris Convention, is to be acknowledged, if the subject-matter of the claim is specifically disclosed be it explicitly or implicitly in the application documents relating to the disclosure, in particular, in the form of a claim or in the form of an embodiment or example specified in the description of the application whose priority is claimed, and that priority for the claim can be refused, if there is no such disclosure."
• "This passage is in line with and does not go beyond the order of G 2/98, as it states that, in order for a priority claim to be valid, a specific disclosure, be it explicit or implicit, has to be present in the application from which the priority is claimed. The term "deutlich" in the German version of the decision [and in Art.88(4) EPC, see below], which is a translation of the term "specifically" in the English version, does not imply that only a clear claim may enjoy a priority claim. The term qualifies the disclosure in the application from which priority is claimed. This disclosure should be specific ("deutlich") in the sense that the subject-matter for which priority is claimed is to be derived from the disclosure in a direct and unambiguous way."
• "Whether this subject-matter as such is unclear is not decisive as long as the same (unclear) subject-matter is directly and unambiguously disclosed in the application from which priority is claimed. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which priority is claimed. In the passage in point 4 of the Reasons of G 2/98, these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents."
• Article 88(4) EPC reads: "If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically disclose / deutlich offenbart / révèle d'une façon précise such elements. "

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0246/22 - What does admissibly raised mean?

Key points

• I think this is an important decision. 
• " Pursuant to Article 12(4), first sentence, RPBA, such qualification as "amendments" applies only "unless the party demonstrates that this part was admissibly raised and maintained in the proceedings leading to the decision under appeal" . To decide whether this exemption applies here, in which case auxiliary requests 3 to 8 would necessarily be part of the appeal proceedings, or whether they are indeed "amendments", in which case their forming part of these proceedings would be a discretionary matter for the board, requires in particular an interpretation and application of the terms "demonstrates", "admissibly raised" and "maintained".
• "the ordinary meaning of "demonstrates" must be that, as a general rule, the party making a submission that would, on the face of it, constitute an "amendment" bears the burden of showing that it was "admissibly raised and maintained" in the proceedings leading to the decision under appeal. The lawmakers' idea was obviously not to put ex officio responsibilities on the boards and/or expect them to assume an investigative role, learn every detail of the first-instance proceedings, identify and track claim requests to their source, and understand why they were filed. The onus is no doubt on the amending party."
• The Board acknowledges that there was "some leniency in this respect in the early jurisprudence (cf. T 221/20, T 42/20 and T 476/21)"
• "The proprietor also argued, in its reply to the board's communication under Article 15(1) RPBA and relevant to the matter of demonstrating that auxiliary requests 3 to 8 were "admissibly raised" in the opposition proceedings, that the requests were "entirely validly filed" six weeks in advance of the final date for making submissions ahead of the oral proceedings under Rule 116 EPC. However, what the proprietor means by the unsubstantiated phrase "entirely validly filed" is obscure, and the rest of the arguments in that reply are rather relevant to the demonstration of maintenance (i.e. a matter already resolved above)."
• What more can the patentee say about admissibility?
• The board finds it helpful, in the context of claim amendments, to establish what the actual requirements might be for a party's demonstration that submissions were indeed "admissibly raised".In that regard, one viable approach could be that a Board decides whether the opposition division should have admitted the respective claim request into the opposition proceedings, had a decision on admittance been required (see e.g. T 364/20, Reasons 7). This would in turn mean that a Board - at least in part - should slip into the shoes of the opposition division. It would then have to infer, from the Board's perspective, how the opposition division should have exercised its discretion on the basis of the applicable procedural basis, e.g. in view of the current Guidelines for Examination, but also leniently applying the RPBA (see T 364/20, Reasons 7.2.10, last sentence). However, one of the possible consequences of that approach could arguably be that the boards would have to closely monitor the currently applicable Guidelines to derive guidance as to how the respective opposition division should have exercised discretion generally conferred by Article 123(1) EPC in conjunction with Rule 81(3) EPC in inter partes proceedings (cf. R 6/19, Reasons 6 and 7). For the boards, the subject of such an approach could virtually correspond to a "moving target", possibly leading to similar cases being treated differently, depending on the amendments made to the Guidelines over the years. This approach also fails to convince this board since the Guidelines are not binding on the Boards and since the RPBA are approved and adopted specifically to govern the proceedings before the Boards.
• This board, however, proposes another approach, namely that of defining minimum requirements for the demonstration of "admissibly raised" which could be more conducive to legal certainty and fairness in that regard, especially in opposition appeal proceedings. The board considers that claim requests which were already filed during the opposition proceedings and which did not belong to the basis of the decision under appeal in the above-mentioned sense (i.e. "carry-over requests") may indeed be regarded as "admissibly raised" under the minimum requirements that the party shows
(1) that they were filed in due time, typically before expiry of the time limit set by the opposition division under Rule 116(1) and (2) EPC, and
(2) that it was made clear, explicitly or by way of unambiguous implication, for which purpose they were filed, i.e. which objections raised by the other party or the opposition division they try to overcome and how this is actually achieved.
• " the present board also does not subscribe to the test, with elaborate criteria, proposed by the competent board in case T 1800/20. According to that decision - besides the timing aspect - questions relating to (i) the suitability of the submission to overcome the objections raised against a higher-ranking claim requests, (ii) whether the submission gives rise to new objections and (iii) the suitability of the submission to be part of a convergent development of the first-instance proceedings should be considered in the assessment whether submissions were "admissibly raised" (see Reasons 3.4, items a) to d)). Taking such additional criteria into account when assessing the concept of "admissibly raised" and thus the question whether there is, at all, any discretion for a Board not to admit a party's submission into the appeal proceedings would compellingly lead to a significant overlap with the codified criteria to be used by the Boards once they indeed have such a discretion"

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1311/22 - Result to be achieved (vacuum cleaner quality factor)

Key points

•  Claim 1 of the patent as granted is directed to a vacuum cleaner and specifies, in translation, "a vacuum cleaner with an average power consumption of less than 1200 W and a filter bag with a separation efficiency of the filter bag material greater than 60%, the device for vacuuming having a quality factor for an unfilled filter bag Q(w)un defined by ... which is greater than 25"
• The Board, on sufficiency, in translation: "Claim 1 defines the device by functional characteristics, namely in relation to a result to be achieved, which in turn is expressed by values ​​of the newly defined parameter "quality factor""
• " The peculiarity of the functional definition of a technical feature is that it is defined by its effect. Such a definition refers quite abstractly to an indefinite number of possible alternatives and is permissible as long as all alternatives are available to the person skilled in the art and deliver the desired result; Therefore, it must be checked whether the patent discloses a generalizable technical teaching that makes the entire spectrum of variants that fall under the functional definition accessible to the person skilled in the art."
• " Claim 1 itself only contains minimum values ​​for the two quality factors, but no information as to which structural features of the vacuum cleaner and/or filter bag must be set and adjusted so that these minimum values ​​can be achieved in contrast to the comparative examples. In other words, the scope of protection of the granted claim 1 includes all vacuum-cleaning devices with filter bags and the claimed parameters, completely regardless of the way in which a vacuum loss is reduced in such a way that correspondingly high quality factors are achieved (the only thing excluded is their achievement via a low degree of separation, see above). As explained below, the person skilled in the art cannot deduce from the description how this can basically be accomplished without unreasonable effort, possibly based on a specific exemplary embodiment."
• "These very specific exemplary embodiments also do not give the person skilled in the art any clues as to which of the numerous features and measures - whether all or only certain of them - are crucial for achieving the claimed quality factors, so that he can also determine the subject matter of the claim through a targeted selection of other suitable pairings of filter bags and vacuum cleaner devices "
• "The scope of protection of claim 1 therefore includes any device of the generic type in terms of power consumption, negative pressure in the floor nozzle and degree of separation with an at least slightly better quality factor/efficiency than devices from the prior art, including those with as yet unknown, future components such as new filter bag materials. In contrast, only very specific exemplary embodiments are disclosed, which enable a rather limited improvement in the quality factors to values ​​of up to just over 30% or 25%."
• "the patent does not disclose the invention so clearly and completely that a person skilled in the art can carry it out, Article 100(b) EPC."
• As a comment, T0595/90 permitted a claim to a steel sheet having an "iron loss of less than 0.90 W/kg" (i.e. down to 0.00 W/kg), low iron loss values being the desired feature (but not an unusual parameter as such).  Whether the cases can be distinguished from each other or whether the case law is developing remains to be seen. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1220/21 - A tutorial on Art. 12(3) RPBA

