R 0002/25 - Length of procedure

Key points

• This decision dismissing a petition for review was taken by a three-member panel during oral proceedings held on 29.09.2025.  The decision was issued in writing on 10.02.2026.
• There is no public or official target for how long decision writing in R cases should take.  Given that in three-member panel decisions, the decision is to unanimously reject the petition as being clearly unallowable and/or clearly inadmissible, the writing of the decision should not be very difficult - it can't be a borderline case. Given the President of the BoA being the Chair in this case, and considering the legislative purpose of  Rule 102 EPC - see especially Rule 102(1) EPC, I'm still surprised it took more than three months. 
• " The petition for review concerns decision T 0314/20 ... dated 16 November 2023 (the decision under review). The decision was notified on 20 December 2024."
• It was Board 3.3.04 that needed more than a year to write the decision. This is, of course, well beyond the period of three months specified in Art 15(9). It also caused a significant delay in the petition for review procedure by more than a year. 
• One of the parties had filed a request for acceleration of the appeal proceedings after the oral proceedings and after the oral decision had been taken. The TBA denied the request and replied that "In light of the above, the Board will issue the written reasons for its decision at a time that is consistent with its members' workload, and in any event not before March 202[4]." Of course, the Board needed until December 2024.
• If we infer from this remark that the delay was not due to, e.g., a Board member's illness, but to 'workload', we may observe a broader 'management' issue under Board 3.3.04 (at that time).  
• I'm not sure whether Board 3.3.04 currently better meets the target of Art. 15(9) RPBA.
• To be clear, I think it is also the responsibility of the Board of Appeals Unit's management to monitor whether any TBA is overloaded or experiencing exceptional circumstances (e.g., board members being unavailable due to health reasons).
• The opposition was filed in 2017. The entry into the EP phase was in 2009.

EPO 

The link to the decision is provided after the jump.

T 1601/22 - More than a year for the written decision

Key points

• This decision (by Board 3.3.04) was taken during oral proceedings on 10.10.2024. The written decision was issued on 23.12.2025. Two communications under Art. 15(9) RPBA were issued, in January and July 2025, indicating ‘the current workload’ as the reason for the delay in the issue of the written decision.
• • Hence, Article 15(9) RPBA was complied with, so we can’t complain about that. Whether taking more than a year to write the decision is sound caseload management is not something for me to speculate about. But it is remarkable that the Board chose to delay this decision for so long.
• “According to claim 1, IL-2, which may be either human IL-2 or aldesleukin, is the active agent responsible for the therapeutic effect of treating systemic lupus erythematosus in a human subject.” Claim 1 also specifies  “to be administered at a dose of between 1 MIU/day and 3 MIU/day”.
• "D5 [a patent application] discloses two case studies reporting a therapeutic effect of IL-2 administered intravenously at a dose of "500 U" for 14 days in the treatment of SLE"
• " In view of the early filing date in 1987 [of D5], it cannot be confirmed that the doses disclosed in D5 were established according to the WHO standard for IU."
• " The subject-matter of claim 1 differs from the disclosure in document D5 in the dosage of between 1 and 3 MIU/day of IL-2, which is not derivable from D5."
•   The claimed dosage range of between 1 and 3 MIU/day provides dosages below 3 MIU/day. This range is not selected arbitrarily, because the administration of higher IL-2 doses (not excluded by the teaching of D5) also stimulates Teffs, which is an undesirable effect"
•  "While D5 provides isolated case studies of the treatment of two patients having SLE with IL-2, these do not prove statistical significance, and furthermore, the dosage used is not apparent from the information provided in D5.
• Moreover, D5 does not provide any rationale that might guide the person skilled in the art in selecting a suitable dosage. The general range of 35 to 2000 units proposed in D5 (column 6, lines 40 to 56) is very broad. The use of un-standardised "units" and the vague description of the dosage regimen applied in the reported clinical cases does not permit any conclusions with regard to the dosage levels proposed, or the actual dosages used in the clinical cases."
• The Board considers the claim to be allowable.
• See also T1108/22 - 3.3.04 - 18.11.2024 - 22.12.2025 (no Art. 15(9) communication visible) - 9 opponents, case remitted to OD for further prosecution (so the delay in the written decision actually matters for the actual decision on the allowability of the claims!).
• See also T 1048/21, 10.10.2024 - 22.12.2025 - 3.3.04.

