T 1865/22 - Inventive step of omitting a feature

Key points

• In the case at hand, the only distinguishing feature is omitting a feature of the prior art method.
•  The Board, in the headnote: "The mere fact that claimed subject-matter excludes a technical feature disclosed in the closest prior art as being essential or advantageous for a technical effect cannot in itself establish the existence of an inventive step. "
• "Rather, where the exclusion of the technical feature in question is the only feature distinguishing the claimed subject-matter from the closest prior art, it must be shown that the claimed subject-matter achieves said technical effect to an extent comparable to that of the closest prior art, even without this feature. Without such proof, the claimed subject-matter merely results in an obvious deterioration of the technical effect described in the closest prior art"
• As a comment, possibly, even a surprisingly small deterioration can provide for inventive step in some cases. Indeed, the term 'comparable' used  by the Board (as opposed to identical) could accommodate such cases. 
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EPO 

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

R 0012/21 - Justice delayed ...

Key points

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

On the length of the procedure

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

EPO 

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

T 0449/23 - (IV) On the need to actively maintain carry-over requests in appeal

Key points

• The OD maintained the patent in amended form based on AR-1. The opponent and the proprietor appeal.
• Are AR-2 to 8 part of the appeal procedure?
• I think the Board applies existing case law, yet it's good to see it explained in all details.
• "With the letter dated 10 December 2024, with which the above auxiliary requests were submitted, the patent proprietor noted that the communication of the board pursuant to Article 15(1) RPBA had not mentioned auxiliary requests 2 to 8 filed before the opposition division. In the proprietor's view, these requests were however to be considered as part of the appeal proceedings from the outset within the meaning of Article 12 RPBA."
• "The board disagrees. Rather, as argued by the opponent, and indeed as understood by the board in drafting the communication pursuant to Article 15(1) RPBA, prior to the letter dated 10 December 2024, there was nothing in the patent proprietor's submissions in appeal indicating that as an alternative to its main request or auxiliary request 1, it requested maintenance of the patent on the basis of auxiliary requests 2 to 8."
• The proprietor refers to some remark in its Notice of appeal. The Board finds this remark to be insufficient.
• I note taht at any rate, the proprietor should logically maintain AR-2 to 8 in its reply to the appeal of the opponent, as lower ranking requests.
•  "the patent proprietor's grounds of appeal and reply collectively defined its requests as the main request and auxiliary request 1. Hence, even if the notice of appeal were to have referred to auxiliary requests 2 to 8, this would have been superseded by the grounds of appeal and reply which were absent any reference thereto. In this regard, Article 12(3) RPBA stipulates that the statement of grounds of appeal and the reply shall contain a party's complete appeal case and inter alia should specify expressly all the requests relied on."
• "The patent proprietor also argued that auxiliary requests 2 to 8 had been set out in its reply to the notice of opposition dated 1 October 2021 (pages 22 to 25). Since this document was submitted as an annex to the patent proprietor's statement of grounds of appeal, auxiliary requests 2 to 8 were part of the appeal proceedings."
• "it is for the appellant, in the present case the patent proprietor, to define the extent of the appeal and as set out above, in accordance with Article 12(3) RPBA, set out its complete case in the statement of grounds of appeal or the reply thereto.  The submission of the reply to the notice of opposition as an annex to the grounds of appeal does not fulfil this requirement. Specifically, it does not change the fact that the patent proprietor's express requests in appeal did not include auxiliary request 2 to 8. Indeed, the board notes that in its grounds of appeal, the patent proprietor only referred to its reply to the notice of opposition in the context of inventive step starting from D3 (grounds of appeal, page 7, point 2.2, first paragraph). Hence, the patent proprietor's argument in this regard also fails."
• "To support the argument that auxiliary requests 2 to 8 were part of the appeal proceedings, the patent proprietor also referred to the opponent's grounds of appeal, in which said requests were addressed. Specifically, the opponent's grounds of appeal comprised a table on page 15 referring to auxiliary requests 1 to 8 submitted by the proprietor in opposition proceedings, as well as providing some comments on the allowability of said requests."
• " The board disagrees. As stated by the opponent, its submissions related to auxiliary requests 2 to 8 were filed merely "as a precautionary measure" (grounds of appeal page 15, paragraph below the table), i.e. in anticipation of the possibility that the patent proprietor might request maintenance of the patent on the basis of these requests. However, the patent proprietor did not request maintenance of the patent on the basis of auxiliary requests 2 to 8, neither with its statement of grounds of appeal nor with its reply to the opponent's appeal. Indeed, given the fact that auxiliary requests 2 to 8 were addressed in the opponent's grounds of appeal, the lack of any reference to those requests in the patent proprietor's reply to the opponent's grounds of appeal served to confirm that auxiliary requests 2 to 8 did not form part of its requests in appeal."
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• " The patent proprietor argued that having been filed during opposition proceedings, auxiliary requests 2 to 8 were "carry-over" requests. Therefore, to determine whether such requests represented an amendment to its appeal case in the sense of Article 13(2) RPBA, the criteria set out in Article 12(4) RPBA were to be applied."

