II. DEMANDE DE BREVET ET MODIFICATIONS

In T 903/24 war die Auslegung des Merkmals M0106 entscheidend für die Neuheit des Gegenstands von Anspruch 1 des Hauptantrags. Dieses Merkmal verlangte, dass "das erste Verkleidungselement auf der Schmalseite wenigstens lokal mehrere übereinanderliegende Lagen des Flachmaterials aufweist".

Die Kammer stellte fest, dass der Ausdruck "übereinanderliegende Lagen" nach dem allgemeinen Sprachverständnis nicht bedeutet, dass die Lagen direkt miteinander in Kontakt stehen und sich berühren müssen. Dasselbe ergab sich bei Berücksichtigung der in der Beschreibung erläuterten funktionalen Bedeutung der "übereinanderliegenden Lagen" für die Versteifung und Formstabilität der wärmeisolierenden Wand sowie für die Wärmebrückenbildung durch diese Lagen.

Die Kammer merkte an, dass die drei "übereinanderliegenden" zwar als direkt miteinander in Kontakt stehende Lagen in den Figuren 2 und 3 des Streitpatents dargestellt waren, das Patent jedoch keine Erläuterung oder Definition dahingehend enthielt, dass "übereinanderliegende" Lagen sich stets berühren müssten. Vielmehr enthielten die Ausführungsformen der Figuren 5, 6 und 7 Hinweise, dass dies gerade nicht so zu verstehen war.

Die Kammer fügte hinzu, dass der erteilte Anspruch 7, der "mehrere übereinanderliegende Lagen (40, 41, 49)" definierte, sich auf die Ausführungsform in Figur 6 bezog. Aufgrund der Bezugszeichen war ersichtlich, dass die Lagen 40, 41 und 49 in Figur 6 im Sinne des Patents "übereinanderliegende Lagen" waren, auch wenn sich zwischen den Lagen 40 und 49 ein anderes Element befand und sich diese daher nicht berührten und nicht direkt miteinander in Kontakt standen.

Weiterhin stellte die Kammer fest, dass R. 43 (7) Satz 2 EPÜ besagt, dass Bezugszeichen nicht zu einer einschränkenden Auslegung des Patentanspruchs herangezogen werden dürfen. Dies bedeutet insbesondere, dass im Patentanspruch angeführte Bezugszeichen den Anspruchsgegenstand nicht auf Ausführungsbeispiele beschränken, die den Zeichnungen bzw. Figuren entsprechen, in denen diese Bezugszeichen verwendet werden. Dies war bei der oben dargelegten Begründung auch nicht der Fall. Gemäß R. 43 (7) EPÜ sollen Bezugszeichen das Verständnis des Patentanspruchs erleichtern. Dies war etwa dann der Fall, wenn durch Bezugszeichen erläutert wurde, in welchem Zusammenhang Merkmale des Patentanspruchs in einem im Patent genannten Ausführungsbeispiel zueinander standen.

Die Kammer wies darauf hin, dass Figur 6 Teil der bei der Anspruchsauslegung gemäß G 1/24 stets heranzuziehenden Beschreibung und Zeichnungen war. Laut Kammer erleichterten die Bezugszeichen in Anspruch 7 das Verständnis des Verhältnisses von dem in Figur 6 gezeigten Ausführungsbeispiel zu Anspruch 7. Die Berücksichtigung der Bezugszeichen dahingehend, dass jedes der Bezugszeichen auf eine der in Figur 6 gezeigten "übereinanderliegenden Lagen" verwies, stand insofern im Einklang mit R. 43 (7) EPÜ. Der Umstand, dass sich hieraus über Figur 6 indirekt eine erläuternde Rückwirkung der Bezugszeichen auf das Verständnis der im Anspruch verwendeten Begriffe ergab, entsprach der gemäß R. 43 (7) Satz 1 EPÜ erwünschten Funktion der Bezugszeichen, das Verständnis des Patentanspruchs zu erleichtern. Anspruch 7 war ein abhängiger Anspruch, der sich (mittelbar) auf Anspruch 1 bezog, in dem der Begriff "übereinanderliegend" ebenso wie in Anspruch 7 verwendet wurde. Der Begriff war in diesen beiden Ansprüchen daher einheitlich auszulegen.

Die Kammer kam zu dem Schluss, dass der Ausdruck "übereinanderliegende Lagen" in Anspruch 1 nicht auf Lagen beschränkt war, die in direktem Kontakt zueinander standen und sich berührten. Dieses Verständnis ergab sich nicht aus einer bloßen Betrachtung der Bezugszeichen, sondern aus der gemäß G 1/24 bei der Auslegung von Ansprüchen stets gebotenen Heranziehung der Beschreibung und Zeichnungen (einschließlich der Referenzzeichen) aus der Sicht der Fachperson, ggf. unter Einbeziehung der funktionalen und üblichen sprachlichen Bedeutung der im Anspruch verwendeten Begriffe.

Der Gegenstand von Anspruch 1 des Hauptantrags war daher nicht neu.

In T 847/24 the granted claim 1 defined a computer-implemented method for configuring a physical object (an implant) which, when carried out, merely resulted in data representing that object. Claim 1 of auxiliary request 1 differed from claim 1 as granted in that, inter alia, the claimed method further included the production of the configured object. The board held that the amended claim, including the step of manufacturing the configured object, was, in view of Art. 64(2) EPC, not allowable under Art. 123(3) EPC.

Regarding claim interpretation, the board referred to the Enlarged Board's statement in G 1/24 that the departments of the EPO, in the course of their duties, are required to interpret patent claims when assessing the patentability of an invention, and pointed out that determining a patent claim's subject-matter was not distinguishable from interpreting that claim and its features. The terms in a patent claim had to be interpreted in a uniform, consistent and objective manner. It followed that the same claim interpretation step which, in accordance with G 1/24, had to be carried out when assessing e.g. novelty had also, for reasons of consistency, to be carried out when e.g. assessing added subject-matter, sufficiency of disclosure or extension of protection. The board disagreed with decisions T 1791/16 and T 837/24, which dealt with cases in which the claims in question allowed for several technically meaningful interpretations and in which the deciding boards had considered that all these interpretations had to meet the requirements of Art. 123(2) and Art. 123(3) EPC respectively. According to the board, the requirement "to interpret patent claims" pursuant to G 1/24 implied that the correct interpretation of a claim could not – if decisive for the outcome – be left open.

When assessing whether claim 1 of auxiliary request 1 (which included the step of manufacturing the configured implant) extended the scope of protection, the board considered, in view of the wording of Art. 123(3) and Art. 64(2) EPC and the Enlarged Board's statement in G 2/88 (point 5.1 of the Reasons), that assessing a possible extension of a patent's scope of protection under Art. 123(3) EPC had to include possible changes of the scope of protection due to Art. 64(2) EPC (see e.g. T 1635/09)..

The parties did not dispute, and the board agreed, that claim 1 of auxiliary request 1, which explicitly included a step of producing the implant, conferred protection not only to the claimed method but also, pursuant to Art. 64(2) EPC, to a physical implant produced in accordance with that method. It was also not in dispute that a method comprising all the steps of claim 1 as granted and, in addition, a production step also fell within the scope of claim 1 as granted, because the added step merely limited the method defined in claim 1 as granted. For this reason, the addition of a production step to claim 1 as granted did not extend the protection conferred to a method that would not have been protected by the patent as granted.