EPO 

The link to the decision is provided after the jump.

T 0364/24 - A relatively fast appeal case

Key points

• "the skilled person, starting from the file of D2 and trying to solve the above mentioned objective technical problem, would have modified the file of D2 according to this teaching of D3, thereby arriving at the claimed subject-matter in an obvious manner."
• The case is run-of-the-mill, but for the fact that the patent originates from a PCT application filed on 16.03.2005. The decision was issued on 02.05.2025. 
• EP entry in 2006. Supplementary search started in 2017 (!). Grant in 2021. The appeal did not take too long. 

EPO 

T 1161/23 - Patent revoked in patent year 21

Key points

• The Board, in translation: "The appellant [opponent] argued that claim 1 would not meet the requirements of Article 123(2) EPC, contrary to the conclusions in point II.15.2 of the reasons for the contested decision. It submitted, among other things, that the addition of the feature that the reservoir (2) is axially movable in the body (1) would lead to an inadmissible intermediate generalisation. This characteristic, which could only be deduced from the first embodiment of figures 1 to 8, would be inseparable from the other characteristics specifically mentioned in this context. The Chamber agrees with this argument."
• Follows some concise reasoning.
• The decision is rather run-of-the-mill, except that the application was filed as a PCT application on 25.11.2004. The opposition appeal decision was dated 02.05.2025.
• EP entry in 2005, first communication of the Examining Division in 2009, refusal in 2011, appeal decision in 2013, second decision to refuse in 2014 (no interactions in between), second appeal decision in 2019. Grant in 2020. 
• I suppose it is just the trailing edge of the curve. Still, seeing an opposition appeal lasting into patent year 21, without the application being a divisonal application, is rare. 
• The Board had asked the opponent whether it was still interested in the appeal after the lapse in all states under rule 84(1) EPC. The opponent/appellant confirmed. 

EPO 

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

T 0930/23 - No technical effect being attributable (in patent year 20)

Key points

• The  Board on inventive step: "Further, with no technical effect being attributable to the distinguishing feature, the further arguments of the respondent that D2 was silent about the bending properties of the materials used in the central portions and in the side portions and that there was no hint or motivation in D2 to work with the bending properties of the materials, are irrelevant. Features that do not provide a technical effect and which would be implemented as part of the normal design of such articles which are deemed suitable in the circumstances, are an obvious choice for a skilled person even if there is no specific hint or pointer towards exactly the claimed range. It is thus not necessary in the circumstances of the present case (where there is no proven technical effect and no technical problem solved across the scope of the claim by the distinguishing feature) to find a hint by way of common general knowledge or in the prior art, contrary to the reasoning of the opposition division in the impugned decision on page 4, third paragraph. In a case merely involving an arbitrary selection from obvious alternatives, the prior art does not need to contain an incentive for the skilled person to select the particular solution claimed, rather all possible and suitable solutions are considered to be suggested to the skilled person (T 1862/15, reasons 8)."
• "Auxiliary requests 1, 2 and 4 to 24 are not admitted into the appeal proceedings as they lack substantiation as to which objections might be overcome by the various amendments and how such amendments actually overcome them (Articles 12(3) and (5) RPBA)."
• "The subject-matter of claim 1 of auxiliary request 3 thus lacks an inventive step"
• The patent is revoked.
• Which so far is not unusual, except that the patent was granted in Feb 2014 and the Board's final decision was issued on 10 March 2025. Filing date in 2005 as a PCT application. The Board in the first appeal decision in T 0259/17 in 2021 found claim 1 to be sufficiently disclosed (contrary to the first OD decision). 
• The Board in the first decision: " As [...] argued by the appellant [ proprietor], however, the problem to be solved is not defined in the claim, such that identifying the technical measures to solve any particular problem is limited in this case to carrying out what is defined in the claim itself, i.e. the relative flexural rigidities where the measurement of each is defined by the described test procedures. Whether the relative flexural rigidities measured in this way ultimately solve any particular problem is something which can be left for discussion of inventive step."
• 
  

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.

