T 0089/23 - A sensible interpretation of Art. 13(1) RPBA

Key points

• "The board does not interpret Article 13(1) RPBA as requiring an amended claim set to overcome all objections raised by another party in the appeal proceedings. 
• Requiring that all alleged objections be addressed as a precondition for admission would unduly restrict the patent proprietor's means to defend its case, particularly in the case of a multitude of objections to different claims, the relevance or persuasiveness of which is disputed and thus open for consideration by the board. The appellant's [opponent's] interpretation would require a patent proprietor as a precaution to file permutations of claim sets which address all the objections raised by the opponents individually and in combination in order to anticipate an adverse decision on one or more or possibly all of these objections. Otherwise a patent proprietor would have to overcome all objections irrespective of their merit in order not to lose the patent. A large number of requests would certainly not be in the interests of procedural expediency, but rather burden all parties and the board. Consequently, an amendment cannot necessarily be deemed inadmissible merely because it does not address all objections raised by an opponent."
• To cite   T 855/96, "it serves to ensure legal peace [Rechtsfrieden] and the acceptance of the decisions of the Boards of Appeal ... when these decisions take into account the entire matter submitted in the appeal proceedings." (in translation). 
• Dated as that decision may be, the principle stands: the more matter is considered by the board, the more likely it is correct on the merits and the easier it is to accept (for the losing party). This desirable aim must be balanced against the length of the procedure. 

EPO 

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

T2328/22 - Res judicata against the intervenor

Key points

• In the first appeal, the Board decided to maintain the patent in amended form with a description to be adapted, and remitted the case.
• An accused infringer intervenes during the procedure before the OD after the remittal.
• Can the accused infringer contest the allowability of the claims?
• The Board concludes the accused infringer can not.
• The Board, in translation: "the board follows T 0694/01, which concerned a similar situation to the present case. In a first opposition appeal, the case was remitted to the opposition division for adaptation of the description. The intervention of the other opponents occurred subsequently, during the second opposition appeal. In T 0694/01, the question was discussed whether the intervener, as a party not previously involved in the proceedings, could still challenge the wording of the claim considered allowable by the board of appeal by raising new facts (in the form of a new ground for opposition), thus raising the same issue as in the present case."
• "In T 0694/01, the board denied the immediate res judicata effect of the board of appeal's decision against the intervener, but concluded that the res judicata effect of the decision against the previous parties to the proceedings could not be called into question (Reason 2.15)."
• The Board, in T 0694/01: "2.15 Die Beitretende beruft sich ferner darauf, daß die Entscheidung vom 27. Januar 2000 über den Wortlaut der Patentansprüche für sie nicht rechtsverbindlich sei, weil sie nicht an dem Verfahren beteiligt war. Auch die Kammer verneint eine unmittelbare Rechtskraftwirkung dieser Entscheidung gegenüber der Beitretenden, kann sich aber deren Schlußfolgerung nicht anschließen, daß durch den Beitritt auch die Rechtskraftwirkung der Entscheidung gegenüber den bisherigen Verfahrensbeteiligten in Frage gestellt werde."
• The Board then largely follows T 0694/01, which is a carefully reasoned decision.
• "In summary, there is therefore no apparent reason to deviate from the convincing arguments in Reasons 2.20 of T 0694/01 that an intervener joins a foreign proceeding and must consequently accept the proceedings in the state in which it finds itself at the time of the intervention."
• I don't know how this applies to the binding effect of ratio decidendi in the case of a remittal for further prosecution. There must be case law about it. Hints in the comments are welcome. 

EPO 

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

T 0928/23 - Can a claim be novel over itself?

