R 0006/24 - (II) A difficult case for the EBA

Key points

• The petitioner complains that the TBA did not consider some of its arguments (which were not rejected as inadmissible), thereby violating its right to be heard. The petitioner points out that the written decision of the TBA did not specifically address the arguments. As such, that is correct. However, the question is whether the lack of specific written reasoning refuting the arguments demonstrates that the TBA did not consider those arguments.
• The EBA, in machine translation:  "21. The EBA agrees with the petitioner insofar as it is not immediately apparent from the decision whether and how the Chamber addressed the three arguments A to C. However, it appears that the Chamber at least took note of them from [point 3.1 of the grounds for the decision].
• [The EBA] does not share the [petitioner's] view that the mere omission of allegedly relevant arguments suggests that the party was denied its right to be heard. This view would ultimately force the Board to mention all of a party's arguments in its decision without exception. The deciding Board must primarily determine whether an argument is relevant to the decision. Nevertheless, the Board may take note of an argument and classify it as irrelevant, even if this classification is objectively erroneous. However, correcting such an error by the EBA through a request for review under Article 112a EPC would constitute impermissible substantive review of the decision.
• 23. On the other hand, the question arises: How can a party determine from a decision whether an argument deemed relevant to the decision was consciously or unconsciously ignored by the Board, or whether the Board examined it and deemed it irrelevant, if the argument is not mentioned at all (or at least not in an immediately apparent way)? This issue was also raised in the cited decision R 10/18 (see point 2.1.1.2 of the Reasons). 
• Ultimately, in that case, the Enlarged Board of Appeal examined the entire contested decision and concluded that, as a whole, it was clear that the Board had considered the arguments in question. The Enlarged Board of Appeal also noted that the Board's conclusion need not necessarily be substantively correct or comprehensible or understandable to the parties involved. In particular, it is not necessary to answer every argument of the parties (see point 2.1.2.3 of the Reasons: "Whether not answering the petitioner's essential arguments violates the right to be heard"). 
• This approach of the Enlarged Board of Appeal also appears appropriate in the present case in order to determine whether there has been a serious violation of the applicant's right to be heard."
• "The Enlarged Board of Appeal confirms the principle that parties do not have an unrestricted right to an exhaustive analysis of every single argument they put forward in support of their case. This is all the more true since it is a subjective assessment by the party whether an argument has been addressed and addressed sufficiently so that the party can understand without further difficulty why it was not accepted or considered. It follows that a party may have to accept that a decision contains no discernible reasons why an argument was not addressed further or perhaps not even mentioned. In this respect, the decision R 10/18 and the case law of the Enlarged Board of Appeal based on it are confirmed. The applicant's argument that the mere fact that an argument was not addressed or mentioned should lead to a successful request for review is rejected."

Limited but non-zero power to examine facts and merits

32. "However, this again leads to the question raised in point 23 of the communication of the Enlarged Board of Appeal cited above. An effective right must also be enforceable, and its enforcement must ultimately be capable of judicial review. The court must therefore be empowered to examine whether the right to be heard has been observed. The right to be heard enshrined in Article 113(1) EPC, and the derived right to have a party’s relevant arguments taken into account, can be perceived as effective rights only if, in review proceedings, the Enlarged Board of Appeal is able to examine not merely formally, but also effectively, whether those rights have been granted. It follows that the Enlarged Board of Appeal must, in principle, have the power to carry out such an effective examination. In other words, the possibility of an effective examination of the petition is also in the petitioner’s interest.

33. This raises the question of the permissible scope of the review. Even if it were limited to examining a rebuttable presumption, namely whether the right to be heard is to be regarded as having been observed unless the contrary is proven, the power must at least extend to examining the facts which, in the party’s view, have the potential to rebut that presumption. Where, in a particular case, a substantive assessment of a party’s submissions is indispensable for determining whether the party’s right to be heard was observed, the Enlarged Board of Appeal is also entitled to carry out such an assessment. It must be emphasised, however, that this finding by the Enlarged Board of Appeal has no formal legal effect confirming or setting aside the relevant decision-making of the Board. To that extent, the Enlarged Board of Appeal’s lack of power in this respect is not called into question (Case Law of the Boards of Appeal, V.B.3.5.3)."

• There is also a point about an argument that was, according to the other party, manifestly bound to fail and, for that reason, validly not expressly addressed in the TBA's written decision.
• The EBA, in point 43, citing from the EBA's preliminary opinion: "34. The question here arises as to what extent the Board of Appeal may and should examine the merits of an argument in order to determine whether it is manifestly unfounded and the Board could therefore leave it unanswered. Such power to examine the (at least prima facie) correctness of a party's submissions appears to contradict the fundamental prohibition against examining the correctness of the decision. However, if the EBA did not have such power, this would inevitably lead to the conclusion that it would have to find a violation of the right to be heard without exception if any objection were left unmentioned in the decision. The EBA considers this outcome untenable." (emphasis added)
• This means the EBA has competence to review whether an argument is manifestly bound to fail (on the merits). 

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• EPO 

The link to the decision is provided after the jump.

T 0842/24 - No reversal of decision OD to admit

Key points

• The Board, in the headnote: "There is no legal basis for reversing in appeal a decision by the opposition division to admit new evidence into the opposition proceedings and thus to retroactively reject in appeal specific facts which had been admitted into the appeal proceedings if that evidence formed the basis of the decision taken on substantive grounds. It cannot be derived from G 7/93 that the criteria stated therein for overruling the way in which a department of first instance has exercised its discretion also apply to the case where evidence was admitted and the decision taken on substantive grounds was based thereon. "
• This approach seems correct to me. However, the Board still reviews for a fundamental procedural deficiency (which would justify a remittal under Art. 11 RPBA).
• "it is concluded that under the present circumstances the Board is not empowered to review the way the opposition division used its discretion to admit D29 into the proceedings. D29 is therefore in the proceedings. [D29 was filed by the opponent]. 
• "The patent proprietor submits that there was insufficient time to reasonably address, i.e. to familiarize themselves and react to the issues arising from D29,  ... The patent proprietor concludes that the timing of the filing of D29 caused them an unfair disadvantage 
• The Board: "the admittance of a new evidence, even if its filing was not justified, does not in itself result in unequal treatment of the parties. Rather, it is the absence of a proper opportunity for the other party to respond to the new evidence and submissions based thereupon once it has been admitted that leads to unequal treatment of the parties, which is in essence the patent proprietor's opinion,"
• Follows a detailed review of the events leading up to the OD decision. 
• "Deciding against the patent proprietor on the basis of a new objection raised during the oral proceedings, in the light of an experimental report filed just two days earlier, without postponing or holding second oral proceedings could be regarded as unfair to the patent proprietor. "
• "neither the minutes of the oral proceedings nor the impugned decision refer to an explicit request by the patent proprietor not to admit document D29 into the proceedings."
• In some cases, the right to complain may indeed be waived (or forfeited) by failing to request that a document not be admitted. However, generally, the party filing the document should request that it is admitted, and the other party (non-movant) only has to object to the admissibility (I know the custom is now different). Furthermore, if it is clear that the OD will decide on the admissibility of a late submission anyway, any request of the non-movant party for such a decision will be superfluous. Hence, one cannot derive too much from this point. 
• At point 38 of the reasons for the decision, the opposition division found that the patent proprietor was in a position to interpret without undue burden the calculations made in document D29. This document was discussed and understood by all parties at the oral proceedings and, for this reason, was admitted into evidence.
• Understanding a calculation does not necessarily mean you are able to refute it. Refuting the reasoning may need more time. 
• "However, it is also noted that the patent proprietor took position on the objection and, most importantly, did not request for oral proceedings to be postponed, or for more time to respond to this separate objection of lack of novelty, even after the opposition division had announced their preliminary opinion that the subject-matter of claim 1 was not novel over Figure 4 of D10 (minutes, section 2, last paragraph). "
• As a comment, the point about "did not request for oral proceedings to be postponed" is perhaps in line with the current case law, but I doubt if it is correct, especially in cases where the opponent is the non-movant party and the party that challenges the status quo.
• "Furthermore, a decision by the opposition division on substantive issues, based on evidence which has been admitted into the proceedings, can still be challenged in substance, on the ground that this evidence lacks relevance or probative value."
• In fact, the non-movant party complaining about a violation of its right to be heard, should probably also submit a substantive rebuttal in appeal. If the non-movant party has no substantive arguments to challenge the OD's finding, the procedural point is moot (or harmless).
• The proprietor filed D31 with the SoG. "Its filing constitutes therefore a genuine attempt to address in a timely manner the objection of lack of novelty over the particles shown in Figure 4 of D10 in the light of D29 which was raised for the first time during the oral proceedings before the opposition division. In these circumstances the Board exercises its discretion pursuant to Article 12(4) RPBA by admitting D31 into the proceedings."
• Note, the conclusion that D31 constitutes a genuine attempt to rebut D29 is an examination for prima facie relevance. 
• "the assessment of the patent proprietor's submissions based on experimental report D31 when examining the opponent's lack of novelty objection over the particles shown in Figure 4 of D10 in the light of D29 amounts to a fresh case on novelty. This in itself constitutes a special reason within the meaning of Article 11 RPBA justifying to remit the case to the opposition division."

