R 0012/23 (Petition for review) 08-08-2025

1. Procedural aspects

The case is ready for decision which is taken in written proceedings without holding oral proceedings. In the absence of a petitioner’s request for oral proceedings, the Enlarged Board of Appeal does not consider oral proceedings to be expedient (Article 116(1) EPC). The principle of the right to be heard pursuant to Article 113(1) EPC is observed since the petitioner’s submissions are fully taken into account.

2. Admissibility of the petition for review

Pursuant to Rule 126(2) EPC (in the version in force until 31 October 2023), the decision that was posted on 16 June 2023 is deemed to have been notified on 26 June 2023. The petition for review based on 112a(2)(c), (d) EPC, together with the respective fee, was received on 16 August 2023. This was in time: see Article 112a(4), second sentence, EPC requiring the petition to be filed within two months of notification of the decision to be reviewed.

Considering that the petition for review is obviously without merit, it can remain an open question whether the petitioner has complied with Rule 106 EPC and how the remaining admissibility requirements would have to be assessed.

3. Merits of the petition for review

3.1 The second ground: violation of the right to a reasoned decision (Article 112a(2)(d) EPC in conjunction with Rule 111(2) EPC)

As to this procedural defect (raised in point 3.2 of the petition; see point IV.3.2 above),

the EBA notes, first, that a board’s duty to provide reasons for a decision is not dealt with in R 111(2) EPC covering only decisions open to appeal, i.e. decisions of certain departments of first instance. Rather, Rule 102(g) EPC entitled “Form of decision of the Board of Appeal” applies. It provides that:

The decision [of a Board of Appeal] shall contain:

(g) the reasons;

Second, any violation of Rule 102(g) EPC would not be covered by the provisions of Article 112a(2)(d) EPC. The grounds for a petition for review have been exhaustively defined in Article 112a(2) EPC in conjunction with Rule 104 EPC.

Article 112a(2)(d) EPC is not a catch all clause for procedural defects. It merely empowers the legislature to define defects in the Implementing Regulations in addition to the defects mentioned in Article 112a EPC. Rule 104 EPC exhaustively defines exactly two defects; a violation of Rule 102 EPC is not among them. See the extensive discussion in R 12/22, points II.2.2.

Against this backdrop, the petition, as far as the EBA deems it to be based on Article 112a(2)(d) in conjunction with the “right to a reasoned decision” pursuant to 102(g) instead of Rule 111(2) EPC, is obviously unfounded.

Third, the submissions made in respect of this right (under point 3.2) will instead be considered as an assertion of violations of the right to be heard. The petitioner asserts that two strands of a procedural defect are present:

(i) the Board did not take into specific account in the written decision the relevant

grounds of the objections raised by the petitioner under the “essentiality test”, in particular why it would not be “applicable”, i.e. lead to a conclusion in coherence with Article 123(2) EPC.

(ii) The Board did also not provide proper reasoning under the “gold standard”.

3.2 The first ground: violation of the right to be heard (Article 112a(2)(c) EPC in conjunction with Article 113(1) EPC)

3.2.1 Preliminary remarks

The relevant basic legal provision in the EPC is Article 113(1) EPC entitled “Right to be heard and basis of decisions”. Its paragraph 1 dealing with the first of these two topics reads:

The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

The principle of the EBA's case law on the review of substantive law under Article 112a EPC is set out in the "Case Law ") under the heading: "[V.B.]3.4.3 No suspensory effect - review of substantive law excluded". It reads in pertinent part:

Under no circumstances may the petition for review be a means to review the application of substantive law. ... The Enlarged Board has no competence under Art. 112a EPC to examine the merits of the decision and to go into the substance of a case ... It is not the purpose of petition for review proceedings to evaluate whether or not the reasons selected by the board are appropriate ... ; the Enlarged Board cannot replace a board's substantive assessment with its own ... The Enlarged Board cannot act as a third instance or second-tier appellate tribunal in petition proceedings ...

