EPO’s Board of Appeal – Landmark Decisions

(last updated 2026-07-22)

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#actionable T 2043/23; 2026-5-12; Resistance-based temperature monitoring/PHILIP MORRIS PRODUCTS

ORIGINAL-HEADNOTE:

[T]he Board notes that the present case differs from situations such as that in decision T 439/22 (reasons, points 2.4, 3.4 and 6), in which the description and drawings were relied upon to broaden the scope of a claim beyond what was conveyed by the claim wording read in isolation.

Here, by contrast, the description served an explanatory and confirmatory function by assisting the skilled reader in recognising an embodiment already encompassed by the claim wording, without altering the scope of the claim.

…

This modest explanatory and confirmatory use of the description is consistent with the principles set out in G 1/24 (see T 2027/23 – Turnable ladder/IVECO, reasons, point 3.5.2).

(See points 2.9 and 2.10 of the reasons)

PATENTOWNER/-APPLICANT: Philip Morris Products S.A.

OPPOSING-PARTY: Imperial Tobacco Limited

LEGAL PROVISIONS: EPC Art. 54; EPC Art. 56; EPC Art. 100(a); RPBA 2020 Art. 11

ORIGINAL-KEYWORDS: Application of G 1/24 – explanatory, non scope-altering, use of the description (yes – in line with G 1/24); Inventive step – using measured heater’s resistance at room temperature for further calculations (no – obvious) – monitoring whether the heater’s resistance reaches a threshold value outside of an expected time period (yes – no hint in prior art)

CITED DECISIONS: G 0001/24, T 0439/22, T 2027/23

AI-FEEDBACK:

– The catchword clarifies the application of G 1/24: the description and drawings must be consulted when interpreting a claim, but they must not be used to add subject matter that the claim wording does not already encompass.

– In this case, the claim defined the condition to be detected rather than prescribing a particular sequence of mathematical operations. The description therefore served only to explain and confirm that both a ratio-based comparison and a mathematically equivalent direct resistance comparison were covered.

– Example from the case: the controller could compare the ratio (R – R0)/R0 with a stored threshold K, or it could compare the measured resistance R directly with R0(K + 1). The Board regarded the second method as an embodiment already within the claim, not as a broadening of its scope.

– Applying that interpretation, the main request was novel over D14 because D14 did not disclose deriving the maximum resistance from the measured room-temperature resistance R0 and a stored threshold. However, that distinction was considered obvious. The first auxiliary request remained inventive because the prior art gave no hint to determine whether the resistance threshold was reached outside an expected time period.
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#actionable T 1486/23; 2026-3-25; Venturi Aspiration / This

ORIGINAL-HEADNOTE:

Nicht zum Einspruchsumfang gehörige, unabhängige Ansprüche können nur auf ihre Änderungen hin geprüft werden

AI-TRANSLATED-HEADNOTE:

Independent claims that are outside the extent of the opposition may be examined only with respect to their amendments.

PATENTOWNER/-APPLICANT: This AG

OPPOSING-PARTY: Carl Zeiss Meditec AG

LEGAL PROVISIONS: EPÜ Art. 84, 123(2), 101; VOBK 2020 Art. 13; EPÜ R. 76(2)(c)

ORIGINAL-KEYWORDS: Beschwerdehauptantrag, Beschwerdehilfsanträge 2, 3, 4 – Klarheit (nein); Beschwerdehilfsantrag eingereicht um 11:33 Uhr – Zulassung (nein); Beschwerdehilfsantrag eingereicht um 12:08 Uhr – Zulassung (ja) – Gewährbarkeit (ja)

AI-TRANSLATED-KEYWORDS: Appeal main request, appeal auxiliary requests 2, 3 and 4 – clarity (no); Appeal auxiliary request filed at 11:33 – admitted (no); Appeal auxiliary request filed at 12:08 – admitted (yes) – allowable (yes)

CITED DECISIONS: G 0009/91, G 0003/14

AI FEEDBACK:

– The headnote limits appellate review to the extent of the opposition. An independent claim derived from claim subject-matter that was not opposed is not opened to a full validity review merely because it appears in amended or recast form.

– The board may examine defects caused by the amendments, such as new clarity or added-matter issues. A broader examination requires a recognised exception, such as the narrowly defined situation in G 9/91 for certain dependent claims.

– Example from the case: the opposition had been limited to granted claims 1, 2, 3, 4, 6, 9 and 13. New independent claim 5 corresponded to granted dependent claim 11, which was outside that extent. Because the existing opposition material did not prima facie call the level-sensor feature into question, claim 5 was examined only for problems introduced by its amendments.
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#actionable T 1088/23; 2026-1-22

ORIGINAL-HEADNOTE:

1. L’absence d’arguments de la part d’une opposante à l’encontre de requêtes qui n’ont pas été examinées par la division d’opposition n’empêche pas la chambre d’exercer son pouvoir d’examiner ces requêtes d’office. (point 7.2 des motifs et sous-points)

2. La chambre peut examiner de telles requêtes sur la base des faits dont elle a connaissance à partir du dossier ou de ses propres connaissances générales. (point 10.1 des motifs et sous-points)

AI-TRANSLATED-HEADNOTE:

1. The absence of arguments from an opponent against requests that were not examined by the opposition division does not prevent the board from exercising its power to examine those requests of its own motion. (point 7.2 of the Reasons and its sub-points)

2. The board may examine such requests on the basis of facts known to it from the file or from its own common general knowledge. (point 10.1 of the Reasons and its sub-points)

PATENTOWNER/-APPLICANT: ROLEX SA

OPPOSING-PARTY: ICB Ingénieurs Conseils en Brevets SA

LEGAL PROVISIONS: CBE Art. 52(1), 56, 101(3), 111(1), 114(1); RPCR 2020 Art. 11, 12(3), 12(5), 13(2)

ORIGINAL-KEYWORDS: Activité inventive – requête principale, requêtes subsidiaires 2, 3, 7, 8, 11 (non); Renvoi à la première instance; Renvoi – (non); Interdiction de la reformatio in pejus – requêtes subsidiaires 1, 4, 6, 9, 12, 14; Réponse au mémoire de recours – insuffisance de motivation des requêtes subsidiaires 5, 10, 13, 15

AI-TRANSLATED-KEYWORDS: Inventive step – main request, auxiliary requests 2, 3, 7, 8 and 11 (no); Remittal to the department of first instance; Remittal – (no); Prohibition of reformatio in peius – auxiliary requests 1, 4, 6, 9, 12 and 14; Reply to the statement of grounds of appeal – insufficient substantiation of auxiliary requests 5, 10, 13 and 15

CITED DECISIONS: G 0009/91, G 0010/91, G 0004/93, G 0001/99, G 0001/03, T 0031/08, T 1370/15, T 2154/15, T 0862/16, T 0882/17, T 2843/19, T 0664/20, T 0629/22

AI FEEDBACK:

– The headnotes confirm that, under Article 111(1) EPC, a board exercising the powers of the opposition division is not required to maintain an amended patent merely because the opponent has not submitted arguments against every auxiliary request.

– The board may examine previously undecided requests of its own motion, at least on the basis of the existing file and common general knowledge. The patent can be maintained in amended form only if the deciding body is satisfied that the EPC requirements are met.

– Example from the case: auxiliary requests 2, 3, 7, 8 and 11 narrowed aspects of the ceramic watch axis. Although the opponent had not developed separate attacks against each request, the board applied the inventive-step reasoning based on D3 and D7 and found that the amendments did not establish an inventive step.
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#actionable T 0644/24; 2026-1-22

ORIGINAL-HEADNOTE:

Wurden die Einspruchsgründe nach Artikel 100 b) EPÜ und Artikel 100 c) EPÜ im Einspruchsverfahren nicht erhoben und erteilt der Patentinhaber im Beschwerdeverfahren nicht sein Einverständnis zu deren Prüfung, darf im Beschwerdeverfahren das Patent im Fall einer Änderung des Patents im Einspruchs- oder Beschwerdeverfahren nicht in seiner Gesamtheit, sondern nur insoweit auf unzureichende Offenbarung und unzulässige Erweiterung geprüft werden, als die Änderung die unzureichende Offenbarung oder unzulässige Erweiterung herbeiführt (Nr. 1.5.14 der Gründe).

AI-TRANSLATED-HEADNOTE:

If the grounds for opposition under Articles 100(b) and 100(c) EPC were not raised in the opposition proceedings and the patent proprietor does not consent to their examination on appeal, then, where the patent has been amended in opposition or appeal proceedings, the patent may not be examined in its entirety for insufficiency of disclosure or added subject-matter. It may be examined only to the extent that the amendment gives rise to the insufficiency or added subject-matter (point 1.5.14 of the Reasons).

PATENTOWNER/-APPLICANT: Envola GmbH

OPPOSING-PARTY: Max Bögl Wind AG

LEGAL PROVISIONS: EPÜ Art. 100(b), 100(c), 56, 83, 123(2); VOBK 2020 Art. 12(4)

ORIGINAL-KEYWORDS: Einspruchsgründe – neuer Einspruchsgrund im Beschwerdeverfahren (ja) – Zustimmung erteilt (nein); Änderung des Beschwerdevorbringens – rechtfertigende Gründe des Beteiligten (ja); Änderungen – unzulässige Erweiterung (nein); Erfinderische Tätigkeit – (ja)

AI-TRANSLATED-KEYWORDS: Grounds for opposition – new ground for opposition in appeal proceedings (yes) – consent given (no); Amendment of the appeal case – reasons justifying the amendment provided by the party (yes); Amendments – added subject-matter (no); Inventive step – (yes)

CITED DECISIONS: G 0001/91, G 0009/91, G 0010/91, G 0001/03, G 0003/14

AI FEEDBACK:

– The headnote distinguishes a forbidden new ground against the patent as granted from the permissible examination of defects caused by amendments made during opposition or appeal.

– Without the proprietor’s consent, the board cannot reopen the whole patent under Articles 100(b) or 100(c) EPC. It may nevertheless test an amendment under Articles 83 and 123(2) EPC, but only for insufficiency or added matter introduced by that amendment.

