T 1285/23 - Fighting again before the ED

Key points

• Now that the discussion of the former designation fee per designated state has been removed from the 2026 edition of the Guidelines, this decision remains noteworthy. It was published in October 2025.
• In this case, the applicant had withdrawn the designation of GB in the parent application by letter of 02.03.2017, after the Rule 71(3) Communication. The decision to grant was issued on 16.06.2017, and the mention of the grant on 12.07.2017. The patent was opposed.  The OD decided to maintain the patent in amended form. The opponent appealed. The proprietor disapproved of the text of the patent. The parent patent was revoked. 
• The proprietor filed a divsional application on 05.07.2017. On 23.02.2018, the applicant submitted a letter about the designated states (after the application was published on 10.01.2018). The Receiving Section issued a decision on 22.05.2018 that GB is not designated, and made it open to appeal. The Board rejects the appeal in 
• The search report was also published on 10.01.2018. The examination fee was paid on 06.07.2018. Hence, on 22.05.2018, the Receiving Section was competent.
• The Board rejected the appeal against the decision of the Receiving Section (decision J 3/18, issued on 19.08.2020, identical to decision J 3/20 in a parallel divisional case (blog post).
• The Legal Board held that "an interpretation of Article 76(2) EPC in accordance with recognised rules of interpretation shows that only those states that had been designated in the earlier application at time of filing the divisional can be designated in the divisional"
• Further, "During the oral proceedings the appellant presented submissions concerning the protection of its legitimate expectations which had not been presented before. ... In the case on file the board used its discretion not to admit the new submissions because the appellant could and should have presented the facts that form the basis for the alleged protection of legitimate expectations earlier in the proceedings."
• Examination starts on 09.09.2020, with an Intention to grant. On 20.10.2020, the applicant requests that the Examining Division consider GB to be designated.
• The ED decides on the matter on 21.03.2023 (decision). 
• The applicant appeals.
• "During the oral proceedings before the Legal Board of Appeal the appellant sought to rely for the first time on the principle of good faith. They stated that they had relied on the communication dated 10 August 2016 concerning the application which was eventually the subject of decision J 14/18. This case concerned the then co-pending application no. 16174992.4 ("the co-pending application"). In that communication the EPO had listed GB as one of the designated states."
• "The appellant did not dispute that a decision of a Legal Board of Appeal concerning a decision of the Receiving Section could in principle also have a binding effect, or an effect of res judicata, on an Examining Division when the application proceeded to that division. However, it argued that its request was now based on the principle of good faith. In J 13/18 the Legal Board of Appeal had never considered that line of argument in substance, but had based the dismissal of the appeal, and thus the refusal of the request to add GB as a designated state, solely on the interpretation of Article 76(2) EPC. There could thus not be a binding effect, under Article 111(2) EPC, of that decision on the Examining Division when they considered that request on a different legal basis, namely the principle of good faith. "
• "The Board disagrees. In J 13/18 the Legal Board of Appeal dismissed the appeal. By doing so it upheld the finding of the Receiving Section not to include GB as a validly designated state in the application. Decision J 13/18 became final when it was issued at the end of the oral proceedings. "
• "The subject-matter of decision J 13/18 was the determination of whether the Receiving Section's refusal to add GB as a validly designated state to the application was correct or had to be overruled. In its decision the Legal Board of Appeal considered whether Article 76(2) EPC could be interpreted such as to allow the appellant's request, and decided not to admit the lines of argument presented by the appellant based on the correction of errors and on the principle of good faith. By dismissing the appeal the Legal Board of Appeal issued a conclusive decision on the request of the appellant to include GB as a validly designated state in the application, rather than admitting the late filed lines of argument (including that of the principle of good faith) and remitting the case to the department of first instance for further prosecution."
• The Board considers the matter, hence, res judicata by J 13/18.
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• "For the reasons set out above, the Examining Division was not competent to decide in substance on the appellant's request to add GB as a validly designated state in the application. The decision is void and is formally to be set aside."
• "The Board concluded above that in view of the effect of res judicata emanating from J 13/18 the Examining Division was not competent to decide in substance on the appellant's request in question."
• "The Board is equally bound by this effect. As a consequence, the appellant's request to add GB as a validly designated state in the application is inadmissible."
• The Board hence decides, in the order of the decision, that "The decision under appeal is set aside. The request to add Great Britain as a validly designated state in the application is refused as inadmissible."
• "Thus, even if the Board applied Article 111(2) EPC to the case in hand, this would not have altered the Board's conclusion."
• Hence, the Board did not apply Article 111(2) EPC to the case at hand.
• The Board sees no difference in facts that would suspend the binding effect under Article 111(2) EPC
  
  
• The appeal fee is reimbursed. "By issuing a decision on a matter in respect of which it was not competent, the Examining Division committed a substantial procedural violation. Whilst the appellant did not obtain the full legal redress sought by its appeal, the Board nevertheless had to set aside the impugned decision."
• "the Board concurs with the body of case law according to which reimbursement of the appeal fee may be ordered based on the principle of good faith, even if the appeal was not allowed and thus one of the conditions of Rule 103(1)(a) EPC was not met (CLB, V.A.11.14)."

EPO 

The link to the decision is provided after the jump.

T 1523/23 - Remittal for request not arrived at

Key points

• The OD rejected the opposition. The Board finds the claims as granted to lack an inventive step.
• " 4.1 Since the opposition was rejected, the auxiliary requests [1 to 4] were not examined by the opposition division. It is the primary object of the appeal proceedings to review the decision under appeal in a judicial manner (Article 12(2) RPBA)."
• "4.2 ... the opponent suggested that the board decide on the first auxiliary request itself. Claims 1 and 6 of this request included the additional feature of a random arrangement. This amendment was introduced in response to an objection under Article 100(b) EPC, not to establish inventive step. The board was therefore in a position to decide on this request."
• "Nevertheless, the board considers it appropriate, for the reasons set out in paragraph 4.1, to remit the case to the opposition division for further prosecution (Article 111(1) EPC). The circumstances of the present case represent special circumstances within the meaning of Article 11 RPBA."
• Point 4.1 is cited in full above.
• Naturally, a second appeal may follow if the OD finds AR-1 to be inventive. 

EPO 

The link to the decision is provided after the jump.

T 1092/23 - Replacing auxiliary requests after a remittal

Key points

• In this opposition case, the Board remitted the case in the first appeal for further prosecution, after finding that the then main request and AR-1 were not allowable. At that time, AR-2 to 10 were pending. The proprietor thereafter filed new claim requests in the procedure before the OD. The OD admitted these requests and found one of them to be allowable. The opponent is unhappy and appeals."The EPC does not contain any limitations beyond Article 111(2) EPC regarding the scope of examination after a case has been remitted by a board of appeal. The appellants have not demonstrated any such legal basis.
• The wording of the operative part [order of the decision in the first appeal] "remitted for further prosecution" cannot be interpreted as meaning that the scope of the examination is limited to the stage of the proceedings as it existed immediately before the Board of Appeal, in particular to auxiliary requests 2 to 10 pending at that time. Such an interpretation finds no support in the wording of the operative part."
• After the case has been remitted to the Opposition Division, the following general standards for the admissibility of requests apply, as they also applied in the first stage of the opposition proceedings. [...] ... even before the expiry of a period set under Rule 116(1) EPC for preparing oral proceedings, the opposition division has discretion not to admit requests unless they are admissible under another provision. The fact that an amendment is filed within the period under Rule 116(1) EPC does not mean that it must automatically be taken into account. The question raised by the appellants as to whether Rule 116(1) EPC applies only to the first summons to oral proceedings issued in the opposition proceedings is therefore irrelevant to the decision.
• In exercising discretion, the established criteria shall be taken into account, in particular prima facie admissibility, complexity, procedural economy, stage of the proceedings and a reaction to new developments in the proceedings."
• " In the present case, there is also no evidence of procedural abuse by the patent proprietor and current respondent."
• "In view of the foregoing, there is no exception in the present case to the principle referred to by the Board in its preliminary opinion, according to which there is no legal basis for excluding from the proceedings a request which the Opposition Division has admitted into the proceedings and on which it has decided on the substance"
• The Board finds the current Main Request to be allowable.
  
