II. PATENTANMELDUNG UND ÄNDERUNGEN

In T 1424/23 the board explained that when assessing compliance with Art. 123(2) EPC, it has to be established whether the application has been amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. Citing G 3/89, the board recalled that the content of the application as filed consists of the description, claims and drawings as filed, i.e. on the filing date. In the case in hand, the application as filed had been published during the international phase.

However, the decision under appeal discussed the amendments made to claim 1 compared to the amended claim 1 filed on entry into the European phase. The board observed that the claims filed on entry into the European phase did not correspond to those of the application as filed. It therefore established that the claims filed on entry into the European phase did not provide a basis for assessing compliance with Art. 123(2) EPC.

As it appeared that the examining division had incorrectly relied on the claims filed on entry into the European phase for its Art. 123(2) EPC assessment, the board concluded that a proper Art. 123(2) EPC assessment might not have been carried out. Consequently, it remitted the case to the examining division for further prosecution.

In T 866/24, during the oral proceedings before the board, the opponent (respondent) submitted that the unclear features underlying the amendments made to claim 1, which were based on the patent description, were building up on corresponding unclear formulations taken from dependent claim 6 as granted. Raising an objection under Art. 84 EPC against unclear features stemming from granted dependent claims should, in the opponent’s view, be admissible under such circumstances.

The board agreed, in principle, with the opponent's concerns. According to the board’s perception, there was a recent tendency to examine dependent claims less and less with respect to clarity in examination proceedings despite the fact that their full examination under Art. 84 EPC was not considered "unrealistic" in G 3/14, point 32 of the Reasons. Such a full examination was even expressly encouraged by the Enlarged Board in G 1/24, point 20 of the Reasons (i.e. highlighting "the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC"). The board noted that the justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, were deemed to have been examined for clarity, although de facto they had not been. Nonetheless, they could not be objected to under Art. 84 EPC due to the conclusions of G 3/14.

The board observed that this result was unsatisfactory, as an independent claim with unclear features leaves much to the readers' imagination. It added that unclear features tend to elude a sensible comparison with the prior art. Furthermore, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. In the board’s view, categorically barring opponents in such cases from raising clarity objections under Art. 84 EPC causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the opposition divisions and the boards of appeal.

In T 878/23 claim 1 of the main request concerned a product claim. The claimed composition comprised an amino acid combination selected from seven combinations containing two or three amino acids selected from cysteine, alanine, lysine and arginine. Claim 1 further specified that the composition contained specified concentrations (amounts) of each of lysine, alanine and arginine (from "8 to 20 wt.%") and cysteine (from "2 to 10 wt.%") based on the composition's total dry weight. Claim 1 thus defined minimum and maximum amounts for each of the four indicated amino acids in the claimed composition. Dependent claim 4 further specified that the composition of claim 1 contained a "total amino acid concentration ... in the range from 3.5 to 36.5 wt%, based on the total dry weight of the composition". Claim 4 added thus a further limit to the composition as defined in claim 1 concerning the used total minimum and maximum concentration (amount) of amino acids.

The board observed that the minimum concentration of amino acids that had to be present in the claimed composition differed between the ranges indicated in claims 1 and 4. The board explained that since a dependent claim (here claim 4) contained more technical features than an independent claim (here claim 1) on which it depended, the subject-matter of a dependent claim was generally more limited than that of the independent one. However, in the case in hand, the compositions specified in claim 4 were broader than those of claim 1, since claim 4 allowed the presence of lower amino acid concentrations in the claimed composition than claim 1. Since the concentration ranges defined in claims 1 and 4 were mutually exclusive, i.e. incompatible, over a substantial part of their ranges, the skilled person could not technically prepare the composition as defined in claim 4 across substantially the whole breadth claimed, even if taking common general knowledge into account. The subject-matter of claim 4 was therefore insufficiently disclosed.

While appellant I (the patent proprietor) admitted that there was an inconsistency between the concentration ranges indicated in claims 1 and 4, it argued that this inconsistency exclusively resulted in a clarity issue (Art. 84 EPC). The board disagreed. The board explained that the decisive issue did not concern an ambiguity of the scope of protection of the claimed invention, as would be the case, for example, if a specific compound would be defined by an unclear parameter. In the case in hand, standard amino acids were used for preparing the claimed composition. These were specified by standard concentration ranges. The methods for determining these concentrations were standard too. Nevertheless, despite these clear instructions in claims 1 and 4, the skilled person could not prepare the claimed composition over substantially the whole breadth of claim 4 due to the at least in part incompatible or mutually exclusive concentration requirements indicated in claims 1 and 4. Claim 4 thus contained no "forbidden area", but an area which could not be prepared for technical reasons.

The board concluded that Art. 100(b) EPC prejudiced the maintenance of the patent as granted. Since the objections under insufficiency indicated above for claim 4 as granted applied likewise to auxiliary requests 1 to 18, the board held that auxiliary requests 1 to 18 did not comply with the requirements of Art. 83 EPC.

In T 873/23 claim 1 as granted was amended with respect to claim 1 as originally filed inter alia by Feature 1.5x, specifying that, for an electric coil cooktop and an electric glass ceramic cooktop, the control device was configured to control the power level of the cooktop "by turning the heating element continuously on and off". It was common ground that there was no literal basis for "continuously" in the context of "turning the heating element on and off" in the application as filed. However, the board observed that there were other occurrences of the term "continuously" in the description (both as filed and as granted) and in claim 1 as granted in the context of monitoring/sensing the temperature and calculating a rate of change of the sensed temperature. The parties agreed that, according to the patent, in these occurrences "continuously" meant "periodically", albeit with different time periods for monitoring and calculating.

The board agreed in principle with the "two-step approach" for the assessment of added matter set out in the Catchword of T 367/20. The patent claims first had to be interpreted in order to determine the subject-matter they contained after the amendment. They were interpreted in line with G 1/24, which states, in the context of assessing the "patentability of an invention under Articles 52 to 57", that the claims are the starting point and the basis for the assessment, and the description and drawings are always to be consulted to interpret the claims. The board considered this to be true not only for the question of "patentability of an invention under Articles 52 to 57" but also for the issue of Art. 123(2) EPC. In a second step, it had to be assessed whether the subject-matter of the amended claim contained subject-matter which extended beyond the content of the application as filed. In this regard, in accordance with G 2/10, the decisive factor was whether the skilled person was presented with new technical information after the amendment..

The board disagreed with the two interpretations of Feature 1.5x submitted by the appellant (patent proprietor). The board considered that the only convincing interpretation of the expression "by turning the heating element continuously on and off" was that of periodically turning the heating element on and off (at fixed intervals) as submitted by the respondent, which included pulse-width modulation of the heating element in accordance with a predetermined duty cycle. In reply to the appellant’s argument that this interpretation "was not in line with the disclosure in the patent", the board explained that, according to T 367/20, a claim feature had to be interpreted not in isolation but in the context of the whole document it formed part of. This was, however, to be done by taking due account of the primacy of the claims (see also T 1473/19). This was also in line with G 1/24, which states that the "claims are the starting point and the basis" (see also UPC_CoA_335/2023, second Headnote, according to which the claims were the "decisive basis").

The board observed that the application as filed disclosed embodiments in which the heating element was controlled on the basis of a duty cycle and was thus "continuously" turned on and off. However, even in the algorithm using duty cycles, different duty cycles and phases of keeping the heating element "on" for a specific period of time were employed. The heating element was thus not always "periodically" turned on and off, and the "continuity" of the duty cycle was interrupted under certain conditions. As claim 1 as granted did not include these more specific aspects of the power control for the electric glass ceramic cooktop of the application as filed, and as the application as filed did not disclose a periodicity throughout the algorithm, the amendment in Feature 1.5x was at least an unallowable intermediate generalisation of the original disclosure. Moreover, the application as originally filed did not contain a corresponding disclosure (power control algorithm based on a duty cycle) for the electric coil cooktop (Feature 1.5a). Accordingly, the combination of Feature 1.5x with Feature 1.5a extended beyond the content of the application as filed..

The maintenance of the patent as granted according to the main request was thus prejudiced by the ground of opposition under Art. 100(c) EPC. Since none of the claim requests was allowable, the appeal was dismissed.

In T 883/23 the board had to decide whether claim 1 of the main request was entitled to claim priority from the earliest priority application (P1). P1 disclosed a method for treating pancreatic cancer in a human subject who has not previously received chemotherapy involving the administration of MM-398 liposomal irinotecan, wherein the liposomal irinotecan was administered in combination with oxaliplatin, leucovorin and 5-fluorouracil (claim 3). P1 defined doses of 60 or 80 mg/m2 liposomal irinotecan (claim 5) and 60, 75 or 85 mg/m2 oxaliplatin (claim 8)..

Example 4 of the patent presented the results of a dose escalation/de-escalation study demonstrating the tolerability of the selected dose combination of claim 1 of the main request, as opposed to the intolerable and thus unsuitable alternative dose combinations defined in claims 5 and 8 of P1. The board observed that information concerning the tolerability of the selected dose combination of claim 1 of the main request was not revealed in P1. In particular, this information was not provided by the mere outline for the dose escalation/de-escalation study in P1, which the patent proprietor relied on as a pointer to the subject-matter of claim 1 of the main request with reference to T 1261/21. The board noted that in T 1261/21 the competent board had explained that a "pointer" in an original disclosure was an implicit or explicit indication or hint towards a combination of features, which demonstrated that this combination of features did not represent an arbitrary combination of features only conceptually comprised, but was actually envisaged in the original disclosure. However, the competent board had emphasised that what information a skilled person would directly and unambiguously derive from the original disclosure remained to be assessed on a case-by-case basis.

According to the board, in the present case, P1 provided with the outline for the dose escalation/de-escalation study only a conditional proposal for the use of a combination of 60 mg/m2 liposomal irinotecan and 60 mg/m2 oxaliplatin as part of a study still to be carried out. This proposal could not be considered to provide any pointer to the combination of 60 mg/m2 liposomal irinotecan and 60 mg/m2 oxaliplatin uniquely tolerable in first-line treatment of patients with metastatic pancreatic cancer as defined in claim 1 of the main request.

The board rejected the patent proprietor's argument that P1 described the same subject-matter as defined in claim 1 of the main request, which should in accordance with G 2/98 therefore benefit from the priority of P1, regardless of any additional technical effects, such as the results of the dose escalation/de-escalation study, which may have been described only in the subsequent application from which the patent was derived. The board observed that, according to the established jurisprudence of the Boards of Appeal, attaining the claimed therapeutic effect was regarded as a functional technical feature of claims in the format of Art. 54(5) EPC. Notably, the tolerability of the defined treatment was a prerequisite for the therapeutic efficacy (T 2506/12). The tolerability of the dose combination as defined in claim 1 of the main request, as opposed to the intolerability of the alternative combinations with higher doses of claims 5 and 8 and the dose escalation/de-escalation scheme in P1, was thus a functional technical feature of the subject-matter defined in claim 1 of the main request. This feature concerned information which was not directly and unambiguously derivable from P1.