– Example from the case: the amendment changed the wording from “nach oben” to “oben” in the feature describing how the device was closed by a cover. The board could examine whether that deletion created added subject-matter. By contrast, objections directed only to features already present in the granted claim, such as the alleged absence of the floor and outer shell or the direct arrangement of the water heat exchanger, were outside the permitted scope.
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T 1899/23; 2026-1-20; Ecolab/Rinse Aid

ORIGINAL-HEADNOTE:

1. Objection under Rule 106 EPC as regards the composition of the board’s panel (see point 2 of the reasons).

2. Analogous application of Article 8 of the Business Distribution Scheme (see points 2.3.3 – 2.3.5 of the reasons).

PATENTOWNER/-APPLICANT: Ecolab USA Inc.

OPPOSING-PARTY: Henkel AG & Co. KGaA

LEGAL PROVISIONS: EPC Art. 100(c), 123(2), 113(1), 112a(2), 21(4); EPC R. 106, 12b; RPBA 2020 Art. 1

ORIGINAL-KEYWORDS: Amendments – extension beyond the content of the application as filed (yes); Right to be heard – violation (no); Competence of the panel; Right to have the case decided by the lawfully designated judge; Referral to the Enlarged Board of Appeal – (no)

CITED DECISIONS: T 0954/98, T 0281/03, T 1241/03, J 0015/04, R 0004/08, R 0008/08, R 0021/22, R 0006/11, R 0010/09, G 0001/21, G 0001/05, G 0002/08, G 0003/08, R 0015/11

AI FEEDBACK:

– The first catchword concerns a Rule 106 EPC objection alleging that the appeal panel was not composed in accordance with the applicable business distribution scheme. The board dismissed the objection because the panel had been designated objectively under the scheme then in force.

– The second catchword explains how Article 8 of the Business Distribution Scheme can be applied by analogy when a board effectively ceases to exist. Once assessment of a case has begun, later organisational changes should not replace the already designated panel without a specific legal reason.

– Example from the case: the C11D appeal was transferred from Board 3.3.06 to Board 3.3.02 after the summons and Article 15(1) communication had been issued. Although Board 3.3.06 subsequently lost its chair and all members, the original three-member panel remained unchanged under the analogous application of Article 8, so the proprietor’s Rule 106 objection was rejected.
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T 0655/24; 2026-1-20; Inert Fc region/GENMAB

ORIGINAL-HEADNOTE:

Considerations in view of G 2/21 on taking an improvement of a technical effect into account for assessing inventive step (points 58 to 72 of the Reasons)

PATENTOWNER/-APPLICANT: Genmab A/S

OPPOSING-PARTY: Ampersand Partnerschaft von Rechanwälten mbB

LEGAL PROVISIONS: EPC Art. 123(2), 84, 83, 54, 56

ORIGINAL-KEYWORDS: Amendments – added subject-matter (no); Claims – clarity (yes); Sufficiency of disclosure – (yes); Novelty – (yes); Inventive step – (yes)

CITED DECISIONS: G 0001/03, G 0002/10, G 0002/21, T 1791/11, T 0787/14, T 1322/17, T 1989/19, T 2716/19, T 0314/20, T 0364/20, T 1913/21, T 0446/22, T 0840/22, T 1135/22

AI FEEDBACK:

– The catchword addresses the use of an improved technical effect after G 2/21. An improvement is not automatically part of the originally disclosed invention merely because the more general underlying effect was disclosed.

– When inventive step depends on the improvement, the improved effect must itself be credibly encompassed by the technical teaching at the filing or priority date. Later evidence may confirm an effect already made credible, but it cannot create the inventive contribution retrospectively.

– Example from the case: the claimed FEA Fc variant was said to reduce T-cell activation more than the prior-art FE and FES variants while retaining plasma clearance. Figure 3A of the application directly compared those variants and showed lower CD69 expression for FEA over a broad concentration range. That original disclosure made the improvement credible, allowing later documents D25 and D26 to corroborate it and supporting inventive step.
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T 0094/24; 2026-1-19; Indentation in a hearing aid/GN HEARING

PATENTOWNER/-APPLICANT: GN Hearing A/S

OPPOSING-PARTY: Oticon A/S

LEGAL PROVISIONS: EPC Art. 56, 100(a), 112(1)(a), 113(1); EPC R. 106; RPBA 2020 Art. 12(3), 13(2), 15a(1), 21

ORIGINAL-KEYWORDS: Oral proceedings by videoconference (no): in-person hearing more appropriate in view of substantive amount of submissions; Inventive step – main request (no): no technical effect credibly achieved over the whole scope claimed; Admittance – auxiliary requests 1 to 3 (no): no “exceptional circumstances” and detrimental to procedural economy; Referral of questions to the Enlarged Board of Appeal – (no): no “unique application” of the problem-solution approach by Board 3.5.05; Objections under Rule 106 EPC – dismissed: no violation of proprietor’s right to be heard

CITED DECISIONS: G 0001/03, G 0001/19, G 0002/21, G 0001/24, R 0004/09, R 0011/11, R 0005/16, R 0006/17, R 0008/19, R 0006/20, R 0004/22, R 0005/22, J 0005/81, T 0001/80, T 0024/81, T 0037/82, T 0198/88, T 0294/89, T 0144/90, T 0206/91, T 0574/92, T 0939/92, T 0912/94, T 0072/95, T 0015/97, T 0158/97, T 0176/97, T 0471/98, T 0641/00, T 1027/08, T 2044/09, T 1415/11, T 1841/11, T 1009/12, T 0488/16, T 1294/16, T 1190/17, T 1869/18, T 0466/20, T 0814/20, T 0885/20, T 1344/21, T 0687/22, T 0746/22, T 1289/22, T 1616/22, T 1628/22, T 0217/23, T 0287/23, T 0449/23, T 0969/23, T 1465/23, T 2027/23, Federal Court of Justice (BGH), X ZR 51/21, decision of 13 June 2023 – Schlossgehäuse, UK High Court, Sandvik IP AB v Kennametal [2011] EWHC 3311, UPC_CoA_464/2024 of 25 November 2025

AI FEEDBACK:

– No official catchword was published. The decision’s first procedural holding was that an in-person hearing was more appropriate after the proprietor filed a 68-page submission, including referral questions, only one month before the scheduled oral proceedings; the board considered face-to-face interaction necessary for an efficient discussion.

– On inventive step, the claimed indentation did not credibly achieve reduced size or correct antenna placement over the full claim scope. The broad wording also covered oversized or angled indentations, laterally floating terminals and indentations in raised PCB portions, for which the alleged effects could disappear or be reversed.

– Example from the case: a 2-mm-wide notch could accommodate only a 0.5-mm-wide terminal, allowing the terminal to move laterally without contacting the sidewalls. Because claim 1 did not require a commensurate fit or a particular alignment, the board found no technical effect consistently associated with the distinguishing features and revoked the patent.
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T 1731/23; 2026-1-16; Testing a wind farm controller using a simulated wind farm/SIEMENS GAMESA

ORIGINAL-HEADNOTE:

There is no established principle that submissions filed before the date set under Rule 116 EPC are generally admissible, just as there is no principle saying that a submission filed after that date is automatically inadmissible.

It is rather established case law that the opposition division has a discretion (not) to admit amendments filed after the period specified in the communication under Rule 79(1) EPC (see the Case Law Book, 11th edition, IV-C 5.1.4.a) and b)).

(See point 12 of the reasons)

PATENTOWNER/-APPLICANT: Siemens Gamesa Renewable Energy A/S

OPPOSING-PARTY: GE Wind Energy GmbH

LEGAL PROVISIONS: EPC Art. 56, 100(a), 114(1); EPC R. 116(1), 116(2); RPBA 2020 Art. 12(4), 12(6)

ORIGINAL-KEYWORDS: Inventive step (no); Late-filed request – admitted in first-instance proceedings (no) – error in use of discretion at first instance (no) – circumstances of appeal case justify admittance (no)

AI FEEDBACK:

– The catchword rejects a rigid timing rule for admissibility. Filing before a Rule 116 EPC date does not guarantee admission, and filing after that date does not by itself compel exclusion.

– The opposition division retains discretion over amendments filed after the earlier Rule 79(1) period. On appeal, the board normally respects that decision unless the discretion was exercised according to the wrong principles, unreasonably, or the appeal circumstances independently justify admission.

– Example from the case: the proprietor filed a new request one day before the resumed oral proceedings, replacing a grid-code feature with an “individual WTC” feature taken from the description. Because the change was complex, non-convergent, not prompted by the course of proceedings and potentially required an additional search, the division’s refusal to admit it was upheld.
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T 0742/24; 2026-1-15

ORIGINAL-HEADNOTE:

Under Article 113(2) EPC, the EPO cannot decide upon a text withdrawn, or no longer agreed to, by the patent proprietor (T 73/84 confirmed; see reasons for the decision, 2.2.6)

PATENTOWNER/-APPLICANT: UPL Ltd

OPPOSING-PARTY: Syngenta Crop Protection AG

LEGAL PROVISIONS: EPC Art. 113(2), 112(1)(a); EPC R. 71(3), 71(5)

ORIGINAL-KEYWORDS: Basis of decision – text or agreement to text withdrawn by patent proprietor – patent revoked; Referral to the Enlarged Board of Appeal – (no)

CITED DECISIONS: G 0007/93, G 0003/98, T 0073/84

AI FEEDBACK:

– The headnote treats “submitted” under Article 113(2) EPC as a continuing expression of agreement, not merely the historical act of filing a claim text.

– Once the proprietor withdraws agreement to every pending text, the EPO may not decide the substantive patentability issues on any of those texts. With no agreed basis for maintenance, the patent must be revoked.

– Example from the case: UPL withdrew approval of the patent as granted and later confirmed that the withdrawal covered auxiliary requests 1 to 7. The board therefore declined to decide the patentability objections or add obiter comments and revoked the patent without examining the merits.
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#actionable T 1296/23; 2025-12-18; Puff count/FONTEM

ORIGINAL-HEADNOTE:

Requests filed during the first-instance proceedings on which the department of first instance took no decision are not automatically part of the appeal proceedings.