  
• The decision also includes the following paragraph, which seems very useful (in translation, point 1.10 of the reasons): "The opposition division's discretion to admit amended requests into the proceedings arises from Article 123(1) EPC, first sentence, in conjunction with Rules 79(1) and 81(3) EPC. According to Article 123(1) EPC, a European patent application and a granted European patent may be amended in proceedings before the European Patent Office within the framework of the Implementing Regulations. In opposition proceedings, Rule 79(1) EPC gives the patent proprietor the opportunity to make amendments to the description, claims, or drawings within a time limit set by the opposition division. The admission of more extensive amendments filed at a later stage in the proceedings, however, is subject to the discretion of the opposition division. This follows, inter alia, from Rule 81(3) EPC, which provides that the patent proprietor is given the opportunity to comment or amend "where appropriate", which implies a discretionary decision by the opposition division (in accordance with T 0966/17, point 2.2.1 of the Reasons)."
• So, it is not about Rule 80 EPC here.
• Rule 79 also recites "where appropriate". Rule 81(3) recites "the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings."

EPO 

The link to the decision can be found after the jump.

T 2178/22 - The weakest link and a remarkable remittal

Key points

•  This case concerns a patent with an independent claim 7 directed to a barly plant obtained by an essentially biological process. The patent has a filing date in 2011. In principle, claim 7 is therefore allowable, under G 3/19 but the opponents (which include some NGOs) still raise an objection under the clause of Art. 53(b) EPC about essentially biological processes for the production of plants or animals  (and requested a referral to the Enlarged Board for some questions). The OD found the claims allowable (also rejecting the inventive step objection).
• However, the Board does not tell us in the decision whether the OD was correct in this assessment under Article 53(b) because the Board perceives a substantial procedural violation in how the OD decided on inventive step (violation of the right to be heard of the opponent) and decides to remit the case on that ground - without deciding on the merits of the other grounds of opposition, which were independent and not affected by the procedural violation.
• I find this remarkable. Of course, some kinds of procedural violations vitiate the entire decision (wrong composition of the OD, partiality, and missing signatures in the decision). There may also be cases where the decision of the OD is based on only one ground (namely, if the patent is revoked on one ground). However, in the present case, the decision of the OD dealt with multiple separate grounds. I don't see why the Board cannot deal with the other grounds in the current decision. Procedural economy - or timeliness as an aspect of quality - requires the Boards to not unduly delay their appeal decision on the grounds not affected by the procedural violation.
• Incidentally, there was also an issue of the extent of opposition - were the independent claims 13-16 directed to a beverage (beer) opposed? This was discussed during the oral proceedings before the Board. The minutes indicated that thereafter, the Board asked if the OD's reasoning on inventive step was sufficient. It is not clear to me if any of the parties to the appeal had raised an issue under Rule 111(2) on that point, or if it was raised by the Board of its own motion.
• Furthermore, the deficiency of the OD's reasoning under inventive step concerns claim 1 for a process of making beer using barley. The OD had found that claim 7 directed to the (conventionally bred) barley plant was inventive. The Board does not identify a procedural defect on that reasoning (and does not arrive at the merits of the reasoning). The Board's problem is that the OD insufficienlty epxlained why claim 1 was also inventive. The reasoning of the OD was that claim 1 directed to a method of preparing a barlye based beverage specified "wherein the method involves reduced energy input, the method comprising the steps of: (i) providing a barley plant or part thereof, wherein said barley plant comprises: (a) a first mutation that results in a total loss of functional lipoxygenase (LOX)-1; and (b) a second mutation resulting in a total loss of functional LOX-2; and (c) a third mutation resulting in a total loss of functional S-adenosylmethionine:methionine S-methyltransferase (MMT); ... (iii) mashing said barley ... thereby obtaining a wort" and that features (a)-(c) defined the same plant as in claim 7. Hence, claim 1 specified the use of the inventive plant of claim 7. It is well-established that such a claim is then also inventive, even if all other features are routine (see GL G-VII,14: "Similarly, if the subject-matter of a product claim is new and non-obvious there is no need to investigate the novelty and non-obviousness of the subject-matter ... of any claims for a use of that product.") 
• Indeed, "the opposition division observed "that claim 1 relies on a method wherein plants with the same technical features as claim 7 are employed" (see point 20, last two lines)."
• The Board seems to see this differently: "since the method fails to limit the ingredients of the beverage to barley grains or specify their quantity or proportion, the board has doubts about the opposition division's implied conclusion that the properties of barley grains used necessarily impart a technical effect on the method of claim 1".
• The Board, in its preliminary opinion, refers to its earlier decision T 420/19 (post), where the issue under Article 53(b) was the same. 
• The patent was granted in 2016. The appeal was filed in 2022. 

EPO 

The link to the decision can be found after the jump.

T 1865/23 - Intervention and remittal

Key points

• Yesterday's post demonstrated that Article 123(3) does not apply by analogy to the set of claims that the Board considers possibly allowable and which set of claims forms the basis for the Board's decision to remit the case. In other words, the claims can be broadened during the procedure before the OD after the remittal, compared to the set of claims on which the Board based its decision to remit.
• In today's decision about solar cells, a notice of intervention was filed in appeal (hi G 2/24) by "Commissariat à l'énergie atomique et aux énergies alternatives (CEA)". I checked the file, and apparently, this French public institute was sued for patent infringement by the proprietor, though the details are redacted in the file wrapper.
• Opponent 1 filed the appeal against the decision of the OD to maintain the patent in amended form. The proprietor withdrew their appeal during the oral proceedings before the Board. The main request is therefore the set of claims held allowable by the OD.
• The Board finds the main request to be unallowable (Article 123(2), intermediate generalisation)
• The Board admits AR-10 and finds it complies with Article 123(2)).
• The Board remits the case.
•   In the present case, in its statement of grounds for intervention [filed during the appeal hortly after the appeal proceedings began by the Notice of appeal Opponent 1 and the proprietor], Opponent 2 questioned the priority of the patent in suit, referred to further documents (D32 to D51) and also to documents D29 to D31, which the Opposition Division had not admitted, and raised further objections with reference to these documents. In its reply to the patent proprietor's statement of grounds of appeal, it also submitted the additional documents D52 to D57."
• "Since Opponent 2/Intervenor is entitled to challenge the patent in suit "by all available means", documents D32 to D51 and documents D29 to D31, which were not admitted by the Opposition Division, must be taken into account."
• It is unclear to me if Opponent 1 had objections of novelty and inventive step against AR-10 in appeal. 
• It is also not entirely clear to me if the proprietor may now shift the subject-matter compared to the claims held allowable by the OD in the first decision of the OD. I mean that set of claims contained an added feature, which had to be narrowed in appeal to address the Article 123(2) issues of intermediate generalisation. Apparently, the proprietor had defended broader claims in its own appeal, but there is no written decision of the Board on those requests because the proprietor withdrew its appeal.

EPO 

The link to the decision can be found after the jump.