What was controversial, however, was whether the physical implant directly obtained by the more limited method according to claim 1 of auxiliary request 1 had been protected by claim 1 as granted. The board pointed out that Art. 64(2) EPC required that the product in question be "directly" obtained by the claimed method, which meant that the protection conferred by a process claim did not, as a rule, extend to products obtained only by carrying out further steps which were neither defined in that claim nor implied by it. According to the board, what was directly obtained when carrying out the claimed method was merely data. Having regard to the purpose of Art. 64(2) EPC, a physical medium storing that data could still be considered to fall within its scope. However, using the data obtained by carrying out the defined method when manufacturing a physical implant was an entirely different matter. A physical implant was, in terms of its characteristics, far removed from mere data configuring that implant. Therefore, a physical implant was not "directly" obtained, within the meaning of Art. 64(2) EPC, by the method defined in claim 1 as granted. In the board's view, the appellant's position was not supported by the fact that the patent specification (which had, for the purposes of assessing the extent of protection, to be used to interpret the claims in direct application of Art. 69(1) EPC) stated that an implant "may be produced based on the defined structure" determined in accordance with the method defined in claim 1 as granted. This indicated the opposite, namely that the production of the implant was optional and not a constituent or defining feature of the claimed method.

In T 873/24, in each of the originally filed sets of claims of the application, the parent and the grandparent application, the titanium to nitrogen ratio was explicitly defined by expressing their respective amounts in weight percent, as being in excess of 3.42, thus resulting in a weight ratio. In contrast, claim 1, feature F1.3 of the patent in suit did not specify that the amounts of titanium and nitrogen had to be expressed as weight percent in order to determine the ratio. Appellant 2 argued that subject-matter had been added since the application as filed (as well as the parent and grandparent applications) only disclosed a ratio based on weight but not a generalisation of the ratio by omission of the unit, as claimed.

According to the board, the case hinged on the extent to which the information found in the description might influence the interpretation of claim 1 and on what possible interpretations of the claim needed to be originally disclosed.

The board observed that most decisions acknowledged that the principles of G 1/24 as to the role of the description in claim interpretation also applied to the assessment under Art. 76(1) and 123(2) EPC. Generally, most decisions adopted a two-step approach, first interpreting the amended claim and then assessing whether the amended claim contained added subject-matter. The board identified three approaches regarding the extent to which the description was relied upon during this first step of interpreting the amended claims. Under the first approach, the description was consulted only to define the skilled person. Under the second, there was no broadening or limitation of claims based on the patent specification. The third was a holistic approach permitting broadening and/or narrowing the interpretation in view of the patent specification. The board noted that the three approaches led to a different outcome when applied to the case in hand. Under the first and second approaches, the amendment to claim 1 would be deemed to add subject-matter. The third approach would lead to the conclusion that feature F1.3 fulfilled the requirements of Art. 123(2) EPC..

After addressing the admissibility of the referral (see abstract under Art. 112(1) EPC), the board referred the following questions to the Enlarged Board (referral pending under G 1/26 – "Coated steel strips").

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

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

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

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

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

In T 855/24 stimmte die Kammer der Beschwerdeführerin zu, dass durch die Nichtstreichung des Absatzes [0042] im ersten Hilfsantrag eine Erweiterung vorlag, die gegen Art. 123 (2) EPÜ verstieß.

Im ersten Hilfsantrag wurde eine selektive Streichung von Absätzen durchgeführt, wobei unter anderem der Absatz [0042] nicht gestrichen wurde. In Absatz [0042] fand sich unter anderem die Aussage, dass "Gemäß einem weiteren Ausführungsbeispiel der Erfindung [...] das Temperaturmesssignal [...] für eine Kompensation von temperaturabhängigen Effekten der optischen Messeinrichtung verwendet" werde.

Entgegen den Argumenten der Beschwerdegegnerin und den in der angefochtenen Entscheidung angegebenen Gründen hielt es die Kammer für unzutreffend, dass Absatz [0042] Vorrichtungsmerkmale des beanspruchten Brandmelders offenbarte. Sie stellte fest, dass sich die strittigen Absätze [0031] bis [0045] in einem Teil der Beschreibung befanden, welcher ausnahmslos den Wortlaut der erteilten Verfahrensansprüche wiederholte und deren technische Wirkung erläuterte. Zwar war der Absatz [0042] der Kammer zufolge nicht explizit auf ein Verfahren bezogen, jedoch ergab sich dies nach ihrer Überzeugung zweifelsfrei für die Fachperson aus dem Gesamtkontext der Absätze [0031] bis [0045]. Dies galt für die Kammer umso mehr, als der Absatz [0042] nahezu wortlautidentisch mit dem erteilten Verfahrensanspruch 10 war. Sie vermochte daher nicht zu erkennen, warum für die Fachperson aus den Absätzen [0031] bis [0045] unmittelbar und eindeutig entnehmbar sein sollte, dass die dort angegebenen Merkmale und Wirkungen des vormals beanspruchten Verfahrens sich in Vorrichtungsmerkmalen des Brandmelders niederschlagen sollten. Entscheidend war der Kammer zufolge nicht die formale Nummerierung der Absätze der Beschreibung, sondern der technische Inhalt und der Offenbarungszusammenhang der betroffenen Textstellen. Die Kammer erklärte, dass auch bei fortlaufend nummerierten Absätzen jeweils zu prüfen ist, ob durch selektive Streichungen neue technische Informationen entstehen oder bestehende Informationen in einen geänderten technischen Zusammenhang gestellt werden und dadurch einen anderen Inhalt bekommen. Vorliegend ergab sich für die Kammer die unzulässige Erweiterung nicht aus der bloßen Tatsache, dass einzelne Absätze gestrichen wurden, sondern daraus, dass durch die selektive Beibehaltung des Absatzes [0042] ein Zusammenhang zwischen der dort beschriebenen Temperaturkompensation und dem beanspruchten Brandmelder hergestellt wurde, der für die Fachperson aus der ursprünglichen Offenbarung nicht unmittelbar und eindeutig hervorging.

In T 847/24 the board addressed the principles of claim interpretation endorsed by the Enlarged Board in G 1/24. The first principle was that the claims were the starting point and the basis for assessing the patentability of an invention. The board understood this as a recognition that the claims defined the claimed subject-matter and that it was the claims themselves which were being interpreted. Accordingly, the claims, on the one hand, and the description and the drawings, on the other, were not on the same footing. This understanding of the significance to be given to the claims aligned with Art. 69 EPC (see T 1473/19), the wording and principles of which the Enlarged Board appeared to consider applicable by analogy. It was also consistent with the Enlarged Board's statement that this first principle of claim interpretation was a settled point in the case law of the boards.

The second principle endorsed by the Enlarged Board was that the description and drawings had to always be consulted to interpret the claims, and not only if the person skilled in the art found a claim to be unclear or ambiguous when read in isolation. According to the board, it followed from this that, without prejudice to the requirement under Art. 84 EPC that claims had to be clear in themselves, a claim should not be read in isolation. In other words, the meaning of a claim and its features was not to be determined in the abstract or on the basis of the skilled person's common general knowledge alone, but in the specific context in which it was used, which included the description and the drawings (as well as other claims). Such consultation could have an impact on the result of the interpretation. This impact was not limited to merely defining the person skilled in the art for the purposes of claim interpretation (see T 439/22).

The board noted that the above understanding of G 1/24 conformed with the Enlarged Board's reference to the harmonisation philosophy behind the EPC and its aim of preventing the EPO from adopting a practice of claim interpretation which would be contrary to the practice of the national courts of EPC contracting states and the UPC. It also fitted seamlessly with the direct applicability of Art. 69(1) EPC and the Protocol thereto in proceedings before the EPO when interpreting a claim to assess compliance with Art. 123(3) EPC.

