T 1223/23 - To guarantee that the decisions, based on the facts and evidence adduced, are substantively correct

Key points

• A decision with some rather general reasoning on the admissibility of new facts (or arguments) in an appeal. 
• "During the oral proceedings before the board, the appellant [proprietor] submitted - for the first time in appeal proceedings - that document D2 could not be relevant to the novelty assessment of the subject-matter of claim 1 because, in the scheme of D2, the determination of the PUCCH format was done at the UE [user equipment, e.g. mobile phone], whereas granted claim 1 concerned the BS [base station]."
• "In the decision under appeal, the opposition division found the main request not allowable only due to lack of novelty of the subject-matter of claim 1 as granted in view of D2."
• The question is whether to admit this new argument or not.
• "even on the assumption that the board had indeed discretion not to admit a late-filed argument, the board considers that there would be no justification to exercise it here. Once the parties have submitted the relevant claim requests and documents and presented their arguments on them, the board must resolve a number of legal issues falling under its judicial responsibility. These include the interpretation of the claims, the construction of the relevant (prior-art) documents and the proper assessment of their disclosure from the perspective of a skilled person in the respective field."
• "If the board becomes aware, even at a late stage, that its previous interpretation of a (prior-art) document or a claim from the perspective of the skilled person, or its understanding of a prior-art technical teaching, was wrong, in the present board's view, it has a duty to correct that error. This applies irrespective of whether the new understanding arises from the board's own analysis or from a party's new submission."
• "In the present case, to disregard the appellant's argument and keep its original understanding of the scheme disclosed in D2 would force the board to base its decision on an interpretation which it considers erroneous. The procedural framework of the appeal proceedings aims to secure efficient and fair proceedings, but also to guarantee that the decisions, based on the facts and evidence adduced, are substantively correct. In other words, a (technically) correct interpretation of a prior-art document has taken precedence over formal or procedural considerations here. For this reason, once convinced by the appellant's submission, the board adopted it in its assessment of the present case."
• The facts and evidence 'adduced' refer to the admissible factual assertions and admissible evidence. Apparently, in this case, the new argument of the proprietor did not involve new (asserted) facts or new evidence. 
• The Board remits the case, without commenting on whether the difference with D2 provided for an inventive step or not. 
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EPO 

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

T 0807/23 - Applying G 1/23

Key points

• Perhaps unsurprisingly, a case about polymers.
• "In the decision under appeal, the opposition division found that the data provided in D11 did not enable the skilled person to prepare the commercial product Borclear RB709CF disclosed in that document. Therefore, in view of G 0001/92 and T 1833/14, it was concluded that D11 was not state of the art within the meaning of Article 54(2) EPC (contested decision, page 12, first to fifth paragraph)."
• The decision of the OD was taken on 14.02.2023. The referral in case G 1/23 was in June 2023.
•   "In application of [G 1/23], it is clear to the present Board that the reproducibility requirement is no longer a valid criterion to assess whether a product put on the market before the date of filing of the opposed patent or technical information about such a product is state of the art within the meaning of Article 54(2) EPC. This was also not disputed by the parties during the oral proceedings.

  1.4 Accordingly, the product Borclear RB709CF and the corresponding data sheet D11 are state of the art within the meaning of Article 54(2) EPC."

• The proprietor/respondent raised the question of whether document D11 could be taken as the closest prior art. The Board does not make a decision on this question. 

•  Decision G 0001/23 sets out further considerations regarding the use of non-reproducible prior art in relation to inventive step (see in particular points 92, 93, 95 and 96 of the reasons). As these considerations were not available to the parties and the opposition division at the time of the decision under appeal, the case should also be remitted to the opposition division so that it can consider whether D11 is suitable to be taken as the closest prior art in light of G 0001/23 after giving both parties the possibility to take position on the application of the decision of the Enlarged Board to the present case."