Sufficiency / procedural violation

• "The opponent raised two separate objections of lack of sufficiency of disclosure of the subject-matter of claim 1 [in the procedure before the OD] , namely one relating to the measurement of the surface smoothness and one relating to the absence of use of a plasticizer. Both objections are based on a ground of opposition not addressed during the period to file an opposition. The opposition division only dealt with the first objection in the contested decision. [The OD] Not dealing with the second objection while maintaining the patent in amended form amounts to a substantial procedural violation, as explained in the following.

New argument in reply to late development before OD

• The reverse engineering argument [was filed by the proprietor with its reply to the opponent's appeal and] is an amendment to the patent proprietor's case within the meaning of Article 12(4) RPBA. This argument constitutes a relevant and direct response to the surface smoothness measurement insufficiency objection raised [by the opponent]  two months before the oral proceedings [before the OD] and admitted into the proceedings by the opposition division. Its filing became necessary, only once the opponent had filed an appeal and contested again that the measurement of the surface smoothness gave rise to an insufficiency objection. For this reason, the Board exercises its discretion pursuant to Article 12(4) RPBA by admitting the reverse engineering argument into the proceedings.

Objection not discussed in OD's decision

• "the opponent submits that the plasticizer insufficiency objection was not taken into account by the opposition division, which would constitute a violation of their right to be heard  "
• "the patent proprietor's opinion that the plasticizer insufficiency objection was not actively maintained throughout the first instance proceedings can apparently be based solely on the fact that the minutes of the oral proceedings do not indicate that this objection was discussed and therefore not repeated by the opponent. However, the minutes do not indicate either that this objection was withdrawn. In the Board's view, not addressing an objection submitted in writing during the oral proceedings does not necessarily imply that the objection is withdrawn. This is because written submissions form the basis of the EPO proceedings and are complemented where necessary by an opportunity for a party to present and argue its case orally (G 4/95, Reasons 4 (c) and G 1/21, Reasons 40). Parties have the opportunity to repeat or expand upon some of the written submissions they consider necessary for defending their case. However, they are under no obligation to address all written submissions orally. "
• "nothing from the debates during the oral proceedings implies that the opponent had not maintained the plasticizer insufficiency objection.
• 10.5 On that basis, the failure of the opposition division to give due consideration to the plasticizer insufficiency objection which from the opponent's submissions is an essential aspect of the alleged insufficiency disclosure of the subject-matter of claim 1, constitutes a substantial violation of their right to be heard in contravention of Article 113(1) EPC. This procedural violation is a fundamental procedural deficiency in the first-instance proceedings "

• See also R 6/24. 

EPO 

The link to the decision is provided after the jump.

R 0005/24 - Successful petition for review

Key points

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

EPO 

The link to the decision is provided after the jump.

T 0077/23 - Absent proprietor, new attacks oral proceedings

Key points

• The Board in translation: "The Board is aware that the argument of lack of novelty of claim 1 of auxiliary request 8 in relation to document E1 was first raised during the oral proceedings before the Board. However, for the reasons explained below, the Board cannot conclude that this violated the right to be heard (Article 113(1) EPC) of the respondent [proprietor], who was absent from the oral proceedings. 
• Opinion G 4/92: "A decision [in inter partes proceedings] against a party who has been duly summoned but who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings." 
• See also point 1 of the reasons: ".... it is clear that the referred question relates to inter partes proceedings. "
• In G4/92, the divergence in the caselaw was that T 574/89 had held "that by choosing to stay away from oral proceedings the parties "had forfeited their right to present comments", and hence that "any arguments or evidence submitted by the parties present at oral proceedings" could "be used as a basis for the decision without it being relevant whether such evidence or arguments were already known to the absent parties from the written submissions or whether they could expect such evidence or arguments to be presented". On the other hand, "T 484/90 ... held that "a decision against a party duly summoned to but failing to appear at oral proceedings which is based on new evidence, such as a new document, on which that party has not had the opportunity to comment, may not be pronounced at the close of those proceedings without infringing that party's right to be heard, unless the absent party indicates that it is forfeiting this right"."
• Puzzling enough, the current Board does not cite or comment on G 4/92 and does not explain how the current decision complies with G 4/92 (viz, that the novelty attack does not involve new facts forward for the first time during the oral proceedings).
• As also noted by Daniel X Thomas on his weblog. 
• Possibly, G4/92 would be decided differently nowadays. However, as of yet, it is valid case law.

EPO 

The link to the decision is provided after the jump.

T 0006/23 - A remedy for an incorrectly admitted document

Key points

• "During the oral proceedings, the opposition division admitted D30. The opposition division concluded on the basis of D30 that a technical effect could not be acknowledged over the whole scope claimed. In view of this conclusion, the opposition division denied inventive step and revoked the patent."
• The proprietor appeals.
• The case law is clear, it seems, that the Board can not "unadmit" D30.
• The proprietor had requested a postponement of the oral proceedings before the OD.
• " In its decision concerning the admittance of D30 (decision under appeal, page 6, point 4), the opposition division did not give any reason why it was not granting the appellant [proprietor] more time by postponing the oral proceedings. The opposition division's decision is thus not reasoned, contrary to Rule 111(2) EPC. For this reason alone, the appellant's right to be heard has been violated (Article 113(1) EPC)."
• "The board agrees with the appellant's view that it did not have sufficient time to properly respond to D30 before or at the oral proceedings. Since the opposition division admitted D30, it should have granted a postponement of the oral proceedings to preserve the appellant's right to be heard."
• "Moreover, the appellant had promptly reacted to the opponents' objection, raised in their notices of opposition, that no technical effect could be attributed to the claimed subject-matter, namely by filing experimental data with the reply to the notices of opposition. By contrast, as noted by the appellant, opponent 1 had waited almost one year from that reply and nine months from the opposition division's preliminary opinion to file experimental report D30, which was not filed until the final date for making written submissions under Rule 116(1) EPC."
• "By not postponing the oral proceedings and not considering the appellant's argument that it did not have sufficient time to properly respond to D30, the opposition division violated the appellant's right to be heard (Article 113(1) EPC). Moreover, the opposition division violated the principle of fairness towards the parties by allowing opponent 1 to take almost one year to file its evidence while forcing the appellant - by rejecting its request for postponement of the oral proceedings - to file a response (such as A33 and A35 and related arguments) including experimental counter-evidence (such as A34) within two months."
• "The opposition division has thus committed a procedural violation."
• "this procedural violation is substantial since the lack of inventive step is the sole ground on which the opposition division revoked the patent, basing its finding precisely on the experimental report "
• The decision is set aside and the case is remitted.
• The appeal fee is reimbursed.
• The current appeal took two years, during which the patent is in force. 