The board further observed that the Enlarged Board determined in G 2/98 that it is a condition for the compliance with the requirement of "the same invention" that the claimed subject-matter is directly and unambiguously derivable from the earlier application. However, the Enlarged Board did not conclude that the requirement of "the same invention" is necessarily satisfied if this condition is fulfilled, irrespective of any technical information associated with the claimed subject-matter, which is only described in the subsequent patent application. Notably, the established jurisprudence confirmed the need for sufficient disclosure of the claimed invention in the priority document.

In T 2387/22 claim 1 according to auxiliary requests 9 to 11 defined the use of a Vacuum Metallised Pigment (VMP) in a flexographic ink formulation for providing the following technical effects: "fewer print defects, higher hiding and stronger colour and allowing a lower volume anilox". The respondent (patent proprietor) submitted that according to G 2/88, when a use claim defined technical purposes or effects, these were to be interpreted as functional features restricting the scope of protection.

According to the appellant (opponent) these functional features did not meet the requirement of clarity under Art. 84 EPC, since they were defined using relative terms as well as diffusely defined concepts. The respondent replied that it was a well-established practice of the boards to allow the definition of effects or purposes in non-medical use claims using broad and/or relative terms.

The board observed that there was no basis – be it in the case law or in the EPC – for concluding that the limiting functional features of a use claim are exempt from the clarity requirement under Art. 84 EPC or somehow exposed to lower standards in this respect. It however emphasised that – irrespective of whether a claim was directed to a use or to any other category of subject-matter – the mere breadth of protection did not in itself imply a lack of clarity. The decisive consideration was whether the feature(s) in question gave(s) rise, or could plausibly give rise, to legal uncertainty when assessing whether a particular subject-matter falls within or outside the scope of protection conferred by the claim.

Moreover, the board stated that, where the invention was based on the discovery of a new technical effect of a known entity (as in G 2/88 and G 6/88), it was generally accepted in practice to define that effect in correspondingly broad terms, provided the effect was sufficiently distinct to clearly delimit the scope of protection with respect to the prior art. The situation in the present case was, however, fundamentally different. The use claim did not seek to define distinct technical effects, but rather relative improvements in the achievement of such effects..

The board held that where a claimed invention is defined by the use of a known entity to achieve a known technical effect or purpose, and the alleged technical contribution lies in a relative improvement or enhancement of that effect or purpose, the requirement of clarity under Art. 84 EPC generally demands that the feature defining such relative improvement or enhancement be expressed in objectively verifiable terms, thereby ensuring legal certainty regarding the scope of protection. In these "relative-improvement" scenarios, any imprecise functional language could blur the distinction between claimed and known uses, giving rise to the very legal uncertainty that the clarity requirement is intended to prevent.

In the present case, the board concluded that no objective criteria were available for determining when the number of print defects, the degree of hiding, the colour intensity or the anilox volume could be regarded as sufficiently low or high for other uses to fall within or outside the scope of the claim. As a result, the subject-matter of claim 1 could not be assessed objectively in relation to the prior art, which gave rise to legal uncertainty and therefore failed to meet the clarity requirement of Art. 84 EPC.

In T 1849/23 claim 1 as granted was directed to a trailer oscillation and stability control device comprising, among other things, an angular rate sensor positioned and configured to measure the rate of angular trailer deflection about a hitch pivot point and to generate corresponding angular trailer deflection rate signals.

In response to a novelty objection based on a prior art document, which disclosed a yaw rate sensor on the trailer, the respondent (patent proprietor) had argued that the absolute yaw rate and the rate of angular trailer deflection about the hitch pivot point were distinct physical quantities, even if their values coincided during straight-line vehicle operation. These two physical quantities did not become the same physical quantity simply because their values coincided in one specific condition. The claim clearly defined the angular rate sensor as being configured to measure the rate of angular trailer deflection about a hitch pivot point.

The board agreed that, when the claim was read in isolation, that feature could be read literally such that the angular rate measured by the sensor was the rate of the angle made by an axis passing through the hitch pivot point with respect to a reference axis. However, in accordance with G 1/24, claim interpretation required taking into consideration the wording of the claim and the content of the description..

The board observed that the patent disclosed a gyroscope sensor (i.e. a sensor for measuring the yaw rate) as the only specific implementation of the claimed angular rate sensor. This was not only denoted in figures 3 and 4 as a "gyro", but the description of the preferred embodiments of the invention also described the sensor as a raw angular rate sensor, i.e. a sensor measuring absolute yaw rate. A measure of the yaw rate of the trailer coincides with the rate of the angle made by an axis passing through the hitch pivot point with respect to a reference axis, when the yaw rate of the towing vehicle is null or negligible (e.g. when the towing vehicle is moving along a straight line). Consequently, when consulting the description the claim could not be strictly construed as requiring the measurement of the rate of the angle made by an axis passing through the hitch pivot point with respect to a reference axis under any conditions or movements of the towing vehicle. The claim had to be construed in a broader manner, i.e. as only requiring that said measurement could be made under certain conditions.

In T 1999/23 stellte die Kammer fest, dass die Fachperson unter dem Begriff "Anregungsfläche" (in Merkmal M1.7) für sich genommen die Querschnittsfläche des Anregungslichts auf der Probe verstehen würde – unabhängig von der Entfernung zwischen Probe und fotothermischem Gerät. Allerdings wurde dieser für die Fachperson klare Begriff in Absatz [0008] der Beschreibung des Streitpatents in einschränkender Weise definiert: "Der Begriff 'Anregungsfläche' meint die Querschnittsfläche des Anregungslichts im Fokus..

Die Kammer erläuterte, dass die Große Beschwerdekammer in G 1/24 klargestellt habe, dass bei der Auslegung von Patentansprüchen die Beschreibung heranzuziehen sei, im Übrigen aber auf die durch die Rechtsprechung entwickelten Grundsätze verwiesen habe. Einer dieser Grundsätze laute, dass eine einschränkende Begriffsdefinition in der Beschreibung nicht dazu verwendet werden dürfe, den ansonsten für die Fachperson eindeutig breiteren Anspruchsgegenstand einzuschränken (siehe Rechtsprechung der Beschwerdekammern, 10. Aufl. 2022, II.A.6.3.4). Dieser Grundsatz behalte auch nach der Entscheidung G 1/24 Gültigkeit, da die Große Beschwerdekammer betont habe, dass die Auslegung bei den Patentansprüchen beginnt und auf ihnen beruht.

Im vorliegenden Fall habe die Patentinhaberin durch die inkonsistente Verwendung des Begriffs "Anregungsfläche" – einerseits im Anspruch ohne Einschränkung, andererseits in der Beschreibung mit fachunüblicher Einschränkung – eine Zweideutigkeit geschaffen..

Die Kammer sah keinen sachlichen Grund, weshalb es einem Patentinhaber gestattet sein sollte, bei der Formulierung des Gegenstands, von dessen Nutzung Dritte ausgeschlossen werden sollen, von der fachlich etablierten Terminologie ohne erkennbare Rechtfertigung abzuweichen und hierauf nur in der Beschreibung hinzuweisen. Ein uneingeschränktes Recht hierzu würde die Rechtssicherheit untergraben. Zwar möge es im Einzelfall rechtfertigende sachliche Gründe geben. Im vorliegenden Fall sei ein solcher Grund für die Kammer jedoch nicht ersichtlich.

Im Ergebnis zeige der Blick in die Beschreibung lediglich, dass in der Beschreibung eine begriffliche Abweichung von der fachüblichen Terminologie bestehe, die sich im Anspruch nicht widerspiegele. Diese Zweideutigkeit zulasten desjenigen aufzulösen, der sie ohne sachliche Notwendigkeit geschaffen habe, entspreche dem Prinzip der Rechtssicherheit sowie dem in der Entscheidung G 1/24 bekräftigten Vorrang der Patentansprüche.

Daher sei der Begriff "Anregungsfläche" im Anspruch im Sinne seiner fachüblichen Bedeutung als "Querschnittsfläche des Anregungslichtes unabhängig vom Abstand" und nicht eingeschränkt als "Querschnittsfläche des Anregungslichts im Fokus" zu verstehen.

In T 405/24 the board agreed with the opposition division and the respondents that granted claim 1 contained added subject-matter. Feature 1.7 bore no limitation in respect of the type of "filtered packets" being "routed" to the "proxy system".

The appellant argued that "routing filtered packets to a proxy system" in the context of claim 1 was to be broadly construed, i.e. it should not be narrowly interpreted as "network-layer routing" only. Rather, it should include any kind of "sending", "forwarding" or "logging". The unit "RG1" in step #19 of Fig. 3B at the very least "forwarded" to the proxy device "PD1" those packets (comprising encrypted data) which were not "dropped" but "logged". Thus, the skilled person in the field of data communications would have understood that such "forwarding" was providing a basis for the "routing" action of feature 1.7. According to the appellant, if multiple technically sensible interpretations of a certain claim feature existed, the one which was supported by the patent description should prevail.

The board was not persuaded by the appellant’s argument. First, the board considered that even if the Order of G 1/24 (which related to assessing compliance with Art. 52 to 57 EPC only) could be extrapolated to the assessment of compliance with Art. 123(2) EPC, there was no indication in G 1/24 that "consulting" or "referring to" the description and drawings could translate into adopting a claim interpretation which ensured that the disputed feature was originally disclosed and thus necessarily fulfilled Art. 123(2) EPC. Such an approach, which according to the board inherently assumed that there may be only one "correct" interpretation of a claim feature, namely the one derivable from the original description as its intended meaning, would not lead to an objective assessment of compliance with Art. 123(2) EPC. The board did not follow the approach of T 367/20 (for the event of "mutually exclusive" interpretations) nor T 2048/22 (claim ambiguities). Rather, the board relied on the body of case law which holds that all technically reasonable interpretations of a disputed claim feature are to be taken into account when assessing compliance with Art. 123(2) EPC (see e.g. T 945/20, T 470/21, T 2034/21, T 193/22).

Second, even if, for the sake of argument, the "forwarding" of logged packets (comprising encrypted data) to the proxy device "PD1" in step #19 constituted a specific instance of the more general "routing filtered packets to a proxy system", this would still fail to justify the claimed generalisation, which also encompassed, among other things, network-layer routing of filtered packets not being necessarily logged.