PATENTOWNER/-APPLICANT: Fontem Ventures B.V.

OPPOSING-PARTY: Nicoventures Trading Limited

LEGAL PROVISIONS: EPC Art. 100(c), 100(a), 123(2), 54, 56, 113(1); RPBA 2020 Art. 12, 13; EPC R. 106

ORIGINAL-KEYWORDS: Inventive step – (no); Amendment to case – admitted (no)

CITED DECISIONS: T 1309/16, T 1943/16, R 0016/13

AI FEEDBACK:

– The headnote requires a party to define its appeal case expressly. A request that existed below but was never decided is not carried into the appeal merely because it appears in the first-instance file or is listed in the factual history of the decision.

– Such a request must be expressly maintained and substantiated in the appeal submissions. Introducing it only at the oral proceedings is an amendment governed by Article 13(2) RPBA and normally requires exceptional circumstances.

– Example from the case: auxiliary requests 3 to 9 had been filed in opposition, but the opposition division maintained the patent on auxiliary request 2 and gave no reasons on the lower-ranking requests. The proprietor did not expressly maintain requests 3 to 9 in its appeal reply and invoked them only at the oral hearing; the board therefore refused to take them into account.
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#actionable T 0610/24; 2025-12-16; Checking the chemical compatibility of pumps and chemicals/ECOLAB

ORIGINAL-HEADNOTE:

While it is not mandatory to start from the strictly closest prior art when arguing a lack of inventive step (see Case Law of the Boards of Appeal, 11th edition, I.D.3.3), it is nevertheless recommended to start from prior art having a similar purpose and overall technical effect. Starting from a more remote document often leads to an ex post facto analysis, in particular to the formulation of a “hindsight problem” – a problem that the skilled person would not have realistically conceived.

(See point 4.4 of the reasons)

PATENTOWNER/-APPLICANT: Ecolab USA, Inc.

LEGAL PROVISIONS: EPC Art. 56, 111(1); RPBA 2020 Art. 11

ORIGINAL-KEYWORDS: Inventive step – closest prior art (no – different purpose) – ex post facto analysis; Remittal to the department of first instance – (yes – remittal for a search)

CITED DECISIONS: G 0010/93

AI FEEDBACK:

– The headnote cautions against selecting prior art that is technically remote from the invention. Although an inventive-step attack is not legally confined to the single closest document, the starting point should normally share the invention’s purpose and overall effect.

– A remote starting point can produce a hindsight problem: the analysis first imports knowledge of the invention’s real problem and then asks the skilled person to modify unrelated prior art to solve a problem that would not naturally have arisen from that document.

– Example from the case: D5 used RFID data to ensure that the correct chemical was dispensed into the correct container and did not disclose a chemical pump, only a fluid-driven eductor. Reaching the claimed system would have required adding a pump, recognising chemical damage to pump components and repurposing D5’s checking system. The board set the refusal aside and remitted the case for a new search focused on pump technology and chemical compatibility.
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#actionable T 1096/23; 2025-12-4

ORIGINAL-HEADNOTE:

When a complete granted dependent claim is incorporated into an independent claim of another category (here: method step -> method step carried out by an apparatus), then only the amendments related to the change of category can be examined for clarity under G3/14. (Grounds, 3.2.5)

PATENTOWNER/-APPLICANT: Marel A/S

OPPOSING-PARTY: Nordischer Maschinenbau Rud. Baader GmbH + Co. KG; MULTIVAC Sepp Haggenmüller SE & Co. KG

LEGAL PROVISIONS: EPC Art. 52(1), 54(1), 54(2), 56, 84, 123(2); RPBA 2020 Art. 13(2)

ORIGINAL-KEYWORDS: Novelty – main request and auxiliary request 1 (no) – auxiliary request 2 (yes); Inventive step – auxiliary request 2 (yes); Claims – clarity – auxiliary request 2 (yes); Amendments – auxiliary request 2 – allowable (yes) – change of category; Sufficiency of disclosure – auxiliary request 2 (yes)

CITED DECISIONS: G 0003/14

AI FEEDBACK:

– The headnote applies G 3/14 to a category change. Incorporating the complete wording of a granted dependent claim does not reopen every pre-existing clarity issue; only clarity problems arising from the conversion into the new claim category may be examined.

– For a computer-implemented method step, expressing the same step as functionality of the controller in an apparatus claim does not necessarily create ambiguity. The relevant question is whether the category change itself makes the claim unclear.

– Example from the case: granted dependent method claims defining sub-weight ranges and a shortage-based prioritisation variable were incorporated into apparatus claim 11 for a batching machine. The skilled person would understand that the controller implemented those steps in software, so the method-to-apparatus conversion introduced no new ambiguity; an alleged antecedent issue already present in the granted wording was not open to review.
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T 0536/25; 2026-6-5

ORIGINAL-HEADNOTE:

The right to be heard is violated where, following a remittal on account of a substantial procedural violation resulting from the failure to substantiate the sole ground underlying the decision refusing the application, the examining division immediately issues a further decision substantiating that ground without first affording the applicant an opportunity to present comments.

PATENTOWNER/-APPLICANT: Yamaha Hatsudoki Kabushiki Kaisha; KYB Corporation

LEGAL PROVISIONS: EPC Art. 113(1), 11; EPC R. 103(1)

ORIGINAL-KEYWORDS: Substantial procedural violation – reimbursement of appeal fee (yes); Right to be heard – violation (yes)

CITED DECISIONS: T 1753/21

AI FEEDBACK:

– The headnote applies Article 113(1) EPC to the procedural stage after remittal: a first-instance department may not replace an unreasoned refusal with an immediately issued, newly reasoned refusal without first giving the applicant a chance to respond.

– Remittal does not eliminate the normal requirement for an adversarial exchange on reasoning that is decisive for the outcome.

– In this case, after T 1753/21 had set aside the first refusal for a substantial procedural violation, the examining division immediately refused the main request and auxiliary request 1 again under Article 123(2) EPC, now with substantiated intermediate-generalisation reasoning, but without communicating that reasoning beforehand. The Board found another violation of the right to be heard, remitted the case and ordered reimbursement of the appeal fee.
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T 0842/24; 2026-5-21

ORIGINAL-HEADNOTE:

There is no legal basis for reversing in appeal a decision by the opposition division to admit new evidence into the opposition proceedings and thus to retroactively reject in appeal specific facts which had been admitted into the appeal proceedings if that evidence formed the basis of the decision taken on substantive grounds. It cannot be derived from G 7/93 that the criteria stated therein for overruling the way in which a department of first instance has exercised its discretion also apply to the case where evidence was admitted and the decision taken on substantive grounds was based thereon. (see Reasons 4.1 to 4.6)

PATENTOWNER/-APPLICANT: Daicel Corporation

OPPOSING-PARTY: Cerdia International GmbH

LEGAL PROVISIONS: EPC Art. 113(1), 114(2); EPC R. 103(1)(a), 103(4)(c); RPBA 2007 Art. 12(4); RPBA 2020 Art. 11, 12(2), 12(4), 12(6), 13

ORIGINAL-KEYWORDS: Sufficiency of disclosure objection submitted in writing and not taken into account by the opposition division while maintaining the patent in amended form – substantial procedural violation (yes); Reimbursement of appeal fee – equitable by reason of a substantial procedural violation; Evidence and new objection admitted into the proceedings forming the basis for the contested decision are part of the appeal proceedings (yes); New document submitted on appeal in reply to evidence submitted shortly before the oral proceeding before the opposition division on the basis of which novelty was denied admitted (yes) – fresh case on novelty; Remittal to the opposition division

CITED DECISIONS: G 0007/93, G 0004/95, G 0001/21, R 0017/11, T 0640/91, T 1209/05, T 1549/07, T 0467/08, T 1485/08, T 1652/08, T 1253/09, T 1852/11, T 2513/11, T 1568/12, T 1883/12, T 1271/13, T 1690/15, T 1711/16, T 2730/16, T 0776/17, T 0879/18, T 0526/21, T 0989/23

AI FEEDBACK:

– The headnote distinguishes non-admittance from admission. Once evidence has been admitted at first instance, relied upon in the substantive reasoning and thereby made part of the proceedings, the appeal board cannot retroactively remove it by treating it as an inadmissible amendment to the appeal case.

– The limited review standard associated with G 7/93 does not supply a legal basis for undoing an admission where the contested decision was actually based on the admitted evidence.

– In this case, the opposition division admitted D29, a WinROOF analysis of SEM images in D10, and relied on it when finding a lack of novelty. D29 therefore remained part of the appeal proceedings. The proprietor’s responsive experiment D31 was admitted on appeal, and the resulting fresh novelty case justified remittal. Separately, the opposition division’s failure to address a written insufficiency objection constituted a substantial procedural violation and made reimbursement equitable.

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#actionable #top T 0867/24; 2026-5-6; Nasal composition / CHURCH & DWIGHT

ORIGINAL-HEADNOTE:

The requirements for clarity and conciseness of Article 12(3) RPBA preclude the presentation of arguments that are either confusing or unnecessarily protracted, to the extent that potentially relevant objections or requests risk being obscured within an overabundance of extraneous or repetitive content. Clarity and conciseness in submissions are essential to ensure that all parties can effectively engage with the core issues and that the proceedings remain efficient and equitable (see points 1.1-1.3 of the reasons).

PATENTOWNER/-APPLICANT: Church & Dwight Co., Inc.

OPPOSING-PARTY: Patentanwalt Dipl.-Ing. Dietze, Ingo

LEGAL PROVISIONS: RPBA 2020 Art. 12(3), 12(4), 12(5); EPC Art. 100(a), 56

ORIGINAL-KEYWORDS: Reply to statement of grounds of appeal – reasons set out clearly and concisely (no); Amendment to case – admitted (no); Inventive step – (no)

CITED DECISIONS: T 0321/21

AI FEEDBACK:

– Article 12(3) RPBA requires more than the inclusion of every conceivable point. A submission must present the party’s case in a form that lets the Board and the other party identify and assess the decisive requests, objections, facts and arguments without undue burden.