EPO 

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

R 0012/21 - Justice delayed ...

Key points

• The petition for review is successful.
• The successful petitions are now: R 12/21,   R3/22,  R 5/19 , R 4/17 , R 3/15, R 2/14 , R 15/11, R 3/10, R 7/09 , R 21/11 , R 16/13 (sorry  no links).
• The issue is whether the TBA violated the proprietor's right to be heard by not admitting an auxiliary request under Art. 13(1) RPBA 2007 in decision T 0784/17 of 30.03.2021, more particularly, whether the proprietor was given a sufficient opportunity to comment on the admissibility of the request. 
• The TBA had based the non-admission on a lack of substantiation (Art. 12(2) RPBA 2007) and a lack of prima facie allowability.
• The TBA: "Die Kammer betrachtet den Sachvortrag der Beschwerdeführerin zu ihrem Hilfsantrag deshalb nicht als vollständig im Sinne von Artikel 12(2) VOBK 2007. Zudem kann sie nicht erkennen, dass der gegenüber dem Hauptantrag hinzugefügte Schritt des Abfliegens prima facie die Neuheit gegenüber D2 herstellt und damit dem Anspruch zu einer prima facie Gewährbarkeit als Zulassungskriterium unter Artikel 13(1) VOBK 2007 verhilft."
• The present decision in translation: "The petitioner argues that at the oral hearing, it was only permitted to comment on whether the written submission of March 5, 2020, met the requirements of a late submission. It was "only" permitted to comment on the question "why no additional reasoning was submitted regarding the content of the auxiliary request." The Board of Appeal discussed the substantive content of the subject-matter of claim 1 according to the auxiliary request in the decision, without allowing it to comment on it. It was therefore not heard on the novelty of the subject-matter of claim 1 of the auxiliary request."
• The EBA, in translation: "In light of all of the foregoing, the fact that the board did not expressly address the question of the prima facie novelty of the subject-matter of claim 1 of the auxiliary request during the debate [at the oral proceedings] on the exercise of its discretion to admit under Article 13(1) RPBA 2007 and did not allow arguments to be presented on that point constitutes a serious violation of the patent proprietor's right to be heard (Article 113(1) EPC). "
• The EBA also concludes that the issue could be decisive for the outcome of the appeal case, namely that if the petition had been heard, the request could have been admitted. 
• There are some interesting points, e.g. that the proprietor had an opportunity to comment during the written procedure, as well as that the EBA leaves open whether the TBA had prohibited the proprietor from discussing the prima facie relevance.
• The EBA: "Rather, in order for the Board of Appeal to have been able to rely on the prima facie lack of novelty of the subject-matter of the auxiliary request in its decision not to admit the auxiliary request, the applicant should have been given the opportunity to present its arguments on this point at the oral proceedings. In the present case, this would have required the Board to explicitly address the issue during the debate on the exercise of discretion regarding the admission of the auxiliary request, since the EBA has no indication that the opponents raised the issue of novelty during the debate on admission."
• So, what are the key points that can be applied in other cases?
• If a decision is based on two cumulative grounds (rather than on two independent grounds), a violation of the right to be heard regarding one of them vitiates the decision. 
• Compare e.g. the Board finding the claim to be unclear and lacking basis in the application as filed vs. a discretionary decision to not admit a request referring to the late filing and the lack of prima facie relevance. I note that for discretionary decisions, it is less easy to see how there can be independent grounds as the exercise of discretion normally is to be based on the consideration of all factors (see e.g. Art. 12(4) RPBA).
• As I understand it, the opponents did not contest the prima facie allowability of the AR (the opponent did not challenge that the amendment made the claim novel), so the board introduced the issue on its own motion. The board should therefore have invited the proprietor to comment. In other words, for an amendment that adds a feature with the purpose of making the claim novel (e.g. for Art. 54(3) EPC), prima facie allowability must be assumed unless the opponent contests this. Note that this may be different for an amendment that aims to make the claim novel and inventive. 
  
  

On the length of the procedure

• The petition for review was filed on 12.07.2021. The current decision was issued on 25.04.2025; the procedure took approximately 4 years, i.e. 20% of the patent term.
• As far as I know,  (the management of) the Boards have, remarkably, never set a target for the pendency of petition for review cases.
• On the same day, the decision in R 8/22 was published, where the petition was rejected as clearly unallowable. The petition for review was filed on 01.04.2022 (basically after the COVID-19 disruptions). Apart from the language of the proceedings being French, I see no special reasons why it took three years to decide on the petition.
• Just to say the evident: three years of additional 'pendency' in itself can be interesting for parties in certain cases. 
• Four petitions from 2022 are still pending out of the 25 filed in that year.  Six were withdrawn. Two were decided in 2022, eight in 2022, four in 2024, and one in 2025.
• One petition filed in 2021 is still pending. Seven were decided in 2022 (including the one successful petition, five in 2022, one in 2024, and one in 2025.
• Of the 18 petitions filed in 2023, twelve are still pending, five were rejected as clearly inadmissible or clearly unallowable, and one was withdrawn. 

EPO 

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

T 1019/22 - Obiter dicta and the right to be heard

Key points

• The OD decided that D1 was the closest prior art and that the claim was inventive over D1. By way of obiter, the OD gave reasons why the claim was also inventive over D11, wich was an inventive step attack presented late by the opponent.
• "During the oral proceedings in opposition, at the very end of the discussion of inventive step, after the relevant decision on inventive step starting from document D1/D15 had been announced, the appellant [opponent] brought up an objection of lack of inventive step starting from document D11 as an alternative closest prior art document against the subject-matter of claim 1."
• "The decision under appeal also contains an obiter dictum in point 9.10, [...] In this section the opposition division mentioned that document D11 was not the closest prior art, and thus it would not be necessary to decide on its basis. For the sake of completeness, however, and at the request of the opponent, an assessment of inventive step had also been provided on the basis of document D11. In that assessment, the opposition division found that the subject-matter of claim 1 was inventive over the disclosure of document D11."
• The Board: "An obiter dictum is any general statement, either implicit or explicit, in a decision which does not constitute a ratio decidendi of said decision."
• I'm not entirely sure why this definition is limited to general statements.
• Accordingly, in decisions of the boards of appeal it was stated that observations in an obiter dictum do not, by definition, form part of a decision [...]
• "Form a purely legal point of view obiter dicta have no significance for the decision of the specific case and have no binding force. They normally deal with issues that were not raised in the proceedings as a whole, or on which a decision does not actually have to be made. Accordingly, if a legal opinion expressed as an obiter dictum has no influence on the legal dispute, it cannot, by itself, constitute an infringement of one party's rights."
• "[The right to be heard] is not violated if a party did not have the opportunity to comment on observations in an obiter dictum "
• As a comment, the implication is that they form no part of the decision for the purposes of Article 12 RPBA either. In an appeal against a refusal, if the Board indicates it agrees with the obiter, this is a new objection of the Board.
• "A genuine obiter dictum does not make it necessary to file additional evidence [with the Statement of grounds]."
• In this case, the OD's decision that the claim was inventive, was inherently based on rejecting the inventive step attack over D11 and the use of an obiter was not appropriate.
• "After having decided that the subject-matter of claim 1 was inventive starting from document D1, the opposition division should have addressed further objections of lack of inventive step, if any were on file. Therefore, the opposition division should first have taken a decision on the admittance of the inventive step attack starting from document D11. Only if admitted, it should have then fully decided upon inventive step by also taking into account document D11 as the closest prior art after having heard both parties. Had the opposition division formally decided not to admit the attack based on document D11, there would have been no need for an obiter dictum."
• "the board also notes that in cases in which the skilled person has a choice of several workable routes, i.e. routes starting from different documents, which might lead to the invention, the rationale of the problem-solution approach requires that the invention be assessed relative to all these possible routes, before an inventive step could be acknowledged (see e.g. T 967/97, point 3.2 of the Reasons and T 21/08, point 1.2.3 of the Reasons)."
• Or the attacks be rejected as inadmissible, of course.

