T 0644/24 - Amendments and new grounds of opposition

Key points

• The Board, in the headnote, in translation: "If the grounds for opposition under Article 100(b) EPC and Article 100(c) EPC were not raised in the opposition proceedings and the patent proprietor does not consent to their examination in the appeal proceedings, the patent may not be examined in its entirety for insufficient disclosure and added subject-matter in the appeal proceedings if the patent is amended in the opposition or appeal proceedings, but only insofar as the amendment brings about the insufficient disclosure or added subject-matter".
• This concerns the details of G10/91 hn. 3 about new grounds of opposition in appeal. 
• As far as Art. 100(c) is concerned, the current headnote is the same as the holding of T 693/98.
• Concerning Art. 110(b), the point is obiter, it seems. Still, the point seems valid, and the Board's reasoning is interesting (very German in the degree of detail, but good).

EPO 

The link to the decision is provided after the jump.

T 1789/22 - Two opponents, one appeals, attacks submitted by the other

Key points

• Decision of 12.12.2024, written decision issued on 19.12.2025 (Board 3.3.04, no communication under Art. 15(9) RPBA visible in the online file).
• There were two opponents. Opponent 1 appeals. Opponent 2 and the proprietor do not appeal. Opponent 1 maintains only some of the attacks in their Statement of grounds. Opponent 2 is a party as of right and uses its 'reply' to the appeal to submit additional attacks.
• "The submissions of the party as of right-opponent 2 included objections under lack of novelty in view of document D27 and lack of inventive step where documents D6 and D31 were taken to represent the closest prior art. Since the opposition division took a decision on these lines of attack in favour of the respondent, an appeal should have been filed to have these findings reviewed [*], rather than merely contesting them in the reply to the statement of grounds of appeal. However, as indicated above, the appeal of the appellant did not contest the decision in these respects, therefore these objections are outside the legal and factual framework for review by the board. Their consideration is in principle not excluded but is subject to the discretion accorded to the board under Article 114(2) EPC and Articles 12 and 13 RPBA."
• The Board's exercise of its discretion is intertwined with its decision on the subsequent letter of the appellant (opponent 1) that it agreed with the attacks (objections) of opponent 2.
• " The board notes that the appellant provided no justification for not having raised these objections with the statement of grounds of appeal, and the board cannot see any either. Moreover admitting these several additional attacks would be detrimental to procedural economy and unfair for the respondent, who relied on these parts of the appealed decision not having being contested. Accordingly, the objections filed by the appellant with this letter were not admitted into the appeal proceedings. The same applies to the corresponding objections filed by the part as of right."
• * - Note that this point is a bit tricky. Had the OD revoked the patent as novel over D1 but not inventive over D2, the opponent could not have appealed on the ground of the unfavorable reasoning on novelty (the requirement of being adversely affected of Art. 107 is determined by reference to the order of the decision, not the reasons). 
• By the same token, had the proprietor appealed as well, opponent 2 as a respondent could have submitted the attacks validly in their reply to the appeal.
• 
  
• Furthermore, opponent 1 had attacked only some of the independent claims of the set of claims held allowable by the OD in its statement of grounds, but did not attack independent claim 5 in its statement of grounds.  
• The Board holds a later-filed attack against claim 5 to be inadmissible: " As set out above, the statement of grounds of appeal defines the framework of the appeal and in the present case it did not include novelty of claim 5 of the request held allowable by the opposition division (see points 2., 5. and 5.1). Accordingly, novelty of claim 1 of the main request is not open for review by the board in this appeal proceedings."
• The Board first recalled the principle of the 'extent of the opposition'. The Board then reasoned that: "2. With regard to opposition appeal proceedings, in addition the statement of grounds of appeal determines the object of the appeal proceedings and the legal and factual framework for the review of the appealed decision by the board. In other words, the statement of grounds of appeal determines the extent to which amendment or cancellation of the appealed decision is requested (see e.g. G 9/92, Reasons 1)."
• G 9/92 r.1: "...  Proceedings under the EPC in respect of European patent applications and patents are, with some exceptions, initiated by a party. The initial "request" determines the extent of the proceedings. This is known as the principle of party disposition (ne ultra petita). The present case concerns the question whether the extent of the initial appeal, i.e. the statement in the notice of appeal, affects the extent of the subsequent proceedings, and this has to be examined systematically in conjunction with procedural law under the EPC." (emphasis added)
• G 9/92 is about reformatio in peius, i.e. the subject-matter of the patent (as amended), i.e. the order of the decision and not the reasons for the decision (there is quite some case law on this point). Opponent's 1 request in its notice of appeal was to revoke the patent in its entirety (link).  The TBA acknowledges that G 9/92 does not directly support its reasoning by citing it as 'see ... G 9/92').
• The Board's reasoning seems new to me.
• I also wonder how to reconcile it with the case law that there is no concept of partial inadmissibility of an appeal in the EPC.  
• The Board's headnote 1 is as follows: "1. ... The provisions of Article 107, second sentence, EPC guarantee a non-appealing party the right to participate to pending appeal proceedings. However, they do not provide it an autonomous right to have requests which go beyond the scope of the appeal as defined by the appellant's statement of grounds of appeal, decided by the board (as a direct consequence of G 2/91, Headnote)."
• This headnote puts it too strongly, in my view.
• The case is about a non-appealing opponent, not about a proprietor submitting claim requests. Furthermore, G2/91 is about the termination of the appeal if the appellant withdraws his appeal (heandnote 1) and the refund of the appeal fee (headnote 2).
• I think the 'reply' of the non-appealing second opponent should be treated as a case amendment under Article 13(1) RPBA, similar to the case where a respondent/appellant uses his reply under Art.12(1)(c) to the appeal of the other appellant as a supplement to his own statement of grounds (treated as an appeal case amendment under Art. 13(1), see T 2701/19).
• See also T 250/20 about cross-party reliance, referring to "established case law according to which, for example, an opponent may rely on a ground of opposition invoked by other opponents either during the opposition proceedings or during any subsequent appeal proceedings". This suggests that Opponent 2 can rely on the Statement of grounds of Opponent 1 and then submit any further attacks as case amendments under Art. 13(1).
• "By not filing an appeal, a non-appealing party has not contested the findings of the opposition division, beyond the framework of the appeal filed by the appellant."
• This does not seem correct, to the extent that it suggests the opponent as a respondent cannot introduce objections against the broader claims (sought by the proprietor as appellant) that were not decided on in the impugned decision. 