Thus, the board concluded that the ground for opposition under Art. 100(c) EPC in conjunction with Art. 123(2) EPC prejudiced the maintenance of the patent as granted. The same objections applied to auxiliary requests 1 to 7 and 9 to 15. Auxiliary requests 8 and 2b were not admitted into the appeal proceedings. Since there were no allowable claim requests on file, the appeal was dismissed.

In T 2565/22 the patent concerned a system for replacing a deficient native heart valve. The proprietor submitted in the written procedure that for each feature of claim 1 a basis could be found in the priority application D34. In its communication the board expressed the preliminary view that only a partial priority was validly claimed. At the oral proceedings, the proprietor did not provide any further argument but merely referred to its written submission in this respect.

The board explained that, compared with D34, granted claim 1 had been broadened by deleting the feature "adapted to be deployed by exerting substantially radial forces from within by means of a deployment device". Claim 1 could be regarded as a generic OR-claim in the sense of G 1/15. The two alternatives comprised by the claim were:.

(a) a device comprising a support frame "adapted to be deployed by exerting substantially radial forces from within by means of a deployment device to a deployed state", such as a balloon-expandable stent; and.

(b) a device comprising a support frame which is not adapted in this way, i.e. non-balloon-expandable or self-expandable.

Contrary to the proprietor's submission, D34 did not disclose the mechanism by which the frame expands in a generic way. Even though the expansion mechanism was not specified each time the frame was mentioned, D34 was directed to devices adapted to be deployed by exerting substantially radial forces from within by means of a deployment device. Unlike D35, D34 did not disclose any self-expandable frames or deployment methods that did not involve deployment means such as a balloon catheter. The fact that nitinol was disclosed as a material for the frame in D34 did not imply that its shape memory properties were used to provide a self-expandable frame, i.e. a stent made of nitinol was not necessarily self-expanding even though this material had been used for this purpose in several prior art documents. Therefore, D34 did not disclose the combination of features of granted claim 1 without the feature omitted by granted claim 1. The board was thus of the opinion that only part (a) above enjoyed priority. Accordingly, D1 was prior art under Art. 54(2) EPC for part (b) and could be considered in deciding whether there had been an inventive step.

In T 1065/23, claim 10 of the first auxiliary request, which became the main request, defined a pea protein extract obtainable by the method of claims 1 to 9..

The board noted that the method of claim 1 was characterised by a step in which a precipitated pea protein contained in a slurry having a pH of 4.0 to 5.8 was subjected to a specific heat treatment. As shown in Examples 2 and 3 of the opposed patent, pea protein extracts subjected to this step had a significantly lower nitrogen solubility index, gel strength and viscosity than those which were heated at a different pH or were kept at the claimed pH but were not subjected to the claimed heating step. Moreover, Examples 4 and 5 showed that protein extracts obtained by the claimed method, which had these physicochemical properties, had better wine-fining and baking properties. For example, they allowed a reduction of the water content in the dough used to prepare biscuits, while preserving or even improving sensory properties.

Opponent 2 argued among other things that claim 10 had to be rejected because its product-by-process format was, as such, not allowable. The claimed product could be described by specific features defining e.g. its properties. Citing decision T 150/82 and section F-IV, 4.12 of the Guidelines, opponent 2 submitted that the product-by-process format could only be used if it was impossible to claim/define the product other than in terms of a process of manufacture. It argued that, assuming that the product obtainable by the method of claim 1 had low solubility, gel strength and viscosity, these parameters could and should have been used to define that product. Hence, the criteria for drafting a product-by-process claim were not fulfilled, and claim 10 should not be allowed.

The board did not agree with these conclusions. It held that the mere fact that claim 10 was drafted as a product-by-process, despite the fact that the claimed product could be satisfactorily defined by reference to its composition, structure or other testable parameter, is not a ground for opposition set out in Art. 100 EPC. The issue could be, at most, one of a lack of clarity. Section F-IV, 4.12 of the Guidelines mentioned by opponent 2 indeed related to the requirement of clarity. Furthermore, decision T 150/82 related to an appeal against the refusal of a patent application and not to an appeal concerning an opposition filed against a granted patent. Consequently, this decision was not applicable.

For these reasons, the board held that considering that claim 10 was a granted claim, its format could not be objected to on the ground that it was drafted in the product-by-process format or that it lacked clarity (G 3/14).

In T 0867/23 the board decided on the basis of the patent as granted (main request). Claim 1 was worded as a purpose-limited product claim in accordance with Art. 54(5) EPC. The treatment of "primary negative symptoms of schizophrenia" was a functional feature of claim 1.

The parties were in dispute regarding whether the application as filed made the claimed therapeutic effect plausible, and whether post-published evidence could be taken into account. The question was whether, on the basis of the evidence contained in the application as filed, cariprazine was demonstrated to have the claimed therapeutic effect on primary negative symptoms of schizophrenia.

In support of its reasoning, the board cited G 2/21 (point 77 of the Reasons), in which the Enlarged Board had explained that, in order to meet the requirement of sufficiency of disclosure, "[…] the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence..

In the board's view, this statement of the Enlarged Board did not set a new standard for reliance on post-published evidence in the context of sufficiency of disclosure, i.e. a standard which would depart from the previously cited case law summarised in G 2/21 (as noted in T 979/23). Following G 2/21, a reliance on post-published evidence was not ruled out generally in the context of sufficiency of disclosure for second medical use claims. The reliance on post-published evidence could also not be limited to situations in which it served no useful purpose, i.e. cases in which the effect was already convincingly proven in the application to such an extent that the use of post-published evidence, as a superfluous confirmation of the already proven effect, would be of no relevance. The board explained that, in other words, the scope of reliance on post-published evidence was not zero.

In the case in hand, the board considered that the application as filed contained experimental data reflecting an effect on primary negative symptoms of schizophrenia, and thus disclosed the suitability of cariprazine for the claimed therapeutic indication (see T 609/02). Under these circumstances, the board established that post-published evidence D13 could be taken into account to back up the findings in the application as filed.

The board found that D13 confirmed the findings of the patent, and showed improvements in negative symptoms while excluding indirect effects related to positive, depressive, or EPS (extrapyramidal) symptoms as causal factor. Accordingly, D13 supported the conclusion that cariprazine was effective on primary negative symptoms and refuted the appellants' objection that the improvement could relate to secondary negative symptoms. Therefore, the criteria of sufficiency of disclosure were satisfied.

In T 2027/23 the board identified three major takeaways from G 1/24.

First, the wording of the claims forms the "basis" for their interpretation and the description and the drawings should always be "consulted" or "referred to". However, G 1/24 is silent as to the very purpose of such "consultation" or "reference". In particular, it cannot be inferred from G 1/24 whether the description and the drawings should be "consulted" for the purpose of, for example, deriving "explanatory aids" to claim interpretation (see e.g. UPC_CoA_335/2023, second headnote), confirming the ordinary meaning of a claim feature, determining the function or the purpose of a claim feature, or simply defining the technically skilled reader of a claim (see e.g. T 1924/20).

Second, discrepancies in claim interpretation practice between national courts, the UPC and the Boards of Appeal are undesirable and should thus be avoided.

Third, it is up to a patentee to remedy discrepancies between the description and the claims. In other words, patentees are the masters of their fate.

Moreover, the board stated that it found no authority for interpreting a claim more narrowly than the wording of the claim as understood by the person skilled in the art would allow, and that this was for several reasons.

(a) First, because "consulting the description" did not imply any specific result of such consultation: A consultation of two conflicting authorities did not a priori determine who is master. Decision G 1/24 did not require the boards to give the description preference over the wording of the claim. To the contrary, according to the Order of G 1/24, "the claims are the starting point and the basis for assessing the patentability of an invention", and as the present board added, in line with UPC_CoA_335/2023, second headnote, the claims are the "decisive basis".

(b) Second, such interpretation would contradict the well-established jurisprudence of the Boards of Appeal, which was essentially confirmed in decision G 1/24 (see e.g. also T 1999/23).

(c) Third, such an interpretation would directly contradict the second takeaway from decision G 1/24, namely a harmonised claim interpretation between national courts or the UPC and the Boards of Appeal..

The board referred to decisions from the UPC and the German Federal Court of Justice and concluded that to align the judicial practice of the Boards of Appeal with that of the national courts and the UPC, a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art. In cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the Boards of Appeal to reach such alignment by way of interpretative somersaults.

In the present case, the board "consulted" the description and drawings to define the technically skilled reader from whose perspective the claim features (d) to (f) were to be interpreted.

In T 697/22 the board agreed with the appellant-opponent that there was an inconsistency between claim 1 of auxiliary request 1E, which required that a specific feature was mandatory, and the amended description as filed during the oral proceedings before the opposition division, according to which said feature was optional.

According to the board, if this inconsistency was considered to be in contravention of the requirement in Art. 84 EPC that the claims must be supported by the description, or any other requirement of the EPC, the request based on the claims of auxiliary request 1E and the description as amended during the oral proceedings before the opposition division was not allowable. Otherwise, it would be allowable..

The board analysed the case law relating to the requirement to adapt the description to amended claims, and concluded that there are two diverging lines of case law. The first line of case law is followed in most of the cases studied and is referred to in numerous decisions as the established line of case law, see e.g. T 1024/18 and T 438/22. The common underlying principle is that there is a legal basis that requires the description to be consistent with the amended claims. Under this line of case law, the applicant or proprietor is or should be invited to amend the description so that any inconsistency caused by the amendment of the claims is removed. The removal of an inconsistency may, for example, take the form of a deletion of subject-matter or an insertion of an additional statement in the description. The decisions that follow the first line of case law cite as a legal basis parts of the EPC or its Implementing Regulations, but there is no consensus on one precise legal basis..

Regarding the second line of case law, the board noted that a few recent decisions (T 56/21, T 1444/20, T 1989/18 and T 2194/19) are clearly divergent from the first line of case law. In these decisions, which were all taken in examination-appeal proceedings, it was decided that there is no legal basis for the refusal of a patent application if there is an inconsistency between any amended claims and the description caused by the claim amendment.

The board noted that the divergence in the case law concerns both whether it is necessary to adapt the description to the amended claims (to be answered in the positive in the first line or in the negative in the second line of case law) and, if it is to be answered in the positive, what the legal basis is. Therefore, to ensure uniform application of the law, the board referred the following questions to the Enlarged Board (referral pending under G 1/25 – "Hydroponics").

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency.

2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation.

3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?

In T 195/23 was an appeal against the interlocutory decision of the opposition division concerning the maintenance of the patent in amended form. The opponents disputed the decision's finding that the priority claim was valid. In particular, they challenged the validity of the priority claim for the alternative "wherein the smoke modifying additive is disposed only in said axial region of the filter material of the first filter section" in the feature directed to the location of the smoke modifying article in claim 1 of auxiliary request 3.