R 0012/20 - Length of procedure

Key points

• The petition for review was filed by the opponent on 21.08.2020. The Enlarged Board, in a three-member panel, decided on the petition during oral proceedings of 19.07.2024. The decision was issued in writing on 07.10.2024.
• The OD had revoked the patent for insufficient disclosure. The TBA  reversed and remitted the case. The OD took a new decision in September 2022, i.e. two years  (!) after the petition for review was filed.  The OD rejected the opposition. The opponent did not appeal. 
• The EBA panel concludes that the petition is now moot, in translation: "No appeal was filed against this decision within the appeal period, so the parties were notified by communication dated 3 January 2023 that the patent was maintained in unchanged form and that the opposition proceedings had been concluded. The decision of the Opposition Division of 12 September 2022 thus has final effect."
• "The Enlarged Board of Appeal therefore concludes that the applicant can no longer rely on a continuing interest in bringing proceedings and that the admissibility requirements of the originally filed application for review are therefore no longer met."
• As a comment, perhaps there was no ground for appealing given that the TBA's findings in the first decision were still res iudicata. 
• According to the EBA, the opponent/petitioner is to blame ("has contributed on its own responsibility ", original "eigenverantwortlich dazu beigetragen, dass"): "By refraining from filing an appeal against the decision of the opposition division of 12 September 2022, at least as a precautionary measure, the applicant has contributed procedurally on its own responsibility not only to ensuring that this decision becomes final, but also to ensuring that the patent in dispute becomes final."
  
  
• I do not readily see how the finality of the decision / the patent in this case can be "larger" than in the case the Board had not remitted, i.e., reversed and simultaneously rejected the opposition in the appeal decision. I understand that in such a scenario, a petition for review does provide a remedy in case of one of the specified procedural defects. 
• 
  
• The panel of the EBA does not comment on the length of the procedure before it in the three-member panel composition. Should the EBA panel have managed to decide on the case in two years, there would have been no problem. 
• The first action of the EBA appears to be a communication of 13.12.2023, suggesting that the EBA did not process the petition for review  for a period of more than three years.
•  
• To cite the Explanatory Remarks to the EPC 2000, Article 112a EPC, from OJ 2007 Special Edition 4 (link): 
• 12. "The possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties. "
• 18. "In the interest of a quick and effective screening of petitions for review which are clearly inadmissible or not allowable, special procedural provisions apply to the three-member panel of the Enlarged Board established under Article 22(2), second sentence, and Rule 109(2) EPC 2000 (see explanatory remark n° 4 to Article 22 EPC). "
• "The proceedings before this panel shall be as simple and short as possible."
• "Therefore, this body shall decide in written summary proceedings without the involvement of other parties and on the basis of the petition (see Rule 109(3) EPC 2000). A quick screening procedure at the outset of review proceedings to sort out petitions which clearly cannot be successful is essential in order to avoid an inappropriate prolongation of legal uncertainty for third parties. It is also of great importance to counteract effectively intentional prolongation of proceedings by filing a petition for review."
• It seems the legislator did not even consider a scenario wherein the procedure before the three-member panel of the EBA would take so long as to become moot. 
• The EBA panel adds observations stating that the petition is clearly not allowable anyway. I understand these observations to be obiter and will not comment on them here: they should not distract from the procedural approach taken by the EBA panel. 
• To be clear: I'm not convinced that a petition for review can become moot because of the EBA's inaction in the way proposed by the EBA panel in this decision. Should the holding of the EBA panel in this case become established case law, it seems to me that it then will be even more important for the EBA panels that hear petition of review cases to avoid undue delay of the proceedings than it is now. 

EPO 

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

R 0013/21 - Review of decisions to hold inadmissible

Key points

• The Enlarged Board in translation: "According to the case law of the Enlarged Board of Appeal, discretionary decisions on the admission of new submissions or new requests are only subject to limited review. In the procedure under Article 112a EPC, the only things that can be examined are (i) whether the party was heard on the question of admission and/or (ii) whether there was an error of discretion. The latter examination may at most relate to two aspects, namely whether there was any discretion at all and whether the board also recognised this fact (exceeding or failing to exercise discretion), and whether the exercise of discretion was arbitrary or manifestly unlawful (abuse or misuse of discretion)"
• So, in summary, there are three grounds to challenge a decision under Art. 12 or 13 RPBA to hold a submission inadmissible in a petition for review:
• the party was not heard on the question of admissibility;
• the board had no discretion to hold the submission inadmissible;
• the board's discretionary decision was arbitrary or manifestly unlawful in the sense of abuse or misuse of discretion. (Ausübung des Ermessens willkürlich oder offensichtlich rechtswidrig war (Ermessensmissbrauch bzw. -fehlgebrauch))
• This seems to define a practical framework. It seems similar to, but a bit stricter than, the test of G7/93 r.2.6: "either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [...] or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion"
• In the case at hand, the inventive step attack over D7 + common general knowledge was held inadmissible after the novelty attack over D7 in view of common general knowledge was rejected on the merits. A rather strict approach, but the term common general knowledge can sometimes cover a few nuances. 