Key points

• A carry-over auxiliary request [*] was re-submitted with the reply of the proprietor/respondent. The basis for the amendments was indicated in a marked-up copy of the claims. The Board, in the end, considers this insufficient because references were made to paragraph numbers.  "In fact, the description as originally filed does not even include numbered paragraphs, so the reference to "[SP [0056]]" (probably also the reference to claim 5) is either wrong or refers to the patent as granted rather to the application as filed".
• * =  i.e. an auxiliary request that is lower ranking that the claim request that was held to be allowable by the OD./
• The Board first confirms established case law that requests that benefit from the unless clause of Art. 12(4)(s.1) RPBA must be substantiated in appeal under Art.12(3), and adds that this involves indicating the basis for the amendments by analogous application of Art. 12(4)(s.4).
• "According to Article 12(3) and (5) RPBA 2020, a lack of or an insufficient substantiation of an amended request may lead to the non-admittance of this request. This does however not imply that the request has not been validly filed" (note that Art. 12(5) indeed mentions this discretion).
• "The admittance of an amended request which is not expressly substantiated pursuant to Article 12(3) RPBA 2020 is at the discretion of the Board under Article 12(5) RPBA, even if the amendments are self-explanatory". The reason is that "an implicit argument does not meet the requirement that the party should specify expressly the arguments relied on (T 2598/12, reasons 1.10)" Art.12(3) requires a substantiation and requires parties to specify expressly the arguments relied on, which is not complied with by an implicit argument. The Board adds that the self-explanatory nature of the amendments will be a factor to consider when deciding on whether to admit the claim request.
• I'm unsure about this reasoning. Any appeal case relies on a large number of technical/scientific arguments/facts which are implicit but evident to the skilled person as common general knowledge. Article 12(3) can not be interpreted to require that self-evident arguments/facts are spelled out in the appeal submissions. 
• "The substantiation of an amended request under Article 12(3) RPBA 2020 includes the primary duty of the proprietor to indicate the basis for the amendments in the application as originally filed, even if no objection under Article 123(2) EPC has been previously raised" (the possibility of previously raised objections applies to carry over requests).
• The Board is not in favour of annexes. "Information that can only be found in attached documents, without an explicit reference and explanation by the party, cannot be regarded as sufficient substantiation pursuant to Article 12(3) RPBA 2020".
• Turning to substantiation of amended claims in general: "(b) If a claim request is intended to overcome novelty or inventive step objections, the proprietor should at least identify the relevant documents and the features which distinguish the claimed subject-matter therefrom (see T 1659/20, reasons 2.1). According to some Boards, where a claim request is filed to overcome an objection under Article 56 EPC, the proprietor should even substantiate it on the basis of a more detailed chain of logic (see for example T 420/14, reasons 9.5).

• (c) However, the specific extent and detail of the explanations required to substantiate a claim request cannot be determined in an absolute or precise manner. This may depend on the level of detail and accuracy of the objections to be overcome in the impugned decision or as raised by the opponent (see T 1659/20, reasons 2.1). Moreover, the required degree of substantiation is not static, but might depend on how the corresponding objections evolve.'

• "The purpose of Article 12(3) RPBA 2020 is to ensure that the relevant submissions are present in the proceedings as early as possible to enable the Board and the other party(ies) to start working on the case on the basis of the parties' complete submissions (Case Law of the Boards of Appeal, 10th edition, V.A.4.3.5 a)) without being forced to speculate on the intentions of the other parties. The extent to which a lack of or an incomplete substantiation runs counter to this objective is a factor that may be taken into account when exercising the discretion under Article 12(5) RPBA 2020 (T 1659/20, reasons 2.1). This includes addressing the question of whether the amendments and the chain of logic underlying the claim requests are self-explanatory."

• I recommend reading the entire decision.

• The headnote seems to add a few points that can not be found (literally) in the reasoning itself.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 1252/20 - A solution for forming a blockage in a blood vessel

Key points

• Claim 1 is directed to " A composition for use in reducing ... cancerous cells in a subject by forming at least a partial blockage, ... in a blood vessel to deprive a tumor in the subject of blood supply, ...  the composition comprising: a solution comprising an amphiphilic peptide in an effective amount and in an effective concentration to form a hydrogel under physiological conditions to allow at least a partial blockage of the biological vessel to effect embolization or cell necrosis therein, ..."
• The question is whether this is a valid second medical use claim. 
• " In its decision the Examining Division came to the conclusion that the peptide solutions defined in claim 1 of the applicant's main request did not qualify as "substance or composition" in the sense of Article 54(5) EPC, their mode of action being purely mechanical. The Examining Division referred in particular to decision T 1758/15 to support this view. " 
• " The Board, however, is convinced that the peptide solutions defined in the claim do qualify as "substance or composition" in the sense of Article 54(5) EPC, and that thus the claimed subject-matter is novel over D1 and D2 due to the specific use defined therein. This will be reasoned in the following." 
• "  The question of what can be considered a "substance or composition" in the sense of Articles 54(4) and (5) EPC regularly emerges in cases before the Boards of Appeal. From the analysis of Articles 53(c) and 54(4) and (5) EPC as explained above it follows that not every object can be read on this definition, although of course every object, also a medical device, is in the end made up of substances and/or compositions. The decision G 5/83 which established the patentability of second medical indications and in fact served as the basis for Article 54(5) EPC (see T 1758/15, Reasons 5.2.5) also emphasised that the application of the special approach to novelty through the intended use is strictly limited to claims that are directed at substances or compositions intended for use in methods stipulated by Article 52(4) EPC 1973, corresponding to Article 53(c) EPC (G 5/83, Reasons 21, last sentence)." 
• " [Established] case law imposes restrictions to what may fall under the definition of "substance or composition" in the sense of Article 54(5) EPC based on its mode of action. Whereas the materials underlying these cases, collagen fillers, alginates or bone glue, would, in everyday language, be seen as substances or compositions, they were not considered "substances or compositions" in the sense of Article 54(5) EPC since once inside the body they acted as a device." 
• " [The Board] is convinced that the peptide solutions defined in the claim must be considered a "substance or composition" in the sense of Article 54(5) EPC already for more fundamental reasons. In the following, for reasons of brevity, also where only "substance" is mentioned, it is understood that a "substance or composition" within the meaning of Article 54(5) EPC is meant."
• I recommend reading the entire decision.  
• " the exceptional approach to novelty of Article 54(5) EPC (and equally of Article 54(4) EPC) is not only applicable in case of therapeutic treatments, but also for treatments by surgery and for diagnostic methods. Decision G 5/83 addresses exclusively a therapy where a medicament is administered and its active agent achieves some therapeutic effect, such as treating an illness. The claim category endorsed by G 5/83 was also explicitly directed at the "use for manufacture of a medicament". However, with the adoption of the EPC 2000 it became clear that the novelty exception now generally encompassed all uses of a substance falling under Article 53(c) EPC, e. g. also surgical treatments and diagnostic methods, meaning that the the scope of Article 54(5) EPC is broader (G 2/08, Reasons 6.5). This already speaks against a too narrow interpretation of "substance or composition", possibly limiting it to such uses where the mode of action is exclusively or at least predominantly chemical. In particular, the use of a substance in a surgical or diagnostic method may possibly involve various mechanisms of action which may not immediately appear comparable to a classical "chemical" reaction triggered by a medicament." 
• " There is no legal basis for the mode of action as a criterion for qualifying a material or object as a substance or composition under Article 54(5) EPC. " 
• " In addition to the lack of a legal basis, the use of the mode of action as the decisive criterion seems problematic for several other reasons. First of all, the material acting inside the body may not be the same than the material the claim is directed to. The material defined in the claim and the material acting inside the body may differ in composition or in some other relevant property. This is clearly so in the present case. The claim requires the presence of a peptide solution. Already for this reason the claim is not directed to any particulate or spheric form of a hydrogel formed from the peptide solution inside the body. The question to be asked is whether the peptide solution defined in the claim is a "substance or composition". This question is to be decided irrespective of whether any solidified macrostructure formed from the substance, upon application in a specific way, can also be considered a substance or composition, or should rather be seen as a device. In other cases even the chemical structure of the substance may not remain the same during the therapeutic use. The Board notes that there are classical drugs which are administered as inactive prodrugs, the active species only being formed in the body by metabolic processes. However, second medical use claims under Article 54(4) and (5) EPC are generally directed to the administered substance. Since it is this substance which is used in a method excluded under Article 53(c) EPC, such a claim drafting is entirely in line with Articles 54(4) and (5) EPC."
• "The Board does not overlook the fact that distinguishing devices from substances for the purposes of Article 54(5) EPC is indeed required, and this article should not be used to circumvent the usual assessment of novelty of devices. A pacemaker or a surgical scalpel made of a particular stainless steel alloy do not qualify as a "substance or composition", even if they are claimed for use in an arguably novel therapeutic or surgical method. However, there is no apparent reason to disqualify a solution of a peptide, i. e. a shapeless liquid defined without any device-like features, from the scope of Article 54(5) EPC."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 2391/18 - No need to tidy up the description in opposition