– Excessive length, repetition and tangential material can therefore make potentially relevant arguments insufficiently clear and concise, and such material may be left out of consideration under Article 12(5) RPBA.

– The respondent’s reply in this case ran to 143 pages, repeated legal standards and arguments, used numerous case citations without a specific link to the dispute, and even discussed sufficiency at the priority date although the patent claimed no priority. The Board held that the core case was obscured by the presentation and did not admit the relevant amendment to the respondent’s case.

=================

#actionable T 0987/24; 2026-4-23

ORIGINAL-HEADNOTE:

Zur mangelnden Anwendbarkeit des Goldstandards bei der Beurteilung der ausreichenden Offenbarung der Erfindung (Ausführbarkeit) siehe Nr. 1.4 der Entscheidungsgründe.

AI-TRANSLATED-HEADNOTE:

On the inapplicability of the gold standard when assessing the sufficiency of disclosure of the invention (enablement), see point 1.4 of the Reasons.

PATENTOWNER/-APPLICANT: Liebherr-Werk Nenzing GmbH

OPPOSING-PARTY: Bauer Maschinen GmbH

LEGAL PROVISIONS: EPÜ Art. 100(b); VOBK 2020 Art. 11, 12(2)

ORIGINAL-KEYWORDS: Anwendung des Goldstandards bei Prüfung der Ausführbarkeit (nein); Einspruchsgründe – mangelhafte Ausführbarkeit – Hauptantrag (nein); Zurückverweisung – (ja)

AI-TRANSLATED-KEYWORDS: Application of the gold standard when assessing sufficiency of disclosure (no); Grounds for opposition – insufficiency of disclosure – main request (no); Remittal – (yes)

CITED DECISIONS: G 0002/93, G 0002/10, G 0001/24, G 0002/03, T 0014/83, T 2051/23

AI FEEDBACK:

– The decision separates two different legal tests. The Article 123(2) EPC gold standard asks whether amended subject-matter is directly and unambiguously derivable from the application as filed; sufficiency asks whether the patent as a whole, together with common general knowledge, enables the skilled person to carry out the claimed invention.

– Because those questions concern different objects, the direct-and-unambiguous-disclosure formula cannot simply be transferred to Article 83 or Article 100(b) EPC. The description, drawings and relevant technical standards also form part of the enablement assessment.

– The patent concerned a work machine that controls pressure in an outrigger cylinder so that the support pressure is sufficient to prevent tipping while also relating it to the ground pressure under the tracks or running gear. Reading the interdependent claim features together with the description, the skilled person could understand and implement the control concept. The insufficiency objection therefore failed, and the case was remitted for examination of the remaining opposition grounds.

=================

#actionable T 0882/24; 2026-4-21; Individual acoustic characteristics/EERS

ORIGINAL-HEADNOTE:

If a discretionary decision not to admit a submission is based on a flawed technical or factual assessment by the opposition division — such as the erroneous prima facie finding regarding the disclosure of document D1 in the present case — the board may overturn that discretionary decision to assess the underlying merits of the submission de novo (see point 2.3.2 of the Reasons).

PATENTOWNER/-APPLICANT: Eers Global Technologies Inc.

OPPOSING-PARTY: K/S HIMPP

LEGAL PROVISIONS: EPC Art. 54; RPBA 2020 Art. 12(6), 13(2)

ORIGINAL-KEYWORDS: Admittance of late-filed novelty objection – (yes): opposition division’s prima facie assessment incorrect + circumstances of the appeal case justify admittance; Novelty – main request (no); Admittance of claim request filed after Art. 15(1) RPBA communication – auxiliary request 3 (no): no “exceptional circumstances” + amendment gives rise to new objections

AI FEEDBACK:

– A board reviewing a first-instance non-admittance decision is not confined to asking whether the correct procedural labels were used. Where the decision rests on an erroneous technical or factual premise, the Board may overturn it and examine the excluded submission on its merits.

– An opponent is also not required to raise every conceivable objection against an earlier request when one objection is already sufficient to defeat that request; a later amended request can create a new procedural situation.

– Here, D1 measured a noise-to-ear transfer function with active noise reduction operating. That measurement inherently reflected the acoustic characteristics of the individual ear-canal cavity and earpiece fit. The opposition division’s contrary prima facie assessment was flawed, so the novelty objection was admitted de novo and the main request was found not novel.

=================

#actionable T 1438/24; 2026-4-16; Two-array LED display/PHILIP MORRIS PRODUCTS

ORIGINAL-HEADNOTE:

[T]he automatic provision of visual indications of conditions prevailing in a technical apparatus may, in principle, produce a technical effect […].

… The actual difference between claim 1 and D1 resides solely in the decision to present different technical conditions simultaneously. This does not provide the user with any additional insight into the internal operation of the device beyond what is already disclosed in D1. Rather, it merely concerns the manner in which information already available in D1 is presented to the user.

While it may be accepted that the simultaneous presentation of multiple items of technical information may be perceived by some users as clearer or more practical, other users may regard such a presentation cluttered or less legible and may prefer the one-at-a-time presentation of D1. Be it as it may, according to the established case law, effects such as improved clarity of presentation or reduced cognitive burden, which merely reflect subjective user preferences, do not constitute technical effects and therefore cannot contribute to an inventive step […].

(See point 2.16 of the reasons)

PATENTOWNER/-APPLICANT: Philip Morris Products S.A.

LEGAL PROVISIONS: EPC Art. 52(2)(d), 56

ORIGINAL-KEYWORDS: Claim construction in light of G 1/24 – narrow claim interpretation based on description and drawings (no – not accepted); Inventive step – simultaneous display of different technical states of an e-cigarette instead of displaying them at different times (no – not technical) – display layout with a first annular area surrounding a second area (no – not technical)

CITED DECISIONS: G 0001/24, T 0115/85, T 0641/00, T 0928/03, T 1741/08, T 1562/11, T 1802/13, T 1999/23, T 2027/23

AI FEEDBACK:

– Automatically displaying a condition of a technical apparatus can have a technical effect when the information objectively assists the user in operating or controlling the apparatus. The mere choice to show already available information simultaneously rather than sequentially does not, by itself, add technical insight.

– Alleged improvements such as greater clarity, convenience or reduced cognitive burden are not technical when they depend on subjective user preferences. The arrangement of graphical information in an annular outer area around an inner area was likewise treated as presentation of information rather than a technical display solution.

– D1 already disclosed an e-cigarette display that could show progress through a smoking session and other device states, one at a time. The claim used separately driven inner and outer LED arrays to show two states simultaneously. Because this changed only how the same information was presented and did not improve control of the device, the difference could not support inventive step.

=================

#actionable T 0941/24; 2026-4-13; Determining a relative position/BRAINLAB

ORIGINAL-HEADNOTE:

Use of the term “encompass” in G 1/07 (Points 3.1.4 to 3.1.6 of the Reasons).

PATENTOWNER/-APPLICANT: Brainlab SE

LEGAL PROVISIONS: EPC Art. 53(c), 84; EPC R. 43(3), 43(4)

ORIGINAL-KEYWORDS: Exceptions to patentability – method for treatment by surgery (no); Claims – clarity (yes) – essential features missing (no)

CITED DECISIONS: G 0001/07, G 0003/95, G 0001/15, G 0001/19, G 0001/24, T 1526/17, T 1075/06, T 1631/17, T 0318/21, T 1005/98, T 0923/08, T 0836/08

AI FEEDBACK:

– The term “encompass” in G 1/07 does not mean that an independent method claim includes every additional surgical activity that could conceivably occur in a broader real-world workflow. It concerns a step expressly recited in the claim, or a specific implementation of a generic claimed step, and may also cover a step necessarily implied as an integral part of the claimed method.

– A surgical step mentioned only in the description or added by a dependent claim is not automatically comprised in the independent claim. The decisive question is whether the claimed method itself explicitly or implicitly requires that step.

– Claim 7 determined the relative position of two independently movable sensor devices from exchanged sensor data. It could be performed with freely carried sensors or sensors attached to movable imaging equipment, without attaching anything to bone or moving an exposed bone. Those surgical acts were therefore not integral to the claimed method, so Article 53(c) EPC did not exclude it.

=================

#actionable T 0847/24; 2026-3-25

ORIGINAL-HEADNOTE:

If a granted claim defines a computer-implemented method for configuring a physical object which, when carried out, merely results in data representing that physical object, and not in the object itself, amending the claim such that it additionally includes the step of manufacturing the physical object so configured is, in view of Article 64(2) EPC, not allowable under Article 123(3) EPC (Reasons 6).

PATENTOWNER/-APPLICANT: Materialise NV

OPPOSING-PARTY: Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB

LEGAL PROVISIONS: EPC Art. 54, 56, 64(2), 69(1), 123(3); EPC Prot. Interpretation Article 69; RPBA 2020 Art. 12(4)

ORIGINAL-KEYWORDS: Inventive step – non-technical distinguishing feature – main request and auxiliary requests 2 to 4 (no); Extent of protection – protection conferred by Article 64(2) EPC – extension of protection conferred – auxiliary request 1 (yes)

CITED DECISIONS: G 0002/88, G 0001/04, G 0003/14, G 0001/16, G 0001/19, G 0001/24, T 0867/05, T 0547/08, T 1635/09, T 1791/16, T 0970/17, T 0312/19, T 1473/19, T 0367/20, T 0177/22, T 0439/22, T 1345/23, T 0837/24, UPC_CoA_335/2023 (NanoString Technologies v. 10x Genomics, 26 February 2024, rectified 11 March 2024), UPC_CoA_901/2025 (Abbott v. Sinocare, 17 April 2026), X ZR 33/10 (MPEG-2-Videosignalcodierung, 21 August 2012)

AI FEEDBACK:

– The protection conferred by a process claim must be assessed together with Article 64(2) EPC, which extends protection to products directly obtained by the claimed process. That product protection is additional to protection for carrying out the process itself.

– Adding a manufacturing step can therefore violate Article 123(3) EPC even though the amended method contains more steps and is narrower as a method. The amendment may newly bring a physical product within the direct-product protection of Article 64(2) EPC.

