T 1874/23 - (II) Häufungsgrundsatz

Key points

• The TBA rejected a request for re-establishment of the appellant-applicant (late filing of the notice of appeal and statement of grounds) without advance notice (and without holding oral proceedings despite these having been requested).
• The Board:  As outlined above, a request for re-establishment must substantiate the grounds and facts within the time limit of Rule 136(1) EPC (see also Article 114(2) EPC).
• Indeed, Rule 136(2) EPC specifies that "The request shall state the grounds on which it is based and shall set out the facts on which it relies.".
• "Thus, the factual basis for the requested decision cannot be altered after the expiry of the time limit for the request (Case Law, III.E.4.4, see J 19/05, Reasons 4, 5; T 585/08, Reasons 9; T 479/10, Reasons 2.1; J 15/10, Reasons 3.2; J 6/22, Reasons 14; T 178/23, Reasons 5.2.1)."
• Note, the legal term 'altered' does not mean 'can not be supplemented or further elaborated'. Probably, you cannot switch from the ground 'sudden illness' to 'a hacker in our IT systems', but adding more details about how sudden the illness was, is not excluded by the phrase  'the factual basis cannot be altered'.
• J 15/10: "present the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned" (emphasis added).
• J 19/05: "Ein Nachschieben von (neuen) Tatsachen, die einen anderen Hindernisgrund betreffen, ist daher unzulässig." ...  "Auch ein auf allgemein gehaltene Behauptungen gestützter Wiedereinsetzungsantrag, der keine individualisierbaren Tatsachen enthält, genügt nicht der Begründungspflicht nach Artikel 122 (3), Satz 1 EPÜ [1973] und ist daher mangels Substantiierung als unzulässig zurückzuweisen." (emphasis added)
• 
  