EPO 

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

R 0008/19 - Objective technical problem, length of review procedure

Key points

• "In the present case, a cornerstone of the Board's inventive step reasoning [in T1537/16]  with respect to claim 1 of auxiliary request 1 was the construction of the objective problem solved by the claimed subject-matter. In line with its reasoning concerning the main request, the Board did not follow the proprietor's view that the objective problem consisted of the provision of an improved pharmaceutical formulation with reduced variability in its pharmacokinetic parameters, since it considered that a corresponding effect had not been demonstrated. But it also did not follow the petitioner's view that the problem was merely the provision of an alternative tablet. Instead, it considered that the objective problem solved was the provision of a pharmaceutical formulation with a zero order release profile."
• The TBA on the main request: The TBA could not follow the argument of the proprietor that "the eroding matrix of claim 1 of the main request necessarily provides a zero order release profile, which is not the case of D1". "An eroding matrix is not necessarily a matrix with a zero order release. Said term is not necessarily connected with specific release properties, it only defines a way of releasing by slow dissolution". The Technical Board also found that the dosage form of example 16 of D1, with a matrix system and a water-insoluble rate-controlling polymer, inherently provided an eroding matrix.
• The TBA on auxiliary request 1: "contrary to claim 1 of the main request which referred generally to a "rate-controlling agent" [of the erosion matrix, I understand], claim 1 of auxiliary request 1 has been restricted to a water-soluble rate-controlling polymer". "it is clear that the distinct nature of the rate-controlling agent shows an effect on the release of the fumaric acid ester from the core tablet. Accordingly, the technical problem is the provision of a pharmaceutical formulation showing a zero order release."
• The Enlarged Board: "The question arises, whether the Board's reliance on an objective problem that was never mentioned to the petitioner amounts to a fundamental violation of the right to be heard. In the Enlarged Board's view, this question cannot generally be answered in the affirmative. The application of the problem-solution approach can be viewed as a method of determining and reasoning whether a claimed invention fulfils the requirement of inventive step (Articles 52 and 56 EPC). "
• "For the reasons given below, the Enlarged Board comes to the conclusion that the Board based its decision only on grounds that were objectively foreseeable by the parties, in view of their submissions and the Board's statements during the appeal proceedings. During the entire proceedings leading to the decision under review, the zero order release profile - the provision of which was eventually adopted by the Board as the objective technical problem - was discussed, either as a quality of the erosion matrix or as a feature that was desirable per see."
• Follows a detailed analysis of the facts of the specific case in points 19 - 27.
• "Under these circumstances, it could not be surprising that the Board connected the additional limiting feature of claim 1 of auxiliary request 1 ("wherein the rate-controlling agent is a water-soluble polymer") with the generally acknowledged advantages of a zero-release profile, which profile was also set out for examples 18 and 22 in Figure 1 of the patent."
• The Enlarged Board also includes a general remark: "In the context of the problem-solution approach, there should normally have been a discussion on the relevant prior art, the differences between the prior art and the claimed invention, and the technical relevance of these differences. Within the framework of what has been addressed in the course of these discussions, the deciding organ should be free to apply the problem-solution approach as it sees fit, and even identify an objective problem that has not been explicitly spelled out as such during the proceedings. In any case, the objective problem eventually used in the reasoning has to be based on technical effects (or the lack of any) and the features of the invention causally linked to such effects, upon which the parties had an opportunity to comment."
  
  
• The decision in case R 8/19 was issued in writing on 20.09.2024. The decision was taken on 12.04.2024. The petition for review was filed on 25.09.2019, so the Enlarged Board took five years (minus a few days) to decide on the case. The decision was taken by a five-member panel.  
• The Enlarged Board also needed more than three months to issue the decision, but Art. 15(9) RPBA has no counterpart in the RPEBA.
• At the time of writing, R12/20 is still awaiting the written decision, and three petitions that were filed in 2021 are still pending. It seems the Enlarged Board is clearing up a (corona-induced?) backlog. 
• The application was filed as a PCT application in 2010. The overall length of the procedure was 14 years. 
• No interruption of the procedure is visible in the Register (Rule 143(1)(t) EPC).

EPO 

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

T 2241/19 - Choosing CPA when requested is no abandonment other attacks

Key points

• "In the notice of opposition, in point V. on page 14, the appellant [opponent]  raised an objection that the subject-matter of dependent claim 2 as granted, which is identical to claim 1 of the sole request in opposition and appeal, did not involve an inventive step in view of document E8 as closest prior art in combination with document E6. The decision under appeal does not contain any reasoning and conclusion concerning this objection, be it explicit or implicit. Therefore the decision does not meet the requirements of Rule 111(2), first sentence, EPC."
• "the final decision must address all those objections which could potentially have led to a different outcome in order to comply with the requirement of Rule 111(2) EPC. The objection in question had at least the potential to change the outcome of the case.

• " The board currently cannot discern any declaration or action by the opponent that could be taken to be an explicit or implicit abandonment of the objection of lack of inventive step in view of E8 as closest prior art in combination with document E6. In the board's view, neither the minutes nor the decision under appeal contain any explicit declaration by the opponent to this effect."

• "According to the minutes, point 10 "[the opponent] was then [after a discussion of novelty] requested to begin his arguments with the grounds relating to Art. 100(a) EPC by identifying the most promising closest prior art document and using the feature analysis as appended to the summons". In the following, objections based on E1 in combination with E10 as well as E3 in combination with E10 were discussed.

• By discussing these objections, the opponent merely followed the chairman's conduct of the oral proceedings but did not implicitly abandon any or all further objections besides those discussed. The opposition division accepted a discussion of inventive step starting from documents E1 or E3 as starting point. Due to this fact, the opponent could not assume that the opposition division had implicitly dealt with the further objection based on E8 in combination with E6 by only accepting a single piece of prior art or only exclusively accepting E1 or E3 as the starting point for the assessment of inventive step.

• According to point 28 of the minutes, the opponent declared that he had no "further objections to raise". However, objections presented in writing do not need to be repeated at the oral proceedings in order for the deciding body to have an obligation to taken them into account in the final decision, see for example decision R 5/19, reasons 3.6. Therefore, this statement also can not be considered an implicit abandonment.

