T 0855/96 - On legal peace

Key points

• T 855/96 in translation:  "It serves to ensure legal peace [Rechtsfrieden] and the acceptance of the decisions of the Boards of Appeal and recognises their importance as [issued by] the only judicial instance that decides on the patentability of the patent with effect for all designated Contracting States [which is still true nowadays] when these decisions take into account the entire matter submitted in the appeal proceedings. A document submitted in the appeal proceedings should therefore be considered if it is not entirely irrelevant and its consideration is procedurally justifiable" (machine translation).
• Obviously, the key part in this quote is "procedurally justifiable" under the RPBA 2020.
• Perhaps, Rechtsfrieden could also be translated as 'peacefulness through law'. See also this post on another weblog. 
• I wish all readers peaceful holidays, some rest, and time for family and friends at the end of the year.

EPO 

The link to the decision is provided after the jump.

T 0724/23 - Reformatio in peius, claims and objections

Key points

• The OD maintains the patent in amended form. The proprietor appeals (only). The Board sees an issue under Article 123(2) with claim 1 as granted. The OD had found the feature at issue to comply with Art. 123(2). May the Board examine the issue in connection with the claims as granted?
• "In its decision, the opposition division had concluded that claim 1 of the patent as granted did not contain added subject-matter in breach of Article 123(2) EPC, but that dependent claims 5 to 7 did. Consequently, the patent could not be maintained as granted. Auxiliary request 1, which the opposition division found allowable, is identical to the patent as granted, except for the deletion of claims 5 to 7."
• "The appellant [proprietor] argued that the Board was not empowered to consider feature [3.4 of claim 1]: the opposition division had found this feature [in claim 1] to comply with Article 123(2) EPC in the decision under appeal, and the patent proprietor was the sole appellant. Therefore, the principle of prohibition of reformatio in peius barred the Board from reopening and deciding upon this question. 
• "The Board disagrees, for the following reasons.
• "It is established case law of the boards of appeal that the prohibition of reformatio in peius relates solely to the legal effect of an appealed decision and cannot be construed to apply separately to each point or issue decided, and particularly not to the reasoning leading to the impugned decision (see CLB, V.A.3.1.1). Therefore, the Board is not precluded from applying its own consideration of feature M3.4 [of claim 1] when examining dependent claims 5 to 7 of the patent as granted [under Art. 100(c) EPC], which were found to be unallowable by the opposition division."
• "The appellant will not be placed in a worse position than it was in as a result of the contested decision even if, as set out below, the Board comes to the conclusion that the main request (patent as granted) is not allowable due to feature M3.4 in claim 1 and that the appeal must therefore be dismissed, thus maintaining unchanged the legal effect of the appealed decision."
• "The appellant's argument that national courts could be influenced to its detriment by the reasoning given in the Board's decision is not convincing either. The ratio decidendi of the decisions of the boards of appeal are not binding on national courts, which have judicial independence in their decisions."
• "Since claims 5 to 7 as granted do not comply with Article 123(2) EPC, the patent cannot be maintained as granted, as concluded by the opposition division in the decision under appeal."
• Claim 5 is dependent.
• The appeal is dismissed. Hence, the patent will be maintained in amended form (provided that the proprietor files the translated amended claims in reply to the invitation that was sent by the EPO shortly after the Board issued their written decision).