T 2194/22 - On res judicata and the binding effect of ratio decidendi

Key points

• This is a lengthy decision, and the second appeal in this opposition. The Board in the first decision held an auxiliary request to be inadmissible. The higher-ranking request was held to violate Art. 76(1) EPC. The auxiliary request at issue was filed during the oral proceedings before the Board.
• The issue was that the range of at least 50 % but less than 100%, as recited in the claim, was held to be not disclosed in the application as filed, wich mentioned "at least 50%" (this did not exclude 100% as in the claim) and "a majority" (which excluded 50%, as permitted by the claim). 
• In AR-I, a number of features were extracted from a table, omitting two parameters from the table. This was held to violate Art. 123(2).
• AR-2 new added a feature to AR-1, namely the missing features from the table. The Board did not admit this request, as it was filed during the oral proceedings only. 
• AR-2 old added features to claim 1 as granted, but did not address the feature of the range of 50 - < 100%. Hence, this request was not allowable.
• AR-III amended the range in AR-2 into "at least 75-95%"
• Clearly, there is a clarity issue with the amended range "at least 75-95 %" instead of 75-95% as recited in dependent claim 3. That same issue causes a problem under Art. 76 EPC. 
•  The case was remitted for AR-3.
• "Auxiliary request III is neither discussed nor substantively evaluated in the contested decision, since auxiliary request I was found to be allowable by the opposition division. Moreover, none of the parties provided arguments on this request in their written submissions, and none of the parties objected to the remittal of the case to the opposition division."
• The minutes state that the parties agreed with the Board's intention to remit. Still, it protracted the procedure by almost 4 years. The Board could have dealt with at least the formal requirements (Art. 123(2), Art. 84) before remitting.
• After the remittal, auxiliary III became the main request, and a new auxiliary request 1 was filed that was in substance the same as the request AR-2 new previously held inadmissible by the Board. The Main Request was held not allowable under Art. 76 because of the change of the original range 75-95% to "at least 75-95 %", which was taken to mean "at least 75%".
• The proprietor then essentially re-filed AR-2 new, with some minor amendments. This request was admitted by the OD and found to be allowable.
• The Board: "The current main request (identical to auxiliary request 1 filed on 11 February 2022) is not inadmissible for procedural reasons even though it corresponds (see 2.1.1) to auxiliary request II "new", which was filed during the oral proceedings before the Board in T 2371/18 and not admitted in the earlier decision of the Board for procedural reasons."
• "The Board does not share the appellant's view that a Board's decision not to admit a request is in any case absolutely binding in post-remittal proceedings as res judicata even if the facts underlying the decision are not the same."
• After an extensive analysis: "the Board's "decision" not to admit auxiliary request II "new" filed on 28 April 2021 in the earlier appeal proceedings which was only based on procedural reasons is not an absolute bar for reconsideration of an identical or equivalent request in proceedings subsequent to remittal."
• " The fact that in the case on file the Board's decision in T 2371/18 not to admit auxiliary request II "new" filed before the Board on 28 April 2021 is not an absolute bar for reconsidering an identical or equivalent request in post-remittal proceedings does not exclude the applicability of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC. The latter allows reconsidering the Board's findings in as far as the facts the previous decision is based upon are not the same. The binding effect under Article 111(2) EPC is not, therefore, detrimental the flexibility needed to respond to a change of the relevant factual and procedural circumstances of the case and to guarantee fair proceedings."
• "Thus, a party's submission, such as a claim request that was not admitted for procedural reasons in the appeal proceedings, in particular for being late filed, is inadmissible under Article 111(2) EPC in post-remittal proceedings if the relevant facts for non-admittance remain the same."
•  "in the opposition proceedings subsequent to remittal, the procedural and factual circumstances within the meaning of Article 111(2) EPC indeed changed in so far as the opposition division issued a preliminary opinion on 15 October 2021 in which it presented a new objection under Article 123(2) EPC against the then pending auxiliary request III. This request had previously been filed on 28 November 2018 with the proprietor's statement of grounds of appeal in T 2371/18. Auxiliary request III filed on 28 November 2018 was not assessed in the Board's decision T 2371/18 but formed the basis for the remittal. In pursuing this request when re-entering opposition proceedings, the proprietor did indeed follow on from the situation that existed at the end of the first appeal proceedings."
• "The Board finds that the opposition division's decision to admit auxiliary request 1 (filed on 11 February 2022) was justified because it does not impinge on the relevant procedural principles. Rather, that request was a legitimate response to the new objection raised for the first time by the opposition division (see above 2.4.8), and it does not prejudice procedural economy."
  
  
• The Board, in a rather abstract analysis: "the binding effect following from the principle of res judicata is not always clearly distinguished from the binding effect of the ratio decidendi pursuant to Article 111(2) EPC in the case law of the Boards of Appeal, and the decisions are sometimes not consistent as to which principle applies in specific circumstances (see, for example, T 1545/08, Reasons 11 and 12 compared to T 308/14, Reasons 1.2 and 1.3). The differences between the binding effect of these principles are examined in the following (see points 2.2.4 and 2.2.5 below) for the case at hand." ...
•  " the principle of res judicata implies that the conclusive decision on a specific request is an absolute bar for reconsideration, i.e. irrespective of whether the facts are the same " ...
  
•   "The effect of res judicata has to be distinguished from the binding effect of the ratio decidendi"
• "The binding effect of the ratio decidendi is on the one hand narrower as it is limited to proceedings on the same application or patent following a remittal of the case and as it only applies in so far as the facts are the same. However, on the other hand, it is broader in so far as it is related to matters not covered by the res judicata but encompassed by the underlying reasoning (ratio decidendi) in the remittal decision. This means that only matter which is not covered by the res judicata, i.e. which is not finally settled, is open for reconsideration in post-remittal proceedings in as far as the facts are not the same (T 689/19, Reasons 4.5; T 449/15, Reasons 2.5). In contrast, matter which is finally settled is absolutely binding also in post-remittal proceedings, i.e. irrespective as to whether the facts are the same."
• As a comment, the above may be an accurate summary of the current case law, it also shows how complex the case law has become on this point. 
• It is remarkable that one of the two closely related principles is codified in the EPC, and the other one, in a sense, the stronger one, can not be found in the text of the EPC.
  
  
•  Separately: "the case law of the Boards of Appeal is not uniform on whether a Board is indeed competent to review such a (positive) decision of admittance in the same manner as a (negative) decision not to admit, i.e. whether the correct principles for exercising the discretion were applied in a reasonable way (G 7/93, Reasons 2.6). A review on the correct exercise was carried out in some decisions (T 960/15, Reasons 4 to 7; T 2197/11, Reasons 3.2.2 to 3.2.3; T 858/17, Reasons 2.4 to 2.6; T 572/14, Reasons 2.4 to 2.5; T 1209/05, Reasons 2.2 to 2.4), while others disregarded a review per se (T 617/16, Reasons 1.1.1; T 2049/16, Reasons 3.2; open in: T 467/15, Reasons 3.1; see also Case Law of the Boards of Appeal of the EPO, 10th edition, V.A.3.4.4). However, this discrepancy does not become relevant if - as in this case (see point 2.5.4 below) - the admittance of the request was justified when applying the correct principles."
  
  
• The patent was granted on a divisional application filed in 2012, with filing date in 2005. 

EPO 

The link to the decision can be found after the jump.