3.2.2 The EBA’s understanding of the asserted procedural deficiencies

under the ground of Article 112a(2)(c) EPC

The petition

In the petition the patent proprietor asserted that:

- during the oral proceedings

it was denied the right to argue on the basis of

-- the “gold standard” (points A.III and IV.3.1 above),

-- the standard actually applied which deviated from the “gold standard” (point III above), i.e. the “essentiality test” (see the following paragraph),

- in the decision

-- the Board purported to apply the “gold standard”, but in reality used the “essentiality test” without the petitioner having been given the opportunity to comment on the “gold standard” (no specific reasons given why the “essentiality test” would not be “applicable”, “i.e. lead to a conclusion in coherence with Article 123(2) EPC”; new-technical-information criterion of “gold standard” not applied) (points IV.3.1, in particular fourth but last paragraph, and IV.3.2 last paragraph)

-- the Board applied the “essentiality test” (IV.3.1, second paragraph), but disregarded the petitioner’s arguments on the “essentiality test” (IV.3.1, second but last paragraph and IV.3.2, first paragraph); therefore the board carried out no examination why the “essentiality test” would not provide support for claim 1 as granted (point IV.3.1, second but last paragraph).

The response to the EBA’s communication

Answering the EBA’s communication, the petitioner stated that it complained

- about the Board not taking into account the petitioner’s arguments under the “gold standard”, not about the board not applying the “essentiality test”, but (VI.1 above), but

- that the Board gave no reasons why it applied the “essentiality test” rather than the “gold standard” (VI.1)

- the Board did not apply the accepted methodology and not consider the petitioner’s arguments on the “gold standard”, but applied the “essentiality test” (VI.2 and VI.3)

- in line with G 2/14 the Board should have analysed the petitioner’s argument on the “gold standard”, not under the “essentiality test” (VI.4)

The EBA’s analysis of the procedural deficiencies asserted

The EBA considers that the asserted deficiencies summarised above are not fully clear and may be contradictory in part. In the following the EBA will address all the deficiencies that can possibly be derived from these submissions even if some of them may not have been the subject of the petitioner’s complaints, or have been dropped after the intended clarification in the response. This is a precaution to fully safeguard the petitioner’s right to be heard in the present proceedings. In so acting, the EBA considers the appointment of oral proceedings not to be necessary. The petitioner has not requested them.

In view of the petition and the petitioner’s response seeking to clarify its petition, the EBA considers that the petitioner asserts the following three procedural deficiencies regarding the ground for petition mentioned in Article 109(2)(c) in conjunction with Article 113(1) EPC. These three deficiencies are:

(i) the petitioner had no opportunity during the oral proceedings to argue on the standard the Board applied in the written decision (see section 3.2.3 below)

(ii) the Board neglected the “gold standard” as one of two alternative approaches (see section 3.2.4 below)

* in the decision, the Board applied only the “essentiality test” and not also the “gold standard” thereby contravening R 2/14 (points 10 and 11) [and it gave no reasons on the gold standard; see point (iii) below] and

* the Board provided no opportunity to discuss the “gold standard”, during the oral proceedings.

(iii) the decision is not sufficiently reasoned (section 3.2.5 below)

- on the “gold standard”

- on the “essentiality test”: the Board

* gave no reasons on why it applied the “essentiality test” rather than the “gold standard”,

* disregarded the petitioner’s arguments on the “essentiality test”,

* gave no specific reasons as to why this test was not “applicable”, i.e. provide support for claim 1 as granted.

3.2.3 No opportunity during the oral proceedings to argue on the standard

the Board applied in the written decision

The petitioner asserts that the Board had given no indication in the oral proceedings of its intended deviation from the “gold standard” and gave the petitioner no opportunity to argue on the basis of the standard actually applied (see above, point III, last para.).

