FOREWORD by the President of the Boards of Appeal 1 BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2018 AND 2019 2 I. PATENTABILITY 2 A. Exceptions to patentability 2 1. Patentability of biological inventions 2 2. Product claims for plants or plant material 4 3. Medical methods 6 3.1 "Treatment by surgery" in the case law since G 1/07 6 3.2 Apparatus claim – disguised method claim? 7 B. Novelty 9 1. Common general knowledge 9 1.1 Specialist journals as common general knowledge 9 2. Availability to the public 9 2.1 Public prior use – internal structure or composition of a product 9 2.2 The concept of "the public" – public library 11 2.3 Public availability of documents submitted for standardisation 11 3. Determining the content of the relevant prior art 13 3.1 Taking implicit features into account 13 4. Ascertaining differences 13 4.1 Functional features 13 5. Chemical inventions and selection inventions 14 5.1 Achieving a higher degree of purity 14 6. First and second medical use – new therapeutic application based on the group of subjects to be treated 15 7. Second (or further) non-medical method – novelty criteria for product claims with purpose characteristics 16 C. Inventive step 16 1. Problem and solution approach 16 2. Determination of closest prior art in general 17 3. Assessment of inventive step 17 3.1 Treatment of technical and non-technical features 17 3.2 Problem and solution approach when applied to "mixed" inventions 20 3.3 Mental activities based on data visualisation 21 3.4 Examples of lack of inventive step – selection from obvious alternatives 22 II. PATENT APPLICATION AND AMENDMENTS 23 A. Claims 23 1. Interpretation of ambiguous terms or confirmation of the text of a claim 23 B. Unity of invention 23 1. Assessment of lack of unity and of requests for refund of further search fees in examination proceedings 23 C. Sufficiency of disclosure 24 1. Clarity and completeness of disclosure 24 1.1 Parameters 24 2. Reproducibility without undue burden 27 2.1 Occasional failure 27 3. The requirement of sufficiency of disclosure in the biotechnology field 28 3.1 Deposit of living material 28 4. The relationship between Article 83 and Article 84 EPC 29 4.1 Article 83 EPC and clarity of claims 29 5. Evidence 30 D. Priority 31 1. Right of priority of the applicant 31 2. First application in respect of the invention 33 2.1 Identity of invention 33 3. Multiple priorities or partial priority for one claim 34 3.1 Application of G 1/15 in the jurisprudence of the boards 34 E. Amendments 35 1. Extension beyond the content of the application as filed – "US-style" dependencies 35 2. Disclaimers 37 2.1 Accidental anticipation 37 2.2 Undisclosed disclaimer must not be related to the teaching of the invention 37 3. Extension of the protection conferred 39 3.1 Article 123(3) EPC and Article 69 EPC 39 3.2 Replacement of drawings 40 3.3 Change of claim category 41 F. Divisional applications 42 1. Request to postpone decision concerning the earlier European patent application 42 2. Double patenting 43 2.1 Referral decision 43 2.2 Same subject-matter claimed 43 III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO 45 A. The principle of the protection of legitimate expectations 45 1. Knowledge of the relevant legal provisions and the case law 45 2. Obligation to draw attention to easily remediable deficiencies 45 B. Right to be heard 46 1. Decision must demonstrably show that arguments were heard and considered 46 2. No obligation to address each and every argument 47 3. The requirement of a text agreed by the applicant 47 C. Oral proceedings 48 1. Right to oral proceedings in examination, opposition and appeal proceedings 48 2. Preparation of oral proceedings – fixing or changing the date for oral proceedings 50 D. Time limits, date of receipt, further processing and interruption of proceedings 51 1. Date of receipt of