Key points

•  "The allegedly required amendment to paragraph [0017] does not relate to any amendment to the claims during opposition proceedings. Instead, as set out above, this amendment relates to an alleged inconsistency that already existed in respect of a feature present in the granted claims."
• " Such an amendment to the description is not appropriate in opposition proceedings or opposition appeal proceedings. (....) [T]here is no reason for the Board (or the Opposition Division) to come to the conclusion that the requirements of the Convention (in particular the requirements of Article 84 EPC) within the meaning of Article 101(3)(a) EPC are not fulfilled. The reason for this is the conclusion of the Enlarged Board in G 3/14: in considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC."
•  "Since in a case such as the present one the amendment to the claims did not introduce an issue of non-compliance with Article 84 EPC, an opposition division or a board of appeal cannot examine the claims of the patent for compliance with the requirements of Article 84 EPC, including the requirement of "support by the description" in the second sentence of this provision. There is thus no reason for the Board to object to the wording of paragraph [0017] of the amended description as filed during the oral proceedings before the Board."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1303/18 - Disclosure of a compound, inherency for Art.54 and Art.123(2)

Key points

• The question is whether the priority is valid.
• "The appellant [proprietor] argued that there was no doubt that the claims as granted and the whole disclosure of [priority application] D49 concerned the same invention within the meaning of Article 87(1) EPC and opinion G 2/98, namely, polymorphic form II of rotigotine."
• "In claim 1 as granted (point II above), the claimed compound is said to be polymorphic form II of rotigotine and is defined by at least one of four properties, namely: (a) a certain X-ray powder diffraction spectrum comprising four peaks with an error margin of ± 0.2, said to be measured with Cu-Kalpha irradiation (1.54060 Å); (b) a Raman spectrum comprising specific peaks with an error margin of ± 3 cm**(-1); (c) a DSC peak with a certain Tonset with an error margin of ± 2°C; (d) [a melting point of 97°C ± 2°C]."
• The Board: "Comparing the definition in terms of property (a) given in claim 1 as granted with the above disclosures in D49 reveals the following differences. - The set of peaks defined for the X-ray powder diffraction spectrum in claim 1 as granted is a set of four peaks, while that in the above disclosures of D49 is a set of 14 peaks. 
• The Board also considers property (b) (Raman spectrum), finding differences; the same applies for properties (c) and (d).
• As to the melting point:  "The melting point is not disclosed [in D49]" ... "no basis exists in D49 for  a melting point of 97°C ± 2°C as defined in claim 1 as granted"
• " in the current case, it is the subject-matter of claim 1 as granted that has to be directly and unambiguously derivable from D49. The appellant [proprietor] pointed out that the patent and D49 disclosed the same methods for characterising the mentioned polymorphic form and that the same figures resulted from this characterisation, thus demonstrating identity of the invention. However, the fact that the same characterisation methods like X-ray diffraction, Raman spectrum and DSC calorimetry are used to describe the disclosed compound in both the patent and D49 plays no role when assessing the above requirement. Also the fact that the patent and D49 share the same figures is irrelevant; what is decisive is whether or not, using common general knowledge, a compound as defined in claim 1 of the patent is directly and unambiguously disclosed in D49 as a whole."
• " The appellant argued that identity between the claimed compound and the compound disclosed in D49 was already evident from the fact that the polymorphic form of rotigotine was designated as form II in both claim 1 as granted and D49. While alleged discrepancies in the definition of form II were merely due to the different sets of analytical data used for defining form II, this did not change the fact that the same compound was disclosed. A polymorphic form of a given compound remained the same regardless of the method used for characterising it."
• "Contrary to the appellant's view, it is the set of analytical data chosen to characterise the compound that gives the skilled person the information necessary to identify the compound referred to. For the reasons set out above, the set of analytical data used in claim 1 as granted is not directly and unambiguously disclosed in D49. Therefore, it cannot be concluded that the compound defined in claim 1 as granted is the same compound as disclosed in D49."
• "the appellant submitted that structural properties allegedly lacking in D49 were implicitly disclosed to the skilled person since they were inherent to polymorphic form II and accessible by using the disclosed analytical methods. "
• As a comment, this argument may run foul of the rule that amendments may not add technical information (G2/10 r.4.5.1). Even if a compound inherently exhibits a  melting point of 97°C, adding a statement to that effect to a patent text may still violate Art. 123(2). However, this position may be controversial. A possible counter-argument could be that there is no change of subject-matter because there is only a single compound "rotigotine form II". This raises, in turn, the epistemological question of what is a compound? And what is the scope of a patent claim directed to a particular polymorphic form of a compound, and how this scope depends on the definition of the polymorphic form? 
• "This argument is not convincing either. Priority has been claimed from a written disclosure (D49) and it is from this disclosure that the skilled person should have been able, at the relevant date, to derive directly and unambiguously, using common general knowledge, the subject-matter of claim 1 as granted. However, as set out above, D49 does not disclose the same compound as that defined in claim 1 as granted."
• "Moreover, even assuming that the skilled person could have been in a position to analyse a sample of the rotigotine form II disclosed in D49, the skilled person would have obtained, inter alia, the whole X-ray powder diffraction spectrum and Raman spectrum (which are in fact represented in figures 1 and 5 of D49). However, for the reasons given above, these whole spectra do not constitute an adequate basis for the definition of the polymorphic form of rotigotine as given in claim 1 as granted. "
• "the board sees no inconsistency in the way the opposition division assessed the validity of priority on one hand and the novelty of the claimed subject-matter on the other. In fact, in terms of novelty (see corresponding point below), the relevant prior art is a sample of a polymorphic form of rotigotine, which could have been analysed by the skilled person so as to obtain, inter alia, its whole X-ray powder diffraction spectrum and Raman spectrum. These whole spectra were found by the opposition division to anticipate the definition of the polymorphic form of rotigotine as given in claim 1 as granted."
• "The application of one and the same standard for Articles 54 and 87 EPC does not, however, mean that the conclusions for novelty and validity of priority must necessarily be the same. More specifically, [] a priority application can directly and unambiguously disclose something falling within the scope of a claim of a subsequent application and thus anticipate the subject-matter of this claim while at the same time the latter still includes subject-matter not disclosed in the priority application, such that the priority is invalid."
• In the case at hand, the priority application was not published and not cited as novelty-destroying, so the Board is considering a hypothetical novelty objection if D49 was prior art. Indeed, the compound disclosed in D49 would inherently have the melting point specified in claim  1 (leaving aside that claim 1 specifies four alternative features) and hence inherently fall within the scope of the claim even if D49 does not disclose the melting point.
• The OD had found that: "The subject-matter of claim 1 of the main request and claim 1 of auxiliary requests 1 and 2 was not novel over the public prior use of rotigotine form II in commercial Neupro**(®) patches which occurred between the earliest and the subsequent priority date."