The board pointed out that determining a patent claim's subject-matter, i.e. establishing the meaning of the claimed features, was not distinguishable from interpreting that claim and its features (see T 1473/19), and that the terms in a given patent claim had to be interpreted in a uniform, consistent and objective manner (see T 1345/23, T 177/22, and T 1473/19). It followed that the same claim interpretation step which, in accordance with G 1/24, had to be carried out when assessing e.g. novelty also had, for reasons of consistency, to be carried out when e.g. assessing added subject-matter, sufficiency of disclosure or extension of protection. This also aligned with the UPC Court of Appeal's statement in its order of 26 February 2024 in NanoString Technologies v. 10x Genomics, UPC_CoA_335/2023, according to which the "principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent", the term "validity" not being limited to "patentability" under Art. 52 to 57 EPC.

According to the board, the requirement "to interpret patent claims" pursuant to G 1/24 implied that the correct interpretation of a claim could not, if decisive for the outcome, be left open. As to a possible lack of clarity or ambiguity in a claim, this could, as such, only be addressed under Art. 84 EPC, which is not a ground for opposition. Such a deficiency could not be invoked indirectly under a different legal provision not concerned with this issue, such as Art. 123(2) or (3) EPC. A lack of clarity can have ramifications for how the deciding body interprets the claim under consideration and determines the claimed subject-matter, which may in turn have an impact on the outcome of the assessment of a ground for opposition under Art. 100 EPC. However, adopting e.g. a broad interpretation had to be distinguished from leaving the interpretation open or adopting two mutually exclusive claim interpretations simultaneously (see T 367/20).

In T 638/24, the appeal was filed by the patent proprietor against the opposition division's decision revoking the European patent.

Claim 1 of the granted patent (main request) read as follows: "A process for the production of a refined oil having a reduced 3-MCPD ester and/or glycidyl ester content characterized in that it comprises subjecting an oil to the following steps, in order: (a) a bleaching step, (b) a deodorization step, and (c) a final bleaching step with activated bleaching clay, and (d) a final deodorization step is carried out at least 40°C lower than deodorization step (b) and the final deodorization step (d) is carried out at a temperature less than 180°C..

The appellant contested the opposition division's finding that this process lacked novelty over D1. In particular, based on paragraph 0044] of the description of the opposed patent, the appellant argued that the wording "having reduced 3-MCPD ester and/or glycidyl ester content" required the process to result in a refined oil having a 3-MCPD ester and/or glycidyl ester content which was lower than that found in an oil subjected to standard refining processes.

The board did not find this argument persuasive. Claim 1 defined neither a "standard" refining process nor the amount of esters found in oils refined by these processes. Furthermore, there was no evidence that certain refining processes were considered "standard" according to common general knowledge at the filing date. Moreover, the ester content in a refined oil depended on the type of oil used, its origin, the extraction method and the conditions implemented during refinement. For these reasons, the board found that the purported reference to an undefined refined oil, allegedly obtained by an undefined "standard" process, was not suitable to distinguish the claimed invention from the prior art.

The board observed that the reference to "standard refining (i.e. standard degumming, bleaching and deodorization)" in paragraph [0044] of the description did not provide further guidance on how these refining methods should be carried out. There was no evidence that specific standardised methods and working conditions for carrying them out were part of the common general knowledge at the filing date either. Thus, this passage could not be relied upon to limit the scope of claim 1. G 1/24 could not be invoked to construe a claim relying on an unspecified and unqualified definition. The board concluded that, reading claim 1 and consulting the description, taking into account the skilled person's perspective, it was clear that what was claimed was a process which reduced the content of 3-MCPD and/or glycidyl esters in an oil which contained them. Furthermore, the process included the specified steps, in the given order.

On the basis of this claim construction, the board held that claim 1 of the main request lacked novelty over D1.

In T 420/24, the appellant (patent proprietor) contended that the prior art document D1 disclosed all features of claim 1 of the patent as granted (main request). Among other things, the appellant submitted that the opposition division had incorrectly interpreted the feature "to reduce a cantilevered beam length of the corrugated knife"..

To construe this feature in claim 1, the opposition division had used the definition of cantilevered beam length provided in paragraph [0026] of the contested patent, which reads as follows:.

"Alternatively or in addition, the fingers 148 may improve the stability of the leading edge of the knife 126 by reducing the cantilevered beam length of the knife 126, which as used herein refers to the length or distance between the cutting edge 127 of the knife 126 and the nearest adjacent extremity of the clamp 132A applying a clamping load to the knife 126. In this case, the nearest adjacent extremity of the clamp 132A is defined by the distal ends of the fingers 148....

The board recalled that, according to G 1/24, the description and drawings shall always be consulted to interpret the claims when assessing patentability of an invention under Art. 52 to 57 EPC. It disagreed with the appellant's view that the definition in the contested patent was only intended to be understood in relation to the specific embodiment referred to. According to the board, the use of the phrase "which as used herein refers to" indicated that the definition was a general definition.

The board therefore agreed with the opposition division that the skilled person, when interpreting the term "cantilevered beam length", would take into account the clear definition given in paragraph [0026] of the description of the contested patent.

The board concluded that the appellant had not convincingly demonstrated that the decision under appeal was incorrect with respect to the main request.

In T 717/23, during the oral proceedings before the board, the opponent raised, for the first time in the appeal proceedings, an objection of double patenting. It argued that the scope of claim 1 of auxiliary request 6 was identical, at least in part, to that of the patent that resulted from the parent application (the "parent patent"). In line with the prohibition of double patenting, the proprietor should not be allowed to request a patent based on the same subject-matter as that of the parent patent, even if, as in this case, the parent patent had later been revoked.

The board noted that the examining division had initially considered the subject-matter of claim 1, which was identical with claim 14 of the patent, to be different from claim 1 of the parent patent, and, for that reason, in compliance with the prohibition of double patenting. The examining division had found the difference to be due to the rotary joint, in present claim 1, not being contactless. However, since the board interpreted the rotary joint as a contactless rotary joint, there was in fact no difference from the claims of the parent patent. The opponent argued that, in such a situation, it had to be possible to address the prohibition of double patenting in appeal proceedings. The opponent added that the issue of double patenting was a formal one that had to be assessed at any time during the appeal proceedings. This constituted exceptional circumstances within the meaning of Art. 13(2) RPBA.

The board did not admit the objection of double patenting into the appeal proceedings under Art. 13(2) RPBA. Raising such an objection for the first time during the oral proceedings before the board constituted an amendment of the opponent's appeal case within the meaning of Art. 13(2) RPBA. Contrary to the opponent's submission, this objection was not to be treated differently from any other new objection raised for the first time at such a late stage. In this context, the board noted that, for example, an objection as to the admissibility of the appeal also qualified as an amendment within the meaning of Art. 13(2) RPBA (see T 458/22).

The board further observed that, if anything, it was questionable whether an objection of double patenting could be examined in opposition or opposition appeal proceedings at all. In G 4/19, the Enlarged Board did not address opposition proceedings and based the applicability of the prohibition of double patenting in examination proceedings on Art. 97(2) and 125 EPC, referring to the preparatory documents to the EPC and the legislator's intention. Since Art. 97(2) EPC was not applicable in opposition proceedings, and Art. 100 EPC provided an exhaustive enumeration of grounds for opposition which did not include double patenting, it seemed to the board that the Enlarged Board's reasoning could not simply be extended to opposition proceedings. The board noted that in the present case, however, this question could be left open.

In particular, apart from arguing that an objection of double patenting could per se not be late-filed, which was incorrect, the opponent did not provide any reasons as to why there were exceptional circumstances justifying the admittance of the objection of double patenting at such a late stage of the appeal proceedings. Considering that claim 1 was identical to claim 14 of the patent, the objection should, if at all possible, have already been raised earlier during the appeal proceedings.