• There was thus at least no clear abandonment. Therefore, the opposition division could not legitimately assume that the objection in question was abandoned. Rather in case of doubt it would have been incumbent on them to clarify the procedural situation.

It follows that the decision under appeal does not contain reasons concerning the objection of lack of inventive step based on E8 as closest prior art in combination with document E6. Not presenting reasons in the decision under appeal concerning this objection adversely affected the opponent-appellant's right to a sufficiently reasoned decision."

• The appealed decision is set aside, the case remitted, and the appeal fee reimbursed. 
• As a comment, the OD could possibly have proceeded by explicitly deciding that E1 was the closest prior art, not E8. 
• The Board does not comment on inventive step over E1. I don't know if that attack was maintained in appeal. Possibly E1 takes away inventive step, and the consideration of E8 would not change the outcome in appeal. At least the present decision leaves open the possibility that E8 is not essential for the decision in appeal because the Board, in a second appeal, revokes the patent as obvious over E1.

EPO 

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

T 1529/20 - Learning about the opposition after your patent is revoked

Key points

• The OD revoked the patent without having received any reply from the proprietor. The proprietor alleges that it had not received the communication under Rule 79 informing it about the filing of an opposition.
• "For the purposes of Rule 126(2) EPC, the present board therefore initiated a postal investigation concerning the delivery of the decision dated 6 April 2020 (parcel number: RD432322983NL), within one year from the date in which the decision was posted. The outcome of the investigation carried out by the responsible service provider was negative, as the postal provider could not track any delivery of the parcel to the addressee, and the parcel had thus to be declared lost. "
• "Since the EPO could not prove whether the registered letter reached the appellant, as required by Rule 126(2) EPC, it must be accepted that the legal fiction of deemed notification did not apply and the appellant became aware of the appealed decision for the first time with the email [*] on 26 June 2020. This date is therefore the date of notification of the decision. "
• * - "The appellant submitted that they had never received the opposition division's decision and that they had become aware of it and more generally of the opposition proceedings only by an email of an employee of the EPO, PA admemp patent FO Team Central Formalities MU, Dir 1.2.5.1 dated 26 June 2020, 6 pm."
• Email is not a valid means of communication. However, irregular notification (e.g. by email) is sufficient, under Rule 125(4), if the EPO can proof the date of receipt of the document.
• The appeal is admissible. The Board finds the course of events to be a violation of the right to be heard and sets aside the OD's decision.
• "The board does not disregard that Rule 126(2) EPC refers to a dispute ("im Zweifel", "en cas de contestation") for the EPO's burden of proof [i.e. only in case of "a dispute"has the EPO the burden of proof of delivery of the document], nor that the mere absence of the advice of delivery or the receipt from the file is not in itself sufficient to give rise to a dispute (see T 247/98, Reasons 2.1 and 2.6). However in this case the appellant when filing the appeal has immediately disputed having received inter alia the communication of the notice of opposition and the communication under Rule 79(1) EPC."
• "even in view of the above mentioned Notice of the European Patent Office dated 16 June 2019 concerning implementation of amended Rule 126(1) EPC (OJ EPO 2019, A57) [abolishing the advice of delivery], the requirements of Article 113 EPC must be complied with, so that before a negative decision revoking a patent is issued, it has to be established that the patent proprietor has been duly informed about the initiation of opposition proceedings."
• The term "advice of delivery" has a rather specific legal meaning, as discussed in G 1/14. 
• "In order to ensure a legally sound notification of the relevant documents, they could have even opted for a notification by public notice [i.e. in the Bulletin] according to Rule 125(2)(d) EPC in conjunction with Rule 129 EPC. The board is aware that under the applicable legal framework it was no longer required to enclose advices of delivery, or that a public notification would not have been required in the present case, because the letter was not returned (Rule 129(1) EPC). However, even if not required by law, nothing prevents the taking of additional measures to ensure legal certainty when there are serious doubts as to whether a procedurally relevant notification, such as the one concerning the notice of opposition, has actually reached the addressee."
• Note, the setup of Rule 129(1) EPC is that notification through the Bulletin requires two notification attempts by registered letter ("has proved to be impossible even after a second attempt") to protect the parties concerned.
• The OD should have noticed that no reply was received from the proprietor and should have checked if the first delivery attempt was succesful.
• A complication is that the proprietor is located in the USA and the representative withdrew during the opposition period before the opposition was filed. However, notification to unrepresented parties outside the EPC contracting states is routine under Rule 160(2) EPC (non-entry into the European phase). 

EPO 

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

T 2382/19 - Direct revocation

Key points

•  The proprietor requested no oral proceedings in the reply to the opposition and filed no auxiliary requests.
• The OD revoked the patent about 7 months later without any preceding Communication and without holding oral proceedings.
• The Board sees no mistake in this course of action. The OD simply followed the opponent's arguments in the decision and did not introduce new lines of argumentation.
• The Board, in translation: "The board cannot see that the opposition division based its decision on reasons on which the appellant would not have had the opportunity to comment. The opposition division followed the arguments put forward by the opponent for interpretation; The patent owner was able to comment on this. Whether the view expressed by the opposition division (and the opponent) was correct is not a question of the right to be heard."
• Neither is there a violation of legitimate expectations.
• The Board considers the claims to be novel, sets aside the decision, and remits the case to the OD for further prosecution. 
• The proprietor filed four auxiliary requests about 2 weeks after the Board's decision, this time also requesting oral proceedings. 

EPO 

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

T 0049/21 - Obiter remarks will be held against you

Key points

•  This is an appeal against a refusal decision.
• " the minutes of the consultation on 10 June 2020 (dispatched on 17 June 2020) show (point 3.2) that the point [concerning] the alleged effect of saving resources not being derivable from the claim wording, had already been communicated to the appellants before the oral proceedings. "
• The application was refused in oral proceedings on 16.06.2020. The applicant attended, and the auxiliary request at issue (AR-2) was discussed. The point was briefly discussed, according to the minutes, other objections to AR-2 were discussed more extensively.
• In appeal, "Auxiliary request 6 filed with the statement setting out the grounds of appeal"
• "it is an amendment within the meaning of Article 12(4) RPBA, which can only be admitted at the discretion of the board. As for reasons for submitting this new request in the appeal proceedings, the appellants argued that it could not have been filed earlier because they had not been aware of the objection to auxiliary request 4 under point 16.5 of the contested decision before they received the written decision. This objection had not been raised at the oral proceedings before the examining division, as could also be seen from the minutes. This request was to address that specific objection."
• These arguments did not convince the board. In point 16.5 of the contested decision, the examining division merely added an "additional remark" to its objections, which are under points 16.1 to 16.4 on which the decision is based. The fact that the written decision has an additional remark does not give the applicant the right to continue examination in appeal proceedings.
• "Furthermore, the minutes of the consultation on 10 June 2020 (dispatched on 17 June 2020) show (point 3.2) that the point raised in this additional remark, namely the alleged effect of saving resources not being derivable from the claim wording, had already been communicated to the appellants before the oral proceedings. Therefore, this request should have been filed in the examination proceedings. Therefore, the board did not admit this request (Article 12(4) RPBA)."
• Note, in connection with a different auxiliary request.
• As a practice point, if there is an unfavourable obiter remark in a decision which is a surprise, argue in an appeal that it violates your right to be heard to include it in the decision, in addition to addressing it on the merits.  In this way, the Board must expressly decide if your right to be heard was violated, which will at least be the case if you were not sufficiently notified by the Examining Division of the obiter issue before the decision. Additionally, object to any new objections that the ED may raise shortly before or during the oral proceedings and always request more time to consider the strategy because any objections or issue that the ED may inform you about can be a bar to addressing it in appeal, as the present decision shows. If the ED denies your request for a break, postponement, or adjournment of the oral proceedings, appeal on that point as well. 
• 
  