EPO 

The link to the decision is provided after the jump.

T 1472/22 - Newly asserting a public prior use in appeal

Key points

• This decision was issued already in January 2025, but it still a remarkable one.
• The opponent included a new public prior use attack with the Statement of grounds.
• The Board admits it. Chiefly because it is based on a public prior use that the proprietor had submitted in another opposition case, where he was the opponent (and the opponent was the proprietor). Still, there was some delay as the public prior use was known to the opponent since 2019 and filed in the appeal only in 2022.
• The following remark is of general interest: (in translation) " the Board does not share the patent proprietor's view that the prior use should have been raised before the Opposition Division. The opponent's statement of grounds of appeal is directed against the maintained version of the patent, which is based on auxiliary request 3, which was only filed during the oral proceedings before the Opposition Division. Any findings made by the Opposition Division in the [preliminary opinion of the OD], for example, in paragraph 8.4 regarding the disclosure of document D4 (referred to therein as E4), are irrelevant in the present case for the admission of this prior use, since no auxiliary requests had yet been filed at the time of the summons; see paragraphs 3.4 and 3.5 of the statement of facts in the contested decision. Furthermore, there was no reason for the opponent to submit the prior use before the oral proceedings, since the [preliminary opinion of the OD] already considered documents E2 (D2 in the appeal proceedings) and E3 to be novelty-destroying for the granted version of the patent, see paragraphs 8.2 and 8.3 thereof (for the comparable situation of auxiliary requests, which could theoretically have been filed in their own right, see T 0141/20, guiding principle and point 5.4 of the Reasons)."
• This reasoning makes sense. But I don't know if all boards see it this way. 
• "pursuant to Article 12(4) RPBA, it is within the board's discretion whether to admit the new submission. According to the non-exhaustive list of criteria in Article 12(4), fifth sentence, RPBA, the board will consider, for example, the complexity of the amendment or the need for procedural economy when exercising its discretion. In the present case, document D12, originating from the patent proprietor, with technical drawing D7b on the second page of the document, contains a scaled technical drawing of the lock [..]; see also the patent proprietor's submissions on pages 13 and 14 of D13. In the board's view, D12 is therefore easily understandable, particularly for the patent proprietor. Furthermore, the document enables an analysis of the movements of the rotary latch and pawl when opening the lock if these components are transferred into a CAD program, for example, as in D15, and rotated around their pivot points. This allows for the derivation of force action lines for the contact force as well as the respective lever arms of the contact force relative to the pivot points of the rotary latch and pawl. Even with a certain inaccuracy in the transfer to a CAD program, this allows at least qualitative statements to be made regarding the torque that the rotary latch imparts to the pawl. Therefore, in the Board's view, document D12 concerns a feature that is essential to the outcome of the appeal proceedings."
• "The Board notes that, in the case law of the Boards of Appeal, new prior use that is only raised during the appeal proceedings is generally not admitted. However, the reason for this is, in most cases, that the prior use originates from the opponent's environment, making it practically impossible for the patent proprietor to independently examine the facts relied upon. In the present case, the Board therefore considers it an exceptional circumstance that the prior use not only originates from the patent proprietor, but that the patent proprietor itself submitted the relevant facts, even during the proceedings before the EPO. This eliminates the difficulty of assessing the evidence on the part of the patent proprietor. Nor can it invoke ignorance of unexpected facts."
• "The board concludes from all of the above that the lock disclosed in prior use D12 has all the features of claim 1 of auxiliary request 3, so that its subject-matter lacks novelty, Article 54 EPC. "
• The patent is revoked.

EPO 

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

T 2662/22 - When to present the auxiliary inventive step attack?

Key points

• If you present a novelty attack in a Notice of opposition, should you add an inventive step attack for the same document?
• "In the present case, it is not disputed that the opponent did not argue lack of inventive step starting from D3 in its opposition notice, it was only used to argue lack of novelty (cf. opposition notice, pages 4, 5 and 6). The inventive step objection was late filed in opposition. The opposition division (see its impugned decision, section 4.4) exercised its discretion under Article 114(2) EPC not to admit this objection into the proceedings."
• "Whether the objection was first made at the oral proceedings (cf. minutes point 17) or with the opponent's letter of 29 April 2022, since the latter date is well after the 9 month opposition period, in both cases the objection would be late filed."
• "In considering admittance of the late filed inventive step objection based on D3, the opposition division considered its prima facie relevance (see impugned decision, section 4.4 and minutes point 21), which is the correct principle to apply (see Guidelines for examination at the EPO, E-VI-2). That the appellant-opponent may not agree with the opposition division's conclusion does not render the principle applied by the opposition division wrong. Moreover, the matter was discussed with the parties at the oral proceedings, so they were heard. Therefore, in exercising its discretion, the opposition division appears to have applied the right principles and to have done so in a reasonable way. Therefore, the Board does not intend to overrule how the opposition division exercised its discretion."
•  The paragraph is a quote from the preliminary opinion of the Board, which was included as a ground in the Board's decision.
• " Neither in written proceedings nor at the oral proceedings did the parties comment on this part of the communication. Nor did the Board see any reason to revise its preliminary opinion. Therefore, the Board decided not to admit the objection"
• As a comment, we should perhaps not make too much out of a decision where the appellant does not contest the preliminary opinion of the Board. But to me, I think it makes sense to first await which distinguishing features the proprietor identifies for a novelty attack in their reply under Rule 79 EPC before the opponent is required to present an auxiliary inventive step attack. 
• The OD's decision is, of course, there, and it would be good to know what the current practice is of the ODs. However, the Board does not discuss the decision of the OD in great detail. 
• 
  

EPO 

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

T 1006/21 vs. T1774/21 - Late late-filed objections?