The board concurred with the proprietor that the drawings in the priority document were specifically intended to show the location of the smoke modifying additive. In fact, figures 1-5 of the priority document depicted various types of additive located in the central region of a filter section. For example, in figures 1 and 4, a capsule was located in an axial region of a first filter section. In figures 2 and 5, the absorbent material had an additive carrying thread disposed therein in an axial region. In figure 3, the absorbent material 47 had a plurality of microcapsules disposed therein in an axial region thereof. However, none of these passages contained a statement to the effect that the depicted smoke modifying additive was the only additive in the filter. In the board's view, these drawings therefore could only serve as a basis for a positive feature directed to the presence of such additive in a central region of the filter. Such a positive feature did not rule out the presence of some further, non-depicted additive in another region of the filter.

In contrast, the board construed the feature "only in the axial region" as a negative feature which was directed to the absence of any smoke modifying additive from other regions of the filter, e.g. its peripheral region. The board referred to established jurisprudence (see CLB, II.E.1.13.3, 10th edition) according to which, a negative feature, i.e. the absence of not depicted elements, usually cannot be derived from drawings. This was aggravated in the present case by the disclosure in the priority document, which explicitly stated that there could be additive – though at a lower concentration – in non-axial regions of the filter. In light of this explicit disclosure in the priority document, which did not contradict the drawings and the corresponding explanations to the drawings in the description, the board was not convinced by the respondent's argument that the skilled person would interpret the drawings as such, rather than entertaining the notion that they did not illustrate some smoke modifying additive. As a consequence, the board did not consider the feature directed to the smoke modifying additive being disposed only in the axial region of the first filter section to be an implicit feature of the priority document.

The board concluded that the application underlying the patent in suit was not filed in respect of the same invention for the alternative "wherein the smoke modifying additive is disposed only in said axial region of the filter material of the first filter section" of claim 1 of auxiliary request 3, and thus, the patent proprietor should not enjoy a right of priority for this alternative..

The above conclusions also applied to independent claim 1 of auxiliary requests 5 to 18, which also contained the alternative "wherein the smoke modifying additive is disposed only in said axial region of the filter material of the first filter section".

In T 1193/23 hatte die Beschwerdegegnerin (Patentinhaberin) zu verschiedenen im Anspruch 1 des Hauptantrags verwendeten Begriffen, insbesondere "Lageregelung" sowie "überprüfen" im Vergleich zu "überwachen", Bezug auf Antworten des Chatbot ChatGPT genommen..

Die Kammer merkte an, dass die Antwort von ChatGPT an sich irrelevant war, da es bei der Auslegung des Anspruchs um das Verständnis der Fachperson geht (s. auch T 206/22). Allein die allgemein zunehmende Verbreitung und Nutzung von Chatbots, die auf Sprachmodellen ("large language models") und/oder "künstlicher Intelligenz" beruhen, rechtfertigt noch nicht die Annahme, dass eine erhaltene Antwort – die auf dem Nutzer unbekannten Trainingsdaten beruhen und zudem empfindlich vom Kontext und der genauen Formulierung der Frage(n) abhängen kann – notwendigerweise das Verständnis der Fachperson auf dem jeweiligen technischen Gebiet (zum relevanten Zeitpunkt) richtig abbildet. Der Nachweis, wie bestimmte Begriffe im Anspruch eines Patents (oder einer Patentanmeldung) durch die Fachperson ausgelegt werden, kann zum Beispiel durch geeignete Fachliteratur belegt werden. Für die behaupteten unterschiedlichen Bedeutungen der oben genannten Begriffe im relevanten technischen Gebiet war kein derartiger Nachweis eingereicht worden.

Die Kammer prüfte die anderen Argumente der Parteien und kam zu dem Schluss, dass die strittigen Merkmale in einem breiteren Sinne von der Fachperson verstanden werden, als die Beschwerdegegnerin argumentiert hatte. Da sämtliche Merkmale des Anspruchs 1 des Hauptantrags in D3 offenbart worden waren, entschied die Kammer, dass sein Gegenstand nicht neu war.

In G 1/24 the Enlarged Board ("EBA") considered the points of law referred to it by Technical Board of Appeal 3.2.01 in T 439/22 of 24 June 2024. The first question was whether Art. 69(1), second sentence, EPC and Art. 1 of the Protocol on the Interpretation of Article 69 EPC are to be applied to the interpretation of patent claims when assessing the patentability of an invention under Art. 52 to 57 EPC. The second question concerned whether the description and figures are to be consulted when interpreting the claims to assess patentability and, if so, whether this may be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation. The third and final question was whether a definition or similar information on a term used in the claims, which is explicitly given in the description, can be disregarded when interpreting the claims to assess patentability and, if so, under what conditions.

The EBA confirmed that the departments of the EPO were required to interpret patent claims when assessing the patentability of an invention under Art. 52 to 57 EPC. As regards Question 1, the EBA held that there was no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Article 69 EPC and Art. 1 of the Protocol were arguably only concerned with infringement actions and therefore were not entirely satisfactory as a basis for claim interpretation when assessing patentability. Article 84 EPC could also be criticised as an alternative legal basis as it addresses the content of the patent application and is formal in nature without providing guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims and an instruction to the EPO to determine whether the claims meet that purpose. The EBA considered, however, that there was an existing body of case law of the Boards of Appeal which applied the wording of the aforementioned provisions in an analogous way to the examination of patentability under Art. 52 to 57 EPC, and from which the applicable principles of claim interpretation could be extracted.

The EBA further held it a settled point in the case law of the Boards of Appeal that the claims are the starting point and the basis for assessing the patentability of an invention under Art. 52 to 57 EPC.

As regards Question 2, the EBA stated that the description and any drawings must always be consulted when interpreting the claims, and not just in the case of unclarity or ambiguity. In adopting this position, the EBA rejected the case law of the Boards of Appeal that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous. It found that this case law was contrary to the wording, and hence the principles, of Art. 69 EPC. It was also contrary to the practice of both the national courts of the EPC contracting states and the UPC. Moreover, from a logical point of view, the finding that the language of a claim is clear and unambiguous was an act of interpretation, not a preliminary stage to such an interpretative act.

Question 3 was held inadmissible by the EBA, which considered it to be encompassed by Question 2.

The EBA also referred to the harmonisation philosophy behind the EPC and noted that the case law of the UPC Court of Appeal on claim interpretation appeared to be consistent with the above conclusions. It further highlighted the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Art. 84 EPC, and stated that the correct response to any unclarity in a claim was amendment.

The order by the EBA in G 1/24 reads as follows: "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."

In T 1535/23 the board observed that the Court of Appeal of the Unified Patent Court ("CoA UPC") in UPC_CoA_382/2024 applied the same test as the EPO to determine whether an amendment extended beyond the content of the application as filed. This test is known as the "gold standard" (see G 2/10).

The issue at stake in both T 1535/23 and UPC_CoA_382/2024 concerned the omission of a feature from a claim in the context of added matter. In T 1535/23 claim 1 of auxiliary request 5 essentially differed from independent claim 19 of the parent application as filed in that the specific surface area contained in independent claim 19 of the parent application as filed had been omitted and instead two characteristics of a powder X-ray diffraction pattern had been added. The board explained that the parent application as filed disclosed that the said specific surface area was an essential feature of the invention. All the independent claims of the parent application as filed required the said specific surface area, either directly or by reference to another independent claim. Furthermore, in the summary of the invention, the parent application as filed referred, in a first broad aspect, to a crystalline free base of palbociclib having the said specific surface area. Therefore, it was clear to the skilled person that the passages of the parent application as filed relied on by the respondent referred to embodiments all having this specific surface area. Hence, the board observed that the parent application as filed comprised no teaching that the specific surface area referred to in independent claim 19 of the parent application as filed was not an essential feature of the invention disclosed which could be omitted to characterise Form A of the freebase of palbociclib. The board concluded that the omission of the specific surface area in claim 1 of auxiliary request 5 added subject-matter beyond the content of the parent application as filed.

In turn, in UPC_CoA_382/2024 independent claim 1 of the patent related to an on-body glucose monitoring device comprising a sensor assembly and an enclosure with an electronics assembly. The point of dispute was whether the omission of an elastomeric sealing member for sealing the coupling between the sensor assembly and the electronics assembly in the wording of this independent claim added subject-matter. The CoA UPC found that even though a need for sealing was described in the application as filed, there was no described advantage or function of the use of the specific elastomeric material now omitted from the claim, other than that it provided sealing. Therefore, the skilled person understood from the application as filed that the exact method of sealing did not contribute to, and was thus not relevant for, the technical teaching of the invention as disclosed in the application as filed. The CoA UPC concluded that the omission of the use of an elastomeric sealing member from claim 1 of the patent did therefore not extend beyond the content of the application as filed.

The board explained that its conclusion in T 1535/23 was not in contradiction with the decision of the CoA UPC in UPC_CoA_382/2024. The fact that the CoA UPC acknowledged that the feature in question could be omitted without extending beyond the content of the application as filed while the board in T 1535/23 reached the opposite conclusion was based on different factual situations rather than on a difference in legal considerations. Both the CoA UPC and the board in T 1535/23, and the EPO in general, apply the same principle (the "gold standard") in judging whether an amendment extends beyond the content of the application as filed.

In T 98/23 the patent related to a CRISPR-Cas 9 composition for therapeutic use. It was based on a European patent application resulting from an international PCT application claiming priority from 13 earlier US applications including P1, P2, P3, P5 and P13. In its decision revoking the patent, the opposition division had found that formal entitlement to priority from P1, P2, P5 and P13 had not been validly claimed because not all applicants of these priority applications were named in the subsequent application leading to the patent. Thus, novelty and inventive step were examined based only on documents published before P3, in particular D10. The subject-matter of claim 1 of the patent as granted was found to lack novelty over the disclosure of D10.

References to G 1/22 in this abstract should be understood as referring to both G 1/22 and G 2/22.

The board explained that, as in T 844/18, T 2360/19, T 2516/19 and T 2689/19, the issue was whether Mr Marraffini as one of the claimed inventors or The Rockefeller University as his successor in title, had given their consent to the subsequent filing of the patent application in question. A further issue was whether The President and Fellows of Harvard College had given their consent to the subsequent filing of the patent application. The presumption, following G 1/22, is that they did. This presumption may be rebutted.

The board recalled that according to G 1/22, the presumption of priority entitlement, by way of an implicit (implied/informal or tacit) agreement on the transfer of the right to claim priority "under almost any circumstances" applied to any case where the subsequent applicant was not identical with the priority applicant. Also ex-post (retroactive, nunc pro tunc, ex tunc) transfers concluded after the filing of the subsequent application were valid. The presumption of an implied agreement was rebuttable. To question the implied agreement, evidence was thus needed that such agreement had not been reached or was fundamentally flawed.