• The Board: " the amendment referred to in Article 12(4) RPBA is an amendment of the party's case relative to its requests, facts, evidence, arguments and objections on which the decision under appeal is based, which is distinct from "amendments to a party's appeal case" in Article 13(2) RPBA, carried out at a later stage of the appeal proceedings relative to earlier submissions in appeal."

• "the patent proprietor's interpretation would have as a consequence that any submission or request admissibly raised and maintained in opposition proceedings could be reintroduced without impediment at any stage of the appeal proceedings, since following said interpretation, such a request would never be an amendment of the party's appeal case under Article 13(1) and (2) RPBA, with the consequence that the board would not have the discretion to exclude it. This would in turn run contrary to the legislator's intent underlying Article 13(2) RPBA"

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EPO 

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

T 0746/22 - On headnotes and the actual text (and optical lenses)

Key points

• One of the curious aspects of the case law is that the headnotes (catchwords) sometimes can not be found so clearly in the actual text of the decision. I'm not privy to who drafts the headnotes and when (does the entire Board approve of them?). Perhaps someone can share an insight in the comments.
• Headnote: "In a claimed optical lens system comprising a plurality of lenses, it must be examined whether the feature distinguishing the claimed lens system over the prior art has a technical effect. If no effect beyond an arbitrary modification of the prior art lens system can be attributed to the distinguishing feature over the whole scope of the claim, the claimed lens system does not involve an inventive step. See Reasons, point 1.5."
• This headnote is a bit particular in that, except for the part in italics, it is just a statement of established case law that arbitrary variants are not inventive. What is so special about optical lens systems?
• Turning to point 1.5 in its entirety:  "As for instance explained in T 176/97, point 4.4 of the Reasons for the Decision, if the distinguishing feature of a claim has no effect of technical relevance on the claimed subject-matter and does not credibly solve an objective technical problem, then no inventive step can be based on it. In the present case, the objective lens system of claim 15 is considered to be no more than an arbitrary modification of the objective lens system of D4 which does not involve an inventive step within the meaning of Article 56 EPC."
• On the other hand, point 1.3.2 contains some reasoning that could be very important for anyone prosecuting patents in the field of optical lens systems: "merely defining a minimum contribution of the optical power of a lens in a group of five lenses (all of which are barely defined by optical parameters) has no relevant technical effect on any of the optical characteristics of the objective lens system, such as reducing the total optical length, reducing the optical aberrations, improving the optical quality or increasing the field of view. Indeed, all of these optical characteristics of the objective lens system result from precise optical parameters of the objective lens system (e.g. radii of curvature of the constituting lenses, lens materials, distances between the lenses). In order to provide at least a contribution to a well-defined optical characteristic of the objective lens system, it would be necessary that the claimed objective lens system be defined in greater detail by optical parameters, such as the radii of curvature of the lenses, the relative positions of the lenses and the aperture stop, the material of the lenses. "
• The Board adds, for good measure: "the fact that the scope of protection of a claim comprising all relevant optical parameters necessary to achieve a desired optical characteristic of a lens design is rather limited cannot generally be a reason for omitting the optical parameters from the claim".
•  A clear instruction to those patent attorneys working in the field. Whether it is justified or too strict, I can't judge. That is for those intimately familiar with the technology to consider.