Partial priority / admissibility

• The Board did not admit the argument based on partial priority:  "In its letter dated 21 August 2020 (point 1.2.1.3 on pages 11 to 14), i.e. after the filing of the grounds of appeal and replies and before the summons to oral proceedings was issued (6 December 2021), the appellant argued for the first time that, should the priority from D49 be considered invalid, the subject-matter of claim 1 as granted should at least be entitled to a partial priority from D49 in accordance with decision G 1/15." The Board: "Decision G 1/15 was published in the Official Journal of the EPO in 2017, i.e. before the oral proceedings held on 15 February 2018 before the opposition division. Therefore, the appellant's defence claiming a right to partial priority could and should have been presented before the opposition division or included at the latest in the statement of grounds of appeal, so as to comply with the requirement to present the complete case at the outset of the appeal proceedings."
• " In its letter dated 21 August 2020, the appellant did not indicate any reason why the defence asserting a right to partial priority was only filed after its statement of grounds of appeal."
•  "The appellant [proprietor] argued that this defence did not constitute an amendment of its appeal case. It only concerned interpretation of law by means of an argument based on a decision of the Enlarged Board of Appeal. Therefore, the appellant was allowed to make this defence at any point during the proceedings. "
• " Contrary to the appellant's view, the defence by which a right to partial priority was invoked was not merely a presentation of a new argument pertaining to the interpretation of law but comprised a new allegation of fact. The appellant namely asserted that priority application D49 directly and unambiguously disclosed in an enabling manner part of the subject-matter of claim 1 as granted, and specifically that claim 1 as granted encompassed this part as an alternative subject-matter by virtue of a "generic "OR"-claim" within the meaning of decision G 1/15 (order). Therefore, the submitted defence would have involved a new factual assessment of the subject-matter of claim 1 as granted and of priority application D49, namely as to precisely which part of claim 1 it was that allegedly enjoyed partial priority and where it was disclosed in D49."
• " As pointed out by the respondents, this new factual assessment would have been complex. This was evident from the fact that in some aspects the subject-matter of claim 1 as granted had been restricted as compared with the disclosure in D49 by inserting characteristics of the claimed compound such as a melting point and further Raman peaks which were not disclosed in D49. 
• As a comment, as the public prior use is full prior art (Art.54(2)) for those parts of the claim for which the priority is invalid, the prima facie relevance of the arguments is not entirely clear. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0882/17 - Reformatio in peius and admissibility of opposition

Key points

•  "In their reply to the notice of opposition, the proprietors had submitted that there were doubts as to the identity of the opponent and that the opposition was thus inadmissible. The opponent had then filed a request for correction of the opponent's name under Rule 139 EPC. With a communication pursuant to Article 113(1) EPC dated 15 April 2016, the Opposition Division informed the parties that "the request for a correction of the name of the opponent under Rule 139 EPC dated 25.03.15 is hereby accepted and the notice of opposition is admissible", and gave reasons for this decision. The opponent's name was then corrected. In its [interlocutory decision to maintain the patent in amended form], the Opposition Division did not refer to the issue of the admissibility of the opposition." 
• The opponent appeals (only). "The respondents (proprietors) requested that the appeal be found inadmissible, that the opposition be found inadmissible, or that the appeal be dismissed." 
• The Board also states that: "The respondents requested that the opposition be found inadmissible and the patent be maintained as granted." 
• As a comment, in the particular context of the present case, there is a subtle difference between finding the opposition to be inadmissible and maintaining the patent as granted because rejecting the appeal of the opponent causes the patent to be maintained in amended form.
• The Board: "Under the principle of the prohibition of reformatio in peius it is unlawful to worsen the position of the appellant because of its own appeal." 
• The Board: "if the Board considered the opposition inadmissible, set aside the decision under appeal and maintained the patent as granted, the solely-appealing opponent would be in a worse position than if it had not appealed. Thus the question arises whether the principle of the prohibition of reformatio in peius prohibits such a result." 
• The patentee argues that "Decision G 1/99 should be applied by analogy to allow for an exception to the principle of the prohibition of reformatio in peius." 
• The Board: "The exception recognised in G 1/99 is limited to claim amendments made during the appeal proceedings which extend the scope of the patent in comparison to the version maintained by the Opposition Division. Such broadening claim amendments are only permitted under very strict conditions.
• The Board: " Clearly, invoking the inadmissibility of the opposition has nothing to do with a claim amendment made in reaction to an objection which has been submitted by the opponent or the Board during the appeal proceedings within the meaning of G 1/99. Generally speaking, invoking the inadmissibility of the opposition is not the only possible way for a patent proprietor to avoid revocation of a patent due to an opponent's appeal either. G 1/99 thus concerns an entirely different situation from the present case and can therefore, contrary to the respondents' view, not be applied by analogy." 
• "it thus seems that a patent proprietor who did not appeal an interlocutory decision by the Opposition Division [to maintain the patent in amended form] is barred from raising the inadmissibility of the opposition as a mere respondent in order to achieve the maintenance of the patent as granted. If the opponent is the sole appellant, G 9/92, G 4/92 and G 1/99 do not seem to allow account to be taken of the inadmissibility of the opposition in a way which leads to this result." 
• " This matter has, however, been assessed differently in several decisions by technical boards of appeal. The leading decision in this regard is T 1178/04 (OJ 2/2008, 80). It is stated therein that the admissibility of the opposition is an indispensable procedural requirement which must be examined ex officio in the appeal proceedings and which is not subject to the principle of the prohibition of reformatio in peius (Reasons 18-36). " 
• T 1178/04 more precisely concerned the purported transfer of an opposition, not the admissibility of the opposition. Nevertheless, the Board was clear in that decision that "the principle of no reformatio in peius is of no application" in both situations.
• The entrusted Board in that decision found the purported transfer of the opposition to be invalid and set aside the decision under appeal entirely. The Board observed that the OD, after the remittal, would not be bound by the previous decision.
•  " The Board in T 1178/04, Reasons 19, [...]  stated that, after remittal and rehearing of the case, the opponent "may find itself in a worse position than if it had not appealed".
• T 1178/04 adds that admissibility of the opposition (instead of transfer opposition) was reviewed in a few earlier decisions, even though the opponent was the only appellant: "See, for example, Decisions T 199/92, T 960/95 and T 1180/97 (all unpublished in the OJ). It clearly never occurred to the parties or the respective Boards in these cases even to raise the issue of no reformatio in peius." In all those cases, the oppositions were considered to be admissible.
   