Furthermore, the objection was, prima facie, not persuasive. Firstly, the issue of double patenting did not even arise in the present case, because the patent resulting from the parent application had been revoked. Under Art. 68 EPC, the effect of that revocation was that the revoked patent was deemed not to have had, from the outset, the effects specified in Art. 64 and 67 EPC. Secondly, the subject-matter which, according to the opponent, was allegedly subject to the prohibition of double patenting, only concerned at the very most claims with an overlapping scope rather than double patenting in the narrower sense (as to this distinction, see G 4/19, point 2 of the Reasons; see also T 2907/19).

In T 1471/24 the appeal lay from the decision of the examining division refusing the European patent application. The examining division had found that D1 represented the closest prior art to the claimed invention and that the subject-matter of claim 1 was both novel and involved an inventive step over the cited art. Nonetheless, the requirements of R. 43(1) EPC were not fulfilled since claim 1 was not drafted in the two-part form, despite this being appropriate.

The board concurred with the examining division. It recalled that the purpose of the two-part form of claim is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. The board noted that it is established practice before examining divisions not to insist on the two-part form if it is sufficiently clear from the indication of prior art made in the description which features of the claim under examination are known therefrom (see Guidelines F-IV, 2.3.2). However, this proviso regarding the features known from the prior art had not been satisfied in the present application. D1 was indeed acknowledged on page 1 of the description, but this acknowledgement failed to identify which specific features of claim 1 were known from D1. Fundamentally, therefore, in view of the two-part form not having been used in the independent claim, the requirement for the content of the description to include an indication of which features of claim 1 were known from the prior art was not fulfilled..

The board further clarified that the present case was different from T 181/95 and T 723/93, to which the appellant had referred. In the present case, claim 1 could reasonably be formulated in the two-part form with features known from D1 placed in the preamble, features not known therefrom being placed in the characterising portion; such formulation was indeed expedient.

The appellant had further argued that the text proposed by the examining division to draft claim 1 in the two-part form was incorrect insofar as D1 disclosed a set of various flat mirrors rather than, as proposed by the examining division for inclusion in the preamble of claim 1, merely a set of various mirrors. The board noted that this argument was based on a misunderstanding. The preamble of a claim drafted in the two-part form should include those features of the claim known in combination from the prior art (R. 43(1)(a) EPC). In the present case, a set of various mirrors was indeed known from D1, albeit in D1 the various mirrors of this set were flat. That the mirrors of D1 were flat was however irrelevant; D1 without doubt disclosed a set of various mirrors, such that this feature could be included in the preamble of a two-part form. According to the board, the examining division's proposal as to how claim 1 could be drafted in the two-part form seemed wholly reasonable and in line with section F-IV, 2.3 of the Guidelines.

Likewise, the board disagreed with the appellant's contention that drafting the claim in the two-part form made it unclear and lacking in conciseness. None of the appellant's further arguments convinced the board that the examining division was wrong to insist on claim 1 being drafted in the two-part form. Hence, the board concluded that the appellant's sole request was not allowable and dismissed the appeal.

In T 241/25 the patent related to an apparatus for indicating flex of a distal end of a catheter, for example, for implanting a prosthetic aortic valve in a human heart.

The board agreed with the opposition division’s conclusion that the feature of the flex activating member comprising an externally threaded portion in claim 1 of the main request extended beyond the content of the earliest application as filed. Considering the disclosure in the earliest application as filed, the board explained that, for the skilled person, it was the externally threaded surface portion of the rotatable member including the internally threaded surface portion, and not any externally threaded surface of the flex activating member, that had to cooperate with the flex indicating member in order to indicate flex. In other words, the earliest application as filed inextricably linked the externally threaded portion of the rotatable member with other claimed features. Not claiming this portion of the rotatable member amounted to a non-allowable intermediate generalisation.

The opponent also argued that claiming a pull wire in claim 1 of the main request was an unallowable intermediate generalisation because an adjustment knob and a resilient steerable section of the claimed elongated shaft had been impermissibly omitted. The board observed that merely referring to an embodiment of the original disclosure and stating that an unallowable intermediate generalisation of this embodiment had been added was not a substantiated objection. An objection to an intermediate generalisation in a claim required (i) identifying the features which were impermissibly omitted from the claim and (ii) explaining why the omission introduced added subject-matter. According to established case law this explanation needed to show that the omitted features were inextricably linked with (some of) the claimed ones according to the original disclosure. Only in this way was it possible to (i) identify the objection and (ii) understand the reasoning supporting the objection (see CLB, 11th edn., 2025, II.E.1.9.1; as well as, for instance T 1762/21, T 824/23 and T 1888/22). The board did not find the objection convincing and it concluded that the definition of a pull wire in claim 1 of the main request did not amount to an unallowable intermediate generalisation. The board explained that the omitted features were not inextricably linked to the feature that the wire is a pull wire. Whether an adjustment knob and a resilient steerable section together with the pull wire might provide further advantages to effectively steer and then extract the catheter, as the opponent argued, was of no relevance.

In addition, the opponent argued that the omission in claim 1 of the main request that the movement of the flex indicating member relative to the handle portion was to indicate an amount of flex of the distal end portion of the elongated shaft was an impermissible intermediate generalisation. The board disagreed, observing that claim 1 of the main request recited that the flex activating member caused the flex indicating member to move relative to the handle. In the claim, the fact that this movement indicated flex was implied by the definition of the flex indicating member as part of an apparatus for indicating flex. No other movement of the flex indicating member was defined. Hence, the board concluded that no intermediate generalisation was present.

The opponent raised a further objection of added subject-matter against claim 3 of the main request. The board explained that claim 3 of the main request specified that "the flex activating member (154) and the flex indicating member (156) are separate members". It was common ground that the earliest application as filed did not provide a literal basis for this feature. The board observed that to assess whether the claim comprised added subject-matter, the feature had first to be interpreted in view of the patent as a whole (T 367/20, T 873/23). In view of what was already defined in claim 1, the board understood that the term "separate" in claim 3 had to mean something different from simply distinct. The technically meaningful interpretation was that, according to claim 3, the two members in question were held at a distance from one another, for example, by means of an intermediate element. With this construction, claim 3 found no basis in the earliest application as filed.

In conclusion, the feature of the flex activating member comprising an externally threaded portion in claim 1 and the feature of the flex activating member and the flex indicating member being separate members in claim 3 of the main request extended beyond the content of the earliest application as filed. Hence, the ground for opposition in Art. 100(c) EPC prejudiced the maintenance of the patent on the basis of the main request.

In T 137/24 the board concluded that claim 1 of the main request did not contain subject-matter that extended beyond the content of the application as filed (Art. 123(2) EPC).

The board explained that claim 1 of the main request was based on claims 2 and 3 of the application as filed. Compared to the disclosure in claims 2 and 3 of the application as filed, claim 1 of the main request contained four additional features. The third of these features ("feature (iii)") was that the GOT polypeptide comprised an amino acid sequence having at least 90% (instead of at least 65%) sequence identity to sequence SEQ ID NO:110 or SEQ ID NO:100.

The appellant (opponent 2) asserted that feature (iii) constituted a selection from a list of independent alternatives. The board disagreed, observing that feature (iii) was disclosed in several paragraphs of the application as filed in a list of increasing amino acid sequence identities to SEQ ID NO:100 or SEQ ID NO:110, starting from at least 65% to at least 99.9% and ending with 100%. Selecting an amino acid sequence identity from such a list that was higher than the amino acid identity recited in the claims of the application did not constitute a selection from a list of independent alternatives.

The board explained that, instead, lists of increasing amino acid sequence identities to a given amino acid sequence – here SEQ ID NO:100 or SEQ ID NO:110 – were convergent lists of preferred options from the lowest amino acid sequence identity to the given amino acid sequence (least preferred) to the highest amino acid sequence identity (most preferred). In addition to the identity with the most preferred amino acid sequence, the polypeptide recited in the claim was functionally defined in the claim by its enzymatic activity (a GOT polypeptide). This meant that the increase of the amino acid sequence identity to SEQ ID NO:100 or SEQ ID NO:110 from 65% to 90%, as recited in the claim, merely narrowed down the GOT polypeptides falling within the definition in the claim, without singling out specific polypeptides or conferring any new properties to these polypeptides.