Key points

•  T 1006/21 ,  online on 12.04.2024:  Any request for remittal made by a party is not subject to the provisions of Art. 12 and 13 (r.24). Procedural requests are not amendments within the meaning of Art. 12 and 13 (r.26). Procedural requests on questions that have to be taken up ex officio may relate to remittal, as in this case, or to [a requested] referral to the Enlarged Board of Appeal (Article 112(1)(a) EPC), [or] the admissibility of the appeal (Article 110 EPC), [or to the] (non-)admission and consideration of claim requests, allegations of facts or evidence (Article 114, Rule 116(1) EPC), [or to the ] interruption of proceedings (Rule 142 EPC), exclusion of board members (Article 24(1) and (2) EPC), or the appointment of oral proceedings if expedient (Article 116(1) EPC). (r.27)

  The same applies to other procedural requests on questions that do not have to be taken up ex officio but only upon request, such as for a change of date of oral proceedings (Art.15(2)), acceleration of proceedings (Art.10(3)), objections against board members (Article 24(3) EPC) or according to Rule 106 EPC, or requests for a stay of proceedings (Rule 14 EPC) (r.28)
  None of these procedural requests are subject to the provisions of Art. 12 and 13. They can, therefore, be made at any time during the appeal proceedings and must be considered by the board, regardless of when they are made (r.29)

https://www.epo.org/en/boards-of-appeal/decisions/t211006eu1

T1774/21  online on 10.07.2024

 In the context of the RPBA 2020 the term ‘requests’ includes requests for non-admission of, for example, an objection (contrary to what is suggested in T 1006/21 […]). In particular, the term ‘requests’ is not limited to texts of patent applications or patents. If this were the case, the text of the provisions (in particular, Art.12(2), (3) and (6)) would have specified this and would not have used the general term ‘requests’.

https://www.epo.org/en/boards-of-appeal/decisions/t211774eu1

• As a comment, would a referral to the EBA be possible, or is this a priori excluded if the interpretation of the RPBA is at issue?

T 0205/22 - No power to disadmit admitted evidence

Key points

• "In view of the above considerations, the present board concludes that there is no basis for overruling a decision to admit late filed evidence by the first instance (cf. Case Law of the Boards of Appeal, 10th edition 2022, V.A.3.4.4). Moreover, since there seems to be no divergence in the position of the different boards in this respect, the present board does not see any reason to refer a question to the Enlarged Board. "
• "While decision T 2049/16 formulates the question of whether there is a discretion to overrule a decision to admit late filed evidence (Reasons 3.2), it then points out that G 7/93 concerns the overruling of a decision not to admit documents, and that the EBA did not intend to make a general statement to be applied to other situations. Indeed, this decision also contradicts the respondent's position when it concludes that overruling the admission of documents would be inconsistent with the principle of examination by the EPO of its own motion under Article 114(1) EPC. Moreover, as also pointed out in Reasons 3.2 of T 2049/16, if a document is admitted on the basis that it is considered to be prima facie relevant but it turns out that it is in fact not relevant, admitting the document would be unlikely to negatively affect proprietor's position."
• It should be noted that not giving the other party a sufficient opportunity to comment on the admitted document can be a substantial procedural violation and a reason for setting aside the appealed decision.
  
  
• " the Board would like to stress that since the opposition was rejected, there was no need for the patentee to file auxiliary requests before the opposition division, and a request filed at the beginning of the appeal proceedings cannot be rejected solely on the ground that it should have been submitted earlier (cf. T 141/20, headnote; T 1758/21,
  Reasons 7.4 and T 2202/21, Reasons 2.2.6)." 

EPO 

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

T 0602/21- Admitting a request cancelling independent claims

Key points

• "It is further noted that in the present case, the main request allowed by the opposition division contained several independent claims, namely claims 1, 2, 3, 4, 5, 6, 9 and 10. Under these circumstances, it would have been the duty of the appellant [opponent] to duly substantiate already in their statement of grounds of appeal why they considered that the decision of the opposition division was wrong that each of these independent claims met the requirements of the EPC. In that regard, admitting the appellant's objections of lack of inventive step raised against claims 1, 2 and 4 of auxiliary request 3 (which correspond to claims 1, 2 and 6 of the main request) would go against the stipulations of Article 12(3) RPBA that the appellant should present their complete case in the statement of grounds of appeal."
• The Board admits the auxiliary request limiting to three of the independent claims that was filed after the notification of the summons, i.e. under Art. 13(2) and does not admit the inventive step attacks presented in reply to it during the oral proceedings.
• The Board finds the auxiliary request to be allowable. 

EPO 

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

T 0842/22 - Not admitted ground admitted in appeal

Key points

• New grounds of opposition can only be admitted in appeal with the consent of the proprietor.
• What if the OD held a ground of opposition inadmissible?
• " Appellant 2 argued, for the first time, five days before the oral proceedings before the opposition division (with letter dated 2 July 2021), that claim 1 defined, after the amendment, a cam with [certain features]".
• "The opposition division noted that the grounds according to Article 100(c) EPC had not been raised before and that therefore the above objection introduced a fresh ground of opposition. Having found that the above objection was not prima facie relevant, the opposition division decided not to admit it into opposition proceedings."
• "In the present case, however, the Board exceptionally follows the arguments of [opponent] appellant 2, requesting to set aside the discretionary decision of the opposition division and to admit its objection of added subject-matter, for the following reasons."
• " The Board concurs with appellant 2 that clarity is not the correct basis for assessing added subject-matter and further that the above interpretation is not reasonable, as it goes beyond the literal meaning of the contentious feature, and against the general principles set out in the case law (CLB, II.A.6.1), according to which the wording of a claim should be read and interpreted on its own merits and given its broadest technically sensible meaning."
• "In view of the above, the Board concludes that the opposition division, when taking the discretionary decision not to admit the late-filed objection of added subject-matter, did not apply the criterion of prima facie relevance in a reasonable way. Hence, the late-filed ground of opposition based on Article 100(c) EPC was wrongly not admitted into the proceedings by the opposition division and is to be considered as forming part of the legal and factual framework of the appeal proceedings."
• The case is not remitted.
•  "the main request cannot be allowed"
• The patent is maintained based on an auxiliary request. 
• The point is somewhat controversial; see CLBA  C.A.3.4.5. The approach of the present decision seems correct to me. 