– The granted claim configured a maxillofacial implant and surgical guide in a computer and directly produced only data representing the configured objects. Auxiliary request 1 added the step of producing the implant. That amendment newly conferred protection on the physical implant, which was not directly obtained by the granted data-generating method, and therefore extended the scope of protection.

=================

#actionable T 0903/24; 2026-3-17

ORIGINAL-HEADNOTE:

Zu Regel 43 (7) EPÜ und der Bedeutung von Referenzzeichen bei der Anspruchsauslegung siehe Nr. 2.8.2 der Gründe.

AI-TRANSLATED-HEADNOTE:

On Rule 43(7) EPC and the significance of reference signs in claim interpretation, see point 2.8.2 of the Reasons.

PATENTOWNER/-APPLICANT: BSH Hausgeräte GmbH

OPPOSING-PARTY: Electrolux Appliances Aktiebolag

LEGAL PROVISIONS: EPÜ Art. 52(1), 54, 123(2), 123(3); EPÜ R. 43(7); VOBK 2020 Art. 13(2), 12(3), 12(4)

ORIGINAL-KEYWORDS: Hauptantrag – unzulässige Erweiterung (Nein) – Neuheit (nein); Verwendung von Bezugszeichen zur Anspruchsauslegung (ja); Hilfsantrag 2 – neue Einwände nach Zustellung der Mitteilung gem. Art. 15(1) VOBK – Ermessensausübung (ja) – berücksichtigt (nein) – gewährbar (ja)

AI-TRANSLATED-KEYWORDS: Main request – added subject-matter (no) – novelty (no); Use of reference signs for claim interpretation (yes); Auxiliary request 2 – new objections after notification of the communication under Art. 15(1) RPBA – exercise of discretion (yes) – considered (no) – allowable (yes)

CITED DECISIONS: G 0001/24, G 0002/10, G 0003/89, J 0014/19, T 0172/17, T 0424/21, T 1906/19

AI FEEDBACK:

– Rule 43(7) EPC prevents reference signs from restricting a claim to the exact embodiment shown in a drawing. It does not forbid using those signs for their intended explanatory function when the description and drawings are consulted to understand how claim features relate to one another.

– Reference signs may therefore confirm the patent’s use of a term, provided the interpretation does not limit the claim to the precise number, shape or arrangement of the illustrated components.

– Claim 7 referred to several “overlying layers (40, 41, 49)”. Figure 6 showed that layer 49 could be separated from layer 40 by another trim element and still count as overlying. The signs helped establish that direct contact was not required, without limiting the claim to exactly three layers or to the precise Figure 6 embodiment.

=================

#actionable #top T 0241/25; 2026-3-3

ORIGINAL-HEADNOTE:

Merely referring to an embodiment of the original disclosure and stating that an unallowable intermediate generalisation of this embodiment has been introduced is not a substantiated objection of added subject-matter. An objection to an intermediate generalisation in a claim requires (i) identifying the features which are impermissibly omitted from the claim and (ii) explaining why the omission introduces added subject-matter. According to established case law of the boards this explanation needs to show that the omitted features are inextricably linked with (some of) the claimed ones according to the original disclosure. Only in this way it is possible to (i) identify the objection and (ii) understand the reasoning supporting the objection.

PATENTOWNER/-APPLICANT: Edwards Lifesciences Corporation

OPPOSING-PARTY: J A Kemp LLP

LEGAL PROVISIONS: EPC Art. 100(c), 76(1), 83, 56; RPBA 2020 Art. 12(4)

ORIGINAL-KEYWORDS: Grounds for opposition – subject-matter extends beyond content of earlier application – main request (yes); Sufficiency of disclosure – (yes); Inventive step – auxiliary request 1” (yes); Amendment to case – amendment within meaning of Art. 12(4) RPBA 2020

CITED DECISIONS: T 0367/20, T 0873/23, T 1762/21, T 0824/23, T 1888/22

AI FEEDBACK:

– A valid intermediate-generalisation objection must define the alleged extraction precisely. The objector must identify the omitted features and explain, by reference to the original disclosure, why those features are inextricably linked to the features retained in the claim.

– A bare statement that a claimed feature came from an embodiment containing other features does not reveal the actual objection or the legal and technical reasoning supporting it.

– The notice of opposition merely stated that the “pull wire” was disclosed in paragraphs [0171] and [0172] together with several other features. It did not identify the resilient steerable section as an impermissibly omitted feature or explain the link until appeal. The Board treated that reasoning as a new appeal-case amendment, admitted it because it was simple and timely, but rejected it on the merits because neither the adjustment knob nor the resilient section was indispensable to the pull-wire teaching.

=================

T 0873/24; 2026-2-3; TITANIUM-TO-NITROGEN RATIO/ArcelorMittal

ORIGINAL-HEADNOTE:

Questions referred to the Enlarged Board of Appeal:

1. May a decision be considered to be “required” for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?

2.(a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?

2.(b) If the answer to question 2.(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?

3.(a) When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?

3.(b) If the answer to question 3.(a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?

PATENTOWNER/-APPLICANT: ArcelorMittal

OPPOSING-PARTY: POSCO

LEGAL PROVISIONS: EPC Art. 123(2), 112(1)

ORIGINAL-KEYWORDS: Amendments; Referral to the Enlarged Board of Appeal – by the board of appeal – uniform application of law – point of law of fundamental importance

CITED DECISIONS: G 0001/24, G 0001/15, G 0002/10, G 0002/07, G 0002/03, G 0001/03, G 0003/98, T 0235/25, T 0837/24, T 0412/24, T 0405/24, T 0072/24, T 2047/23, T 2001/23, T 1973/23, T 1164/23, T 1071/23, T 1052/23, T 0981/23, T 0873/23, T 0727/23, T 0618/23, T 2067/22, T 2048/22, T 0439/22, T 0367/20, T 1473/19, T 0116/18, T 1239/03, T 0390/90

AI FEEDBACK:

– This is a referral decision rather than a final ruling on the added-matter issue. It asks how the primacy of the claims after G 1/24 interacts with the mandatory consultation of the description and drawings, and which possible claim interpretations must have an original basis under Article 123(2) EPC.

– The questions contrast a claim-alone approach with a holistic approach. They also ask when deciding such a point is “required” for a referral under Article 112(1) EPC even though the Board has not yet disposed of every other possible issue in the appeal.

– The concrete dispute concerned the claimed requirement that the titanium-to-nitrogen ratio exceed 3.42. The application as filed disclosed 3.42 as a weight ratio, but the granted claim omitted the unit. On the claim wording alone, a molar ratio was technically possible; in the context of the description and the stoichiometry of TiN, the value pointed to a weight ratio. Because different lines of Board case law would produce different Article 123(2) outcomes, the questions were referred to the Enlarged Board.

=================

T 1168/24; 2026-1-15; Lipid formulations for nucleic acid delivery/ARBUTUS BIOPHARMA CORPORATION

ORIGINAL-HEADNOTE:

See Reasons 12 to 34 for a discussion of the applicability of the principle of the prohibition of reformatio in peius

PATENTOWNER/-APPLICANT: Arbutus Biopharma Corporation

OPPOSING-PARTY: Merck Sharp & Dohme LLC; ModernaTX, Inc.

LEGAL PROVISIONS: EPC Art. 123(2); EPC R. 101(1), 106, 139; RPBA 2020 Art. 13(2)

ORIGINAL-KEYWORDS: Correction of error – (yes); Admissibility of appeal – (yes); Amendments – added subject-matter (yes); Amendment to a party’s appeal case – cogent reasons (no)

CITED DECISIONS: G 0009/92, G 0001/99, G 0001/12, T 0724/99, T 0972/04, T 1194/06, T 1843/09, T 2086/13, T 2129/14, T 1621/16, T 2635/18, T 0727/19, T 1442/19, T 0505/20, T 0974/21

AI FEEDBACK:

– The prohibition of reformatio in peius protects a sole appellant from being placed in a worse position by its own appeal. In the present procedural setting, it prevented the opponents from facing claims broader than those that had formed the relevant request in the earlier appeal proceedings.

– The principle remains applicable after remittal where the earlier substantial procedural violation was an ordinary breach of the right to be heard. Exceptions are narrow; a defect such as demonstrated partiality may undermine the whole earlier process, but a hearing violation does not automatically do so.

– The proprietor argued that remittal and the admission of experimental report D38 justified broader requests. The Board found that D38 merely confirmed an existing factual conclusion and did not create a new legal or factual framework. The proprietor had also not first attempted the hierarchy of restrictive amendments required by G 1/99. The main request and auxiliary requests 1 to 12 therefore remained excluded, and the requested referral was refused.

=================

T 0967/23; 2026-4-20; Overvoltage protection/OTIS

ORIGINAL-KEYWORDS:

Amendment to appeal case – (not admitted – new inventive step attack should have been filed during opposition proceedings)

Novelty – (main request – yes)

Inventive step – (main request – yes)

ORIGINAL-HEADNOTE:

The question of whether a fresh ground of opposition has been raised – and, therefore, of whether the agreement of the patentee is required – has to be distinguished from the question of whether there has been an amendment to a party’s appeal case. The admissibility of amendments represents a separate, independent issue and is subject to the discretion of the board under Article 114(2) EPC and Articles 12 and 13 RPBA.

AI FEEDBACK:

– The decision separates two procedural questions: whether an objection is a fresh ground requiring the proprietor’s consent, and whether the objection changes a party’s appeal case and should be admitted under the RPBA.

– An inventive-step objection may belong to an already invoked ground under Article 100(a) EPC, yet still be excluded because the particular attack was introduced too late.

– Example from the case: the opponent had pursued lack of novelty over D1 in opposition, but first raised an inventive-step attack starting from D1 and common general knowledge on appeal. Because the negative novelty assessment was already known before the opposition oral proceedings, the attack should have been filed then and was not admitted.