The board pointed out that, in line with the considerations set out in T 2134/10, the selection of a degree of sequence identity with a given (most preferred) amino acid sequence from a convergent list for a functionally defined polypeptide did not single out a particular molecule or confer properties to this molecule that were not disclosed in the application as filed. Feature (iii) therefore had a basis in the application as filed.

In T 2488/22 the board recalled that the established criterion for assessing whether amended subject-matter extends beyond the original disclosure is the "gold standard". Regarding claim interpretation in the context of added subject-matter, the board was of the view that, notwithstanding the reference in the second sentence of the Order in G 1/24 to the specific context of assessing patentability of an invention under Art. 52 to 57 EPC, the description and drawings also had to be consulted when interpreting the claims for the purpose of assessing compliance with other requirements of the EPC. The board observed that, first, it did not seem logical to forbid the skilled reader from consulting the description and the drawings when interpreting claims in any context other than the assessment of patentability under Art. 52 to 57 EPC. Second, and more important, the claimed subject-matter had to be interpreted in a uniform and consistent manner. It could not be the case that claims were interpreted differently when assessing patentability under Art. 52 to 57 EPC on the one hand, and when assessing compliance with any of the remaining requirements of the EPC on the other (see e.g. T 177/22 or T 1473/19).

At the same time, the board noted that neither the Order nor the reasoning of G 1/24 contained any indication as to the possible outcome of consulting the description and drawings, or as to any impact such consultation might have on the interpretation of the claims. In particular, there was no basis in G 1/24 for concluding that a claim had to be interpreted in a more limited manner on the basis of features found in the embodiments of the description. The board explained that it was established case law, both before and after G 1/24, that a claim should not be interpreted on the basis of features of embodiments in the description so as to give it a meaning narrower than the wording of the claims as understood by the skilled person (see CLB, 11th edn. 2025, II.A.6.3.4). In other words, "consulting" the description and the drawings should not result in reading limitations into a claim which were not included in, or could not be derived from, the wording of the claim.

The board pointed out that the skilled person read the claims (and any other parts of the application or the patent) with a mind willing to understand. Consulting the description and the drawings could result, for example, in setting the claimed subject-matter in a particular technical context. Based on this context, the skilled person could reject interpretations of the claims that did not make technical sense. What the proprietor suggested, however, was to limit the interpretation of granted claim 1 to the embodiment described in the description and the drawings, even if the wording of the claims left room for other interpretations. The board disagreed, explaining that the very essence of assessing added subject-matter consisted in determining whether it possibly comprised embodiments that were not derivable from the description, the drawings and the claims of the application as originally filed. The proprietor's argument led to a tautology: if an amended claim was interpreted so that its subject-matter was limited to what could be derived from the application as originally filed, the comparison of this claim to the content of the application as originally filed would inevitably lead to the conclusion that the claimed subject-matter did not extend beyond the content of the application as originally filed. The board observed that, in such a case, both Art. 123(2) and 100(c) EPC would be deprived of any meaning or purpose.

The board concluded that the skilled person, having consulted the description and the drawings, would interpret granted claim 1 based on what could be derived from the wording of the claim, excluding any interpretation that would not make sense in the technical context of the application/patent, but including all other technically reasonable interpretations encompassed by the wording of the claim.

T 378/24 was an appeal against the examining division's decision to refuse the European patent application on the grounds that the subject-matter of claims 1, 3, 4, 5, 9, 14, 15 and 16 of the main request lacked novelty over document D5, which was prior art pursuant to Art. 54(3) EPC. The patent related to a method and system for pre-purification of a feed gas stream..

The board noted that, in accordance with G 1/15, the decisive issue was whether the subject-matter encompassed by the claims of the main request and corresponding to the novelty-destroying disclosure of D5 was entitled to the claimed priority date. In this regard, the board disagreed with the interpretation of G 1/15 set out in the decision under appeal. The board clarified that, for entitlement to partial priority pursuant to Art. 88(3) EPC, G 1/15 did not require a claim to spell out alternatives comprised within the claim as such, or to comprise the conjunction "or" separating alternatives therein. The referral leading to G 1/15 was prompted by divergent interpretations of Opinion G 2/98, in particular of the passage in point 6.7 of the Reasons according to which: "the use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters". Certain decisions issued after G 2/98 construed this latter requirement ("provided that...") restrictively and denied partial priority where such alternatives were not explicitly defined. This approach was expressly rejected in G 1/15..

The board referred to the Order of G 1/15 which explicitly states that no such limitations or conditions apply in this respect. It pointed out that further guidance was provided in point 6.4 of the Reasons: "In assessing whether a subject-matter within a generic "OR" claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document that is relevant, i.e. relevant in respect of prior art disclosed in the priority interval ... The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"-claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC..

The board stated that, according to G 1/15, it was not necessary for alternatives within a claim to be individually spelt out or syntactically separated by "or"; it suffices that the claim can be conceptually or mentally divided into different subject-matters. Applying the principles set out in G 1/15 to the case in hand, the board found that independent claims 1 and 14 of the main request could be conceptually divided into two sets of alternative subject-matters, namely: (1) a first set corresponding to conceptual alternatives encompassed by the claim which were directly and unambiguously disclosed in the priority document and (2) a second set corresponding to the remaining alternatives encompassed by the claim but not directly and unambiguously disclosed in the priority document. The first set of alternatives was entitled to the claimed priority date, while the second set of alternatives was not..

It followed that partial priority could be acknowledged for the subject-matter of independent claims 1 and 14 insofar as this subject-matter was conceptually encompassed by the claims and directly and unambiguously disclosed in the priority document. Hence, in the present case, for D5 to be relevant state of the art pursuant to Art. 54(3) EPC, the novelty-destroying subject-matter disclosed in D5 had to fall into the second set of alternatives conceptually falling within the scope of independent claims 1 and 14 of the main request as set out above, namely those alternatives not entitled to the priority date. The board analysed the disclosure in D5 and found that claims 1 and 14 of the main request were entitled to the priority date of the present application, such that D5 was not state of the art pursuant to Art. 54(3) EPC for these alternatives. The board concluded that the subject-matter of independent claims 1 and 14, and by extension dependent claims 2 to 13, 15 and 16, were novel over D5.

The decision under appeal was set aside and the case was remitted to the examining division for further prosecution.

In T 137/24 the appellant (opponent 2) asserted that the claims of the patent as granted encompassed non-working embodiments because many polypeptide sequences falling under the definition in the claim did not have any enzymatic activity, as evident from Example 5 of the patent in which a number of truncated polypeptides had been tested unsuccessfully. A research project was hence required to test and identify functional polypeptides. Since the patent did not provide any guidance on how the sequences could be changed without losing enzymatic activity, it was an undue burden to find functional polypeptides.

The board observed that, firstly, since the claims required that the genetically modified yeast cells be suitable for producing a cannabinoid or a cannabinoid derivative and the recited polypeptides were also functionally defined by reference to their enzymatic activity, polypeptides without this enzymatic activity did not fall under the scope of the claims.

Secondly, as pointed out in the decision under appeal, generating polypeptide variants as recited in the claims, such as polypeptides comprising an amino acid sequence that has at least 90% sequence identity to SEQ ID NO:110 or SEQ ID NO:100, and testing them for their enzymatic activity, was disclosed in the patent and only required the use of techniques that were routine for the skilled person working in the technical field of recombinant enzyme variants. No evidence to the contrary was submitted by the appellant. The board thus held that the identification of polypeptide sequences falling under the definitions recited in the claims was not an undue burden for the skilled person.

