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Admittance of New Objections and Article 123(2) EPC Compliance

T 1774/21 - distributed to Chairmen

· EPO,PatentRevocation,EPCArticle123,AmendmentProcedures,NonInvasiveTreatment

Introduction

The European Patent Office (EPO) Board of Appeal in decision T 1774/21 dealt with significant procedural and substantive issues. The key legal point in this case was the admissibility of a new objection raised under Article 123(2) EPC during appeal proceedings and whether the patent in question complied with this article. This decision ultimately resulted in the revocation of the patent due to non-compliance with Article 123(2) EPC.

Summary of the Invention

The patent in question, EP 2182898, relates to a non-invasive treatment device for cooling subcutaneous lipid-rich cells, particularly adipose tissue. The device includes a treatment unit that removes heat from the skin, a detection unit that measures the temperature at the interface between the device and the skin, and a control unit that adjusts the treatment based on the detection of freezing events in the skin. This configuration helps prevent skin damage during the cooling process.

Summary of the Decision

Arguments of the Opponent (Patentree, Lda)

  • The opponent argued that Feature 5, which allows the control unit to differentiate between temperature changes due to freezing and those due to movement, extended beyond the original disclosure of the application. According to the opponent, the original application did not clearly disclose this functionality of the control unit.

Arguments of the Patentee (Zeltiq Aesthetics, Inc.)

  • The patentee contended that Feature 5 was supported by the application as originally filed, specifically pointing to paragraphs [0032] and [0062]. The patentee also sought to dismiss the opponent's new objection based on the timing of its introduction, requesting it not be admitted into the proceedings under Article 13(2) RPBA 2020.

Decision of the Board

  • The Board rejected the patentee’s request to exclude the new objection, stating that it constituted an amendment to the party's case and could not be disregarded. The Board also reviewed the objection under Article 123(2) EPC and found that Feature 5 extended beyond the original content of the application. The Board concluded that the claim's differentiation functionality was not supported by the disclosed control unit. As a result, the patent was revoked due to non-compliance with Article 123(2) EPC.

Lessons to Be Learned

This decision highlights two key lessons. First, it underscores the importance of timely raising objections under the EPC and how objections introduced during appeal proceedings may still be considered if they are sufficiently relevant. Second, the case serves as a reminder that claims must be directly and unambiguously supported by the original application to comply with Article 123(2) EPC. Any extension of subject matter beyond what was initially disclosed can result in patent revocation.

 

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Legal Disclaimer

The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.