• " The present Board disagrees with the approach in T 1178/04 for the following reasons:" 
• " As the Board in T 1178/04 put much emphasis on the origin of the principle of the prohibition of reformatio in peius as applied in the German legal system, the present Board considers it appropriate to address this line of argument in detail." 
• An extensive discussion of German case law follows in the decision.
• " If anything, the opposite can be deduced from German case law, namely that what have been termed indispensable procedural requirements are not generally exempt from this principle. The Board considers the more recent case law of the Federal Court of Justice on this matter both more authoritative (see J 14/19, Reasons 6.10) and more convincing than the legal literature referred to in T 1178/04." 
• J 14/19 r.6.10 is indeed about the status of legal commentaries.
• " Numerous decisions of the Boards of Appeal have stated that the admissibility of the opposition is an indispensable procedural requirement (T 646/13, Reasons 1.2: "established case law"). However, even if it is assumed that the admissibility of the opposition qualifies as an indispensable procedural requirement which can and must be examined at all stages of the appeal proceedings ex officio (i.e. even if none of the parties raises an objection in this regard), it does not follow from this qualification that the principle of the prohibition of reformatio in peius would not be applicable. [] In the Board's view, the latter does in particular not follow from G 3/97 and G 4/97, Reasons 6. " 
• " Moreover, in G 7/91 and G 8/91 the Enlarged Board held that the appeal proceedings are regarded as terminated by virtue of the withdrawal of the sole appellant's appeal in so far as the substantive issues settled by the contested decision at first instance are concerned (Reasons 12)." [...] "if the admissibility of the opposition were not subject to the principle of the prohibition of reformatio in peius, an opponent as the sole appellant against an interlocutory decision could still withdraw its appeal whenever this objection is considered successful by a board, for example during the oral proceedings before a board. This would, firstly, be at odds with the statement in G 9/92 and G 4/93, Reasons 12, that "the concept that it should be possible for a sole appellant to be compelled as a result of opposing requests to withdraw its appeal" is absent from the EPC. Secondly, the appeal proceedings would then be terminated and the Board could anyway no longer order maintenance of the patent as granted due to the inadmissibility of the opposition. In other words, the Board could then no longer do anything about the inadmissibility of the opposition, and the interlocutory decision under appeal, lacking this procedural requirement, would become final. Both of these considerations speak against the inadmissibility of the opposition not being subject to the principle of the prohibition of reformatio in peius."
• I note that it is possible for a Board to announce a decision and then immediately close the oral proceedings, without announcing preceding conclusions. So in practice, it is not always true that: "an opponent as the sole appellant against an interlocutory decision could still withdraw its appeal whenever this objection is considered successful by a board". 
• " As stated before, if the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the Board is prohibited from ordering maintenance of the patent as granted due to the inadmissibility of the opposition. This does, however, not answer the question of whether the Board then may not assess the admissibility of the opposition at all, whether it may only assess it in the context of the admissibility of the opponent's appeal, or whether that assessment may only be carried out in the context of the allowability of the appeal. None of these options would contravene the principle of the prohibition of reformatio in peius.' 
• " the admissibility of an opposition is to be assessed in the context of the allowability of the appeal. [...] Under this approach, an opponent's (admissible) appeal against the interlocutory decision of an Opposition Division maintaining the patent in amended form is dismissed as unallowable if the Board finds the opposition inadmissible." 
• Turning to the admissibility of the opposition: "In conclusion, the Opposition Division's decision to correct the opponent's name under Rule 139 EPC was correct, as well as its decision to consider the opposition admissible. The identity of the opponent could be established on the basis of the information in the notice of opposition." 
• The claims at issue are found to be allowable.
• The appeal is dismissed.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2920/18 - A close reading of Art.13(2) RPBA

Key points

•  The patentee (respondent) files a new auxiliary request after notification of the summons.
• "The respondent argued that the first auxiliary request did not comprise any additional subject-matter since only claims 2 to 5 and claims 12 and 13 of the main request had been deleted in reaction to the Board's preliminary opinion as regards the objection under Article 100(b) EPC against claims 2 and 3 of the main request"
• "The Board follows decision T 247/20, point 1.3 of the Reasons, in that the examination under Article 13(2) RPBA 2020 is of a two-step nature (see also T 2988/18, point 1.2 of the Reasons), i.e. in that it is first necessary to examine whether there is an amendment to a party's appeal case. If that question is answered in the negative, there is no discretion not to take the relevant submission into account. However, if the question is answered in the positive, it is necessary to examine whether the party concerned has provided cogent reasons for the existence of exceptional circumstances which may justify the submission at such a late stage of the proceedings."
• "The question of whether Article 13 RPBA 2020 is applicable in the case of a mere deletion of claims, [...] is answered differently in the case law."
• "according to that systematic interpretation, the filing of an amended set of claims, even if the amendment is merely a deletion of claims and the remaining claims were already part of a set of claims in the appeal proceedings, constitutes an amendment to a party's appeal case. The Board finds the systematic interpretation of the term "amendments to a party's appeal case" convincing and endorses this view. "
• So, whether or not to admit the request is subject to Art. 13(2) RPBA.
• " the Board would first like to point out that Article 13(2) RPBA 2020 does not explicitly provide for discretionary power of the Boards. However, it is clear from the explanatory remarks that the legislator had the intention to give the Boards discretionary power (see Supplementary Publication 1, OJ EPO 2020, Annex 2, page 221, explanatory remarks in the third column, third paragraph, last sentence: "The Board may decide to admit the amendment in the exercise of its discretion."). This is also apparent from Article 13(1), first sentence, RPBA 2020, which in general provides for discretion for the admittance of amendments to the appeal case after the filing of the statement of grounds or reply. Furthermore, the exclusion of any discretion would hardly be compatible with Article 114(2) EPC."
• "In T 1294/16 the Board concluded that the word "in principle" should be ignored due to its ambiguity, because it was either redundant to the requirement of "exceptional circumstances" or would provide a residue of discretion for the Board to admit a request even in the absence of exceptional circumstances (cf. ibid., point 18.1 of the Reasons). The Board does not follow this approach, since a term contained in a legal provision should only be disregarded if no interpretation appears possible or if it appears to be manifestly contrary to the meaning of the provision, or if an interpretation cannot be reconciled with higher-ranking law"
• "On the contrary, the Board is of the opinion that a meaningful interpretation is readily possible. The principle laid down in Article 13(2) of the RPBA 2020 is precisely that amendments to a party's case shall not be taken into account at this late stage of the procedure ("in principle"). The exception to this principle then follows in the half sentence introduced by the phrase "unless", i.e. the principle that amendments to a party's case shall not be taken into account at this late stage of the procedure (i.e. "in principle") can be set aside if the existence of exceptional circumstances is demonstrated with cogent reasons. Such an interpretation is also consistent with the explanatory remarks to Article 13(2) RPBA 2020"
• Turning to exceptional circumstances: "the explanatory remarks appear to require causality in the sense that the amendments to a party's appeal case must have been triggered by exceptional circumstances.
• "However, in similar cases, some Boards have acknowledged exceptional circumstances provided that the admittance of the amendments was neither detrimental to procedural economy, nor to the convergent approach laid down in the RPBA, nor to the legitimate interests of a party to the proceedings. This specific procedural situation was considered an "exceptional circumstance" within the meaning of Article 13(2) RPBA 2020 (see T 1598/18, point 25.1 of the Reasons; T 1294/16, points 18.3 and 19 of the Reasons; T 339/19, point 1.5 of the Reasons)." 
• "It should be noted that the wording of Article 13(2) RPBA 2020 does not require the amendment to be triggered by exceptional circumstances."
• As a comment, that's undeniable true. Based on the English wording, the requirement is simply that "there are exceptional circumstances".  Any requirement for a nexus between the circumstances and the appeal case is implicit. 
• As a further comment, the wording requires that the party justifies the circumstances (in the English version). So, if the relevant circumstance is a  new objection raised by the Board, it is for the party to justify that circumstance according to the literal wording of the provision.
• " It is sufficient for exceptional circumstances to exist, which can therefore also be of a legal nature. In the Board's view, such an interpretation does not conflict with the above explanatory remarks, which appear to illustrate only the main scenario under that provision that an amendment to the appeal case may be taken into account if it is made in reaction to exceptional circumstances."
• " In addition, a teleological interpretation which considers the purpose of the EPO's power to disregard late-filed facts or evidence and the discretionary power to refuse new requests as enshrined in Articles 114(2) and 123(1) EPC seems to support this conclusion. It follows from the preparatory documents ("travaux préparatoires") to the EPC 1973 (cf. T 122/84, point 11 of the Reasons; T 951/91, point 5.13 of the Reasons) that this procedural possibility is intended to prevent the parties from improperly delaying the proceedings. In particular, it serves to ensure the principles of procedural economy and of fair proceedings. It should therefore be noted that the power to disregard late submissions under the EPC does not constitute a procedural end in itself. In the Board's view, therefore, there is no reason, unless there is a risk of prejudice to the above principles, to disregard requests filed at a late stage of the proceedings aiming at maintenance of a patent in a particular version (cf. also T 339/19, points 1.3.3 and 1.5 of the Reasons)."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0920/20 - Attacks are not personal