This asserted procedural deficiency is obviously unfounded, because it is in direct contradiction with the petitioner’s own conclusion (set out above, in point III, and replicated below):

In other words, [in the decision] the Board applied the three-point [or “essentiality”] test by dealing with the question of the omitted feature being indispensable, its functional relationship to other features and the need for substitute features while examining compliance with the “Gold Standard”! This discussion was identically held in Oral Proceedings.

This paragraph makes it clear that the discussion in the oral proceedings was “identically” mirrored in the written decision (in examining the issue of added subject-matter under Article 76(1) EPC). It is therefore not clear how the petitioner could conceivably have been deprived of its right to comment on the grounds on which the decision under review is based as required by Article 113(1) EPC.

n addition, as the petitioner itself submits: the decision in point 1.3 and the preliminary opinion in point 6.1 (identical content as the decision) “mentioned the “gold standard”, but went on to analyse the amended patent using the three-point, i.e. “essentiality”, test.” (See above, point IV.1, second paragraph).

This means that the petitioner was alerted about the standard that the Board, in its perception, applied in the oral proceedings. There is no indication to the effect that the petitioner was not able to contest the applicability of the “gold standard” in the oral proceedings. The decision could therefore not have surprised the petitioner.

However, the petitioner asserts a number of different deficiencies. They are dealt with in points 3.2.4 and 3.2.5 below.

3.2.4 Only “essentiality test”, not also “gold standard” applied in the written

decision and no opportunity to discuss that standard during the oral proceedings

3.2.4.1 The asserted deficiency

The petitioner states that the Board, in the written decision, applied the “essentiality test” in addressing the added matter issue despite purporting to apply the “gold standard”. The petitioner had relied on the former test, but should have been given the opportunity during the oral proceedings to argue its case on the basis of the “gold standard” as well (see above, point VI.1).

The petitioner argues that in only applying the “essentiality test” in the written decision, despite professing to rely on the “gold standard”, and not also that standard, the Board did not comply with the principles laid out in the decision in case R 2/14. In that decision the EBA set aside the Board’s decision under review in particular because the Board had discussed only one of three alternative approaches to establishing sufficiency of disclosure of the claimed invention. This holding (derived from points 10 and 11) is referred to below as the “R 2/14 rationale”.

3.2.4.2 The written decision

The “gold standard”

In the case in hand, the Board said, in points 1.2 and 1.3, as the petitioner pointed out, that it applied the “gold standard”. In point 1.4, it briefly addressed the “essentiality test”.

In examining the ground for opposition of Article 100(c) EPC, the Board (in point 1.1) said it applied the same “gold standard” developed for examining compliance with Article 123(2) EPC. In this respect, it referred to the definition of that “standard” given in G 1/16 (in point 18). Accordingly, in short, an amendment must be directly and unambiguously derivable from the application documents as filed.

As to the “gold standard”, the petitioner stressed the “new technical information criterion” mentioned in G 2/10 focusing on what information was presented by the amendment.

The EBA notes that, according to that latter decision, that criterion is linked to the foregoing definition (“amendment must be directly and unambiguously derivable”) on which the Board’s analysis of added subject-matter is purportedly based. The petitioner apparently also draws this conclusion (see above, III).

G 2/10 reads in pertinent part:

4.5.1 … disclaiming subject-matter disclosed in the application as filed can also infringe Article 123(2) EPC if it results in the skilled person being presented with technical information which he would not derive directly and unambiguously, using common general knowledge, from the application as filed.

The “essentiality test”

The “essentiality” test sets out three criteria to determine added matter. It is therefore also referred to as the “three-point test”.

- Case Law

The Board, in point 1.4, referred to the "Case Law", section II.E.1.4.4 c) mentioning, in particular, T 1365/16, where it was said:

2.2 In the more recent, and now well-established, jurisprudence of the boards of appeal, the so-called "essentially test" (as set out in T 331/87) is no longer considered appropriate (cf. e.g. T 1852/13, Reasons, point 2.2.3 ff.).