EPO 

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

T 1569/19 - From novelty to inventive step, late

Key points

• " The opponent had always argued during the opposition procedure that D6 disclosed all the features of claim 1 of the patent", in addition to inventive step attacks starting from other documents. 
• " In appeal, [the opponent] presented a new [inventive step] objection based on the fact that D6 did not disclose feature [1.3](c)."
• " The board takes the view that the content of the disclosure of D6 (or any prior art document in general) is generally to be considered a fact. D6 as a prior art document constitutes evidence but which parts of D6 disclose which features of claim 1 as granted constitute facts (see e.g. T 1914/12, Reasons 7.1 and in particular 7.1.4, T 603/14, Reasons 7.3, T 482/18, Reasons 1.2.5, also referring to T 1914/12)." 
•  " This [that D6 did not disclose feature [1.3](c)] is a new fact and not merely a new argument. A new argument would relate e.g. to the technical effects provided by this distinguishing feature, whether the skilled person would consider other documents, if it would be obvious to combine them with D6, etc. All these arguments would, however, be based on the new fact regarding the disclosure of D6." 
• The fact/argument distinction is a rather subtle one. The distinction is, however, important because new arguments that do not involve new facts might not be covered by Art. 114(2) EPC. The decision treats the admissibility under Art. 12(4) RPBA 2007, and "the board agrees with the opponent that Article 12(4) RPBA 2007 does not relate to arguments." 
• "Summarising, the board considers that the opponent's objection of lack of inventive step starting from D6 relates to new facts presented for the first time in appeal that could and should have been presented in the first instance opposition proceedings. Exercising the power under Article 12(4) RPBA 2007, the board does not admit this objection into the appeal proceedings." 
• As a comment, the appeal decision also notes that: "the proprietor pointed out that the opponent had agreed with the opposition division that D6 was not suitable as closest state of the art (see the middle of page 13 of the reasons for the impugned decision: "The opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). 
• As a comment, it is unclear to me how this - D6 does not disclose feature 1.3.c - could be a new fact presented for the first time in appeal, given the remark in the minutes that "the opponent agreed that D6 cannot be seen as closest prior art since it does not disclose (at least) the simultaneity in step (1.3)(c)"). "
• The impugned decision and the minutes are a part of the basis of the appeal under Art.12(1)(a) RPBA 2020.
• 
  

EPO 

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

T 1362/20 - The request filed at 19:41 before the OD

Key points

•  The OD decided to maintain the patent in amended form based on the auxiliary request filed on 19:41. The opponent appeals and presents new clarity objections, which are not inadmissible under G 3/14. The Board has to decide whether to admit them under Art. 12(4) RPBA. The patentee argues that the objections could have been submitted during the oral proceedings before the OD.
• The Board in translation: "During the oral proceedings before the opposition division, the patent proprietor did not defend any of the auxiliary requests filed in the written procedure. After the main request - as already explained in the preliminary opinion of the opposition division - had fallen because of an inadmissible intermediate generalization, the patent proprietor filed new auxiliary requests. Auxiliary requests 1a, 1b and 2a and the auxiliary request (19:41) [which contained, for the first time, the amendment objected to as rendering the claims unclear] were not filed before the opposition division until the afternoon of the oral proceedings and each contained features taken from the description. The complainant had about half an hour to deal with the newly submitted applications."
• "The Board is of the opinion that it would have been possible to identify a lack of clarity within this time frame. The [opponent] could therefore have raised the objection. However, in view of the tight time frame, this could not be demanded of her, so that the objection should not have been raised within the meaning of Article 12(6), second sentence, RPBA 2020 [i.e. the opponent was not obliged to raise the objection]. Since the amendments were taken from the description and were admitted into the opposition proceedings at a very late point in time, it is fair to allow new objections to the amended claims if these objections are raised at the first opportunity in the appeal proceedings."
• Moreover, the objection is highly relevant (note: the Board does not say prima facie highly relevant, which seems important and is consistent with the wording of Art.12(4). The objection is admitted.
• The claim is found to be unclear.
• All other auxiliary requests contain the feature.
• The patent is revoked. 

EPO 

The link to the decision is provided after the jump,

T 1654/19 - The CPA should ideally

Key points

•  The Board, on the selection of the closest prior art: "t is established case law that the closest prior art should ideally be a document which mentions the purpose or objective indicated in the [patent under examination] as a goal worth achieving (Case Law, supra, I.D.3.2). The aim thereof is that the assessment process should be based on a situation that is as close as possible to that faced in reality by the inventor, avoiding ex post facto considerations."
  
  
• On the procedure: two opponents appealed. One later withdrew the appeal. The other opponent relies on the former appellant's earlier arguments in the appeal. 
• The Board: "The appellant and the other party [the other opponent] submitted that the claimed composition lacks an inventive step over D1, which was contested by the respondent.  From a procedural point of view, the respondent submitted during the oral proceedings that only opponent 1, as a former appellant and now other party, filed a reasoned objection starting from D1 as the closest prior art. Opponent 2, as the only remaining appellant, would have merely referred in the said letter ... to the submissions made in the statements of grounds of appeal of opponent 1, i.e. to the submissions of the former appellant and now other party. The respondent [patentee] considers that the objection of inventive step based on document D1 as the closest prior art is therefore no longer part of the appeal proceedings. This is not convincing. As recalled in decision T 1820/18 (point 4 of the Reasons), it is not possible to split the appeal proceedings into different procedures, each dealing separately with the grounds for opposition and the facts, evidence and arguments presented by the individual opponents concerned (T 790/03, point 2.1 of the Reasons). Therefore, each opponent can rely on any grounds, facts, evidence and arguments duly submitted by other opponents (see also T 620/99, point 1 of the Reasons; T 1657/14, point 2.4.3 of the Reasons)."

EPO 

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

T 0526/21 - Agreeing with choice CPA is abandoning other attacks

Key points

•  " The Board observes that the [inventive step] attacks based on D24 and D34 were raised in writing during the opposition proceedings in reply to the preliminary opinion of the opposition division []. However, the minutes of the opposition oral proceedings (see point 19.) indicate that "The three opponents agreed that D9 was the closest prior art. The proprietor argued that example 2 of D2 would be a better closest prior art [...]". According to the minutes, the choice between D2 and D9 as closest prior art was then discussed but no other document was considered by any opponent. None of the appellants requested a correction of the minutes. In line with T 2730/16, the Board considers that the attacks starting from D24 and D34 were not actively maintained."
• "It follows that these attacks do not form part of the appeal proceedings according to Article 12(2) RPBA 2020. Their admittance into the appeal proceedings is thus at the discretion of the Board according to Article 12(4) RPBA 2020."
• "The implicit abandonment of the attacks based on D24 and D34 by appellant 1 prevented the decision from being based thereupon. A re-introduction of these attacks would be against the purpose of the appeal proceedings to constitute a judicial review of the appealed decision and against procedural economy."
• Note, the Board here seems to apply Art. 12(6).
• 
  