Key points

•  In my blog post about T1657/14 (06.05.2020) I wrote: "this suggests that for opponents, there is no amendment of a party's case if they adopt arguments or attacks of the other opponents. Indeed, Article 12(4)(§1)(s.1) does not require that the 'part' was (admissibly) raised and maintained by the opponent itself in the first instance proceedings." 
• The present Board in the headnote in translation: "Article 12(4) RPBA 2020 does not contain any restriction to the effect that each party in the appeal may only refer to those matters of the preliminary proceedings which they themselves "admissibly presented" there. It therefore seems legitimate to also refer to lines of attack that had been introduced into the opposition proceedings by other parties. If this happens, there is no change in the submission that requires admissibility ["keine zulassungsbedürftige Änderung des Vorbringens"] 
• I note that at least one tutor advocated the converse position in a course that I attended a few years ago.
• The Board, in translation, in the reason: " With regard to the other part of the line of attack, namely the impermissible generalization objected to by only picking out the "form teeth" and omitting all other teeth in claim 1, the opposition division had made no decision, so that Article 12(2) RPBA does not apply directly. However, there is also no change in the submission that requires admission, since the appellant (opponent 1) was able to show that this part of the line of attack from point 3.5 of its statement of grounds of appeal had already been "submitted in a permissible manner" in the opposition proceedings under Article 12(4) RPBA namely by Opponent 2 in its notice of opposition (see above). The Board cannot derive any restriction from Article 12(4) RPBA that each party may only refer to those matters of the preliminary proceedings in the appeal which it itself has introduced there in a permissible manner. It therefore seems legitimate for the appellant to also refer to lines of attack introduced by other opponents in the opposition proceedings." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1042/18 - Art. 12 and 13 RPBA and G10/91

Key points

• In the present case, the opponent argues that their new attack complies with G 10/91 hn.2 and G 7/95, i.e. that it is not a fresh ground of opposition and hence is admissible (the English version of G 10/91 is G 9/91).
• The Board finds that Art. 12 and 13 RPBA and G 10/91 exist cumulatively and independently of each other.
• The new attack at issue is presented for the first time during the oral proceedings before the Board, but I think the general question pertains to submissions at any stage of the appeal proceedings.
• The Board in translation: " In appeal proceedings, new submissions are restricted not only by the case law of the Enlarged Boards of Appeal in G 10/91, G 1/95 and G 7/95 regarding new grounds for opposition, but also by the possibility, given to the boards in Article 114(2) EPC and the Rules of Procedure not to admit late submissions. These restrictions are independent and cumulative." 
• As a question, is hn.3 G 10/91 based on Art. 114, or on some other article of the EPC (or not at all on an article of the EPC0? If hn.3 of G 10/91 is based on Art. 114 EPC as well, does that mean that there are two complexes of case law based on the same provision and both dealing with the admissibility of new attacks?
• To cite G 9/91, r.18: " Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in such procedure than in opposition procedure. In particular with regard to fresh grounds for opposition, for the above reasons the Enlarged Board considers that such grounds may in principle not be introduced at the appeal stage." 
• The present Board: " The provisions of the RPBA 2020 on late filing elaborate Article 114(2) EPC in a way that is fundamentally binding for the boards (Article 23 RPBA 2020). This also includes the determination of procedural stages in the complaints procedure, during which the delay rules are to be applied with varying degrees of severity." 
• The new inventive step attack is not admitted. The inventive step attack was based on the same documents cited previously as novelty-destroying, which would be enough under G 9/91 as held in G 1/95 r.7.2
• The Board is of the view that at least the OD's decision to reject the opposition, enabled the opponent to present the inventive step attack with the Statement of grounds.
• " In the appeal proceedings, there is already a first-instance decision which, from the point of view of the opponent, was usually made taking into account the counter-arguments of the patent proprietor. At this stage of the proceedings at the latest, it is therefore regularly possible - and also usual - as an opponent to first argue that the disclosure content of a certain document is novelty-damaging and then, in the event that the Board of Appeal should come to a different view in this regard, supplementary arguments on the basis of the same document claiming lack of inventive step. That this is possible and customary is also shown in the present case by the behavior of the appellant itself, who raised both novelty objections and objections of lack of inventive step in the grounds of appeal based on documents D1, D7, D9 and D12. The fact that the appellant, based on documents D4 and D5 and fully aware of the decision under appeal - in which these documents were not considered to be novelty-damaging - only raised novelty objections in the statement of grounds of appeal cannot be to its advantage." 