Therefore, the board concluded that the invention as defined in the claims of the main request was sufficiently disclosed in the patent (Art. 83 EPC).

In T 1096/23 opponent 1 (appellant) raised among other things a clarity objection against auxiliary request 2. In this request, features of granted claim 6, which had originally been disclosed only as a dependent method claim, had been included in the independent apparatus claim 11. Opponent 1 submitted that clarity of these features had to be assessed, since G 3/14 did not apply when the category of the (dependent) claim was changed. As there was no disclosure of an apparatus which was configured to carry out these method steps, it was unclear how the method steps were implemented in the apparatus. Therefore, the subject-matter of independent apparatus claim 11 did not meet the requirements of Art. 84 EPC.

The board agreed with the patent proprietor (appellant) that according to G 3/14, when "complete dependent claims" have been added to the corresponding independent claim, the patent must not be examined for compliance with the requirements of Art. 84 EPC. But the board agreed with the reasoning of opponent 1 that this did not apply in the present case to the implementation of the method of the dependent method claim in the apparatus defined in claim 11. However, when a complete granted dependent claim is incorporated into an independent claim of another category (here: method step -> method step carried out by an apparatus), then only the amendments related to the change of category can be examined for clarity under G 3/14.

The board held that in the case of a sub-step of a method, which was (implicitly) executed in a computer program, it made no difference for the purposes of clarity whether this method step was part of a (computer-implemented) method or was implemented in computational means in an apparatus claim, so that no ambiguity could arise. Consequently, adding the features of the original dependent method claim 6 to the wording of apparatus claim 11 did not result in any ambiguity for the skilled person. Claim 11 of auxiliary request 2 met the requirements of Art. 84 EPC.

In T 48/24 claim 1 as granted defined a device comprising a "training data generation unit", a "model construction unit" and an "estimation unit". The device was for training and using machine learning for obtaining a "value representing the composition of waste" in a waste pit upon inputting "data of" a captured image of the waste.

The board observed that sufficiency of disclosure had to be assessed for each case individually. The board saw no apparent reason to treat inventions in the field of machine learning differently from other inventions in this regard. According to the board, it went without saying that the implementation of a suitable machine learning model, its training, and whether the trained model can successfully estimate the specified output based on the input parameters as claimed may be important aspects of sufficiency of disclosure of machine learning inventions. However, there were no special requirements and no general rules for assessing whether these aspects were sufficiently disclosed.

With regard to the decisions referred to by the appellant (opponent), the board considered that it was not possible to derive from T 161/18 any general criteria which might be applicable to the present case. Similarly, the board observed that T 1669/21 illustrated the glaring gap between the breadth of the claimed invention and the level of detail in the patent, but did not provide generally applicable criteria required for sufficiently disclosing a machine learning invention. Likewise, the board also pointed out that the considerations in the present case did not imply any universally applicable criteria for assessing sufficiency of disclosure of machine learning inventions.

In the case in hand, the board noted that the patent did not contain a specific example of the claimed invention. That is, it did not disclose any specific combination of certain "data of" captured images and a particular "value representing composition" of the waste in the images, nor did it provide any details on the implementation and training of an exemplary machine learning model, or any information on the achieved accuracy of estimation. In other words, the patent did not contain any concrete, reproducible example of implementation of the invention. Such a specific example was not in itself an absolute requirement for sufficient disclosure, provided that the skilled person was aware of "at least one way" of carrying out the invention in other ways, for example, through the generic disclosure in the patent or the common general knowledge (see R. 42(1)(e) EPC, "using examples where appropriate"). In the present case, however, providing such an example could have demonstrated that the invention was workable at all, at least in this specific case of the example. It could have served as a reference to better understand the claimed invention, its terms and purpose and the achievable or expected level of accuracy.

The board also explained that sufficiency of disclosure required that the invention could be carried out over the whole claimed breadth without undue burden. This requirement had been formulated in decisions across all technical fields (T 149/21). It reflected the general principle that the protection obtained with the patent had to be commensurate with the disclosed teaching. Even if "one way" of performing the invention was disclosed, this would only be sufficient if this disclosure enabled the skilled person to perform the invention over the whole claimed breadth. The patent in suit taught the general idea of using machine learning to infer properties of the waste composition that could be relevant for operating and controlling a waste incineration plant from images of the surface of the waste pit. However, the disclosure was mostly limited to stating a "result to be achieved". The patent left it to the skilled person to select and evaluate combinations of input data and machine learning models for different desired outputs. Each evaluation involved implementing, training and evaluating the selected models. Overall, this resulted in an enormous number of parameter combinations to choose from. Exploring all the possible combinations of these parameters would require a comprehensive research programme and would place an undue burden on the skilled person.

The board concluded that the maintenance of the patent as granted according to the main request was prejudiced by the ground for opposition under Art. 100(b) EPC. Auxiliary requests 1 to 7 were not allowable under Art. 83 EPC either.

In T 1555/23 the patent related to the medical use of chimeric antigen receptor-modified T cell (CAR T cell) products for cancer therapy in combination with IL-6 inhibitors for toxicity management. The appellants argued that the subject-matter of claims 1 and 5 was not entitled to the priority of the first priority document (P1)..

The board recalled that assessing the requirement of the "same invention" within the meaning of Art. 87 EPC was based on the determination whether the subject-matter claimed could be derived by the skilled person directly and unambiguously, explicitly or implicitly, using common general knowledge, from the previous application as a whole (G 2/98). For the subject-matter of further medical use claims, this entailed assessing whether the priority (or previous) application at the date of its filing rendered it credible that the known therapeutic agent was suitable for the claimed therapeutic application (see e.g. T 843/03). This was consistent with the general teaching in G 1/03 that the process of making the invention has to be completed when an application for a patent is filed.

Appellants II and III argued that the subject-matter of claim 1 was not directly and unambiguously derivable from P1. Their reasoning was essentially based on an interpretation of current claim 1 in which no causal link between the monitoring step and the second-line therapy existed. Such a method without a causal link was not disclosed in P1. Appellant II further argued that P1 did not disclose the general use of a single cytokine inhibitory therapy for managing toxicity resulting from CAR T cell infusion..

The board disagreed. Claim 1 did not refer to the general use of a (or any) single cytokine inhibitory therapy but rather to IL-6 as the cytokine to be monitored and inhibited when its level was increased. Claim 1 also included a causal link between the result of the monitoring, i.e. increased IL-6 levels, and the administration of an IL-6 inhibitor as a second-line therapy. As also pointed out by the respondents and acknowledged by the opposition division, a basis for IL-6 as the cytokine to be monitored and inhibited when its level is elevated could be found in several passages in P1. A further basis for this subject-matter could be found in claims 1 to 4 of P1. P1 further disclosed: "(CAR) in combination with toxicity management, where a profile of soluble factors from a post T cell infusion patient is generated and a therapy directed against the elevated soluble factor is carried out in order to treat the cancer" and "second-line of therapy appropriate to treat the patient as a consequence of the first-line of therapy". Thus, according to the board, the subject-matter of claim 1 was directly and unambiguously derivable from the disclosure of P1.

Claim 5 required the second-line therapy to be tocilizumab. Appellants II and III also argued that this subject-matter was not directly and unambiguously derivable from P1. The board concluded that the skilled person would have derived directly and unambiguously that the IL-6 inhibitory compound tocilizumab was a preferred embodiment of the cytokine inhibitory therapy disclosed in claims 1 to 5 of P1, i.e. the same invention as in current claim 5..