EPO 

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

T 2643/16 - Sofosbuvir

Key points

• This decision is about a blockbuster medicament and involves plausibility, transfer of priority, and diastereomers. What's not to like about it? Perhaps that the Board stays the procedure until the Enlarged Board decides on the pending referrals.
• 
  
• "The objection [under Art. 123(2)] was primarily raised against [dependent] claims 2 and 3, which single out the diastereomers of the compound in claim 1 having (S)- or (R)-configuration at the phosphorous atom."
• "The basis for claims 2 and 3 in the application as filed given by the appellant-patent proprietor []  is the following: (i) compound IX-25-2 (page 254) in light of the explanation of Tables II-1 to XXXII-50 given on page 99, line 17 to page 100, line 5 and the passage on page 20, lines 8 to 16; (ii) Example 25 (page 683) [!] in light of the passage on page 20, lines 8 to 16"
• The PCT application is 751 pages. The file is slightly above 19k pages now.
• "Regarding (i), compound IX-25-2 is disclosed in Table IX-25. It has the chemical structure of the compounds of claims 2 and 3 but does not specify the configuration of two chiral centres, namely the phosphorous atom and the chiral carbon atom of the amino acid moiety."
• "As to the configuration of the phosphorous atom, the passage on page 20, lines 8 to 12 discloses that the claimed compounds "are racemic because of the chirality at phosphorous", the phosphorous atom being "R" or "S", and that "the use of the racemate and/or the resolved enantiomers" is contemplated."
• "The board agrees with the appellant-opponents and respondent-opponents that these general statements on pages 20, 99 and 100 are merely a conceptual description of the diastereomers encompassed by structures II to XXXII owing to the chirality at the phosphorous atom. The reference to the generic structures rather than the specific compounds renders it ambiguous whether the general statements apply to each table and compound disclosed below structures II to XXXII. But more importantly, the general description of the chirality at the phosphorous atom does not constitute a direct and unambiguous individualisation of each of the two diastereomers of each of the thousands of compounds disclosed in Tables II-1 to XXXII-50 having the preferred (S)-configuration at the amino acid moiety."
• The claims are found to lack basis in the application as filed.
  
  
• Turning to AR-1, being the AR held allowable by the OD, claims 2 and 3 are cancelled.
• Some but not all of the opponents appealed. " Therefore, the principle of prohibition of reformatio in peius precludes the consideration by the board of any objection against this request raised exclusively by the parties as of right (respondent-opponents). "
• By way of comment, see T 0920/20: "The Board cannot derive any restriction from Article 12(4) RPBA that each party may only refer to those matters of the preliminary proceedings in the appeal which it itself has introduced there in a permissible manner. It therefore seems legitimate for the appellant to also refer to lines of attack introduced by other opponents in the opposition proceedings." 
• Reformatio in peius deals with subject-matter, not with individual attacks or objections.
• However, perhaps a principle of estoppel can be identified.  
  
  
• "It was a matter of dispute between the parties whether the applicant, when filing the application on which the patent is based, was entitled to claim priority from the earlier applications D1 and D2 and, in this context, whether the applicant was the successor in title of the applicants that filed priority applications D1 and D2."
• "The outcome of referral cases G 1/22 and G 2/22 is therefore relevant for the board's decision on the validity of the priorities claimed in the case in hand. For this reason, in line with the appellant-patent proprietor's request and in the absence of any objection against a possible stay of the proceedings, the board decided not to take a decision on the issue of entitlement to priority but to await the outcome of these referral cases."
• "The appellant-opponents cited documents D33, D35, D12, D10, D9, D8, D7, D6 and D4 as starting points for the assessment of inventive step."
• "The patent (paragraph [0001]) is concerned with the preparation of nucleoside prodrugs that inhibit [hepatitis C virus (HCV)] replication and their use for treating HCV infection."
• "The appellant-patent proprietor argued that this starting point was not the closest prior art and that its choice involved hindsight. However, in accordance with the established case law of the boards, a conclusion that the subject-matter claimed is inventive can only be reached after assessing this requirement starting from all the possible pieces of closest prior art. Therefore, the appellant cannot argue against assessing inventive step starting from [compound] RO2433 [in D33]."
• "The compound of claim 1 differs from RO2433 by its phosphoramidate moiety."
• "According to document D10, cited in paragraph [0018] of the patent in suit, RO2433 is not active against HCV []. In contrast, the patent shows in Example 82 (Table, Example 25) that the compound of claim 1 inhibits in-cell HCV replication at sub-micromolar concentrations"
• "Based on this technical effect, the objective technical problem is the provision of an effective compound for the treatment of HCV infection."
• "Starting from compound RO2433 in D33 and faced with the problem of finding an effective compound for treating HCV infection, the skilled person had no motivation to turn to D7 because they did not know that RO2433 was inactive against HCV. The skilled person was even less likely to know that the reasons for the lack of activity of RO2433 were those intended to be overcome by the authors of D7, namely poor membrane permeation and/or a poor phosphorylation rate by cell enzymes. Therefore, the combination of D33 with D7 is based on hindsight."
• The Board then als considers  D12 as the closest prior art, as well as D10, and D7 (there were multiple opponents-appellants). None of the attacks is successful.
• " For the above reasons, the board concludes that the compound of claim 1 is inventive over the cited prior art available to the public before the earliest priority date."
• "The issue of whether post-published evidence may be taken into account may become relevant for assessing the inventive-step objections involving [remaining documents] D6, D8 and D9. Therefore, the outcome of the presently pending referral case G 2/21 on plausibility may also be relevant."
  
  "The case has come to a point at which a stay of proceedings is considered required. At the date of the oral proceedings, no information existed on when a decision would be handed down in the three pending referral cases G 2/21, G 1/22 and G 2/22. This, together with the fact that one of the five board members will retire on 1 March 2023, led the board to decide, as announced at the oral proceedings, to issue an interlocutory decision on the issues for which the parties could provide their comments at the oral proceedings and for which the board closed the debate."
   