=================

#actionable #top T 0424/23; 2026-3-12

ORIGINAL-KEYWORDS:

Grounds for opposition – lack of novelty (no) – insufficiency of disclosure (no) – lack of inventive step (no)

Patent maintained as granted

Remittal to the department of first instance – (no)

ORIGINAL-HEADNOTE:

In the context of the problem-solution-approach, the document to be combined with the closest prior art does not need to state explicitly that it solves the objective technical problem for it to be considered by the skilled person. It suffices that the skilled person is able to recognise that it does so, once the combination document has been found by the skilled person. However, the skilled person still needs a reason to take such a document into consideration (see points 16 to 18 of the Reasons).

AI FEEDBACK:

– A secondary document need not expressly formulate the same objective technical problem as the closest prior art. The skilled person may recognise its usefulness after finding it.

– The prior step remains essential: there must be a non-hindsight reason why the skilled person would consult that particular document in the first place.

– Example from the case: D6 concerned a heavy vehicle simulator driven by linear actuators, whereas D4 concerned a workshop plane-motion mechanism using belts for speed, accuracy and load. Even though the belts could theoretically increase rotational travel, the different context gave the skilled person no reason to turn to D4, so the combination was not obvious.

=================

#actionable #top T 0561/23; 2026-2-26; Jalousiensystem/CONTROLTRONIC

ORIGINAL-KEYWORDS:

Neuheit – Hauptantrag, Hilfsantrag I (nein) – Hilfsantrag XIb’ (ja)

Änderung nach Zustellung der Mitteilung nach Artikel 15(1) VOBK – Hilfsanträge XIb’, XIb”, XIc’ – außergewöhnliche Umstände (ja)

Änderung veranlasst durch Einspruchsgrund – Hilfsantrag XIb’ (ja)

Ersetzung eines erteilten unabhängigen Anspruchs durch mehrere unabhängige Ansprüche durch Aufnahme erteilter abhängiger Ansprüche – vereinbar mit Regel 80 EPÜ (ja) – T 1138/02 nicht gefolgt

Zurückverweisung – (ja)

AI-TRANSLATED-KEYWORDS:

Novelty – main request, auxiliary request I (no) – auxiliary request XIb’ (yes)

Amendment after notification of the communication under Article 15(1) RPBA – auxiliary requests XIb’, XIb”, XIc’ – exceptional circumstances (yes)

Amendment occasioned by a ground for opposition – auxiliary request XIb’ (yes)

Replacement of a granted independent claim by several independent claims through incorporation of granted dependent claims – compatible with Rule 80 EPC (yes) – T 1138/02 not followed

Remittal – (yes)

ORIGINAL-HEADNOTE:

Zur Frage der Ersetzung eines unabhängigen Anspruchs durch mehrere unabhängige Ansprüche durch Einbeziehung abhängiger Ansprüche unter Regel 80 EPÜ, siehe Punkte 21 bis 26 der Entscheidungsgründe.

AI-TRANSLATED-HEADNOTE:

On the question of replacing an independent claim with several independent claims by incorporating dependent claims under Rule 80 EPC, see points 21 to 26 of the Reasons.

AI FEEDBACK:

– Rule 80 EPC requires an amendment to be occasioned by a ground for opposition. When a granted independent claim fails, the proprietor may preserve different fallback embodiments already present in granted dependent claims by formulating more than one independent claim.

– The alternatives do not need to share an additional general concept for Rule 80 purposes. Lack of unity is not a ground for opposition, and a proprietor cannot pursue separate inventions through divisional applications at the opposition stage.

– Example from the case: after claim 1 of the blind system was found not novel over D6, auxiliary request XIb’ retained two alternatives from granted dependent claims – operation in two control modes and a maximum of three terminals. The Board found the resulting multiple independent subject-matters compliant with Rule 80 EPC, declined to follow T 1138/02 as a general rule, and remitted the case.

=================

#actionable #top T 2488/22; 2026-2-18

ORIGINAL-KEYWORDS:

Grounds for opposition – added subject-matter (yes)

ORIGINAL-HEADNOTE:

1. The description and drawings should be consulted to interpret the claims not only when assessing patentability under Articles 52 to 57 EPC but also when assessing compliance with other requirements of the EPC. Claims must be interpreted in a consistent and uniform manner when assessing compliance with the EPC (Reasons 16).

2. Limiting the claims based on the description and drawings when such limitations are not derivable from the claims’ wording would deprive Articles 123(2) EPC and 100(c) EPC from their meaning and purpose (Reasons 20 and 21).

AI FEEDBACK:

– The G 1/24 duty to consult the description and drawings is not confined to novelty and inventive step; it also applies when examining added subject-matter and other EPC requirements.

– Consultation does not permit limitations from an embodiment to be read into broader claim wording. All technically reasonable meanings supported by the wording remain relevant to the Article 123(2) EPC comparison.

– Example from the case: the original application disclosed one bypass circuit with two branches, but granted claim 1 referred to a first and a second bypass circuit with different functions and omitted an operating condition for the MPPT controller. The description could not be used to narrow the claim back to the original embodiment, so the claim contained added subject-matter.

=================

#actionable T 0439/22; 2025-12-11

ORIGINAL-KEYWORDS:

Grounds for opposition – lack of patentability (yes)

Interpretation of the claims in light of the description (yes)

Novelty – main request (no)

Amendment after summons – exceptional circumstances (yes) – cogent reasons (yes)

Amendments – patent amended in such a way as to extend the protection it confers (yes)

ORIGINAL-HEADNOTE:

1. In interpreting the language used in a claim, “consulting”, “referring to”, “using” and “taking into account” the description and figures are synonyms for the act of deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim. (see Reasons 2.3)

2. Claim interpretation is the result of both reading the claims and consulting the description and drawings as a unitary process (holistic approach taken by the Enlarged Board of Appeal in decision G 1/24). (see Reasons 2.4)

3. In line with this approach, a person skilled in the art reading the claim in the context of the description and figures will try to take a definition found in the description at face value. As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and figures, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects. (see Reasons 3.4 and 6)

AI FEEDBACK:

– Claim interpretation after G 1/24 is a holistic, unitary exercise: the claim, description and drawings are read together rather than in separate sequential stages.

– An express definition in the description normally carries substantial weight when it is technically reasonable and consistent with the patent as a whole, even where it broadens the ordinary isolated meaning of the claim term.

– Example from the case: the description defined “gathered” tobacco sheet as convoluted, folded or otherwise compressed or constricted transversely. That definition encompassed the spirally wound tobacco sheet in D1, so the allegedly distinguishing feature was disclosed and claim 1 lacked novelty.

=================

T 0758/23; 2025-11-4; Tropical lagoon II/CRYSTAL LAGOONS

ORIGINAL-KEYWORDS:

Article 109(2) EPC – requirement for remittal without comments (no – an internal note added to the electronic file of a related case)

Remittal to the department of first instance (yes)

Procedural irregularity that raises serious concerns (yes – replacement of the whole examining division for no apparent reasons at the stage of interlocutory revision)

ORIGINAL-HEADNOTE:

[W]hile reviewing the documents in the electronic file in related case T 759/23, the Board became aware of an internal note not visible to the public, acting as some sort of votum discussing the appeal. It was added six weeks after the grounds of appeal (see point V of the facts). This was in the three-month period in which the examining division had to consider whether to grant interlocutory revision in that case. The note analysed the allowability of the refused request and drew negative conclusions on the persuasiveness of the appellant’s arguments. It also addressed aspects and evidence not mentioned in the decision or the grounds of appeal. For example, the note analysed documents which the examining division did not use in their reasoning. Subsequently, the case was remitted to the Board.

The Board notes that the composition of the examining divisions at the stage of interlocutory revision was identical in both cases, that the claimed subject-matter is closely related, and that both decisions raised a similar objection under Article 56 EPC. On that basis, the Board judges that there is a sufficiently close connection between the two cases to conclude that the internal note in case T 759/23 was intended to serve as a sort of votum for the assessment of inventive step in the present case as well. (See point 5 of the reasons)

It is clear that this internal note containing comments and conclusions on the substance of the case violates the requirement to remit the case “without comment”. In particular, by providing comments on the merits after issuing the decision, the examining division went beyond the role assigned to it under Article 109(2) EPC and thereby undermined the devolutive effect of the appeal. The Board judges that this procedural flaw constitutes a substantial procedural violation justifying a remittal to the examining division for further prosecution (Article 111(1) EPC and Article 11 RPBA). (See point 6 of the reasons)

Moreover, this case has another connected peculiarity in that, four days after filing the grounds of appeal and by the time the internal note was drafted, the entire examining division had been replaced. An identical replacement took place at the same time in case T 759/23, with the compositions of the examining division, both before and after the replacement, being the same. It thus appears that the internal note, which is unsigned, was drafted by one of the new members of the examining division to assist the other two members in deciding whether to rectify the decisions in case T 759/23 and in this case.

Thus, this note as well as the whole procedure under Article 109 EPC did not even serve the purpose of an interlocutory revision which is to allow for a rectification of the contested decision by the examining division that has taken this decision, but rather represented a complete re-examination of the file. (See point 9 of the reasons)

[T]he arbitrary replacement of the examining division is not supported by a reasonable interpretation of the Guidelines for Examination. The Board considers that this interpretation should not be expanded to include arbitrary “necessary steps”. Just because the President of the Office or any delegee has the power to do something does not mean that they should do it. It may legitimately be expected of an Office that decides on the grant of significant rights to applicants that procedural steps are not exercised arbitrarily. Rather, such steps should be subject to reasonable safeguards in order to avoid the perception that they are exercised for reasons unrelated to the purpose of the procedure – here, to check whether it is immediately apparent from the reasons given in the grounds of appeal that the decision cannot stand. (See point 15 of the reasons)

AI FEEDBACK:

– Article 109(2) EPC requires a non-rectified appeal to be remitted without substantive comments. A hidden internal note analysing the merits is still a prohibited comment and undermines the appeal’s devolutive effect.

– A note in a related file can affect the present case where the examining divisions are identically composed, the claimed subject-matter is closely related and the objections are materially similar.

– Example from the case: an unsigned note in T 759/23 assessed inventive step and documents not used in the refusal. Because the same newly replaced examining division handled both lagoon cases, the Board treated the note as a votum for T 758/23 as well, found a substantial procedural violation and remitted the case.