The appellants further contended that the invention as claimed was not enabled in P1 over its whole breadth, raising several objections, none of which were found convincing by the board. For example, the appellants argued that P1 did not disclose that a single agent, i.e. an IL-6 inhibitory compound, was capable of managing the toxicity arising from CAR T cell treatment and that the document only contained assertions to this effect, while the experimental evidence in Figure 9 was not conclusive. The board noted that, in this context, the relevant question was whether P1 made it credible that tocilizumab was effective in managing toxicity of CAR T cells. The board disagreed with the appellant’s contention that the document only contained assertions to that effect which, in accordance with T 609/02, might not represent sufficient evidence for a therapeutic effect. In the current case, a clinical trial had been conducted, albeit with only one or two patients, and the inventors drew conclusions from it. The board therefore considered the teaching of P1 sufficient to make it credible that the toxicity of CAR T cell therapy could be managed with a single agent..

The board concluded that the invention to which claims 1 and 5 related was disclosed in an enabling manner in P1 and, therefore, the claims enjoyed priority from P1.

In T 1052/23 the board explained that an amended claim the wording of which was not literally included in the (earlier) application as originally filed, as in the case in hand, must generally be interpreted by using a mind willing to understand and by consulting the description and the drawings, prior to assessing whether the claimed subject-matter can be directly and unambiguously derived from the (earlier) application as filed. The board agreed with the two-step approach applied in T 2048/22 and T 873/23.

The board did not agree with the patent proprietor's narrower interpretation of claim 1, according to which a "selection" or "switching" step between two types of shapes of the printing features of the same printing plate was included. The board observed that, as held by many boards following G 1/24, the consultation of the description did not mean that restrictive features that were contained in specific embodiments in the description could limit the wording of the claims, see for example T 1232/23, T 1465/23, T 1846/23, T 1069/23, T 1351/23, T 412/24, T 2034/23 and T 1402/24. The board was of the view that also the more general statement in paragraph [0008] of the patent relating to the background of the invention and merely pointing to an advantageous method and apparatus would not prompt the skilled person to a narrower interpretation of claim 1.

The board consulted the description when interpreting claim 1 and interpreted it in a broad, technically reasonable manner. According to the board’s interpretation, claim 1 did not include the aspect of controlling the top shapes of the printing features on a same printing plate by selecting the first or second illumination intensity, so that the claim was not restricted accordingly. Omitting this essential aspect, which was included in the relevant independent claims of the parent application and presented throughout its description as a core feature of the invention, led to a broadening of the claim which therefore encompassed subject-matter that was not originally disclosed in the parent application as originally filed. Consequently, the omission amounted to an unallowable amendment and to an extension beyond the content of the parent application as filed.

With respect to dependent claims 5 and 6, the board was of the view that the features of said dependent claims were not disclosed in the claims of the parent application as originally filed. They were taken from the description, but from a specific technical context. Claim 5 and 6 as granted constituted unallowable intermediate generalisations of specific examples provided in the parent application as originally filed.

Therefore, the board concluded that the subject-matter of claims 1, 5 and 6 extended beyond the content of the earlier application as filed so that the ground for opposition under Art. 100(c) EPC prejudiced the maintenance of the opposed patent as granted.

In T 439/22 of 11 December 2025 the board applied the conclusions of the Enlarged Board in G 1/24 to interpret the term "gathered sheet" in claim 1 of the referring case.

The board held that in interpreting the language used in a claim, "consulting", "referring to", "using" and "taking into account" the description and figures are synonyms for the act of deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim.

Furthermore, the board stated that claim interpretation was the result of both reading the claims and consulting the description and drawings as a unitary process. It explained that this holistic approach followed from the Order of the Enlarged Board, according to which, if, on the one hand the claims are the starting point and the basis for assessing the patentability of an invention under Art. 52 to 57 EPC, the interpretation of the claims requires, on the other hand, that "the description and drawings shall always be consulted when assessing the patentability of an invention under Art. 52 to 57 EPC". Moreover, this was confirmed in point 17 of G 1/24, which provides that "the finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act"..

The board was of the view that a skilled person aiming to correctly determine the subject-matter for which protection was sought and reading the patent specification with a mind willing to understand would attribute considerable weight to any definition of a term used in the claims. Having cross-checked that the claim in itself and in the context of the other claims made technical sense and was in line with the information presented in other passages of the description, the person skilled in the art would have no reason to disregard such definitions and to give the defined terms a different meaning in the claim. In the case in hand the definition of "gathered" given in paragraph [0035] did not contradict but rather encompassed the commonly accepted meaning of the term "gathered sheet", namely a sheet that is folded and convoluted to occupy a three-dimensional space. The definition was simply not restricted to folded sheets but included other forms of transverse constrictions of the extension of a sheet. The board concluded that the wound tobacco sheet of D1 equated to the "gathered sheet" feature of claim 1 when this term was correctly interpreted according to paragraph [0035] of the description. Hence, the subject-matter of claim 1 of the main request lacked novelty over the content of document D1.

The sole amendment in the auxiliary request was the deletion of paragraph [0035] from the description of the contested patent, which read as follows: "As used herein, the term 'gathered' denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod". The appellant submitted that said deletion altered the interpretation of the term "gathered sheet" in claim 1 and, consequently, the scope of the protection conferred. In the absence of the broader definition provided in paragraph [0035], the term "gathered sheet" no longer encompassed other limiting features, namely that the gathered tobacco sheet was "compressed or constricted substantially transversely to the cylindrical axis of the rod".

The board noted that, in line with the Enlarged Board's holistic approach to claim interpretation in G 1/24, a person skilled in the art reading the claim in the context of the description and figures would try to take a definition found in the description at face value. As long as the definition was technically reasonable and complied with the overall teaching expressed in the claims, description and figures, the skilled person would read the terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects found in that definition. It was therefore not permissible to consider only the broadening aspects contained in a definition and disregard any limiting aspects. As set out by the Enlarged Board in G 1/24, point 20 of the Reasons, Art. 84 EPC may require that limiting or broadening aspects are expressed in the claim to avoid any unclarity, but a granted claim had to be read in light of all aspects of a definition found in the description. Therefore, the board concluded that the auxiliary request did not comply with the requirement of Art. 123(3) EPC.

In T 781/23 the opposition division had held that the patent was entitled to claim priority from the priority document, a US provisional patent application filed in the name of the inventors, with the consequence that documents D12 and D13 did not belong to the state of the art according to Art. 54 EPC. The appellant (opponent) argued that the applicant for the patent in suit was not the successor in title of the applicants for the priority document.

The board recalled that, in accordance with decision G 1/22, under the autonomous law of the EPC there is a rebuttable presumption that the applicant claiming priority is entitled to claim priority. Furthermore, the presumption of priority entitlement applies to any case in which the subsequent applicant is not identical to the priority applicant but receives the support of the priority applicant required under Art. 88(1) EPC. Thus, the presumption applied in the case in hand. The board explained that the existence of a presumption of validity implied that it was the burden of the party challenging the applicant's entitlement to priority to prove that this entitlement was lacking. Thus, the appellant's argument that it was on the proprietor to demonstrate that it had the right to claim priority had to fail..

Also referring to G 1/22, the board stated that the presumption was rebuttable, for example, in cases of bad faith behaviour of the subsequent applicant or as a result of other proceedings such as litigation before national courts concerning title to the subsequent application. It further stated that the presumption of entitlement existed on the date on which the priority was claimed and the rebuttal of the presumption also had to relate to that date.

According to the board, in the case at hand, the appellant had not provided any such evidence to rebut the presumption of priority entitlement. Document D19 was an assignment by the inventors to the applicant of the patent in suit and could not rebut this presumption. The further evidence provided relied on requirements of national law, such as the distinction under French law between the right to the invention and the right to the priority claim. The board was of the view that, following the presumption of priority entitlement existing under the autonomous law of the EPC, considerations based on national law became irrelevant.

In light of the foregoing, the board came to the conclusion that the patent was entitled to the priority claimed.