The cited decision in case T 331/87, point 6, reads (as re-formatted by the EBA):

It is the view of the Board that the replacement or removal of a feature from a claim may not violate Article 123(2) EPC provided the skilled person would directly and unambiguously recognise that:

(1) the feature was not explained as essential in the disclosure,

(2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and

(3) the replacement or removal requires no real modification of other features to compensate for the change

(following the decision in Case T 260/85, OJ EPO 1989, 105). The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the invention. Any replacement by another feature must, of course, be examined for support in the usual manner (cf. Guidelines, Part C, Chapter VI, No. 5.4) with regard to added matter.

- Guidelines for Examination

The OD relied on section H-V, 3.1 of the Guidelines for Examination in the EPO (hereinafter: “the Guidelines”; see for the version of March 2023:

https://link.epo.org/web/epo_guidelines_for_examination_2023_hyperlinked_en.pdf ) in applying the “three-point test” (see point II.3.3 of its decision). This section reads :

3.1 Replacement or removal of features from a claim

The requirements of Art. 123(2) are only met if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority according to Art. 89), from the whole of the application documents (G 3/89, G 11/91 and G 2/10).

If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2):

(i) the replaced or removed feature was not explained as essential in the originally filed disclosure;

(ii) the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H-V, 2.4 and G-VII, 11); and

(iii) the skilled person would recognise that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).

However, even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard".

If several features are deleted from an independent claim, so that for example it is restricted to only part of the originally claimed subject-matter, the subject-matter of the amended claim must be directly and unambiguously derivable from the application as filed as being an invention per se, i.e. it must solve a technical problem and be able to work in the absence of any of the particular features being deleted.

Analysis: the test(s) applied by the Board in the written decision

The petitioner may be correct in contending that the Board, while declaring to apply the “gold standard” in points 1.2 and 1.3, of the decision under review did assess the criteria of the “essentiality test” characterised by the key words “omitted feature being indispensable”, “functional relationship” and “replacement feature” (see point IV.3.1 above). In conclusion, in the final paragraph of point 1.3, however, the Board pointed out that

[t]he skilled person, using their common general knowledge, thus would not have unambiguously and directly derived the subject-matter of claim 1 as granted from the earlier application (see document D1).

In other words, the Board declared expressly that its analysis that might have used the criteria of the “essentiality test”, constituted an application of the “gold standard”.

In this context the EBA notes that the Guidelines in section H-V, 3.1 reproduced above do appear to incorporate the criteria of the “essentiality test” in explaining the requirements of Article 123(2) EPC. They state that these criteria must be fulfilled, but “the division must still ensure” that the subject matter complies with the “gold standard”, i.e., possibly, that additional conditions are met.

Against this backdrop, the EBA cannot find that the Board obviously did not apply the “gold standard” due to the fact that it may also have examined, in points 1.2 and 1.3, the criteria of the “essentiality test”. This is independent of the fact that the Board (in point 1.4) stated that “according to the case law of the boards of appeal, this test is no longer considered appropriate for assessing compliance with the gold standard”. The EBA rather must rely on the Board’s declaration that it applied the “gold standard”, given that the EBA is prevented from scrutiny of the application of the law i.e. whether the Board applied the “gold standard” in an incorrect manner. Nor can it be excluded that the Board, by implication, applied the “new-technical-information” criterion that it did not mention, given its connection with the “directly and unambiguously derivable” criterion (see above, under the heading “The gold standard”).

Furthermore, in point 1.4 of the decision, the Board arguendo applied the “essentiality test” expressly referring to its purported analysis of added matter under the “gold standard” in points 1.2 and 1.3.

As a consequence of the foregoing, the above-mentioned rationale of R 2/14, if at all pertinent to the case in hand, would have been complied with. The EBA must consider that the Board, in the written decision, applied both standards in question, the “gold standard” and the “essentiality test”, whether in a correct fashion or not.