• 
  
• EPO 

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

T 0617/18 - Holding request inadmissible in examination appeal

Key points

• In this appeal against a refusal decision, the applicant files new auxiliary requests in appeal.
• The Board summons for oral proceedings, giving no preliminary opinion (yet). The applicant withdraws the request for oral proceedings. Can the Board hold the auxiliary requests inadmissible, or must the Board first invite the applicant to comment on the admissibility objections?
• The Board: " In the present case, the appellant withdrew the request for oral proceedings after being summoned thereto by the board. The appellant also informed the board that they would not attend these oral proceedings, even though the board had not provided any provisional opinion on the issues of the present case. 
• "The appellant could well have expected that the board maintains the decision of the first instance as regards the main request and that, as regards auxiliary requests I and II, their admission into the appeal proceedings would have to be first assessed by the board before entering into a detailed examination of all the substantive issues of these requests. The criteria for such assessment are well established in the case law and based on both procedural as well as substantive considerations (cf. "Case Law", supra, V.A.5.1.2, V.A.5.2.2, V.A.5.3, and V.A.5.11.4.a)). The appellant however did not take the opportunity, as they would have had, to discuss admission of the auxiliary requests at the oral proceedings.
• "Thus, in view of the appellant's behaviour and requests on file, the board considers that the appellant's right to be heard is not breached or infringed by the board not admitting appellant's new auxiliary requests I and II into the appeal proceedings (Article 113(1) EPC)."

EPO 

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

T 0690/18 - Board confronts party, does not admit response

Key points

•  The Board finds AR-1 to be not inventive over D2 because "the claimed subject-matter defines an arbitrary modification of the oven according to D2".
• The patentee files AR-2 during the hearing before the Board
• As a preliminary development, "In contrast to the approach developed in the [decision of the opposition division], the provisional opinion issued by the Board envisaged an alternative scenario as to how to arrive at the claimed subject-matter [of AR-1, presumably, AR-2 not having been filed yet] starting from the embodiment of Figure 1 in D2."
• In the preliminary opinion "the Board stressed that the introduction of an additional thermally insulating layer between the induction coil and the ferrite layer would have led to the claimed subject-matter. Such a modification was considered then to solve the problem of protecting the magnetically insulating means from the effects of excessive heat."
• Now the key event" "In the course of the oral proceedings before the Board, the proprietor was confronted with a revised provisional analysis of D2 from the Board according to which the claimed invention did not solve any technical problem due to the absence of a technical effect."
• I understand this as meaning that during the oral proceedings, the Board confronted the proprietor with a new ("revised") analysis of D2, i.e. one or more members of the Board said something to inform the patentee of their new analysis of D2. 
• The Board gives no details of what this new analysis precisely was. Was a new paragraph of D2 cited? A new interpretation? New common general knowledge used to interpret something? 
• Does the Board give the patentee a chance to respond by filing the auxiliary request?
• No.
• The Board: " inventive step attacks against claim 1 of auxiliary request 1 starting from D2 were subject to the appealed decision. The first objection therein relied on D2 and common general knowledge. By the end of the corresponding section of its statement of grounds of appeal (pages 16-18), the opponent, in a summary of its D2-based inventive step attacks, stressed that D2 was also put forward as a sole document"
• The Board does not state that the inventive step attack decided on in the appealed decision was based on the same essential reasoning as the "revised provisional analysis" of the Board.
• " the Board is not bound in any manner by the content of its provisional opinion"
• "The circumstances referred to by the proprietor do not constitute exceptional circumstances, but relate, on the contrary, to ordinary aspects of the appeal proceedings. For there is nothing exceptional in the Board, as a result of a preparatory meeting or as a result of arguments presented during the oral proceedings, assessing a situation differently from its provisional opinion, thus diverging from or revising its provisional analysis. "
• It may be added that the Board does not cite Article 113(1) and accordingly does not expressly comment on how the decision complies with that provision. 
• "Moreover, the amendments introduced in claim 1 of auxiliary request 2 do not prima facie overcome the issue of lack of technical effect raised against claim 1 of auxiliary request 1. The additional limitations, ... refer to structural aspects of the thermally insulating layer. They are without any bearing on the above finding that said thermally insulating layer does not provide any additional technical effect over the thermally insulating layer present between the induction coil and oven wall in D2."
• Adding features to a claim seems prima facie a suitable reply to me to an inventive step objection. The Board doesn't state that D2 already teaches the added features. 
• As a comment, it would have been useful if the Board could have explained in more detail how the patentee's right to be heard under Article 113(1) was safeguarded. What is the purpose of the Board confronting the patentee with "a revised provisional analysis of D2 from the Board" if the Board holds the patentee's response inadmissible? 
• I do not exclude that there is some principle of good faith that when the Board asks a question (or "confronts" a party), the party can legitimately expect to be given a fair opportunity to reply, even if, strictly speaking, the Board was not required to ask the question under Art. 113(1). Giving a party a  fair opportunity to reply may involve allowing the party to file appropriate evidence or auxiliary requests, in my view, depending on the circumstances (and to have such evidence or requests duly considered on the merits, for that matter, i.e. admitted and then considered on the merits by the judicial panel).

EPO 

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

T 2156/17 - Article 113 EPC does not entail the right

Key points

• The Board does not admit request 1a.
• "Auxiliary request 1a is an attempt to parry the Board's decision not to admit the new first and fourth auxiliary requests on the ground of lack of convergence, when compared to the new main request."
• "There is nothing exceptional in the board applying the criterion of convergence to question the admissibility of an auxiliary request freshly filed in appeal proceedings (Article 13(2) RPBA 2020). Although convergence, as stressed by the appellant, is not the sole criterion, there is also nothing surprising in the Board applying it to the new first and fourth auxiliary requests filed in response to the communication of the Board. "
•  " The right to be heard under Article 113 EPC does not entail the right to be given further possibilities to file new requests if earlier attempts fail. In the Board's judgment, the appellant's right to be heard is met under the circumstances, since they were aware of the objections to the admissibility of the earlier requests, and had the opportunity to contest this and present their arguments (T 732/21)."
• The Board does not specify any particular paragraph. To cite that decision: " the purpose of the rules of procedure before the Boards is not, in itself, the refusal to consider late requests, but rather the defence of the parties rights to a fair hearing within a reasonable time, and that, in view of the above, in the present case, consideration of this particular request [i.e. admitting it] does not impair these basic rights of either party"
  
  
• On inventive step:  "The claimed invention is a mixture of technical and non-technical features. The approach generally followed to assess inventive step of the subject-matter of a claim comprising a mixture of technical and non-technical features derives from T 641/00, Two identities/COMVIQ, OJ EPO 2003, 352. This approach was generally endorsed by the Enlarged Board of Appeal in G 1/19 Pedestrial simulation, OJ EPO 2021, A77, points 31-34, and points 35 and 36 with explicit reference to G 3/08, Programs for computers, OJ EPO 2011, point 10.13.2)."