T 0948/19 - Remittal for inventive step

Key points

• The Board considers the claims of an auxiliary request to be novel of the (pre-published) prior art, differently from the opposition division. The Board considers the claims of the main request to be not novel.
• The Board does not discuss inventive step. It is not clear to me if the added features of the auxiliary request are trivial or not. 
• "D1 discloses a distribution of slopes and baselines obtained prior to sensor insertion. However, D1 does not disclose the criteria according to which this selection is performed. Hence, D1 does not disclose that the calibration line selected from of multiple possible calibration lines is the one that has the slope and the baseline closest to the maximum joint probability of both the slope and the baseline."
•  The Board remits the case: "In this context, the following should be noted: In a last-instance decision, when a request is not allowed on other grounds it is normally superfluous to address further objections raised against that same request that were found unconvincing after having been discussed at oral proceedings. However, the situation is different for a decision of an opposition division, which may be the subject of an appeal. In this case, if the Board is not convinced by the reasons the opposition division gave in support of precluding the maintenance of the patent on the basis of a certain request, the lack of a decision to review in respect of the aforementioned further objections may result in a remittal for the consideration of said further objections, resulting in a delay in the proceedings."
• The Board does not indicate that the OD departed from the usual practice of the OD or from the Guidelines. I think the OD followed the normal practice of the first-instance departments. The Board nevertheless considers the result of this normal practice to be " a special reason within the meaning of Article 11 RPBA 2020".
• It is not clear to me if there were any specific reasons that prevented the Board from considering inventive step, like the parties not making any submissions on that topic in appeal (which possibly would be contrary to the instruction in the RPBA to present a complete case, incidentally).
• 
  EPO 

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

T 1546/19 - Ratio decidendi

Key points

• This is an appeal against a refusal. In fact, the second appeal, against a second refusal.
• " The main request is almost identical to the sole request underlying the impugned decision, the only difference being the correction of a typographic error in feature C), which now reads: "in releasing" instead of "is releasing". The request underlying the impugned decision is identical to the request considered in the first decision of the board (T 0883/15, dated 28 May 2018)." 
• " In the first decision of the board concerning the current application, it was decided that document Dl fails to disclose by explicit statement or unambiguous implication [feature X]" 
• " The appellant argues that the examining division was only bound by the "ratio decidendi" of the first decision of the board to the extent that the claims were novel over document D1 but not regarding whether document D1 also discloses [feature Y, a load detection unit]. Notably, in the context of inventive step, a different juridical appreciation of the facts was required." 
• The Board in the first decision stated: " Thus, the board concludes that D1 indeed teaches the detection of a pressure load exerted on the touch sensor." 
• " In view of the above, the board holds that the examining division was indeed bound by the first decision of the board not only to the extent that the claimed subject-matter was novel but also as to the distinguishing feature identified by the board. Hence, the examining division was correct in limiting the discussion during the second oral proceedings to the question of whether the distinguishing feature identified in the board's first decision was obvious. Since the issue of novelty over document D1 is res iudicata, even the board is bound by its previous decision. I.e. it cannot be re-discussed in these proceedings which of the claimed features are known from document D1 as far as these features were considered in the first decision of the board."
  
•  As a comment, "Pursuant to Article 111(2) EPC 1973 [] if a board remits the case for further prosecution to the department whose decision was appealed, that department shall be bound, in so far as the facts are the same, by the board's ratio decidendi."
• As a further comment, for the confluence of Art. 111 and res iudicata, see also T 0449/15.
• "In the statement setting out the grounds of the second appeal, the appellant further argued that the board violated its right to be heard by remitting, during the first appeal, the case to the examining division without holding oral proceedings. As a consequence, the appellant had no opportunity to discuss the disclosure of document D1 in oral proceedings before the board of appeal." 
• The Board finds that the request for oral proceedings in the first appeal was auxiliary to the request for remittal, which was granted.
• Moreover, "the first decision of the board was taken in accordance with the appellant's requests and based on grounds on which the appellant had had an opportunity to present its comments. Consequently, it meets the requirements of Article 113(1) EPC." 
• As a comment, the relevance of these observations is unclear to me: if it is res iudicata, even a clear violation of Art. 113(1) EPC does not permit setting it aside (as far as I know).
• 
  

EPO T 1546/19

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

T 0449/15 - Art. 111(2) and res judicata

Key points

• A decision from 2016 which was not noticed by me back then. 
• It is the second appeal in the opposition proceedings. In the first decision, the case was remitted to the OD after finding that the main requests and AR 1 were not inventive basically because of insufficient proof of the asserted technical effect. The OD then revokes the patent. Patentee appeals, this time with better experimental evidence of the technical effect. At issue is AR-4 having only minor changes compared to the main request (the patentee admits this). The question is if res iudicata applies
• "Res iudicata is a generally recognised principle in the contracting states and acknowledged by the boards of appeal (see e.g. T 167/93, OJ EPO 1997, 229; J 3/95, OJ EPO 1997, 493; T 365/09, Reasons 2). According to the established case law of the boards of appeal, res iudicata means "a matter finally settled by a Court of competent jurisdiction, rendering that matter conclusive as to the rights of the parties and their privies ... Such a final judgement ... therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or their privies" (see T 934/91, OJ EPO 1994, 184, Reasons 3)." 
• The part about "same parties" seems less relevant for EPO opposition proceedings. 
• " Whether the present board is prevented from considering subject-matter claimed in these appeal proceedings in view of res iudicata depends on the question whether "the same claim, demand or cause of action" (see above) is at stake. Hence, it is necessary to compare the subject-matter of claim 1 of the main request decided upon in T 449/13 and of auxiliary requests 4 and 5 pending before the board for consideration in these second appeal proceedings." 
•  " it is concluded that the amendments undertaken do not alter the subject-matter claimed in substance compared to the subject-matter finally decided upon in T 449/13, or the facts on which said decision was based. Consequently, the finding that the claimed subject-matter lacks an inventive step is res iudicata also for the subject-matter of auxiliary requests 4 and 5. Therefore, the board is prevented from deciding on this issue a second time." 
• " the order for remittal for further prosecution in T 449/13 does not preclude a conclusion of res iudicata for remitted subject-matter. Pursuant to Article 111(2) EPC 1973 [] if a board remits the case for further prosecution to the department whose decision was appealed, that department shall be bound, in so far as the facts are the same, by the board's ratio decidendi."
• The patentee is hoping that the new experimental report makes that the facts are no longer the same. If Art. 111(2) is exclusive, there is a good chance for the patentee to still get the claims allowed in the second appeal. 
• The Board: The "ratio" of a decision is the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgement (cf. T 934/91, supra, Reasons 2)." 
• "  The same binding effect applies to the board in the case of a subsequent appeal against a further decision of the department of first instance following remittal (self-binding effect, cf. T 21/89, Reasons 3.1)."
• "  The principle of res iudicata and that of the binding effect of the ratio decidendi pursuant to Article 111(2) EPC 1973 are not mutually exclusive, but complement one another. " 
• "  the binding effect of the ratio decidendi extends to matter which has not become res iudicata, but it only applies "in so far as the facts are the same". On the other hand, matter which has become res iudicata is not open for reconsideration following a remittal for further prosecution. In view of the fact that such matter is finally settled, the binding effect is not limited to the ratio decidendi, but also precludes a change of the "facts" within the meaning of Article 111(2) EPC 1973, e.g. by introduction of new documents (see also T 1063/92, Reasons 2.5; T 153/93, Reasons 3). Accordingly, if a board of appeal has issued a decision rejecting certain claimed subject-matter as not being allowable and has remitted the case for further prosecution in accordance with an auxiliary request, examination of the allowability of the rejected claimed subject-matter cannot thereafter be re-opened (cf. T 79/89, OJ EPO 1992, 283, Headnote I)." 
•  As an example of the binding effect of ratio decidendi not covered by res iudicata: a claim interpretation given by the Board for Art.83 is binding for the OD in a subsequent consideration of novelty and inventive step.
• The patentee requests a referral to the Enlarged Board of Appeal: " The board notes in this context that, since a decision given by a board orally becomes effective, binding and final by virtue of being pronounced, boards are generally very careful about what they announce in the course of oral proceedings and whether they render an interlocutory decision on a particular point which would prevent them from reconsideration of this point at a later stage, should the need arise." 
• As a comment, the rule in italics applies equally to the first instance departments: "a decision given by a [panel of the EPO] orally [during oral proceedings] becomes effective, [and] binding ...  by virtue of being pronounced". By the same token: " [rendering] an interlocutory decision on a particular point [prevents] [the decision-making body] from reconsideration of this point at a later stage" in (the same) proceedings before the EPO.
• The difference is that a first instance decision is open to appeal. An appeal decision is only open to a petition for review.
• " In the present case, the chairman announced during the oral proceedings that "the board was of the opinion that claims 1 of auxiliary requests 4 and 5 were res iudicata and not open to consideration in view of T 449/13". Consequently, no decision on this issue had been taken prior to the appellant's submission of the request for a referral to the Enlarged Board, and the board was therefore not prevented from considering this request." 
   