Whether the R 2/14 rationale would apply

Summary

In R 2/14, it was held that the Board would have needed to address (three) alternative factual approaches to assessing sufficiency of disclosure. In the case in hand, however, the (two) approaches in question are legal approaches. The Board having opted for one of them and thus having determined the law is under no obligation to apply the facts of the case to an alternative legal approach. This is explained in greater detail below.

Details of the R 2/14 rationale

In R 2/14 reviewing the decision in case T 1627/09, the patent proprietor had advanced three alternative cloning approaches that made it possible to carry out the claimed invention.

Points 29 and 30 of that decision read in pertinent part:

29. The appellant has argued that the information contained in the application as filed would have been sufficient to allow the skilled person to prepare a cDNA encoding the delta 8-desaturase obtainable from Euglena gracilis, to express it and to confirm its enzymatic activity. It referred to three cloning approaches which would have been at the disposal of the skilled person.

30. …[The first approach] creates an undue burden on the skilled person trying to perform the invention. The same applies to the two alternative approaches mentioned by the appellant.”

The Board thus assessed, and rejected, merely the first approach as unsuitable to enable the skilled person to carry out the claimed invention. These “approaches” constituted three alternative sets of asserted facts on how the skilled person was capable of carrying out the steps necessary for performing the claimed invention.

In this regard, the EBA notes that a board deciding on a case must establish the facts and apply the law to them. If a party puts forward several alternative sets of facts in order to support a specific finding of law, then the board must assess whether any of these sets does support that finding and may only refuse to accept the suggested finding once it has concluded that none of the sets of facts justifies it. In case R 2/14, the EBA criticised that the Board did not discuss two of three sets of facts at all, but only held them to suffer from the same negative conclusion as the first set.

The case in hand

In the case in hand, the situation is different: as the petitioner itself argued, it set forth certain facts to establish that the original disclosure contained two inventions including one without a containing presser. The petitioner applied these facts under the “essentiality test” and asserts that the Board did apply that test, but should have afforded the petitioner the opportunity to also argue on the basis of the “gold standard” during the hearing and should also have applied the “gold standard” to these facts in the written decision.

As stated, it is however for a board to determine the right approach after having heard the party concerned. This took place; see the following section 3.2.4.3. It was then for the Board to conduct the hearing on the basis of the test it considered correct, which it did (“identically in the oral proceedings!”; see point 2.2.3 above), and base the decision on that test and later give reasons in writing for that decision.

There is no need to discuss alternative legal approaches, as distinguished from factual approaches, in the decision, because the board gives the law, in particular it determines the correct legal approach. However, even though this was not necessary, as found above, the Board still applied both approaches, i.e. the “gold standard” and the “essentiality test”.

Conclusion

The Board was under no obligation to discuss a legal approach it did not intend to apply (the “essentiality test”), but still applied it arguendo.

3.2.4.3 The oral proceedings

The above finding that the requirement to discuss alternative approaches set out in R 2/14 does not apply in this case presupposes that the Board had given the party an opportunity to provide its comments on the correct legal approach. The petitioner itself stated that this was so: “The discussion in the oral proceedings revolved around the question which approach to apply, the gold standard, or the essentiality test”.

If, during the oral proceedings, the petitioner considered the Board should not apply the “essentiality test” under the guise of the “gold standard”, then it should have alerted the Board to its view. It should have requested that the Board applied the “gold standard” the way the petitioner understood it. This means in particular that the petitioner should have requested the Board to assess the presence of two inventions, i.e. the petitioner’s core argument, not (only) under the “essentiality test”, but also the “gold standard” in the way the petitioner understood the application of that standard to this question of two inventions: the presence of new technical information in claim 1 as granted and whether its subject-matter could be directly and unambiguously derived from the application documents.

In its communication the EBA had expressed this view (in point B.2.1.2, re (i)), without the petitioner addressing it in its response.

3.2.4.4 Conclusion

The EBA cannot find that the Board did not discuss the “gold standard” in the decision and the preceding oral proceedings. The same applies to the “essentiality test”, because the Board, in assessing it, relied on its findings on the “gold standard”.