In the board's opinion, there was no evidence that rebutted the presumption in this case, rather there was evidence on file that supported the presumption. The inventorship dispute between Mr Marraffini/The Rockefeller University and Mr Zhang/The Broad Institute Inc/Massachusetts Institute of Technology had been settled in 2018 by decision of an arbitrator. Applying G 1/22, the settlement by arbitration contained (and confirmed that there was), at least, an implicit agreement nunc pro tunc. Thus, the presumption of entitlement to priority was on the earliest date on which priority was claimed, 12 December 2012. G 1/22 explicitly also stated that "the presumption of entitlement exists on the date on which the priority is claimed and the rebuttal of the presumption must also relate to this date", and that "later developments cannot affect the rebuttable presumption". As being retroactive, the at least implicit transfer agreement by way of the settlement of the inventorship dispute related to this date, and confirmed the presumption of entitlement to exist on this date.

As to whether The President and Fellows of Harvard College had given their consent, no evidence had been filed by the opponents either establishing that the real priority right holder did not allow the subsequent applicants to rely on the priority (see also T 1975/19).

The board concluded that entitlement to priority had been validly claimed in view of G 1/22. The case was remitted to the opposition division for a fresh assessment of the patentability requirements of the main request (the patent as granted), based on a valid priority entitlement to P1.

In T 417/24 claim 1 was directed to a content editing method performed by a terminal. The terminal displayed an editable user interface which displayed multimedia and doodle content. The editable user interface comprised a "content editing area" which was used to add or edit the content. The terminal displayed the added or edited content in the content editing area in response to an operation of adding or editing the content. When the terminal detected that the added content reached or exceeded a preset position in the content editing area, it automatically extended the "content editing area" by a preset size.

In the board's view, the skilled person reading claim 1 on its own, i.e. without consulting the description or drawings, understood that the "content editing area" was a specific area within the displayed editable user interface. In this area, the multimedia and doodle content was displayed, and by interacting with this area, the user could add or edit the content. With this interpretation, automatically extending the content editing area by a preset size meant extending the size of the area that the content editing area took up within the displayed user interface, for example by reducing the size of other parts of the user interface or by resizing the window in which the editable user interface was displayed.

However, from Figures 8A and 8B and their description, according to the board, the skilled person understood that, at least in one embodiment of the claimed invention, the "content editing area" was not a specific area of the displayed editable user interface within which the content was displayed and with which the user interacted to add and edit content but instead referred to the scrollable content of such an area.

The board concluded that, since the claims are to be interpreted in the light of the description and drawings (see T 2766/17, T 3097/19 and T 367/20), the scope of the term "content editing area", on its proper interpretation, encompassed the "content editing area" of the embodiment disclosed in Figures 8A and 8B and their description. It followed that the meaning of the term "content editing area" deviated substantially from the meaning which the skilled person would ascribe to it based solely on the wording of the claim alone. Claim 1 therefore failed to meet the requirement of Art. 84 EPC that, as far as possible, the meaning of the terms of the claims be clear from their wording alone (G 1/04, OJ 2006, 334, point 6.2 of the Reasons; T 3097/19).

The appellant (applicant) argued that there was no contradiction between the expression "the editable user interface comprises a content editing area" in claim 1 and the disclosure in Figures 8A and 8B and their description. The application disclosed that there could be an "extended content editing area" which comprised the "content editing area" and an extension area of the content editing area. In Figures 8A and 8B, the "content editing area" was not necessarily the full document being edited (or the "scrollable content", to use the board's wording) but could be one of several regions shown in these figures.

However, the board held that Figures 8A and 8B and their description left no doubt that the content editing area 801 was indeed the whole scrollable content shown in Figure 8B, only a portion of which was visible within the area 810 of the user interface shown in Figure 8A. The appellant's argument was therefore not convincing.

In T 2328/22 bestätigte die Kammer die Zulassung der angepassten Beschreibung ins Einspruchsverfahren. Die Ermessensentscheidung der Einspruchsabteilung erfolgte unter Anwendung der korrekten Kriterien, widersprach nicht dem Grundsatz eines fairen Verfahrens und verletzte nicht das rechtliche Gehör der Einsprechenden.

Zum Umfang der Anpassung der Beschreibung hatte die Beschwerdeführerin (Einsprechende 2) argumentiert, dass – entgegen der Ansicht der Einspruchsabteilung – die Beschreibung nicht nur mit Blick auf geänderte Merkmale der Ansprüche, sondern auch hinsichtlich bereits in der B1-Schrift vorhandener und im Einspruch bemängelter Widersprüche anzupassen sei. Merkmal c war daher nicht von der Beschreibung gestützt.

Die Kammer gab an, dass es sich bei dem Einwand bezüglich Merkmal c tatsächlich um einen Klarheitseinwand zu einem erteilten Merkmal gegenüber einem erteilten Beschreibungswortlaut handelte. Klarheit ist jedoch kein Einspruchsgrund (Art. 100 EPÜ) und konnte somit zu diesem Zeitpunkt nicht mehr beanstandet werden. Entsprechend besagten die Richtlinien H-IV, 4.3, dass die "in das Patent aufgenommenen Änderungen" zu prüfen seien. Hier gab es jedoch keine Änderungen.

Die Beschwerdeführerin bezog sich auf T 121/20, wonach ein erteilter Anspruchswortlaut von der Kammer als widersprüchlich zur Beschreibung beanstandet worden war. Die Entscheidung G 3/14 sei hier nicht anwendbar, da sie sich auf Klarheit in den Ansprüchen, nicht auf die Beschreibung beziehe.

Der Kammer zufolge, fand G 3/14 jedoch dahingehend Anwendung, dass für die erteilte Fassung eines Patents in seiner Gesamtheit davon auszugehen sei, dass die Erfordernisse des Art. 84 EPÜ erfüllt sind, d.h. auch die Stützung der Ansprüche durch die Beschreibung gegeben ist. Folglich war der Einspruchsabteilung zuzustimmen, dass der vorgebrachte Klarheitseinwand zum Merkmal c nicht zu berücksichtigen war. Zur T 121/20 wurde angemerkt, dass darin gar nicht über die einzelnen, erforderlichen Anpassungen der Beschreibung entschieden, sondern zu deren Durchführung zurückverwiesen wurde. Die Entscheidung T 121/20 hielt nur fest, dass der Leser nicht mit "widersprüchliche Informationen" konfrontiert werden sollte.

Wie bei Merkmal c, betraf der Einwand der Beschwerdeführerin hinsichtlich Merkmale l und m erteilte Merkmale sowie einen erteilten Wortlaut der Beschreibung. Da Art. 84 EPÜ kein Einspruchsgrund ist, schlussfolgerte die Kammer, dass dieser Einwand unzulässig war.

Dem Antrag der Beschwerdeführerin Fragen betreffend u.a. die Notwendigkeit zur Anpassung der Beschreibung der Große Beschwerdekammer vorzulegen, gab die Beschwerdekammer nicht statt.

In case T 816/22, the patent contained data from a randomised, double-blind, placebo-controlled pilot study to evaluate the safety and efficacy of Cinryze (C1 esterase inhibitor [human]) for the treatment of acute antibody-mediated rejection (AMR) in recipients of donor-sensitised kidney transplants.

The patent proprietor had alleged inter alia that for medical use claims, the patent had to disclose the suitability of the product to be manufactured for the claimed therapeutic application. Clinical trials were not required to establish such suitability.

According to the opponent, D54 (clinical trial results) represented the best available evidence concerning the efficacy of the claimed treatment and it demonstrated a complete failure to provide any therapeutic effect. The opponent alleged also that it could not be expected that an opponent had to conduct even more comprehensive clinical studies than a phase III trial in order to discharge its burden of proof of insufficiency. The disclosure of a patent was insufficient if the invention could not be reproduced across the whole breadth of the claims. Even a plausible disclosure of a therapeutic effect (which was missing in the present case) still had to be subject to refutation by evidence that the therapeutic effect was not in fact attained (which was provided by documents D15, D16 and D54), the standard of proof being "serious doubts, substantiated by verifiable facts".

In view of the small number of patients (clinical trial), the opponent considered that a treatment effect had not been demonstrated. The board, however, did not deem it necessary to establish this and instead started from the assumption that the opposition division was correct in finding that the experimental data provided in the patent, together with the mechanistic explanation provided, made it plausible (or credible) to the skilled person at the time of filing that a therapeutic effect on AMR could be achieved; however, this in itself was not enough to demonstrate that the invention was sufficiently disclosed if the opponent provided evidence which raised serious doubts that the therapeutic effect could indeed be achieved.

Post-published documents D15, D16 and D54 related to the phase III clinical trial. Due to the termination of the trial after 36 months, data was not collected, analysed and reported for any of the secondary endpoints related to efficacy (see D54). The patent proprietor argued that the termination of the trial was a commercial decision which did not mean that there was no therapeutic effect of any kind.

To the board, what was crucial was whether the skilled person, with the teaching of the patent in hand and applying common general knowledge, was able to reproduce the invention, i.e. to achieve a therapeutic effect on kidney transplant AMR when administering C1-INH intravenously using the dosage regimen indicated in the claim and identified in the presently discussed embodiment. The board agreed with the patent proprietor that therapy was not limited to completely curing a disease or condition, but also included alleviating, removing or lessening the symptoms of any disorder or malfunction of the human or animal body.

D54 showed the complete absence of any therapeutic effect with the claimed dosage regimen. For the very parameter that was considered "a clinical marker of AMR in a transplant patient" in the patent, D54 found no effect for a larger patient cohort. The board considered this sufficient to raise serious doubts based on verifiable facts that the claimed treatment achieved a therapeutic effect. In view of this evidence, it was not sufficient for the patent proprietor to refer to potential beneficial effects that might arise when following up with patients for a longer period of time.

In conclusion, a phase III clinical trial with the same setup as the examples in the patent and using the dosage regimen which was an embodiment of the claim could not reproduce the claimed subject-matter as exemplified in the embodiment under discussion as it did not exhibit any efficacy after 36 months. The patent proprietor had not dispelled the serious doubts regarding the presence of a treatment effect in view of these data. Therefore, the invention as claimed was not reproducible.

In T 2651/22 the patent related to impedance matched microwave quantum circuit systems, in particular to a system comprising a parametric amplifier for amplifying a qubit readout. The interpretation of the feature "impedance matching circuit" in claim 1 was relevant to assess inventive step.