EPO T 0449/15

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

T 0464/18 - The Board examines of own motion in opposition

Key points

•  In this opposition appeal, the  Board finds the main request to be not novel.
• Turning to AR-1, " During the oral proceedings, the appellant stated that they intended to raise objections under Article 123(2) EPC and objections of lack of novelty against the auxiliary requests 1 and 2, and the respondent objected that these objections should be disregarded by the Board pursuant to Article 13(2) RPBA 2020.

  Irrespective of the admissibility of the appellant's objections, at the oral proceedings the Board examined of its own motion (Article 114(1) EPC) whether claims 1 of auxiliary requests 1 and 2 complied with the requirements of Article 123(2) EPC and came to the conclusion that they introduce added subject-matter for the following reasons." 

• The respondent/patentee objects under R.106: " During the oral proceedings, the respondent submitted that, since no objections were raised against the auxiliary requests 1 and 2 by the appellant in the written proceedings, the Board should allow at least the auxiliary request 1. As regards an examination of the requirements of Article 123(2) EPC by the Board of its own motion, the respondent submitted that since the Board did not raise any objections in the communication in preparation to oral proceedings, the respondent was not in a position to properly react to such an examination, and therefore a decision of the Board not allowing these requests for lack of compliance under Article 123(2) EPC constituted a violation of the right to be heard, in respect of which an objection under Rule 106 EPC was raised." 

• " During the oral proceedings, the respondent was given the opportunity to explain orally why the introduction of features in claim 1 of auxiliary request 1 and 2, respectively, did not result in an intermediate generalisation, even though the added features were disclosed in the description in combination with other features. Since the arguments of the respondent were not convincing, for the reasons given above, the Board concluded that it was justified to decide that the auxiliary requests were not allowable. The respondent's argument that they were taken by surprise by the Board's examination of the requirements of Article 123(2) EPC of its own motion is not convincing. The respondent should have expected the issue of amendments to be discussed at the oral proceedings, in particular in view of the fact that the independent claims of the auxiliary requests were amended by introduction of features taken from the description (see also G10/91, points 19 of the reasons). Furthermore, although the Board did not raise objections in the communication pursuant to Article 15(1) RPBA, it drew the parties's attention (see point 7) to the fact that "depending on the outcome of the discussion regarding the main request, the first and the second auxiliary requests will be discussed during oral proceedings". Hence, a discussion of the auxiliary requests was to be expected.
  Finally, the issue of intermediate generalisation was thoroughly discussed at the oral proceedings and it is not apparent why this discussion would have required an adjournment of the oral proceedings, or even a remittal, for the respondent to properly prepare to it. Accordingly, the Board takes the view that no violation of the respondent's right to be heard (Article 113(1) EPC) has taken place when coming to the conclusion that auxiliary requests 1 and 2 are not allowable under Article 123(2) EPC. As a consequence, the objection under Rule 106 EPC is dismissed." 

• Comes the surprise at the end - the  Board remits the case: " However, the fact that the respondent was only made aware for the first time during oral proceedings that the auxiliary requests were not allowable under Article 123(2) EPC justifies that the respondent be given a proper opportunity to prepare and file amended requests. In view thereof, and of the fact that the respondent requested remittal of the case to the opposition division and the appellant did not object, the Board takes the view that there are special reasons in the sense of Article 11 RPBA justifying remittal of the case to the department of first instance." 

EPO 

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

T 2558/18 - Rule 71(6) not applicable under Art.164(2) EPC

Key points

• The Board, in the translated headnote: "The procedure under Rule 71(6) EPC does not apply [if the Board remits an application to the Examining Division with the order to grant a patent with specified claims, description and drawings] in view of the binding effect resulting from Article 111(2) EPC under Article 164(2) EPC"
• Article 164(2) EPC is the provision that states that the Articles prevail over the Rules, in case of conflict. It is applied rarely.
• The Board, in r.3.5: the Explanatory Remarks to Art. 11 RPBA 2020 are "at least misleading" on one point (original: “Die Passage in den Erläuterungen: "sei es mit oder ohne Anpassung der Beschreibung" ist zumindest irreführend.”).
• In the present case, the Board had remitted the application in decision T1891/12 with an order to grant a patent with a specified text. The applicant filed amended claims under Rule 71(6) EPC, these were not admitted by the Examining Division. This raises the question of the precise status of the order in the first appeal decision. The present Board finds that the remittal was based on the following green part of Art. 111(1), second sentence, not the blue part: “The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. ”
• The Board concludes this in r.3.5, first sentence and r.3.4.2, 2nd para, last sentence.
• So, even though Board in T1891/12 remitted the case, this was not according to the part of Art.111 that mentions "remit the case", according to the present Board, but according to the part of Art.111(1)(s.2) which does not mention a remittal.
• As to how the Board arrives at this conclusion, the reader is referred to the Board's full text, provided in translation below. It's too difficult to summarize fully.
• As to the Board applying Art.164(2), the headnote indicates that Rule 71(6) is declared non-applicable under Article 164(2) EPC. It seems that the Boards reasoning on this point consists of "The primacy of Article 111 EPC as interpreted above over Rule 71(6) EPC with regard to amendments follows from the EPC". After citing Art. 164(2) EPC, the Board continues with "It also follows that Rule 100(1) EPC, according to the wording of which Rule 71 (6) EPC on amendments would apply, is to be interpreted restrictively - and excluding this applicability - in accordance with Article 111 EPC". Here, the Board seems to declare Rule 100(1) EPC in part non-applicable under Art.164(2), which seems to be a distinct point.
• As a comment, I find the Board's reasoning difficult to follow. The Board's view that the Examining Division after the remittal by the Board should not apply Rule 71(6), seems unrelated to Rule 100(1) (to me) as Rule 100 EPC is about the applicable rules during the appeal proceedings.
• As a comment, the Examining Division had held the amended claims inadmissible under Rule 137(3) EPC. The Board could affirm on this ground but decides to arrive at essentially the same conclusion on a different (new) legal ground. However, T 0222/21 recently held that "what matters for the exercise of the discretion to admit or not to admit [amended claims under Rule 71(6) EPC], if the text was "extensively revised" (which was not the case in the present case).
• G 7/93,  headnote 1: “Following issue of such a communication under [Rule 51(6) EPC 1973, corresponding to the invitation for to pay the grant fee under Rule 71(3)] and until issue of a decision to grant the patent, the Examining Division has a discretion under [Rule 86(3) EPC 1973 = Rule 137(3)] whether or not to allow amendment of the application.”
• The present decision does not refer to G7/93.
• Rule 71a(5): "Until the decision to grant the European patent, the Examining Division may resume the examination proceedings at any time."  
• The present decision does refer to Rule 71a(5) but I assume that the Board would consider it non-applicable. In a way this seems to be the basic trade-off: neither the Examining Division nor the applicant can change the substance of patent to be granted in any way.
• A question is whether the Board in the previous appeal proceedings T1891/12 should have given the applicant a period of four months (cf. Rule 71(3)) to finally confirm the approval of the set of claims, before taking a decision making that set of claims res judicata (cf. point XII of the decision text below). Strictly speaking, this question is beyond the scope of the present appeal because any errors in those appeal proceedings can not alter the decision that was taken. The established practice of the Boards to not issue such a communication follows from J8/98, r.2.2, in particular r.2.2.2 (referenced in the present decision as well). An important remark in J8/98 for representatives seems to be this one: “If [the applicant] considers a further check of the documents necessary, eg because the discussions in the oral proceedings resulted in significant amendments, he may request to be given an opportunity to do so. In the absence of any reservation in this direction, he cannot expect a further opportunity to comment on the version submitted by himself or to amend it once more.”
• The phrase "may request" indicates that the Board should in principle grant the request for more time.
• As a final comment, a non-appealed decision of a first instance department is also res judicata; the principle in this sense is not based on the nature of appeal proceedings being an appeal, but on there being no way to contest the decision anymore. 