EPO T 1042/18 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0809/21 - Limited extent of opposition

Key points

• " In most cases oppositions are filed against the patent as a whole; the present case is one of those relatively rare cases where the patent is opposed only to a limited extent." 
• The OD  nevertheless revoked the patent in its entirety. In particular, independent claim 8 was found not allowable, even taking into account all amendments of that claim in the auxiliary request, and there was no auxiliary request directed to unopposed claims 1-7 only. 
• " According to G 9/91, the Opposition Division's discretion to extend the opposition to unopposed claims is limited to claims which, while not explicitly opposed, are dependent upon an opposed independent claim "which falls in opposition or appeal proceedings". This does not apply in the present case as claims 1 to 7 are not dependent on opposed independent claim 8. Hence, the Opposition Division had no discretion whatsoever to extend the opposition to the unopposed claims 1 to 7." 
• " Claims 1 to 7 are not, therefore, subject to any opposition in the sense of Articles 99 to 105 EPC, nor are they the subject of any current proceedings before the EPO." 
• " The Opposition Division reports a number of statements purportedly made by the opponent after the nine month opposition period, to the effect that the opposition was directed at the patent as a whole". The Board: " such statements could have no bearing whatsoever on the determination of the extent of the opposition. It is clear from the passage from G 9/91 cited above (point 3.4) that the extent of the opposition cannot be enlarged retrospectively after the expiry of the period prescribed in Article 99(1) EPC." 
• " According to the minutes of the oral proceedings (see point III(x), above), the opponent argued that if one claim falls (claim 8, for example) the request in which it is comprised falls. The Board agrees, but the meaning of a "request" in a case where only certain claims are opposed must be clearly understood. An admissible request to the EPO can only be made in the context of ongoing proceedings before the EPO; if there are no proceedings there can be no requests. In the present case claims 1 to 7 are not the subject of any proceedings before the EPO, and cannot therefore be the subject of any admissible request. Hence, the requests of the proprietor are to be understood as being directed at the opposed claims 8 and 9 only." 
• "  The result was that the opposition against claims 8 and 9 was successful, in that the Opposition Division decided that the patent could not be maintained in a form which included any version of claims 8 and 9 submitted by the proprietor." 
• " In a case where the patent is not opposed in its entirety, the opposition being directed at certain claims only, and where the Opposition Division decides that all of the proprietor's requests in relation to the opposed claims must fail, only the unopposed claims, which are not part of any opposition proceedings, are left standing.
• Hence, provided the requirements of Rule 82(1) EPC are met [*] (either during oral proceedings or, in a written procedure, by means of a separate communication, see below, point 5.4), the patent may be maintained on the basis of the unopposed claims, irrespective of whether the proprietor has filed an explicit request for this during the proceedings. Such a request would, in fact, be superfluous, since the unopposed claims have been granted and are not the subject of any opposition. "
• * - it is unclear to me what these requirements are, in view of G 1/88. Rather, Art. 113(1) and (2) must be complied with. 
• "The procedure to be followed in such a case is ... In other words, the Opposition Division should inform the parties that it intends to maintain the patent on the basis of the unopposed claims only, possibly with an amended description, and should ensure that the proprietor approves the text and that the opponent has had an opportunity to comment upon it. According to standard procedure, these requirements can all be fulfilled during oral proceedings, in which case a separate communication under Rule 82(1) EPC is neither necessary nor appropriate (see G 1/88, Reasons, point 5.1.3 and point 5.2.3, final two sentences). Guidelines D-VI, 7.2.1 also sets out the procedure whereby the requirements of Rule 82(1) EPC may be most conveniently met in a purely written procedure. The subsequent procedure for issuing an interlocutory decision according to Article 101(3)(a) and 106(2) EPC is set out in Guidelines D-VI, 7.2.2 (March 2022 ed.
• Note, failure to pay the fee under Rule 82 probably leads to revocation of the patent in its entirity.

• The Board remits and reimburses the appeal fee. " Faced with a procedurally incorrect decision to revoke the patent in its entirety, the proprietor had no choice but to file an appeal if it wished to preserve any rights in the matter whatsoever, even to the granted and unopposed claims. Under these circumstances, the Board deems it equitable to reimburse the appeal fee."

• The Board remits for further protection, as I understand it because the description has to be adapted.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0960/15 - Review of decision to admit

Key points

•  The Board, in the headnote: " In the present case, the Opposition Division decided to consider document D8 and the review of this decision is a primary object of the appeal proceedings " 
• This implies that the Board can find the decision of the OD to be incorrect and hence may hold the document D8 to be inadmissible. 
• Whether the Boards have such power was denied in T 0617/16. 
• " There is, therefore, long-established jurisprudence setting out the Boards' powers to review discretionary decisions, and the limits on those powers that reflect the decisions' discretionary nature. This extends to a discretionary decision to admit a submission, such as D8." 
• " Article 12(2) RPBA 2020 introduced a general definition of the nature and scope of the appeal proceedings in accordance with the established case law (see EPO OJ Supplement 2/2020, explanatory remark, page 33/65). Under this provision (which is applicable, see Article 25(1) RPBA 2020), D8 itself and the parties' cases in respect of its admission into the proceedings belong to "the requests, facts, objections, arguments and evidence on which the decision under appeal was based"." 
• " When reviewing the [OD's] not to disregard it, the Board cannot identify any error in the principles applied, or not applied, by the Opposition Division, or anything unreasonable about it. On the contrary, the Opposition Division demonstrated the relevance it saw in D8, when considering it novelty-destroying in respect of the first auxiliary request. Furthermore, the Opposition Division apparently only needed to read some parts of the extensive D8 to verify its relevance (appealed decision, point 6.1.1)." 
•  "The Opposition Division concluded that claim 4 of the first auxiliary request lacked novelty over D8" 
• 
  

EPO T 0960/15

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

J 0014/21 - Restoration of priority and authentic interpretation

Key points

• An applicant files a request for restoration of priority with the EPO as dO, such a request having been granted by the IB as rO based on the unintentional requirement. 
• The entry into the regional phase was carried out with further processing.
• This includes a further processing fee for the declaration under Rule 6(6) EPC.
• The Guidelines state that: "where the application is deemed withdrawn under Rule 160(1) for failure to comply with a requirement under Rule 159(1), the request for restoration of priority may still be filed together with a timely request for further processing in respect of the 31-month time limit under Rule 159(1)"
• However, the relevant provision of the PCT, Rule 49ter states that the request is to be "filed with the designated Office within a time limit of one month from the applicable time limit under Article 22 [PCT]", which is one month from the expiry of the 31-month time limit of Rule 159. 
• The Legal Board: "There is nothing in the law to indicate that the failure to observe the time limits under R. 159(1)(c) and (f) EPC, and the subsequent remedying of this failure with the grant of further processing, could have an impact on the failure to meet the time limit under R. 49ter.2(b)(i) PCT."
• The Board then notes that when the provision was adopted, the PCT Assembly adopted "Understandings" stating that "where ... the designated Office reinstates the rights of the applicant with respect to that international application in accordance with Rule 49.6 or 76.5(ii), respectively, such reinstatement will extend to ... the time limit under Rule 49ter.2(b)(i)." 
• Rule 49.6 PCT is implemented by the EPO as re-establishment (the exceptional case where RE is possible even though FP is also possible), but that appears to be no further discussed in the decision.
• The Board concludes that: " further processing (or the granting of further processing) "turns back the clock" so as to re-open the possibility for a request for restoration for which the time limit had already been missed." 
  