• "20. This requirement for immediate and complete substantiation of the request corresponds to the principle of "Eventualmaxime" or "Häufungsgrundsatz" in contracting states with a German law tradition ("le principe de la concentration des moyens" in France), under which the request must state all grounds for re-establishment and means of evidence without the possibility of submitting these at a later stage.
• Note, 1) the EPO legal rule, by very definition, cannot be the German rule as such - they are different legal instruments, so the meaning of 'corresponds to' must be considered;
• 2) The German rule apparently includes "means of evidence", which is not mentioned in Rule 136(2) EPC (and must have been intentionally left out by the legislator, in which case the EPC legislator apparently did not wish to adopt the German approach) (see T324/90 - "it is not necessary that the application for re-establishment of rights provide any prima facie evidence for the facts set out in it, nor is it necessary that it indicate the means by which those facts are supported");
• 3) The Board does not explain why the EPO rule would be the same (in substance) as the German rule;
• 4) In view of Article 125 EPC, it cannot be assumed that EPC procedural law is the same as German law, or the national law of any other EPC contracting state, or that any (perceived) lacuna in the procedural provisions of the EPC must be filled in in accordance with German law (Art. 125 EPC: " the principles of procedural law generally recognised in the Contracting States")
• The Board does not explain why it refers to German law and not the law of another EPC contracting state.
• The TBA refers to: "see e.g. Foerste in Musielak/Voit, ZPO, 21**(st) edn. 2024, § 282 Rn. 4 f); Deixler-Hübner in Fasching/Konecny, Zivilprozessgesetze, 3**(rd) edn. 2017, II/2 § 149 ZPO; Gitschthaler in Rechberger/Klicka, ZPO, 5**(th) edn. 2019, §§ 148 f 2; Article 1355 du code civil, Cass. ass. plén., 7 juillet 2006, n° 04-10.672)."
• Article 1355 du code civil - France is about res judicata (link);
• Cass. ass. plén., 7 juillet 2006, n° 04-10.672 (link) is also about res judicata, or claim preclusion (second litigation of the same claim on a different legal ground (first: salary, second procedure: unjust enrichment; in litigation against a father's estate).
• Res judicata is indeed a generally accepted principle. However, it is not relevant to the case at hand, where there is a request for re-establishment, not an earlier decision of the EPO.
• I don't have quick access to the cited German handbooks.
•  The term Eventualmaxime was also used in J14/21, but in that case, the Examining Division had admitted the additional factual assertions. The Board, in the appeal against the refusal of the request, did not admit further factual assertions, which is in line with Art. 12(6) RPBA. Hence, the term was used obiter (and without references to the German handbook and French decision). The same applies to "Häufungsgrundsatz". In other words, the Board is not simply recalling established EPO case law (indeed, the decision does not cite case law on this point). 
• 21. Only if this requirement for immediate and complete substantiation within the time limit has been fulfilled, might it be permissible to complement the facts and evidence in later submissions, and provided that they do not extend beyond the framework of the previous submissions (see J 5/94, Reasons 2.3; J 19/05, Reasons 5; T 585/08, Reasons 9; J 15/10, Reasons 3.1; see also J 8/95, Reasons 3; T 324/90, Reasons 5).
• Here, it is unclear if the Board refers to the German requirement (for immediate and complete substantiation of requests for re-establishment), or to Rule 136(2) EPC, or if the Board has just decided that Rule 136(2) EPC, first sentence, is in substance the same as that German rule.
• Note: Would the requesting party have had a right to present orally arguments about the correct legal interpretation of the first sentence of Rule 136(2) EPC during the oral proceedings that had been requested by them (but were refused by the Board)?
• As already noted in  T324/90, the language versions of Rule 136(2) differ. The German version of the first sentence is "Der Antrag auf Wiedereinsetzung ist zu begründen, wobei die zur Begründung dienenden Tatsachen glaubhaft zu machen sind." The French version: "La requête doit être motivée et indiquer les faits invoqués à son appui". The English version: "The request shall state the grounds on which it is based and shall set out the facts on which it relies." Only the German version seems to suppose that the facts are not merely stated or indicated, but are supported by evidence (" glaubhaft zu machen"). Of course, the three texts are equally authentic (Article 177).  
• 22. As outlined above, this is not the case here for the request for re-establishment in these proceedings. In particular, no factual assertions were made at least on the provision of supervision and/or an independent cross-check mechanism in [US patent attorney firm T] to make for a normally satisfactory monitoring system. (...)

• 25. ... Given the inherent restrictions for factual assertions outside the time limit for the request of re-establishment in these proceedings (the principle of "Eventualmaxime", see above), the appellant is even prevented from validly submitting new factual assertions at this stage, including in oral proceedings.
• The phrase 'inherent restrictions' seems to refer to the provision of Rule 136(2) EPC, as interpreted.
• The Board's analysis of Rule 136(2) could have been more complete by including an application of the grammatical, systematic, and theological methods of interpretation in the written decision and a reference to the travaux préparatoires. 

EPO 

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

T 0564/23 - A non-obvious alternative (fermentation of fruit juice)