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T 0759/23; 2025-11-4; Tropical lagoon I/CRYSTAL LAGOONS

ORIGINAL-KEYWORDS:

Article 109(2) EPC – requirement for remittal without comments (no – an internal note added to the electronic file)

Remittal to the department of first instance (yes)

Procedural irregularity that raises serious concerns (yes – replacement of the whole examining division for no apparent reasons at the stage of interlocutory revision)

ORIGINAL-HEADNOTE:

[W]hile reviewing the documents in the electronic file, the Board became aware of an internal note not visible to the public, acting as some sort of votum discussing the appeal. It was added six weeks after the grounds of appeal (see point V of the facts). This was in the three-month period in which the examining division had to consider whether to grant interlocutory revision. The note analysed the allowability of the refused request and drew negative conclusions on the persuasiveness of the appellant’s arguments. It also addressed aspects and evidence not mentioned in the decision or the grounds of appeal. For example, the note analysed previous claim versions and documents which the examining division did not use in their reasoning. Subsequently, the case was remitted to the Board. (See point 5 of the reasons)

Moreover, this case has another connected peculiarity in that, four days after filing the grounds of appeal and by the time the internal note was drafted, the entire examining division had been replaced. It thus appears that the internal note, which is unsigned, was drafted by one of the new members of the examining division to assist the other two members in deciding whether to rectify the decision.

AI FEEDBACK:

– The “without comment” rule prevents the examining division from supplementing its refusal with a later merits analysis once it decides not to rectify the decision.

– Interlocutory revision is a limited check by the division that issued the decision; replacing the whole division and conducting a fresh merits review defeats that purpose and requires procedural safeguards.

– Example from the case: six weeks after the grounds of appeal, an unsigned internal note assessed the refused request, earlier claim versions and documents absent from the refusal. The entire examining division had been replaced four days after the appeal grounds were filed. The Board regarded this as a substantial procedural violation and remitted the case.

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T 0077/23; 2025-10-21

ORIGINAL-KEYWORDS:

Neuheit – (nein)

Einspruchsgründe – mangelnde Patentierbarkeit (ja)

Prüfung des Einspruchs – Umfang der Befugnis zur Prüfung der Einspruchsgründe

AI-TRANSLATED-KEYWORDS:

Novelty – (no)

Grounds for opposition – lack of patentability (yes)

Examination of the opposition – scope of the power to examine the grounds for opposition

ORIGINAL-HEADNOTE:

Eine erstmalige Diskussion in der mündlichen Verhandlung der Neuheit oder erfinderischen Tätigkeit des beanspruchten Gegenstands gegenüber von im Verfahren diskutierten Druckschriften, welche nur zu höherrangigen Anträgen diskutiert worden waren, kann die der mündlichen Verhandlung fernbleibende Partei nicht überraschen und stellt keine Verletzung ihres rechtlichen Gehörs dar (Punkt 10.4 der Gründe).

AI-TRANSLATED-HEADNOTE:

A first-time discussion at oral proceedings of the novelty or inventive step of the claimed subject-matter in view of prior-art documents discussed in the proceedings, but previously discussed only in relation to higher-ranking requests, cannot surprise a party absent from the oral proceedings and does not constitute a violation of its right to be heard (point 10.4 of the Reasons).

AI FEEDBACK:

– A party that deliberately stays away from oral proceedings must accept foreseeable developments of objections based on prior-art documents already discussed in the case. Its absence cannot freeze the debate at the exact wording of the written submissions.

– The Board may address an essential objection based on facts and evidence already in the proceedings, particularly when assessing an auxiliary request that was not examined at first instance.

– Example from the case: the proprietor did not attend the hearing. Auxiliary request 8 was based on auxiliary request 6, while E1 had already been identified as novelty-destroying for higher-ranking requests 1 to 7. The first detailed E1 novelty discussion against request 8 at the hearing was therefore a logical continuation and did not violate Article 113(1) EPC.

=================

T 1283/22; 2025-10-16; Circuit Breaker

ORIGINAL-KEYWORDS:

Novelty – main request and auxiliary requests I-VI (no) – auxiliary request VIII (yes)

Claims – clarity – auxiliary request VII (no)

ORIGINAL-HEADNOTE:

While the amending of Rule 117 EPC may have been occasioned by a particular situation (in this case the pandemic), the wording of Rule 117 EPC does not limit its application to a pandemic or similar exceptional situation. It thus applies irrespective of whether the situation which occasioned its amendment persists or not (Reasons 2.3.2 (a)).

The board is not aware of any statement by the Enlarged Board in G 1/21 that would be even indirectly – let alone directly – applicable to hearing a witness. (Reasons 2.3.2 (e)).

AI FEEDBACK:

– Rule 117 EPC expressly permits witness hearings by videoconference and contains no sunset clause tied to the pandemic that prompted its amendment.

– G 1/21 concerns the procedural position and oral-hearing rights of parties; it does not establish a separate in-person standard for witnesses. Witness evidence remains subject to free evaluation.

– Example from the case: in the 2021 opposition proceedings, a witness was heard by videoconference about prior use of PKTZM0 circuit breakers. The proprietor requested an in-person hearing and argued that pandemic conditions no longer justified video evidence, but the Board held that the format complied with Rule 117 EPC and did not amount to a procedural violation.

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R 0003/24; 2026-3-31; Petition for review

ORIGINAL-KEYWORDS:

Breach of secrecy of deliberation (Article 19(1) RPBA) a fundamental defect under Article 112a(2)(d) EPC or per se leading to violation of right to be heard (no)

Petition allowable (no) no violation of petitioner’s right to be heard

ORIGINAL-HEADNOTE:

1. A request to uphold an appeal on the basis of a specific piece of prior art is not a request in the meaning of Rule 104(b) EPC (point 3.1 of the Reasons).

2. Article 112a(2)(d) EPC is not a “catch-all clause” for procedural defects. It merely empowers the legislature to define defects in the Implementing Regulations in addition to the defects mentioned in Article 112a EPC. Rule 104 EPC exhaustively defines exactly two defects; a violation of any of the provisions of the RPBA is not among them. (R 12/23, point 3.1 affirmed.) (See point 3.2 of the Reasons).

This applies in particular to an asserted violation of Article 19(1), third sentence, RPBA according to which “[t]he deliberations shall be secret.” A remedy for the breach of the secrecy of the deliberation does exist: board members may be liable to disciplinary action by the Administrative Council. (See points 4.1.2 and 4.3.1 of the Reasons).

AI FEEDBACK:

– Rule 104(b) EPC concerns an actual request for an executable legal consequence, such as setting aside a decision or maintaining a patent. It does not require the board to issue a separate ruling on every argument or preferred route by which a party says that consequence should be reached.

– Article 112a(2)(d) EPC is not a general review ground for every procedural irregularity. Under the current Implementing Regulations, Rule 104 EPC exhaustively identifies the additional defects covered; a breach of an RPBA provision, including the secrecy of deliberations, is not automatically one of them.

– A secrecy issue also does not by itself establish a violation of the right to be heard. Article 113(1) EPC focuses on whether the party had an opportunity to comment on the essential legal and factual reasoning on which the decision was based.

– Example from the case: the proprietor argued that the appeal should have been upheld on the basis of D5/D9, whereas the Board assessed inventive step starting from D10. The Enlarged Board treated the D5/D9 route as an argument supporting the request to set aside the revocation, not as a separate request. In a separate “room incident”, the opponent’s representative entered the deliberation room and was asked to leave; this did not create a review ground under Article 112a(2)(d) EPC or establish a relevant denial of the proprietor’s right to be heard.

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#actionable T 0101/22; 2026-2-27; Barillet/ROLEX

ORIGINAL-KEYWORDS:

Activité inventive – (non) – alternative évidente

Droit d’être entendu – procédure d’examen – possibilité de prendre position (oui)

Objection au titre de la règle 106 CBE – rejetée

Remboursement de la taxe de recours – équitable en raison d’un vice substantiel de procédure (non)

AI-TRANSLATED-KEYWORDS:

Inventive step – (no) – obvious alternative

Right to be heard – examination proceedings – opportunity to comment (yes)

Objection under Rule 106 EPC – rejected

Reimbursement of the appeal fee – equitable by reason of a substantial procedural violation (no)

ORIGINAL-HEADNOTE:

Un effet technique ne peut être pris en compte dans l’appréciation de l’activité inventive que s’il est obtenu sur essentiellement toute la portée revendiquée. Cette condition n’est pas remplie lorsque l’effet n’est obtenu qu’en comparant l’objet revendiqué à un élément de l’état de la technique sur la base de l’hypothèse supplémentaire selon laquelle d’autres caractéristiques ou paramètres non définis dans la revendication sont identiques (sophisme du “toutes choses inchangées par ailleurs”), voir motifs 2.4.2.

Il ne saurait raisonnablement être exigé de produire une preuve à l’appui d’une analyse selon laquelle certaines modifications de l’état de la technique auraient été évidentes. Une telle analyse ne constitue pas un fait susceptible de preuve, mais un argument. Une partie qui conteste les connaissances générales ne peut exiger une preuve que pour les faits qui sont présentés comme faisant partie de ces connaissances générales, voir motifs 12.9.

AI-TRANSLATED-HEADNOTE:

A technical effect can be taken into account in the assessment of inventive step only if it is achieved over substantially the entire claimed scope. This condition is not fulfilled where the effect is obtained only by comparing the claimed subject-matter with an item of prior art on the additional assumption that other features or parameters not defined in the claim are identical (the “all other things being equal” fallacy), see Reasons 2.4.2.

It cannot reasonably be required to produce evidence in support of an analysis that certain modifications of the prior art would have been obvious. Such an analysis is not a fact capable of proof, but an argument. A party disputing common general knowledge may demand evidence only for facts presented as forming part of that knowledge, see Reasons 12.9.

AI FEEDBACK:

– The first headnote requires a causal link between the relied-on technical effect and the claimed features across substantially the full scope of the claim. Unclaimed conditions cannot silently be held constant to manufacture an advantage over the prior art.

