By Timothy S. Donahue

Top Takeaways:

• The EPO Board of Appeal ruled that Nicoventures’ right to be heard was violated when 13 auxiliary claim requests were not addressed.
• Revocation of BAT’s vaping device patent will be reevaluated, as at least one unexamined request might have addressed novelty and added-matter concerns.
• The dispute, opposed by Philip Morris Products SA, continues the larger intellectual property rivalry between leading tobacco companies in the vaping and next-generation product sector.

Nicoventures Trading Ltd., a subsidiary of British American Tobacco, has gained another chance to defend its vaping device patent after European appellate officials ruled that procedural errors compromised an earlier decision to revoke the patent.

In a ruling dated Nov. 26 and published this week, the Board of Appeal of the European Patent Office (EPO) held that the Opposition Division failed to examine most of Nicoventures’ auxiliary requests—amended claim sets submitted to address objections—before revoking the patent in 2023. According to the board, 13 of 17 auxiliary requests were never considered, violating the company’s procedural rights.

“Since the decision does not deal with the appellant’s arguments in respect of auxiliary requests 4 to 17, the board judges that the appellant’s right to be heard has been violated,” the panel wrote.

The divisional patent in question—EP 3 357 356, appeal T 0645/23 – 3.5.01—was previously revoked due to lack of novelty and added subject matter. Nicoventures appealed the decision and submitted more than a dozen auxiliary requests aimed at addressing those issues. The Board of Appeal observed that at least one of the unexamined requests could have overcome the Opposition Division’s objections, making a reconsideration necessary.

The case was opposed by Philip Morris Products SA, a law firm, and an individual opponent. The dispute is part of the larger intellectual property contest between BAT and Philip Morris, as both companies aim to establish strong patent positions in next-generation nicotine delivery technologies.

The board’s decision sends the case back to the Opposition Division for a complete rehearing, giving Nicoventures another chance to defend the patent on its merits while requiring EPO officials to review each auxiliary request according to procedural standards.