  
• PCT travaux préparatoires
• "There is no jurisprudence of the boards of appeal explicitly addressing the legal quality of "understandings" of the PCT Assembly, particularly not for a case like that in hand in which the relevant provision of the PCT Regulations is silent on the (intended) legal consequences of a particular factual situation, with only the "understandings" addressing that situation. " 
• The Legal Board then addresses the more general point: " Taking into account any such agreement or subsequent practice of the parties to a treaty, whereby the parties can be seen as the treaty's legislator, is commonly referred to as the method of "authentic interpretation" by the legislator or "authentic means of interpretation", although these, or similar, terms are used for a wide variety of situations and cases, and not always in a consistent fashion. The parties as the "masters" of "their" treaty are, in principle, not prevented from making (subsequent) understandings or agreements relating to the treaty. Any such agreements are, after all, an expression of the consensus of the parties, i.e. the legislator [follows a very useful reference to extensive legal literature]." 
• The Legal Board also refers to Art. 31(1) VCLT and Art. 31(2)(a) VCLT.
•  "The board understands Art. 31 VCLT, in particular its paragraphs (2)(a) and (3)(a), to be based on the general idea that an agreement, or a subsequent agreement, between the parties of the treaty may play a role when assessing the "context" within the meaning of Art. 31(1) VCLT. Any such agreement is then taken as formalised evidence of the intention of (all) the parties, i.e. of the legislator, that a specific provision should be interpreted or applied in a certain way. Accepting that agreement as being a part of the "context" within the meaning of Art. 31(1) VCLT has to be seen in contrast to the supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, under Art. 32 VCLT, to which recourse may be had only for confirming the result of the interpretation under Art. 31(1) VCLT, or for the purpose of resolving an ambiguity or obscurity or of avoiding a manifestly absurd result. While the intention of the legislator might be deduced from the preparatory work of the treaty, often referred to in the EPC context as travaux préparatoires, the legislator's intention, which is formalised in an agreement between the parties, is accorded more weight for the interpretation of the treaty provisions. Whether it was indeed the legislator's intent that the agreement formed part of the "context", or was to be taken into account together with it, will depend on the circumstances of each case." 
• As a comment, the issue of whether, in the context of the EPC, the Administrative Council is competent to lay down authentic interpretations of the EPC Articles (say in Rule 28(2) EPC) was also at play in G3/19  "Pepper". However, in that case, the Enlarged Board, perhaps wisely, did not comment on whether Rule 28(2) EPC was binding on the Enlarged Board.
• Turning to the publicity requirement:  "there may be cases where an understanding of the PCT Assembly will have to be disregarded when interpreting the newly introduced rule, in spite of the "understanding" expressing the legislator's intention, failing its publication in a manner that allows users to readily take note of it without having to have in-depth insight into the PCT legislative procedure. This will be the case, in particular, if the "understanding" leads to the application of the law which is to the detriment of the party relying on a newly introduced rule." 
  
  
• The request for restoration of priority was hence filed timely but still fails on the all due care criterion: "the attorney [a "Russian-speaking patent attorney based in the United States"] knew that instructions from the appellant for filing the international application were missing. Nevertheless, he went on a weekend trip, which included the final day of the deadline, without access to his emails and without having reached out to the appellant (again) beforehand. Thus, he could not clarify beforehand whether the appellant would give the necessary instructions immediately. Lastly, the attorney did not find a substitute for the duration of his absence who could have ensured that any last-minute instructions from the appellant could have been implemented and that the application could be submitted on the last day of the deadline at the latest." 

EPO J 0014/21

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2293/18 - Support in the description

Key points

• The patentee does not adapt the description to the amended claims and invokes T1989/18.
• The Board follows established case law that the description must be adapted to the amended claims.
• The Board, in translation: "The requirement that the claims be supported by the description basically means that subject-matter may be claimed in the claims which has a basis in the description. This is to ensure that the claims contain only what is deemed to be disclosed, present and accessible to a person skilled in the art after reading the description (see T 409/91 [])"
• This seems similar to Art. 123(2).
• "The requirement that claims must be based on the description thus ensures that the claims reflect the actual contribution to the state of the art in a manner that can be carried out by a person skilled in the art over the whole area they cover (see T 659/93 []".
• This seems similar to Art. 83 EPC.
• "It follows that claims and description, as parts of a single document, must match. Although they may contain different information in accordance with their different function, as follows from the EPC, they must not contradict each other."
• "In the light of these principles, the case law of the Board of Appeal has become established that Article 84 EPC is the basis for adapting the description to amended claims in order to avoid inconsistencies which might render the scope of the claims unclear []. The adaptation of the description must be carried out as required by legal certainty. If contradictions arise due to limitations of the claims, these are to be corrected by adapting the description in such a way that all information is removed that no longer explains the limited subject matter of the patent and that is not necessary or useful for understanding the invention.

EPO T 2293/18 -  

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2125/18 - In principle (in Art. 13(2) RPBA)

Key points

•  Article 13(2) RPBA provides that case amendments are in principle not taken into account in a certain stage of the appeal proceedings, unless an exception applies. The Board in the present decision provides an interpretation of the phrase "in principle".
• As a comment, I speculate that the phrase "in principle" was possibly added into new Art. 13(2) RPBA during the discussions about the draft provision in the decision making process as a kind of compromise.e In other words, I suspect that there was some debate about Article 13(2) and that "in principle" was included in order to have sufficient support for the new provision and/or to accommodate strong reservations (edited 21.04.2022).
• The present Board: "First, the terminology "in principle" can only be understood to refer to the general principle which is to be observed at this late stage of the appeal procedure. This is because Article 13(2) RPBA 2020 is that part of the RPBA which is the most stringent - i.e. it defines the "third level of convergence". Thus, the wording "in principle" cannot be understood to mean that it can be applied simply where the Board finds it fitting, because this would reduce its application to the far broader discretionary powers granted to the Board under Article 13(1) RPBA 2020."
• "Also, it is only logical when following the concept of the three levels of convergence (as explained in e.g. the explanatory remarks to Articles 12(4), 13(1) and 13(2) RPBA 2020) that such a stringent approach must be followed after the less stringent ones, and as the proceedings progress. Indeed, this principle comes into effect only at a late stage of the appeal proceedings (here, after the summons was notified), when a party has made its complete appeal case and any amendments to that appeal case which may have been appropriate under Article 13(1) RPBA 2020. Thus, following the wording of Article 13(2) RPBA 2020, the principle has to be applied, such that, for the Board to take the amendment to the appeal case into account, exceptional circumstances must have arisen."
• Compare T 0172/17.
• The Board gives a very particular meaning to "in principle", but I'm not entirely sure if a native speaker would use "in principle" when trying to convey the concept identified by the Board. Possibly a native speaker would use "as a matter of principle" i.e. according to a dictionary: "a situation that requires something be done a certain way because one believes it is the only right way" (link to Merriam Webster Dictionary)

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0988/17 - Exceptional circumstances under Art.13(2)

Key points

• The Board in the translated headnote: “Neither Article 13(2) RPBA 2020 nor the explanatory notes thereto in CA/3/19 explain how to generally determine whether the circumstances are "extraordinary". However, the explanations of the RPBA 2020 cite as an example of such "extraordinary" circumstances the case where the Boad raised an objection for the first time in a notification. In this case, the changed basis of the appeal procedure justifies a changed submission. The question of whether, conversely, the basis of the appeal proceedings is also changed by changed submissions is therefore a possible criterion that can be used to assess the exceptional nature of the circumstances (point 6.3 of the reasons for the decision).”
• The point of contention is the admissibility of the patentee's response to an inventive step attack based of D1, the response being submitted after the summons for oral proceedings.
• The Board in translation: " In the present case, the Respondent's further submissions in its brief of October 26, 2021 refer to facts and evidence already in the proceedings and merely explain why, from the Respondent's point of view, the Appellant's objection raised in the statement of grounds of appeal was unconvincing." 
• "In the event of an appeal by the opponents, it is up to the board to examine whether the appellant's objections are convincing, even if the patent proprietor has not submitted a corresponding argument. "
• This may be an important point.
• " In fact, in the present case, the board had explicitly stated in its communication pursuant to Article 15(1) RPBA 2020 (item 7.) that it would have to be discussed whether, starting from D1, the person skilled in the art would have arrived at the subject-matter of claim 1 without any inventive step.
• The amended submissions of the Respondent therefore do not lead to a change in the basis of the appeal proceedings.
• Furthermore, the Respondent's submissions help resolve the issue raised by the Board and are therefore not detrimental to procedural economy.
• In these circumstances, the Board exercised the discretion conferred by Article 13(2) RPBA to admit the Respondent's submission in the October 26, 2021 brief into the proceedings." 

EPO T 0988/17 - 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.