EPO 

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

T 1213/19 - (II) The right to be heard and amended claims

Key points

• I present the following reasoning of the Board without comments, except for a rhetorical question: does the right to be heard under Article 113(1) EPC entail more than a formal opportunity to file amended claims, namely a right to have amended claims which are filed without undue delay and as a serious attempt to address one or more objections considered on their substantive merits?
• The Board: "Article 113(1) EPC enshrines the fundamental right of a party to be heard before a decision is issued against it. Neither this provision nor the principle of party disposition expressed in Article 113(2) EPC [...] give any right to an applicant or patent proprietor in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant or patent proprietor (see also G 7/93, Reasons 2.1)."
• The Enlarged Board: " The referring Board of Appeal has indicated its view that Article 113(2) EPC is based on the fundamental right of parties to civil law proceedings to decide the scope of their case. In the Enlarged Board's view, this provision of the EPC does not give any right to an applicant in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant. The effect of this provision [= Article 113(2) EPC ]  is merely to forbid the EPO from considering and deciding upon any text of an application other than that "submitted to it, or agreed, by the applicant or proprietor ..."."
• " The right to file amended claims is defined in Article 123(1) EPC in accordance with the Implementing Regulations. These provisions, and not Article 113 EPC, set the conditions for taking amendments to the claims into account." 
• " It follows that the opportunity to present comments does not inevitably extend to having any auxiliary request submitted at any time automatically admitted into the proceedings (see also R 9/11, Reasons 3.2.2); its admittance in the appeal proceedings is subject to the applicable provisions of the Rules of Procedure of the Boards of Appeal, in this case Article 13(2) RPBA 2020."
• " In the current case, the respondent [patentee] had the right and the opportunity to react and present their comments, including by filing amended claims, to the appellant's submissions regarding document D8. However, auxiliary requests 1, 3 and 4 were filed only with the letter dated 22 July 2022, i.e. more than two-and-a-half years after the appellant [opponent] had submitted document D8 and provided detailed argument on why it was of the view that the subject-matter of claim 1 as granted lacked novelty over document D8. Auxiliary request 1A was filed a further two months later. On account of these actions, it is clear that the respondent did not wish to react to the appellant's submissions, but instead chose to wait until after the board had given its preliminary opinion in the communication pursuant to Article 15(1) RPBA 2020 to file the auxiliary requests." 
• " None of these claim amendments can thus be regarded as a timely reaction to the appellant's filing of document D8, as required by the Rules of Procedures of the Boards of Appeal. For this reason alone, the board rejects the respondent's argument that it was not given an opportunity to amend the claims in reaction to the submission of document D8."
• " By choosing not to react until the board had given its preliminary assessment on document D8, the admittance of the auxiliary requests became subject to the stringent limitations of Article 13(2) RPBA 2020. Under the present circumstances, however, the respondent had the possibility and, with more than one-and-a-half years before the summons were issued, sufficient time to react to the appellant's submissions regarding document D8 by filing amended claim requests under the less stringent limitations of Article 13(1) RPBA 2020." 
• " But even after the board's communication was issued, the respondent still had the opportunity to react and amend its appeal case. In fact, point 36 at the end of the communication drew the attention of the parties to the provision of Article 13(2) RPBA 2020, under which a limited exception is provided for amending their appeal cases. At the heart of this provision, based on the principle of Article 123(1) EPC and Rules 81(3) and 100(1) EPC, is the board's discretion to admit such an amendment. The respondent therefore had the right to react to the board's provisional opinion by filing auxiliary requests. It had the opportunity to comment on the admittance of these requests, but there was no certainty that these would be admitted (see R 1/13, Reasons 13.3 and R 6/19, Reasons 5 to 11)." 

EPO 

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

T 0776/17 - Should have adjourned

Key points

•  The OD admitted a document filed by the opponent one month before the oral proceedings and then refuses a request for adjournment of the oral proceedings of the patentee.
• "As set out above, D18 was filed one month before the oral proceedings before the opposition division. Together with the filing of D18, the respondent [opponent] raised a novelty objection based on this document. Only during oral proceedings did the respondent also raise an inventive-step objection based on D18 as the closest prior art together with the assertion that no effect had been shown to be present "
• "Not providing the appellant [patentee] with sufficient time to react to this attack by granting its request to adjourn the oral proceedings represents a violation of the appellant's right to be heard within the meaning of Article 113(1) EPC. As set out above, the inventive-step attack based on D18 as the closest prior art comprised the assertion that no effect had been shown to be present. It is thus absolutely credible to the board that the appellant would have needed time to react, and thus the oral proceedings should have been adjourned. Since admittance of the inventive-step attack based on D18 led to the rejection of auxiliary request 2 [], the violation of the appellant's right to be heard constitutes a substantial procedural violation."
• "For the sake of completeness, the board notes that the conclusion made here that a substantial procedural violation occurred in relation to the opposition division's admittance of D18 is not in contradiction to the board's conclusion above [that] the opposition division applied the right principle[s] in a reasonable way [when it decided to admit D18]. The procedural violation does not arise due to the admittance of D18 but due to the fact that after this admittance, oral proceedings were not adjourned."
• "The opposition division's finding of lack of inventive step based on D18 as the closest prior art is tainted with a violation of the right to be heard under Article 113(1) EPC (see 25.1 above), and a causal link exists between the violation and the final decision since this objection was the sole reason for the opposition division that the second auxiliary request was not allowable, thus amounting to a substantial procedural violation. Since the appellant did not have time to file auxiliary request 3 before the opposition division, it was necessary to lodge an appeal. Under these circumstances, the board considers it equitable that the appeal fee be reimbursed in full in accordance with Rule 103(1)(a) EPC."
• Usually, a substantial procedural violation is also a ground for remittal, but a remittal is not discussed in the decision. 
• I just highlight that it is key for parties to actually request an adjournment of the oral proceedings during the oral proceedings before the OD once the OD decides to admit a submission of the opposing and a party feels insufficiently prepared to deal with it during the oral proceedings and wishes to preserve the issue for appeal. If you don't request an adjournment, you essentially forfeit the argument that you didn't have sufficient time in the first instance proceedings, possibly also for getting your response admitted in appeal under Art. 12(4) RPBA. So it seems safe to predict we will see this more often in the future. Of course, the risk for the opponent is that the OD will actually grant the adjournment and that the patent will be in force for a few more months even if ultimately invalid.
• The Board, when deciding to admit AR-3: "Contrary to the respondent's view, the appellant could not have been expected to react to the objection by filing the appropriate set of claims to overcome the objection during the oral proceedings before the opposition division. The new objection raised complex new issues to which the appellant could not be expected to respond on the spot during the oral proceedings (see also point 26 below). Thus, the appellant could only submit the third auxiliary request with the statement of grounds of appeal."