Key points

• "The patent is directed to a process for the preparation of a concentrated liquid foodstuff having a low alcohol content"
• "Claim 1 of the patent is directed to a process in which a mixture of a juice concentrate and a carbohydrate with a yeast is subjected to fermentation to obtain a concentrated liquid foodstuff with an alcohol content lower than 15 g/kg of concentrated liquid foodstuff."
• "the parties agreed that the total acidity of at least 25 g/L is not disclosed in D1. Therefore, the total acidity is the distinguishing feature of claim 1." 
• "The parties disagreed as to whether this difference causes a technical effect. The [proprietor] referred to the patent, in particular paragraphs [0068] to [0076] and Figures 1 to 3, which allegedly all showed that an improvement in flavour occurred."
• The Board:  "there is no credible evidence demonstrating that the distinguishing feature causes an improvement in terms of flavour or desired aromatic components"
• I wonder if 'better taste' would be a technical effect (in general), but that is not relevant for the present case.
• "Accordingly, as the opposition division correctly assessed, the problem to be solved is to provide an alternative process of preparing a concentrated liquid foodstuff."
• The Board finds the claim to be non-obvious: "The skilled person starting from the examples of D1 would have realised that the grape sweet musts used in these examples already have the required, preferred pH. As the respondent explained, these compositions have a pH value of about 2.9. Therefore, the skilled person would have had no incentive to adjust the pH value. They would not have added further acid, such as citric acid, to the compositions of the examples."
•   It follows from this that in view of the closest prior art D1 alone, the solution provided by the subject-matter of claim 1 constitutes a non-obvious alternative."
• " the examples of D1 provide a consistent teaching involving several process steps to obtain beverages having an alcohol content that is lower than 15 g/kg of beverage. In view of this, the skilled person would have had no motivation to inhibit the fermentation process by adding an acid, let alone to prematurely stop the fermentation process. The reason for this is that D1 already provides teaching that would lead them to the desired product. It would not have been obvious to the skilled person to depart from the teaching of D1 and ferment a juice with high total acidity under the conditions specified in D1."
• " The board fails to see the relevance of the cited decision [T 641/00, Comvik]  for the invention under scrutiny. Total acidity is not a non-technical feature. It is a technical feature that typically defines and characterises fruit juices, as can be seen from the prior art cited in these proceedings. In the case in hand, the total acidity qualifies and restricts the fruit juices used in the process of the patent in suit. Consequently, it contributes to the technical character of the fermented mixture." 
  
  
• There are some interesting further comments on inventive step.

EPO 

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

T 0438/19 (II) - After G 1/23

Key points

• After the decision of the EBA in G 1/23 - Commercial Products - the TBA issued a preliminary opinion.
• Oral proceedings took place on 15.10.2025. During the oral proceedings, the Board announced a conclusion on inventive step. The minutes do not mention what the Board's conclusion was.
• In reply, the proprietor disapproved of the text of the patent.
• The TBA now revokes the patent without substantive reasoning.
• The oral proceedings lasted from 09:00 to 17:10.
• A divisional application was filed, granted, and opposed by the same opponent, with an appeal by the proprietor. The proprietor withdrew its appeal on 15.10.2025 at 18:08.

EPO 

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

T 1408/23 - A commercially available polymer

Key points

• "In Example 1 of D1 [the closest prior art], the [pressure-sensitive adhesive (PSA)]  polymer in layer 3 is a polyisobutylene (PIB) and the PSA polymer in intermediate layer 2 is Duro-Tak 87-2852 (paragraphs [0108] and [0109]). The parties did not dispute that Duro-Tak 87-2852 was a well-known and commercially available crosslinked polyacrylate generally used in TTS. This was confirmed by D12, which discloses a selection of commercially available PSA polymers for use in TTS."
• G 1/23 is not mentioned, but this reasoning is consistent with it. G 1/23 was issued a couple of weeks before the (oral) decision in the present case.
  
  
• On the objective technical problem
  " the examples in the patent show that a TTS in accordance with claim 1 retains its adhesive properties during storage. This technical effect has not been compared with the TTS of the closest prior art, but there is no reason to believe that the TTS of claim 1 is superior to or substantially different from the one in Example 1 of D1: as stated in paragraph [0090] of the patent, the maintenance of the adhesive strength during storage is attributed to the fact that the TTS has two PSA layers, a feature that is also present in the TTS of the closest prior art. Consequently, it cannot be concluded that the distinguishing features produce any technical effect over the TTS of the closest prior art."
•  "In the absence of a technical effect over the closest prior art, the objective technical problem has to be defined as the provision of an alternative TTS."
• "The respondent [proprietor] argued that, even if no technical effect has been demonstrated in comparison with the closest prior art, the technical effect shown in the patent has to be considered in the definition of the objective technical problem."
• "In the Board's view, the technical effect shown in the patent is implicitly considered when the objective technical problem is defined as an alternative. As set out above (point 1.4), it can be expected that the TTS in Example 1 of D1 also maintains its adhesive strength during a certain period of storage. This seems reasonable on its own, given that TTS are not prepared in situ and must retain their adhesive strength for at least a period extending from preparation to commercialisation and application by the final user. Thus, whether the objective technical problem is defined as an alternative or as an alternative which maintains adhesive strength during a period of storage does not change the situation."
  
