In a blog entry of 11.10.2025, the board’s communication under Art 15(1) was analysed and commented.
OP were held on 15.10.2025.
From the minutes of the OP, the following conclusions could be drawn:
The parties were heard on G 1/23.
The proprietor essentially submitted that a non-reproducible product, as ENGAGE® 8400 for which no information was available for its production, would not be regarded by the skilled person as a realistic closest prior art for the assessment of IS,
The opponent argued that this matter would be considered in the context of obviousness and thus also taking the disclosure of Example 24 of D18 into account, rather than when considering the starting point.
The parties also made submissions on the substance of the lack of IS objection, if Example 3 of D1 was taken as the CPA.
There was agreement that the distinguishing feature in this context would be the content of aluminium, however the parties were in disagreement as to the formulation of the OTP and whether it would have been obvious to arrive at the material of claim 1 of the MR.
After deliberation, the chairman announced that the board considered that the product ENGAGE® 8400 of Example 3 of D1 could be taken as the CPA for the assessment of inventive step.
It further announced the Board’s conclusion as to the question of IS starting from this CPA for the MR and AR 1-6.
The OP were interrupted at the request of the proprietor for consultation.
After resumption of the proceedings the proprietor stated that all requests on file where withdrawn as well as for the text of the patent as granted.
Comments
The board might only have given its conclusion after having heard the parties, so that no formal decision was taken in view of the proprietor’s withdrawals.
In spite of the absence of a formal decision, the board’s considerations in its communication under Art 15(1) RPBA and the discussions during the OP, were apparently convincing enough, for the proprietor to withdraw all requests and the agreement to the text of the patent.
The route opened by the present board it is communication under Art 15(1) RPBA, on how IS can be challenged, even if a marketed product is not reproducible is thus open to other opponents.
Start with the marketed product as CPA, and even if its not reproducible as such, look how to arrive at a product having the same characteristics as the marketed product. It might not be easy, but worth an attempt.
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