EPO 

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

R 0016/22 - No petitions for review against interlocutory decisions

Key points

• This decision concerns a 'submarine' petition for review, in the sense that nothing about the petition was visible in the online file (only a remark in the "about this file" tab) until the written decision was issued in October 2025. The online file has been completed since then.
• The petition for review was filed on 14.06.2022. The Enlarged Board, in a three-member composition, took up the petition for review in 2024 (point XIV). Admittedly, in the meantime, a lot had happened in the case. Oral proceedings took place on 07.02.2025. The EBA decided to forward the case to the five-member panel (this decision is not visible in the online file). 
• The five-member panel included an external legal member (Austrian judge).
• The present decision in the translated headnote: "An interlocutory decision by which a Board of Appeal, in its composition as a substitute Board, has rejected as unfounded a motion to recuse the three members of the original Board composition on the grounds of bias (interlocutory decision on bias) is not a decision against which an independent or separate request for review within the meaning of Article 112a EPC may be lodged."
• The EBA thereby confirms R 5/23 (issued in July 2024, by a three-member panel of the EBA) and departs from R2/15.
• The EBA, in translation: "the lack of analogous applicability of Article 106(2) EPC does not mean that there can be no restrictions regarding the reviewability of interlocutory decisions under Article 112a EPC."
•  "The purpose and aim of the review procedure ("Sinn und Zweck des  Überprüfungsverfahrens"),  in particular its design as an extraordinary remedy, are aspects that do not support equating petitions for review with appeals with regard to the available grounds, nor do they support a more lenient practice in reviewing appeal decisions. Rather, they argue for a stricter assessment of the admissibility of review requests. "
• "The legal consequence of a successful request for review is, according to Article 112a(5) EPC, the annulment of the decision and the reopening of the proceedings before the Boards of Appeal.  ...  The term "reopening of the proceedings" (or "re-opening of the proceedings" and "réouverture de la procédure" in the English and French versions of the regulations) linguistically presupposes that the decision under review is a decision that concluded the appeal proceedings." 
• As a comment: any grievances of a party against the interlocutory decision likely can be raised in a petition for review of that party against the final decision, provided that the party is adversely affected by the (order of the) final decision of the Board. 
• The underlying case is T 2175/15. There were five partiality objections. The appeals were withdrawn. There was also a decision on the costs. An overview can be found in this earlier post.

EPO 

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

T 1671/23 - A carry-over request with broader claims

Key points

• The proprietor presented amended claims as its main request before the OD. The OD found these claims to be allowable. The opponent appeals.
• The Board finds those claims (MR) to lack an inventive step.
• The Board arrives at AR-1. AR-1 is a carry-over request in which a feature is replaced compared to the MR. Hence, one feature of the MR is deleted, and another feature is added.
• The Board holds that the prohibition of reformatio in peius applies, under G 9/92, headnote 2: "If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary."
• Turning to the exceptions of G1/99: "The board notes that the exceptions referred to by the respondent and set out in G 1/99 only concern amendments made to the patent during opposition proceedings (in particular, the addition of features) which were allowed by the opposition division but found to be unallowable under Article 123(2) EPC during appeal proceedings. In G 1/99, the Enlarged Board only addressed the question whether and under what circumstances a deletion of a limiting feature added during opposition proceedings is permissible. ... The feature removed from claim 1 in auxiliary requests [1]  has not been objected to under Article 123(2) EPC in the appeal proceedings."
• As a comment, G1/99 has been applied by analogy to amendments objected to under Article 84 EPC in appeal (T1845/16) (also T 648/15), and also other cases (see Visser's Annoated EPC, Article 107).
• " Even if G 1/99 was applicable to the deletion of the molar ratio in the present case, said deletion could not be allowed in view of the Enlarged Board's decision. The three conditions under which G 1/99 allows exceptions from the prohibition of reformatio in peius are subject to a strict hierarchy.   ... 
• "The respondent chose the third option without giving any explanation why the first and second options were not possible."  
• "16.12 The board also notes that, although there are no provisions for the prohibition of reformatio in peius in the EPC, the board does not see any reason not to follow the decision G 9/92 of the Enlarged Board of Appeal in this respect."
• The further auxiliary requests with the feature reintroduced were not admitted as late-filed in the appeal. 
• Note that the proprietor submitted the auxiliary request without the feature in its reply to the appeal. The opponent/appellant had raised an objection of reformatio in peius in its rejoinder. The Board indicates that the proprietor/respondent should have filed a further letter before the Board issued the preliminary opinion. 