  
• Commerical products as combination prior art
• "Considering that the essential function of PIB in Example 1 of D1 is to provide good adhesion to skin, the skilled person looking for an alternative would turn to the common PSA polymers used in TTS and select in the first place those providing the highest adhesiveness. Such PSA polymers are disclosed in D12 and, in line with the alternative proposed in paragraph [0097] of D1, are all polyacrylates with the exception of Duro-Tak 87-6908, which is a PIB (last entry of the table in D12). In D12, the most adhesive polymers appear to be non-crosslinked polyacrylates, Duro-Tak 87-2051 clearly being the product with the highest adhesiveness. Therefore, in the light of the teaching in D1 and D12, the skilled person would replace the PIB in Example 1 of D1 with Duro-Tak 87-2051. This appears also to be the non-crosslinked polyacrylate used as the second PSA in the patent examples."
• D12 is "DURO-TAK and GELVA Transdermal Pressure Sensitive Adhesives - Product Selection Guide, Henkel,"
• Whether the skilled person could make "Duro-Tak 87-2051" was not relevant to the decision, entirely in line with G 1/23. 
• "Consequently, the skilled person willing to provide an alternative TTS to the one in Example 1 of D1 would arrive at the subject-matter of claim 1 of auxiliary request 3 in an obvious manner in view of D12."

EPO 

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

T 0792/24 - Fewer side efffects as second medical use

Key points

•  This opposition appeal is about a second medical use claim. 
• Claim 1: "Plinabulin for use in reducing the neutropenia rate of a grade 3 or 4 neutropenia in a subject being administered with 75 mg/m² docetaxel, wherein the plinabulin is administered intravenously ". 
• The compound docetaxel is used for treating cancer and causes neutropenia (lack of white blood cells). It was found that plinabulin mitigates this side effect.
• "The Board considers that present claim 1 indeed defines a purpose limited product claim in the sense of Article 54(5) EPC. As stated in the impugned decision, the Board considers that the skilled person would understand the use of claim 1 as relating to the alleviation of neutropenia as a side effect of docetaxel treatment per se, i.e. in comparison to the treatment with docetaxel alone."
• "preventing the side effects induced by a therapy has a significant clinical value, and there is no justification for excluding this from being regarded as a form of prophylactic treatment." ... "the claimed use is prophylactic to the extent that it is administered before the side effect can be observed and reduces the occurrence thereof"
• "D5 is an abstract reporting the results of a phase II clinical study of docetaxel alone or in combination with plinabulin in patients with non-small cell lung cancer (NSCLC). "
• "the results section of D5 unambiguously discloses the reduction of incidence of docetaxel induced neutropenia in general when administering plinabulin"
• "The Board comes therefore to the conclusion that there is no direct and unambiguous disclosure in D5 that plinabulin indeed reduces the rate of neutropenia of specifically grade 3 and/or 4." (This is the first distinguishing feature)
• D5 also failed to teach a recited feature of the administration. " No particular effect has been brought forward for the administration time (feature (ii)). This feature was therefore arbitrarily chosen and cannot contribute to an inventive step."
• For the first distinguishing feature: "It follows that, while the provided data substantiate that plinabulin is indeed effective to reduce the rate of neutropenia grades 3 and 4 as well as grades 1 and 2, no greater reduction of grades 3 and/or 4 compared to grades 1 and 2 is achieved."
• The Board undertakes an enquiry into the technical effect of the distinguishing feature. However, the feature recites an effect (in my view), so this part of the reasoning is not entirely clear to me. 
• "starting from D5, the objective technical problem can only be formulated as the provision of a further use of plinabulin in docetaxel cancer therapy"
• " The [proprietor] argued that the skilled person would not have had any reasonable expectation of success of using plinabulin to reduce the rate of the clinically more relevant neutropenia grade 3 or 4, in particular to the extent shown in the patent and D16."
• The Board disagrees.
• "In view of the general disclosure of D5, the skilled person would anticipate that administering 30 mg/m**(2) of plinabulin would effectively mitigate the decrease in neutrophil counts in a subject in general, i.e. also in subjects susceptible to have decreased neutrophil counts corresponding to neutropenia grade 3 or 4. The appellant [respondent, I think, i.e. the proprietor] did moreover not provide any evidence that the effect of plinabulin in limiting the reduction of neutrophil count in a subject would be different depending on the level thereof. The skilled person would therefore expect that administering 30 mg/m**(2) of plinabulin would also be effective in reducing the rate of neutropenia grade 3 or 4."
• The subject-matter of claim 1 of the main request is thus not inventive when starting from D5 as the closest prior art.
  