– In this case, the claim to the watch barrel did not define the available installation volume or the presence and properties of the mainspring. The alleged increase in power reserve therefore depended on additional, unclaimed assumptions. The objective technical problem was consequently reduced to providing an alternative shape for the barrel-cover and drum walls, and the claimed alternative was considered obvious.

– The second headnote separates facts from argument. Evidence may be requested for a factual assertion said to form part of common general knowledge, but not for the evaluative reasoning that a particular modification or trade-off would have been obvious.

– Example from the case: Rolex compared the claimed barrel with a hypothetical prior-art barrel that was identical except for the distinguishing wall geometry. The Board rejected that comparison because the claim did not require the same surrounding volume or the same mainspring. It also treated the examining division’s assessment that reducing thickness to 0.18 mm or using a gradual thickness involved predictable trade-offs as argument, not as facts requiring separate proof.

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#actionable T 0558/21; 2025-12-15; Calcul cryptographique sur courbe elliptique/IDEMIA

ORIGINAL-KEYWORDS:

Procédure orale – requête de tenue de la procédure orale par visioconférence (refusée)

Vice substantiel de procédure – violation du droit d’être entendu (non)

Modifications – admises (oui)

Interprétation de la revendication 1 – sous-étape mentionnée dans la revendication n’est pas limitative

Exclusion de la brevetabilité – (non)

Activité inventive – effet technique (oui) – non-évidence au regard de l’état de la technique documenté pas contestée en recours

AI-TRANSLATED-KEYWORDS:

Oral proceedings – request to hold the oral proceedings by videoconference (refused)

Substantial procedural violation – violation of the right to be heard (no)

Amendments – admitted (yes)

Interpretation of claim 1 – sub-step mentioned in the claim is not limiting

Exclusion from patentability – (no)

Inventive step – technical effect (yes) – non-obviousness over documented prior art not contested on appeal

ORIGINAL-HEADNOTE:

1. Sur la pertinence de l’appartenance d’une invention à un « domaine technique » pour son caractère technique et pour l’identification des caractéristiques qui y contribuent, cf. points 29 et 42.

2. Sur la contribution technique d’une méthode mathématique de génération d’un point sur une courbe elliptique utilisé dans une application cryptographique, cf. point 40.

3. Sur la détermination des caractéristiques d’une invention qui contribuent à son caractère technique dans le cadre de l’approche COMVIK, cf. point 41.

AI-TRANSLATED-HEADNOTE:

1. On the relevance of an invention’s belonging to a “technical field” for its technical character and for identifying the features that contribute to that character, see points 29 and 42.

2. On the technical contribution of a mathematical method for generating a point on an elliptic curve used in a cryptographic application, see point 40.

3. On determining the features of an invention that contribute to its technical character under the COMVIK approach, see point 41.

AI FEEDBACK:

– Merely classifying cryptography as a “technical field” does not make every feature of a cryptographic invention technical. The decisive question is whether a feature contributes to producing a technical effect that solves a technical problem.

– A mathematical method for generating an elliptic-curve point is non-technical as such. In the claimed context, however, the secret parameter t was transformed by an electronic component into point P efficiently while reducing the risk that the secret could be recovered through a timing attack. That functional integration into the cryptographic application gave the combined steps a technical contribution.

– Under COMVIK, the relevant features are those that contribute to the invention’s technical character. The Board may recognise a technical contribution by the mathematical steps as a whole without deciding immediately that every mathematical detail contributes; arbitrary details can still be identified later, including through comparison with the prior art.

– Example from the case: in the disclosed PACE password-authentication embodiment, t was derived from the user’s password and therefore represented a secret. The claimed operation pattern generated the elliptic-curve point used in the protocol while keeping the number and type of important operations sufficiently uniform to resist timing analysis.

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R 0016/23; 2025-11-21; Petition for review

ORIGINAL-KEYWORDS:

Petition for review – failure to arrange oral proceedings – decision under review set aside – re-opening of proceedings

ORIGINAL-HEADNOTE:

1. As oral proceedings had been requested by the appellant-applicant in the event that an adverse decision on the request for re-establishment of rights and on the appeal were taken, the Board should have arranged for the holding of oral proceedings pursuant to Article 116(1) EPC before taking any such adverse decision.

2. The failure to arrange oral proceedings constitutes a fundamental procedural defect within the meaning of Article 112a(2)(d) and Rule 104(a) EPC since, as a result, the appellant-applicant did not have the opportunity to present the case orally on the decisive issues of re-establishment of rights and the admissibility of the appeal.

3. As a consequence, the decision is to be set aside, proceedings before the Board are to be re-opened and the fee for the petition for review is to be reimbursed.

AI FEEDBACK:

– A conditional request for oral proceedings becomes operative when the Board is considering the adverse outcome specified in the condition. Once such a request exists and has not been withdrawn, Article 116(1) EPC generally leaves no discretion to replace the requested hearing with a written decision.

– The defect is fundamental when the issues on which oral proceedings were requested are the same decisive issues on which the proceedings are terminated. The petitioner need not additionally prove that oral argument would probably have changed the result; the loss of the requested opportunity to present the case orally is itself decisive.

– The procedural consequence is restoration of the opportunity that was denied: the adverse decision is set aside, the appeal proceedings are reopened, and the petition fee is reimbursed.

– Example from the case: the applicant requested oral proceedings if its request for re-establishment of the time limit for filing the grounds of appeal was to be rejected. The Legal Board nevertheless rejected re-establishment and then rejected the appeal as inadmissible in written proceedings. The Enlarged Board held that the requested hearing should have taken place before those linked adverse findings were made.

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R 0010/24; 2025-10-6; Antrag auf Überprüfung

ORIGINAL-KEYWORDS:

Verletzung des rechtlichen Gehörs (nein)

AI-TRANSLATED-KEYWORDS:

Violation of the right to be heard (no)

ORIGINAL-HEADNOTE:

Wegen der Intensität des Eingriffs einer Nichtzulassung geänderten Vorbringens durch Vorschriften der VOBK, d.h. deren Artikel 12 und 13, sind Auslegung und Anwendung dieser das rechtliche Gehör qualifizierenden Vorschriften einer inhaltlichen Kontrolle nicht lediglich auf Willkür zu unterziehen. Insoweit ist das Recht auf rechtliches Gehör etwa auch bei einer offenkundig unrichtigen Anwendung solcher Vorschriften verletzt. (Siehe Entscheidungsgründe, Nr. B.II.3.2.)

AI-TRANSLATED-HEADNOTE:

Because of the intensity of the interference caused by the non-admission of amended submissions under provisions of the RPBA, namely Articles 12 and 13, the interpretation and application of those provisions, which qualify the right to be heard, are subject to substantive review and not merely to review for arbitrariness. In this respect, the right to be heard is also infringed, for example, where such provisions are applied manifestly incorrectly. (See Reasons B.II.3.2.)

AI FEEDBACK:

– Non-admission of amended submissions can remove a party’s ability to rely on material that may decide the case. For that reason, review of the application of Articles 12 and 13 RPBA is not confined to asking whether the board acted arbitrarily; a manifestly incorrect application can also amount to a violation of the right to be heard.

– This remains a limited procedural review. The Enlarged Board does not become a third instance and does not substitute its own assessment of the substantive law or repeat the board’s discretionary decision. It asks whether the governing admission rules were applied in a way that was manifestly incorrect and relevant to the opportunity to be heard.

– The standard did not assist the petitioner here because the late amendment responded to an issue that was already identifiable from the file and the opposing party’s submissions. Applying the prevailing Article 13(2) RPBA practice to refuse the late auxiliary request was therefore not manifestly incorrect.

– Example from the case: claim 1 covered synthesis gas with more than 12 vol.% methane but had no upper limit, while insufficiency for methane contents around 20-25 vol.% had already been raised. The proprietor added an upper limit only during the appeal hearing after the main request failed. The Board did not admit that auxiliary request, and the Enlarged Board found no surprising new factual issue and no violation of the right to be heard.

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#actionable T 0035/20; 2024-5-17; Double press to pay/APPLE

ORIGINAL-KEYWORDS:

Inventive step – double press on button with integrated fingerprint sensor to pay with phone – (yes – not a mere user requirement)

ORIGINAL-HEADNOTE:

The term “user requirement” is often used when assessing the technicality of features of user interfaces. The Board understands the term to refer to needs and preferences defined by the end user of a system, who does not possess any technical understanding of the system. Under the Comvik approach (T 641/00 – Two identities/COMVIK), such user requirements may appear in the formulation of the technical problem as they do not make any technical contribution. It was confirmed in T 1463/11 – Universal merchant platform/CardinalCommerce that non-technical (user) requirements cannot normally specify any technical matter or be based on technical considerations. That is not to say that they cannot refer to the underlying technical system at all. Just like the technically skilled person, the user starts from the technical system of the prior art; user requirements do not appear in a vacuum. Thus, if the user uses software on a computer, he may formulate non-technical requirements relating to this software (see e.g. T 2019/12 – Angabe einer Order/Lacqua). Analogously, if, as in the present case, the system is a mobile phone, the user may formulate requirements relating to the use of the phone, as long as they do not involve technical considerations or require technical understanding.

(See point 8 of the reasons)

AI FEEDBACK:

– A “user requirement” is a goal or preference that a non-technical end user can formulate, such as making payment faster, reducing the number of steps, or allowing payment while the rest of the phone remains locked. Such a requirement can be included in the technical problem under COMVIK but cannot itself support inventive step.

– The boundary is crossed when the supposed requirement already embodies technical considerations that the skilled person must investigate. A simple mapping such as pressing a known “pay” button may remain non-technical, whereas coordinating a timed double press with a fingerprint sensor that already performs the phone-unlock function is a technical design choice.

– The Board therefore assessed the concrete interaction and implementation rather than treating every user action as non-technical. It found no prior-art suggestion for the claimed dual use of the home button and integrated biometric sensor and considered the solution inventive.

– Example from the case: on the iPhone 6, the user first unlocked the device and then opened the payment app, authenticating again with the fingerprint sensor. The claimed method instead detected a second press within a predetermined interval, such as 300 ms, and used the integrated fingerprint reading to enable payment directly from the lock screen; without the second press, the device merely unlocked.

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