Key points

• D3: EP14306121.6 (EP 2 965 760 A1) is a prior right under Art. 54(3) having as claim 1: composition comprising : - an effective amount of a first antiretroviral agent, said first antiretroviral agent being tenofovir, or a salt or a solvate or a prodrug thereof, and an effective amount of at least a second antiretroviral agent, said second antiretroviral agent been chosen among the group consisting of: lamivudine, rilpivirine, efavirenz, raltegravir, or a combination thereof, or a salt or a solvate or a prodrug of the above, for its use for the prevention or the treatment of chronic inflammatory diseases." Claim 2: wherein the said auto-inflammatory diseases is chosen among the group consisting of: psoriasis, sclerodermia, schizophrenia, autism, Alzheimer's disease,
• Claim 1 under examination:  "1. Reverse transcriptase inhibitor for use in the prevention or treatment of a degenerative disease selected from Parkinson's disease and Alzheimer's disease, said reverse transcriptase inhibitor being selected from: - nucleoside inhibitors, - Efavirenz (EFV), 
  - Nevirapine (NVP), - Delavirdine (DLV), - Etravirine, and - Rilvipirine."
• The Board disagrees with the OD  and considers that claim 1 under examination does not exclude combination therapy.
• The Board, in translation: "The Board considers, however, that the subject-matter of claim 1 is novel vis-à-vis D3, because the treatment of Parkinson's disease or Alzheimer's disease by the combinations of active agents given in D3 is not directly and unequivocally disclosed in that document and that document reveals that only certain retroviral agents or their combinations are actually active."
• "This document thus provides no evidence of the potential activity of an isolated compound as claimed, in the treatment of inflammatory diseases, even less for the treatment of Parkinson's or Alzheimer's diseases."
• "It cannot be concluded that the teaching of D3 demonstrates that one of the claimed reverse transcriptase inhibitors would make it possible to treat Parkinson's or Alzheimer's diseases."
  
• "The subject-matter of claim 1 is novel over D3 and the main request meets the requirements of Article 54 EPC."
• Which shows that a claim can be novel over itself, it seems to me. And shows that the claim under examination benefits from the magic 'it works' implied feature (G2/88 r.9 - link to para), whereas the same claim, when in the published patent application, does not. 
• The Board also considers the claimed subject-matter to be inventive (over other prior art). 

• EPO

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

T 0933/23 - The boundary between functional features and results-to-be-achieved

Key points

• The Examining Division rejected the claims under Art. 84.
• The Board: "The feature of "allowing a radial displacement" in the characterising portion of claim 1 is defined in terms of a function which is close to the technical effects the application seeks to provide. The current case thus concerns the boundary between allowable functional features (dealt with in the Guidelines, F-IV, 6.5, []) and an unallowable definition of the invention in terms of a result-to-be-achieved, amounting in essence to the problem underlying the application (Guidelines, F-IV, 4.10, []), in which case essential features defining the invention are missing (Guidelines, F-IV, 4.5 [])."
• "The Board appreciates the examining division's scrutiny and diligence in this regard (see G 1/24, Reasons 20)."
• In the case at hand, claim 1 of the new main request meets the requirements of Article 84 EPC for the reasons set out in the following.
• "The Board firstly notes that the characterising feature does not relate solely to effects or results to be achieved, but specifies the structural feature of the connection, namely that "the valve element is fixed to the lead nut in axial direction" by a technical means, namely a "spring element". For this reason alone, the subject-matter of the invention in the characterising portion is not solely defined in terms of the problem to be solved."
• "The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element. The proposed solution resides in the provision of a more flexible connection that transmits axial movement while allowing some radial play (radial displacement). The technical effects of this solution include relaxed positioning demands at manufacture without increasing wear, and the problem could thus be considered to reside in the provision of these effects."
• " the functional feature of the connection "allowing a radial displacement" is directed to an element of the solution (flexible connection), not to the technical effects or the problem underlying the solution, and is thus not defined in terms of an unallowable "result-to-be-achieved"."
  