• The Board considered the MR to be not novel, the added feature of AR-1 to provide novelty, and did not admit the inventive step attack. The Board then maintained the patent according to AR-1 without examining the inventive step requirement.
• The Enlarged Board: "Although the board's approach of considering auxiliary request 1 to be allowable without further substantive examination may appear questionable from the point of view of Article 101(3) EPC (see the Enlarged Board of Appeal's communication of 30 November 2023, points 24-25 for details), the latter requirement and possible violations thereof are, however, irrelevant for the review procedure."
  
  
• The petition for review was filed on  16.07.2021 and rejected by a three-member panel on 25.10.2024.
• I don't know what the reasons for the delay were in this case. The file shows a change in the composition of the panel and a change in the rapporteur in 2023.
• Still, we can only hope the situation will improve soon.

EPO 

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

T 1741/21 - A remittal in patent year 20

Key points

•  The PCT application was filed in 2004, EPO was ISA, IPER drawn up by the EPO as IPEA, EP entry 2005, search report in 2008 with a Communication  [search report issued after an invitation under a Rule 112 EPC 1973 in 2006, see here], second communication Examining Division in 2013, summons in 2016 (after some voluntary amendments by the applicant), refusal in 2016, appeal decision in 2018 remitting to the Examining Division, grant in 2019, decision OD in 2021 rejection all sets of claims (claim requests) under Art. 100(c) due to intermediate generalision.
• The Board reverses on Art. 100(c) EPC and remits the case to the OD.

EPO 

The link to the decision 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 0160/22 - Swiss-type claims in 2024 / contraception

Key points

• Claim 1 of the patent reads: "Use of 20 myg of ethinyl estradiol and 3 mg of drospirenone for the manufacture of a medicament for female oral contraception comprising a flexible, extended regimen, the regimen comprising: ..."
• Question for trainees: what do you know about the filing date of this patent?
• Surprise: it's no divisional! PCT filed in 2005, PCT entry in 2006, first communication from the examining division: 2012 (!), second in 2014, third in 2015, summons in 2016, intention to grant in 2017, notice of opposition in 2018, decision in 2021, decision in appeal: 2024. Which is within the 20-year patent term.
• Second question: what's (allegedly) wrong with the claim?
•  "the question to be answered for determining whether the dosage regimen of claim 1 is limiting is whether the method of female oral contraception comprising the dosage regimen in claim 1 may be regarded as a method of treatment by therapy. This issue was controversial but can be left unanswered since, even if the dosage regimen was limiting, the subject-matter of claim 1 would not involve an inventive step, as outlined in point 2 below."
• "The prevention of pregnancy is not in general a therapy according to Art.53(c), because pregnancy is not an illness (T74/93 r.2.2.3). "
• I wonder if that case would be decided in the same way nowadays.