Against this backdrop, no violation of the petitioner’s right to be heard can be found on the basis of this asserted procedural deficiency: “only “essentiality test”, not also “gold standard” applied in the written decision and no opportunity to discuss that standard during the oral proceedings” (heading of this section 3.2.4).

The following section 3.2.5 will address the question of whether a violation of the right to be heard occurred in the way the “gold standard” and the “essentiality test” were discussed in the written decision.

3.2.5 Decision not sufficiently reasoned

The petitioner asserts that the decision was not sufficiently reasoned

- on the “gold standard”: the Board gave no reasons at all

- on the “essentiality test”: the Board

* gave no reasons on why it applied the “essentiality test” rather than the “gold standard”,

* disregarded the petitioner’s arguments on the “essentiality test”,

* gave no specific reasons as to why this test was not “applicable”, i.e. provide support for claim 1 as granted.

3.2.5.1 The legal principles on how a board should address submissions that it identified as being relevant

In R 6/20 the EBA (in point 2, at page 12) noted that it had laid out criteria for assessing the assertion of certain aspects of a violation of the right to be heard stemming only from the written decision in R 8/15 and affirmed and complemented those criteria in R 10/18.

The catchword of R 8/15 reads:

1. Article 113(1) EPC implies that decisions of the EPO boards of appeal should adequately state the reasons on which they are based in order to show that the parties were heard. A party must be able to examine whether, in its view, the board has afforded it the right to be heard in order to be in a position to decide on whether or not to file a petition under Article 112a(2)(c) EPC (in force since 13 December 2007) for violation of Article 113(1) EPC. One aspect of the right to be heard as covered by Article 113(1) EPC requires a board to consider a party’s submissions, i.e. assess the facts, evidence and arguments submitted as to their relevance and correctness. Article 113(1) EPC is infringed if the Board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the Board substantively considered those submissions. (See Reasons, point 2.2.2.)

2. Assessing the completeness of a decision would usually be beyond the scope of scrutiny under Article 113(1) EPC. As to the reasons for a decision, Article 113(1) EPC must be interpreted more narrowly than, and thus is not a substitute in review proceedings for, the broader legal provisions embodied in Rule 102(g) EPC. Those provisions require a board to give reasons for its decision, but infringement thereof is not as such a ground for review. In other words: for the purpose of compliance with the right to be heard, reasons may be incomplete, but as long as they allow drawing the conclusion that the board, in the course of the appeal proceedings, substantively assessed a certain point being part of the procedure and that it found to be relevant, there will be no violation of Article 113(1) EPC. (See Reasons, point 2.2.3.)

On the possible legal consequences of a board not addressing submissions at all, see R 10/20, in particular its catchword.

3.2.5.2 The case in hand.

(a) In general

In line with point 1 of the catchword of R 8/15, the Board, in sections 1.1 to 1.4, did address submissions it identified as being relevant, in the reasons for the decision, i.e. the question of whether the containing presser omitted in claim 1 of the main request led to a finding of added subject-matter pursuant to Article 76(1) EPC. The question is whether the Board also substantively considered those submissions as also required in point 1 of that catchword.

The petitioner asserts (see at the outset of section 3.2.5) that the decision was not sufficiently reasoned

- on the “gold standard”: the Board gave no reasons at all

- on the “essentiality test”: the Board

* gave no reasons on why it applied the “essentiality test” rather than the “gold standard”,

* disregarded the petitioner’s arguments on the “essentiality test”,

* gave no specific reasons as to why this test was not “applicable”, i.e. provide support for claim 1 as granted.

(b) On the application of the “essentiality test” rather than the “gold standard”

As found in the previous section 3.2.4.2 above (under “Analysis:…), the Board declared to have applied the “gold standard” and this declaration cannot be judged to be obviously incorrect. In addition, it expressly applied the “essentiality test” (in section 1.4 referring to sections 1.2 and 1.3). This asserted deficiency therefore has no object.