The respondent (patent proprietor) submitted that the claim could not be interpreted as covering a single integrated circuit. Feature 1.3 defined a quantum circuit device. Feature 1.4 defined an impedance matching circuit coupled to the quantum device. For the person skilled in the art it was clear that these were two different circuits. The scope of protection did not extend to one integrated circuit with double functionality as that of D8. Had the patentee desired to cover such a circuit it would have worded the claim differently, for instance to define an impedance matched circuit, not an impedance matching circuit. The specification was also consistent in describing two different circuits (figures 5, 6, 8A and 8B), one of which being placed in front of the amplifier and providing only impedance matching functionality and no amplification.

The appellant (opponent) argued that the patentee's intention when drafting the claim was irrelevant. If the claimed technical features could be mapped to the prior art then that was sufficient for the features to be disclosed. In order to establish a difference vis-à-vis D8 the claim should have been limited by inserting features from the specification into the claim, instead of relying on the specification for interpretation.

The board found the position of both parties to be reasoned and reasonable. The problem lay in the inherent difficulty of defining whether and when circuitry which is part of a larger circuitry can be identified as one circuit separate from the rest, or as fulfilling only one function. In the present case for instance, the presence of an impedance matching circuit as described in the specification also influenced the amplifying function; it improved it by reducing losses.

Considering this context, the board was of the opinion that the claim had to be interpreted in the light of the description. On that basis the board concluded that the claimed impedance matching circuit was to be interpreted as a circuit designed specifically for the (sole) purpose of impedance matching of a preexisting quantum device circuit to external circuitry.

It was undisputed that D8 did not disclose such a circuit. Further, the appellant did not argue that under this interpretation the claimed matter was obvious. Accordingly, the board came to the conclusion that claim 1 of the patent as maintained was inventive over D8.

In T 345/24 the board considered the omission of the qualifier "good" in feature 1.3 of the patent as granted to lack a direct and unambiguous basis in the application as filed.

The board explained that, relative to claim 1 as filed, feature 1.3 had been introduced into the claim, in which the acquisition distribution layer (ADL) was defined to be "in contact with" the body-facing side of the absorbent core. The basis for this amendment was stated by the opposition division to be paragraph [0198] of the application as filed where, however, the ADL was disclosed to be "in good contact with" the body-facing side of the absorbent core.

The board found the word "good" in the expression "good contact" to be technically relevant in the present context. For a skilled person, a good contact, at least in the technical field of absorbent articles, would imply face-to-face contact over a large area between two elements of the article. Conversely, if two elements were merely "in contact" with one another, at one extreme the expression encompassed merely single point contact over a small area. This latter condition of minimal contact between two elements would not be considered by the skilled person as embodying "good" contact between the elements. Despite the term "good" being somewhat imprecise, in the context in which it was used in the description it would be understood nonetheless to indicate a certain kind, amount and/or quality of contact. The proprietor's argument, with reference to G 1/93, that the term "good" could be omitted from claim 1 due to it lacking a technical meaning was thus not accepted by the board.

Furthermore, the board explained that the purpose of an ADL in absorbent articles was to remove liquid deposited on a topsheet and ensure its distribution within itself, but also to ensure swift transfer of the liquid to the absorbent retention part of the core of the article. In this context, a "good" contact between the ADL and the absorbent core had to be contact which efficiently promoted the transfer of liquid from the ADL to the absorbent core such as, for example, by providing a large face-to-face contact area. Consequently, at least a contact promoting swift transfer of liquids was implied through the expression "good contact", which the word "contact" alone failed to achieve.

Finally, the proprietor's argument that the ADL being positioned between the topsheet and the absorbent core as a closed, layered structure unambiguously implied that significant face-to-face contact (i.e. "good" contact) was achieved was, at least in this generality, not accepted by the board. The board agreed with the opponent that claim 1 did not exclude further layers being positioned between the ADL and the absorbent core which would allow, for example, contact of merely the peripheral edge of the ADL with the absorbent core. The board concluded that a skilled person would not equate such peripheral contact over a limited area to be "good" contact in the sense of the application as filed.

Hence, the board decided that the ground for opposition under Art. 100(c) EPC was prejudicial to the maintenance of the patent as granted.

In T 493/23 the invention related to a threaded pipe connection. The patent had been granted on the basis of an application (the "PCT application") filed on 15 September 2017 published under the PCT and claiming priority from application JP 2016-181176 (the "priority application"). The appellant (opponent) argued that neither claim 1 of the twelfth auxiliary request nor claim 1 of the thirteenth auxiliary request validly claimed priority from the priority application.

(1) Twelfth auxiliary request

Compared to the priority application, claim 1 of the twelfth auxiliary request had been amended by adding, inter alia, feature 1.3. This requirement limited the female thread in that it should include a varying-thread-width portion having a thread-ridge width gradually increasing and a thread-groove width gradually decreasing toward a centre of the box. The parties agreed that this additional feature was taken verbatim from the description of the priority application and, in this respect, mentioned paragraph [0049] of D10 (a marked-up version of the English translation of the PCT-application showing the changes made in relation to the priority application). The appellant's objection was directed against the fact that the additional constraint of paragraph [0049] of D10 that the thread-groove width of the female thread corresponds to the thread-ridge width of the male thread in the respective varying-thread-width portions was not incorporated in claim 1 of the twelfth auxiliary request. The appellant argued that the verb "to correspond" implied that the widths were equal. Contrary to the view of the opposition division, the additional text in claim 1, did not require this.

According to the board, the expression "correspond to" in paragraph [0049] of D10 was not to be understood in a broad sense as encompassing variations that result in gaps between the thread flanks. The opposition division seemed to have inferred the additional constraint of paragraph [0049] from features 1.4 to 1.6 of claim 1 of the then auxiliary request 9. However, the board was unable to derive from the general wording of these features whether or not the widths of the individual female ridges and grooves corresponded to those of the male grooves and ridges, respectively, in the varying-thread-width portions. Also the additional features 1.7a and 1.8a of claim 1 of the twelfth auxiliary request did not imply the constraint set by the last sentence of paragraph [0049] of D10. The board concluded that there was no direct and unambiguous disclosure in the priority application of a threaded connection having feature 1.3 of claim 1 without the additional constraint.

In a further line of argument and referring to G 1/15, the respondents (patent proprietors) submitted that claim 1 enjoyed partial priority for those threaded connections where the widths were the same in the varying-thread-width portions. The board was not persuaded. In the present case, claim 1 did not contain any generic expression that could be understood to encompass alternative subject-matter. Claim 1 was not a generic "OR"-claim in the sense of G 1/15. The board concluded that claim 1 of the twelfth auxiliary did not validly claim priority. As a result, D5 was novelty destroying.

(2) Thirteenth auxiliary request

All three lines of argument raised by the appellant were rejected by the board. On the first, the board concluded that, compared to the priority application, the meaning of the expression "toward a centre of the box" in feature 1.3 of claim 1 did not change by adding it to a claim which did not specify the type of threaded connection. Also for embodiments of the integral-type connection there was basis in the priority application for the claimed changes of the female thread width towards the centre of the box. On the second line of argument (which built further on the objection raised in the context of the twelfth auxiliary request), the board concluded that the various restrictions of claim 1 were such that also the feature disclosed in the last-but-one sentence of paragraph [0049] of D10 was implicit. The third line of argument was directed against the omission from claim 1 of the physical location of the constant-thread-width portions and the varying-thread-width portions, despite it being disclosed in paragraphs [0054] and [0055] of D10 on which the amendments of features 1.5 and 1.6 were based. The board considered these positions to be implicit in claim 1. The board concluded that claim 1 of the thirteenth auxiliary request validly claimed the priority from the priority application. The effective date was thus 16 September 2016. As a consequence, D5 was not comprised in the state of the art under Art. 54(2) or (3) EPC.

In T 602/24 merkte die Kammer an, dass dem Begriff "wesentliche Merkmale" in der Rechtsprechung keine einheitliche Bedeutung beigemessen wird. Dies liege nicht nur an der Anwendung unterschiedlicher Rechtsgrundlagen für ein solches Erfordernis (Deutlichkeit des Anspruchs oder Stützung durch die Beschreibung), sondern auch an den unterschiedlichen Kriterien, anhand derer das Fehlen "wesentlicher Merkmale" geprüft werde (s. RBK, 10. Aufl. 2022, II.A.3.2., II.A.5.1.). Die Kammer fügte hinzu, dass diese uneinheitliche Handhabung durch die Rechtsprechungsanalyse in T 56/21 im Zusammenhang mit der Frage, ob Art. 84 und R. 43 EPÜ eine Rechtsgrundlage für eine obligatorische Anpassung der Beschreibung an Ansprüche liefern, veranschaulicht wurde.

Die Kammer führte aus, dass in der Rechtsprechung Einigkeit darüber besteht, dass die Prüfung der "wesentlichen Merkmale" angesichts des Erfordernisses, dass die Ansprüche durch die Beschreibung gestützt sein müssen, einen formalen Aspekt beinhaltet, insoweit als zu prüfen ist, ob das, was in den Ansprüchen definiert ist, auch in der Beschreibung zu finden ist. Darüber hinaus würden aber in vielen der im Abschnitt II.A.5.1 der Publikation RBK zitierten Entscheidungen bei der Prüfung dieses Erfordernisses materiellrechtliche Aspekte berücksichtigt. Die Prüfung dieser weiteren Aspekte gehe teilweise auf die Entscheidung T 409/91 zurück (Nr. 2 und 3.5 der Gründe). In diesem Zusammenhang verwies die Kammer desweiteren auf T 939/92 und T 1055/92 sowie auf die Entscheidungen im dritten Absatz des Teils II.A.5.1 der RBK.

Die Kammer stellte fest, dass im vorliegenden Fall die Zurückweisung des Hauptanspruchs durch die Prüfungsabteilung wegen fehlender wesentlicher Merkmale unter Bezugnahme auf Art. 84 EPÜ nicht auf einer fehlenden formalen Stütze des Anspruchs 1 durch die Beschreibung, sondern offensichtlich auf einer unzureichenden Offenbarung seines Gegenstands im Sinne des Art. 83 EPÜ beruhte. Ein solcher Einwand auf der Grundlage von Art. 84 EPÜ sei aber für die Kammer im Lichte des Zwecks der R. 43 EPÜ nicht haltbar. Außerdem sei eine solche Zurückweisung nicht im Einklang mit den "Travaux préparatoires" zum EPÜ 1973 und zum EPÜ 2000, wie aus T 1020/03 und G 3/14 hervorgehe.

Unter Berücksichtigung des Titels der R. 43 EPÜ, wonach diese die Form und den Inhalt der Patentansprüche festlegt, sowie der formalen Anforderungen für Ansprüche in R. 43 (1) bis (2) und (4) bis (7) EPÜ war der Kammer nicht ersichtlich, warum der Wortlaut des ersten Teils der R. 43 (3) EPÜ, wonach die unabhängigen Patentansprüche die wesentlichen Merkmale der Erfindung wiedergeben, im Gegensatz zu allen anderen Bestimmungen der R. 43 EPÜ Erfordernisse definieren sollte, die über die Form und den Inhalt der Ansprüche hinausgehen.