• Translation of the full decision text after the jump; I've spent quite some time on editing and formatting the text. 

EPO T 2558/18 

Headnote (machine translation)

If a Board of Appeal remits a matter for the grant of a patent in a specified text, i.e. with specified claims, description and drawings, to the Examining Division, the decision on the text of the patent is based on Article 111(1), second sentence, variant 1, EPC. This patent version is binding (res iudicata, rechtskräftig) for the examining division in application of the legal principle enshrined in Article 111(2) EPC, in application of which the remittal also takes place. The procedure under Rule 71(6) EPC does not apply in view of the binding effect resulting from Article 111(2) EPC under Article 164(2) EPC.

Link and machine translated text of the decision after the jump.

T 2558/18 - The Board invokes Art. 164(2) EPC

 Key points

• Published currently without comments. 
• A draft version of this post was inadvertently posted by mistake. Please see the retraction notice and message here. 
• The post title refers to the following part of the decision: “Der Vorrang von Artikel 111 EPÜ in der obigen Auslegung gegenüber Regel 71 (6) EPÜ in Bezug auf Änderungen ergibt sich aus dem EPÜ. Artikel 164 (2) EPÜ bestimmt ausdrücklich: Bei mangelnder Übereinstimmung zwischen Vorschriften des Übereinkommens und Vorschriften der Ausführungsordnung gehen die Vorschriften des Übereinkommens vor. Daraus folgt auch, dass Regel 100 (1) EPÜ, nach dessen Wortlaut Regel 71 (6) EPÜ betreffend Änderungen anwendbar wäre, im Einklang mit Artikel 111 EPÜ einschränkend - und diese Anwendbarkeit ausschließend - auszulegen ist. ”

T 2558/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t182558du1.html

In the below, formatting is only partially reinstated, please consult the PDF version of the decision for the original formatting.

Entscheidungsgründe

1. Mit der angefochtenen Entscheidung vom 4. Juni 2018 hat die Prüfungsabteilung den am 23. Februar 2018 eingereichten Anspruchssatz gemäß Regel 137 (3) EPÜ nicht zum Verfahren zugelassen, weil die Änderung in Anspruch 1 Artikel 111 (2) EPÜ widerspreche. Die deutliche Entscheidungsformel der Entscheidung der Beschwerdekammer in der Sache T 1891/12 vom 10. Juli 2017 habe zur Folge, dass die Unterlagen, d.h. Beschreibung, Ansprüche und Zeichnungen, res iudicata seien und nicht mehr angetastet werden könnten. Da der Hauptantrag nicht zum Verfahren zuzulassen sei und keine weiteren Anträge vorlägen, fehle ein im Verfahren befindlicher Anspruchssatz. Die Anmeldung erfülle daher nicht die Erfordernisse des Art. 78 (1) c) EPÜ. Deshalb könne ein Patent gemäß Artikel 97 (1) EPÜ nicht erteilt werden.

T 2255/15 - Admissibility of third party observations

 Key points

• In this opposition appeal, third party observations were filed, first anonymously, later signed by a ‘real industry company’. The Board has to decide on the admissibility of these observations.
• The Board: “ The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties.”
• The Board:“ Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.”
• As a comment, I agree that TPO's should not be treated more favourably than party submissions. This does not mean automatically that TPO's should be treated equally to party submissions in opposition and opposition appeal proceedings in my view. 
  
  
• The opponent requested a remittal. The  Board does not remit the case. “The attack starting from D4 as the closest prior art was filed for the first time during the oral proceedings before the board and thus is an entirely new attack. If by filing such a new attack, a party could force the board to remit the case, it would be at the party's disposition to shift the case back to the first instance at whatever stage of the appeal proceedings and to thereby start, at any point in the appeal proceedings, a new opposition before the opposition division. This would not only run counter to the principle of procedural economy but to the very nature of appeal proceedings, which is to review the appealed decision (Article 12(2) RPBA 2020) rather than to allow for the start of a second opposition proceedings.”
• The Board does not admit the new attack. “Document D4 was discussed in the appeal proceedings in the context of novelty of the granted claims. It was also discussed in the assessment of inventive step of the claims of auxiliary request 7 but for establishing the obviousness of the solution to the problem formulated in view of D1 or D2 rather than D4 as the closest prior art.”

T 2255/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t152255eu1.html

1.5 The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties. Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.

As set out above, the following objections were raised in the third-party observations:

- lack of novelty of the subject-matter of claims 1 and 4 as granted in view of A006 and D3a

- lack of novelty of the subject-matter of claim 1 of claim set D over A012

- lack of inventive step of the subject-matter of claims 2 and 6 as granted and the claims of all claim sets submitted by the patent proprietor over A006 in combination with A007

- lack of inventive step of the subject-matter of claims 1 and 4 as granted and claim 1 of claim sets A' to F' over A014 as the closest prior art in combination with A015

- lack of inventive step of the subject-matter of claim 1 as granted and claim 1 of claim sets A' to C' over D3a

None of these objections had been raised before in the opposition or appeal proceedings. Document A006 is a document discussed in the context of novelty of the granted claims. It is also discussed, in combination with annexes 1-2, in the context of inventive step of the claims of auxiliary request 7 (claim set D). Annexes 1 and 2 were filed to show activity of compositions according to the invention and compositions not according to the invention. The submission of A006 and annexes 1-2 does not constitute a direct and timely response to facts, objections, arguments or evidence on which the decision under appeal is based. The third-party observations of 15 February 2016 do not provide any argument why the impugned decision would not be correct and which would justify the submission of A006 and annexes 1-2. The same reasoning applies with regard to the attack of lack of inventive step over A006 in combination with A007; A014 and the attack of lack of inventive step based on this document as the closest prior art; the attack of lack of novelty based on D3a; and the attack of lack of novelty based on document A012.

T 1860/17 - No remittal, Board examines 9 AR's

Key points

• The OD found the claims as granted allowable. The opponent appeals.  The Board finds the claims as granted to be obvious. In the first instance proceedings the patentee had filed AR-1 to 9, the patentee had maintained these requests with their Appeal Reply Brief. After the Board's conclusion on the main request, the Patentee requests that the case be remitted for consideration of these requests. The opponent opposes the requested remittal. Note, these requests had not been considered by the OD. So either the Board considers these requests for the first time in appeal or remits the case.
• The Board recalls that under Article 111(1) it has a discretionary power to remit the case or not. The Board does not expressly recall Article 11 RPBA 2020.
• The Board decides to not remit the case. The Board, in translation: “In the present case, auxiliary requests 1-9 undisputedly relate to combinations of granted claims. In addition, the appellant/opponent commented in detail on the dependent claims of the patent in suit in their statement of grounds (pages 19-21). The respondent/patent proprietor was thus prepared to discuss, in particular, the inventive step of these claims. Ultimately, there is a general public interest in achieving legal certainty in the matter as quickly as possible. A remittal, which always opens up the possibility of a further appeal, does not serve this interest and is always weighed against the interest of the parties in being able to present their arguments in two instances. In the present case, it must be taken into account that the opponent did not agree to the request for remittal and the patent has a priority date from 2010 already. In the opinion of the Board, both are weighty reasons that speak against remittal”.
• The Board finds all requests to be obvious starting from the same document D2 as for the main request.
  