EPO 

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

T 2517/22 - OD did not hear offered witness

Key points

• The OD did not hear a witness. The Board finds this a substantial procedural violation, sets aside the decision, and remits the case. There are some interesting details - including that the filing date of the Euro-PCT was in 2004 so the opposition procedure after remittal will end well after the end of the patent term.
• Grant: 2015 (after 1 communication of the Examining Division), first decision OD: 2018 (not novel over D1), first appeal decision (2021; novel over D1, remittal), second decision OD in 2022: reject opposition,  
• If you would like to learn more about witness hearings at the EPO, you can still sign up for the EPO course of this year (until 1 October): https://justpatentlaw.blogspot.com/2024/09/epo-two-day-course-on-taking-of-evidence.html 
• "D2 is an operating manual for a graphic control and supervision system VGCS delivered by appellant 2 (Vestas Wind System A/S, see page 4). VGCS "provides service for supervision and control of wind farms with Vestas Wind Turbines (WT)" and further optional components such as meteorological masts and substations. In the affidavit D2a, an employee of appellant 2 [opponent], Mr. Rasmussen, stated that - he was responsible for VGCS between 1995 and 2005; - D2 has been handed over to customers having purchased the VGCS between September 2001 and October 2003 and was not subject of a confidentiality agreement; - D2 "was offered and/or supplied" to 19 customers who had purchased a VGCS in this period.
• "Already in the notice of opposition and again in their reply of 13 February 2017, after the patentee had put into question the probative value of the affidavit D2a, appellant 2 offered to hear Mr. Rasmussen as witness "
• "The Opposition Division changed its mind [compared to the preliminary opinion] and announced after discussion of public availability of D2 during the second oral proceedings that D2 was not part of the prior art (last paragraph on page 1 of the minutes) albeit without taking into account the previous offer to hear a witness on the topic. The reasons for this change of mind can be found in sections 3.2 - 3.6 of the contested decision: "There is therefore a doubt about whether Mr. Rasmussen's recollection of events after 15 years is correct". In the absence of further written evidence and documentation relating to the alleged sales of VGCS and hand-overs of D2, "a person's memory alone ...does not constitute sufficient proof of prior public disclosure" 15 years ago.  
• The Board: "An offer to hear the undersigned of the affidavit D2a as a witness for confirming these facts represents a further relevant and appropriate offer of evidence for these facts. It is a party's choice to present whatever means of evidence it considers to be suitable and it is an Opposition Division's duty to take its decision on the basis of all the relevant evidence actually available rather than to expect the presentation of more preferred pieces of documentary evidence, to speculate on the reasons of and draw conclusion from their absence (see sections 3.2, 3.6. of the impugned decision). The Opposition Division is of course free to evaluate any evidence provided by a party, but this freedom cannot be used to disregard evidence which has been offered, and might turn out to be decisive for a case, in particular not with the argument that some better evidence would have been expected,"
• " Instead of accepting the evidence offered by appellant 2, the Opposition Division appears to have based its decision on general assumptions made on the capability of persons to recollect events after a certain time period and specific assumptions made on the witness' personal capability, knowledge and experience, thus implicitly on assumptions made on the veracity of his statements and on his credibility. By making these assumptions without hearing the offered witness in person, the Opposition Division in fact assessed evidence without examining it "
• "According to the respondent [patentee], the offer to hear Mr. Rasmussen was not substantiated, since it did neither set out in detail why Mr. Rasmussen was in a position to know about the non-existence of a NDA, nor under which circumstances exactly 19 VGCS had been sold and delivered, nor why he could remember this exact number and these circumstances. 
• The Board: "Appellant 2 [opponent] did therefore not have to address these concerns and had no obligation to announce in their offer, how exactly the witness would be able to corroborate his own statements, e.g. by answering in advance hypothetical questions that might possibly arise with regard to the background of his knowledge of the facts and why his statements should be accepted as true. Such questions are normally asked during witness hearings in order to assess the credibility of the witness and the exactness of his memory, which is one of the main purposes of the hearing. Other than assumed by the Opposition Division, this cannot be figured out and a sufficiently exact recollection of various events 15 years later cannot be denied beforehand without a hearing in person since there is always the possibility that a witness remembers very well certain details because of personal records or special events having occurred at the same time. Neither is it common to inform the witness before the hearing about the questions he will be asked, nor does the party offering the witness have to guess and answer these question in advance already in their offer in order to substantiate even further why the witness is to be heard."
• " Therefore, the Board concludes that the failure to consider appellant's 2 offer to hear a witness on the public availability of D2 constitutes in the circumstances of the present case a substantial procedural violation, in that it deprived appellant 2 of their basic rights enshrined in Article 117(1) and 113(1) EPC, see CLBA, 10th edition, III.B.2.6.4, in particular headnote of T 474/04, and III.G.3.3.4, and the decisions there cited."
• T 474/04 headnote is about the reverse case where the OD considers a contested unsworn witness to be credible and refuses the request of the party disputing the declaration to hear that witness. 
• Note that normally, the opponent would have to set out in appeal how D2 is prejudical to the patentability of the claims in appeal, otherwise the error of the OD could be seen as harmless; the proprietor argues accordingly in appeal against a remittal. 
•  The Board considers various factors, including that: "Even the respondent seems to have never defended patentability in the light of D2 and countered the objections raised in opposition proceedings, but only denied its public availability. On this basis, apart from its prior art status, there were no substantive counter-arguments against D2 in the proceedings which the appellant opponent could have been expected to address in detail already in its grounds of appeal. Nor is there anything to suggest that a novelty and/or inventive step attack based on D2 would have been manifestly unsuccessful, in which case a remittal to the Opposition Division would appear to serve no purpose. Rather, patentability over D2 is to be examined by the Opposition Division."
• "the Board concludes that the absence of an explicitly substantiated novelty and/or inventive step attack based on D2 in opponent 2's statement of grounds of appeal in the present case does not lead to the conclusion that the procedural violation before the division had not been substantial because it had been without consequence for the outcome of the proceedings. Rather, the Board is in the position to issue a final decision without having to deal in depth with the issue of patentability over D2. "