EPO 

The link to the decision is provided after the jump

T 0652/20 - Modifed novelty attack not admitted

Key points

• The opponent cited Example 12 of document E3 as novelty destroying before the OD. In appeal, the opponent argues that Example 12 of document E3 is novelty destroying. The Board does not admit the attack.
• " In its statement setting out the grounds of appeal, the appellant - opponent raised a lack of novelty objection versus the composition of example 12 of E3 based on the argument that chitin contained therein would represent a sebum-absorbing powder having a sebum uptake of 35 mL/100 g or more [as specified in the claim]" 
• " During the first instance proceedings the [opponent] relied exclusively on fibroin as sebum-absorbing powder in its objection of lack of novelty over example 12 of E3. Fibroin was consequently the sole component considered as potential sebum-absorbing agent in the impugned decision. Hence, the lack of novelty reasoning of the [opponent] based on chitin as sebum-absorbing powder was provided for the first time in the entire proceedings with its statement setting out the grounds of appeal." 
• " During the oral proceedings, the [opponent] explained that this argument was not new. According to the [opponent], its objection of lack of novelty raised during the first instance proceedings concerned the whole composite material containing fibroin and chitin. These two components only differed in the mechanism by which sebum uptake occurred. Merely a new item of evidence substantiating the achievement of the claimed sebum-uptake parameter (A9) had been provided in reply to the decision of the opposition division pointing out the lack of evidence therefore" .
• The Board does not admit the modified attack under Art. 12(4) RPBA.
• " The new lack of novelty reasoning of the [opponent] raises an entirely new discussion regarding the physico-chemical properties of chitin. It does therefore not address the reasoning of the first instance decision as such but merely the conclusion thereof, namely that the composition of example 12 of E3 did not anticipate the subject-matter of granted claim 1. This opinion of the opposition division had furthermore already been expressed in the annex to the summons to oral proceedings in opposition.
• Moreover this new discussion regarding the physico-chemical properties of chitin would introduce complexity, in particular regarding the question of whether chitin has indeed a sebum-uptake according to claim 1, and would hence be against procedural economy." 
• The new documents supporting the attack are not admitted either.
• 
  

EPO 

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

T 2179/16 - Waiver of attack

Key points

•  The opponent argues that the claim at issue is not inventive over D10. The Board decides that the claim is inventive over D10.
• With the SoG, the opponent had also submitted an attack using D2 as the closest prior art.
• Admissibility of the attack is to be decided under Article 12(4) RPBA 2007.
• The attack "had initially been submitted with the notice of opposition at the outset of opposition proceedings. At that point in time, those objections were directed against the claims of the granted patent, which were the basis for the main request before the opposition division."
• According to Article 12(4) RPBA 2007, the board has the discretion to hold inadmissible inter alia facts which could have been presented in opposition proceedings. It is established case law that this provision also applies to facts (attacks) which were submitted and subsequently withdrawn during the first instance proceedings. Article 12(6)(s.2) RPBA 2020 uses "were no longer maintained".
• The AR was filed shortly before the hearing before the OD. The opponent did not comment in writing on it. 
• Inventive step was discussed during the oral proceedings before the OD. "Thus, at the outset of the discussion on inventive step, the parties were not requested to limit their oral submissions on inventive step in any way, but were simply requested to provide their arguments."
• "There then ensued a discussion starting only from D10 as closest prior art."
  
• "Specifically, the minutes (page 11, "12:30") state the following: "The parties having indicated that they have nothing more to add, the Chairman announces a break of 15 minutes to deliberate on the question of inventive step". Hence, the chair of the opposition division, having opened the discussion in relation to inventive step and having heard arguments from the appellant only in relation to D10 as closest prior art, subsequently confirmed with the parties whether there was anything further to add to their submissions. In the absence of any further submissions, it can only have been concluded that the parties had nothing to add. This in turn can only mean that the further objections that had previously been raised against the then main request, were not pursued or raised against the then first auxiliary request."
• It seems that the Board here identifies a waiver of the attack. Note, this waiver is based on an action of the opponent, namely, indicating that they had nothing more to add, in combination with the attack being on file. However, if the auxiliary request had significant claim amendments (for inventive step) compared to the claims as granted, it may also be a case of forfeiture, in the sense that the opponent failed to present the attack, instead of presenting the attack and then abandoning it.
• After the break, "oral proceedings were resumed, and the chair announced the conclusion that the first auxiliary request met the requirements of Article 56 EPC. At this point in the oral proceedings, it would still not have been too late for the appellant to have raised the further objections had it so desired, or at the very least, to have enquired with the opposition division as to whether said further objections had been taken into account in reaching its conclusion. However, the appellant remained silent."
• Practice point: if a conclusion is announced, the debate can be reopened. If a decision is announced, not. 
• "In view of the above, there can be no doubt that the further objections were not pursued or raised against the then first auxiliary request during the opposition proceedings."
• "By not pursuing or raising these objections before the opposition division and introducing them for the first time before the board, the appellant effectively avoided a decision by the opposition division on the merits of these objections. Their admittance would therefore oblige the board to decide for the first time on their relevance."
• As a comment, Art. 12(4) RPBA  20007 speaks only of the power of the Board to hold such attacks inadmissible. Article 12(6)(s.2) RPBA 2020 likewise provides for an exception (i.e. admissibility) "unless the circumstances of the appeal case justify their admittance". For this exercise of discretion, it may matter whether the attack was waived or forfeited before the OD (cf. USA law, see here).
• The case is similar to T 1958/19, also in the outcome. 
• See, however, also R 5/19, r.3.6, in translation: "The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part." 

EPO 

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

T 0629/19 - Allegedly forced by the OD

Key points

•  "According to the minutes of the oral proceedings before the Opposition Division [] the opponent withdrew a previously raised objection of lack of inventive step in view of the combination of D3a and D26. [...] "
• "The opponent's argument that it was forced by the Opposition Division to withdraw the objection is an unsubstantiated assertion. The opponent could and should have maintained the objection if it had wished to obtain an appealable decision on the matter. For these reasons, in accordance with Article 12(4) RPBA 2007, the Board does not admit the objection on the basis of D3a in combination with D26 into the appeal proceedings."