• Point 96 of G 1/23: 96. "It follows from the above that disclosed but non-reproducible features of a product may, but need not, flow into the assessment of inventive step. Adding some lemon juice to a glass of Coca-Cola for a less sweet taste may not be inventive simply because the recipe for Coca-Cola is secret and therefore the original taste of Coca-Cola is considered as unattainable. On the other hand, achieving the original taste of Coca-Cola without sugar or caffeine is probably an unsolved problem at the time of writing. There are no formal and strict rules as to how a non-reproducible but publicly available product or any of its properties can be taken into account when inventive step is examined. The relevant technical teaching that a skilled person would take from such a product is always case specific - it depends on both the product in question and the invention under examination."
• As to the first example, would the claim under examination be: "a composition comprising Coca-Cola and lemon juice"? Would that claim be clear? If not, would the claim be " a composition comprising ... [ the secret ingredients of Coca Cola] + lemon juice"?   Is it correct that the EBA stipulates that such a claim would not be inventive, even if the recipe in square brackets was non-obvious? Would it make a difference if the claim were rewritten into a claim for the preparation method?

 

 

• It seems predictable that the Board will have to decide on the question in a second appeal. 

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EPO 

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

T 0712/25 - When the EPO forgets the drawings

Key points

• Yet another case where the EPO omits the drawings from the Druckexemplar, without notice.
• In this case, the applicant spotted the mistake of the EPO and even informed the EPO simultaneously with paying the grant fee and filing the translated claims. Still, the patent was granted without the drawing.
• The Board allows the appeal and reimburses the appeal fee.
• Respectfully, the EPO should make its processing of the drawings more robust. 
• " In the present case, drawing page 1/1 was part of application WO 2020/128200 A1 and was still present in the application when it entered the regional phase. However, it was absent from the 'Druckexemplar' and from the communication under Rule 71(3) EPC. While the appellant was informed of the deletion of page 53 of the description, he was not informed of the deletion of the drawing page. The absence of the drawing page is also inconsistent with the references to Figure 1 in the pages of the description intended for grant (page 46, lines 6 and 16). The Examining Division certainly did not intend to omit the drawing page without reason, in the absence of objections raised against it, without informing the applicant and without deleting the corresponding references in the description, especially since the applicant had already pointed out this omission and had only given his consent to the text intended for the grant of the patent on the condition that the drawing page be included."
• Appeal SoG filed 16.5.2025. Appeal granted 06.10.2025. 

EPO 

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

T 0989/23 - Review of a (purported) decision to admit

Key points

•  Just when you thought the matter was settled - the Boards have no competence to set aside a decision of an OD to admit a submission - comes this decision.
• The Board, in the headnote:  "A board has the power to review an opposition division's procedural decision to consider late submissions filed in opposition proceedings. Otherwise, the parties' right to a judicial review of an essential part of the opposition division's decision would be denied. Moreover, on appeal, a board would be compelled to accept a legal and factual framework even if it is based on an erroneous exercise of discretion"'
• The Board, in the present case, 'unadmits' the auxiliary request that was - formally - admitted by the OD (see below), finds the higher-ranking request to be not allowable (not inventive, unclear), and revokes the patent.
• However, the case is special in that: "On the issue of the admittance of auxiliary request 17, the patent proprietor referred to the minutes of the oral proceedings before the opposition division and to the contested decision, and argued that the opposition division had admitted all of the auxiliary requests, including auxiliary request 17, into the opposition proceedings. Auxiliary request 17 had not been considered by the opposition division since the higher-ranking auxiliary request 3 had been found allowable."
• I doubt that AR-17 was actually admitted, in the applicable legal sense, if the OD did not arrive at it by finding the higher-ranking request AR-3 allowable. The case law about the non-reviewability of decisions to admit applies to matters that were admitted and considered on the merits by the OD.
• The Board examines whether to admit AR-17 in appeal (as if it were filed with the statement of grounds). The reasoning is fact-specific, but supported a decision to not admit the request ("the substantiation of patentability of the subject-matter of auxiliary request 17 in the patent proprietor's statement of grounds of appeal differed from the explanations given during the oral proceedings [before the Board] in support of both the prima facie allowability of auxiliary request 17 and the remittal of the case for further prosecution) 
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EPO 