EPO 

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

R 0001/20 - Petition for review case

Key points

• The petition for review was filed on 03.02.2020. The decision of the Enlarged Board in a three-member composition to unanimously reject the petition as clearly unallowable was taken in writing on 12.07.2024 after the cancellation of the oral proceedings. 
• Hence, the procedure before the Enlarged Board in the three-member composition lasted 4 years and 5 months.
• Let me cite the Explanatory Remarks to the EPC 2000, Article 112a EPC, from OJ 2007 Special Edition 4 (link): 
• 12. "The possibility of filing a petition for review must not cause long-lasting legal uncertainty for third parties. "
• 18. "In the interest of a quick and effective screening of petitions for review which are clearly inadmissible or not allowable, special procedural provisions apply to the three-member panel of the Enlarged Board established under Article 22(2), second sentence, and Rule 109(2) EPC 2000 (see explanatory remark n° 4 to Article 22 EPC). "
• "The proceedings before this panel shall be as simple and short as possible."
• "Therefore, this body shall decide in written summary proceedings without the involvement of other parties and on the basis of the petition (see Rule 109(3) EPC 2000). A quick screening procedure at the outset of review proceedings to sort out petitions which clearly cannot be successful is essential in order to avoid an inappropriate prolongation of legal uncertainty for third parties. It is also of great importance to counteract effectively intentional prolongation of proceedings by filing a petition for review."

• The complete timeline of the application is as follows: PCT application filed in 2008, request for entry in 2010, grant in 2011, opposition filed in 2011, decision OD in 2015, and Decision Technical Board of Appeal in 2019. 

EPO 

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

D 0002/24 - An effective appeal

Key points

• I do not normally discuss EQE appeals on this blog, but this decision is an example of an appeal going smoothly. It concerns the Pre-Exam 2024. The decision was taken on 9 August 2024 and published online on 13 August. 
• The Board allowed the appeal and awarded the grade "PASS"
• I assume the candidate can, therefore, sit the Main Exam 2025.
• Overall, this should be the purpose of appeals about the pre-exam, of course, i.e. that a well-founded appeal affords an effective remedy and allows the candidate to sit the Main Exam without delay.
• " The appellant's argument essentially boils down to the understanding of the term "to provide" in the given context, and whether the electronic cigarette in D1 "pro­vides" only vapour, which is the appellant's understanding, or (also) a liquid solution (to avoid the health risks caused by high nicotine concen­tra­tions), which is the understanding of the Examiners' Re­port."
• The device of D1 contains a liquid solution but supplies only vapour to the user, as I understand it.
• The Board: "It follows from the setup of the pre-examination with its multiple-choice questions that they must be for­mulated clearly and unambiguously, and that remaining doubts which cannot be sorted out at the time of taking the examination, but only by way of the appeal, cannot be to the detriment of the candidate "
• This holding will be true for any multiple-choice questions (and the like) in the new EQE as well, I suppose. 
• Incidentally, it is a bit curious to see vaping picked as the topic of an exam question, even though there is plenty of patenting going on in that field. 