  
• An auxiliary request specifying a dose of the plinabulin is found to be inventive. 
•  "The Board however agrees with the [proprietor], that the data in Figure 5 of the patent and in Table 1 of D16 show that the reduction of the occurrence of docetaxel induced neutropenia of grades 3 or 4 with 20 mg/m**(2) plinabulin is at least as good as with 30 mg/m**(2) plinabulin. That such an effect is achieved with the much reduced dose of 20 mg/m**(2) represents an improvement which is to be taken into account for the assessment of inventive step."
• " starting from D5, the skilled person would not have expected that the 20 mg/m**(2) plinabulin dose would be at least as effective as the significantly higher 30 mg/m**(2) dose in reducing docetaxel induced neutropenia rates of grades 3 and 4. While the skilled person would have expected some effect in reducing docetaxel induced neutropenia grades 3 or 4 also with 20 mg/m**(2) plinabulin, the extent of the reduction obtained compared to the 30 mg/m**(2) dose would not reasonably have been expected."

EPO 

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

R 16/23 - epi Position Paper on the right to oral proceedings, upcoming hearing

Key points

• epi has submitted observations dated 22 April 2025 in case R 16/23 - limits on the right to oral proceedings following from J 6/22. This was also announced in an edition of the epi newsletter. 
• The letter can be found here on the epi website (also here: https://patentepi.org/en/epi-papers/position-papers/#/european-patent-practice-committee-(eppc)) and also in the online file of the patent application at issue: 
• epi writes: "headnotes 3 and 4 [of J 6/22] put in doubt the rights of parties regarding oral proceedings as the decision appears to conclude that it is not necessary to appoint oral proceedings when they have been requested by a party but that they are dispensable with following certain conduct by the requesting party. We find this worrying at best and violating fundamental legal principles defined in both the EPC as well as the major national jurisdictions of the EPC member states." ...
•  "In view of the potentially far-reaching consequences of the outcome of the present review proceedings, we encourage you to ask for amicus curiae submissions by the interested circles so that you are in a position to indicate that, in this respect, the decision on J6/22 should not be followed."
• Oral proceedings in case R 16/23 are scheduled for 21 November 2025, by videoconference, and are public. 
• "Members of the public can follow oral proceedings held by VICO remotely by sending an email in advance to reception-haar@epo.org."

EPO 

The link to the file wrapper can be found after the jump.