documents transmitted by fax 51 2. Interruption of proceedings because of insolvency (Rule 142(1)(b) EPC) 52 E. Re-establishment of rights 54 1. Date the error ought to have been noticed is decisive 54 F. Languages 55 1. Derogations from the language of the proceedings in oral proceedings 55 G. Formal aspects of decisions of EPO departments 56 1. Form of decisions 56 1.1 Signatures on a decision under Rule 113 EPC 56 1.2 Deficient reasoning insufficient for the purposes of Rule 111(2) EPC 56 H. Inspection of files, European Patent Register and stay of proceedings 57 1. Stay of proceedings under Rule 14(1) EPC 57 2. Rule 14(3) EPC 58 I. Intervention 58 1. Admissibility 58 1.1 National infringement proceedings 58 J. Apportionment of costs 59 K. Notifications 61 1. Notification by postal services 61 IV. PROCEEDINGS BEFORE THE DEPARTMENTS OF FIRST INSTANCE 62 A. Examination procedure 62 1. Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC) 62 2. Amendments and corrections requested according to Rule 71(6) EPC 64 3. Additional search necessary: limited discretion of the examining division 64 B. Opposition procedure 65 1. Filing and admissibility requirements – sufficient substantiation of grounds for opposition 65 2. Late submission 68 2.1 Concept of "in due time" 68 2.2 Exercise of discretion – prima facie relevance 69 2.3 New argument versus new chain of reasoning 69 3. Amendments in opposition proceedings 70 3.1 Time frame for filing amendments – discretion of the opposition division 70 3.2 Scope of examination of amendment 72 V. PROCEEDINGS BEFORE THE BOARDS OF APPEAL 73 A. Appeal procedure 73 1. Filing and admissibility of the appeal 73 1.1 Party adversely affected (Article 107 EPC) 73 1.2 Appeal filed within the time limit – correction of error 73 1.3 Statement of grounds of appeal 74 1.3.1 Content of the statement of grounds of appeal 74 1.3.2 References to submissions made at first instance 75 2. Facts under examination – applying Article 114 EPC in appeal proceedings 76 2.1 Fresh ground for opposition on appeal 76 2.2 The board need not examine facts of its own motion 77 3. Review of first-instance discretionary decisions 78 3.1 Submissions admitted at first instance – part of the appeal proceedings 78 4. New submissions on appeal 78 4.1 Amendments after arrangement of the oral proceedings 78 4.2 Communication of a board of appeal 79 4.3 Late submission of new arguments, objections and lines of attack in appeal proceedings 80 4.4 Article 12(4) RPBA 2007 83 4.4.1 Broadening of claims considered by the opposition division 83 4.4.2 Resubmission of requests withdrawn at opposition stage 84 4.5 Converging or diverging versions of claims 86 5. Reimbursement of appeal fees 87 5.1 Appeal deemed not to have been filed or inadmissible appeal 87 5.2 Violation must be of a procedural nature 89 5.3 Error of judgement by a department of first instance 90 5.4 Excessive length of proceedings 90 5.5 Violation of the principle of the protection of legitimate expectations 92 5.6 Withdrawal of appeal under Rule 103(2) EPC 93 B. Proceedings before the Enlarged Board of Appeal 93 1. Article 112a(1) EPC – adversely affected party entitled to file a petition for review 93 2. Time limit for filing a petition for review 94 3. No opportunity to comment, surprising reasons 95 4. Article 112a(2)(a) EPC – alleged breach of Article 24 EPC 95 5. Article 112a(2)(c) EPC – alleged fundamental violation of Article 113 EPC 96 6. No right to a further hearing at first instance 97 7. Successful petitions under Article 112a(2)(c) EPC 98 ANNEXES ANNEX 1 99 Decisions discussed in the Case Law Report 2018/2019 99 ANNEX 2 110 Cited decisions 110 ANNEX 3 116 Headnotes/catchwords to 2019 decisions which have been (or will be) published 116 Source: http://www.epo.org/law-practice/legal-texts/official-journal/2020/etc/se4/p0.htmlDate retrieved: 19 May 2021