  
  
• The Board, on the admissibility of some other auxiliary requests, notes that convergence as a factor for admissibility does not apply to the first instance proceedings and neither to the admissibility in appeal of requests filed and maintained in the first instance proceedings. “Allerdings betrifft die Rechtsprechung der Beschwerdekammern zur Nicht-Zulassung von nicht konvergierenden Hilfsanträgen hauptsächlich Anträge, die erst nach Beschwerdebegründung bzw. Erwiderung eingereicht wurden, und somit dem Ermessen der Kammer nach Artikel 13 VOBK unterlagen, vgl. RdBK V.A.4.12.4 und die darin zitierten Entscheidungen. Diese Rechtsprechung ist daher im vorliegenden Fall nicht einschlägig und stellt kein Hindernis für die Zulassung der Hilfsanträge 3, 8 und 9 dar.”

T 1860/17 -

https://www.epo.org/law-practice/case-law-appeals/recent/t171860du1.html

6. Hilfsanträge - Zulassung zum Verfahren

6.1 Die Hilfsanträge 1-9 wurden bereits im Verfahren vor der Einspruchsabteilung gestellt und mit der Erwiderung der Patentinhaberin vom 9. März 2018 auf die Beschwerdebegründung erneut gestellt. Die Beschwerdeführerin Einsprechende bestreitet die Zulassung der Hilfsanträge 3, 8 und 9 mit dem Argument, dass die geänderten unabhängigen Ansprüche in diesen Anträgen nicht gegenüber dem in höherrangigen Anträgen beanspruchten Gegenstand konvergieren.

Allerdings betrifft die Rechtsprechung der Beschwerdekammern zur Nicht-Zulassung von nicht konvergierenden Hilfsanträgen hauptsächlich Anträge, die erst nach Beschwerdebegründung bzw. Erwiderung eingereicht wurden, und somit dem Ermessen der Kammer nach Artikel 13 VOBK unterlagen, vgl. RdBK V.A.4.12.4 und die darin zitierten Entscheidungen. Diese Rechtsprechung ist daher im vorliegenden Fall nicht einschlägig und stellt kein Hindernis für die Zulassung der Hilfsanträge 3, 8 und 9 dar. Die Zulassung der Hilfsanträge 1, 2 und 4-7 wurde nicht gerügt, und die Kammer sieht aufgrund der darin enthaltenen Änderungen, die auf Kombinationen von erteilten Ansprüchen gerichtet sind, ebenfalls keinen Grund, der gegen die Zulassung dieser Hilfsanträge zum Beschwerdeverfahren spricht.

Aus diesen Gründen entschied die Kammer, die Hilfsanträge 1-9 in das Verfahren zuzulassen (Artikel 12(4) VOBK 2020).

6.2 Die Vorlage der Hilfsanträge 0 und 0' erfolgte erst in der mündlichen Verhandlung vor der Kammer. Diese verspätet vorgelegten Hilfsanträge stellen geändertes Vorbringen dar, dessen Zulassung nach Maßgabe der Erfordernisse des Artikels 13 VOBK 2020 erfolgt.

T 1716/12 - Remittal for adapting the description

Key points

• In this decision of 21.04.2021, the Board deals with the appeal against the refusal decision of the Examining Division of 27.02.2012 (!).
• The invention is about computer technology, in particular about the BIOS module, and is held to be inventive.
• The Board notes that the description needs to be adapted to the amended claims.
• The Board then has to decide whether or not to remit the case. Article 11 RPBA 2020 specifies that “The Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.” The Explanatory Notes state: “Art. 11 only applies to cases that are remitted ‘for further prosecution’. In particular, it does not apply to cases that are remitted with an order by the Board to grant a patent or to maintain a patent in amended form, with or without the description to be adapted.” The present decision does not discuss that Note, but seems to recall that Article 111(1)  provides that “the Board of Appeal may ... remit the case to that department for further prosecution.” Hence, each remittal is “for further prosecution” based on the text of Article 111(1). 
• The Board: “According to Article 11 RPBA 2020, the board shall not remit a case to the department of first instance, unless special reasons present themselves for doing so. In this board's view, the remittal "with a description to be adapted", as has become common practice of the boards of appeal, is, effectively, a remittal for further prosecution within the meaning of Article 111(1) EPC and under the limitations according to Article 111(2) EPC. As the appellant has indicated, its absence from oral proceedings, dealing with the adaptation of the description in the appeal proceedings would require a further written dialogue with the appellant before an eventual remittal with the order to grant a patent. The board takes the view that it is more efficient to deal with the adaptation of the description as part of the grant procedure under Rules 71(3) and (6) EPC, and considers this to be special reasons for remittal under Article 11 RPBA 2020.”
• As a comment, the Board does not simply refer to the remark in the Explanatory Notes but identifies a special reason for remittal.
• As a comment, the Examining Division could also issue a normal Communication under Article 94(3) EPC and Rule 71(1) EPC inviting the application to file an amended description. 
• The order of the decision is that the appealed decision is set aside and “The case is remitted to the first instance for further prosecution.” 

T 1716/12 

https://www.epo.org/law-practice/case-law-appeals/recent/t121716eu1.html

5.8 The board therefore holds that the subject-matter of independent claim 1 and, for similar reasons, of independent claim 5 is inventive (Article 56 EPC 1973).

6. Other issues

The board has no occasion to raise any objections to the claims on its own volition.

However, the board notes that the description appears to require adaptation to the present claims. In the present case, the board takes the view that for instance the sentence spanning pages 3 and 4 of the description, stating that "In at least some embodiments, the BIOS 110 of the computer 100 comprises a boot block 112 and a signature domain 116 used as a CRTM 118A" needs adaptation under Article 84 EPC 1973, given that according to claim 1 this is the case for all embodiments.

7. Remittal

According to Article 11 RPBA 2020, the board shall not remit a case to the department of first instance, unless special reasons present themselves for doing so. In this board's view, the remittal "with a description to be adapted", as has become common practice of the boards of appeal, is, effectively, a remittal for further prosecution within the meaning of Article 111(1) EPC and under the limitations according to Article 111(2) EPC. As the appellant has indicated, its absence from oral proceedings, dealing with the adaptation of the description in the appeal proceedings would require a further written dialogue with the appellant before an eventual remittal with the order to grant a patent. The board takes the view that it is more efficient to deal with the adaptation of the description as part of the grant procedure under Rules 71(3) and (6) EPC, and considers this to be special reasons for remittal under Article 11 RPBA 2020.

Order

For these reasons it is decided that:

1. The appealed decision is set aside.

2. The case is remitted to the first instance for further prosecution.

T 1370/15 - Ex officio objections in opposition appeal

 Key points

• The Board, in the headnote: “Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.”
• There appear to be two aspects (1) the board can rely on common general knowledge without providing evidence (unlike e.g. USPTO PTAB and EPO examiners, I believe) and (ii) the board can introduce new common general knowledge (as well as new prior art documents, by the way) both in examination appeals and in opposition appeals.
• Perhaps to provide context: the patent was revoked by the OD and the opponent did not make any submissions in appeal.
• The Board finds that the “opposition division erred in finding that the subject-matter of claims 1 and 9 of the granted patent lacked novelty. Hence, “the appeal has revealed that it is allowable within the meaning of Article 111(1) EPC” (which does not mean that the patent is not revoked by the Board).
• Article 111(1) EPC: “Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.”
• So one way of looking at Article 111(1) EPC is that the Board's examination of the allowability of the appeal means examining whether the appellant has shown that a bearing reason for the impugned decision is incorrect (here, that the claims are not novel, the OD's decision being to revoke the patent). In the next stage, if the appeal is ‘allowable’  in that sense, the Board ‘decides on the appeal’ and then “may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution”.
• The Board: “ to examine the subject-matter of the claims submitted for a decision on appeal. As opposition proceedings were initiated in mid-2013 and the appeal was filed in mid-2015, a remittal of the case would unreasonably delay its final settlement. Furthermore, the board is knowledgeable in the relevant technical field of user interfaces for broadcast applications from the experience of its members working on cases in this field.”
• I don't think the Board here wishes to suggest that in other appeal cases the Board is not knowledgeable in the relevant technical field, though in practice sometimes the first instance examiners may be more specialized in a narrow technical field.
• The Board, “Remitting a case because of new submissions would thus generally be contrary to what was intended with Article 11 of the revised RPBA of 2020.”
• The patentee objected to the Board's introduction of common general knowledge late in the oral proceedings. The Board assumes that these objections are legal arguments which are always admissible in line with T1914/12. The Board expresses that this is not certain: “While Article 114(2) EPC does indeed not mention the EPO's power to not admit ("disregard") legal reasoning (arguments), general principles of the law might prevent taking into account the legal reasoning under certain circumstances.”
• The Board's competence to raise new issues is not restricted by Article 12(2) RPBA 2020. “Given that these provisions are addressed to the parties and not to the boards, they have no immediate impact on the boards raising new issues under Article 114(1) EPC.”
• The Board may also raise new objections of own motion in opposition appeal. “While the Enlarged Board found in G 10/91 that the appeal procedure in inter partes cases was less investigative than the procedure of the opposition division, Article 114(1) EPC - which requires the EPO to examine the facts of its own motion - still applies. This means that a board is not excluded outright from introducing new facts and evidence in inter partes proceedings.”
• The Board is not required to present evidence of alleged common general knowledge citing T1090/12, point 6.2: “there is ... no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case” (cited in the present decision in r.5.3.8 where there is a typo in the case number). 
• I've missed T1090/12 on this blog but Laurent Teyssèdre spotted it on his blog.

EPO T 1370/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151370eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Interpretation of claim 1 of the granted patent

2.1 Claim 1 of the granted patent specifies that "the UI provider is configured whereby for a first transmission method a processing method from the plurality of processing methods is selectable and for a second transmission method a processing method from the plurality of processing methods is selectable independently from the selection of the processing method of the first transmission method".

2.2 Contrary to the opposition division (see point XVIII(a) above), the board agrees with the appellant (see point XIX(f) above) that the wording of granted claim 1 implies that a user interacts with a single user interface (UI) to set processing methods for transmission methods in which the selection of a first processing method does not put any constraints on the selection of further processing methods. This interpretation of claim 1 is based on Figures 2 and 4 and the corresponding parts of the description.

T 2337/16 - Ratio decidendi

 Key points

• This is the second appeal after a remittal to the opposition division. The Board applies the rule in Article 111(2) that “If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.”.
• This rule also applies in opposition, and the Board in the second appeal is also bound the ratio decidendi  of the earlier decision of the Board.
• After the remittal, the opponent had filed new prior art documents ED1 and ED2 in connection with inventive step. The patentee protests against this as this would circumvent Article 111(2) in their view.
• In the first appeal decision, the Board had admitted AR-7 and that the claim at issue was not obvious over D5 with common general knowledge, nor over D5 in combination with D3. The Board did not say that the claims were inventive and in fact remitted the case for examination of (novelty) and inventive step. 
•  The Board finds that there are therefore no ratio decidendi precluding the examination of the new inventive step attack based on ED1 with ED2. Moreover, the Board finds the claims to be obvious over said documents. 

EPOT 2337/16 -  link

5. Frühere Entscheidung T 1723/13 und Umfang der Bindungswirkung

Die Beschwerdeführerin II (Patentinhaberin) hat vorgetragen, die Einspruchsabteilung habe die Dokumente ED1 und ED2 zugelassen, um die Bindungswirkung der früheren Kammerentscheidung (vgl. Punkt I oben) zu umgehen. Vor diesem Hintergrund hält es die hier zuständige Kammer für angemessen, zum Umfang der Bindungswirkung der vorangegangenen Entscheidung T 1723/13 Stellung zu beziehen.

5.1 Nach Artikel 111(2) EPÜ ist das erstinstanzliche Organ bei einer Zurückverweisung zur weiteren Entscheidung an die rechtliche Beurteilung durch die Entscheidung einer Beschwerdekammer gebunden. Nach der Rechtsprechung besteht diese Bindung auch für die Beschwerdekammern selbst (auch "Selbstbindung" genannt), wenn die nach der Zurückverweisung ergangene erstinstanzliche Entscheidung abermals mit einer Beschwerde angefochten wird (siehe z.B. T 961/18, Gründe 4).

T 0247/17 - Res judicata, evidence CGK, and documents on appeal

Key points

• The patentee appellant files documents with the Statement of grounds. The Board admits these documents.
• “The opposition division thus had indicated that they intended to side with the patent proprietor on that point in the summons to oral proceedings. Consequently there was at this stage no necessity for the patent proprietor to provide further evidence regarding that question. The reversal of the opinion of the opposition division in the contested decision could not have been reasonably expected by the patent proprietor prior to the oral proceedings. This justifies, in the opinion of the Board, the filing of further evidence in that regard at the beginning of the appeal proceedings.”
• So, in the first instance proceedings, the patentee can wait for the negative opinion of the OD with filing documents. This is of course different in appeal (and the justification for the different treatment is not clear to me).
• As to evidence of CGK :“it is not because [the publication date of D14 and D16-D19] falls after the priority date of the patent in suit that these documents necessarily cannot be used to establish the content of the common general knowledge at the priority date of the patent in suit. It is thus not a factor of relevance in the admittance of these documents in the present case.”
• D18 is a review article published 10 years after the filing date. I don't readily see how it can be used as evidence of CGK at the filing date/priority date.
• On the issue of res judicata: “In decision T 731/11 of 29 June 2012 pertaining to an appeal lodged in the examination phase of the application underlying the present case, the Board in a different composition concluded that the claims of the then main request did not meet the requirements of Article 123(2) EPC [...] in accordance with consistent case law, opposition proceedings are separate and distinct from examination proceedings such that a decision by a board of appeal on an appeal against a decision from an examining division is not binding in subsequent opposition proceedings or on appeals therefrom, having regard both to the EPC and to the principle of res judicata”
• The Board finds that claim 1 lacks basis. “Both features are however separately defined in claims 2 and 3 of the application as originally filed whereby these claims only depend on claim 1 and do not depend from one another. Claims 2 and 3 therefore do not provide an adequate basis for the combination of these features.”

EPO T 0247/17 -  link

V. The patent proprietor (appellant) lodged an appeal against that decision and filed with the statement of grounds of appeal two sets of claims as first and second auxiliary requests. Also, it was requested to admit the following documents into the proceedings:

D14: Wikipedia article of the term "Carothers equation" dated 1 March 2017

D15: Bland et al., Biomaterials 17 (1996), pages 1109-1114

D16: Schneider et al., Operative Dentistry, 2006, 31-4, pages 489-495

D17: Park et al., Dent. Mater. 2009, December 25 (12): pages 1569-1575

D18: Swiderska et al., Polish Journal of Chemical Technology, 2013, 15(2): pages 81-85

D19: Shalaby et al., Polymers for Dental and Orthopedic Applications, Shalaby and Salz, eds., CRC Press New York NY 2007, pages 112 and 113

Reasons for the Decision

1. Admittance of documents D14-D19

1.1 Article 12(4) RPBA 2007 applies to a statement of grounds of appeal filed before the entry into force of the RPBA 2020 (Article 25(2) RPBA 2020), and thus also to any document filed therewith.

1.2 Documents D14 to D19 were filed with the statement of grounds of appeal. The common denominator to these documents is that they relate to the polymerization of monomers containing more than one polymerizable group. These monomers are referred to as multifunctional monomers in D14-D19.

1.3 The appellant argued that documents D14-D19 were filed to address the reasoning of the opposition division under point 2.11 of the contested decision in which it was concluded that the term "multifunctional acidic monomer" in the sense of claim 1 of the main request covered the monomer 4-AET disclosed in the composition of comparative example 12 of D1, even if that monomer contained only one polymerizable group.