T 1874/23 - (I) So many questions to ask (re-establishment)

Key points

• This decision concerns a request for re-establishment for the late filing of the appeal (and the statement of grounds).
• The applicant is a (human) person in the USA; the registered representative is a firm in Germany. In between are Mr T, a USA patent attorney, a solo practitioner (I think), and Mr S, who is a US Patent Attorney and a European patent attorney. 
• The decision to refuse the patent application was received by the firm and forwarded to Mr S. Mr S (or his office manager) forwards the decision to Mr T, and sends a reminder. No confirmation of receipt was received from Mr T. 
• There, the request for re-establishment becomes vague, but it is clear that no entry was made in the file of Mr T of the refusal decision. The paralegal in the office of Mr T is blamed, i.e., an isolated mistake by an assistant in an otherwise well-functioning system is invoked.
• From the request: "due to an isolated error, [the paralegal]  has never informed[Mr T] about this deadline nor entered the deadline into the [] docketing system. Due to this isolated error by [the paralegal], the appeal deadline is notably absent in the docketing system"
• The public online file contains a declaration of Mr T, stating inter alia that "I delegated docketing responsibilities to the firm paralegal, Ms V ("the firm paralegal") who routinely checks my email account [...] and dockets deadlines from incoming correspondence, predominantly from incoming emails. After docketing, the firm paralegal typically reports deadlines and required actions to the client and cc's me." 
• Mr T does not declare that he personally saw or processed any email from Mr S (or Mr S's office) about the refusal decision.
• There are no declarations of Ms V attached to the request for re-establishment. 
• The Board:  "already on the basis of the appellant's own assertions, it cannot be concluded that (at least) [law firm T's] system of recording and monitoring time limits was water-tight, and that an effective system of cross-checks was in place, as required to provide for a "normally satisfactory monitoring system". While the declarations filed alongside the request for re-establishment somehow add to its factual assertions (...) also no reasons can be found to the contrary." 
• "neither from the request for re-establishment nor from any of the declarations or other documents appended to this request, it could be concluded that any kind of supervision of paralegal V. by experienced US patent attorney T. or any other person in T. Law was in place."
• "nothing is said therein about a system of cross-checks in general, which would have worked independently from the IP docketing system, and the less so why such system would have failed in the present case."
• " Thus, on the basis of the appellant's own submissions and factual assertions alone, it has to be concluded that "all due care required by the circumstances" has not been taken. Against this background, it does not need to be examined whether there were further issues regarding the actions and supervision of any of the other actors involved in the present case."
• Note, it concerns the absence of information in the request for re-establishment.
• What kind of information did the TBA expect: bullets added by me: 
• "nothing is said, at all, 
• why any such system, insofar as in place, at all, did not work in the present case, if the additional entry in the calendar book, if foreseen by their "standard procedure", was made or was not made, for whatever reasons, 
• who might have separately monitored deadlines/entries in the IP docketing system and/or the calendar book, or for whatever reason this has not been done yet, 
• or that any alert would have set off, and/or why such alert had not been followed up, and/or that T. had been made aware of the deadline or not, for whatever reason, and if, or why not, they had enquired themselves about the fate of the deadline, 
• or any other form of supervision that would have normally - and also here - kicked in. 
• Thus, nothing is said that could explain an "isolated error" in a "normally satisfactory monitoring system". Such normally satisfactory system was apparently absent, and no submissions were made to the contrary."
• The Board did not invite the appellant to submit this information, but rejected the request for re-establishment without advance notice and without oral proceedings despite these being requested.
• The point is: in the context of by their nature open-ended enquiries about due care, isn't it logical that the Board can ask many questions? Shouldn't the requester be given an opportunity to answer the questions raised in the decision (provided, of course, that the party remains in the factual framework defined in the request for re-establishment and does not suddenly invoke new grounds)?
  
  
• It is remarkable that the requester invokes an 'isolated mistake', while it can also be derived from the stated facts that the paralegal processed neither the first email (on 30.11.2022) about the refusal decision, nor the reminder (oon 11.01.2023).

EPO  

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