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

T 2199/22 - List of diseases and sufficiency

Key points

• "Claim 1 of auxiliary request 11 relates to a pharmaceutical or nutraceutical product comprising MK-7, administered at a dosage of 1 to 10 myg/day, with n-3 PUFA in the form of a marine oil, administered at a dosage of 5 g/day, for preventing or treating cardiovascular, bone, or cartilage diseases or disorders in both humans and animals. Claim 1 is thus drafted as [a] purpose-related product claim pursuant to Article 54(5) EPC."
•  For the requirement of sufficiency of disclosure to be met in the case of a claim pursuant to Article 54(5) EPC, the application as filed, when read by a person skilled in the art having the common general knowledge in mind, must establish the functional technical link between the claimed product and the claimed specific use within the meaning of Article 54(5) EPC, namely the prevention or treatment of at least one of cardiovascular-, bone- and cartilage-related diseases or disorders in humans and animals"
• " While the disclosure and evidence in the application as filed [...] may suggest a potential health benefit in terms of prophylaxis or prevention after a longer period of treatment for certain physical conditions, there is no evidence that the claimed combination affects the full range of cardiovascular, bone, and cartilage-related diseases or disorders, such as bone cancer."
• The claim does not recite bone cancer.
• The decision seems remarkable because most often, a long list of diseases to be treated is no problem; even less frequently is insufficiency found based on a subtype of disease that is not explicitly recited in the claims.  
• "The board concludes that the skilled person would not have considered that the claimed product achieves prevention or treatment of cardiovascular, bone, and cartilage-related diseases or disorders over the whole scope of the claim."
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EPO 

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

R0019/23 - Is the Disciplinary BoA a BoA?

Key points

• Article 112a(1) provides that "Any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal."
• The party (EQE candidate) was adversely affected by a decision of the Disciplinary Board of Appeal and filed a petition for review. What could go wrong?
• Well, it turns out that the DBA is not a Board of Appeal (in the meaning of Art. 112a EPC).
• The answer was, for the larger part, already given in D3/20 and D5/82 (point 5 of the reasons): the DBA is not a Board of Appeal in the sense of Article 112 (referral of questions to the EBA). The present decision extends that to Art. 112a.
• The interested reader is referred to the Board's reasoning in the decision. The link can be found after the jump. 
• The DBA and the EQE were set up simultaneously on 21.12.1977. The first EQE regulation can be found in OJ 1978 p.101. The possibility of appeal to the DBA was included from the outset. The first Regulation on Discipline can be found in OJ 1978 p.91.
• Art. 22(3) of the first Regulation on Discipline specifies that Art. 111(1) and (2), first sentence, apply "mutatis mutandis", which indicates that the DBA was not a Board of Appeal: otherwise Art. 111 EPC would have applied directly. This is confirmed by Art. 25 of that Regulation: "1) Article 113, paragraph 1, Article 114, Article 117 with the exception of paragraph 2, Article 125 and Article 131, of the European Patent Convention shall apply mutatis mutandis to proceedings before the Disciplinary Bodies."
• A bit of history of the EQE: "the appellant emphasised that the only possible explanation for the bad results of the first Qualifying Examination [in 1979] as a whole, which 64% of candidates failed, was the restrictive approach and severity of the examiners ..." (D5/82)

EPO 

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

T 1456/23 - A non-obvious alternative (soft gelatin capsule)