EPO 

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

T 0449/23 - (III) On evidence and inventive step

Key points

• "As regards an alleged lack of inventive step, the burden is on the opponent to adduce appropriate prior art which - when following the established substantive test, i.e. the problem-solution approach - persuades the opposition division or the board of the obviousness of the solution provided by the subject-matter claimed."
• " On the other hand, if the patent proprietor asserts that, in comparison to the prior art, there is an advantage or effect giving rise to a more ambitious formulation of the objective technical problem than that presented by the opponent and hence to an inventive step, the burden of proving this advantage or effect to the required standard of proof is on the patent proprietor (T 20/81, OJ EPO 1982, 217, headnote and reasons, point 3; T 912/94, reasons, point 3.5; T 355/97, reasons, point 2.5.1; T 1392/04, reasons, points 15, 19 and 20; T 2179/13, reasons, points 5.3 and 7). The mere assertion in the patent specification of an advantage or effect cannot be regarded as evidence of such an assertion."
• (e) The above principles have been confirmed in the following selected cases in which the underlying circumstances were comparable to those of the present case.
• Follows a review of these cases.
•  The patent proprietor cited decision T 1797/09 (reasons, point 2.7) in support of its view that the burden of proof rested on the opponent. 
• (a) In the board's opinion, decision T 1797/09 cannot support the patent proprietor's view. It appears that point 2.7 of the reasons is in reply to an allegation by the respondent (patent proprietor) relying on decision T 692/09 that no evidence for the solution of the technical problem of the patent had to be provided where the technical problem underlying the invention was completely new at the priority date of the patent (T 1797/09, reasons, point 2.6). 
• T 1797/09 : "The Board agrees with the Respondents insofar as a technical problem set out in a patent is considered to be credibly solved by a claimed invention if there exist no reasons to assume the contrary. In such circumstances, it is normally the Opponent's burden to prove the opposite or at least provide evidence casting doubt on the alleged solution of the problem. If no such evidence is provided, the benefit of doubt is given to the Patent Proprietor. However, if the Opponent succeeds to cast reasonable doubt on the alleged effect, the burden to proof its allegations is shifted to the Patent Proprietor ... In the present case, however, the Opponent has pointed to the comparative examples of document D1 where it is shown that the antispotting and antiscaling performance of a dish wash composition containing components a), b) and c) (Example 12) is worse than one containing only components a) and c) "
• This allegation appears, however, to misrepresent the findings in case T 692/09. Point 2.7 of T 1797/09 moreover fails to analyse the findings in T 692/09 and to relate this decision to the specific facts under consideration. From the reference to the Case Law of the Boards of Appeal, 6th Edition 2010, chapter VI.H.5, it is also not possible to identify a specific section in support of the statements in point 2.7 of T 1797/09. In fact, on the basis of the statements in decision T 1797/09, which lack any reasoning, the present board is unable to determine whether and why the conclusions in said decision could be relevant to the present case.
• As is apparent from the Case Law of the Boards of Appeal, 10th edition 2022, pages 866 to 867 of the English language version, decision T 1797/09 has remained a singular decision which was not followed by any other decision of the boards of appeal.
• (c) Of course, an advantageous technical effect could be notorious or part of the common general knowledge. In the first case, no evidence is needed in support of such effect, in the second case, only proof of such common general knowledge must be provided by the patent proprietor relying on such an effect. However, there are no such circumstances in the present case.
• As a comment, G 2/21 point 26 can also be cited:  "According to the established case law of the boards of appeal (see CLB, 10th edition, I.D.4.2, and the decisions therein) it rests with the patent applicant or proprietor to properly demonstrate that the purported advantages of the claimed invention have successfully been achieved." 