EPO 

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

T 0928/19 - Remitted for search in patent year 17

Key points

• Filed as a direct European application in 2007. Search report in 2008. First Communication in 2010. Refusal in 2018. Appeal decision issued in writing in 2024.
• "The Board therefore finds the claimed invention not to be obvious when starting from D1. "
• "The Board notes that document D1, relied upon by the Examining Division, is a document mainly directed to a localised load redistribution, which is conceptually the opposite of the claimed invention. Also, and perhaps more importantly, although front-end/back-end server architectures were well known in the art at the filing date of the application, the decision does not refer to any such document. More relevant prior art may therefore exist."
• "Under these circumstances the Board decides to remit the case to the Examining Division for further prosecution (Article 111(1) EPC), possibly including an additional search."

EPO 

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

T 2124/21 - Refusal after 16 years

Key points

• "On appeal, the sole request subject of the appealed decision was abandoned, and amended requests were filed instead."
• The applicant then wished to return to the claims considered in the appealed decision. This is a case amendment, and these claims are not admitted.
• The appeal against the refusal of the application is dismissed.
• PCT application filed in 2008, request for entry in 2010. Start of the examination and first communication in 2017 (!). Next action: summons for oral proceedings in 2020. Refusal of the application in 2021 for lack of inventive step. Oral proceedings before the Board: January 2024. Decision in writing: March 2024. 

EPO 

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

T 0808/19 - 12 years of opposition and appeal(s)

Key points

• The patent was granted in 2011. The first decision of the OD was in 2013. The decision in the first appeal was in 2018: a remittal. The second decision of the OD was in 2019. New decision Board was issued in writing in  February 2024. PCT filing date in November 2006.
• The decision itself seems run of the mill.
• 
  
• EPO 

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

T 0229/18 - The Chair retires before the written decision is given

Key points

• The decision was given during oral proceedings on 07.10.2021. Minutes were issued on 22.10.2021.
• A notice about a transfer of the case to another Board was issued on 12.07.2022.
• A party enquires in 2022 and later in September 2023 about when the written decision will be issued.
• By that time, the chair had retired (in June 2022). The other party proposes that the Board apply Art. 8(3) RPBA, which states that if the Chair is unable to act, the longest-serving member shall sign the decision.
• The Board issued a Communication on 23.10.2023, apologizing for the undue delay and mentioning "unfortunate circumstances and the productivity objectives imposed on the boards of appeal".
• The decision in PDF was authenticated by the legal member instead of the Chair.
• 
  

EPO 

The link to the decision is provided after the jump.

R 0006/22 - How to object under Rule 106

Key points

• "The reasoned petition was filed on 18 February 2022" 
• The written decision was issued on 28 February 2024, i.e. after more than two years, by a panel of the Enlarged Board consisting of three members. I will leave the issue of the length of the procedure aside for now, but not because it is an unimportant issue.
•  Rule 106 provides that a petition for review "is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings"
• "Oral proceedings before the Board were held on 15 November 2021. The Board's contested decision was announced at the end. The minutes were posted on 19 November 2021 and do not contain any detail of the arguments relied on for the various discussed issues. For the purposes of the petition, the discussion of the main request and auxiliary request is relevant."
• Note, the parties are effectively prevented from keeping a proper record of the oral proceedings by the prohibition of sound recording. 
• "From the minutes it transpires that the issues of added subject-matter, novelty and inventive step for the main request and of the admittance of the auxiliary request were discussed without interruption. After the Board's deliberation on these issues, the Chair announced that the main request was novel but did not involve an inventive step, and that the Board did not admit the auxiliary request into the proceedings. This was followed by a discussion on apportionment of costs. "
• "The petition is essentially based on the two grounds that (1) the non-admittance of the auxiliary request constituted a violation of the right to be heard since the auxiliary request had been submitted in response to a new argument raised by the Board"
• The EBA: 'From the file it appeared that an objection under Rule 106 EPC had not been made when the Board announced that it would not be admitting the auxiliary request into the proceedings. Mere observations on the right to be heard did not qualify as an objection under Rule 106 EPC unless they were immediately and doubtlessly recognisable as such. "
• "An objection under Rule 106 EPC must be expressed by a party in such a form that a board is able to recognise immediately and without doubt that an objection under Rule 106 EPC is intended. An objection under Rule 106 EPC is in addition to and distinct from other statements, such as arguing or even protesting against the conduct of the proceedings or against an individual procedural finding."
• " It is undisputed that the non-admittance as such was already known to the petitioner during the oral proceedings. It is also apparent from the minutes that the petitioner already had multiple opportunities to formulate a proper objection under Rule 106 EPC during the oral proceedings. Following the decision on the admittance, other issues were still under discussion. The parties were also invited to comment before the Board announced its final decision, before the closure of the oral proceedings."
• 
  