Key points

• "In appeal, the appellant [opponent]  takes the hard gelatin capsule of formulation 9, example 1 of D11 as sole starting point for the assessment of inventive step."
• " The subject-matter of claim 1 differs from formulation 9 of D11 in that the claimed capsule is a soft gelatin capsule with a soft capsule shell as defined in claim 1."
• "The [proprietor] relies, among others, on D5 (Annex III and Annex IV) and D83 (Annex V) as evidence of a technical effect on bioavailability associated with the differentiating feature." "The [opponent] contests that these post-published data can be taken into account in view of G 2/21,"
• "The application as filed mentions the problem of providing immediate release calcifediol solid oral formulations having improved bioavailability. As a solution to this problem, the application as filed proposes, in its broadest disclosure, a soft capsule comprising a further undefined soft capsule shell. The particular soft capsule shell composition of present claim 1 is however disclosed on page 9, lines 24-27 and is embodied by the single soft capsule shell prepared in the examples"
• The Board: " It is not debated that the evidence in the application as filed, comparing soft capsules with ampoules, is not suitable to show an effect over the hard capsules of D11. However, the Board considers that the skilled person, based on the application as originally filed, would derive the effect of improved bioavailability associated with the soft capsule including a soft capsule shell composition of present claim 1 as being encompassed by the technical teaching and embodied by the same originally disclosed invention. Considering the preference for and presence of the specific soft capsule shell of claim 1 in the examples studying bioavailability, the link between bioavailability and not only a soft shell generally but also, as the case may be, the now claimed specific soft shell composition, does not change the nature of the claimed invention."
• As a comment: the remark about "the link between bioavailability and not only a soft shell generally but also, [...]  the now claimed specific soft shell composition,' appears to refer to the "no cross-reliance" part of G 2/21 hn. 2: "would derive said effect as being ... embodied by the same originally disclosed invention." 
• "  the Board concludes that the problem is the provision of soft capsules with improved bioavailability of calcifediol"
• Perhaps the reference to 'soft capsules' is a slip of the pen, because the prior art Formulation 9 is about hard capsules, so 'soft capsules' is part of the claimed solution.
• For the obviousness, it is important that claim 1 is directed to an "An immediate release soft capsule" containing calcifediol. Immediate relese formulations and 'modified release formulations' are two different types of formulations. 
• "The gist of D11 is to provide modified release formulations containing wax, and D11 further mentions as one benefit an improved bioavailability []. While some immediate release formulations are shown in D11, this is for comparative purposes only. 
• The choice of D11 as starting point for the assessment of inventive step defines the framework for further developments. The skilled person, seeking to improve the bioavailability of the formulation, would not do away with the key feature of D11 pertaining to a modified release formulation. 
• In this respect, the results reported in D11 do not point to the claimed formulation. ... the [comparative ]  immediate release formulation 9 of example 1 leads to a lower calcifediol bioavailability than the wax-comprising, modified release formulations 3 and 4 of Example 1 (see table 5 of D11). The skilled person, seeking to provide calcifediol formulations with improved bioavailability, is thus not led to the claimed solution.
  
• As a comment, perhaps the above reasoning would also apply in the case of providing an alternative as the objective technical problem. 

• On the type of evidence ofr the improved bioavailability: "the Board considers that a party filing experimental data is not under the obligation to perform any specific statistical analysis of these data, and that, in establishing whether a certain technical effect alleged by a party has been achieved, the EPO has to apply the general principle of free evaluation of evidence (see T 2717/17, point 4.3.5 of the reasons). The decisions cited by the appellant in this regard were either taken in the particular context of qualitative results in tests with a subjective character (see T 1962/12, point 1.5.1 and 1.5.2 of the reasons; T 275/11, point 3.5.2 of the reasons) or in situations where the data were considered not reliable for various reasons which do not characterise the present case, i.e. not simply on account of the small number of tested individuals (see T 785/07, point 2 of the reasons). In the case at hand, the above data are sufficiently convincing considering the information given on the methodology and the absence of demonstration to the contrary. In addition, these in vivo data in dogs are in line with the in vitro data on file (see 3.3.2(b) above). Under these circumstances, the Board considers that, even taking into account the small group of dogs tested (i.e. 3 dogs) and the alleged high inter-individual variability, the effect of improved bioavailability is shown to a sufficient degree of credibility."

EPO 

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