(c) On the reasons given regarding the “gold standard” and the “essentiality test”

The EBA points out that the Board’s reasons given in respect of the topic of added subject-matter in sections 1.1 to 1.4 of the decision (summarised or reproduced above in point II) were extensive.

The petitioner however asserts that the board did not deal with its arguments in the statement of grounds both under the “essentiality test” and the “gold standard”. The summary of the arguments given under the “essentiality test” laid out in the statement of grounds is provided at the beginning of section 3.1, reproduced above in point VI.2.

In the petition, the petitioner set forth that the Board did not apply the “gold standard” and disregarded its arguments on the “essentiality test”.

In the response, the petitioner particularly objects to the asserted lack of application of the “gold standard”. More precisely, in the response, the petitioner raised the following objections regarding the Board’s asserted failure to address the “gold standard”:

[Re 2.1.2 point (iii), page 2]

… the original parent application disclosed two inventions (see sections 3.1.3 and 3.1.4 on pages 9 to 12 of the grounds). This aspect was dealt with by the board not by establishing if new information is provided to the skilled person, as required under the “gold standard”, but by pursuing, already at point 1.3 of the decision, the essentiality test.

[Re 2.1.2 point (i), page 4]

[the] skilled person … would have found evidence in such application, at page 4, lines 3 to 11, that there was indeed disclosed an embodiment in which the technical effects were said to be achieved by a removal operation which forms a groove on the peripheral edge of the profile, and hence without the need for a containing presser. This text passage states the technical effect on which the invention relies, namely of “containing a welding bead produced during the melting of the respective profiled elements 3,” purely in terms of the groove(s) made “by means of a removal operation…”, without relying on the containing presser. That is, such solution without the containing presser is no new technical information.

Put differently, the petitioner believes that had the board asked itself, as mandated by G 2/10, if the skilled reader was presented with new information, the answer to this question would have been "no" as the skilled reader would have identified two inventions, and hence in particular one in which no containing presser was required.

In this regard, the EBA reiterates that the Board is required to only deal with facts and arguments submitted by the petitioner on the basis of the test that it, after having heard the petitioner on it, considered to be correct. The distinction between the two approaches “gold standard” and “essentiality test” is thus irrelevant for assessing sufficiency of the reasons given in the decision and, in consequence, compliance with the right to be heard.

According to the Board, as explained above (in point 3.2.4.2: “Analysis…”), it applied the “gold standard” in points 1.2.and 1.3. As the EBA set forth, it is unable to dismiss this view as obviously incorrect. The Board also briefly dealt with the “essentiality test” by reference to the discussion of the “gold standard”.

The only question to be answered therefore is whether sections 1.2 to 1.3 relating to the application of the “gold standard” adequately deal with the petitioner’s submissions, given that the paragraph on the “essentiality test” (section 1.4) merely refers to sections 1.2 and 1.3. In other words: whether or not the Board adequately dealt with the petitioner’s arguments depends on sections 1.2 and 1.3.

In the portion of the response reproduced immediately above, the petitioner relied on the disclosure of two inventions in the earlier application (document D1) that it had explained in the statement of grounds of appeal. This aspect, in its view, had not been dealt with by the Board under the “gold standard”, but, in point 1.3 of the decision, under the “essentiality test”. See the first quoted paragraph of the response immediately above. The petitioner thus admits that its core point had been discussed. As reiterated above, for purposes of the right to be heard, the test applied plays no role.

The analysis below must therefore focus on whether the Board, in its analysis, considered the petitioner’s submissions that it found relevant.