• EPO 

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

T 1975/23 - Splitting the independent claim in opposition

Key points

• The Board, in translation: "It was argued [by the opponent] that [auxiliary request 3 ] did not meet the requirements of Rule 80 EPC because in the set of claims of auxiliary request 3, the independent process [] claim of the patent was replaced by two independent process [] claims.
• The board finds no violation of Rule 80 EPC. The situation is comparable to that decided in case T 2290/12. In that case, the opposition division concluded that the subject-matter of the patent's sole independent claim lacked an inventive step. The patent proprietor then attempted to cover parts of the granted claim it considered inventive by means of several independent claims.
• The present case is similar. The board agrees with the observations in point 4.1 of the reasons for decision T 2290/12. The reasons that led to the non-admission of requests in decisions T 610/95 and T 223/97 cannot be directly applied to the present case. The objection under Rule 80 EPC is therefore unconvincing."
• The board explained in point 4.1 [of T 2290/12] that this approach was, in principle, justifiable as long as there was no abuse of process and no unreasonably large number of independent claims was filed. 
• Since inventive step constitute[s] a ground for opposition, there was no violation of Rule 80 EPC.

EPO 

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

T 2377/22 - Multiple independent claims in opposition

Key points

• The Board, in translation: "auxiliary request 2 contains - in contrast to the granted patent, which contains only a single claim  -  three independent claims, each directed to a cosmetic oil-in-water (O/W) emulsion (claims 1, 13, and 24). Independent claims 1, 13, and 24 were formed from granted claim 1 by incorporating the features of one of the dependent claims 2, 3, and 4, respectively."
• "The appellant  [opponent] referred to decision T 0181/02. Point 3.2 of that decision states that it is normally sufficient to amend an independent claim by incorporating one further feature in order to respond "in sachdienlicher und erforderlicher Weise"  to an objection of lack of novelty. Additional independent claims are only necessary in exceptional situations."
• "However, the same point in the cited decision also points out that this may be the case under certain circumstances, for example where two granted dependent claims (e.g., claims 2 and 3) are joined in parallel to a single independent claim (e.g., claim 1). In that case, the filing of two independent claims (e.g., containing the features of claims 1 and 2 and of claims 1 and 3) would be possible. This reasoning is essentially consistent with that in decisions T 0223/97 (point 2.2 of the Reasons) and T 0428/12 (point 3 of the Reasons). The board finds that this also applies to the present case and agrees with the interpretation of Rule 80 EPC that can be derived from those decisions."
• As a comment, the term "sachdienlich" comes from Rule 79(3) EPC. 

EPO 

The link to the decision is provided after the jump.

T 2049/23 - Watermelons and discoveries

Key points

• The opponents include "Keine Patente auf Saatgut! e.V.". The patent concerns a conventionally-bred watermelon.
• The opponent argued that "the transitional period created by opinion G 3/19 should not be taken into account and that it did not matter whether the patent applications were filed before or after July 2017."
• The present Board: "in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board of Appeal [in G 3/19] further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force"
• It seems that the opponent did not invoke Article of the AC decision that inserted Rule 28(2): "This decision shall enter into force on 1 July 2017. Rules 27 and 28 EPC as amended by Articles 1 and 2 of this decision shall apply to European patent applications filed on or after this date, as well as to European patent applications and European patents pending at that time" (OJ EPO 2017, A56). This is a pity, because the EBA did not expressly set aside that part of the AC's decision.
• On inventive step:  the appellants  [opponents] submit that the claimed watermelon plants having a bush growth habit constitute a discovery rather than an invention. The board understands this as an objection under Article 100(a) and Article 52(2)(a) EPC to the effect that the claimed subject-matter is not a patentable invention but a discovery.'" 
•  "According to the case law of the Boards, a substance which occurs in nature can be considered an invention when it is shown to give rise to a technical effect. This principle is reflected in Rule 27(a) EPC, according to which biotechnological inventions are patentable if they concern biological material which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature. 
• For example, if a microorganism is found in nature and shown to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. 
• Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy
•  "The board considers that the plants (and plant tissues) of claims 1 to 16 do not constitute a discovery." 
• "While the "home-garden diploid watermelon [with] an interesting growth type" mentioned in paragraph [0119] of the patent [] could be argued to be a discovery, it is not part of the claimed subject-matter. Instead, the mutated allele present in said plant has been transferred to other plants (i.e. those producing seedless fruit) and these have been shown to produce a technical effect: as set out in paragraph [0001] of the patent "this plant can be grown at a higher density in the field compared to traditional non-bush triploid watermelon hybrids, leading to a higher fruit yield per hectare compared to triploid hybrids with normal growth habit (having an average longest vine length of above 200 or above 300 cm)"."
• The appeal is dismissed. 

EPO 

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