In T 1489/23 the patent related to additive manufacturing process control, in particular for Selective Laser Sintering (SLS). The patent proposed "real-time statistical process control monitoring and control". It relied on monitoring the "spark plume" created during sintering.

Regarding the particular way in which sufficiency of disclosure had been challenged by the appellant (opponent), the board observed that an objection to sufficiency had to be reasoned. This burden was with the party raising the objection. According to the board, to justify an objection to sufficiency, one may contest factual allegations in the disclosure (for example, that certain things can be done in a certain way or that a technical effect is effectively achieved), or one may point out gaps in the disclosure, i.e. to information, which is missing from the disclosure but required for the skilled person to carry out the invention over the full scope of the claims. For either argument to be convincing, it must raise "serious doubts". It cannot be limited to mere allegations of insufficiency, but has to be reasoned in a way that allows the deciding body to evaluate, i.e. "verify" its merit.

The board explained that to make an objection of the "first type", it may be appropriate to submit evidence showing that an alleged fact was actually incorrect. It may be less straightforward to provide evidence to substantiate an objection of the "second type", because establishing a gap in the disclosure was similar to "proving a negative". For the same reason, it was unclear to what extent an objection of the latter type could be based on "verifiable facts".

In the case in hand the appellant had pointed to specific information missing from the disclosure and the common general knowledge. The corresponding arguments were in part verifiable and otherwise sufficiently substantiated for the board to assess them. In the board's judgement, therefore, the appellant had provided sufficient reasons to substantiate its objection of insufficient disclosure.

The board agreed with the respondent that the patent taught that the spark plume may be an indicator for in-process quality factors and also that it provided a list of characteristics that may be useful as indicators. The board was of the opinion that the skilled person would be capable of extracting specifically given image characteristics from suitably "derived" image data using common-place image processing tools. This was part of the common general knowledge. Considering the cited prior art, the board was also convinced that at least some useful information existed in the image of the spark plume. For some instances, the success of the claimed method was predictable.

Regarding the alleged gaps in the disclosure, the board considered that the patent did not (a) define the intended meaning of the term "spark plume", i.e. which incandescent matter (plasma, spatter, condensate) was to be monitored; (b) disclose which characteristics of the so-defined spark plume were (not just might be) useful as indicators, and for which quality factors; or (c) provide any evidence to that effect. Based on the evidence on file, this missing information was not part of the common general knowledge. Because the patent provided no working examples, the skilled person had to make three choices without any guidance, namely which "plume" constituents to identify in the image, which characteristics to derive from that image, and in view of which quality factors to assess abnormality of the derived characteristics.

The complexity of the task that the skilled person had to accomplish was therefore of combinatorial nature, and without any guarantee of success. It did not appear trivial to make appropriate selections for a large number of quality factors, manufacturing processes and products. It was not even clear which quality factors may be reflected at all in any of the plume characteristics. It may be possible with reasonable effort to find parameter combinations which work for some cases, but it appeared difficult to identify such cases beforehand. In the board's judgment, the successful accomplishment of this task by the skilled person required a considerable effort and went well beyond routine experimentation. It therefore amounted to an undue burden.

The board concluded that the claimed invention was insufficiently disclosed for it to be carried out, over its full breadth, by the skilled person.

In T 709/23 the board explained that claim 1 was drafted as a purpose-limited product claim under Art. 54(5) EPC. The therapeutic indication "for use in treating a pruritic or allergic condition in cats" constituted a functional technical feature of the claim. The antibody was defined solely by two functional features: its specific binding to feline IL-31 and its inhibition of IL-31-mediated pSTAT signalling. However, the board noted that defining the antibody in terms of functional features did not, in itself, establish a credible link to the claimed therapeutic indication. The application as filed had to provide clear and direct disclosure demonstrating that the functionally defined antibody was indeed suitable for achieving the claimed therapeutic effect..

The board observed that, while the extrapolation of the therapeutic effect from dogs to cats was disputed, its assessment under Art. 83 EPC was based on the objection that the claimed invention could not be carried out across the entire scope claimed. Accordingly, it was not necessary for the board to decide whether the skilled person would have credibly extrapolated the data on IL-31 in dogs to cats..

The board explained that while the patent application showed that feline IL-31 could activate pSTAT in canine DH-82 cells, it did not demonstrate that antibody 11E12 or 34D03 inhibited IL-31-mediated pSTAT signalling in feline cells or was effective in treating pruritic or allergic conditions in cats in vivo. A person skilled in the art attempting to carry out the invention in cats as claimed, would have selected one of the few antibodies disclosed, which were described as binding to an epitope conserved between canine and feline IL-31 and felinised it as disclosed for antibody 34D03 in Example 11. The skilled person would have expected that each of the disclosed antibodies, i.e. both 11E12 and 34D03, would be capable of achieving the claimed effect in cats. Whether the approach would have worked with antibody 34D03 remained speculative. However, in post-published document D51, an in vivo effect in cats was demonstrated only for antibody 15H05, which binds to a distinct epitope on IL-31. Contrary to the central teaching of the patent application that inhibition of feline IL-31- mediated pSTAT signalling correlated with therapeutic efficacy in vivo, the data generated in D51 using 11E12 antibody variants showed that an antibody targeting the conserved antigenic region on IL-31 according to the patent application, while being able to inhibit feline IL-31- mediated pSTAT signalling in cat cells, failed to achieve significant therapeutic effects in cats.

The board found that, as shown by document D51, additional research was necessary to arrive at an anti-IL-31 antibody capable of treating a pruritic or allergic condition in cats. Hence, there were serious doubts substantiated by verifiable facts whether, following the teaching of the patent application, a skilled person would arrive without undue burden at an antibody suitable for treating a pruritic or allergic condition in cats.

The board concluded that the patent application did not disclose the invention as defined in claim 1 of the main request in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art (Art. 83 EPC). The reasons provided for the invention according to claim 1 of the main request applied mutatis mutandis to the invention according to claim 1 of auxiliary requests 1 to 20 which also failed to fulfil the requirements of Art. 83 EPC.

In T 1396/23 the appeal was filed by the opponent against the opposition division's decision rejecting the opposition. The appellant contested the opposition division's finding that the invention defined in claim 1 of the opposed patent was sufficiently disclosed. While the appellant did not dispute that claim 1 related to a medical use and was drafted as per Art. 54(5) EPC, it argued that the effect induced by whey protein micelle complexes (WPM complexes) described in the opposed patent was not therapeutic. According to the appellant, the claimed complexes provided nutrition but were unsuitable to prevent the claimed conditions, even less so to treat them.

The board was not persuaded by the arguments of the appellant. The board referred to the opposed patent, which explained that, prior to the filing date, whey protein isolates were considered not only to be essential nutrients but also to be beneficial in reducing the risk of, and treating, metabolic diseases associated with high-fat diets and/or elevated postprandial insulin levels, such as diabetes. On this basis alone, the board found it reasonable to assume that the claimed WPM complexes, which contained whey proteins, could likewise induce these effects..

The board observed that the opposed patent taught that using the claimed WPM complexes rather than conventional whey proteins was beneficial for subjects who were at risk of or suffered from the diseases indicated in claim 1. The board explained that it was immaterial what the underlying mechanism of action was, and also whether the complexes acted on a specific target and whether a comparator such as whey protein isolate or uncomplexed WPM was explicitly mentioned in claim 1. The skilled person would appreciate that the claimed WPM complexes were intended to be incorporated into a nutritional composition in place of whey proteins in order to achieve the stated therapeutic effect. The board concluded that, in the context of the invention, the claimed compositions comprising WPM complexes could thus be regarded as "a substance or composition" within the meaning of Art. 54(5) EPC that was used to carry out the claimed therapeutic method.

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 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 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 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 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 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 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 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.