EPO 

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

T 0449/23 - (II) On evidence (in general)

Key points

• The Board provides a useful overview of the general rules on evidence. 
• (a) The legal burden of proof is the duty of a party to persuade the deciding body of allegations of facts on which the party's case rests. In principle, a party must prove alleged facts (assertions) from which it infers a legal consequence, i.e. which establish the basis for the party's legal claims. Thus, the allocation of the burden of proof depends on a party's substantive case.
• (b) To discharge its legal duty of persuasion, a party must prove the alleged facts by appropriate evidence to the required standard of proof. The party with whom the legal burden of proof lies therefore bears the risk that the alleged facts remain unproven, i.e. that the deciding body has not been persuaded in accordance with the required standard of the existence of these facts. In this case, the deciding body will decide against that party and reject its legal claims. Thus, the legal burden of proof requires the production of appropriate evidence to persuade the deciding body to the required standard.
• See also my recent analysis of T2463/22 of a (possibly) somewhat different approach. 
• (c) In principle, the legal burden of proof does not shift. References in the case law to a shift of burden of proof relate to the so-called evidentiary/evidential burden of proof (see for this distinction T 741/91, point 4.3). The notion of evidentiary/evidential burden of proof relates to the state of the evidence produced in the course of proceedings. Once the party bearing the legal burden of proof has adduced sufficient evidence to support its allegations of facts to the required standard of proof, the onus is on the adverse party to rebut the asserted facts by adducing appropriate evidence. Otherwise, the adverse party risks that the deciding body is persuaded of the existence of the facts and allows the claims. Thus, if the party having the legal burden of proof has made a "strong case" by filing convincing evidence, the onus of producing counter-evidence shifts to the adverse party (see e.g. T 859/90, reasons, points 2.2.2 and 2.2.3). However, this does not mean that the legal burden of proof is on the adverse party to prove the non-existence or the contrary of asserted factual allegations. It is sufficient that the adverse party raises substantiated doubts that prevent the deciding body from being persuaded of the existence of the alleged facts.
• In practice, of course, and differently from Dutch civil procedure, parties are not informed of such a shift of the evidentiary burden, and the Board does not invite parties to submit counter-evidence. 
• (d) In opposition and opposition-appeal proceedings, each of the parties carries the legal burden of proof for the asserted allegations of facts on which their respective substantive case rests.
• This seems correct, though a somewhat open question is whether the standard of review of factional findings by the opposition division is deferential or de  novo, with a related question about whether the burden of proof of the appellant can be different from the one in the first instance procedure. 

EPO 

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

T 0449/23 - (I) Resin blend E6300

Key points

• This decision contains many interesting points. In this post, something about commercially available products identified only by a tradename.
• "Example A of D5 [US 2004/0050704 A1] describes the preparation of an electrodeposition bath used to prepare electrodeposition coating compositions by mixing the following components (D5, paragraph [0044], table): - Resin blend E6300, "a resin blend available from PPG Industries, Inc.""
• "The sole matter of dispute was whether "resin blend E6300" of example A (D5, table in paragraph [0044]) is a resin emulsion (i) comprising an aminated resin (A) and a blocked isocyanate curing agent (B) as required by claim 1."
• "To the patent proprietor's advantage, it is assumed in the following that resin emulsion (i) with components (A) and (B) of claim 1 of the main request is not disclosed in example A of D5. More specifically, it is assumed that neither resin blend E6300 nor information pertaining to the nature thereof was made available to the public on the effective date of the patent."
• "the objective technical problem can only be formulated as proposed by the opponent, namely as the provision of an appropriate resin for the preparation of the cationic electrodeposition coating composition according to example A of D5."
• " The board agrees with the opponent that the solution to this problem is obvious in view of D5 alone. Specifically, paragraph [0023] of D5 discloses acid-solubilised reaction products of polyepoxides and primary or secondary amines as possible cationic electrodepositable resins, and states that these amine salt group-containing resins are usually used in combination with a blocked isocyanate curing agent. "
• "The subject-matter of claim 1 of the main request therefore lacks inventive step over D5."
• As a comment, and subject to G 1/23 (still pending at the time of writing): Is the example enabled? Should we treat Example A of D5 in this respect as a document or as a commercially available product? 
• If Resin blend E6300 is deemed to be enabled, is its composition disclosed? 
• In the case at hand, the dispute may also have been whether the commercial product met the definition of the resin emulsion in the claim and whether that was proven. 

EPO 

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