  
• "It is generally accepted that the definition of a feature in terms of its function is acceptable, if a skilled person understands, without exceeding their normal skills and knowledge and without undue burden but if necessary with reasonable experiments, how to reduce it to practice and if it can be determined without ambiguity whether the claimed functional requirement is satisfied by a given prior art"
• (follows a technical analysis)
• "Hence, the skilled person knows how to put the functional feature into practice. Moreover, the Board has no doubt that it can also be determined without ambiguity whether a given construction fulfils the claimed function. It is thus not decisive whether the functional expression can or could have been formulated differently, e.g. in structural terms."
• "Essential features are those features which are constitutive for the definition of the invention, that is, all features which are necessary for solving the technical problem with which the application and the claim is concerned. In this regard, Article 84 EPC not only requires that the claimed subject-matter is comprehensible, but also that it contains a clear definition of the object of the invention by defining all essential features thereof"
• In the Board's view, the features in the characterising portion are sufficient for defining the invention and for solving the stated problem discussed in point 3.2.3.
• Point 3.2.3, in part: "In the Board's view, the problem of "ensuring a long lifetime with low production costs", as stated in the application (page 1, lines 25 to 26) and submitted by the appellant, is too broad. The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element."
• The Board does not simply say that it is the applicant who decides what features are "essential". 
• 
  

EPO 

The link to the decision can be found 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 0387/25 - EPO Customer Service tickets and the electronic file

Key points

• The Board confirms that if the drawings are omitted from the Druckexamplar by the EPO by mistake with an unmarked change, an appeal will be admissible and allowable, notwithstanding Rule 71(5) EPC. Hence,  "[ T 265/20] remained a single decision and was not followed by other boards. "
• The Board notes that the Guidelines are not yet aligned with the case law on the point.
• ""It may be that the examining division refrained from granting interlocutory revision because the Guidelines for Examination (e.g. in Part H, Chapter VI) do not yet properly distinguish between cases where a mistake was already contained in an applicant's request or was explicitly approved by an applicant, and cases like the one at hand: where an examination board [sic], by mistake and unintentionally, deviated from the appellant's latest request when listing the documents intended for grant in a communication under Rule 71(3) EPC and this was neither pointed out to the applicant nor explicitly acknowledged by it."
• "4.1 As outlined above, the drawings were already missing from the A1 publication, which was an error made by the EPO over which the appellants had no influence. The appellants had brought that error to the attention of the EPO (point V.), but there is no indication in the electronic file that the EPO had taken any measures to address this issue, to arrange for a corrected publication of the application and to ensure that this error would not be perpetuated through the examination proceedings and grant of the patent. In fact, neither the appellants' initial enquiry with the EPO (generating a "ticket") nor the emails exchanged with the formalities officer have been documented in the electronic file as they should have been."
• I believe the part in bold is different from current practice, at least any EPO Customer Service tickets are not in the public online part of the file. 
  
  
• There is also an interesting part about the protection of legitimate expectations created by information given by the formalities officer during a phone call. 

EPO 

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

T 0697/22 - G 1/25 referral - Adaption of the description

Key points

• Old news, but for completeness' sake: questions about the need to adapt the description to the allowable amended claims were referred to the Enlarged Board. The referral is pending as case G 1/25 since the end of July 2025.
• The composition of the EBA was recently announced. The EBA shall consist of chairperson Josefsson, legally qualified members Beckedorf, Rogers, R. Arnold (GB) and E. Chatzikos (GR) as 'external members', and Pricolo and Bekkering as technically qualified members. 
• Rogers is the rapporteur in the case, as he was also in G 1/24. Let's hope the decision will be as short and favourably received as G 1/24. 
• Josefsson and Beckedorf were also on the panel of G 1/24. Pricolo is the Chair of Board 3.2.01 who referred the question in G 1/24. 
  
  
• The referred questions:
•  1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency? 
• 2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation? 
• 3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?"
• The referring decision contains a helpful overview of the case law on these issues.
• Incidentally, the EP entry was in 2009, the grant in 2019 (!). 

EPO 

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