EPO 

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

T 2964/18 - An illustrative example

Key points

•  In this post, I will walk through the decision to show how admissibility issues affect the outcome. The Board decides on 6 admissibility issues. 
• For the main request, the Board first decides on claim interpretation.
• The OD decided to maintain the patent in amended form. The opponent appeals. The Board then finds claim 1 to be not novel over D17 (claims as maintained by OD).
• AR-1 filed with the appeal reply brief of respondent/patentee is not admitted. This request was filed as AR-3 before the OD; the OD did not arrive at that request.
• "The board notes that the mere fact that auxiliary request 1 was formally filed during the opposition proceedings does not render it automatically part of the appeal case since its admittance had not been examined by the opposition division (T 0319/18, reasons, point 2.2)." 
• The Board decides that the request was not substantiated:  "The very general statement on page 10 of the reply to the appeal expressing that the auxiliary requests aimed to "further distance the claimed subject matter from the cited prior art in order to address allegations of lack of novelty and lack of inventive step" cannot be seen as an explanation of the technical significance of the amendment carried out in claim 1 of auxiliary request 1. Neither the board nor the appellant are put in a position to understand why the feature added to claim 1 would overcome the objections raised against claim 1 of the main request. Thus, auxiliary request 1 has not been substantiated." 
• " The fact that the appellant had not raised any objection against the (not yet filed) auxiliary requests has no bearing on this requirement. Thus, the statement on page 10 of the reply referred to above does not comply with the requirement for the respondent to present its complete case." 
• " Indeed, it is not immediately apparent which technical contribution the feature added to claim 1 of auxiliary request 1 would have brought over, inter alia, the disclosure of document D17. Requests which are not self-explanatory are considered to be submitted only on the date of their substantiation (see T 0217/10, reasons, point 5)." 
• The request was not substantiated and is not admitted.
• In AR-2, the Board finds use claim 11 to lack an inventive step. " there was no need for the board to take a decision on the admittance of this novelty objection of the appellant."  
• Requests 2A and 2B, filed after summons for oral proceedings in appeal, are not admitted.
• " The respondent argued that the amendments to the main request in auxiliary requests 2a and 2b consisted only in the deletion of claims." 
• " the deletion of both independent claims 1 and 12 of the main request did change the respondent's case to such an extent that new issues had to be discussed which the opponent could not be expected to be familiar with. It is not the task of an opponent to speculate about what amendments a patentee might make at a very late stage of the proceedings and to prepare pre-emptively for all of them (T 0248/13, reasons, point 4.5).' 
• " the board is of the view that the deletion of claims inevitably results in an amendment of the respondent's case. In fact, this deletion implies that it is requested that the patent be maintained in a form different than previously requested, with legal consequences for the patent's validity and scope. The board cannot see how this deletion could not be regarded as an amendment of the requests filed at the outset of the appeal proceedings. In the board's view, the respondent's case is amended if the claims are changed; it is not necessary that in consequence of these changes also the subject of the proceedings is changed. If the amendment of the claims does not lead to a different discussion on the merits, this will be a circumstance which the competent board may consider when, inter alia, exercising the discretion under Article 13(2) RPBA 2020.' 
• Turning to AR-3, the patentee objects to the admissibility of the attack based on D7. However, the attack was included on page 36 of the Statement of grounds and is hence admissible.
• AR-3 is found to lack an inventive step.
• AR-4 is admitted. No substantiation was required for the claim amendments involving deleting claims.
• The appellant had raised inventive step objections to the corresponding claims in the SoG, based on newly filed documents D25 and A027. However, these documents are not admitted.
• " for the reasons stated above, D25 and A027, and any objections based on them, have not been admitted into the proceedings. It follows that all objections based on these documents, inter alia, the above-mentioned inventive-step objections against claim 11 of auxiliary request 4, must remain unconsidered."
• The new inventive step objection, raised during the oral proceedings, is not admitted.
• " the board holds that in the current case, the number of auxiliary requests (17) filed with the reply to the appeal is not excessive, especially in view of the numerous inventive-step objections raised by the appellant in the statement of grounds of appeal. In fact, all D25, A027, D2, D7, D11, D12 and D19 had been indicated by the appellant as documents possibly representing the closest prior art for the claimed subject-matter. [] As a consequence, the board concludes that no exceptional circumstances exist which would justify raising the above-mentioned inventive-step objections only at the oral proceedings. " 
• AR-4 is found to be sufficiently disclosed. " None of the appellant's objections against the claims of auxiliary request 4 is admissible and convincing."
• The case is remitted with an order to maintain in amended form based on AR-4.

EPO 

The link to the decision is provided after the jump.

T 1771/17 - New request, no new attack

Key points

• AR-2B is filed in this opposition appeal after the summons and in reply to the Board's preliminary opinion. The Board raised an Art. 123(2) objection against AR-2A in the preliminary opinion. That objection was new in the appeal (it was not relevant that the same objection was mentioned in the OD's preliminary opinion because the OD's decision did not reflect the objection). 
• The opponent raises a novelty objection against claim 1 of AR-2B based on D5. The claims of the main request and AR-1 were found to be not novel over D5 by the Board. The Board does not admit the novelty attack against AR-2B.
• The amendment of AR-2B compared to AR-2A was only small. "It follows that any novelty objection raised against claim 1 of auxiliary request 2B would apply equally to claim 1 of auxiliary request 2A.
• The [opponent] appellant, which in the written procedure did not raise any objection against auxiliary request 2A (or against the other auxiliary requests on file), did not provide any cogent reasons why the novelty objection raised against auxiliary request 2B had not been raised earlier against auxiliary request 2A."
• Therefore the request is not admitted.

T 1771/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t171771eu1.html

Contrary to the respondent's argument, the subject-matter of claim 1 of the second auxiliary request is therefore not directly and unambiguously derivable from the original disclosure, contrary to the requirements of Article 123(2) EPC.

4.2 Since claim 1 of auxiliary request 2A uses the same combination of articles, the objection also applies to this request.

5. Auxiliary request 2B

5.1 Admittance of the request

Auxiliary request 2B was filed after the summons had been notified and in reaction to the Board's communication indicating its preliminary opinion that the expression "an inner surface of the arm" in the second auxiliary request appeared to be in breach of Article 123(2) EPC. The admission of this request into the proceedings is therefore subject of Article 13(2) RPBA 2020.