• "[T]he [Enlarged] Board had no reason to assume that the petitioner's argument on the right to be heard was already a formal objection pursuant to Rule 106 EPC. A mere reference to the right to be heard does not immediately become an objection under Rule 106 EPC. It normally needs to be formulated after the alleged procedural irregularity and cannot be formulated prematurely; see R 14/11, Reasons 2.7 [] . For this reason alone, the Board did not have to assume in the course of the oral proceedings that the proprietor intended to make an objection under Rule 106 EPC, even if it did take note of the remark on the right to be heard during the discussion on the admittance."
• "It is undisputed that the non-admittance as such was already known to the petitioner during the oral proceedings. It is also apparent from the minutes that the petitioner already had multiple opportunities to formulate a proper objection under Rule 106 EPC during the oral proceedings. Following the decision on the admittance, other issues were still under discussion. The parties were also invited to comment before the Board announced its final decision, before the closure of the oral proceedings."
• Note, G 12/91 held that: "Where oral proceedings are held, the decision may be given orally. The decision becomes effective by virtue of its being pronounced. ... Once it has been pronounced ... the decision enters into force and cannot be amended, even by the department that issued it. " This holding should probably be understood in a nuanced sense for decisions on the admissibility of submissions announced in the course of the oral proceedings: they can be set aside by the Board in case of a persuasive objection under Rule 106 EPC

EPO 

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

T 0910/18 - Grant after 20 years

Key points

• The PCT application was filed in 2001, request for entry 2003, first communication Examining Division 2004, 2nd communication in 2011, summons in 2017, appeal filed end 2017, statement of grounds in 2018, summons oral proceedings Board 2022. The Board orders the grant of the patent
• "Despite the expiration of the 20 year patent term, a patent can still be granted, as there may exist legal rights derived from it that would be affected by the grant of the patent, such as provisional protection rights conferred by Article 67 EPC upon the publication of the application." 
• The Board's further reasoning on inventive step is actually interesting, though nothing out of the ordinary. 
• In other words, I don't see any special circumstances in the decision (or in the file) justifying a 20-year grant procedure.
• "  In the decision under appeal, the examining division concluded that claim 1 of the then Main Request did not involve an inventive step in view of documents D2 and D1." 
• " [T]he board considers thus that D2 represents a rather remote starting point for the skilled person, who would have to carry out extensive modifications to its teaching in order to arrive at the claimed invention. The board takes the view that such modifications would change significantly the teaching of D2, for example transforming the described apparatus from a manually operated device to an automatically operated one. In the board's view, such modifications would go beyond what can be considered to to obvious for the skilled person." 
• 
  
• " Even if it were accepted - for the sake of the discussion - that the skilled person would have wished to automate the apparatus of D2 and would have added features for automatically transporting the certified papers within the apparatus, detecting the emitted light and determining the genuineness of the paper based on this detection, there is nothing in D2 or in the skilled person's common general knowledge that would incite the skilled person to implement the triggering of the activation of the alternating-current electromagnetic field according to claim 1 of the Main Request." 
• " The examining division considered that it would have been obvious for the skilled person to conceive the idea to limit the application of the alternating-current electromagnetic field because "it [was] generally known to activate components in automated settings only when they are needed (e.g. energy savings, lifetime of components (MTBF))" (see point 19.5 of the Reasons of the impugned decision)." 
• " The board notes that in the present case, the limitation of the application of the alternating-current electromagnetic field is related neither to energy savings nor to the lifetime of components of the apparatus."  
• I understand that the Board is applying the rule of the PSA that the distinguishing feature must be obvious for solving the particular objective technical problem. This may be contrasted with the KSR approach of the USPTO where any motivation to combine is sufficient.
• " According to the board's view and taking into account the context of D2 described above, the skilled person would not have considered the idea to limit the application of the electromagnetic field without hindsight." 
• 
  

EPO T 0910/18 

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