EPO 

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

T 0017/22 - At least one Communication

Key points

•  In this case, the Euro-PCT application, with the EPO as ISA, was refused after two notifications were issued: the Rule 161 Communication and "a communication under Rule 137(4) EPC headed "Invitation pursuant to Rule 137(4) and Article 94(3) EPC", accompanied by an annex raising an objection under Article 123(2) EPC".
• "The decision was based on the ground under Article 123(2) EPC and on lack of novelty, lack of inventive step and lack of clarity."
• The Board: "According to Article 94(3) EPC, if the examination reveals that the application or the invention to which it relates does not meet the requirements of the EPC, the examining division shall invite the applicant, as often as necessary, to file his observations and, subject to Article 123(1) EPC, to amend the application."
• "While the expression "as often as necessary" indicates that the examining division has discretion whether to issue more than one communication, at least one substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on such substantive grounds is issued [...]. Indeed, only if a preceding communication pursuant to Article 94(3) EPC sets out the essential legal and factual reasoning to support a finding that a requirement of the EPC has not been met, can a decision based on such a finding be issued without contravening Article 113(1) EPC (see T 305/14, point 2.3 of the reasons)."
• As a comment, I observe that neither Article 94(3) EPC nor Rule 71(1) EPC expressly requires that the Examining Division issues at least one communication. The applicant's right to be heard under Article 113(1) EPC however entails a right to be informed of the grounds for refusal and to be given an appropriate opportunity to address them. In the past, when the EPO's search report was only the search report proper, i.e. without any written opinion (and only stating X or Y for each document to give a hint of whether a novelty or inventive step objection was considered by the Search Division), the first Communication from the Examining Division was indeed the first time the applicant was informed of the objections. Hence, at that time the right to at least one communication from the Examining Division directly followed from Article 113(1) EPC.
• Note that the phrase "as often as necessary" requires some yardstick. 
• The present decision of the Board confirms that the rule that "at least one substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on [] substantive grounds" still applies.
• "A communication under Rules 161(1) and 162 EPC thus * cannot be considered a communication under Article 94(3) EPC, or a communication which would obviate the need for a communication pursuant to Article 94(3) EPC. This is furthermore confirmed by the Guidelines for Examination in the EPO which state that an application may not be refused directly after the reply to a communication under Rule 161(1) EPC (Guidelines C-V, 14)."
• The reason given by the Board is that " an amendment by the applicant's own volition needs to precede the stage of examination. Thus, a reply to the search opinion and any amendments made by the applicant of its own volition should be on file when the substantive examination starts"
• As a comment, it may also be argued that the Rule 161 communication as such does not state reasoned objections. 
• "The "Invitation pursuant to Rule 137(4) EPC and Article 94(3) EPC" can also not be considered a substantive communication under Article 94(3) EPC."
• " The communication under Rule 137(4) EPC, with a period for reply of one month, is, by contrast, of a formal nature. The applicant is merely asked to identify the amendments and to indicate the basis for them in the application as filed, independently of whether these amendments comply with Article 123(2) EPC"
• "The short period of one month specified in Rule 137(4) EPC for a reply is inappropriate for a reply to substantive issues."

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

T 2613/18 - Taking up the hint provided by the Board

Key points

• The Board, on admitting an auxiliary request under Art. 13(2) RPBA: " Notwithstanding the fact that a "new" objection raised by a board in appeal proceedings cannot per se amount to "exceptional circumstances" within the meaning of Article 13(2) RPBA 2020 (cf. T 2632/18, Reasons 4.3; T 2271/18, Catchword), it is apparent that such a request could and should have been filed already before the oral proceedings in appeal proceedings, at least in response to the board's preliminary opinion. " 
• Board 3.5.03 states their view (the part in italics) for the third time in the present decision, but of course it is beyond doubt (isn't it?) that if the Board raises a new objection, Article 113(1) EPC prescribes that the applicant/patentee must be given a fair opportunity to address the issue by submitting amended claims, this opportunity includes the right to have the amendments fully considered by the Board. 
• " The objection of lack of support by the description, specifically mentioning the lack of definition of an "active time" for the contention case, had already been raised by the board in point 4.5 of its communication under Article 15(1) RPBA 2020. So, instead of seriously taking up the hint provided in that communication, i.e. that "the active time for the contention case is not defined by claim 1 in a manner consistent with the description and drawings" (cf. point 3.2.3 above) and of remedying the mentioned defect according to the teaching of the original description (cf. point 3.2.4 above, in particular the emphasised part of that teaching), the appellant chose to wait only until the hearing before the board to then concede that claim 1 might indeed not be fully consistent with the description. Such a conduct cannot justify admittance of a late-filed claim request." 
• As a comment, the EPO merely providing a hint of an ex officio raised ground for refusal (or revocation) respectfully does not comply with Article 113(1) EPC in my view.
• "the additional comments and explanations given by the board during the oral proceedings in relation to its objections raised in its preliminary opinion do not constitute "new" objections just because they are not a repetition of a written statement or because they helped the representative understand the written objection."
• Again, as a comment, if the applicant could reasonably (or objectively) have understood the objection raised by the Board only after the "additional comments and explanations" by the Board, Article 113(1) EPC prescribes that the applicant is given a (fair) opportunity to address the objection by submitting amended claims. 

EPO - T 2613/18

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

T 0625/21 - The Examiner uses email

Key points

•  This is an appeal against a refusal decision.
• "After reviewing the decision under appeal and the examination proceedings leading to it, the board notes that it is evident that the examiner entrusted with the examination of the application made some effort to engage in dialogue with the applicant. The examiner made use of different communication channels - written communications, emails and telephone conversations - and last but not least they offered the oral proceedings which the applicant had requested. All this can be seen from both the impugned decision and the appellant's statement setting out the grounds of appeal. The latter mentions the examiner's emails dated 10 October 2019 and 26 October 2020 which cannot be found in the public part of the file."
• "anything not in the public part of the file cannot be reviewed by the board because this part of the correspondence, and what was allegedly discussed in that context, remains unknown. The board simply has no way of forming its opinion on these aspects."
• I always thought the Board had access to the non-public part of the file. I suppose that back in the days of paper files, simply the whole folder was supplied to the Board.
• I suppose that the emails at issue are not even part of the formal non-public part of the file.
• As a separate issue, "The applicant decided not to attend the oral proceedings, arguing that an applicant should not have to attend oral proceedings just to know what the examining division's case is."
• "The board has some sympathy for this argument. Nevertheless, oral proceedings give applicants the opportunity to address not only the examiner entrusted with the examination of the application but all members of the examining division simultaneously (Article 18(2), third sentence, EPC). Therefore, the case would have been discussed with the entire examining division."
• "As explained in R 3/10 (reasons for the decision, point 2.11), the purpose of oral proceedings is to allow a party to make an oral presentation of its arguments, to allow the board (or the deciding instance) to ask questions, to allow the party to respond to those questions and to allow controversial and perhaps crucial issues to be discussed. 
• "Therefore, by choosing not to attend the oral proceedings, the applicant missed an opportunity to advance the case in a discussion with the entire examining division."
• As a comment,  G 4/92 "explicitly relates to inter partes proceedings only". (link)
• As mentioned in CLBA III.B.2.7.2: " In T 1448/09 refusal of the European patent application was based on the common general knowledge as illustrated by document D3. That stance was first taken in the oral proceedings before the examining division, which the appellant did not attend. According to G 4/92, arguments could be presented at any time, even during oral proceedings in the absence of a party, but the same did not apply to new facts forming the basis for a decision. A reference to the common general knowledge could be presented as an argument, but the existence of that knowledge was a matter of fact. If its alleged existence was disputed, the facts relevant in that regard had to be established. That meant that the party against which this knowledge was cited had to have the opportunity to dispute or accept it. In the case in hand, the appellant had neither been aware of the examining division's invocation of the common general knowledge nor of the existence of document D3 until the decision was announced. This violated the appellant's right to be heard on the relevance of document D3 and, by extension, on the existence of the invoked common general knowledge." 
• Still, there was a substantial procedural violation: "From the entire written file under scrutiny on appeal, there is no indication that the examining division carefully considered the applicant's (most) significant or central argument. In particular, there is no explanation as to why it is incorrect, not convincing or immaterial for other reasons. Instead, the examining division merely repeated its view that the feature of the last paragraph of claim 1 did not impose a restriction on the flavour additive."
• Moreover: "The examining division did not explain the facts or considerations on which it based its conclusion []. What is more, by making this statement, the examining division presented yet another conclusion that failed to consider the applicant's (most) significant or central argument. Therefore, the division failed to explain, in a logical chain, the reasons for arriving at this conclusion."

EPO T 0625/21 

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