The petitioner’s main argument in this context is that [“the] skilled person … would have found evidence in such application [i.e. document D1], at page 4, lines 3 to 11” . Those lines read as follows:

As will be better specified below according to the method, before the step of heating and welding the profiled elements 3, a groove 19 is made in correspondence to at least one zone to be welded 4 of the profiled elements 3 by means of a removal operation (milling, melting, chamfering, etc.). Subsequently, the zones to be welded 4 are heated and coupled, or joined, by pressing the profiled elements 3 one against the other to keep the zones 4 in reciprocal contact. This way, the groove 19 or the grooves 19 of the two profiled elements 3 define a containing compartment 19a for containing a bead or welding bead produced during the melting of the respective profiled elements.

In section 1.2 of its decision, in the paragraph bridging pages 12 and 13, the Board gave the following answer:

Similarly, the skilled person would not read the passages on page 4, lines 3 to 11 and page 18, lines 27 to 31 of document D1, cited by the appellant, in isolation. These passages relate to embodiments involving the presence (and use) of a containing presser. These passages do not provide support for a device for welding profiled elements that does not comprise a containing presser.

The Board thus addressed this specific passage of the description that the petitioner relied on in the response to establish the presence of two inventions. This passage forms part of a discussion in section 1.2 leading to the conclusion that the containing presser was not only described as being optional in document D1.

As set out above (in point II), in section 1.2 the Board discussed the appellant’s submissions that:

- Figure 5 of document D1 did not show a containing presser,

- the appellant inferred from page 7, lines 8 and 9 of document D1 that the containing presser was only optional,

- the passages on page 4, lines 3 to 11 and page 18, lines 27 to 31 of document D1, suggested that a containing presser was not needed.

The petitioner’s core point “two inventions” was then specifically discussed in section 1.3 of the decision. Again, the fact that, in that section, the Board applied the criteria of the “essentiality test” in the framework of the “gold standard”, is immaterial for the assessment of compliance with the right to be heard.

Apart from the “two inventions” point, the petitioner has not mentioned any other specific submission that the Board allegedly had not dealt with in the written decision. See in particular the following objection made in the petition referred to above (in point IV.3.1, second but last paragraph above):

“The Board disregarded the arguments raised by the petitioner under the “essentiality test” on the assumption that this test was no longer considered appropriate for assessing compliance with the “gold standard”. Therefore, the Board did not examine it in detail and gave no specific reason as to why the arguments put forward by the petitioner in relation to the “essentiality test” would not provide support for claim 1 as granted.”

3.2.5.3 Conclusion

It follows from the foregoing that the petitioner’s assertion that the Board did not discuss the “gold standard” at all and ignored its arguments on the “essentiality test”, and thus the third procedural deficiency relating to insufficient reasons given for the decision, is clearly unfounded.

4. Overall conclusion on the request that the decision under review be set aside

As the analysis in point 3 above has shown, the petition for review is clearly unallowable (Rule 109(2)(a) EPC). This is because none of the three asserted fundamental deficiencies constitute a violation of the right to be heard under Article 112a(2)(c) EPC in conjunction with Article 113(1) EPC or under Article 112a(2)(d) EPC:

- The grounds for the decision reflect the discussion during the oral proceedings (point 3.2.3),

- Both the “gold standard” and the “essentiality test” were addressed in the written decision; addressing the test considered to be the correct one would have sufficed (3.2.4),

- The written decision is sufficiently reasoned; it dealt with the petitioner’s arguments (3.2.5).

As a final remark, the EBA deems it possible that the apparent incorporation of the “essentiality test” in the “gold standard” in the decision under review (as in the Guidelines) may have caused confusion on the part of the petitioner and triggered the present petition for review.

5. The remaining requests regarding the review of the Board's decision

The remaining requests that:

- the appeal proceedings be re-opened;

- in the event that the proceedings are re-opened, that they be entrusted to another Board of Appeal;

- the fee for the petition be reimbursed;

must equally be refused. Since the petition is clearly unallowable, the Enlarged Board cannot order reopening of the appeal proceedings under Rule 108(3) EPC; the request to entrust the proceedings to another board consequently has no object. Reimbursement of the petition fee cannot be ordered because the condition of Rule 110 EPC that the proceedings before the Board are reopened has not been met.