Da außerdem die Patentansprüche nach Art. 84 EPÜ den Gegenstand des Schutzbegehrens definieren ("the matter for which protection is sought"; "l'objet de la demande pour lequel la protection est recherchée"), d.h. den vom Anmelder formulierten Gegenstand, für den ein europäisches Patent beantragt wird, müssen der Kammer zufolge die wesentlichen Merkmale der Erfindung im Sinne von R. 43 (3) EPÜ diejenigen sein, die der Anmelder als wesentlich für den beantragten Patentschutz ansieht, und nicht diejenigen, die die Prüfungsabteilung als ausreichend erachtet, um materiellrechtliche Erfordernisse zu erfüllen.

Die Kammer kam daher zu dem Schluss, dass die Zurückweisung durch die Prüfungsabteilung unter Bezugnahme auf Art. 84 EPÜ mit der Begründung, dass Anspruch 1 nicht alle wesentliche Merkmale in Bezug auf das Erreichen einer Glasübergangstemperatur (Tg) von mehr als 60°C für die vernetzte Zusammensetzung enthielt, nicht überzeugend war.

In T 2029/23 the patent concerned a method for preparing gelatin-based candy that did not require a drying step or the use of a single-use starch mould to extract moisture from the liquid composition.

The board decided to set aside the decision under appeal, in which the opposition division had concluded that claim 1 of the main request did not meet the requirements of Art. 123(2) EPC.

Claim 1 of the main request differed from claim 1 of the application as filed in that claim 1 of the main request specified that (1) the gelatin had a bloom value of 200 to 300 and (2) the liquid candy composition was allowed to set at a temperature below 10°C for 10 to 30 minutes.

Regarding the bloom value of the gelatin, the board explained that the widest range for a bloom value disclosed in the claims of the application as filed was 200 to 300 (claim 8). Adding this feature to claim 1 of the main request merely specified the gelatin to be used in the invention. Hence, this amendment was directly and unambiguously derivable from the application as filed. This was also the case for the setting temperature, for which the board found that a setting temperature below 10°C was directly and unambiguously derivable from claim 3 of the application as filed.

As regards the range of 10 to 30 minutes for the setting time, the board distinguished the case in hand from the case underlying T 1919/11, in which the competent board had decided that the amendment combining a lower limit and an upper limit from two separate sentences (or "lists") of upper and lower limits was not allowable because the disclosure in the parent application as filed did not represent a range and such a combination was arbitrary. Instead, in the case in hand, there was a single sentence, namely claim 4 of the application as filed, that contained a general range (1 hour or less) and only two preferred narrower ranges (30 minutes or less and 10 minutes or less). The lower two values of this range were used to draw up the range in claim 1 of the main request. This amendment in itself did not produce added subject-matter.

Furthermore, the board observed that the application as filed explicitly stated that for a relatively fast setting time, the temperature during setting was to be kept low. The skilled person would have readily understood that there was a correlation between the setting temperature and the setting time.

Therefore, the board established that claim 1 of the main request met the requirements of Art. 123(2) EPC.

In T 298/22 erläuterte die Kammer, dass für die Beurteilung, ob eine Änderung mit den Erfordernissen des Art. 123 (2) EPÜ in Einklang steht, der durch die ständige Rechtsprechung der Beschwerdekammern etablierte sogenannte "Goldstandard" gilt: Jede Änderung darf unabhängig vom Kontext der vorgenommenen Änderung nur im Rahmen dessen erfolgen, was die Fachperson der Gesamtheit der Unterlagen in ihrer ursprünglich eingereichten Fassung unter Heranziehung des allgemeinen Fachwissens – objektiv und bezogen auf den Anmeldetag – unmittelbar und eindeutig entnehmen kann (vgl. RBK, 10. Aufl. 2022, II.E.1.1).

Bei der Kombination der Merkmale (1.6) und (1.7b), stimmte die Kammer der Beschwerdeführerin dahingehend zu, dass das Merkmal (1.6) nur in Verbindung mit dem Ausführungsbeispiel der Figuren 1 bis 11 und somit nur im Zusammenhang mit Merkmal (1.7a) offenbart sei, aber nicht im Zusammenhang mit dem Ausführungsbeispiel der Figuren 12 bis 16 und somit im Zusammenhang mit Merkmal (1.7b). Die Kammer stellte fest, dass, bei der Prüfung nach Art. 123 (2) EPÜ, ob eine Merkmalskombination ursprünglich offenbart sei, der Goldstandard nicht erfordere, dass die Kombination der Merkmale durch den Fachverstand der Fachperson möglicherweise aus der Beschreibung ableitbar sei oder dass sich die Fachperson die beanspruchte Kombination aus möglichen Ausführungen der Offenbarung ableiten könne, sondern dass die Kombination unmittelbar und eindeutig offenbart gewesen sei. Im vorliegenden Fall lag weder eine unmittelbare noch eine eindeutige Offenbarung vor.

Hinsichtlich der Zwischenverallgemeinerung in Merkmal (1.6), erklärte die Kammer, dass in Beachtung des Goldstandards eine "Zwischenverallgemeinerung" (also eine Verallgemeinerung einer ursprünglich offenbarten besonderen Ausführungsform, wobei der Gegenstand der Verallgemeinerung zwischen dieser besonderen Ausführungsform und der ursprünglichen, allgemein gefassten Definition der Erfindung liegt) nach ständiger Rechtsprechung der Beschwerdekammern nur zu rechtfertigen sei, wenn keinerlei eindeutig erkennbare funktionale oder strukturelle Verbindung zwischen den Merkmalen der spezifischen Kombination besteht oder das herausgegriffene Merkmal nicht untrennbar mit diesen Merkmalen verknüpft ist (vgl. RBK, 10. Aufl. 2022, II.E.1.9.1; T 714/00).

Die Beschwerdegegnerin ging auf die funktionale Verknüpfung des Merkmals (1.6) mit anderen Merkmalen des ersten Ausführungsbeispiels ein. Sie argumentierte, dass die anderen in den Figuren gezeigten und in der zugehörigen Beschreibung beschriebenen Merkmale nicht in funktionalem Zusammenhang mit Merkmal (1.6) stünden. Diesbezüglich war die Kammer der Meinung, dass Figur 1 und das entsprechende Ausführungsbeispiel auf den Seiten 8 und 9 der ursprünglich eingereichten Beschreibung viele nicht-optionale Merkmale offenbart hätten, die alle im Zusammenhang mit dem Merkmal (1.6) stünden, da diese Merkmale in Summe zu dem gemäß Merkmal (1.6) zu erreichenden Resultat führten. Folglich stünden die Merkmale des in Figur 1 gezeigten Ausführungsbeispiels mit Merkmal (1.6) in funktionalem Zusammenhang und könnten von Merkmal (1.6) gemäß den durch die Rechtsprechung gestellten Anforderungen nicht getrennt werden. Somit könne Merkmal (1.6) nicht isoliert in den breiteren Zusammenhang des Gegenstandes des (ursprünglichen) Anspruchs 1 gesetzt werden (unerlaubte Zwischenverallgemeinerung).

Die Kammer kam daher zu dem Schluss, dass Anspruch 1 des Hauptantrags und der Hilfsanträge 1 bis 4 nicht die Erfordernisse des Art. 123 (2) EPÜ erfüllte.

In T 518/22 the board established that the "A3" mutant disclosed in D2 anticipated the subject-matter of claim 1 of auxiliary request 1 at least under Art. 54(3) EPC.

Claims 1 and 9 of auxiliary request 2 differed from the respective claims in auxiliary request 1 in that an undisclosed disclaimer had been introduced to exclude the A3 mutant disclosed in D2 from the subject-matter claimed.

The board explained that, according to G 1/03, an amendment to a claim by the introduction of a disclaimer may not be refused under Art. 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed. G 1/03 defines the criteria when such an undisclosed disclaimer is allowable, stipulating that it can be introduced into a claim inter alia to restore novelty by delimiting a claim against the state of the art under Art. 54(3) EPC but not under Art. 54(2) EPC (except for a so-called accidental disclosure).

In order to determine whether D2 was prior art under Art. 54(2) or (3) EPC for the claimed subject-matter, the board assessed whether the subject-matter of claim 1 as a whole was entitled to claim priority from P and whether D2 was entitled to claim priority from P1.

The board found that D2's priority based on P1 was valid. Appellant I had objected to D2's formal entitlement to priority because the applicants of P1 and those of the international patent application D2 were not the same. The board explained that G 1/22 and G 2/22 established that a presumption exists that a claim to priority is valid by way of an implicit agreement on the transfer of the right to claim priority in the absence of evidence that such an agreement (implicit or explicit) did not exist. This presumption applies to any case where the subsequent applicant is not identical with the priority applicant. On account of this general teaching, the board understood that the presumption applied also to patent applications cited as prior art, as in the present case (see also T 521/18).

This presumption could be rebutted to take into account "rare exceptional cases" where the subsequent applicant could not justifiably rely on the priority (G 1/22). This, however, involved the reversal of the burden of proof, i.e. the party challenging the subsequent applicant’s priority entitlement (here appellant I) had to prove that this entitlement was missing. Merely raising speculative doubts was not sufficient. Instead, evidence was required that specific facts supported serious doubts about the subsequent applicant's entitlement to priority (G 1/22). In the absence of evidence suitable to establish that the alleged real priority right holder did not allow the subsequent applicant to rely on the priority (see also T 1975/19), appellant I's objection against D2's formal entitlement to priority from P1 was not sufficient to rebut the presumption of validity, which always existed on the date on which priority was claimed (G 1/22). Hence, D2 validly claimed priority from P1.

As regards the validity of the patent's priority claim based on P, the board established that the relevant date for the subject-matter of claim 1 in several embodiments concerning SEQ ID NOs: 5 to 8 was the filing date of the patent application, whereas several embodiments of claim 1 in relation to SEQ ID NO: 4 were entitled to claim partial priority from P (G 1/15).

Therefore, D2 was prior art under Art. 54(2) EPC for the subject-matter of claim 1 not enjoying priority, i.e. in relation to several embodiments concerning SEQ ID NOs: 5 to 8, and prior art under Art. 54(3) EPC for the subject-matter of claim 1 enjoying priority, i.e. in relation to several embodiments concerning SEQ ID NO: 4.

Since the undisclosed disclaimer added to claim 1 in auxiliary request 2 removed embodiments of D2 which belonged to the state of the art pursuant to Art. 54(2) EPC and were not an accidental disclosure, such amendment was not allowable under Art. 123(2) EPC. Auxiliary request 2 comprised added subject-matter (G 1/03 and G 1/16) and did not fulfil the requirements of Art. 123(2) EPC.