T 2730/16 - Losing inventive step attack

 Key points

• This case provides a stern warning in my view regarding the admissibility of inventive step attacks in opposition appeal, and in particular the risk of losing inventive step attacks in the course of the first instance opposition proceedings in cases wherein the opposition division aims for first selecting one (and only one) closest prior art document and then discussing inventive step.
• “During the written opposition proceedings, the appellant [opponent] initially argued on the basis of D1, D2 or D3 as the closest prior art. [The] opposition division took the preliminary view that D2 could not constitute the closest prior art. In its subsequent letter in response to the summons, the [opponent] put forward inventive-step objections based on D1 and D3 only. Then, at the oral proceedings before the opposition division, the appellant agreed to D1 being the closest prior art - see minutes page 2 - and apparently did not put forward inventive-step objections based on D2 or D3. Consequently, the decision under appeal [] only discusses the objection based on D1, but not those based on D2 or D3.”
• “The course of the proceedings described above shows that the appellant did not actively maintain its objection based on D2 as the closest prior art during the oral proceedings before the opposition division and that it did indeed abandon it, thereby preventing it from being discussed in the decision under appeal. However, in its statement of grounds of appeal, the appellant again put forward an objection based on D2 as the closest prior art.”
• The inventive step attack based on D2 is not admitted under Art.12(4) RPBA 2007. 
• I doubt if Art.12(4) RPBA 2007 provides legal basis for doing so but Art. 12(4) RPBA 2020 seems to support such an approach.
• In appeal, the opponent/appellant argued " that it had not actively withdrawn or abandoned the inventive-step attack starting from D2 as the closest prior art in the opposition proceedings".
• The  Board: “ It may be that the appellant had not withdrawn its inventive-step objection based on D2 verbatim during the opposition proceedings; however, as explained above, the course of the opposition proceedings and the decision under appeal show that such a withdrawal had occurred (at least) implicitly. In this connection, it is also noted that the appellant did not at any time request a correction of the minutes, nor did it claim that the decision under appeal was erroneous in that it did not deal with the appellant's objection based on D2.”
• I note that the Chair was M. O. Müller.

Crystalline forms

• “The subject-matter of claim 1, i.e. the SC-3 form, differs from amorphous dapagliflozin [of D1] in that it is a crystalline form further comprising (S)-PG and water.”
• “it has to be concluded that the SC-3 form has a higher stability, i.e. a lower hygroscopicity, than amorphous dapagliflozin.”
• The Board finds the crystalline form to be inventive. In particular D4 would not make the solution obvious. “ the skilled person would have considered the effect suggested by D4, namely the universal decrease in hygroscopicity, to be a mere allegation. Given the generally recognised high unpredictability of solvate properties (see above), the skilled person would not have had a reasonable expectation of obtaining a less hygroscopic form of dapagliflozin.”

T 2730/16

https://www.epo.org/law-practice/case-law-appeals/recent/t162730eu1.html

4. Closest prior art

4.1 The appellant considered both D1 and D2 to be suitable as the closest prior art.

4.2 D2 as the closest prior art

During the written opposition proceedings, the appellant initially argued on the basis of D1, D2 or D3 as the closest prior art. In the annex to the summons to oral proceedings (page 11, penultimate paragraph), the opposition division took the preliminary view that D2 could not constitute the closest prior art. In its subsequent letter in response to the summons, the appellant put forward inventive-step objections based on D1 and D3 only. Then, at the oral proceedings before the opposition division, the appellant agreed to D1 being the closest prior art - see minutes page 2 - and apparently did not put forward inventive-step objections based on D2 or D3. Consequently, the decision under appeal (page 11 f., point 4) only discusses the objection based on D1, but not those based on D2 or D3.

The course of the proceedings described above shows that the appellant did not actively maintain its objection based on D2 as the closest prior art during the oral proceedings before the opposition division and that it did indeed abandon it, thereby preventing it from being discussed in the decision under appeal. However, in its statement of grounds of appeal, the appellant again put forward an objection based on D2 as the closest prior art.

In its communication pursuant to Article 15(1) RPBA 2020 the board expressed its preliminary view that this objection should not be admitted into the appeal proceedings pursuant to Article 25(2) RPBA 2020 in conjunction with Article 12(4) RPBA 2007 because, inter alia, the appeal proceedings were judicial in nature, meaning that the decision of a board of appeal should in principle be based on the substance of the dispute before the department of first instance; see T 724/08 (point 3 of the Reasons) and Article 25(1) RPBA 2020 in conjunction with Article 12(2) RPBA 2020.

T 0205/17 - Improving mental capacity of aged canine pets

Key points

• In this opposition appeal, the question is whether the following claim wording is a proper second medical use in the sense of Art. 54(5) EPC.
• Claim 1 at issue: “An antioxidant for use in inhibiting the deterioration of the mental capacity of an aged companion pet ... ”
• The Board finds that this is a medical use.
• “As decided by the board in T 81/84 (in particular Reasons 3), the concept of therapy should not be construed narrowly. The term "therapy" covers "any treatment which is designed to cure, alleviate, remove or lessen the symptoms of, or prevent or reduce the possibility of contracting any disorder or malfunction of the human or animal body" (see T 24/91, Reasons 2.7).”
• “Although ageing as such is not a disease, the treatment or prevention of symptoms which may, but do not necessarily, manifest themselves during the ageing process is a therapeutic intervention. Thus, the board does not accept the appellant's argument that the principles outlined in T 81/84 and T 24/91 do not apply to the case in hand.”
• As to sufficiency: “The tests described in the patent show that aged beagle dogs fed with a diet enriched with the four claimed antioxidants ... scored better in learning and discrimination tests than aged beagle dogs fed with a comparative diet”
  
  
• There is also an attack based on invalid priority due to alleged lack of assignment of the priority right from the inventors/applicants of the four priority applications (US provisional applications) to the PCT applicant. 
• However, the attack is not admitted. “there was no reason to raise new objections relating to P1, P2 and P4 [three of the four priority applications] on appeal. The same applies to [the opponent's] new objection [...] that P3 does not qualify as the first invention under Article 87 EPC. As admitting these issues would have been detrimental to procedural economy, D43 [document with an extract from USPTO public PAIR about assignments] and the aforementioned new objections are not admitted into the proceedings (Article 13(1) RPBA 2020).”
• The claims are found to be novel and inventive.

T 0205/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t170205eu1.html

Reasons for the Decision

The second auxiliary request

The second auxiliary request is the only request relevant for the present decision.

1. Article 12(4) RPBA 2007, Rule 80 EPC, no reformatio in peius

1.1 The second auxiliary request is a revised version of the second auxiliary request filed on 12 February 2016 during the proceedings before the opposition division. It contains essentially the same amendments made to the claims of the main request to address the objections raised during the oral proceedings before the opposition division. The filing of this request with the statement setting out the grounds of appeal, thus at the earliest stage of the appeal proceedings, is therefore justified and does not raise any new unexpected issues, so there is no reason to hold this request inadmissible pursuant to Article 12(4) RPBA 2007.