In case T 1977/22, the opposition division revoked the patent arguing that the definition of certain parameters in terms of an open-ended range rendered the invention insufficiently disclosed, as these parameters could not be reproduced over the whole scope of the open-ended side.

The board addressed this question by first reviewing the landmark decisions which gave rise to the principle of "reproducibility over the whole claimed scope" (T 435/91, T 292/85, T 226/85, T 409/91, and G 1/03), then reviewing the case law specifically dealing with open-ended range desiderata and sufficiency of disclosure, before addressing the question of how to apply the general requirement of "reproducibility over the whole scope“ to the specific case of inventions defined in terms of an open-ended range desideratum, and finally by applying the proposed criteria.

More specifically, the board stated that the main idea behind the principle of reproducibility over the whole scope is that where an invention is defined as a combination of process and/or structural features (A+B) to achieve a certain result or desideratum (X), the skilled person should be enabled to achieve the result (X) over the whole scope of the claim, which is intended to ensure that the breadth of the claimed invention is commensurate with the teachings of the patent, i.e. that the scope of protection is restricted to the actual technical contribution of the patent. According to the landmark decisions, the assessment should be based on balanced criteria, avoiding unrealistic requirements, such as excluding all non-working embodiments or providing instructions to identify every possible working embodiment, while still ensuring that the claim includes all features essential to achieving the defined desideratum and that the breadth covered by the functional definition is commensurate with the teachings of the patent.

The board then turned to review in detail the case law dealing with "open-ended ranges desideratum and sufficiency of disclosure" (point 3 of the Reasons). Following this, the board dealt with the key question of the reproducibility over the whole scope of open-ended ranges (point 4 of the Reasons). It stated that where the desideratum was, as in the present case, defined in terms of an open-ended range for a physical parameter of a product, the problem of reproducibility over the whole scope was analogous to that addressed in the landmark decisions, with the key distinction being that the inclusion of non-working embodiments may also stem from the desideratum itself, as the open definition broadens the claimed scope in such a way as to implicitly encompass non-working embodiments, i.e. irreproducible parametric values (unrealistically high) and/or yet-to-be-discovered alternatives (values only achieved with inventive skill). That the claim covered non-working embodiments was not in itself sufficient to conclude that the invention would not be reproducible over the whole scope. The key issue was the burden to be applied for assessing whether the teachings in the patent would enable the skilled person to reproduce the open-ended range over the whole scope of the open-ended side. In this respect, the open-ended definition should not be interpreted literally as requiring teachings enabling the skilled person to achieve any parametric value in the upward direction; interpreting the concept literally would impose a technically unsurmountable burden and would be in contradiction with the landmark decisions that it was not required that all non-working embodiments be excluded or that every working embodiment be enabled. Instead the board concluded that open-ended ranges should be interpreted as equivalent to a directional requirement to adjust and increase the parameter to obtain values as high as achievable (beyond the lower end value) with the structural and/or process features defined in the claim (see details point 4.6.7of the Reasons; also Catchword and conclusions point 4.13). By making routine adjustments within the scope of these features, it was possible to achieve parametric values exceeding the lower-end limits.

The differing outcomes in the case law (open-ended ranges) did not stem from any fundamental divergences.

In T 2116/22 the interpretation of the terms "coating" and "coated" in claim 1 of the main request was relevant to assess novelty.

The appellants-patent proprietors argued that these terms had to be interpreted taking into account the whole patent. The skilled person would have understood the coating step and the thrombin-coated gelatin granules defined in the claims as being limited respectively to a process as specified in paragraph [0014] of the patent and to thrombin coated gelatin granules prepared thereby.

The board observed that the wording of the claim did not restrict the coating step to the specific coating conditions mentioned in paragraph [0014] of the patent. While the limitation of the final product being a "dry and stable" hemostatic composition may imply some limitations on the process steps, these encompassed any process features resulting in a dry and stable product such as indeed the ones described in paragraph [0014] of the patent but also any other process features providing a dry and stable product. The board further noted that the term "coating" or "coated" had a clear meaning in the field of pharmaceutical preparations and corresponded to the application of a material to the surface of a pharmaceutical solid product. This was usually done by applying the coating material as a solution or suspension to the pharmaceutical solid product and evaporating the vehicle. Paragraph [0014] of the patent did not provide a different definition of the term "coating" or "coated" than the one commonly accepted in the art. The description provided first a description of the process in broad terms as in claim 1 before describing more specific embodiments and preferred features, such as in paragraph [0014]. Whether read alone or in the light of the entire description, the meaning of the coating step or the coated product remained the same.

In the context of the discussion regarding the interpretation of the terms "coating" and "coated", the appellants-patent proprietors had requested that the board stay the proceedings in view of the pending referral G 1/24.

The board stated that the provisions in the EPC concerning a stay of proceedings following a referral to the Enlarged Board only concerned the referring board (Art. 112(3) EPC). There was, however, no legal basis in the EPC nor in the Rules of Procedure of the Boards of Appeal requiring that any other board stay its proceedings to await the outcome of the proceedings before the Enlarged Board. The decision whether or not to stay the proceedings in such cases was thus a discretionary one.

According to the board, the strict approach taken in T 166/84, namely to stay the proceedings whenever the outcome of the proceedings depended entirely on the outcome of the referral, had been applied by some boards (e.g. T 426/00, T 1875/07 and T 1044/07). However, it had also been put into question for lack of a legal basis, and considered not to apply to proceedings before the Boards of Appeal (e.g. T 1473/13 and T 1870/16). The board was of the view that a strict application of the approach taken in T 166/84 would in effect deny a board its discretion as to whether to stay the proceedings. The discretion was however the inevitable consequence of the fact that there was no legal basis for requiring a board that had not referred the relevant questions to the Enlarged Board to stay the proceedings. Moreover, the outcome of the referral G 1/24 was not decisive for the decision in the case at hand.

The board decided not to stay the proceedings in view of the pending referral G 1/24 and concluded that claim 1 of the main request was not novel. During the course of the oral proceedings, the appellants-patent proprietors filed an objection under R. 106 EPC. The board reiterated that the decision to stay the proceedings remained a discretionary one. The appellants-patent proprietors had had ample opportunities to present their comments on the issue of a stay of the proceedings, so that no violation of their right to be heard occurred (Art. 113(1) EPC). Moreover, the outcome of the referral G 1/24 was not decisive for the decision in the present case, including on novelty of the main request. Therefore, the board dismissed the objection under R. 106 EPC.

In T 325/23 the board agreed with the appellant (patent proprietor) that in general there exists no file wrapper estoppel in proceedings under the EPC. A file wrapper estoppel is a concept in US patent law. It refers to the doctrine that the patent proprietor may be estopped from enforcing an interpretation of patent claims that is inconsistent with statements made during the patent prosecution process. This concept does not exist in the EPC. However, the fact that the appellant had argued during the prosecution of the patent application that the limitation "single row" added to claim 1 was made in order to limit the subject-matter of claim 1 against prior-art document D9 which disclosed "multiple rows", could be taken as an indication that a narrow interpretation of the term "single row" was at least not technically unreasonable. It was therefore appropriate, at a later stage of the proceedings, to follow such a narrow interpretation, which had even been adopted by the appellant during earlier proceedings. Such an interpretation did not correspond to a "file wrapper estoppel" because it did not limit the interpretation of a certain feature to what was argued by the then applicant for all future proceedings. Rather, the consideration of such events in the file history was used to determine whether an interpretation was technically reasonable or not, without excluding other interpretations.

The board did not agree with the appellant's assumption that once an interpretation of a feature was determined, it could only be assessed whether this interpretation contravened Art. 100(c) EPC. Other interpretations were, according to the appellant, no longer relevant for the assessment of the admissibility of amendments.

According to settled case law of the Boards of Appeal, all technically reasonable interpretations of an ambiguous claim have to be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it has to be concluded that there is added subject-matter (CLB, 10th edn. 2022, II.E.1.3.9e)).

In the context of claim interpretation the appellant further argued that a non-specific definition in a claim should be given its broadest technically sensible meaning and referred inter alia to the chapters II.A.6.1 and I.C.4.1 of CLB, 10th edn. 2022. The board disagreed. While it is true that according to these two chapters a non-specific definition in a claim should be given its broadest technically sensible meaning, none of these citations refer to the interpretation of claims in the context of assessing the admissibility of amendments under Art. 100(c) EPC or Art. 123(2) EPC. The board therefore concluded that all technically reasonable interpretations of the disputed feature had to be taken into account for the assessment under Art. 100(c) EPC.

In the case in hand, the disputed feature was feature (h). The board assessed whether the (narrow) interpretation of feature (h), according to which "single row" meant a single connector line, was already encompassed by the content of the application as filed and it concluded that the ground for opposition pursuant to Art. 100(c) EPC prejudiced the maintenance of the patent as granted (main request). The same reasons applied to auxiliary requests IA and IB and I to XXIII.

In T 583/23 the parties agreed that claim 1 related to a closed composition, i.e. a smoke condensate that did not include other components than those stated in the claim.

The board noted that claim construction, namely the meaning that a skilled person would give to the wording of a claim, was a question of law. In determining this, the board was not bound by the parties' views on the matter. The smoke condensate composition defined in claim 1 was introduced by the term "comprising." Due to the open-ended nature of this formulation, the inclusion of additional ingredients was, in principle, not excluded. Moreover, the scope of claim 1 included smoke condensates having a low pH of between 2.0 and 3.5, which were a preferred embodiment in the patent. These smoke condensates must necessarily comprise acids. Likewise, claims 2 and 3 contained further limitations which were not in line with a "closed" interpretation of claim 1.

Citing T 107/14 and T 303/20, the respondent (opponent) had argued that claim 2 as granted was a "false dependent claim" because it altered the closed composition of an allegedly closed independent claim 1. The board disagreed. As suggested in T 107/14, whether a particular amendment extended beyond the content of the application as originally filed must be assessed based on the information that is clearly and unambiguously disclosed in the entire application as originally filed, i.e. on the merits of the specific case. The same holds true for the interpretation of a specific claim and the question of whether it is a dependent claim or not.

According to the board, the indication "and the rest water" in claim 1 did not rule out the presence of further components in the smoke condensates, as long as water complemented the composition to 100 wt%. Such an interpretation of claim 1 was technically not nonsensical. By contrast, it was in line with e.g. claims 2 and 3 when interpreted as "truly dependent claims", and it led to a scenario which was not at variance with the teaching of the patent itself.

For these reasons, the board construed claim 1 as encompassing smoke condensates which could comprise other components than those explicitly specified in the claim ("open claim formulation"), such as, undoubtedly, acids.